On 1 March 2022, the Court of Appeal of the Hague confirmed that a Dutch warehousing and distribution entity of a Chinese company infringed a patent relating to solar technology. The Court of Appeal grants a cross-border preliminary patent infringement injunction, even though the European patent at issue was not in force in the Netherlands. The injunction covers Belgium, Bulgaria, Germany, France, Hungary, Liechtenstein, Austria, Portugal, Spain, the United Kingdom and Switzerland.

This part of the decision overturns the first instance decision rendered in November 2021, in which the first instance Judge did not accept cross-border competence with respect to the patent infringement injunction claim, but only accepted a cross-border claim based on unlawful act.

Background

The South Korean company Hanwha Solutions Corporation owns a European patent relating to specific solar technology. The patent is in force in various European countries, but not in the Netherlands. Hanwha had requested the Provisions Judge of the District Court of Rotterdam permission to levy a seizure of evidence and seizure for surrender with respect to several solar panels that LONGi (Netherlands) Trading B.V. – a Dutch warehousing and distribution entity of the Chinese solar technology company LONGi Green Energy Technology – stored in the Netherlands and that it offered for sale in various countries. Hanwha levied the seizures after receiving permission thereto from the Judge.

LONGi then brought proceedings for the lifting of the seizures before the Rotterdam Court. n the same proceedings, Hanwha inter alia counterclaimed primarily for:

(i) a cross-border patent infringement injunction and alternatively for,

(ii) an order against the Dutch LONGI entity not to act unlawfully against Hanwha by inducing, promoting, facilitating and (knowingly, systematically and recklessly) benefitting from patent infringement in the countries where the patent is in force.

In first instance, the Judge only granted the alternative claim. The Judge did not grant the primary claim (i.e. the cross-border patent infringement injunction) in view of Article 24(4) EEX (recast). We previously reported on the first instance decision here. The Court of Appeal overturns this first instance decision and grants the cross-border preliminary patent infringement injunction. The Court of Appeal therefore did not have to deal with the alternative claim.

Decision

The Court of Appeal accepts cross-border competence to hear Hanwa’s patent infringement claim on the basis of Article 4 EEX (recast), since the Dutch LONGi entity is domiciled in the Netherlands. The Court of Appeal confirms that Article 24(4) EEX (recast) is not an obstacle for accepting cross-border competence to hear the patent infringement claim. This article provides that in proceedings concerned with the registration or validity of patents, the courts of the Member State in whose territory the registration has taken place shall have exclusive jurisdiction.

The Court of Appeal confirms – with reference to the Dutch Supreme Court decision in Roche/Primus of 30 November 2007 – that Article 24(4) EEX (recast) does not entail that a Dutch Court would lose cross-border competence only because an invalidity defence with respect to foreign parts of a European patent has been put forward. The Court of Appeal furthermore considers that – in light of the decision of the Court of Justice of the European Union in Solvay/Honeywell of 12 July 2012 – Article 24(4) EEX (recast) does not prevent the Provisions Judge in preliminary relief proceedings from carrying out a preliminary assessment of the invalidity defence with respect to the foreign parts of the European Patent. The Court of Appeal thus deems itself competent to hear Hanwha's cross-border preliminary patent infringement injunction claims.

The Court of Appeal then considers that the patent is valid. The Court of Appeal aligns its provisional judgment on the validity of the patent with the decision handed down by the Opposition Division of the EPO. The Court of Appeal considers that LONGi had not made plausible that the Technical Board of Appeal or a court in national invalidity proceedings would come to another conclusion on the validity of the patent. The Court of Appeal furthermore considers that LONGi's products infringe the patent and grants the cross-border preliminary patent infringement injunction.

Comment

The Court of Appeal’s decision on cross-border competence is in line with standing case law on this topic, particularly the Dutch Supreme Court decision in Roche/Primus and the CJEU decision in Solvay/Honeywell. The fact that a defendant has put forward an invalidity defence with respect to foreign parts of a European patent, does not prevent the Court in preliminary proceedings from accepting cross-border competence with respect to the patent infringement injunction claim.

The decision shows that in the Netherlands it is possible to obtain a cross-border patent infringement injunction against a Dutch entity in preliminary proceedings, even if there is no patent in force in the Netherlands.