Posted: June 20th, 2022
Boston Scientific Limited and Boston Scientific Medical Device Limited v. Coot Europe Finance B.V., Cook Nederland B.V., Cook Medical Nederland B.V., Cook Ireland Limited, Cook Medical Europe Limited, Cook Medical EMEA Group Limited and Cook France Sarl, District Court Amsterdam 3 May 2022, Case no. C/13/713/564 / KG ZA 22-118
Recently a judgment has been rendered by the District Court Amsterdam, in The Netherlands. The case related to preliminary injunction proceedings (“PI proceedings”) between Boston Scientific Limited and Boston Scientific Medical Device Limited (“Boston Scientific”) on the one hand, and several Cook entities (“Cook et al.”) on the other hand.
The PI proceedings were initiated by Boston Scientific and relate to its European Patent EP 3 023 061 with the title: “endoscopic device for causing hemostasis”. Boston scientific sought the following claims:
– an injunction with respect to Ireland against Cook Ireland, Cook Medical Europe and Cook Medical EMEA, as well as an injunction for Cook Europe, Cook Nederland and Cook Medical Nederland to be involved in said infringement in Ireland;
– an injunction with respect to France against Cook Medical Europe, Cook Medical EMEA and Cook France, as well as an injunction for Cook Europe, Cook Nederland and Cook Medical Nederland to be involved said infringement in France;
– an injunction with respect to Germany against Cook Medical EMEA, as well as an injunction for Cook Europe, Cook Nederland and Cook Medical Nederland to be involved in said infringement in Germany.
Before ruling on the alleged infringement itself, the PI judge rules on the international competence of the court and the (urgent) interest of Boston Scientific.
With respect to Cook Europe, Cook Nederland, and Cook Medical Nederland, the PI judge rules that it has international competence to rule on the claims, based on Article 4(1) of the Brussels I Regulation (in conjunction with Article 63(1) of this Regulation).
With respect to Cook Ireland, Cook Medical Europe, Cook Medical EMEA and Cook France, however, Cook et al. disputes that the PI judge would be competent to hear the case.
The PI judge ruled that international competence for these defendants based on Article 8(1) of Brussels I can only be assumed when:
1. the court in question can be seen as the court in the same place where (one of) the co-defendant(s) is domiciled, and;
2. there is a close connection with the claims against said defendant(s), which requires simultaneous handling and judgment, to avoid conflicting judgments.
Cook et al. argues that the claims against Cook Europe, Cook Nederland, and Cook Medical Nederland (the ‘anchor defendants’) are evidently bound to fail and are only instituted to create jurisdiction for foreign defendants. According to Cook et al., the three anchor defendants can clearly not be held responsible for (feared) infringing acts of Cook Ireland, Cook Medical Europe, Cook Medical EMEA and Cook France.
The PI judge confirms that, in case the claims against the anchor defendants are evidently bound to fail, then the claims against the foreign Cook defendants cannot be allowed. In such an event, there is no reason to ensure simultaneous handling and judgments.
The PI judge agrees with the statement of Cook et al. as described above, as far as it concerns anchor defendants Cook Europe and Cook Medical Nederland, and confirms that the claims against Cook Europe and Cook Medical Nederland are evidently bound to fail. Cook et al. stated that these defendants are holding companies with no employees, not acting in an (threatening or alleged) infringing way in or outside The Netherlands.
As far as it concerns Cook Nederland, the PI judge rules that the claims against this defendant are not evidently bound to fail. Boston Scientific, for the time being, provided sufficient arguments to show that Cook Nederland might be involved in the alleged infringing acts. In this regard, Boston Scientific stated that Cook Nederland supports other group entities that are actively distributing in Europe, and therefore facilitates and benefits from this distribution. Despite of Cook et al.s efforts to submit a statement from an employee of Cook Nederland, stating that he does not factually work for Cook Nederland but for Cook EMEA, the PI judge did not follow Cook et al.
