Court of Appeal confirms jurisdiction in Hutchinson vs Tyron Runflat

In a recent decision, the Paris Court of Appeal asserted its jurisdiction to rule on an infringement of Hutchinson’s patent in the UK and Germany (case ID: 22/16203). The judges, led by presiding judge Véronique Renard, thus followed a judgment of the Supreme Court. In 2022, the latter ruled that French courts have the jurisdiction to rule on patent infringements outside France (case ID: 21-11.085).

As a result, the main infringement proceedings between Hutchinson and Tyron Runflat and the latter’s French distribution partners can now continue. These have been pending since 2018.

Six-year wait

French automotive supplier Hutchinson and its British competitor Tyron Runflat have been fighting for years over EP 1 262 340, which protects an automotive wheel with improved inflation system. The patent has since expired but was valid in France, Germany and the UK, among other countries.

Initially, the Paris-based patent holder brought an action for infringement before the Paris Judicial Court against four companies: British Tyron Runflat, South African automotive supplier Global Wheel, and French distribution partners L.A.VI. and Dal. Tyron Runflat had presented its flat tyre protection product Tyron Rubber Runflat, mounted on a wheel rim from Global Wheel, at the Eurosatory trade fair in 2018.

Hutchinson accuses the company of infringing its EP 340 with this product. The claimant requested that the French court rule on the alleged infringements committed by the defendants not only in France, but also in Germany and the UK. The defendants challenged the jurisdiction of the French court to rule on acts occurring outside France.

At the end of February 2020, the Judicial Court issued a pre-trial order, in which it declined the Paris court’s jurisdiction in ruling on infringement in Germany and the UK. As such, the court limited its jurisdiction to infringement in France only (case ID: 18/08284). Hutchinson appealed the decision, and the Paris Court of Appeal confirmed the pre-trial decision in December 2020 (case ID: 20/04780).

In principle, a French court can rule on suspected infringement of a European patent in other EU member states. However, the court found that this was not the case in the dispute between Hutchinson and its UK and South African competitors.

Ruling overturned

In late June 2022, the Supreme Court in Paris overturned the decision of the Court of Appeal (case ID: 21-11.085). The judges followed Hutchinson’s argument that French courts have jurisdiction to rule on infringement in countries outside France, since some parties to the proceedings, including the claimant, are based in France.

According to the Supreme Court, Article 8(1) of EU regulation “Brussels I bis” applies in the dispute with UK-based Tyron Runflat. On the other hand, in proceedings against the South African company Global Wheel, the Supreme Court decided that Article 14 of the French Civil Code applies. This states that a foreign national, even if not resident in France, may be summoned to the French courts on the basis of commitments entered into in France, or abroad with French persons.

As such, French courts could rule not only on a possible infringement of EP 340 in France, but also in Germany and the UK. The ruling also applies to the latter as the party filed the original infringement action before Brexit.

The Supreme Court’s ruling also allows cross-border injunctions from France in the future, similar to those issued by Dutch judges in the Netherlands.

Back to Court of Appeal

The Hutchinson case was referred back to the Paris Court of Appeal for a new decision. A different panel of judges than in the 2020 appeal have now ruled on the court’s jurisdiction. In addition to presiding judge Véronique Renard, the judges in the 2nd chamber of the court’s 5th division were Agnès Marcade and Florence Marques.

They confirmed the jurisdiction of the French courts to rule on the infringements in the UK and Germany. At the same time, the defendants would have to file separate nullity actions in all three countries if they wanted to challenge the validity of EP 340. According to the EPO register, the owner has opted the patent out of the UPC.

DTMV for Hutchinson

Claimant Hutchinson and lead defendant Tyron Runflat relied on their counsel from the outset of the infringement action.

Hutchinson retained French full-service firm DTMV, which has a well-known IP team, for the infringement suit and the subsequent disputes over jurisdiction. Name partner Thierry Mollet-Viéville took the lead. As in the previous Court of Appeal trial in 2020, lawyer Arnaud Guyonnet assisted. He specialises in Court of Appeal proceedings.

Julien Horn

Paris-based law firm de Gaulle Fleurance & Associés represented UK company Tyron Runflat. Partner Julien Horn, who specialises in IP litigation, took the lead for the duration of the dispute. For technical issues, patent attorney Cedric Mutelet assisted. Mutelet recently joined de Gaulle Fleurance from Novagraaf and has a background in mechanical engineering. Matthieu Boccon-Gibod assisted as lawyer specialising in proceedings at the Court of Appeal.

In the original dispute, Pinsent Masons represented defendant Global Wheel. Then-partner Emmanuel Gougé, who has since joined the UPC as a legally qualified judge, worked on the case with legal director Virginia De Freitas. However, as stated in the Court of Appeal decision, Hutchinson has now settled the dispute with Global Wheel and has withdrawn its claim against the South African company.

The two French defendants Dal and L.A.VI, both based in Neyron near Lyon, hired Bérengère Lesne from local law firm B2L and the Paris-based lawyer Florence Dios. In the first appeal, Dios worked with Manon Azaïs of Lyon based VJA.