HE Licenties B.V. vs. VG Colours B.V., District Court of The Hague, The Netherlands,  19 June 2019, ECLI:NL:RBDHA:2019:6407

Introduction
HE Licenties B.V. (”HE Licenties”) is a wholesaler of flowers and plants and, more in particular, colored orchids (and licensor of related technology). VG Colours B.V. (”VG Colours”) is involved in, among other things, the artificial coloring of (originally white-colored) orchids. HE Licenties is the exclusive licensee of Dutch national patent NL 1040904 (”NL 904”) titled ”Substance introduction method for plant and plant obtained therewith” granted on 30 March 2015 (invoking the priority of the Dutch patent NL 1040416 of 27 September 2013).

The invention claimed in NL 904 relates to a hole in the direction parallel to the longitudinal axis of the stem of an orchid, which has the effect that the coloring substance is easier and more quickly absorbed by the plant. NL 904 comprises both method claims (1-10) and product claims (11-15).

Interlocutory judgment
In the present dispute, HE Licenties alleges that VG Colours is infringing NL 904 with its Phalaenopsis Royal Blue orchid. Conversely, VG Colours has raised a number of defenses, including lack of novelty, lack of inventive step and non-infringement. In a previous interlocutory decision of 21 February 2018, the District Court of The Hague had dismissed the nullity arguments of VG Colours as well as the non-infringement arguments with respect to product claims (11-15). It had nevertheless accepted the non-infringement defense with respect to the method claims (1-10) of NL 904.

With regards to the alleged infringement on product claims (11-15), VG Colours has submitted that it cannot infringe the product claims as they are not novel due to its public prior use. In the same interlocutory decision the court, however, decided that it was not yet in the position to establish whether there was actual use by VG Colours before the priority date of NL 904 and ordered that VG Colours should produce evidence to this extent.

The decision at hand
As a general remark, the District Court holds that the standard of proof of the public prior use must be assessed in accordance with Dutch law. Applied to this case, there must be a reasonable degree of certainty that VG Colours had put orchids on the market with a large hole in the stem before the priority date (i.e. 27 September 2013). Dutch civil procedural law does, however, not always require that the facts and circumstances are to be proved beyond reasonable doubt; it may be sufficient that the facts are sufficiently plausible.

When assessing whether this standard is satisfied in a specific case, it may also be taken into account that the evidence lies entirely in the power of the party to the proceedings bearing the burden of proof. This special circumstance arises here according to the District Court, and this means that VG Colours has a relatively heavy burden of proof. This test corresponds to the strict standard used by the European Patent Office for public prior use by the party invoking it (“up to the hilt” or “beyond reasonable doubt”).

The burden of proof on VG Colours therefore amounts to the technical proof that before the priority date it used the same method with the same colour liquid as in the tests described in the interlocutory judgment. In the opinion of the court, VG Colours did not meet this burden. Among other things, VG Colours could not explain what the chemical composition of the coloring liquid is that it used before the priority date of NL 904. Additionally, based on the produced evidence, another method was used in the testing in 2019 than was described in the interlocutory judgment. All in all, the District Court could thus not establish that the same method was indeed publicly used, so that the (lack of) novelty defense was not accepted.

Consequently, the District Court of The Hague ruled that VG Colours infringes the method claims of NL 904 with its Phalaenopsis Royal Blue product while granting an injunction in addition to ancillary remedies such as declaratory relief and a surrender of profits.

A copy of the judgment (in Dutch) can be read here.

Headnote: Jeroen Boelens and Burcu Yapici, NautaDutilh