The cross border is closed really

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The (cross) border is closed really?

• Peter Beyer, LL.M.
• B E Y E R
• Patent- und Rechtsanwälte ? Intellectual Property
• Am Dickelsbach 8
• D 40883 Ratingen - Germany
• Tel. [phone]
• Fax [phone]
• peter.beyer_at_beyerlaw.de
• www.beyerlaw.de

B E Y E R
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• Legal issues addressed
• Scope of international jurisdiction of court
  other than of court in country of registration
  when question of validity is raised (GAT v. LuK)
• Concentration of actions brought against multiple
  defendants domiciled in different countries
  (Roche v. Primus)
• Strategic thoughts before an infringement action

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• Structure of the presentation
• Part I General strategic thoughts
• Part II Situation until summer of 2006
• Part III The ECJ rulings
• (1) GAT v. LuK
• (2) Roche v. Primus
• Part IV Prospects

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• I. Basic situation
• Patents (and other IPR) are national rights
• European Patents are a bundle of national patents
  (Art. 64 (1) EPC)
• Patentee wants to concentrate enforcement in one
  action, even if infringement is in various
  countries

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• I. Strategic thoughts before filing an action
• Patentee or infringer?
• Forum shopping
• Determine your major markets
• Experience of the courts
• Duration of action until final decision
• Plea in objection Invalidity
• Request for damages
• Temporary relief

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• I. Experience of the courts (part 1)
• Exclusive patent courts (DE, GB, NL, FR, IT)
• Specialized patent courts? (DE and AT)
• Experience of courts (number of cases on the
  docket)
• Technical background of judges
• Predictability / reliability of decisions

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• I. Experience of the courts (part 2)
• United Kingdom
• experienced justices
• rapid proceedings (max. 1 year)
• Temporary relief available in some situations
• Validity is examined, tendency to revoke patents
• France
• experienced justices
• Proceedings last about 2 years in first instance
• Validity is examined (expert)
• Temporary relief rarely granted

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• I. Experience of the courts (part 3)
• Italy
• Tempory injunctions easy to achieve
• Slow trial on the merits with validity
  examination
• Cross-border torpedo
• Netherlands
• Experienced justices
• Short proceedings
• Extensive cross border jurisprudence

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• II. The old days
• Up to the early 1990ies
• Strictly national lawsuits
• Example
• EP validated in DE, UK, NL

3 separate lawsuits
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• II. The not so old days
• Cross border infringement injunctions first
  raised in 1994 in Düsseldorf, Germany
• From the mid 1990ies on extraterritorial
  (cross-border) jurisdiction
• Courts willing to give pan-European relief for
  infringement done outside of their jurisdiction
• Courts had different approaches (Germany, the
  Netherlands UK)

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• III.(1) The situation today (GAT v. LuK C-4/03)
• Facts of the case
• two French EP patents owned by German company
• Alleged German infringer files for declaratory
  judgement (I am not infringing, since your
  patents are invalid)
• Forum Regional Court (LG) Düsseldorf, Germany
• Jurisdiction???

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• III. (1) The situation today (GAT v. LuK C-4/03)
• Legal framework 1
• Art. 2 (1) Council Regulation (EC) 44/2001
• Subject to this Regulation, persons domiciled
  in a Member State shall, whatever their
  nationality, be sued in the courts of that Member
  State.
• Art. 5 (3) Council Regulation (EC) 44/2001
• A person domiciled in a Member State may, in
  another Member State, be sued in matters relating
  to tort, delict or quasi-delict, in the courts
  for the place where the harmful event occured or
  may occur. (forum delicti)

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• III.(1) The situation today (GAT v. LuK C-4/03)
• Legal framework 2 (But)
• Art. 22 (4) Council Regulation (EC) 44/2001
• The following courts shall have exclusive
  jurisdiction, regardless of domicile in
  proceedings concerned with the () validity of
  patents, trade marks, designs or other similar
  rights required to be () registered, the courts
  of the Member State in which the () registration
  has been applied for (or) has taken place.
• Recital 19 Council Regulation (EC) 44/2001
• 44/2001 is successor of Brussels Convention.
  Principle of Continuity.

