EUPillar NV Best v. NV Visys, Peelaers Bert, BVBA Logitron, Adams Dirk and Dirix Bert

Summary

The claimant designs, produces and sells sorting machines. It holds several patents, EP ‘895 and ‘582, and BE ‘423. Its machines are able to sort granulate products such as raisins, nuts and peas, and are also able to detect irregularities in the products by using laser technology. The first defendant, NV Visys, develops and sells digital and automated inspection systems for the processing industry. Its technology also uses lasers to automatically sort products by colour, form and structure. NV Visys is managed by several other companies, such as the BVBA Invision. The second defendant, Bert Peelaers, is the manager of BVBA Invision, and an ex-employee of the claimant. The third defendant, BVBA Logitron is managed by Dirk Adams, the fourth defendant. Dirk Adams is also an ex-employee of NV Best. Logitron and Best entered into a contract for the development of electronics on 23 May 2003. Logitron and Dirk Adams signed a confidentiality agreement. In the course of 2005, NV Best suspects that its patents are being infringed and initiates several proceedings before the enforcement judge to obtain measures such as the descriptive and actual seizure of counterfeited goods. In the current proceedings, the claimant seeks an order to stop the defendants from producing and distributing the counterfeited goods, as well as provisional damages for patent infringement in the amount of 3.292.000 EUR and additional damages for unfair trade practices in the amount of 250.000 EUR. The first, second and fifth defendants argue, by way of counterclaim, that the patents held by the claimant are null and void. The Court decides that it has jurisdiction to decide only on the Belgian part of EP ‘895, pursuant to the exclusive jurisdictional ground of Art. 22(4) Brussels I. The Court lacks jurisdiction to rule on the foreign parts of the European patent. In its final conclusions, the claimant also asks for an order to stop the patent infringements. It asks that this measure, based on the European patent EP ‘895, has a cross-border effect in every state designated by the patent – and at least in Belgium. The jurisdiction of the court to take measures relating to Belgium is not disputed. What is contested, however, is the power of the court to take a cross-border measure. The claimant refers to Art. 2 Brussels I, since the defendants are all natural or legal persons domiciled in Belgium. Pursuant to Art. 64(3) of the European Patent Convention, any infringement of a European patent shall be dealt with by national law. The European Patent Convention only governs the applicable law and not the jurisdiction. The Brussels I Regulation makes a distinction between infringement proceedings and proceedings concerned with the validity of patents. As regards the latter, the jurisdictional ground of Art. 22(4) is mandatory. In Gat v. Luk (C-4/03), the ECJ decided that [Article 22(4)] is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection. As said before, this does not entail that the court should also decline its jurisdiction as to the infringement proceedings. However, in such a case the court is confronted with the problem that it may not rule on the question of the validity of the patent, not even incidentally, while the issue of the infringement proceedings is preceded by the question of the validity of the patent. A possibility for the court is to stay the proceedings. In this case, the defendants have not yet initiated proceedings in other states where the EP ‘895 is valid. The Court will appoint a judicial expert. After the judicial expert submits his report, the proceedings will continue. It would be best if at that point the defendants inform the Court of the steps they have taken or are planning to take in other Member States.