NL - Philips v. Digipres

Koninklijke Philips Electronics N.V. v. Digipres Group S.P. ZOO, District Court of The Hague, The Netherlands, 18 July 2012, Case No 404808 / HA ZA 11-2524

Philips had terminated a patent license agreement with Digi Pres due to non-compliance. Philips subsequently started proceedings before the Court of The Hague to inter alia obtain payment of outstanding royalties, and to obtain performance under a clause which obliged Digi Pres to (in short) cease and desist the manufacture and sale of the licensed products after termination.

The Court of The Hague declared itself incompetent to rule on Philips’ claims. Prior to starting proceedings in the Netherlands, Philips has started infringement proceedings in Poland against Digi Pres on the basis of certain Polish patents. According to the Court, the choice of forum clause in the license agreement was worded broadly (“any dispute…in connection with this agreement…”) and also covered starting patent infringement proceedings after termination of the agreement. The Court held that by starting these proceedings in Poland, Philips had made its choice of forum. As a result, according to the Court, all disputes in connection with the agreement – including Philips’ claims for compliance of the Agreement in The Netherlands – would need to submitted to the Polish court. 

Finally, Philips’ claim that it did not make a choice of forum as in light of GAT/LuK it needed to start infringement proceedings in Poland was dismissed. According to the Court, Philips could have also claimed an injunction under the Polish patents in The Netherlands, albeit that the Dutch Court would have needed to suspend the infringement proceedings to await the outcome of the pending Polish invalidity proceedings against the patents.

Read the decision (in Dutch) here.

Head note: Geert Theuws