French Judge Competent for Infringement Abroad: Private International Law vs. UPC?
In a decision dated June 29, 2022, the Cour de cassation (French Supreme Court) overturned the decision of the Paris Court of Appeal (Paris, November 24, 2020) which refused to assess acts of infringement committed abroad. The decision of the Supreme Court, which merely applies classical rules of private international law, leads one to wonder about the appropriateness of actions before the future UPC.
We have already reported on (and criticised) the earlier decisions given in this case on the Kluwer Patent Blog. La Cour de cassation a adopté la même critique en cassant en tous points la décision d’appel.
By way of reminder, the French company Hutchinson sued the English company Tyron Runflat (Tyron) and its South African supplier, Global Wheel, together with the French companies Dal and L.A. VI, which resell their products, alleging infringement of its European patent in France, Great Britain and Germany
In that case, the Paris Judicial Court, upheld by the Court of Appeal, declined to rule on the acts of infringement, taking the view that although the patent law at issue were the same, the acts of infringement committed were not. That divergence in the factual situations could therefore lead to irreconcilable decisions between the various courts, so that the French court had jurisdiction in respect of France alone.
The Supreme Court, by contrast, recalls that the Court of Justice of the European Union (CJEU, 12 July 2012, Case C-616/10) held, in relation to Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters — which is worded identically to Article 8(1) referred to above — that that provision “ must be interpreted as meaning that a situation in which two or more companies established in different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of infringing the same national part of a European patent as in force in another Member State, by virtue of reserved acts relating to the same product, may lead to irreconcilable judgments if the cases were determined separately, within the meaning of that provision. It is for the national court to assess whether such a risk exists, taking account of all the relevant factors in the case. »
Accordingly, in the Supreme Court’s view, in so ruling — when Hutchinson relied on infringements committed by the French companies and by Tyron in France, Germany and Great Britain, of the same national parts of its European patent, concerning the same product — the Court of Appeal, whose task it was to determine whether trying the infringement actions separately risked leading to irreconcilable outcomes, infringed the provision referred to above.
As regards the South African company, the Court further recalls that, under Article 14 of the French Civil Code, a French claimant may, where no ordinary head of jurisdiction is satisfied in France, validly seise the French court of its choosing by reason of a connection between the proceedings and French territory or, failing that, in accordance with the requirements of the proper administration of justice. Yet, in holding that the French court had no jurisdiction over acts of infringement committed outside French territory by Global Wheel, domiciled in South Africa, the Court of Appeal’s judgment found that Hutchinson had not established the relevance of the connection to the present proceedings, given that the French court has no jurisdiction over the acts allegedly committed abroad by Tyron, whose supplier Global Wheel was, and that the English and German courts have jurisdiction to try the alleged acts of infringement of the national part of the patent in suit committed on their respective territories. In so ruling, the Court of Appeal infringed that provision, on grounds insufficient to displace the jurisdiction of the French courts founded on Hutchinson’s French nationality.
Finally, the Cour de cassation’s decision does no more than restate principles of private international law that have always struck us as self-evident. More broadly, similar case law exists in the Netherlands and in Germany, so that one may ask: what use will the UPC be in this context?
All the more so since bringing proceedings in France, using national parts of European patents to assess infringement elsewhere in Europe, will always cost less than a unitary patent, and one moreover based on a court whose foundations remain, to say the least, fragile.
Beyond the cost of UPC proceedings, there are also the risks to be reckoned with: the systematic challenges to the institutional (treaty-based) defects of the system itself.
En résumé, with its judgment of 29 June 2022, the Cour de cassation restates the classic rules of private international law, but also gives us reason to think twice about the advice that should be given to companies in future when they decide to bring pan-European proceedings (UPC or no UPC?).