BASF Polyurethanes Benelux B.V. v. Leolac B.V., preliminary injunction proceedings, District Court The Hague, The Netherlands, 17 July 2012, Case No. / Docket No. 417538 / KG ZA 12-410
The parent company of defendant Leolac is the owner of a European patent for a method of manufacturing a laminated foam article, and a foam article obtained by the method and the use of such article. BASF, amongst others, opposed the grant of the patent. The Opposition Division ruled the patent valid in an amended form.
Leolac has sent a warning letter to BASF and its customer PPI. BASF replied to his letter by sending a summons letter to Leolac ordering Leolac to refrain from stating or suggesting that BASF or its customers are infringing Leolac’s patent. Leolac did not comply with the demands of BASF since it is of the opinion that the warning letter was not really intended as a summons letter. The letter was only aimed at notifying BASF and its customers of the outcome of the opposition against the patent and an invitation to enter into cooperation with Leolac.
The judge does not follow Leolac in its defence. According to the judge the letter can hardly be perceived as anything different from a threat that Leolac shall invoke its patent if no cooperation is reached between Leolac and the receivers of the letter.
Sending a ‘warning letter’ to alleged infringers and their customers is in principle not unlawful even if it turns out afterwards that the invoked patent claim will not hold. However, when the holder of a patent could reasonably have known that the party who received the warning letter did not infringe the patent, sending a warning letter is considered unlawful. The judge ruled that this is the case here and holds Leolac liable for sending the warning letter.
Read the entire decision (in Dutch) here.
Head note: Wim Maas