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French Supreme Court Says Cross-border Patent Infringement Claims May Be Possible –



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The French Supreme Court issued a decision quashing a Paris
Court of Appeal decision and thereby opening the door to the
jurisdiction on the merits of French courts to rule on cross-border
claims for patent infringement based on national designations of a
given European patent, where the products in suit in the different
countries are the same (Hutchinson v. Dal, Global Wheel et
al.
29 June 2022, Appeal No. G 21-11.085).

It is important to emphasize here that the French Supreme Court
does not rule that French courts do have jurisdiction in this case,
but rather that the lower courts should assess whether there is a
likelihood of irreconcilable (rather than merely diverging)
decisions should the infringement actions be carried out before
different jurisdictions. In other words, it will belong to the
Paris Court of Appeals, composed of different judges, to carry out
this analysis.

This decision could thus lead to the possibility for French
courts to rule more often on a cross-border patent infringement
related claim, though additional hurdles exist such as the
exclusive jurisdiction of the courts of a Member State to rule on
the validity of a patent (Article 24(4) of Brussels Regulation
recast). In this respect and for the sake of completeness, it is
worth noting in the same vein that the Paris First Instance has in
recent years ruled to have jurisdiction on a claim against French
incorporated companies for declaration of non-infringement of the
French and UK designations of a European patent; indeed, in a
decision of 18 November 2016 (docket No. 15/06637), the Paris First
Instance Court ruled to have jurisdiction on that claim as long as
a revocation action had not been brought in the UK against the
corresponding foreign designation of said European patent.

Factual background and legal outcome

A French company started infringement proceedings in France
against France, UK, and South Africa-incorporated companies for
infringement of the French, UK and German designations of its
European patent. A procedural plea for lack of jurisdiction was
then raised by the defendants concerning the acts of infringement
carried out in the UK and Germany by non-French EU entities, and a
non-French non-EU entity.

Ruling on the jurisdiction of French Courts in this case the
lower courts:

  • first declined their jurisdiction against the
    UK company for the infringement acts committed in the UK and
    Germany, as, firstly, the acts committed there by the UK company
    would not belong to the same legal situation as the acts committed
    against the French patent, and, secondly, the products in suit in
    France and outside France would not be the same.

In other words, according to the Paris Court of Appeal, the
legal and factual situations would not be the same for the claims
related to the acts committed in France and for the acts committed
in the UK and Germany, such that there would be a mere risk of
diverging decisions but not of irreconcilable decisions according
to Article 8.1 of Brussels Regulation recast.

The French Supreme Court quashed this reasoning in its decision
of 29 June 2022 on the basis of Article 8.1 of Brussels Regulation
recast and CJEU decision of 12 July 2012 (case C-616/10, Solvay
v. Honeywell
), as the acts in suit concerned national
designations of a given European patent and the same product.

  • second, and by extension of the alleged lack
    of jurisdiction of the French courts against the UK company, the
    lower courts also declined their jurisdiction against the South
    African company for the distribution of the infringing products in
    the UK and Germany. Indeed, the Paris Court of Appeal ruled that
    not having jurisdiction to rule on the infringing acts committed in
    the UK and Germany on the basis of the Brussels Regulation recast,
    the South African company could not be brought either before French
    courts as there was thus no link with the action brought in France
    by a French entity for acts of infringement committed in
    France.

Once again, the French Supreme Court quashed this reasoning in
its decision of 29 June 2022 as the lower courts failed to
articulate a proper reasoning to decline their jurisdiction towards
the South African company.

As mentioned above, it is important to emphasise that the French
Supreme Court does not rule that French courts do have jurisdiction
in this case, but rather that the lower courts should have assessed
whether there is a likelihood of irreconcilable (rather than merely
diverging) decisions should the infringement actions be carried out
in this scenario before different jurisdictions. A new decision of
the Paris Court of Appeals, composed of different judges, may be
expected in 2023.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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