English  

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.

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.

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.

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.

IEFenglish

The Court of Appeal of Amsterdam, 15 June 2006, Judgment in the summary proceedings, in the case between Stichting Brein and Techno Design “Internet Programmering” B.V.

"It must be pointed out that Techno Design obtained income from its search engine. Its income from advertising increased as it attracted more visitors to its website, and it had a larger market for the ringtones it was offering for sale. The number of visitors depended on the scope which its search enige offered for finding mp3 music files, largely unauthorised mp3 music files: more links to mp3 music files meant more visitors. Techno Design therefore not only enabled its visitors to download unauthorisex mp3 music files, it went one step further: its enterprises or the turnover made therewith was largely based, or at any rate to an important extent based on the availability of unauthorisex mp3 music files."

"The conclusion that Techno Design is acting tortiously is not impeded by the fact that it warned its visitors against downloading unauthorised mp3 music files. That warning is inadequate, as it wrongly ignores the reality – of which Techno Design was aware – that most of its visitors were looking for unauthorised mp3 music files and that they tended to completely ignore such a warning. Techno Design was therefore nog entitled to assume that its warning would prevent an infringement of copyrights and neighbouring rights."
"Finally, the fact that it is not yet easy, technically, to ensure that a search engine distinguishes between authorized and unauthorised mp3 music files under the conditions in which Techno Design operatesd does not give Techno Design any relevant excuse for its actions."

Read the entire judgment here (judgment made available by Bas Vissers, Stichting Brein).

IEFenglish

District Court Zwolle/Lelystad, 14 March 2007, Stokke A.S. versus Marktplaats B.V. (a Dutch subsidiary of Ebay)

Copyright. ISP's. In its decision the court judges that Marktplaats may not be required to register the name, address and residence of all users of Marktplaats and neither of users who place an advertisement with regard to a Stokke product.

According to the court, Stokke's interest in these data is limited. Registering personal data of every Marktplaats user may not be required of Marktplaats because of the consequences this will have on Marktplaats' business operations. Furthermore, implementing a filter and registering personal data of users who place an advertisement with regard to a Stokke product, will cost Marktplaats a more than negligible amount of money and will impose an obligation on Marktplaats to implement such a filter for other rights holders as well. The limited interest of Stokke with regard to the data does therefore not equal out the interest that Marktplaats has in not implementing such a filter.

The court therefore denies all Stokke's claims.

Read the entire judgment here (judgment made available by Christiaan Alberdingk Thijm, Solv).

IEFenglish

The Hague District Court , 17 January 2007, HA ZA 06-261. Conor Medsystems Inc. versus Angtiotech Pharmaceuticals Inc, the University of British Columbia and Boston Scientific Corporation.

Patent law. Partial decision on the validity of and infringement upon the patent by Angiotech and the University of British Columbia (the ‘Hunter-patent”). The patent concerns so-called Drug Eluting Stents (DES). Problem-solution method, partial nullification (Spiro/Flamco), research exception, Bolar-stipulations, moratorium.

In this 33 page judgement the court for a second time renders its opinion on the validity of the Hunter patent. In an order by the court dated 3 May 2006 in the matter Angiotech/Sahajanand the court had ruled that conclusion 6 and 12 of the patent are valid and that Sahajanand had infringed on the patent with its Infinnium-stent. The court did not render a decision with regard to the other patent conclusions.

In this case Conor claims nullification of the patent for the Netherlands. Angiotech c.s. counterclaim a ban on infringement with ancillary claims, among other a moratorium of three years concerning the in the Netherlands unlawfully gained research data for the purpose of a request for CE-authorisation.

Validity

According to the court conclusion 1 of the patent is in its present form non-inventive. According to the court, the invention, in short, sees to the application of, specifically, taxol (paclitaxel) as a drug for a in itself familiar Drug Eluting Stent. The use of taxol should solve the problem of recurring ingrowth of body material. It concerns first and foremost the problem or recurring ingrowth of tumours/cancer tissue and secondly the problem of restenosis. Taxol does however not provide an inventive solution for the problems of ingrowth of tumours/cancer tissue. See consideration sub 4.8 of the judgement.

The court does consider the invention inventive in as far as the taxol-stent offers a solution for the problem of restenosis. The specific application for restenosis is only found again in conclusion 12 of the patent. The court extensively addresses the inventiveness of this conclusion (with application of the problem-solution method) and concludes that this conclusion is also valid. The court refers the case to the docket for further written brief concerning the possible partial upholding of the patent taking into consideration the criteria of the Spiro/Flamco-judgment (NJ 1998/2).

Infringement

The court considers that the CoStar-stent and the Medstent by Conor fall under the scope of protection of the patent and there is sufficient serious threat of infringement. Conors appeal to the research exception fails. The trials sponsored by Conor which have taken place in the Netherlands according to the court do not have a pure scientific aim. The court considers it adequately proven that the Conor used the research results in order to obtain the CE-marking, while Conor was unable to make it sufficiently plausible that the trials were directed exclusively towards research for an improved stent. Conors appeal to the Bolar-stipulations also fails, merely because the trials were executed at a time that the implementation term of Directive 2004/27/EC had not yet lapsed. Apart from a ban on infringement, the court sees no room for a 3-year moratorium as claimed by Angiotech.

Read the entire judgment here.

IEFenglish

Court Of The Hague, 5 January 2007, Judgment in the summary proceedings, in the case between Stichting Brein and KPN Telecom B.V.

Torrent files of e.g. films, music and software were being offered on a bit torrent website. The website owner has a contract with KPN. Stichting Brein requested the Court to order KPN to disclose the name and address details of the website owner and to disconnect the current ADSL connection of the contracting party in question and any other Internet connection to be used by that party for that website or for a similar website.

In the opinion of the Summary Proceedings Judge, the actions of the website owner are wrongful, not because the website owner is infringing the copyrights or neighbouring rights vested in the rightful owners, but because its actions conflict with the due care to be observed towards the rightful owners. It is facilitating structural infringement of copyrights and neighbouring rights. The Summary Proceedings Judge orders KPN to provide Stichting Brein with the name and address details of the website owner and to disconnect the ADSL connection of that contracting party if it again places the website in question or a similar website on the Internet via that Internet connection.

Read the entire judgment here (judgment made available by Bas Vissers, Stichting Brein).

IEFenglish

Supreme Court of the Netherlands, 22 December 2006, No. C05/200HR. Appellant in cassation versus Saier Verpackungstechnik Gmbh & Co. Kg.

Patent law: In this case the Supreme Court has ended a difference of opinion between the court of first instance and the court of appeal.

The court of appeal held that if the meaning of the wording of the claim (with the help of description and drawings) is clear that the alleged infringer cannot refer to the file wrapper arguing that such meaning is contrary to (broader than) the meaning which the patentee forwarded during the prosecution in order to be able to secure a patent (“file wrapper estoppel”).

The Supreme Court rules that the “clarity” rule only applies if the patentee wants to invoke the prosecution history but not in a situation where the alleged infringer invokes file wrapper estoppel.

Read the entire judgment here (translation made available by Willem Hoyng, Howrey).

IEFenglish