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Jurisdiction to deal with foreign patents: Solvay goes all the way

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Sticky issues go to the ECJ

Here comes another set of riddles for the Court of Justice of the European Union to resolve: it comes in the form of Case C-616/10 Solvay S.A v Honeywell Fluorine Products Europe B.V., Honeywell Belgium N.V. and Honeywell Europe N.V.  This was a reference for a preliminary ruling from the Rechtbank's-Gravenhage, The Netherlands, regarding the application of Articles 2, 5(3), 6(1) and Article 22(4) of Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the Brussels Regulation). Background to this reference can be found on PatLit, here.

The questions are as follows:

Regarding Article 6(1) of the Regulation:

In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, does the possibility arise of ?irreconcilable judgments? resulting from separate proceedings as referred to in Article 6(1) of the Regulation?

Regarding Article 22(4) of the Regulation:

1. Is Article 22(4) of the Regulation applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

2. In order for Article 22(4) of the Regulation to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the Regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of the Regulation are already pending or are to be commenced - within a period to be laid down by the court - or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

3. If question 1 is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of the Regulation has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

4. If question 1 is answered in the affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of the Regulation does not affect the jurisdiction of the Rechtbank to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

5. If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the Van Uden v Deco-Line judgment [Case C-391/95], between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?

This particular member of the IPKat team freely admits that, if Kats have Achilles' heels, the Brussels Regulation is definitely one of his, so he is keeping quiet about this one till he is faced with a neatly packaged, carefully reasoned judgment to criticise.  However, if any reader would like to comment on this case to the UK's Intellectual Property Office you can email the IPO at policy@ipo.gsi.gov.uk before 28 February 2011.

Full post as published by IPKat on February 21, 2011 (boomark / email).