District Court of Utrecht and The Hague, Judgment of 15 August 2012, Nos. 324094 / KG ZA 12-319 and 420290 / KG ZA 12-559, Boehringer Ingelheim Pharma GmbH & Co. KG v. Teva Pharma BV and Others
In a preliminary injunction proceeding, the District Court of Utrecht and The Hague ordered a Dutch company to cease from promoting and facilitating patent infringement in Portugal.
Boehringer Ingelheim Pharma GmbH & Co. KG (Boehringer Ingelheim) is the holder of Supplementary Protection Certificates (SPCs) throughout Europe for the pharmaceutical compound Nevirapine which will expire on 30 May 2015. The defendants are Netherlands-based companies of the Teva group, which produces and distributes generic pharmaceuticals.
Teva Pharma BV, a Dutch company, is the holder of a European Marketing Authorization for generic Nevirapine which was offered, marketed and sold in Portugal by the Portuguese entity Teva Pharma Produtos Farmaceuticos Lda under the name Nevirapine Teva.
Boehringer Ingelheim sought a preliminary injunction in the Netherlands to enjoin Teva Pharma BV, as the holder of the Marketing Authorization, from facilitating and profiting from the infringement of Boehringer Ingelheim's SPC by Teva Pharma Produtos Farmaceuticos Lda in Portugal.
The Provisions Judge confirmed that it had jurisdiction pursuant to Article 31 of EU Regulation 44/2001 as the defendants were domiciled in the Netherlands. Also, there was no serious, non-negligible chance that a Portuguese court would revoke the Portuguese SPC.
The Provisions Judge found that Teva Pharma BV acted unlawfully by allowing its Portuguese affiliate to offer and sell Nevirapine Teva under the Marketing Authorization in Portugal, thereby facilitating and profiting from the infringement of Boehringer Ingelheim's SPC in Portugal. Teva Pharma BV should have been aware of Boehringer Ingelheim's exclusive rights in Portugal. The facilitating and profiting from the infringement in Portugal by its Portuguese affiliate constituted an unlawful act under Dutch law.
The Provisions Judge ordered Teva to cease and desist from facilitating the infringement of the SPC in Portugal by giving consent to the Portuguese Teva affiliate to market Nevirapine Teva in Portugal.
It imposed a penalty of 100.000 € for each day Teva acted in breach of this order.
The decision confirms the tendency of Dutch courts to assist in cross-border patent infringement proceedings. It also illustrates how Dutch courts are prepared to assess complex matters in summary proceedings.