The Court of Justice of the European Union (CJEU) has ruled in Solvay SA v Honeywell Fluorine Products Europe BV C 616/10 that the practice of granting cross-border injunctions in preliminary proceedings involving European patents where co-defendants are accused of the same infringement is not prohibited by rules on exclusive jurisdiction.

BACKGROUND

Solvay, a Belgian company holding European patent EP 0 858 440, brought an action in March 2009 in the Netherlands for infringement of the national parts of that patent, as in force in a number of European countries, against three Honeywell companies. Two of these companies are established in Belgium and one in the Netherlands (the Defendants). In December 2009, Solvay lodged an interim claim against the Defendants seeking provisional relief in the form of a cross-border prohibition against infringement for the duration of the main proceedings.

In the interim proceedings, the Defendants raised invalidity of the patent as a defence, but consequently took no action in relation to invalidity. The Dutch court stayed proceedings to seek a preliminary ruling from the CJEU on questions of interpretation of Regulation (EC) No. 44/2001 (the Regulation) on jurisdiction and the recognition and enforcement of crossborder judgments.

DECISION

The CJEU focused on the interpretation of Articles 6(1) and 22(4) of the Regulation.

Pursuant to Article 6(1) of the Regulation, a party can be sued together with a party based in another jurisdiction in the same action to avoid the risk of irreconcilable judgments resulting from separate proceedings, provided the claims are so closely connected that it is appropriate to hear and determine them together. The CJEU determined that this rule can be used to bring an action before a single court where each of the defendants is accused separately of the same infringement in the same countries. This opens up the possibility of a limited form of cross-border jurisdiction, where defendants established in different Member States, accused of committing the same infringement of the same national part of a European patent which is in force in any Member State, can be involved in proceedings pending before a court of one of those Member States.

Article 22(4) of the Regulation provides for exclusive jurisdiction in matters concerning the validity of patents and other intellectual property rights. This raises the question of what should happen if a provisional injunction is requested before a court other than the court with exclusive jurisdiction. Article 31 of the Regulation provides that national courts may order provisional and protective measures, notwithstanding the jurisdiction of another court. Taking this into account, the CJEU decided that in a situation where the court considering infringement does not give a final ruling on validity, but only provisionally assesses the chance that a patent will be invalidated, Article 22(4) of the Regulation does not prevent that court from issuing a provisional injunction with crossborder effects.

COMMENT

The 2006 CJEU judgments in Roche v Primus C-359/03 and GAT C-4/03 effectively prohibited full cross-border national patent infringement proceedings and reduced significantly the scope for cross-border injunctions issued by a single court. These cases did not, however, specifically address interim injunctions. In its latest decision, the CJEU clarifies the legal position concerning multiple co-defendants accused of the same infringement in the same jurisdictions. The CJEU seems to accept the Dutch practice that, under certain circumstances, cross-border injunctions are not in violation of the Regulation, paving the way for fast and effective intellectual property litigation. The benefits of this decision are, however, limited by Article 22(4) of the Regulation. The exclusive jurisdiction rule means that a challenge to the validity of the relevant part of the relevant patent in the State where it was registered would most likely disrupt any cross-border proceedings.