National
and International Law
Patent Law . FRANCE
Brussels
Convention, Art. 21; New Code of Civil Procedure,
Art. 100 – "Italian Torpedoes"
In a case where a
patentee has started infringement proceedings in France by filing a request for a saisie-contrefaçon prior
to an action of the defendant in Italy, the attempt to suspend the French
action by filing an action for declaratory judgment in Italy constitutes an abuse of the procedure.
Decision
of the Paris District Court (Tribunal de Grande Instance)
March 9, 2001 – Case No. 00/04 083
Schaerer Schweiter Mettler A. G. v. Fadis S. p. A.
From the Facts:
Schaerer Schweiter Mettler
A.G. (hereinafter SSM) is holder of European patent No. 453
622 designating in particular France and Italy, filed on
April 23, 1990 and granted on February 15, 1995. This
patent relates to a method and apparatus for winding yarn on a bobbin.
Following search and seizure
proceedings on June 5, 1999, Fadis S.p.A. was summoned before this
court, by an order served on June 16, 1999, for the purposes of judging acts of
infringement of patent No. 453 622, as claimed by the French patent
proprietor.
Fadis relies on Art. 100 of
the New Code of Civil Procedure and Art. 21 of the Brussels Convention. It
argues that claims lodged by SSM
cannot be admitted by this court because of lis pendens existing between
this case and the case brought on June 17, 1999 before the Milan District
Court.
SSM objects that
lis pendens cannot
exist between these actions as they do not involve the same
cause of action and that the action brought before the Italian court cannot
provide a remedy for the acts of infringement committed in France.
Finally, in pleadings filed
on January 8, 2001, Fadis raises, as an ancillary claim, a defence on
the grounds of the related nature of the actions.
From the Opinion:
On
the Motion for Reconsideration of the Closure of Proceedings
On January 8, 2001 Fadis
filed new pleadings and requested the reconsideration of the closure of
proceedings of November 3, 2000. However, this company mentions no fact
able to constitute a serious cause likely to justify the reconsideration of the
closure of proceedings. It is proper to dismiss this motion and to declare
inadmissible the pleadings filed on January 9, 2001.
On
lis pendens
Fadis relies on the provisions of Art. 100 of the
New Code of Civil Procedure and Art. 21 of Brussels Convention. These last provisions
govern the cases of lis pendens
which affect two courts of Contracting States in the
following words: "Where pro-
ceedings involving the same
cause of action and between the same parties are brought
in the courts of different Contracting States, any court other than the
court first seized shall of its own motion decline jurisdiction in
favour of that court."
The defendant cites
comments and decisions of Italian courts from which it results that, in
application of Art. 39(3) of the Italian Code of Civil Procedure, the date
taken into account to determine the date proceedings commenced before an
Italian court is the date of notification of the writ of summons. In accordance
with Art. 757 of the New Code of Civil Procedure, a French court is seized by
filing the summons with the clerk. The Milan District Court was therefore
seized on June 17, 1999, i.e. before the
filing of the summons by the clerk of this court, although it was, however,
delivered on June 16, 1999.
Lis pendens presupposes
that the same litigation (opposing the same party, involving the same cause of
action) is submitted to two judges, who have equal jurisdiction to determine
the case.
Fadis concomitantly seized
the Italian court of an action for invalidity of the Italian part of the SSM
patent and of a claim aiming to declare, according to the produced translation:
“that Fadis” activity, of production, sale ... (of apparatus at issue) does not
infringe any valid right which can belong to SSM on the basis of its European
patent in its Italian part as well as in its other parts" (its French part
in particular).
If such a claim proceeds from the
same cause of action as that for which the court is seized, it remains that the
imprecision of its formulation as translated somewhat creates a certain amount
of confusion.
In fact, since determining the
existence or the non-existence of "the infringement of a
valid right" is the issue
here, the court, without substituting itself for the evaluation that the
Italian judge will make about his own jurisdiction, can only note that pursuant
to Art. 16(4) of the Brussels Convention only the French judge has jurisdiction
to determine the validity of the French part of the patent.
