PAUL A. COLETTI 1 Associate Patent Counsel, Johnson & Johnson, USA

International In-house Counsel Journal Vol. 6, No. 21, Autumn 2012, 1 Here We Go Again: Has the European Court of Justice revived the cross-border patent injunction? PAUL A. COLETTI 1 Associate Patent Counsel, Johnson & Johnson, USA Introduction After a brief period of inactivity, the European Court of Justice has revisited the subject of pan-european cross-border injunctions. 2 In Solvay SA v. Honeywell Fluorine Products Europe BV and Others, 3 the ECJ was asked to elaborate on the requirements for granting such injunctions in proceedings on the merits, and to examine whether it is permissible to grant these injunctions in provisional 4 proceedings. After the Advocate General issued an advisory opinion in this matter, 5 the ECJ has now seemingly again opened the door to the possibility of granting such injunctions. After briefly outlining the history crossborder injunctions, this article will examine the requirements for their granting. Then, the Advocate General s guidance will be considered, and practical suggestions concerning Solvay will be offered. These suggestions will take into account both the law surrounding cross-border injunctions, and broader considerations surrounding patent harmonization in Europe. Background The concept of granting pan-european cross-border injunctions has taken a tortuous path through the last two decades. The theory behind granting such injunctions is a basic one, although certainly not without controversy. Simply, the European Patent Convention 6 provides for a commonly granted patent with common claims based on a single application filed at the European Patent Office 7. According to the EPC, granted claims are to provide a fair protection for the patentee with a reasonable degree of certainty for third parties 8. In an infringement action against the same accused infringement, this reasonable degree of certainty should allow the patentee to obtain the same result in one jurisdiction as in another. Accordingly, a court in one jurisdiction, weighing the claims, should be able to tell whether they are infringed. Since the claims are the same across the member States, any competent court 9 should be able to render an injunction. And, if the 1 Associate Patent Counsel, Johnson & Johnson. Paul A. Coletti 2012. The views expressed herein are not necessarily those of the author s employer. The author may be reached at: pcolett@its.jnj.com. 2 Throughout this paper, the European Court of Justice will be referred to as the ECJ. 3 Case C-616/10 ( Solvay, ) decided 12 July 2012; text of this decision is available at http://curia.europa.eu/juris/document/document.jsf?text=&docid=124996&pageindex=0&doclang=en&mod e=lst&dir=&occ=first&part=1&cid=364603. 4 In the United States, these are commonly referred to as preliminary injunction proceedings. 5 Opinion of Advocate General Cruz Villalón, delivered 29 March 2012, available at http://curia.europa.eu/juris/celex.jsf?celex=62010cc0616&lang1=en&type=not&ancre=. (Referred to herein as the Solvay AG Opinion. ) 6 Convention on the Grant of European Patents, signed at Munich 5 October 1973. Hereafter referred to as the EPC. 7 Hereafter referred to as the EPO. 8 EPC, at Article 69 and its Protocol. 9 As we will see, competence here means proper jurisdiction. International In-house Counsel Journal ISSN 1754-0607 print/issn 1754-0607 online

