Posted: September 21st, 2018
Novozymes & Univar vs. DSM, Court of Appeal of The Hague 4 September 2018, ECLI:NL:GHDHA:2018:2155
DSM IP Assets B.V. (“DSM”) is the manufacturer of, inter alia, the lactase product Maxilact, which is used to purify dairy from lactose. Moreover, DSM is the applicant of EP 1 954 808 (“EP 808”) called “Enzyme preparation yielding a clean taste”. Novozymes A/S and Univar B.V. (together in singular “Novozymes”) are the manufacturer resp. the distributor of a competing product called Lactozym Pure that is allegedly covered by the claims of EP 808. After its initial grant, EP 808 was upheld in opposition proceedings by the Opposition Division (“OD”). However, the Technical Board of Appeal (“TBA”) decided to revoke the patent in its entirety for lacking inventive step.
After the decision by the OD, but prior to the TBA judgment, DSM had sought preliminary relief vis-à-vis Novozymes on the basis of the Dutch designation of EP 808. This relief was indeed granted by the District Court of The Hague in the form of a preliminary injunction and ancillary claims such as a product recall and a cost award. DSM had opted to enforce the injunction, including the product recall and cost award.
Novozymes lodged an appeal against this first instance decision, but the TBA decided to revoke EP 808 before the hearing in the Court of Appeal of The Hague actually had taken place. Following on the nullification of EP 808, Novozymes now advanced (counter-) claims itself, alluding to the product recall as effected by DSM ‘s enforcement of the preliminary injunction order. Novozymes asserted that it was entitled to, inter alia, a rectification, a cost award and information relating to advantage gained by DSM caused by the product recall.
Since Dutch procedural law precludes that a counter-claim is brought for the first time in appeal, the claims advanced by Novozymes could in principle not be granted. However, referring to Dutch Supreme Court case law, the Court of Appeal held that there is exception if it concerns a counterclaim for undoing the performance delivered by the first instance decision. Therefore, the question was whether the counterclaims qualified as “counterclaim for undoing the performance already delivered by the first instance decision”.
The Court of Appeal held that both the rectification and the cost award had to qualify as such, but that the claim for information relating to advantage gained as a consequence of the product recall did not. With respect to the last claim, the Court of Appeal ruled that this counterclaim raises undesirable complications and delay of the procedure. For that reason, the Court of Appeal, inter alia, annuls the first instance decision and grants Novozymes’ claims for rectification as well as the cost award (for both instances).
A copy of the decision (in Dutch) can be read here.
Headnote: Jeroen Boelens, NautaDutilh