The revival of cross-border injunctions
The revival of crossborder injunctions
The European Court of Justice recently
breathed new life into the phenomenon of
cross-border injunctions – a cost-effective
tool originally developed by the Dutch
courts to stop infringement
By Mari Korsten, Marion Bruin and Jaap
Bremer, NLO (Nederlandsch Octrooibureau)
and BarentsKrans
A cross-border injunction, which enables a
patent holder to start proceedings in a single
country instead of all countries in which
its patents are infringed, is a great time and
money saver. The Dutch courts used to issue
such injunctions routinely, both in cases on
the merits and in preliminary proceedings,
but over the years this practice had been
considerably limited by the European Court of
Justice (ECJ). However, a recent ECJ decision
(Solvay v Honeywell, C-616/10, July 12 2012)
appears to have reversed the trend, at least as
far as cross-border measures in preliminary
proceedings are concerned. The ECJ stated
that if one or more companies infringe the
same European patent with the same product
in multiple EU member states, the patent
holder may be entitled to claim and obtain a
cross-border injunction before the court of
one of those countries that is applicable in all
those states. This is a significant development
for patent holders, such as pharmaceutical
companies, since conducting infringement
proceedings in multiple EU countries is very
costly in terms of both time and money.
EU Regulation 44/2001
The question of where a party that has
committed patent infringement can be sued
is a matter of private international law. In
26 Patents in Europe 2013/2014
Europe, the jurisdiction issue is governed by
EU Regulation 44/ 2001 on jurisdiction and
the recognition and enforcement of judgments
in civil and commercial matters.
According to the general rule stated in
Article 2 of Regulation 44/2001, a party whose
domicile is in a EU member state may be sued
in the courts of that member state, irrespective
of its nationality. However, Article 5(3) of the
regulation states that with respect to claims
relating to an unlawful act, a defendant may
also be sued before the courts of the member
state where the unlawful event occurred or
may occur. In addition, according to Article
6(1), if the case involves multiple defendants
domiciled in various countries, they may all
be sued in a country where any one of them
is domiciled, provided that the claims against
them are so closely connected that it is
expedient to hear and determine them together
to avoid the risk of irreconcilable judgments
resulting from separate proceedings.
Past Dutch practice
The practice of granting cross-border
injunctions in patent cases started in the
Netherlands in the 1990s. The Dutch courts
considered that they had jurisdiction in many of
the international patent disputes that were filed.
Not only did the courts assume jurisdiction
to rule on infringement in the Netherlands,
they also ruled on infringement outside the
Netherlands in relation to parallel IP rights
in other European countries (eg, Interlas v
Lincoln, Supreme Court, November 24 1989,
BIE 1991, 23, p86; NJ 1992, 404). If necessary,
the Dutch courts would apply foreign law to
non-Dutch patents in order to assess validity
and infringement outside the Netherlands. The
Dutch courts issued cross-border injunctions
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The revival of cross-border injunctions
in cases on the merits and in preliminary
proceedings. For this, the courts relied on
a broad interpretation of Article 6(1) of the
Brussels Convention (now Article 6(1) of
Regulation 44/2001).
However, the Dutch practice was not
followed in other European countries, and
courts in several EU countries – in particular,
the United Kingdom – strongly opposed it.
In view of this growing criticism, in 1998 the
Court of Appeal of The Hague held in two
decisions (EGP/Boston Scientific, April 23 1998,
BIE 2002, 8, p25 and Boston Scientific/Cordis,
November 26 1998, BIE 2002, 10, p46) that the
Dutch courts could assume jurisdiction for codefendants domiciled outside the Netherlands
in relation to infringements committed in their
own country only if there was also a Dutch
defendant – the so-called ‘spider in the web’,
that was coordinating the infringing acts of the
co-defendants. This considerably narrowed the
interpretation of Article 6(1) of the Brussels
Convention and thus limited the possibilities
to obtain a cross-border injunction from the
Dutch courts.
Past ECJ practice
In 2006 the cross-border injunction practice
was further restricted by two ECJ decisions.