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• III.(1) The situation today (GAT v. LuK C-4/03)
• Different versions of Art. 22 (4)
• English
• proceedings concerned with the registration
• German
• zum Gegenstand haben
• Other
• that have as their object
• Different interpretations,
  different consequences

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• III. (1) The situation today (GAT v. LuK C-4/03 )
• ECJ on July 13, 2006
• Article 16 (4) (now Art. 22 (4)) of the
  Convention () is to be interpreted as meaning
  that the rule of exclusive jurisdiction laid down
  therein concerns all proceedings relating to the
  registration or validity of a patent,
  irrespective of whether the issue is raised by
  way of an action or a plea in objection.

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• III. (1) Consequences of GAT v. LuK
• ECJ applies Art. 16 (4) / 22 (4) broadly
• Court has to declare I have no jurisdiction
  (Art. 25)
• Decision shall not be recognized (Art. 35 (1))
• Exclusive jurisdiction of the national (patent)
  courts
• Defendant / infringer can raise validity issue at
  any time in the course of the infringement
  proceedings
• No prorogation allowed (Artt. 23, 24)

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• III.(1) Further implications of GAT v. LuK
• Consider Lis pendens, Art. 27 Regulation (EC) 44
  / 2001 Court other than court seized first has
  to decline jurisdiction in favor of first court
• Abused as torpedo against infringement action
• ECJ Art. 22 (4) exclusive jurisdiction!
  Possible Once the validity issue is raised, the
  second court may decide not to stay his
  proceedings?
• Patentee can raise validity issue himself to stop
  torpedo

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• III.(1) Reasoning of the ECJ in GAT v. LuK part 1
• ECJ evades the language problem of Art. 16 (4) /
  22 (4)
• Argues with objective and schematic aspects only
• Sees risk of conflicting decisions
  (irreconcilable)
• Says courts and authorities in register state are
  closer to the factual issues
• Several member states have specialized patent
  courts

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• III.(1) Reasoning of the ECJ in GAT v. LuK part 2
• Wipes away the erga omnes / inter partes
  argument
• Erga omnes (counter) action Inter partes plea
  in objection
• That is national law (Germany and other
  Contracting States)
• Risk of contradictory decisions cannot be done
  away with by limiting extraterritorial
  jurisdiction to inter partes cases
• Would lead to distortions
• Would undermine equality/uniformity of rights and
  obligations
• European patents are national patents (arg. ex
  Art. 64 EPC)

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• III.(1) Criticism of GAT v. LuK part 1
• Jenard-Report on the Brussels Convention (OJ EC
  of March 5, 1979, No. C 59, 1, 36)
• Grant of patents is an act of national
  sovereignty. Hence, Art. 16 (4) of the Convention
  establishes exclusive jurisdiction in conflicts
  over the validity of patents. For all other
  proceedings, including patent infringement
  actions, the general provisions of the
  Conventions apply.
• Speaks for exclusive jurisdiction only in genuine
  nullity actions, but not for infringement actions
  with validity issues
• Perpetuatio fori

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• III.(1) Criticism of GAT v. LuK part 2
• Risk of diverging decisions increases with courts
  ruling over different national portions of EP
• ECJ
• Divergences arise in legal situations that are
  not the same. Not one patent (EP), but many
  national patents to which national laws apply
  (Art. 64 (1) and (2) EPC).
• Diverging decisions are neither contradictory
  nor irreconcilable.
• These results are inherent in the (current) system

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• III.(1) Applicability to all registered IPR part
  1
• Patents, trademarks, designs
• All IPR that can be registered
• National and European patents
• Community Designs
• CDReg. excludes applicability of Art. 22 (4) for
  actions brought against Community Design
• But Art. 22 (4) (excl. jurisd. in register
  state) applies, if owner of Community Design goes
  against national design
• CTM
• Only, if owner sues based on CTM
• Not, if invalidity of CTM is challenged (not a
  bundle of national trademarks as EP)

