Abuse of Patent Right Before Antwerp Commercial Court

On 3 April 2012, the President of the Commercial Court of Antwerp found that a patent holder had abused its patent right by serving notice on an alleged infringer without specifying the relevant patents. The abuse of patent right was found to constitute an unfair market practice in breach of Article 95 of the Law on Market Practices and Consumer Protection of 6 April 2010 (Wet betreffende marktpraktijken en consumentenbescherming / Loi relative aux pratiques du marché et à la protection du consommateur - the “Market Practices Law”).

The procedure at hand concerned the Yelo service of Telenet NV (“Telenet”). The Yelo service allows Telenet customers to consult the television programming and schedule recordings from computers and mobile devices. United Video Properties Inc. (“UVP”) claimed that this service infringed patent rights registered by itself and its affiliated companies (jointly “ROVI”).

ROVI had sent a notice letter to Telenet with regard to the Yelo service. It had concluded a license agreement with Telenet’s Dutch majority shareholder for its services in The Netherlands. Telenet had refused to conclude a license on the same terms as its majority shareholder since it was not clear whether its service infringed any of ROVI’s patents. Indeed, Telenet argued that one of the three patents mentioned in ROVI’s notice letter did not apply to the Belgian territory and that the validity of the two other patents was uncertain. In addition, Telenet claimed that its services did not infringe the patents.

In response, ROVI stated that the mentioned patents were listed as examples and that the proposed license covered its full patent portfolio. It maintained that it was not under any obligation to specify which patents would be relevant for Telenet.

Subsequently, ROVI summoned Telenet before the President of the Commercial Court of Antwerp for violation of its patent EP 1 213 919. Telenet filed a counterclaim for breach of the fair market practices.

The President dismissed the patent infringement claim and granted Telenet’s counterclaim. The President held that ROVI had abused its rights by failing to specify the infringement of its patents and refusing clarification when requested. The President thus found an infringement of Article 95 of the Market Practices Law.

The President nevertheless pointed out that a patent holder is not required to serve notice upon the alleged infringer before going to court. However, if it chooses to send a notice letter, it must specify which rights are infringed. In the case at hand, the notice letter specified three patents, but not EP 1 213 919 on which the writ of summons had been based.