The Court of Appeal in The Hague has upheld a first-instance judgment against Longi over infringement of a Hanwha Q-Cells patent. The patent, which covers solar panel technology, is enforced in 16 European countries - not including the Netherlands. But a case on the patent's validity is not yet out of the question.
11 March 2022 by Amy Sandys
The Court of Appeal in The Hague has confirmed that Longi Netherlands’ solar panel products infringe EP 22 20 689 B1, which is held by Korean company Hanwha Q-Cells. This decision, which upholds a previous judgment handed down in November 2021, means the court has extended a cross-border injunction to eleven European countries.
The court also granted Hanwha’s ancillary claims in the second instance, meaning Longi must send product recall letters to customers and pay Hanwha’s legal costs.
However, future proceedings on the merits could suspend infringement proceedings. If Longi disputes the infringement claim by submitting the invalidity of EP 689’s foreign designations, under Article 24 of the Brussels Regulation Recast the Dutch courts have no jurisdiction to decide on invalidity.
Thus, the parties would have to find a suitable court outside of the Netherlands. Currently, however, JUVE Patent is unaware if the defendant plans to take such a step.
Despite being valid in 16 European countries, EP 689 is not registered in the Netherlands. Nevertheless, the first-instance court issued a cross-border injunction for nine countries covered by the patent. This is because, under Article 4 of the Recast Brussels Regulation, the Dutch courts have cross-border jurisdiction to hear Hanwha’s claims against Longi, since it is established in the Netherlands.
The Court of Appeal upheld this decision, deciding that Longi has acted unlawfully by inciting patent infringement through selling its technology to customers. Thus, the court confirmed the injunction for Belgium, Bulgaria, Germany, France, Liechtenstein, Portugal, Spain, the UK and Switzerland (case ID: C/10/621252 / KG ZA 21-563). It also extended the injunction to cover Hungary and Austria.
EP 689 B1 is valid in 16 European countries, as well as the US and Australia. It protects a solar cell with two surface-passivating dielectric layers on a silicon substrate. The aim of the layers is to reduce the efficiency losses of the solar cell, and to significantly increase its output.
In Germany, appeal proceedings are ongoing. Currently, the parties are waiting for the European Patent Office to hand down a formal decision following patent opposition proceedings. In France, proceedings on the merits are still pending. Last year, Longi also appealed to the court to withdraw the injunction for Belgium. However, the preliminary injunction judge rejected Longi’s claim in this regard.
On the other hand, Hanwha Q-Cells had originally applied for a preliminary injunction for all 16 European countries. But the Rotterdam court did not grant an injunction for Croatia, Greece, Italy, Romania and Turkey, because Hanwha Q-Cells was not yet registered as the patent owner in these countries.
According to the judgment, Hanwha Q-Cells did not demonstrate clear patent ownership in these countries by the time of the appeal proceedings. As such, the Court of Appeal did not extend the preliminary injunction to include the additional five countries.
Hoyng ROKH Monégier works for Hanwha Q-Cells cross-border, with the Düsseldorf office already successful against Longi and two other competitors. In Germany, partner Martin Köhler leads proceedings and is coordinating the Europe-wide action against Hanwha Q-Cells’ competitors.
The company is also working with partners from Hoyng ROKH Monégier in Amsterdam and Paris, with Dutch proceedings led by Theo Blomme. The firm’s internal patent attorneys also work alongside its litigators in the case.
Hoyng ROKH Monégier has worked with Hanwha Q-Cells for three years. The client came via recommendations and referrals resulting from its links to Korean firms and industry.
Nauta Dutilh partner Anne Marie Verschuur and her team came to client Longi on the recommendation of German IP firm Grünecker. Grünecker is representing Longi in the German proceedings.
For Hanwha Q-Cells
Hoyng ROKH Monégier (Amsterdam): Theo Blomme (lead), Frank Eijsvogels, Nathalie Rodriguez; David Owen (partner), Reynier Bernaby Lautier (both patent attorneys)
Nauta Dutilh (The Hague): Anne Marie Verschuur, Jeroen Boelens (both lead), Liselotte Bekke, Michelle Slimmen
De Vries & Metman (Amsterdam): Ferry van Looijengoed, Hendrik Jan Zonneveld (both patent attorneys)
Court of Appeal The Hague, the Netherlands
Rien Kalden (chairperson); Michel Bonneur, Anselm Kamperman Sanders, J Pinckaers (cause-list judge)