Notwithstanding these
remarks and on the assumption that the Italian judge is only seized of a
finding of non-infringement, several elements concerning the way the
proceedings were initiated authorize the court not to apply Art. 21 of Brussels
Convention relating to lis pendens,
since the reference to this Article is an evident
abuse, namely, particularly in view of the general purpose of
simplification and acceleration of proceedings and enforcement,
which is recited in the preamble to this Convention.
In
fact:
1)
Fadis, before bringing its action
béfore the Italian court, was subject to a saisie-contrefaçon
(search and seizure) in France at the request of SSM,
and was there-fore perfectly aware that SSM was obliged
to bring an action before this court within 15 days, pursuant to Art. L 615–5
of the Intellectual Property Code.
2)
Simultaneity of the proceedings in
France and in Italy (service of the French summons
was even slightly prior to service of the Italian summons, albeit that the
former was recorded by the court slightly after service of the latter) makes it
somewhat artificial to determine which court was actually the first seized.
3)
Fadis refrained from raising a
defence before the French court based on invalidity of the patent in suit
(although it had raised such a defence in prior interlocutory injunction
proceedings) because it was well aware that such a defence was in the exclusive
jurisdiction of this court.
Thus,
Fadis has tried abusively to suspend any action for infringement in France and
to consolidate before the Italian court several actions for declaration of
non-infringement that involve all the countries where the patent is applicable,
thereby creating complex proceedings in which as the plaintiff it could more
easily direct its own course.
Therefore lis pendens shall be dismissed.
Kindly submitted by Mr. Pierre
Véron and translated by Ms. Peggy Decock, translator with his
firm.
Comment:
Italian Torpedoes: An Endangered Weapon in French
Courts?
In
a judgment delivered on March 9, 2001, the Paris District Court has shown a
negative attitude toward the so-called "Italian torpedoes": it
decided to refuse to transfer a case for infringement initiated before it to
the Milan District Court, although the latter court was first seized of an
action for declaration of non-infringement of the same patent.
The
well-known torpedo strategy in international patent litigation consists, for
the party fearing to be sued for infringement of a European patent in one or
several foreign courts known to deliver prompt and efficient judgments, to
initiate proceedings for declaration of non-infringement before a court of its
choice, sometimes a court with a heavy docket and, therefore, slow progress in
hearing cases.
The
action for declaration of non-infringement, being the first action, creates a
lis pendens that in the context of the Brussels and Lugano
Conventions obliges under Art. 211 "any
court other than the court first seized [to] of its own motion stay its
proceedings until such time as the jurisdiction of the court first seized is
established" (the second sentence of Art. 21 stipulates that if the court
first seized eventually decides that it has jurisdiction over the claim, then
any other court must transfer the case to the court first seized).
Italian torpedoes already have a
heavy judicial record, since the courts of several European countries have had
to decide:
— in
which countries an action for a declaration of non-infringement could be
validly pursued (which raises the problem of jurisdiction to decide a case of a
negative declaration and also the problem of admissibility of such action
vis-à-vis local legislation),
—
what would be the effect of the
action for a declaration of non-infringement on the action for infringement
initiated thereafter.
The judgment handed down on March 9, 2001 by the Paris
District Court dealt with the latter question.
In essence, the court held that
starting an action for a declaration of non-infringement for the mere purpose
of suspending proceedings for infringement was an "evident
1 Art. 21 of the Brussels Convention will become, without any changes,
Art. 27 of EC Regulation No. 44/2001,
which
will come in force as of March 1,
2002 between
the EC Member States (except Denmark).
2 For
the situation in France,
see PIERRE VÉRON: "Torpedoes
Miss Their Mark in France",
Patent World, June/July 1999, at 10.
abuse"
and therefore refused to stay these proceedings until
the decision of the court seized of the action for
declaration of non-infringement is handed down.
