In a 22 December 2010 decision in the case Solvay v Honeywell e.a., the District Court of The Hague has referred several questions to the Court of Justice of the European Union regarding its jurisdiction under the articles 6(1) and 22(4) of Regulation (EC) no. 44/2001 ("the Regulation').

The idea is to tidy up some remaining issues on cross border injunctions in patent infringement cases in the post Gat v. LuK (case C-4/03). It is not a coincidence that it is again a Dutch court that is exploring the remaining possibilities of pan-European injunctions, it is part of their international mindset.

Facts of the case

Solvay holds a European patent concerning a method for the production of 1,1,1,3,3-pentafluoropropane. This European patent is in fact a bundle of national patent rights stemming from a single application with the European Patent Office. The patent is valid in a number of European countries.

Honeywell International Inc. allegedly produces the compound according to the patented method in the US. Three Honeywell group companies established in The Netherlands and Belgium trade in the (allegedly) infringing products. These three entities are each separately accused of infringing national parts of the patent as valid in various European countries. The question is therefore: if Solvay sues a Dutch subsidiary of Honeywell in the Netherlands, together with two Belgian Honeywell subsidiaries, can the Dutch court issue an injunction against all defendants, ordering them to cease the infringement of a patent in other European member states?

One may think that the obvious answer is “GAT/LuK says no”, but this case is different for a number of reasons.

The principal question

First of all, the Court starts from the premise that its jurisdiction – at least for the Dutch defendant is based on article 2 of the Regulation (defendants domicile) and that the validity of the patent in suit is not challenged. From this it concludes that the Dutch Court has jurisdiction to rule on the infringement of the foreign patents as well. The exclusive jurisdiction as set forth in article 22(4) of the Regulation (patent validity) does not come into play when there is no validity challenge.

Therefore the question arises whether the Belgium entities can be sued as co-defendants under article 6(1) of the Regulation. And again, before can you say Roche/Primus (C-539/03) the Court hastens to add that there is a relevant difference, because in that case the separate entities where accused of each infringing one national part of the patent in the country in which they where established. In view of the fact that the Court has article 2 jurisdiction in respect of the Dutch Honeywell company, including in respect of its infringing activities in Belgium, there may, in the opinion of the Court, be a risk of irreconcilable judgments if the Belgium subsidiaries would be sued before the Belgian Courts on the basis of the same facts, the same acts and of course the same patent. The District Court in the Hague is thus of the opinion that this question should be clarified.

In doing so, the District Court seizes the moment to address other important open ends too.

When should the Dutch Court decline jurisdiction?

First of all, there is the question of exactly when a Court should actually decline "international" or cross border jurisdiction in respect of foreign patent. Put in other words: what triggers the exclusivity as meant in article 22(4) of the Regulation: is it sufficient that a defendant suggests that relevant foreign patent is invalid, should he substantiate that (and if so to what degree) or should he actually initiate a Court action to invalidate the patent?

Jurisdiction in case an injunction as granted as a provisional measure?

As provisional injunctions are an important part of the Dutch legal system and culture, the question arises (again) whether a Dutch Court can issue an injunction to order a defendant to cease infringement of a foreign patent. The District Court has two arguments for referring the question to the Court of Justice: firstly article 31 of the Regulation suggests that there may exist jurisdiction in respect of provisional matters even where another Court would have (exclusive) jurisdiction pursuant to other provisions of the Regulation. Secondly, the District Court held that in a provisional ruling, the validity of a patent is not at stake other than as an assessment of the likelihood that a patent will be revoked in validity proceedings (which may be a reason to deny a request for an injunction).

Comments

The GAT v. LuK and Primus v Roche cases did leave open a number of questions, although the spirit of these decisions was undoubtedly very sceptical of cross border injunctions. Hopefully this reference will make it clear if there is still some room for centralised international patent litigation. One aspect of the reference is a little intriguing, since the District Court in The Hague in earlier decisions held that in the context of article 31 of the Regulation a cross border injunction may still be issued, apparently now it is not so sure anymore. In any event it will be interesting to see whether a provisional injunction in an international setting is in line with the Van Uden / Deco-Line case, C-391/95.

Click here for an (unofficial) translation of the questions referred to the Court of Justice.