In Roche v Primus (C-539, July 13 2006) the
ECJ held that Article 6(1) of the Brussels
Convention did not apply in European patent
infringement proceedings involving a number
of companies domiciled in various contracting
states in respect of acts committed in one
or more of those states, even where those
companies belonged to the same group and may
have acted in an identical or similar manner in
accordance with a common policy elaborated
by one of them. This effectively meant that,
according to the ECJ, Article 6(1) did not allow
for the ‘spider in the web’ doctrine developed
by the Dutch Court of Appeal.
In Gesellschaft für Antriebstechnik mbH &
Co KG v Lamellen und Kupplungsbau Beteiligungs
KG (GAT v LuK, C-4/03, July 13 2006) the
ECJ was asked to interpret Article 16(4) of
the Brussels Convention (now Article 22(4)
of Regulation 44/2001), which states that the
court of the member state in which an IP right
has been registered has exclusive jurisdiction
to assess the right’s validity. The question
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addressed in the case at issue was whether this
provision was applicable only to proceedings
that were started with the goal of declaring
a patent invalid, or also to proceedings in
which a defendant in a patent infringement
case pleaded the invalidity of the patent by
way of defence against the infringement claim.
The ECJ ruled that the exclusive jurisdiction
provided for by Article 16(4) applied to the
proceedings in which the issue of a patent’s
validity was raised (eg, a nullity action or
a nullity defence) at the time the case was
brought or at a later stage in the proceedings.
This means, in essence, that a national court
that is asked to grant a cross-border injunction
in proceedings regarding the infringement
of a European patent has no jurisdiction to
assess the infringement of the ‘foreign’ parts
of the patent if the validity of such parts has
been challenged. This effectively barred crossborder decisions in cases on the merits, as the
invalidity of the patent in question was nearly
always argued by way of defence against the
infringement claims.
However, after GAT v LuK the Dutch courts
relied on Article 31 of Regulation 44/2001 to
adopt the position that it was still possible to
issue cross-border injunctions in preliminary
injunction proceedings (eg, Bettacare v H3
Products, Preliminary Relief Judge of The
Hague, September 21 2006; PTC v APE Holland,
Preliminary Relief Judge of The Hague,
October 4 2011, www.iept.nl (IEPT20111004);
and YPM v Yell, The Hague Court of Appeal,
July 12 2011, www.iept.nl (IEPT20110712)).
According to Article 31, proceedings may be
started before the court of a member state
for provisional measures, even if under the
regulation the court of another member
state has jurisdiction as to the substance of
the matter (ie, the validity of the patent).
According to the Dutch courts, this meant
that the court still had jurisdiction to grant a
preliminary cross-border injunction, even if
the validity of the patent was challenged.
Solvay v Honeywell
In the eagerly awaited decision in Solvay v
Honeywell, the ECJ was asked to provide its
views on cross-border injunctions and, in
particular, on the Dutch practice of granting
such injunctions as an interim measure, even
Patents in Europe 2013/2014 27
The revival of cross-border injunctions
after GAT v LuK and Roche v Primus. In Solvay
v Honeywell a number of companies from the
Honeywell group domiciled in different EU
jurisdictions, including the Netherlands, had
marketed the same product in several EU
jurisdictions covered by a European patent
owned by Solvay. The product was said to
infringe the relevant national parts of the
European patent, excluding the Netherlands.
Solvay had commenced infringement
proceedings on the merits against the
Honeywell companies before the Hague
District Court. In these proceedings, Solvay
requested, among other things, a provisional
cross-border injunction for the relevant
countries in which Honeywell was claimed to
have infringed Solvay’s patent. In its defence,
Honeywell argued that the patent was invalid.
The Hague District Court, which had until
then assumed that it had jurisdiction to grant
preliminary cross-border injunctions, referred
some preliminary questions to the ECJ.