2 Paul A. Coletti activities are the same in these member States, such an injunction should be able to extend to all such activities. In practice, such has not been the case. Granting a cross-border injunction in European jurisdictions is rendered far more complicated due to both procedural and substantive law requirements provided for under various European treaties. For instance, courts initially observed that such injunctions could (and perhaps should) issue under any single national portion of a commonly granted patent. 10 But, it was recognized that if invalidity of the patent were claimed, courts other than that in which the patent was granted would lack jurisdiction, 11 under aspects of the Brussels Convention. 12 Additionally, was the action a preliminary proceeding or a case on the merits? 13 Further, regardless of the procedural situation, what was the substance of the claim - could an action taken in one jurisdiction produce irreconcilable decisions 14 with an action in a different jurisdiction 15? For that matter, since a national patent granted through the auspices of the EPO constitutes a distinctly local right, could there ever be irreconcilable decisions across jurisdictions? By as early as 1998, the law of cross-border injunctions had become hopelessly complex, and their application had seemingly reached its high-water mark. 16,17 The ECJ finally weighed in on the matter in 2006, when on the same day it rendered decisions in two separate cases. 18 Since the Advocate General indicated in his guidance in Solvay that the current case presents an opportunity for the ECJ to clarify its most recent judgements, 19 perhaps it is best to examine these cases and their specific findings. Only then can we properly put the issues in Solvay into context, and examine the utility of the advice of the Advocate General. GAT and Roche The first case is commonly known as the GAT decision. 20 In GAT, both the plaintiff and defendant were companies established and domiciled in Germany. GAT made an offer to supply a motor vehicle manufacturer (also established in Germany) with mechanical automobile springs. LuK alleged the springs infringed two French patents it owned. 21 10 See, e.g., Chiron/Organon Teknika, Hof, den Haag, 1 dizember 1994, 1995 IER 15. 11 See, e.g., Hoffman-La Roche/Organon Teknika, Rb., den Haag, 14 dizember 1995, 1996 IER 6, particularly at note 48, paragraph 15. 12 Article 16(4) of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matter (OJ 1978 L 304, p.36) as further amended at OJ 1978 L 304, p. 77; OJ 1982 L 388, p.1; OJ 1989 L 285, p.1; and OJ 1997 C 15, p.1.) 13 Hoffman supra n. 11 at 14. 14 When conduction an analysis under Articles 6(1) and 22 of the Brussels Convention. 15 In order to enjoin various parties of the same organization across various jurisdictions, the courts have found that the entities need a certain connection ( connexité. ) This principle is particularly elucidated in the ECJ s decision in Kalfelis/Schröder, Case 189/87, 1988 E.C.R. 565. 16 Contrast, e.g., Coin Controls Ltd. v. Suzo International (UK) Ltd., 3 All E.R. 45 (Ch. 1997) (refusing to apply jurisdiction to all non-gb portions of an EPO granted patent) with Palmaz/Boston Scientific, B.V., Rb., den Haag, 1998 F.S.R. 199 modified, Expandable Grafts Partnership/Boston Scientific. B.V., Hof, den Haag, 1999 F.S.R. 352 (finding that jurisdiction was proper based on one organization acting as a spider in the web for its sister companies in other jurisdictions. 17 The author discusses these cases in further detail in Coletti, No Relief in Sight: Difficulties in Obtaining 18 Judgements in Europe Using EPO Issued Patents, 81 J.P.T.O.S. 351 (May 1999). Although this area of the law was undoubtedly hot for some time, remarkably, virtually all of the focal cases settled prior to their being able to be reviewed by the ECJ. Others were simply not appealed. 19 Solvay AG Opinion, supra n. 5, at paragraph 2. 20 Gesellschaft fur Antriebstechnik mbh &Co. KG v. Lamellen und Kupplungsbau Beiteiligungs KG, Case C- 4/03 ECR I-6509 [2006]. Herein, the plaintiff will be referred to as GAT, and the defendant as LuK. 21 GAT at I-6528, 9. The ECJ makes no mention of whether these French patents are based on an EPO filing, although it is assumed that this is the case. In any event, for jurisdictional purposes, as we will see, the treatment should be the same.