The Facts and the Judgment
The Swiss
company Schaerer Schweiter Mettler A.G. (SSM), owner of European patent No 453
622 for a method and apparatus for winding yarn on a bobbin, decided to sue the
Italian company Fadis for patent infringement. Apparently, SSM initiated
the proceedings in France
by having a saisie-contrefaçon (search
and seizure proceedings for obtaining evidence of infringement)
performed on June 5, 1999. Ac-cording to the French rules of
procedure, the patent owner must sue for infringement within 15
days of the saisie-contrefaçon: should he
fail to initiate proceedings the saisie is
invalid. Therefore Fadis, the Italian company, knew
that SSM was about to sue it before the French courts
within 15 days after the June 5, 1999 saisie, i.e.
before June 20, 1999. Actually, on June
16, 1999, SSM served summons before the Paris District Court against Fadis for
an action for infringement of the French part of EP 453 622.
However,
on June 17, 1999, Fadis served summons before the Milan District Court against
SSM for an action for declaration of non-infringement of EP 453 622, " for
its Italian part, as well as for the other national parts". Fadis
contested the jurisdiction of the Paris District Court and requested it to stay
the proceedings until the jurisdiction of the Milan District Court over the
action for declaration of non-infringement is determined.
In its
judgment of March 9, 2001, the Paris court decided that there is no lis
pendens since the action for
declaration of non-infringement is an "evident abuse", an attempt
to delay infringement proceedings.
To reach such a conclusion, the Court had to deal with two issues:
–
which was the court first seized?
–
assuming the Italian court was the
first seized, was there any possibility for the French court to refuse to
transfer the case to the Italian court?
Which Court Was "First Seized"?
Article
21 of
the Brussels Convention apparently leaves no room for choice: the court
first seized must keep
the case, which leads to pre-emptive strikes (is "shoot
first" the correct translation of "jura
vigilantibus succurrunt", the
law helps those who remain vigilant?).
In the SSM
v. Fadis case, the chronology seemed to favour the Swiss
company that shot first, since the summons for infringement in the Paris court was served on June 16, whereas
the summons for declaration of non-infringement in the Milan court was served on June 17. However
Art. 21 of the Brussels
and Lugano Conventions does not refer to the date of the summons, but to the "court
first seized".
Although
the Italian and French Codes of Civil Procedure are similar in many respects,
they differ here:
–
Art. 39–3 of Italian Code of Civil
Procedure stipulates that a court is "seized" the day the summons is
served;
–
Art. 757 of French Code of Civil
Procedure provides that a court is "seized" the day a copy of the
duly served summons is registered by the court.
Although the summons in the French
court was served on June 16, it was not registered until a later date:
therefore the Paris
court was left with no choice but to
decide
that the court first seized was the Italian court, which was actually seized by
the summons served on June 17.3
Is the Court "Second Seized" of an Action for Infringement Obliged to Transfer the Case to the Court "First
Seized" of an Action for Declaration of Non-infringement?
This
second issue was much thornier than the first, since Art. 21 of the Brussels
Convention leaves no choice to the "second seized" court: "any
court other than the first seized shall of its own motion stay its
proceedings" (whereas Art. 22, dealing with
connectedness uses the verb "may"). Until now, although they
expressed in petto or
sotto voce some
doubts about the sincerity of the party seeking a declaration of
non-infringement in an Italian court, the courts of the other European
countries have seen few possibilities to ignore the crystal clear wording of
Art. 21.4
In a judgment dated April 28,
2000,5 the Paris Court circumvented the imperative "shall"
in saying, however, that the action for infringement, on the one hand, and the action
for a declaration of non-infringement, on the other hand, did not "involve
the same cause of action".
In
the judgment of March 9, 2001, the same court
elaborated a different reasoning to reach the same result; it said that the
proceedings brought in Italy
by the alleged infringer constituted
an "evident abuse":
Several
elements concerning the way the proceedings were initiated authorize the court
not to apply Art. 21 of Brussels Convention relating to lis pendens, since the
reference to this Article is an evident abuse, particularly in view of the
general purpose of simplification and acceleration of proceedings and
enforcement, which is recited in the preamble to this Convention.