The ECJ reiterated, with reference to its
judgment in Roche v Primus, that for there to be
a risk of irreconcilable judgments, there must
be a risk of diverging decisions arising from
the same situation of law and facts. However,
in the case at hand the Honeywell companies
were all accused of having committed the same
infringements (ie, selling the same product
in all of the relevant EU member states).
Therefore, they had all committed the same
infringement in the same territories. This, said
the ECJ, could lead to irreconcilable judgments.
In other words, in such circumstances, all
defendants could be sued before a single
national court, based on Article 6(1) of
Regulation 44/2001.
Furthermore, the ECJ held that Article 31
of Regulation 44/2001 allows a national court
to grant a claim for a provisional injunction
based on a national part of a European
patent even if the invalidity of that patent is
asserted and another national court would
have exclusive jurisdiction to decide on that
point under Article 22(4) of the regulation.
The ECJ observed that Article 22(4) seeks to
avoid conflicting decisions on the validity of a
national part of a European patent. It further
noted that although in such a situation, the
application of the jurisdiction rule based on
Article 31 can be affected by Article 22(4), this
28 Patents in Europe 2013/2014
did not apply in the case at hand. The Hague
District Court had made it clear that in the
ongoing proceedings in which a provisional
cross-border injunction had been requested,
it would not make a final decision on the
validity of the foreign parts of the European
patent, but rather would make a (preliminary)
assessment of how the court with jurisdiction
under Article 22(4) would rule on the validity
of the patent. In addition, the Hague District
Court had indicated that if it came to the
conclusion that there was a reasonable, nonnegligible chance that the foreign court with
jurisdiction under Article 22(4) ruled that
the foreign part of the patent was invalid, the
request for a cross-border injunction would be
rejected. Under these circumstances, the ECJ
held, there was no risk of conflicting decisions
and the Hague District Court could assume
jurisdiction to grant a cross-border injunction,
even though the invalidity of the patent had
been asserted.
After Solvay v Honeywell
The ECJ appears to have confirmed that the
Dutch practice of granting cross-border
injunctions on a preliminary or provisional
basis, even if the validity of the patent
has been disputed, is permitted, as long as
the assessment of the patent’s validity is
purely preliminary. This applies not only to
defendants domiciled in the country where
the court is located, but also to a group of
defendants from different countries, provided
that one of them is domiciled in the country
where the court is based, and provided that
they have all committed the same infringing
acts (eg, selling the same infringing product) in
the same countries. Therefore, the ECJ appears
to have re-opened the door to cross-border
enforcement practice, which was previously
closed by the GAT v LuK and Roche v Primus
judgments.
This certainly appears to be how the Dutch
courts have interpreted Solvay v Honeywell,
as illustrated by the decisions granting such
injunctions handed down since July 2012. For
instance, in Boehringer Ingelheim v Teva the
preliminary relief judge of the Hague District
Court ordered Teva to refrain from acting
unlawfully against Boehringer Ingelheim by
promoting or facilitating the infringement of
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The revival of cross-border injunctions
Boehringer Ingelheim’s Portuguese patent,
even though Teva had argued that the
Portuguese patent was invalid. The judge held
that even though he had to assess the validity
of the foreign patent, there was no risk that
the decision would conflict with the decision
on the merits of the Portuguese judge since the
Dutch judge did not give a final ruling on the
validity of the Portuguese national patent.
However, a point to bear in mind is that
in Van Uden v Decoline (C-391/95, November
17 1998) the ECJ held that there had to be
a real link between the subject matter of
the measures sought and the territorial
jurisdiction of the member state of the court
before which those measures are sought. For
instance, in Boehringer Ingelheim v Teva the
court ruled that there was a real connecting
link because the defendants were domiciled in
the Netherlands.
On the other hand, if the measure claimed
(ie, an order to cease and desist from infringing
a foreign part of a European patent) must
also be complied with abroad, and all of the
defendants are domiciled abroad, it is unlikely
that a court will assume jurisdiction under
Article 31 to grant a cross-border injunction.
