Provisional measures in cross-border patent litigation in Europe are under review by the European Commission, while a case from 2012 gives hope to patent owners. Dr Christian Köster reports.
Asserting a patent in Europe can be a very effective measure for defending a company’s business. In many cases, the patent proprietor is less interested in receiving a high damages award as they are interested in a quick and effective way to stop the infringing action. Ideally, the patentee asserting their protective right is given a provisional measure and eventually granted injunctive relief.
Review of provisional measures
The current provisional measures available in Europe depend on the jurisdiction, in other words they are determined under national law. However, within the European Union a basic set of provisional measures is available in every country because of a European Directive which forced the EU member states to implement some fundamental provisional measures in their national laws. Currently, the directive and its practical results are under review by the European Commission. The Commission is asking for feedback from the users of the system so that it can assess which further steps might be required to improve the situation of all the players active in the innovative sectors of the European economy. In other words, if changes are made on a pan-European level, they will most likely strengthen the patent owners’ legal options, including provisional measures against alleged infringers.
Subsidiary infringers: The Roche ruling
Of particular interest are cases in which there are several alleged infringers which all belong to the same multinational company. Such subsidiaries of the same company may be domiciled in different European states. In such a case, the patentee must choose venues for action against these subsidiaries, even though the preferred option would of course be to have one venue for an action against all of the alleged infringers. In the famous Roche Nederland BV and Others v Primus and Goldenberg case, Roche Nederland BV was sued for patent infringement together with eight further companies of the Roche group as co-defendants. The action was brought by the owners of a European patent, (Primus and Goldenberg) before the competent Court of First Instance in The Hague.
The claimants asserted jurisdiction of the court for actions against Roche companies not domiciled in the Netherlands, but domiciled in other member states of the European Union, on the basis of Article 6(1) of the Brussels Convention. According to this legal provision, a group of defendants may be sued before the same court of one member state only, even if some of the defendants are domiciled elsewhere. Such an action however requires that “the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceeding”.
However, the co-defendants, having their place of business outside of the Netherlands, contested that the court of The Hague had jurisdiction over their actions. It is noteworthy that the courts of first and second instance of The Hague nevertheless ruled on the infringement issue, also with respect to the defendants not domiciled in the Netherlands. However, the Dutch Supreme Court ultimately referred the case to the European Court of Justice (ECJ). In its decision, the ECJ denied the applicability of Article 6(1) of the Brussels Convention in European patent infringement proceedings as in the underlying case.
Consequently, even though the defendant companies all belonged to the Roche group and were suspected of having acted in an identical, or at least similar manner, in accordance with a common policy, the claimants were barred from suing companies domiciled outside the Netherlands before a Dutch court. This ruling has been seen as an end to the so-called “spider-in-the-web” doctrine in patent cases. This doctrine would have allowed for lawsuits against the entire web of related companies before the court competent for actions against the “spider”.
A contrasting ruling
This is however not the end of the story. In the case of Solvay SA v Honeywell Fluorine Products Europe BV and Others from 12 July 2012, the “Others” were actually Honeywell Belgium NV and Honeywell Europe NV. Solvay, as the proprietor of a particular European patent, sued all three Honeywell companies for infringement of several national parts of the European patent. The ECJ came to the conclusion that, in this case there is a danger of irreconcilable judgments which could, depending on the assessment of all relevant circumstances by the deciding court, call for jurisdiction of one court in actions against a group of defendants, even though some of them are domiciled in a different member state. In other words, there can be situations in which the “spider-in-the-web” doctrine is applicable.
Moreover, in the same decision, the ECJ clarified one of its past judgments, which stated that only the national courts have jurisdiction to decide on the validity of the respective national parts of a European patent. According to the decision Solvay SA v Honeywell Fluorine Products Europe BV and Others, this general principle does not preclude applications for provisional measures made to a court of an EU member state in patent infringement procedures. This is true, although the courts of another member state have jurisdiction as to the substantial points and in particular as to validity.
As a consequence, under particular circumstances, cross-border patent litigation against several defendants is possible in Europe, including provisional measures. It will be interesting to see when and by which court the first cross-border injunctive relief will be granted against an alleged infringer.
Dr Christian Köster, LL.M. is a German and European Patent Attorney at Dennemeyer & Associates (Munich). With a PhD in Chemistry, a Master of Laws, and vast experience in patent prosecution and litigation, Dr Köster is specialized in chemistry and pharmaceutics. He assists clients during the lifecycle of IP rights in contentious and non-contentious matters, including litigation procedures, SPCs and FTO analyses. Dennemeyer & Associates is an international IP law firm with offices in 7 countries, providing litigation specialists in several jurisdictions, including Germany, United States and Luxembourg.
 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Section 4
 Technical survey by the Commission, open for comments from 30.11.2012 to 30.03.2013
 Case C-539/03 Roche Nederland and Others  ECR I-6535
 Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters; now superseded by Council Regulation (EC) No 44/2001 of 22 December 2000– the relevant wording of Article 6 remained however unchanged
 After the Lisbon treaty, this is now the Court of Justice of the European Union
 Case C-616/10 Solvay  (no ECR citation available yet)
 Case C-4/03 GAT  ECR I-6509