English

IEF 7784

Stichting BREIN vs.M

Amsterdam District Court, Judgement in the Interlocutory Proceedings of 24 January 2008, Case Number / Cause-List Number: 384773 / KG ZA 07-2249 P/TF, (the Foundation) Stichting Bescherming Rechten Entertainment Industrie Nederland (Brein) versus M.

M. is the proprietor and administrator of the website www.ShareConnector.com. Visitors to ShareConnector could download the works referred to under 2.3. onto their computer in digital form through the website, using the eDonkey network.

“4.3 ShareConnector itself does not have any files at its disposal and also, therefore, cannot offer these files. M. – be this by himself or with other people – selects and indexes the files which are made available through the eDonkey network and then makes these selected files accessible through the eDonkey peer-to-peer network. It follows that M. does not publish these files himself. The fact that he facilitates third-party publication through ShareConnector does nothing to alter this. Any infringement of the Copyright Act and/or the Neighbouring Rights Act by M. has consequently not been proven.

 

(…) 4.5. The following circumstances are relevant here. The sole purpose of the website is to select files, from the cluttered range of unauthorised publications on the net, whose content has been confirmed as being correct and virus free. The users are then offered the possibility of downloading the files thus selected – conveniently subdivided into categories – by using the eDonkey network. M. is aware that approx. 95% of the files selected by him and his colleagues were published without the permission of the entitled parties. His website, therefore, systematically and structurally facilitates the downloading of files which have only been made available by infringing the rights of others. M. does not generate any revenue with this. It is only a hobby. It is, for the time being, sufficiently plausible that the interested parties are suffering damage because of the availability of unauthorised files on the Internet. Being of structural and systematic assistance to the practise of infringement – purely as a hobby and without regard for the interests of the entitled parties – is contrary to the due care which M. should exercise in his social and economic life and is consequently wrongful vis-à-vis the entitled parties whose interests are represented by BREIN.”

 

Read the entire judgement here (translation made available by Stichting Brein).

IEF 7782

Nokia vs. Qualcomm

Distric Court of The Hague, 14th november 2007, Nokia vs. Qualcomm, Case number: 287058/HA ZA 07-1470

Patent case. No exhaustion of rights. Nokia demands a declaration in law. The court only has jurisdiction for as far as the claims relating to the Dutch claims.

Nokia and Qualcomm signed a licensing agreement (the SULA) in which Qualcomm gave Nokia a licence relating to patents owned by Qualcomm for the use of WCDMA-technology. After the SULA expired Nokia continued use of the rights pertained in the SULA without remunerating Qualcomm. Qualcomm also has an agreement with Texas Instruments in which it is stipulated that parties won’t litigate against each other on matters concerning the production and sale of chips and chipsets. The grounds for this agreement lie in their patent rights. Nokia and Qualcomm also have disputes in Germany and Italy.

In short Nokia claims a statement to declare it to be law that all Qualcomm’s patent rights relating to chips and chipsets have been exhausted for the Dutch market. Furthermore it claims that because of the exhaustion in the Netherlands the patents should also be considered  exhausted in the EU and the whole EEC. The foundation for this claim is that the chips or chipsets bought by Nokia from Texas Instruments with Qualcomm’s permission have been put onto the European market. Qualcomm replied to this with motivation and invokes that the court has no jurisdiction regarding Nokia’s claims.

First of all Qualcomm invokes invalidity the of the writ of summons because it views it to be unclear and too unspecific. The invalidity defence does not succeed. The court considers:

“4.2 This plea does not succeed. Even though Qualcomm is correct that the writ of summons has a quite broad tenor, the claim and the grounds have been included sufficiently clear. Therefore, the writ of summons meets the requirements of article 111 paragraph 2 of Dutch Civil Code of Civil Procedure. Qualcomm unsuccessfully pleaded that it was not able to put up a decent defence and therefore is harmed in its interest. As appears from its defence in the Statement of Defence and during the hearing, Qualcomm on the contrary has understood the essence of the plea of Nokia apparently very well. The (possibly) broad tenor of the claim of Nokia is a question which should be answered within the framework of the discussion of the awardness of the claims, which is dealt with hereinafter.”


As regard to the jurisdiction of the court the court rules firstly that Nokia’s claims are a request based on article 53 ROW 1995 (Dutch patent law of 1995):

“4.5 () This declaration is, against the background of Nokia’s statements, substantively equivalent to and can be put into line with a declaration that certain acts, namely selling mobile phones containing TI chips, are not infringing Qualcomm’s patents rights valid in the Netherlands.”


