An International Guide to
Patent Case Management for Judges

13.5.5 Related actions and lis pendens

13.5.5.1 Related actions

Article 30 of the Brussels Ia Regulation stipulates that in instances where related actions are underway in courts of different EU member states, the second court may stay proceedings. The application of intra-European related actions is contingent upon the prior submission of related claims to two courts of member states that have jurisdiction under European rules or under their domestic law.

Under Article 30(3) of the Regulation, claims are considered related “where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”

As a stay of proceedings is a discretionary measure, the decision to grant it lies with the judge.⁴⁵⁶

With regard to international related actions, claims falling within the jurisdiction of an EU member state under Articles 4, 7, 8 or 9 of the Regulation are subject to related actions between a court of a member state and a court of a third country.

Three cumulative conditions must be met:

• The court of the member state must determine that it is in the interests of justice to hear the related claims together in order to avoid irreconcilable judgments (Article 34(1)(a) of the Regulation).

• The decision of the third state must be likely to be recognized and enforced in the member state (Article 34(1)(b)).

• The stay of proceedings must be necessary for the proper administration of justice (Article 34(1)(c)).

13.5.5.2 Lis pendens: parallel infringement and non-infringement proceedings

Intra-European lis pendens presupposes that two courts in member states are hearing the same case. For intra-European lis pendens to apply, those courts must have jurisdiction, and the cases must involve the same subject matter, cause of action and parties.

In such cases, Article 29 of the Regulation (formerly Article 21 of the Brussels I Convention) provides that where claims having the same subject matter and cause of action are brought between the same parties before courts of different member states, the second court shall of its own motion stay proceedings until the jurisdiction of the first court is established.

As with intra-European related actions, international lis pendens allows the second member state court to stay proceedings on a discretionary basis only when it has jurisdiction under Articles 4, 7, 8 or 9 of the Regulation).

Two conditions must be met for that to occur. First, the court of the third country must be capable of rendering a decision that will be recognized and enforced in the member state (Article 33(1)(a) of the Regulation). Second, the court of the member state must determine that a stay of proceedings is necessary for the proper administration of justice (Article 33(1)(b)).

The “Italian torpedo” was a common strategy employed by a party planning to market a potentially infringing product in Europe, whereby it would file declaratory actions for non-infringement in a country where proceedings typically take longer, particularly in Italy. The initiation of such legal proceedings would result in the stay of ongoing judicial proceedings by foreign courts (such as in Germany or France) owing to the existence of ongoing proceedings in Italy. The patent holder was then unable to enforce its patent in other European jurisdictions owing to the applicable lis pendens rules.

The judgment of the Court of Justice of the European Communities in Gasser v. Misat nevertheless refuses to allow a derogation in the presence of such practices.⁴⁵⁷ French courts have on multiple occasions succeeded in undermining that strategy, ruling that it constitutes a circumvention of the jurisdiction rules set forth in the Regulation.⁴⁵⁸