1)
Fadis, before bringing its action
before the Italian court, was subject to a saisie-contrefaçon (search and
seizure) in France
at the request of SSM, and was therefore perfectly aware that SSM was obliged to bring an action before this court within 15
days, pursuant to Art. L 615–5 of Intellectual Property Code.
2)
Simultaneity of the proceedings in
France and in Italy (service
of the French order
was
even slightly prior to service of the Italian summons, albeit that the former
was
recorded
by the court slightly after service of the latter) makes it somewhat artificial
to
determine which court was actually the first seized.
3)
Fadis refrained from raising a
defence before the French court based on invalidity of the patent in suit (although
it had raised such a defence in prior interlocutory injunction proceedings)
because it was well aware that such a defence was in the exclusive jurisdiction
of this court.
Thus,
Fadis has tried abusively to suspend any action for infringement in France and
to consolidate before the Italian court several actions for declaration of
non-infringement that involve all the countries where the patent is applicable,
thereby creating complex proceedings in which as the plaintiff it could more
easily direct its own course.
3 In
order to limit the consequences of such discrepancies, Art. 30 of EC Regulation
No. 44/ 2001 sets forth an autonomous definition of the date when a court is
deemed "seized" for the purposes of Arts. 27 to 30 of Regulation.
4 Düsseldorf District Court, February 27, 1998, Connaught
v. Smithkline Beecham – 4 0 127197, The Hague District Court, April 29, 1998,
same parties; Düsseldorf District Court, July 8, 1999, General Hospital v.
Bracco and Byk Gulden
5 Paris District Court,
April 28, 2000, 2001 GRUR Int. 173; the judgment has been appealed.
The
view taken by the Paris
court certainly demands consideration: the court of the country where the
patent is applicable, having jurisdiction on the validity of the patent in suit
by virtue of Art. 16(4) of Brussels Convention, may feel frustrated when it
sees that the mechanics of Art. 21 automatically deprives it of the
infringement case simply because the defendant has "shot first". The
question is, however, whether this feeling of frustration allows a court to
refuse to apply the clear wording of Art. 21 of Brussels Convention.
Two grounds for a negative answer could be
submitted:
–
The first is that the alleged infringer cannot be considered as committing an "evident
abuse" simply because he tries to have the question of infringement decided
for the whole of Europe by a single court in Europe.
In other words, which scenario is really the worst: to
have the infringement question decided by a single court on a pan-European
basis or to have the infringement issue decided independently – and possibly in
opposite ways – by different national courts? Is the later really the most
efficient, expeditious and cost-saving way of reaching a decision?
–
The second reason for saying that
the courts cannot simply disregard Art. 21 of the Brussels Convention, when
dealing with a lis pendens situation
between an action for a declaration of non-infringement and an action for
infringement of the same patent, is simply that the authors of the Convention
accepted this situation; the wording of Art. 21 of Brussels Convention remains
unchanged in Art. 27 of EC
Regulation No. 44/2001. However, since 1968, in several
conventions this issue has been dealt with in a different way; Art. 34 of
Community Patent Litigation Protocol of December 15, 1989 and Art. 100
of EC Regulation No. 40/1994 on the Community Trademark clearly specify that an
action for declaration of non-infringement, although initiated first, does not
create a situation of lis pen-dens vis à vis an
action for infringement.
What is more, in the Draft
Convention on jurisdiction and foreign judgments in civil and commercial
matters, as proposed by the Hague Conference on private international law, the
opposite situation would result from Art. 21–6:
6. If in
the action before the court first seized the plaintiff seeks a determination
that it has no obligation to the
defendant, and if an action seeking substantive relief is brought in the
court second seized:
a)
the provisions
of paragraphs 1
to S above shall not apply to the court second
seized, and
b)
the court first seized shall
suspend the proceedings at the request of a party if the
court
second seized is expected to render
a decision capable of being
recognised under the Convention.
