EUPillar OLG Düsseldorf, 20.7.2009

Summary

The parties argued on the defendants’ obligation to pay damages, provide information and to refrain from the use of the plaintiff’s European patents A, B, C. In 2006 the defendants had brought a declaratory action in Milan (Italy) against the plaintiff in order to obtain a declaration saying that the Italian part of the European patent (basic patent EP 905) didn’t have legal validity. In 2008 the plaintiff brought a declaratory action, an action for injunction and an action for information before the Regional Court Düsseldorf. This action concerned the plaintiff’s European patents which were derived from the basic patent. The first instance court (Regional Court Düsseldorf) refused to stay the proceedings pursuant to Art. 27 (1) or 28 (1) Brussels I. The defendants contested this decision. The Higher Regional Court affirmed the Regional Court’s decision. It found that the term ‘the same cause of action’ in Art. 27 (1) didn’t require a formal identity of actions. It was sufficient that the actions essentially concerned a common issue. This in fact wasn’t the case in the present proceedings: The actions didn’t concern the same cause of action within the meaning of Art. 27. The defendants’ action before the Italian court didn’t clearly refer to the derived patents A, B and C. The patents A, B, C were granted to the defendants only two years after the proceedings were initiated in Italy. Therefore these patents couldn’t be the matter of the action in 2006. The judgment is correct.