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• III. (1) Applicability to all registered IPR part
  2
• Only IPR registered within the EU
• Towards IPR registered in non-EU countries Art.
  2 Regulation (EC) 44 / 2001 (domicile)
• Hague Convention on Choice of Court Agreements

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• III.(2) Limitations International jurisdiction
  revisited
• ECJ of July 13, 2006 (Roche v. Primus)
• Facts of the case and basic situation
• Two US citizens jointly own EP. They sue a
  number of companies belonging to the Roche group
  spread over 8 different countries over patent
  infringement at one court in the Netherlands.
  Roche contested jurisdiction of Dutch court.

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• III.(2) Limitations International jurisdiction
  revisited
• Legal framework
• Art. 2 (1) Council Regulation (EC) 44/2001
• Subject to this Regulation, persons domiciled
  in a Member State shall, whatever their
  nationality, be sued in the courts of that Member
  State.
• Art. 5 (3) Council Regulation (EC) 44/2001
• A person domiciled in a Member State may, in
  another Member State, be sued in matters relating
  to tort, delict or quasi-delict, in the courts
  for the place where the harmful event occured or
  may occur. (forum delicti)

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• III.(2) Limitations International jurisdiction
  revisited
• Art. 22 (4) Council Regulation (EC) 44/2001
• The following courts shall have exclusive
  jurisdiction, regardless of domicile in
  proceedings concerned with the () validity of
  patents, trade marks, designs or other similar
  rights required to be () registered, the courts
  of the Member State in which the () registration
  has been applied for (or) has taken place.
• Art. 6 (1) Council Regulation (EC) 44/2001
• A person domiciled in a Member State may also
  be sued where he is one of a number of
  defendants, in the courts for the place where any
  one of them is domiciled, provided the claims are
  () closely connected ().

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• III.(2) Limitations International jurisdiction
  revisited
• ECJ on July 13, 2006
• Art. 6 (1) of the Convention () must be
  interpreted as meaning that it does not apply in
  European patent infringement proceedings
  involving a number of companies established in
  various Contracting States in respect of acts
  committed in one or more of those States even
  where those companies, which belong to the same
  group, may have acted in an identical or similar
  manner in accordance with a common policy
  elaborated by one of them. (Roche v. Primus)

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• III.(2) LimitationsInternational jurisdiction
  revisited
• Close connection must be present
• Between cases brought against plurality of
  defendants
• Also cross border, i.e., co-defendants domiciled
  in different countries?
• Dutch courts since 1998 Spider in the web
• Cross border jurisdiction assumed, if the main
  perpetrator of the European-wide infringement is
  domiciled in the State of the court (home
  defendant).

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• III.(2) Limitations International jurisdiction
  revisited
• The reasoning of the ECJ
• The EP bundle patents are national patents
• Enforced and defended in country of registry
• Art. 22 (4) exclusive jurisdiction (validity
  issue)
• No diverging decisions, because
• Different persons or entities
• Infringing activities done in different
  Contracting States
• Infringing activities are not identical
• Art. 64 (3) EPC

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• III.(2) Limitations International jurisdiction
  revisited
• Criticism
• Demand for concentration of actions of similar
  nature
• Costs
• Legal predictability / certainty

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• IV. Now Is the cross border really closed?
• ECJ has ruled, we have to apply
• cross border patent actions generally still
  possible
• Art. 31 Brussels Regulation 44/2001?
• exceptional cases in which validity issue not
  raised and
• company in the state of the court solely
  responsible for all infringing acts in other
  member states
• Community Patent
• EPLA

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• Thank you for your attention!
• Peter Beyer, LL.M. (Virginia)
• BEYER Patent- und Rechtsanwälte
• Am Dickelsbach 8
• D 40883 Ratingen
• Germany
• Tel. [phone]
• Fax [phone]
• peter.beyer_at_beyerlaw.de
• www.beyerlaw.de