Background
The South Korean company Hanwha Solutions Corporation owns a patent relating to specific solar technology. The patent is in force in various European countries, but not in the Netherlands. Hanwha had requested the Provisions Judge of the District Court of Rotterdam permission to levy a seizure of evidence and seizure for surrender with respect to several solar panels that LONGi (Netherlands) Trading B.V. – a Dutch warehousing and distribution entity of the Chinese solar technology company LONGi Green Energy Technology – stored in the Netherlands and that it offered for sale in various countries. Hanwha levied the seizures after receiving permission thereto from the Judge.
LONGi then brought proceedings for the lifting of the seizures before the Rotterdam Judge. In the same proceedings, Hanwha inter alia counterclaimed for (i) a cross-border patent infringement injunction and (ii) an order against the Dutch LONGI entity not to act unlawfully against Hanwha by inducing, promoting, facilitating and (knowingly, systematically and recklessly) benefitting from patent infringement in the countries where the patent is in force. The latter order was granted by the Judge in the decision of 1 October 2021.
Decision
The Judge accepted competence to hear Hanwha’s claim for a patent infringement injunction on the basis of Article 35 of the Brussels Regulation (EEX) (recast). The Judge considered that he is internationally competent on the basis of national law, since the Dutch LONGI entity is domiciled in the Netherlands. Furthermore, a “real connecting link” exists between the subject-matter of the measures sought and the territorial jurisdiction of the Dutch court.
Although no patent was in force in the Netherlands, the Judge deemed it sufficiently plausible that the Netherlands functioned as a distribution country for the LONGi Group, in particular for Europe. The activities of the Dutch LONGi entity are directed towards storing the solar panels manufactured in China, in order to sell these in Europe. The Judge held that it was plausible that exports from the Netherlands would be made to European countries where Hanwha’s patent is in force.
However, the Judge did not accept cross-border competence for this claim in view of Article 24(4) EEX (recast). This article provides that in proceedings concerned with the registration or validity of patents, the courts of the Member State in whose territory the registration has taken place shall have exclusive jurisdiction. As we will explain in the comment section below, this part of the decision is not in line with case law of the Dutch Supreme Court.
The Judge did accept cross-border competence to hear Hanwa’s claim for an order not to commit unlawful acts on the basis of Article 4 EEX (recast), since the Dutch LONGi entity is domiciled in the Netherlands and the harmful events occur in the Netherlands. The Judge found it sufficiently plausible that eventually, infringements of the patent in the foreign European countries would take place, and granted the claimed cross-border order against the Dutch LONGi entity not to commit unlawful acts in said countries.
Sales, deliveries and related acts to foreign customers in the countries where the patent is in force are regarded as unlawful vis-à-vis Hanwha, because they enable or promote, or at least considerably facilitate, patent infringement. The order covered nine countries but did not also cover the Netherlands, as the patent was not in force in the Netherlands.
Comment
This decision was rendered by a Judge of the District Court of Rotterdam rather than a Judge of the District Court of The Hague, which is normally competent in patent cases. In the case at hand however, the main action concerned a claim for the lifting of seizures levied in Rotterdam, which is not within the exclusive competence of the Court of The Hague. The counterclaim that was based on unlawful act likewise is also not within the exclusive competence of the Court of The Hague.
The Judge’s consideration that there would not be cross-border competence with respect to the patent injunction claim is not in line with existing case law of the Dutch Supreme Court. The Dutch Supreme Court held, in its decision in Roche/Primus of 30 November 2007, that the Dutch Court does not lose cross-border competence only because an invalidity defence has been put forward. In proceedings on the merits, the handling of the cross-border part of the claimed injunction would need to be stayed pending the foreign Court’s decision on validity. In preliminary proceedings, the cross-border part of the proceedings do not need to be stayed. As the Judge in preliminary proceedings does not carry out any definitive assessment of the foreign patent right, Article 24(4) EEX (recast) does not prevent the Judge from issuing a cross-border injunction in preliminary proceedings.
The consideration of the Judge’s that there is cross-border competence with respect to the unlawful act claim is in line with existing case law.This part of the decision confirms that in the Netherlands it is possible to obtain a cross-border order against a Dutch entity in preliminary proceedings, even if there is no patent in force in the Netherlands.
Authored by Ruud van der Velden and Stefan Dusault
