One of the difficulties that patent owners sometimes encounter when they are planning to apply for a preliminary injunction is the dearth of evidence. A decision handed down on 23 February 2017 by Barcelona Commercial Court No. 5 may shed some light on patent owners who need additional evidence to support an application for a preliminary injunction. The background of the case may be summarised as follows:
A company that owns patents in the telecommunications sector filed an application for a preliminary injunction prior to the 2017 Mobile World Congress (“2017 MWC”), seeking that the Court seize samples of a number of smartphones, tablets and phablets that were due to be exhibited during the 2017 MWC. Simultaneously, the applicant asked the Court to request an expert opinion to determine whether or not the samples seized fell within the scope of protection of the patents owned by the former. In the end, the applicant requested the Court to order an “ex parte” preliminary injunction preventing the defendants from exhibiting its products in the event that the requested expert opinion confirmed that the patents were actually infringed.
Although the applicant based its application on Article 732 of the Patents Act in force at that time, which deals with the procedure for applying for preliminary injunctions, the Court considered that the applicable procedure was that set out in Article 129 concerning “Diligencias de Comprobación de Hechos” (a process roughly equivalent to the French “saisie-contrafaçon” procedure). One could remark, in passing, that this is debatable, as Barcelona Commercial Court No. 2, when chaired by Justice José María Ribelles, had accepted similar petitions based on Article 732. In any event, what is relevant here is that in the above-mentioned decision of 23 February 2017, the Court agreed to follow a “two-tier” procedure, whereby an order to seize the products “ex parte” and request an expert opinion was first approved. In the same decision, the Court established that if the expert opinion confirmed that any of the patents owned by the applicant had been infringed, the Court would immediately hand down a separate decision ordering an “ex parte” preliminary injunction preventing the defendant from exhibiting the seized products during the 2017 MWC.
All in all, this case is yet another example of the creative and pragmatic line followed by the Commercial Courts of Barcelona, whose swift issuance of decisions has become another attractive reason to host the MWC in Barcelona.
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Two comments can be made on this aspect of the decision. The first is that Article 23 of the Judicial Code, determining the scope of res judicata in Belgium, has since been amended. The provision that applied to the litigation prevented new actions having the same object and the same cause of action, litigated between the same parties, in the same capacity. The provision has been changed to include that res judicata extends to actions having the same object and cause of action, “regardless of the legal basis”. Under the new regime, Articles 23 and 25 of the Judicial Code may have also barred Nouvag from filing a second revocation action based on new grounds, i.e. added subject matter.
The second is that all is not necessarily lost when new prior art documents come to light after a final decision was rendered. The route is – in the author’s opinion – not a second action, but rather a request for a retrial of the first decision (“verzoek tot herroeping van het gewijsde”). Article 1133 of the Belgian Judicial Code allows for such a request inter alia in cases of deception or if, since the decision, “determining evidence came to light that was withheld by the prevailing party”. Admittedly, this route is limited because the Cour de Cassation’s case law on retrials is strict: a request will in principle not be granted if it is based on reasons that the claimant knew or could have known at the time of the decision (Cour de Cassation, 26 May 1995). Arguing that the prior art document was not public to the extent that you could have been aware of it, could be a tall order.