Cross-Border Patents 3 GAT brought a declaratory action in Germany, maintaining that its products did not infringe those French patents, and further, that those patents were invalid. 22 The question to be decided by the lower court (and ultimately, the ECJ) was whether it had jurisdiction under article 16(4) of the Brussels Convention. 23 As provided by Article 16, when judging the validity of the national patent, the court of the Member State in which the patent is granted is uniquely qualified to make such a determination. 24 The question for the court in GAT was whether the rules of the Convention applied only to cases in which the issue of validity is raised by way of original action, or whether it included other types of actions, such as where validity is raised in defense. In GAT, the ECJ took the view that such under the Convention, such exclusive jurisdiction must be accorded to the Courts of Member States regardless of the pleadings under which one assert the patent s invalidity. 25 To provide otherwise would allow claimants to circumvent the mandatory nature of the provisions laid down in Article 16. 26 The second such case is the decision in Roche Nederland BV and Others 27 ( Roche. ) In Roche, the claimants were residents of the United States, and the owners of a bundle of national patents. 28 The claimants brought an action in the Netherlands against Roche Nederland BV 29 and eight other companies in the Roche family. These other defendants were companies established both within member States of the EPC and States outside the EPC. 30 Those companies domiciled outside the Netherlands contested the jurisdiction of the Dutch courts. 31 On the merits of the case, each defendant claimed non-infringement and invalidity of the specific national patent in question. The decision in Roche highlights the interplay of various different provisions of the Brussels Convention. First, it was clear that according to the special jurisdiction of Article 6(1) 32 at least theoretically, the defendants could have been sued in the Netherlands. In the case of the infringement of different patents, i.e., the infringement of the various national patents, jurisdiction would be proper if the cases were related under Article 22 33. The question of relatedness is based on the activities of each of the defendants. It had been made clear that they all acted: in an identical manner; in accordance with a common policy; and under the direction of one of them. 34 For the ECJ, however, such related activity was not enough by itself. For the ECJ, in addition, the legal situation must be the same, or else there would not be a risk of contradictory decisions. 35 Although 22 Id. at 10. 23 Article 16 is now superseded by Article 22 of Council Regulation 44/2001 24 The deference given to the court of the Member State is premised on the theory that these courts are uniquely qualified to opine of whether under local law the patent properly has been granted. 25 GAT at I-6532, 25. 26 Id. at 27. The Court reasoned that the risk of contradictory decisions concerning the validity of a patent is paramount, so that even if the decision would only have an effect erga omnes (as is permitted in some jurisdictions) courts should decline jurisdiction, as this could undermine the uniformity sought to be preserved by the Convention. Id. at I-6533, 30. 27 Roche Nederland and Others v. Primus and Others, Case C 539/03, ECR I-6535 [2006]. 28 Based on EP 131627. 29 A company established in the Netherlands. 30 Specifically, the United States. 31 Importantly, each of the EPC defendants were accused of infringing the national patent of the country in which it was domiciled for activity that took place in that country. 32 [A defendant may also be sued] where he is one of a number of defendants, in the courts for the place where any one of them is domiciled. 33 [A]ctions are deemed to be related when they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgements resulting from separate proceedings. 34 Roche, supra n. 27 at I-6581, 33. 35 Id. at 35.

4 Paul A. Coletti various national species of the identical EPO patent are granted on the basis of the same specification, with identical claims, the legal situation is not the same. Its finding is based on provisions of the EPC, which require that infringement of any national patent granted in a member State must be dealt with according to the national law of that State. 36 Following Roche, practitioners surmised that there could be virtually no situation which would render the possibility of irreconcilable judgments under a bundle of commonly granted national patent rights. Even though the accused activity in the various jurisdictions may be identical, in all situations the national laws concerning infringement are different. Thus an infringement analysis of the patent in one jurisdiction will necessarily be different than in a second jurisdiction. As such, there could never be contradictory decisions. 37 Each decision would be unique to the jurisdictions in which the patents are in force. In this fashion, the ECJ found that Article 6(1) of the Brussels Convention should not apply in European patent infringement proceedings involving a number of companies established in various Contracting States in respect to acts committed in one or more of those States even where those companies may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them. 38 The decisions in GAT and Roche would seem to have finally put to rest the possibility of granting cross-border injunctions. Under GAT, all a defendant need do is allege invalidity of the extra-jurisdictional patents, and a local court must dismiss the parts of the case using those extra-jurisdictional patents. 