For instance, in Delaval v Boumatic (Preliminary
Relief Judge of The Hague, December 7 2012),
in which the defendant was domiciled outside
the Netherlands, the judge ruled that the court
did not have jurisdiction to grant an injunction
with effect outside the Netherlands against
a Swedish defendant as there was no real
connecting link between the requested crossborder injunction and the Dutch territory.
An interesting issue is whether courts in
other EU countries will interpret Solvay in the
same way as the Dutch courts. The ECJ may
have found that the Dutch provisional measure
procedures create no risk of conflicting
decisions because the assessment made of
the patent’s validity is purely preliminary;
however, it remains to be seen whether courts
in other jurisdictions will also find that their
national procedures for granting provisional
or preliminary injunctions fulfil the criteria
set by the ECJ (for a non-Dutch perspective
on Solvay, see for instance Trimble, M, “Solvay
v Honeywell and an Alternative Route to a
Central Patent Court in Europe”, Patently-O,
September 3 2012). However, an opening has
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now been created at a European level and it will
be interesting to see whether (and if so, in what
circumstances) courts in other EU countries
will also grant cross-border injunctions.
Unified Patent Court
With the reality of the unitary patent and the
Unified Patent Court (UPC) getting closer
each day, the possibility of dealing with
infringement in all participating countries
through a single procedure before the UPC
(regardless of whether patent validity is
challenged) is also getting nearer. However,
as the UPC proceedings will potentially
prove risky for patent holders and applicants
(effectively putting all of their eggs in one
basket), they may opt out of the UPC during
the transitional period, preferring the option
of possible cross-border injunctions.
Patents in Europe 2013/2014 29
Contributing profiles
NLO (Nederlandsch
Octrooibureau)
BarentsKrans
NLO (Nederlandsch Octrooibureau)
JW Frisolaan 13
2517 JS The Hague, Netherlands
Tel +31 70 331 2500
Fax + 31 70 352 7528
Web www.nlo.nl
BarentsKrans
Lange Voorhout 3
2514 EA The Hague, Netherlands
Tel +31 70 376 06 25
Fax +31 70 360 16 85
Web www.barentskrans.nl
Mari Korsten
Dutch and European patent
attorney
NLO (Nederlandsch
Octrooibureau)
+31 318 707 002
[email protected]
Marion Bruin
Dutch and European patent
attorney
NLO (Nederlandsch
Octrooibureau)
+31 318 707 004
[email protected]
Jaap Bremer
Lawyer
BarentsKrans
+31 70 376 06 21
[email protected]
Before joining NLO, Mari
Korsten worked as a Dutch and
European patent attorney at
Novartis Pharma in Switzerland
and at international law firm Bird
& Bird in The Hague. Mr Korsten
specialises in pharma and
food technology. He has been
engaged in several litigations,
representing international
pharmaceutical companies,
among others, before the Dutch
and Belgian courts. He also
assists small and mediumsized life sciences companies
in building, maintaining and
out-licensing their IP portfolios.
Mr Korsten is a tutor at the
European Patent Institute and a
member of the Dutch Chemistry
Association.
Marion Bruin previously worked
as a project leader at Avantium
Technologies where she was
engaged in process research
and development (R&D) for
the pharmaceutical industry.
She also worked as a research
scientist in the field of polymer
chemistry at Utrecht University
(Netherlands) and Ciba-Geigy
(Switzerland). Ms Bruin’s
areas of expertise are organic,
organo-metallic and polymer
chemistry, homogeneous
catalysis, pharmaceutical
process R&D and laboratory
automation. Her clients include
universities and chemical and
pharmaceutical companies.
Jaap Bremer’s practice focuses
on IP litigation, in particular with
respect to patents, trademarks
and advertising. Mr Bremer
has extensive experience in
infringement and invalidity
litigation, as well as in parallel
import, anti-counterfeiting and
customs enforcement matters,
particularly for clients in the
pharmaceutical, life sciences,
food and beverage and
consumer products industries.
He also regularly advises clients
on non-contentious matters,
including the negotiation and
drafting of licence and coexistence agreements.
30 Patents in Europe 2013/2014
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