NATIONAL JUDGES' PRESENTATIONS
NL Netherlands
NL Netherlands - Rian KALDEN - Vice-President, District Court of the Hague - Solvay v. Honeywell/referral to ECJ on 6 (1) and 16 (4) EEX Regulation1 - Solvay S.A. v. Honeywell Fluorine Products Europe B.V.; Honeywell Belgium N.V. and Honeywell Europe N.V.; - District Court The Hague, the Netherlands, 15 September 2010, Case 342164 / 09-2275
Facts
Solvay holds a European patent that is validated in several European countries. In interim proceedings (within the framework of proceedings on the merits) against three companies belonging to the Honeywell group of companies, one Dutch and two Belgian, Solvay requests the Dutch court to issue preliminary cross border injunctions for infringement of patents in several European countries (but not the Netherlands or Belgium).
Defendant's arguments
Honeywell argued that District Court The Hague was not competent to hear the case in view of Article 22(4) EEX Regulation and the Gat/LuK decision of the ECJ and also that Solvay's patent was invalid in the relevant countries. The Belgian Honeywell companies also stated that the court lacked competence to hear the case against them on the basis of Article 6 (1) EEX Regulation in view of the Roche/Primus decision of the ECJ.
Legal issues
In the Roche/Primus case, the ECJ held that there was no risk of 'conflicting decisions' as required for applicability of Article 6 (1) EEX Regulation, even if that term was interpreted broadly. There, each party, belonging to the same group of companies, was accused of infringement of the national parts of the same patent, each party only in its own jurisdiction. The claimant stated that the facts in this case had to be distinguished from the facts in the Roche/Primus case and that this decision therefore did not apply to this case.
District Court The Hague has so far (e.g. in its Fort Vale / Pelican decision of 18 June 2008) ruled that the Gat / LuK decision of the ECJ – in which it was held that Article 22 (4) EEX Regulation also applies if the nullity of a patent is invoked as a defence in an infringement action – does not apply to proceedings in which only a preliminary injunction is requested. Honeywell argued that the Gat / LuK decision had to be interpreted such that the ECJ held that Article 22 (4) EEX Regulation also applies to cases in which only a preliminary injunction is requested.
Decision
In relation to its competence, District Court The Hague held that the situation in this case, where parties from different jurisdictions (the Netherlands and Belgium) are both said to infringe the same patent in yet another jurisdiction with exactly the same product, is not the same situation as the one considered by the ECJ in the Roche / Primus case. District Court The Hague held that if different courts were to decide on the question of cross-border infringement of the same (foreign) patents by two parties each from (yet) other jurisdictions (the Netherlands and Belgium), there would be a risk of conflicting decisions on the infringement of the same patent by the same product. Therefore, the question how to interpret the requirement of 'conflicting decisions' in Article 6 (1), which has been left undecided by the ECJ in Roche/Primus, is again relevant and should be referred to the ECJ again.
In relation to Article 22 (4) EEX Regulation, District Court The Hague ruled that there was uncertainty as to its correct interpretation, and decided to refer questions to the ECJ in that respect as well.
An interim judgment has been rendered to give the parties the opportunity to comment on the questions to be asked.
The subsequent judgment with the questions to the ECJ dated 22 December 2010 is published on www.eplawpatentblog.com in Dutch and in (unofficial) English translation.
1 Published in Dutch on www.eplawpatentblog.com.