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Agfa Graphics N.V. v. Fujifilm Manufacturing Europe B.V.; Fujifilm Europe B.V. and Fujifilm Corporation, District Court of The Hague, the Netherlands, 27 November 2015, Case number 494257 / KG ZA 15-1216.

The present preliminary injunction proceedings initiated by Agfa against Fujifilm relate to certain lithographic plates manufactured and sold by Fujifilm that, according to Agfa, fall within the scope of protection of two of its patents. The preliminary relief judge, however, rejects Agfa’s claims due to a lack of urgent interest, as Agfa did not act adequately vis-à-vis Fujifilm and had been ‘sitting still’ for too long.

Agfa is the holder of European patent EP 0 823 327 (“EP 327”) for a ‘Method for making positive photosensitive lithographic printing plate’, granted on 10 November 2004 inter alia for the Netherlands. Agfa subsequently applied for divisional patents, resulting in inter alia European patent EP 1 464 487 B1 (“EP 487”). The validity of EP 327 was confirmed by the Dutch Supreme Court on 10 July 2015 and by the Bundesgerichtshof on 14 August 2012.

In the present preliminary relief proceedings, Agfa takes the position that by manufacturing and selling certain lithographic plates, Fujifilm infringes its patent rights and inter alia claims a preliminary injunction on the basis of both EP 327 and EP 487. As a defense, Fujifilm takes the position that Agfa does not have the urgent interest required for preliminary measures.

The preliminary relief judge first of all notes that the question whether a claimant in preliminary relief proceedings has the required urgent interest is to be answered by balancing the interests of the parties. It is a basic principle that the urgent interest is present in the case of continual infringement. However, if it can be said that the claimant did not act swiftly enough (depending on the circumstances of the case), preliminary measures should be denied.

The preliminary relief judge points out that Fujifilm had been manufacturing the respective plates since 2005 and Agfa waited until May 2013 to bring the infringement under Fujifilm’s attention. Agfa’s claims are thus rejected, also because after May 2013, Agfa remained silent for a period of 6 and subsequent period of 10 months. The preliminary relief judge rules that Agfa failed to sufficiently substantiate why there would still be an urgent interest and does not share Agfa’s position that it has an urgent interest because EP 487 was only recently granted in May 2015, as Agfa in these proceedings also relies on EP 327.

Read the judgment (in Dutch) here.

Head note: Tim Iserief, NautaDutilh