Furthermore the court rules that a request for a declaration for it to be law of non-infringement is not the same as an injunction request (see consideration 4.5)

The court rules that it only has international jurisdiction for so far as the request is relevant for the Netherlands and this jurisdiction is not international by nature. Nokia’s claim taht exhaustion in the Netherlands causes exhaustion in the EU and EEC is not followed by the court:

“4.10 ()From the provisions of the EC Treaty or Article 94 of the Constitution no international (cross-border) jurisdiction can be derived. As considered in the above, the jurisdiction of the Dutch court is restricted to an assessment of whether Nokia’s acts are infringing the Dutch patents or the Dutch parts of the European patents from Qualcomm.  The assessment as to whether other than the aforementioned patent rights are exhausted must – in the absence of other reference points  – take place by the

court of the country of the foreign patent right (where the damage occurs). The Dutch court has in this respect no jurisdiction.”


Qualcomm’s second jurisdiction defence based on article 27 EEX-Vo also fails as the foreign procedures (in Germany and Italy) are based on different patents or on different claims or causes.

The court rules that the request for a declaration of exhaustion for the Netherlands is too broad and not specified sufficiently:

“4.15 ()the claim, has been formulated too broad and insufficiently specific. From the used formulation (“patents of Qualcomm that are realised through this chip”, see ground 3.2 under d of this decision) it cannot be determined whether the exhaustion has taken place.”

()

okia has refrained form specifying the patents of Qualcomm and the relevant claims thereof. Nokia has solely submitted one example, which furthermore solely regards an application (EP 1 239 465 A2). In addition it has not specified which specific products would be brought within the free movement of goods and what the exact configuration of these products would be, nor where it regards the chips of Texas Instruments, nor where it would regard Nokia’s own mobile phones.

()

Nokia has refrained form specifying the patents of Qualcomm and the relevant claims thereof. Nokia has solely submitted one example, which furthermore solely regards an application (EP 1 239 465 A2). In addition it has not specified which specific products would be brought within the free movement of goods and what the exact configuration of these products would be, nor where it regards the chips of Texas Instruments, nor where it would regard Nokia’s own mobile phones.

()

Nokia has also not specified which features of which patent(s)(claims) would read on which parts of the chips of the mobile phones. In view of the different types of possible claims – Nokia itself mentions apparative claims, process claims and system claims -  it is thinkable that there are many permutations. In view of the foregoing it is

unclear which type of claims in relation to which products may possibly be exhausted. Another thing is that it also depends on the type of claim whether or not (implicit) consent has been given by the patentee for the placing of the products within the free movement of goods, for so far the TI patent portfolio agreement would contain such consent, that which Qualcomm has contested. Therefore, the by Nokia chosen general formulation of the claims are not allowable.”


Finally, the matter of compensation of procedural costs. Even though Nokia is ordered to pay the costs of the procedure as the losing party, cost are calculated at the standard rate, as Qualcomm did not fully justify its claimed costs. Qualcomm did not provide a specified account of its incurred costs.

Read the entire judgement here.

IEF 7778

Danziger Dan Flower Farm vs. Biological Industries Plant Propagation Ltd. c.s.

District Court of The Hague, 7 september 2007, KG ZA 07-731, Danziger Dan Flower Farm vs. Biological Industries Plant Propagation Ltd. c.s.

Plant breeder’s rights. Lie detectors and mutants. Partially because there is a high genetic resemblance between Bambino and Million Stars (a resemblance which is remarkably bigger than between the other non-mutated gypsum herb species), this indicates a devolved species and thus infringement. Procedural cost compensation is reduced.

 

 

Read then entire judgement here.

IEF 7776

Ajinomoto Co. Inc. c.s. vs. Global Bio-Chem Technology Group Company Ltd c.s

District Court of The Hague, 22nd August 2007, HA ZA 06-2131. Ajinomoto Co. Inc. c.s. vs. Global Bio-Chem Technology Group Company Ltd c.s

Short summary of a biochemical patent case with several interesting legal aspects.

Because the bacteria’s complete DNA-sequence was not present in the used end product it was difficult for the claimant to prove infringement of it’s patent. That proof was given through gene sequencing analyses of the DNA fragments which were present in the L-Lysine. The Court dismisses GBT’s defence, as it did not definitely conclude that what was claimed was a completely modified gene-sequence. The evidence, which was offered, makes the claimed highly likely and a apposing explanation has not been offered.