39 As well, even in the rare case of the allegations of infringement without any counterclaim for invalidity, a court could properly dismiss, even if the defendants were properly joined under Regulation 44/2001. Under Roche, the court would know that there was no possibility of arriving at irreconcilable decisions under the various patents against extra-jurisdictional defendants, since each of the patents issued outside the local jurisdiction carried with it a separate cause of action under its own national laws. Solvay Enter the Solvay case. Solvay SA, a company established in Belgium and holding a European Patent registered in more than one Member State of the EPC, brought an infringement action in the Netherlands (in main proceedings ) against three related companies of the Honeywell group. The allegedly infringing item in question was identical to a product described under the patent. One Honeywell company was established in the Netherlands, against whom there would be no question of jurisdiction. The two other Honeywell companies were established in Belgium. 40 Subsequently, the plaintiff also brought an interim claim seeking cross-border prohibition against infringement of the patent for the duration of the main proceeding. The defendants claimed invalidity of the national parts of the patent concerned in the interim proceedings. Plaintiff also contested the competence of the Dutch court to hear both the 36 See, EPC Articles 64(1) and 64(3). These provisions are based on the concept that each granted patent based upon a European filing is one of a bundle of national rights. 37 Perhaps theoretically, if the courts of one jurisdiction abdicated their responsibility and said that they were prepared to follow the laws of infringement of a second jurisdiction, one would have to revisit this matter. Presently, this situation does not exist. 38 Roche, supra n. 27 at I-6584. 39 As well, it would seem that the extra-jurisdictional defendants against whom an injunction could potentially be enforced would also be dismissed. 40 Thus, jurisdiction could arguably extend to them under Article 6(1) of Regulation 44/2001. Of course, the claims must be closely enough connected for Article 6(1) to apply; as well, there must be no problems encountered under GAT or Roche, which will form part of the remaining discussion of this case.

Cross-Border Patents 5 main and the interim proceedings. The lower court referred the question to the ECJ, for a preliminary ruling on the jurisdictional matters. -Applicability of Roche In the first portion of his analysis, the Advocate General examined the propriety of granting jurisdiction against multiple defendants under various nationally granted patents. 41 Typically, granting jurisdiction in such a situation would seem to present a problem under Roche. That is, since plaintiff had alleged infringement of at least two different national patents, under Roche that there is no common situation of law and fact, since the two patents are to be judged under the national laws of the respective Member States. 42 According to the Advocate General, the answer to this jurisdictional question is more nuanced. 43 In his eyes, by denying jurisdiction in every such situation, the protection accorded to holders of European patents would be substantially weakened. 44 So he seized on a difference in the allegations made in Roche and Solvay. Whereas in Roche the defendants were each separately alleged to infringe the portion of the patent in their own jurisdiction, in Solvay each of the defendants were alleged to infringe each patent in each jurisdiction. So, each defendant is accused of infringing the same national part of the European patent. 45 For the Advocate General, this distinction was enough to confer jurisdiction. He claims that were this not the case, courts in each of the Member States would have to be seised, and in so doing, each of these courts would have to render an opinion on portions of the patent. Since courts in different Member States could potentially be asked to rule on infringement in a Member State which is not a domicile of any of the defendants, this sets up the potential for irreconcilable decisions under such a patent, in this instance where the matter is the same issue of law and fact. 46 Accordingly, he would have granted jurisdiction under Article 6(1) of Regulation No 44/2001 in an action for infringement of the European patent involving several companies established in different Member States when the actions relate separately to acts carried out in the same Member State that infringe the same national part of a European patent governed by the same law. 47 In essence, the ECJ adopted the Advocate General s interpretation in its judgement, enunciating it in a slightly different way. The Court ruled that in: a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, is capable of leading to irreconcilable judgments resulting from separate proceedings as referred to in that provision. It is for the referring court to assess whether such a risk exists, taking into account all the relevant information in the file. 48 By its ruling, the Court refused to shut the door on granting such injunctions. Rather, the Court left open such possibility and left it for the trial court to decide whether to grant an injunction on a case-by-case basis. 41 Here for instance, patents granted in Belgium, the Netherlands, and other jurisdictions not common to any of the defendants. 42 Roche, supra n. 27 at I-6580-82, 26-35. 43 Solvay AG Opinion, supra n. 5 at 22. 44 Id. at 20. 45 Id. at 23 (emphasis added). 46 Id. at 24-26. 47 Id. at 29. 48 Solvay, supra n.3 at 30.

