EPLAW PATENT BLOG

NL – NEDAP v. X

Posted: December 16th, 2013

N.V. Nederlandsche Apparatenfabriek “NEDAP” v. X., District Court of The Hague, the Netherlands, 4 December 2013, Case No. C/09/438943 / HA ZA 13-270

X holds EP1391574 for a "security tag assembly” for use in clothing stores. NEDAP Retail markets security tags. Both NEDAP and its customers in Sweden, Germany and various other countries received cease and desist letters from X. Despite that in previous, apparently unrelated proceedings, the German portion of EP’ 574 was deemed valid by the German Bundespatentgericht on 17 November 2011, NEDAP filed a revocation action. Additionally, NEDAP requested that the Court also (cross-border) declare X's threatening actions in the various countries to be unlawful and that X be ordered to cease threatening with its patent, pay damages to NEDAP and send rectifications to all addressed parties. X thereupon counterclaimed for an injunction.

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X argued that the Court was not competent to rule on the likelihood of the patent being found invalid in other countries than the Netherlands. The Court identified the grounds for NEDAP’s cross-border claim to be that X's actions were unlawful, since he knew the patent was invalid. Referring to the Dutch Supreme Court case Roche/Primus (II) case, the Court considered that these grounds do not (by the route of article 22 (4) of the Brussels Regulation) automatically render the Court not competent to rule upon the likelihood of the foreign courts’ opinion on validity. Only if one of the parties files revocation actions in such other countries, would the Dutch Court have to stay its judgment for that jurisdiction pending the foreign court’s judgment. The Court thus finds itself competent to hear the case ex articles 6 and 9 of the Brussels Regulation.

NEDAP amended its revocation request to make it conditional upon its products being found to infringe the patent.

NEDAP argued non-infringement, because its tags were a non-inventive modification of tags known in the prior art, its tags lacking a shield assembly to resist attempts to unlock them by means of heat or a flame. Both parties filed videos of heating and unlocking demonstrations, with opposite results (NEDAP demonstrating easy opening of its own tags by melting the tag partially; X demonstrating that a thief would burn his fingers while attempting to open the melted plastic before it hardened again). The Court found NEDAP’s reasoning – that a thief would use a tool instead of his fingers to pry off the hot, still molten plastic – more convincing. Thus it found that the NEDAP tags did not have a shield assembly as disclosed in the patent and thus did not infringe.

As regards NEDAP’s request to stop X's threatening letters, the Court noted that X had not denied that Dutch law applied to the question as to whether such threats had been unlawful or not. In the Court’s opinion, X had received NEDAP’s nullity argumentation, but that argumentation was insufficient to meet the threshold for unlawful threats, namely that X had known his patent was in fact invalid.

The Court thus denied the claims of both parties.

Read the judgment (in Dutch) here.

Head note: Maurits Westerik

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