Read the entire judgement here.

IEF 7767

Adani vs Odmedical B.V.

District court of The Hague 2 augustus 2007, Rolnummer KG ZA 07-1259, Adani vs Odmedical B.V.

Granting of the preliminary injunctions due to breech of an agreement determining the legal relationship between parties and breach of Adani’s trademark and copyrights. Acting in bad faith. Agreement determining the legal relationship over IP-rigths. Refund of costs incurred in the proceedings

In 1999 Adani marketed a body scanner named CONPASS. This scanner is in use at, amongst others, airports and prisons for the detection of weapons, plastic explosives, diamond and drugs. In eptember 2005 Adani registered the image trademark CONPASS and in July 2006 the word CONPASS as a trademark. Odmedical, a competing company, also marketed a body scanner. Adani and Odmedical were in dispute over whether Odmedical infringed on Adani’s trademarks and copyrights with regards to the CONPASS body scanner. To end the dispute parties agreed on a Agreement determining the legal relationships their IP-rights on the 8th of September 2006. In this agreement Odmedical distinctly recognised Adani’s IP-rights and declared not to infringe these rights.

After signing the agreement Odmedical offered advertisements of it’s bodyscanner, named SOTER RS security. These advertisements consisted of a CD-ROM on which test reports, test-certificates, licences, images and other documentation were stored. This documentation actually contained information on the CONPASS-bodyscanner. These document were also offered on Odmedical’s website as were images made by the CONPASS scanner. Adani claims Odmedical is in breech of the agreement of the  8th of September 2006 as they were infringing upon IP-rights held by Adani. These actions could also be seen as misleading and as illegitimate comparative advertisements as per the arts. 6:194 and 6:194a BW (Dutch Civil Code).

Odmedical claimed in defence that the information published on their website had been forgotten to be removed. Because of this oversight Odmedical’s dealer in Dubai, TSSS, was able to put the information on a cd-rom and thus the information of the COMPASS-scanner and the SOTER-RS scanner ended up being mixed up on the cd-rom. Odmedical however claims that this is not a case of comparative advertisings as the volume of cd’s was limited to  between 10 and 20 cd’s. Moreover Odmedical states it cannot be held responsible for the actions of it’s dealers. If this would be a case of breech of contract the infraction would be so minor and insignificant that Adani would not be able to claim damages as a result of this breech. Odmedical claime it is a case of a stupid mistake made by Odmidical that barely has any consequences for Adani, let alone causing Adani damages.

The primary relief judge disagrees. Based on the material (printed material, the website and CD-ROM) provided by Adani the court finds is Odmedical infringing on the COMPASS (visual) trademark. Also Odmedical uses images of the CONPASS-bodyscanner and Odsecurity’s logo is depicted on the cd-rom. Printed material containing Certificats/Reports/Approvals of the CONPASS-bodyscanner were also supplied on the cd-rom promoting the SOTER RC-bodyscanner as were images made by Adani’s scanner promoting Odmedical’s scanner.

The court rules that Odmedical’s reason for publishing the materials on their website is highly unlikely and in any case so careless and thoughtless that it can be seen as an act of bad faith. Especially because party’s had previously has a disagreement with regards to copy- and trademark rights and as such has agreed upon an Agreement determining the legal relationship over their IP-rights. This means that Odmedical can be expected to be extra careful when it comes to Adani’s IP-rights. This carefulness should, amongst other things, consist of keeping close checks upon it’s distributors and their actions. This has not been the case and, as such, the court will ignore Odmedical’s argument that it is not responsible for the actions of it’s distributor, especially TSSS.

In conclusion Odmedical claims, with regards to compensation of incurred legal costs, that in this case the dispute concerns a breech of an agreement determining the legal relationship and not infringement of IP-rights. The court ignores this statement as the agreement has as it’s purpose to protect Adani against infringement it’s of IP-rights.

Read the entire judgement here.

IEF 7759

Abbott Laboratories vs. Teva Pharmaceuticals Europe et al.: Principle claims

Primary relief proceding at the Distric Court The Hague 25th july 2007. Case number KG ZA 07-623, Abbott Laboratories vs. Teva Pharmaceuticals Europe et al.