6 Paul A. Coletti -Applicability of GAT The ruling in GAT would seem to require that where the validity (actually, invalidity) of a patent is alleged, the court must dismiss any claims under that particular patent, since the local court of the Member State is uniquely qualified to hear such validity claims, under Article 22(4) of Regulation 44/2001. 49 Once again, however, the Advocate General called the situation more nuanced and [one in which a court] should take account of procedural reality. 50 This reality looks at three possible situations where the validity of the patent has been called into question: (a) in both the main proceedings and the interim proceedings; (b) only in the main proceedings; or (c) only in the interim proceedings. 51 The Advocate General had little choice under GAT as to what can be done in the main proceedings where validity is contested. A court outside the jurisdiction of the patent must decline jurisdiction for the main proceedings, whether the allegation of validity is made as a main claim or a counterclaim. 52 But, what about the interim measure, under either the second or third scenario? As for scenario (b), the Advocate General reasoned that the court must analyze whether an injunction could issue based on yet another Article of the Regulations. 53,54 With respect to scenario (c), the Advocate General broke it down in two other aspects: whether the defendant has not had the opportunity to raise validity of the patent in the main proceedings (situation (c1)); or whether the defendant had such an opportunity but did not consider it appropriate to do so (situation (c2).) 55 Taking the situation (c2) first, the Advocate General considered this condition identical to that of scenario (b), which would require his answer to be the same. That is, the court should determine whether to issue an injunction under Article 31. 56 In response to situation (c1), where the defendant has not had an opportunity to plea invalidity, he would allow the granting of injunctions, but only with the condition that any such injunction would not have final effect, lest it contravene the holding in GAT. 57 Accordingly, in any conceivable situation, the Advocate General would allow the granting of cross-border injunctions in interim proceedings. He would decline to apply the holding in GAT when the validity of a patent is raised only in interim proceedings, in so far as the decision likely to be adopted at the end of those proceedings does not have any final effect. 58 The Advocate General recognized that the ECJ might not adopt his guidance regarding preliminary measures, and so then explored whether an injunction could be granted under Article 31. 59 Here, he conceded that there must be a real connecting link between the subject matter of the provisional measures sought, and the jurisdiction of the court seised. 60 In such a situation, the Advocate General signaled that the measure must have an effect in the territory of the Member State and can be enforced there. 61 Speaking in 49 See GAT supra n. 20 at I-6531, 20-24. 50 See Solvay AG Opinion, supra n. 5 at 37. 51 Id. at 38. Interestingly, the Advocate General calls these doses of reality hypotheses. 52 Id. at 39. 53 Article 31 deals with provisional measures, and says in relevant part that courts of any Member State may be requested to grant such measures even if the courts of another Member State have jurisdiction as to the substance of the matter. 54 Solvay AG Opinion, supra n. 5 at 39. 55 Id. at 40. 56 Id. 57 Id. at 41. 58 Id. at 43. 59 Although he does not say, this would seem to be under scenarios (b) and (c2) laid out in the text. 60 Solvay AG Opinion, supra n. 5 at 50. 61 Id. at 54.

