Hymmen Industrieanlagen GmbH v. Teijin Aramid B.V., District Court of The Hague, the Netherlands, 26 August 2015, Case number 461854 / HA ZA 14-329

Teijin is involved in the production of yarn that consists of fibres suited for application in e.g. bullet- and fireproof garments. Hymmen inter alia manufactures presses used for the produc-tion of various materials. Teijin and Hymmen entered into a collaboration, which led to vari-ous patent applications being filed by Teijin.

The present proceedings were initiated by Hymmen and concern, in short, a claim for entitlement by Hymmen to all rights derived from the patent applications. The District Court rejects the claim for entitlement because Hymmen failed to substantiate that Teijin or its employees did not have the relevant (technical) knowledge and/or because the subject matter of the patent(s) in question is deemed not inventive.

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One of the products offered by Hymmen concerns a so-called 'double-banded press'. The technical principles underlying this press are set out in the book "Continuous Press Technol-ogy" ("Hymmen book"), which was published in 1997 by HGMA, a German company that transferred assets to Hymmen prior to its liquidation. In 2005, Teijin's mother company ap-proached HGMA in its search for a press to be used for the production of polyethylene fibres. The parties subsequently entered into a non-disclosure agreement ("NDA"), in which it is set out that the party making available certain information that could lead to patentable inven-tions would have the right to claim such inventions.

During the course of 2006, Teijin on several occasions had its polyethylene fibres sintered in a press provided by HGMA. Teijin then analysed the fibres and HGMA made adjustments to its press. In the beginning of 2007, HGMA offered Teijin a press, to which offer Teijin did not respond. Two years later, Teijin filed a PCT application for a "process for manufacturing polyolefin films" (WO 2009/153318), as well as various national applications, claiming priority of a European patent application that was granted as EP 2 307 180 B1 ("EP '180").

In the present proceedings, Hymmen claims a declaratory judgment confirming Hymmen's entitlement to all rights that have resulted from the patent applications pursuant to Article 60 of the European Patent Convention and, as an alternative claim, a declaratory judgment that Teijin is in breach of the NDA due to its use of knowledge derived from Hymmen. Moreover, Hymmen claims that Teijin be ordered to transfer the relevant patent rights to Hymmen, sub-ject to a penalty, as well as damages and reimbursement of legal costs.

The District Court claims jurisdiction on the basis of Article 2 of Regulation 44/2001/EC and rules that it has exclusive jurisdiction to hear the claim regarding the Dutch part of the Euro-pean patent application on the basis of Article 80 of the Dutch Patent Act. As to the claim for entitlement to the non-Dutch parts and various (national) applications, the District Court rules that it has jurisdiction as such has not been contested by Teijin.

The District Court assesses the claims of EP '180 in detail, as both parties took the position that a party can only claim entitlement insofar as the technical matter is inventive. The District Court rules, in short, that Hymmen failed to substantiate that Teijin did not have the relevant (technical) knowledge and that the subject matter of patent(s) is not inventive, as this subject matter was either arbitrary, based on 'good engineering practices' or known from the Hymmen book and/or the general knowledge of the skilled person.

The District Court thus rejects the claim for entitlement with regard to EP '180, and rules that Hymmen is (therefore) also not entitled to the foreign parts or national applications. The District Court also rejects Hymmen's claim regarding breach of the NDA, as Hymmen did not refute that Teijin was already thinking about using a double banded press and because the information used by Teijin does not constitute confidential information within the meaning of the NDA.

Read the judgment (in Dutch) here.

Head note: Tim Iserief, NautaDutilh