Yesterday the Dutch preliminary relief judge has ordered a Dutch defendant to stop the promotion and/or facilitation of patent infringement in Portugal.

Background

The plaintiff, Boehringer Ingelheim, is the holder of a Portuguese national patent for a process for the manufacturing of (inter alia) the compound nevirapine and also holds a corresponding SPC. The defendants, several entities of the Teva group, are based in the Netherlands and one of them is the holder of an EU marketing authorisation (MA) for a generic nevirapine product.

Teva introduced its generic nevirapine product on the market in Portugal - through their Portuguese daughter company - before expiry of the patent. Therefore, Boehringer Ingelheim initiated proceedings in Portugal to stop the infringement of its patent rights by Teva.

Since the MA holder is based in the Netherlands, Boehringer Ingelheim also sought an injunction in the Netherlands in order to withhold the Dutch Teva entities from acting unlawful vis-à-vis Boehringer Ingelheim by promoting and/or facilitating the infringement of the Portuguese patent rights of Boehringer Ingelheim. As a defence, Teva argued that the Dutch court would not be competent to hear the claims of Boehringer Ingelheim, and alternatively that the patent is invalid.

Assessment of the case

The Dutch preliminary relief judge rules that it is competent to hear the claims of Boehringer Ingelheim. Although the case concerns unlawful acts in the Netherlands, the validity questions are nevertheless relevant because of the defences of Teva. According to the judge, in case Article 22(4) of the Brussels Regulation would apply in this situation, the court is nevertheless competent on the basis of Article 31 of the Brussels Regulation because, since the defendant is based in the Netherlands, there is a sufficiently real connection with the Dutch territory (cf. European Court of Justice 17 November 1998, C-391/95, Van Uden/Deco-Line).

The judge further rules that it is not relevant that an assessment of foreign law is necessary in order to decide the case. Next to that there is no chance of conflicting decisions as this case would not in any way conflict with the decision on the merits of the Portuguese judge, since the Dutch judge does not give a final ruling on the validity of the Portuguese national patent (cf. European Court of Justice 12 July 2012, C-616/10, Solvay/Honeywell).

After having established that it was competent to hear the case, the judge also considered the validity of the patent (under Portuguese law) and provisionally ruled the patent to be valid. The judge further ruled that since it is in the power of the MA holder to control the marketing of the products, the Netherlands based MA holder unlawfully promoted and/or facilitated the infringement of the Portuguese patent in Portugal.

Comments

The case is a first in its kind and a special example of how the Dutch Courts are willing to assist in pan European patent infringement. In this case Boehringer Ingelheim succesfully argued that assisting and contributing to patent infringement in Portugal, including failing to stop such infringements, was an act of tort under Dutch laws. The case is also a prime example of the Ducth courts' willingness to hear complicated matters in summary proceedings.

This judgment follows shortly after the decision of the European Court of Justice in the Solvay Honeywell case, in which the Court of Justice had clarified some aspects of the cross-border practice. For a report on the Solvay/Honeywell case, click here. It has now been confirmed that it is still possible to obtain injunctions with cross-border effect within the Dutch courts.