Cross Border Patent LitigationA Hands-On Seminar for Young PractitionersDaan de Lange, Munich June 5, 2015

Morning Session (11 am-1 pm):

Patent Litigation in DE, FR, NL, UK – how does it work?

Duration and Costs of proceedings?Preliminary injunctions

Normally 2 – 3 months, quicker if necessary

Costs: EUR 50 – 150 k (depending on complexity)

No bifurcation

Single judge

Mini-trial

Duration and Costs of proceedings?Accelerated proceedings on the merits

Nearly all merits proceedings in accelerated regime

10 – 12 months from the service of writ to a reasoned decision

Appeal: a further 12 – 18 months

Costs again depend on complexity – typically: EUR 150 – 350 k, but can be > 500 k

No bifurcation

Panel of three judges

Cost reimbursement?

Losing party reimburses legal costs prevailing party

Typically 80 – 100% of actual costs. Maximum so far: > 800 k

Casino: even or double

Parties usually agree on amount

If not: discuss whether it’s fair and reasonable

Choice of forum?

No forum shopping

All patent cases before court in the Hague

Specialized patent chamber

Experienced patent judges

Appeals Hague court of appeal

No leave required for

Supreme Court appeal

Conduct of the proceedings, i.e. written and/or oral proceedings?

Accelerated merits proceedings: frontloaded

Substantive and complete writ of summons

Substantive and complete response + counterclaim

Response in counterclaim

Exchange additional exhibits

Oral hearing: a short day. Important

PI: focus more on the oral hearing

Bifurcation? Stay of proceedings?

No bifurcation (luckily!)

One single procedure

Same claim construction for infringement and validity

Court has discretionary power to stay pending opposition

Will only stay nullity action when infringement risk is limited

In PI proceedings: court will assess what merits court will do

Injunctions – enforceability, discretion of the court, proportionality considerations? If patent is valid and infringed: injunction

No discretionary powers of court, no EBay considerations

No bias against NEP’s

Enforceable notwithstanding appeal

No bond required

Liability for unjust enforcement if decision is reversed on appeal

Violation court order: severe penalty sums payable to opponent (!)

Means of securing evidence?

Based on the Enforcement Directive

Two-stage process

1. Order to preserve evidence (generally ex parte)• Low threshold

• Protective letters

• Bailiff enters premises with IT expert and collects relevant documents

2. Order to produce evidence in inter partes PI

Evidence from e.g. French sasie allowed

Also other way around

Role of (court & private) experts?

No court appointed experts

Parties file expert reports

Battle of experts

Experts are present at hearing

Court may ask questions

No formal cross-examination

Only for questions or fact

Advantages and disadvantages of warning letters?

Customary, not obligatory

Sometimes relevant for costs

Tactics: dependent on type of defendant

Warning letter gives standing for declaratory judgement for non-infringement

Could trigger torpedo

Warning letters to clients of infringer can be tricky

Preliminary injunction proceedings?

Potentially very powerful tool

Approximately 1/3 of the cases

Success rate even higher than merits proceedings

Often: pharma cases, market entry generics

Often: technically ‘easy’ cases, but not always!

No (real) urgency requirement

Effectively a mini-trial

Judge will look into merits of case (validity and infringement)

Preliminary injunction proceedings patents?

No (real) balance of convenience

Refuses injunction if he believes the patent will be held invalid

Ex parte injunction seldom

Only after inter partes decision

Example: group of companies continue to infringe

Followed by merits proceedings

Special tools?

Cross border injunction after Solvay / Honeywell

Art. 2 / 4 defendant

Non-Dutch defendants: Art 6(I) / 8(I)

GAT / LuK does not apply in PI

Special tools?

Protective brief against ex parte PI request, inspection order, seizure of goods

Accelerated merits proceedings: fixed dates, fixed time frame

Exhibits may be submitted in English or German

Court questions experts in English

Real time translation service during hearing

Special tools?

Closely look at (reasoned) foreign decisions + OD and TBA decisions

Courts apply EPO case law (e.g. problem solution approach)

Legal certainty: continuity with prosecution and opposition

Prosecution history taken into account (no Angora cats)