Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 1 of 433
`Case 1:19-cv-11586—FDS Document 214-1 Filed 07/30/21 Page 1 of 433
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 2 of 433
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`Declaration of Mr. Frits W. Gerritzen
`
`30 July 2021
`
`1.
`
`INTRODUCTION
`
`1.1 My name is Frits W. Gerritzen. I am a partner at the law firm of Allen & Overy LLP. I am
`resident in Allen and Overy’s office located in Amsterdam, The Netherlands and I am a bar-
`admitted attorney-at-law in The Netherlands. I make the following declaration under penalty
`of perjury under the laws of the United States. The facts contained in this declaration are
`based upon my own personal knowledge, and legal research, and I would competently
`testify to the facts herein if called upon to do so.
`
`1.2
`
`1.3
`
`1.4
`
`In relation to the patent infringement proceedings between Philips North America LLC
`(hereinafter: Philips) and Fitbit Inc. (hereinafter: Fitbit) before the United States District
`Court for the District of Massachusetts (Civil Action No. 1:19-cv-11586-FDS), I was asked
`by Fitbit
`to provide a declaration on
`legal privilege
`for patent attorneys
`(“octrooigemachtigden”) under Dutch law.
`
`Since 2003, I have been an attorney-at-law in the Netherlands and, as of 2012, I am head of
`Allen & Overy LLP’s Dutch intellectual property team. I am an experienced litigator,
`handling cases covering a broad range of (cross border) intellectual property issues with a
`particular focus on patents. My experience includes cases involving telecommunication
`technology, medical equipment, and pharmaceuticals. On numerous occasions I have
`litigated cases concerning the enforcement and validity of patents before the Dutch court of
`first instance, the court of appeal, and the European Patent Office. Moreover, I regularly
`handle disputes relating to standard essential patents and FRAND licensing. In addition to
`my work as an attorney, I teach Information and Evidence Gathering at the Law Firm
`School, a professional training program for trainee lawyers in Amsterdam. I have also taught
`at the Mr. S. K. Martens Academy, a specialized education program for experienced lawyers
`in the field of intellectual property (procedural) law. I attach my CV as Exhibit 1 to this
`declaration.
`
`For the purpose of this declaration, Fitbit has provided me with their motion to compel
`before the District Court of Massachusetts, dated 18 June 2021, and the opposition against
`that motion, filed by Philips on 16 July 2021 (including the exhibits to each). From the
`information provided by Fitbit, I understand that Fitbit has requested the court to compel
`Philips to produce certain email communications of Mr. Arie Tol, a Dutch patent attorney
`employed by Koninklijke Philips N.V. (hereinafter: the Communications). According to
`Fitbit, these Communications particularly relate to Philips’s licensing business and attempts
`to license Fitbit or license the patents-in-suit (the ‘007, ‘233 and ‘377 patents).
`
`1.5
`
`Philips has refused to produce the abovementioned Communications by invoking privilege.
`As part of its opposition against Fitbit’s motion to compel, Philips has submitted a
`
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`1
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`

`

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`1.6
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`2.
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`2.1
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`2.2
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`3.
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`3.1
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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 3 of 433
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`declaration on Dutch law by Mr. Prof. W.A. Hoyng (hereinafter: Philips’s Expert
`Statement).
`
`Fitbit has asked me to analyse the arguments brought forward in Philips’s Expert Statement
`for invoking privilege under Dutch law, and provide my opinion on those arguments on the
`basis of Dutch procedural rules, case law, and legal literature with respect to legal privilege
`for patent attorneys. This declaration explicitly does not touch upon the existence or scope
`of legal privilege under the laws of the United States.
`
`PHILIPS’S EXPERT STATEMENT
`
`In Philips’s Expert Statement, the following arguments are brought forward to substantiate
`the existence of privilege in respect of the Communications, and refute the obligation to
`produce those Communications under Dutch procedural law:
`
`(a)
`
`(b)
`
`Dutch law does not provide for automatic discovery and the possibilities to order the
`production of documents under the Dutch Code of Civil Procedure (hereinafter:
`DCCP) are narrow and limited. Fitbit does not have a legitimate interest in obtaining
`the Communications, has failed to sufficiently specify the requested documents, and
`does not have the requisite legal relationship to order the production thereof, and has
`therefore not met the Dutch requirements for the production of documents; and
`
`Dutch patent attorneys are bound by a duty of confidentiality under article 23b
`section 4 of the Dutch Patent Act (hereinafter: DPA1), which, according to Philips,
`covers all that comes to a patent attorney's knowledge pursuant to his/her activities.
`As a result of that duty of confidentiality, the Communications are protected by legal
`privilege and Dutch courts would not allow their production.
`
`The arguments set out above in favour of invoking privilege are not as clear-cut as presented
`in Philips’s Expert Statement. The below paragraphs of this declaration provide the
`necessary nuance to these statements, and discuss: (i) the differences between the Dutch
`legal system and U.S. system with respect to pre-trial discovery (§ 3); (ii) the possibility to
`order the production of documents under Dutch law (§ 4); (iii) if and to what extent a patent
`attorney can invoke legal privilege under Dutch law (§ 5); (iv) the potential need of a
`professional charter for a patent attorney to invoke legal privilege (§ 6); and (v) whether
`Philips, as a legal entity, can invoke such legal privilege against Fitbit (§ 7).
`
`GENERAL REMARKS
`
`Chapter III of Philips’s Expert Statement takes the position that any style of discovery
`resulting in “fishing expeditions” is incompatible with the principles governing access to
`information in The Netherlands.
`
`3.2
`
`It is true that the Dutch legal system does not allow for “pre-trial discovery of documents”
`or “fishing expeditions.” According to The Netherlands, “pre-trial discovery of documents”
`
`1
`Exhibit 2.
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`2
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`