Cross-Border Patents 7 the negative, he indicated that a court may not authorise a provisional measure that produces no effect in its territory. 62 In its ruling, the ECJ once again decided in a far vaguer manner. It declined to analyze the various possible situations, leaving those raised by the Advocate General as mere hypotheticals. However, in essence (and once again) the Court adopted the advisory ruling of the Advocate General: Article 22(4) of Regulation No 44/2001 must be interpreted as not precluding, in circumstances such as those at issue in the main proceedings, the application of Article 31 of that regulation. 63 So, again, the ECJ left open the possibility of granting such an injunction even in light to the seemingly stringent confines of the GAT decision. 64 -Impact In an effort to satisfy the multiple jurisdictional parameters of the Council Regulations while still preserving some right for European courts to grant cross-border patent injunctions, the Advocate General and the ECJ have necessarily confined the scope of the holdings in both GAT and Roche. In the case of the Advocate General, he has referred to the impact of these twin decisions as nuanced. However, reading both such cases together, one would have thought that the ECJ had made it very clear that the granting of cross-border injunctions, if at all, should be reserved for very limited situations. 62 Id. at 55. Although left unstated, it would seem that once a court has made the determination (i.e., that the provisional measure would have an effect in the territory) then the court could grant such a measure (presumably with cross-border effect.) 63 Solvay, supra n. 3 at 51. 64 On the basis of its answer to this second question, the Court declined to answer the following questions presented to it by the lower court: [3] In order for Article 22(4) of to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of Regulation are already pending or are to be commenced within a period to be laid down by the court or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law? [4] If question [2] is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised? [5] If question [2] is answered in the affirmative, can Article 31 confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a crossborder prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) does not affect the jurisdiction of the [court] to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid? [6] If question [5] is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link between the subject matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought? Solvay, supra n. 3 at 16, 52. As is its prerogative, it seems the Court did not feel obliged to lay down any further guidance than that it deemed necessary to answer the questions posed to it.

8 Paul A. Coletti For instance, we know that under GAT (and reading in the exclusive jurisdictional rules of Council Regulation Article 22) only local courts should have the exclusive right to determine the validity of a locally-issued patent. By this very fact, cross-border situations would seem to be limited to only those times where validity of extra-jurisdictional patents is not asserted. Undoubtedly, the ECJ understood the import of its finding in GAT, and that this holding would virtually do away with the availability of cross-border actions. After all, the ECJ must know that where infringement is alleged, a defense of invalidity is almost certain to follow. In some ways, this makes perfect sense. After all, if EPO granted patents are bundle of national rights, 65 then the local courts should be the exclusive means by which an injunction should grant. Of course, local courts should only have jurisdiction over activities within that Member State. As a result, it would seem that the concept of granting cross-border injunctions would be alien to the concept of national patent rights, at least where the invalidity of those patent rights is alleged. As well, it is clear that under Roche, and within the strictures of Council Regulation 6(1), defendants should be joined where they are accused of actions under a common set of closely connected facts. For instance, it is clear that under Article 6, a group of defendants could be charged in one jurisdiction for infringement of a national patent granted in that jurisdiction. Injunctions could issue in that particular jurisdiction based on that particular patent. To join the defendants would be judicially expedient, since there are indeed, an identical situation of law and facts. Yet we also know from Roche, that an accusation of infringement would be a different situation of law, since the law of one jurisdiction is different from that of another, even where the patent claims are identical, and even where the accused activity is identical. With the ECJ following the Advocate General s guidance (at least by the effect of its decision,) an important aspect associated with cross-border injunctions has resurfaced, seemingly without regard to the ultimate legal analysis of the case. That is, in interim proceedings, the Advocate General would consider whether injunctions could be granted. Of course, he has already said that an injunction should only be issued strictly on the condition that it does not have any final effect. 66 The court would grant the injunction, ostensibly because it would perceive that there would be a likelihood of success on the merits, but then would have to revisit its analysis in main proceedings. In the same fashion as the Advocate General s analysis of Solvay, the granting of an injunction gives rise to two alternatives. In the first, if a finding of infringement ensues in the main proceedings, there should be no problem with the original injunction. However, in the second - a finding of non-infringement in the main proceedings - the parties would know that the original injunction was improvidently granted in interim proceedings. 67 Yet, the plaintiff would have achieved the in terrorem aspect of the grant of the injunction, where there should not even have been jurisdiction (to say nothing of the improper grant of the underlying injunction) in the main proceedings. 68 Surely, this prospect turns the law of cross-border injunctions on its head. Under the scenario laid out above, a plaintiff could bring an interim action, and under the findings 65 EPC Article 2(2); see DR. ROMUALD SINGER AND MARGARETE SINGER, THE EUROPEAN PATENT CONVENTION 17 n. 2.02 (Raph Lunzer and John Beton trans., rev English ed. 1995) (1989). 66 Solvay, supra n. 5 at 41, 43. 67 Of course, this alternative could be entirely consistent. The court in the interim proceedings must come to the conclusion that a finding of infringement is likely. The court in the main proceedings must actually determine if there is an infringement. For the defendant, however, this is a binary situation. With this alternative, a preliminary ruling of infringement could result in an preliminary injunction, which would then be followed by the finding of non-infringement, and the lifting of the injunction. 68 Under GAT.