Nevertheless, the PI judge is of the opinion that the required close connection does not exist. For Cook Ireland, Cook Medical Europe, Cook Medical EMEA, and Cook France, it was not foreseeable to be served a writ of summons for alleged infringement in countries outside of The Netherlands. The involvement of Cook Nederland (via the employee’s statement) with foreign product selling is relatively minor, taking into account that said employee was only employed by Cook Nederland for practical reasons (tax and social security).
Therefore, the PI judge ruled that it is not competent to rule on the claims against the foreign Cook defendants.
Claims against Cook Europe and Cook Medical Nederland
Referring to what was said before, the PI judge denies the claims against Cook Europe and Cook Medical Nederland. These claims are evidently bound to fail.
Claims against Cook Nederland
For the claims against Cook Netherland, the PI judge first of all addresses the (urgent) interest of Boston Scientific. The question whether a claimant has sufficient urgent interest must be answered based on a balance of all relevant interests at the moment of the judgment. The claimant has urgent interest in case the alleged infringement or unlawful act keeps on taking place. However, if a claimant does not act against this sufficiently expeditiously, there might be a lack of urgent interest. This all depends on the specific circumstances of this case.
Cook et al. states that Boston Scientific has no urgent interest with its claims, because, according to Cook et al., Boston Scientific has waited too long with initiation preliminary injunction proceedings. Therefore, Cook et al. states that a balance of all relevant interests should be in favour of Cook et al..
The PI judge indeed ruled that there is no (urgent) interest for Boston Scientific. First of all, the PI judge does not see which objective is served with an injunction against Cook Nederland. Cook Nederland only appears to be involved with the alleged infringement in a derived sense. The involvement of Cook Nederland is only based on strict liability for allowing an employee to work for another company.
Furthermore, this employee does not decide on acts concerning the alleged infringing products himself and therefore, Cook Nederland has no power to cease the infringement in Germany, Ireland, and France. According to the PI judge, the real objective of Boston Scientific was to involve the foreign entities in these proceedings using Cook Nederland, as an injunction against these foreign entities would sort effect. However, the PI judge does not consider itself competent to impose an injunction to the foreign entities, as described above.
Even when one could assume that an injunction against Cook Nederland would be impactful, the PI judge rules that there is no urgent interest whatsoever. The grant of the parent patent of the patent in suit took thirteen years. When this parent patent was granted, Boston Scientific applied for the divisional patent in 2015, which was granted in 2017. Cook et al., however, had been on the market since 2013. Boston Scientific sent their first summons letter to Cook on 13 December 2021, because Boston Scientific wanted to await the results of the opposition procedure at the EPO for the patent in suit. The PI judge therefore rules that because of this, Boston Scientific has not acted expeditiously. Boston Scientific could have acted against Cook in 2017, after the grant of the patent in suit.
Against the interests of Boston Scientific, there are significant interests on the side of Cook et al. Cook et al. has been on the market since 2013 and the damages for Cook et al. will be mostly irreparable and irrevocable. Doctors and other medical workers are trained in the use of the product of Cook et al. and this training will be lost. Relevant here is that the patent is valid until 20 September 2022, which means that those doctors and medical staff must be trained in another product and method, only for a couple of months.
Finally, Boston Scientific had asserted the patent in suit against MT China / MT Europe and MTW in 2017 and 2018, after which Boston Scientific settled for license revenues. This, according to the PI judge, stresses that Boston Scientific is not interested in an injunction allowing Boston Scientific to assume a monopoly position, but it mainly concerns financial damage, which can be estimated and repaired relatively easily afterwards.
Therefore, the PI judge also denies the claims against Cook Nederland.
The PI judge rules that the court is incompetent to rule on the claims against Cook Ireland, Cook Medical Europe, Cook Medical EMEA, and Cook France, and that the claims against Cook Europe, Cook Medical Nederland and Cook Nederland are denied. Boston Scientific is ordered to compensate the legal costs of Coot et al. for an amount of EUR 80.676,-.
The judgment (in Dutch) can be read here.
Headnote: Eelco Bergsma and Iris van der Heijdt, Taylor Wessing