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NL – Tata Steel IJmuiden v. ArcelorMittal / OPINION ADVOCATE GENERAL

28 May 2019

Tata Steel IJmuiden v. ArcelorMittal, Dutch Supreme Court, Opinion Advocate General, 19 April 2019, Case No. ECLI:NL:PHR:2019:510

This case concerns the scope of EP 0044 held by ArcelorMittal and relating to ‘Clad hot-rolled and cold-rolled steel sheet, presenting a very high resistance after thermal treatment’.  EP 044 states in the claims that the lower threshold for the element boron in the steel composition by weight is > 0.0005 % (hereafter wt%) .

Tata Steel sought to clear the way by obtaining a negative declaratory judgment stating that steel plates containing less than 0.00045 wt% boron, but otherwise in accordance with all elements of claim 1, do not fall under the scope of protection of EP 044. The District Court and the Court of Appeal denied such declaratory judgment. The Court of Appeal came to the conclusion that patent infringement by equivalence could occur in a certain case with a (slightly) lower percentage boron than 0.00045 wt%.

In these cassation proceedings Tata Steel argues that the Court of Appeal did not apply the correct criterion for determining the scope of protection of EP 044.

The Advocate General disagrees, and advises the Supreme Court to dismiss Tata Steel’s objections to the judgment of the Court of Appeal.

The Advocate General comes to this conclusion as the interpretation of EP 044 by the Court of Appeal in his view fits Art. 69 EPC and the Protocol as further clarified by the Dutch Supreme Court. The judgment of the Court of Appeal that the average man skilled in the art based on his knowledge would interpret the boron lower limit from the claims as prompted by the wish to comply with a common industry standard and not as a strict lower limit, is both factual and comprehensible.

The Court of Appeal according to the Advocate General could as such also have followed the interpretation as proposed by Tata Steel. However, the Court of Appeal sufficiently motivated why it chose not do so. The weighting of the various factors in determining the scope of protection in the Netherlands is a task of the courts establishing the facts.

The Advocate General proposes that Tata Steel’s objections to the judgment of the Court of Appeal are to be dismissed.

In an afterthought the Advocate General states that the outcome of these proceedings could have been different if Tata Steel would have sought a more narrow negative declaratory judgment. The Advocate General also states more generally that future clearing the way judgments are not deemed to be doomed by the way in which the scope of protection is determined in the Netherlands, as implicitly alleged by Tata Steel.

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