Therefore it cannot be disputed that the situation of lis
pendens between an action for
infringement and a negative action for a declaration of non-infringement is a
well-known situation that was consciously accepted in the Brussels Convention
and EC Regulation No. 44/2001.
It would thus certainly be better
if the national courts would not take the opposite view without seeking a
preliminary ruling by the European Court of Justice on this difficult question.
Pierre Véron
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Volume 33
No. 2/2002
Pp. 125 -260
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Published
by the Max Planck Institute of Foreign and International Patent, Copyright and
Competition Law, Marstallplatz 1, D-80539 Munich,
Germany
Contents
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Articles
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J. Verbruggen
&
A. Lôrincz
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Patents and Technical
Standards ....................................
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125
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M. Franzosi
E. Adeney
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Torpedoes Are Here t¢ Stay .........................................
Authors' Rights in Works of
Public Sculpture: A Ger‑
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154
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T. Kongolo
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man/Australian Comparison ..........................................
Towards a New Fashion of
Protecting Pharmaceuti‑
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164
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Decisions
European
Law
EU - CFI
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cal Patents in Africa - Legal Approach ..........................
Distinctive character –
Relevance of registration in
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185
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Jan. 31, 2001
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member
countries – T-24/00 – The Sunrider Corpo‑
ration v. Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM) – "Vita‑
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EU - CFI
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lite" ...................................................................................
Sign going beyond the
exclusively descriptive -
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212
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June 7, 2001
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T-359/99 – Deutsche Krankenversicherung
AG
(DKV) v. Office for
Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM) – "Euro‑
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EU - CFI
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Health" .............................................................................
Failure to pay application fee
- T-146/00 - Stefan
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216
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June
20, 2001
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Ru f and Martin Stier v.
Office for Harmonisation in
the Internal Market
(Trade Marks and Designs)
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OHIM - Bd. App.
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(OHIM) "Dakota" .......................................................
Evidence of use of trademarks -
R 756/1999-2 –
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220
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Nov 8, 2000
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Joaquin Massague Marin & José Miguel Lloreno
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Royo v. Fritz Weissgerber
– "Doctors"
...........................
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223
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Contents IIC Vol. 33 National and International Law
|
Patent
Law
France
District Ct.
March 9, 2001
|
Brussels Convention,
Art. 21 — Court first seized —
Same cause of action —
00/04083 — Schaerer
Schwei‑
ter Mettler A. G. v. Fadis S.p.A. — "Italian
Torpedoes"
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............................................ Comment
by Pierre Véron
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225
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Germany
Sup. Ct.
Dec. 13, 1999
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Patent
protection for computer program — X ZB
11/98 — "Logic Verification"
.......................................... Comment
by Jürgen Betten
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231
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Trademark Law
Germany
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Risk of
confusion — I ZB 24/96 — "Key"
.............................................
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239
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Sup. Ct.
March 18, 1999
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Germany
Sup. Ct.
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Risk of confusion
— I ZB 49/96 —
"Rausch/Elfi
Rauch" ....................................................................................................
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242
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July 8, 1999
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Germany
Pat. Ct.
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Saint's name
as vineyard location — 26 W (pat) 96/98
— "St. Ursula" .........................................................................................
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246
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Feb. 10, 1999
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Copyright Law
United Kingdom
HL
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Published
edition copyright in newspaper as a whole
— "M & S" ...............................................................................................
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249
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July 12, 2001
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Germany
Sup. Ct.
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Computer
program with expiration date — I ZR
98/97 — "Expiration
Date" ......................................................................
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253
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Sept. 15, 1999
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Book Reviews
Goldstein
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International
Copyright. Principles, Law and Practice
(von Lewinski) ..........................................................................................
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256
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Kaiser
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Die Vertragsstrafe im Wettbewerbsrecht (Müller)
...................................
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258
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News ..........................................................................................................................................
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260
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