An important judgement on question of what should be regaurded as the principle claims when applying articles 1019 f. and 700 subsection 3 Rv. (Dutch Code on Civil proceedings).

Abbott GmbH & Co KG (not a party in this case) holds the European patent and an additional protection certificate for the medical indication of a specific form of the substance sibutramine for the treatment of obesity. Because of a (claimed) danger of infringement by Teva, Abbott has, as per arts. 1019b, 1019c, 1019d in conjuntion with arts. 700 and 709 Rv (Dutch Code on Civil procedure), levied prejudgement attachments upon Teva. Amongst the documents seized by Abott were several digitally kept documents and files stored on Teva’s servers.

Abbott claims in the principle action access and copies of the documents held by the bailiffs as per arts. 1019a in conjunction with 843as Rv. In a counter claim Teva claims immediate removal of the attachments as well as several secondary claims.

The primary relief court repeals the attachments levied by Abbott.

The relief court judges the attachments to be illegitimate. Primarily because in their statement of claim for the attachments Abbott neglected to state that they were acting on behalf of the patent holder Abbott GmbH & Co KG.

The other grounds for the attachments have no merit either. The relief court considers that the threshold for admissibility of the prejudgement attachments as per arts. 1019 f. Rv needs to be interpreted loosely in interlocutory proceedings. This threshold in this case, has not been reached. Abbot has provided in sufficient proof of infringement by Teva.

As a third reason for a withdrawal of the attachments the relief court mentions Abbott has not commenced the principle proceedings in time. Abbotts causes of action in principle cannot by viewed as a primary case in the sense of arts. 1019 f. in conjunction with 700 subsection 3 Rv. Firstly, the relief considers that these proceedings:

“must be interpreted such that infringement proceedings are “meant to be principal proceedings”, not just proceedings pursuant to Section 1019a in conjunction with 843a of the Dutch Civil Code, as they were initiated in these preliminary relief proceedings (5.6)”

Secondly, as per arts. 50 subsection 6 TRIPs, this injunction case should have been an action on the merits, not in interlocutory procedure. The primary relief court consider to this effect:

“5.7. The preliminary judge leaves aside the fact that Section 1019i of the Dutch Code of Civil Procedure requires that principal proceedings as referred to in Article 50(6) of the TRIPs Agreement are initiated within a reasonable period of time. Although for normal prejudgment seizure, preliminary relief proceedings may constitute a claim in the principal proceedings, this cannot hold true for the present seizures (for evidentiary purposes). After all, according to case law of the EC Court of Justice (16 June 1998,C-53/96, HermeÌs) Dutch preliminary relief proceedings themselves must be considered as preliminary relief measures in the sense of 50 TRIPs, which is incompatible with the idea that the same preliminary relief proceedings as part of the seizurelevied were to be considered as principal proceedings in the sense of that same Article. Since Abbott failed to initiate proceedings on the merits within the period stipulated by the preliminary relief judge (to the extent that this should be regarded as a period inthe sense of 50(6) TRIPs) or within the period of 31 calendar days or 20 work days as indicated in 50(6) TRIPs, and since Teva et al. have requested that the seizures be lifted, the curtain comes down on the seizures levied."

 

Abbott’s claims are denied. Teva’s counter claims are allowed. Abbott is ordered to pay Teva’s cost in these proceedings amounting to 91.993,00 Euros; this includes an amount for solicitor’s costs, which Abbott had not challenged. Also the counter claimed conditional judicially imposed fine of 75.000 Euros a day on Abbott in awarded.

 

Read the entire judgement here.

IEF 7751

Applera Corporation vs. Stratagene Corporation cs: Cross border injunctions

District Court of The Hague 13th july 2007 Applera Corporation vs. Stratagene Corporation cs:

 Patent law. The patent is valid and infringement has not been challenged. No cross border injunction. No injunction on secondary/ indirect infringement. Costs relating to evidentiary attachments are granted even though infringement is not challenged. At the time the attachments were ordered the claimant could reasonably fear a substantial breech defence. Secondary claims are granted in interlocutory proceedings.  

Applera has, after not yet fully completing opposition proceedings, a European patent for an installation to follow a polymerase chain reaction (PCR) for nucleic acid amplification reaction at multiple temperature cycles.

 

Startegene cs offers the MX3000p, Mx3005p and the Mx4000 quantitative PCR systems via their website. Applera takes the view that Stratagene’s systems infringe their patent rights. First of all Applera has levied evidentiary attachment for the Dutch defendants and described the infringing products. Secondly they summoned Stratagene in an interlocutory proceeding so as to demand a ban on direct infringement (and secondary claims).

