French Supreme Court says cross-border patent infringement claims may be possible

The French Supreme Court issued a decision quashing a Paris Court of Appeal decision and thereby opening the door to the jurisdiction on the merits of French courts to rule on cross-border claims for patent infringement based on national designations of a given European patent, where the products in suit in the different countries are the same (Hutchinson v. Dal, Global Wheel et al. 29 June 2022, Appeal No. G 21-11.085).

It is important to emphasize here that the French Supreme Court does not rule that French courts do have jurisdiction in this case, but rather that the lower courts should assess whether there is a likelihood of irreconcilable (rather than merely diverging) decisions should the infringement actions be carried out before different jurisdictions. In other words, it will belong to the Paris Court of Appeals, composed of different judges, to carry out this analysis.

This decision could thus lead to the possibility for French courts to rule more often on a cross-border patent infringement related claim, though additional hurdles exist such as the exclusive jurisdiction of the courts of a Member State to rule on the validity of a patent (Article 24(4) of Brussels Regulation recast). In this respect and for the sake of completeness, it is worth noting in the same vein that the Paris First Instance has in recent years ruled to have jurisdiction on a claim against French incorporated companies for declaration of non-infringement of the French and UK designations of a European patent; indeed, in a decision of 18 November 2016 (docket No. 15/06637), the Paris First Instance Court ruled to have jurisdiction on that claim as long as a revocation action had not been brought in the UK against the corresponding foreign designation of said European patent.

Factual background and legal outcome

A French company started infringement proceedings in France against France, UK, and South Africa-incorporated companies for infringement of the French, UK and German designations of its European patent. A procedural plea for lack of jurisdiction was then raised by the defendants concerning the acts of infringement carried out in the UK and Germany by non-French EU entities, and a non-French non-EU entity.

Ruling on the jurisdiction of French Courts in this case the lower courts:

• first declined their jurisdiction against the UK company for the infringement acts committed in the UK and Germany, as, firstly, the acts committed there by the UK company would not belong to the same legal situation as the acts committed against the French patent, and, secondly, the products in suit in France and outside France would not be the same.

In other words, according to the Paris Court of Appeal, the legal and factual situations would not be the same for the claims related to the acts committed in France and for the acts committed in the UK and Germany, such that there would be a mere risk of diverging decisions but not of irreconcilable decisions according to Article 8.1 of Brussels Regulation recast.

The French Supreme Court quashed this reasoning in its decision of 29 June 2022 on the basis of Article 8.1 of Brussels Regulation recast and CJEU decision of 12 July 2012 (case C-616/10, Solvay v. Honeywell), as the acts in suit concerned national designations of a given European patent and the same product.

• second, and by extension of the alleged lack of jurisdiction of the French courts against the UK company, the lower courts also declined their jurisdiction against the South African company for the distribution of the infringing products in the UK and Germany. Indeed, the Paris Court of Appeal ruled that not having jurisdiction to rule on the infringing acts committed in the UK and Germany on the basis of the Brussels Regulation recast, the South African company could not be brought either before French courts as there was thus no link with the action brought in France by a French entity for acts of infringement committed in France.

Once again, the French Supreme Court quashed this reasoning in its decision of 29 June 2022 as the lower courts failed to articulate a proper reasoning to decline their jurisdiction towards the South African company.

As mentioned above, it is important to emphasise that the French Supreme Court does not rule that French courts do have jurisdiction in this case, but rather that the lower courts should have assessed whether there is a likelihood of irreconcilable (rather than merely diverging) decisions should the infringement actions be carried out in this scenario before different jurisdictions. A new decision of the Paris Court of Appeals, composed of different judges, may be expected in 2023.