Cross-Border Patents 9 laid out in Solvay, receive an injunction. 69 Yet, since the plaintiff would have to acknowledge that the granting of an interim action would not have any final effect, when the time comes for a final decision, the injunction would necessarily be lifted, and the case would devolve appropriately under Roche to actions in all the various jurisdictions. 70 If this is the intention of the findings in GAT and Roche, then the premise under which the ECJ decided Solvay would seem to be misplaced. -Further considerations As the ECJ came to its decision in Solvay, it would have done well to take notice of other broader considerations in the world of EPO-related patents, while (of course) deciding Solvay under the facts before it. That is, the European Union seems to be on course to promulgate rules for a truly pan-european patent. 71 At least 25 of the 27 EPO member nations (Italy and Spain being lone exceptions) have indicated that they are willing to accede to a unitary European patent. In other words, there would be a single patent covering each of these jurisdictions, and not a bundle of national patent rights. 72 This European Patent with Unitary Effect would carry with it the introduction of a Unified Patent Court. 73 Under the court rules currently being contemplated, the Patent Court would have the power to grant injunctions having pan-european effect, based on the unitary patent. The hoped-for date for finalizing the framework of the Patent and the Court is early 2014. 74 This development is undoubtedly welcome news to many practitioners, both inside and outside the EU. At this fragile time, the ECJ s nuanced approach to expanding the possibility of granting cross-border pan-european injunctions should have been approached advisedly, with clear justification. It is not the time to cling to the old standards and thereby lessen the possibility of actual harmonization. Conclusion The ECJ has missed an opportunity to reinforce its findings in both GAT and Roche, and thereby limit the applicability of pan-european cross-border injunctions. With the advent of a unitary European Patent and a Unified Patent Court, the ECJ could have avoided a nuanced approach to injunctions and help achieve the hoped-for certainty of scope in EPO-issued patents that has been so elusive over the course of the last forty years. Johnson & Johnson has been a part of people's lives for 126 years and a valuable part of their investments for more than 65 years. Founded in 1886, we listed our shares on the New York Stock Exchange for public investors in 1944. During our history, we have built the most comprehensive base of health care businesses in the world, generating approximately 70 percent of our revenues from No. 1 or No. 2 global leadership positions in our respective markets. *** 69 Or, at least an analysis of whether to grant an injunction which could lead to the injunction itself. 70 Later, in the same action, it could bring main proceedings where all the defendants need do is to allege invalidity, and the cross-border effect would be limited (under GAT.) 71 76/12 EUCO 2 at 3 [2012]. 72 For a discussion of the EU Patent with Unitary Effect, see http://www.epo.org/news-issues/issues/eupatent.html. 73 At least for the 25 States that have so agreed. 74 A discussion about this arrangement can be found at http://www.law360.com/articles/351067. Admittedly, given the slow pace of patent law harmonization over the years, one cannot be certain of any advancement in this arena until the ink is actually dry on the harmonizing statutes.

10 Paul A. Coletti Our consistent performance has enabled us to deliver an exceptional track record of growth that few, if any, companies can claim: 29 consecutive years of adjusted earnings increases; and 50 consecutive years of dividend increases. Over the last 10 years, Johnson & Johnson stock generated a 3.6 percent total return for investors compared to a 2.9 percent total return for the S&P 500.