The primary relief court describes the technical field of the invention extensively before discussing the actual content of the issue.

Startagene’s defence is centred around the premise that there is a real and serious chance that Applera’s patent applications will be struck down once the opposition procedure is continued. Stratagene offer three reasons for this.Violation of article 76 (1) EOV (European Patent treaty); Lack of novelty as regards to Van Otten’s Thesis and D3; a lack of inventiveness also in view of the afore mentioned thesis.

Stratagene cs have taken the view that the patent, which is a derived application from an expansion of the subject matter, compared to the earlier application. This is in breach of article 76 sub section 1 EOV. The appeals chamber ruled on this issue (G1/05). The derived applications can be adjusted during the proceedings and are limited to the subject matter of the original application. The derived applications are validly made even when the expansion of the subject matter as regards to the earlier applications. The primary relief judge ruled that in the light of the decision of the Chamber of appeals that the continued patent opposition will not be automatically struck down in case of breach of article 76 subsection 1 EOV.

The primary relief court does not view Van Otten’s thesis as being novel or a danger to inventiveness.

The interlocutory proceedings are, as far as the provision of evidence is concerned, not the most suitable type of legal proceedings. In view of these facts the primary relief court could do no more than refer to the earlier judgement of the Technical appeals chamber of this point. D30 is not viewed as being a danger to the novelty, as it is not beyond reasonable doubt that the document was published.

All of the above led the primary relief court to conclude that Stratagene cs is in breach of Applera’s patent.

The cross border injunction is denied, as Applera has not made it apparent that the patent has been validated in all of the countries where the injunction is requested. Even less clear was the information concerning the extent of the patent in these countries. At this time the relief court takes the view that only in Holland the deed of partial surrender of a patent has been registered.

The injunction against the indirect breach is also denied because Appelera has insufficiently proven that products provided by Stratagene are suitable and destined for application with the patent.

The costs incurred by Applera with regards to the evidentiary attachments are allowed even though Startagena does not argue infringement. At the time of the attachments Applera had reason to consider a fundamental patent breach defence.

Read the entire judgement here.

IEF 7729

Synthon vs. Astallas Pharma: Cross border evidentiary- and descriptive attachment

Arnhem District Court, 1st  june 2007, KG ZA 07-304. Synthon B.V. vs. Astallas Pharma Inc.

Cross border evidentiary- and descriptive attachment (artt. 1019b-d Rv.) in a pharmaceutical patent case.  Astallas Pharma inc had an evidentiary- and descriptive attachment made in order to secure proof in a case about a German medical patent. Immediately after the attachment Astellas’s bailiff, solicitor and patent agent gained access to the attached patent and information contained in it. They made a report of this information. This report was subsequently used in the German case.

The Arnhem District court first answered the question whether or not the evidentiary and descriptive attachment rules laid out in articles 1019 f. Rv (Dutch Code on Civil Procedure) were applicable in obtaining and retaining evidence in cases concerning foreign IP rights infringements. Synthon pointed to the text of article 1019 f Rv, to the explanatory memorandum to the act and to the second article of the Enforcement Directive, all of which seem to point out territorial limitations of these provisions. The District Court Judge, however, ruled the rules do apply. Referring to paragraphs 7 and 8 of the memorandum to the Enforcement directive and to article 31 of the EEX-treaty and article 24 of the EEX-directive.

 “4.5 With all this, it is irreconcilable that in the case of cross-border infringements as the current matter for enforcement in a member state no use could be made of the (enforcement) possibilities provided in the national laws of another member state for the implementation of the Enforcement Directive.”

The court considers that the prejudgement attachment is executed with the end to conserve an existing situation and not to give the person levying the attachment a possibility to learn what is in the patent or keep this as evidence. The court considers that it is for a different procedure on merits to rule on what should happen to the evidence subsequently. A decision to allow an attachment does not automatically contain the right of inspection (4.13).

The court also states, in consideration 4.14, that in case of a descriptive attachment, the description has to be made by a bailiff and not by the person levying the attachment (or their solicitor or patent agent). Such a description has to be limited to a description of what has been examined so that it is identifiable at a later stage. Thus the distribution may not contain detailed information. (Consideration 4.15).

Read the entire judgement here.

 

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