EPLAW Patent Blog

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

EPO – Test cases for elucidating public availability of Internet disclosures

Koninklijke Philips Electronics N.V. (patentee) v. DSM IP Assets B. V. (opponent), Technical Board of Appeal 3.5.04, 12 March 2012, Case Nos. T 1553/06-3.5.04 "Public availability of documents on the World Wide Web/PHILIPS" and T 0002/09-3.5.04 "Public availability of an e-mail transmitted via the Internet/PHILIPS" with thanks to Stefan V. Steinbrener (Bardehle Pagenberg) for providing the case and summary

Both the European parent application 00200326.7 and its divisional 02077838.7 have been granted by the EPO to Philips and then opposed by DSM in a "joint venture" of  patentee and opponent as contrived test cases regarding the question of whether documents placed inten-tionally on the Internet constituted prior art within the meaning of Article 54(2) EPC 1973. Those documents related to (i) web pages either certified to have been found by key words entered in a search engine or merely alleged to have existed on the Internet before the filing date of the parent application, and (ii) encrypted or unencrypted e-mails sent and received before said filing date, as certified in a notarial record.

NL - Philips v. SK Kasetten / FRAND

Koninklijke Philips Electronics N.V. v. SK Kassetten GmbH & Co. KG, Infringement, FRAND, District Court The Hague, The Netherlands, 17 March 2010, Joint Cases No. 316533/HA ZA 08-2522 and 316535/HA ZA 08-2524

The Court of The Hague held that SK Kassetten infringed several essential patents owned by Philips, relating to CD and DVD technology. SK Kassetten argued – under reference to the Orange Book decision of the German BGH – that it was entitled to a license uncer FRAND terms, and that this would preclude Philips from enforcing its patents. The Court of The Hague does not feel that the criteria for the assessment of FRAND-defences as established in the Orange Book decision should be applied under Dutch law. The reasoning of the Court will be integrally cited (in English) below.

ECJ to Decide on Manufacturing Fiction

ECJ to Decide on 'Manufacturing Fiction' under Counterfeit Goods Regulation

By Geert Theuws, Howrey LLP

"Following questions posed by the Belgian and to be posed by the UK court, the ECJ will be deciding on an issue which is of significant importance for the future of the European border seizures practice. It concerns the legitimacy of the application of the so-called manufacturing fiction, when ascertaining whether goods seized by customs agencies pursuant to the Counterfeit Goods Regulation infringe upon an IP right."

Read the complete contribution here.

Read the judgment Philips v. Furness (The Hague District Court) (in English) here.

Read the judgment Philips v. Postech (Dutch Supreme Court) (in English) here.

Read the judgment Sosecal v. Sisvel (The Hague District Court) (in English) here.
Read the judgment Philips v. Lucheng c.s. (Antwerp District Court) (in Dutch) here.