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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 4 of 433
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`means: requiring a person (i) to indicate which documents relevant to the proceedings are in
`his possession, in his charge or at his disposal or (ii) to produce documents other than those
`which have been precisely identified by his opponent and which he considers to be in his
`possession, in his charge or at his disposal.2 However, the fact that the Dutch legal system
`does not allow for pre-trial discovery per se, does not mean that the production of
`documents in the context of court proceedings is completely excluded under Dutch law. An
`obligation to produce certain documents to enable the opposing party to support an existing
`claim or defence can be imposed by the Dutch court, provided that the legal requirements in
`that respect have been met (see §3.3 and §4 below).3
`
`3.3 More generally, article 21 DCCP4 stipulates that the parties must present facts relevant to
`the decision of the case in a complete and truthful manner. This obligation covers all facts
`that are relevant to the resolution of the dispute. This is an important obligation, since the
`court will decide the matter on the basis of what the parties have brought before it pursuant
`to article 24 DCCP.5 The underlying import of this “obligation of truth” is to encourage the
`resolution of the dispute at the earliest possible stage in the proceedings.6 The obligation of
`truth may lead to parties being under a spontaneous obligation to provide information that
`may be unfavourable to them. This even applies if the disclosing party knew (or should have
`known) that the other party was not aware of this information.7 The Dutch court also has the
`discretionary power to order the parties to clarify certain statements or to produce
`documents under article 22 DCCP.8 The disclosing party may refuse such an order only if
`there are compelling reasons for doing so (article 22 section 2 DCCP),9 which are not easily
`shown. If such reasons are invoked by the disclosing party, the court will assess whether the
`
`2
`The definition given here comes from the declaration made by The Netherlands on the basis
`of Article 23 of The Convention of 18 March 1978 on the Taking of Evidence Abroad in
`Civil or Commercial Matters (“The Hague Evidence Convention”). Under The Hague
`Evidence Convention it is possible for a contracting state (where the evidence is sought) to
`send a Letter of Request (letter rogatory) to another contracting state (where the evidence is
`located) to obtain evidence. Article 23 of The Hague Evidence Convention provides that a
`contracting state may declare that it will not execute a Letter of Request for the purpose of
`conducting a procedure known in the contracting states where the common law applies as
`“pre-trial discovery of documents.” See S. Hoogeveen, ‘Nederlandse stukken
`in
`Amerikaanse procedure: fishing expeditions versus exhibitieplicht’, Advocatenblad 2015/15
`(Exhibit 3); W.D.H. Asser, Mr. C. Assers Handleiding tot de beoefening van het
`Nederlands burgerlijk recht. Procesrecht. 3. Bewijs, Deventer: Wolters Kluwer 2017, nr.
`150 (Exhibit 4).
`W.D.H. Asser, Mr. C. Assers Handleiding tot de beoefening van het Nederlands burgerlijk
`recht. Procesrecht. 3. Bewijs, Deventer: Wolters Kluwer 2017, nr. 150 (Exhibit 4).
`Exhibit 5.
`Exhibit 6.
`A.I.M. Van Mierlo, in: T&C Burgerlijke Rechtsvordering, art. 21 Rv, nr. 1 (Exhibit 7).
`A.I.M. Van Mierlo, in: T&C Burgerlijke Rechtsvordering, art. 21 Rv, nr. 4 (Exhibit 7)
`under reference to Dutch Supreme Court 4 October 1996, NJ 1998/45 (Coossen/Goossen).
`See Exhibit 8 for article 22 DCCP. T.F.E. Tjong Tjin Tai, in: GS Burgerlijke
`Rechtsvordering, art. 21 Rv, nr. 1 (Exhibit 9) and A.I.M. Van Mierlo, in: T&C Burgerlijke
`Rechtsvordering, art. 21 Rv, nr. 4 (Exhibit 7).
`T.F.E. Tjong Tjin Tai, in: GS Burgerlijke Rechtsvordering, art. 21 Rv, nr. 3 (Exhibit 10).
`
`9
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`3
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`3
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`4
`5
`6
`7
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`8
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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 5 of 433
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`interest of protecting information in concreto outweighs the interest of discovering the
`truth.10 In this respect, the Supreme Court, in the Telegraaf v Staat case dated 11 July 2008,
`ruled that the existence of a statutory confidentiality obligation to maintain the secrecy of
`certain information (such as the one applicable to patent attorneys), on its own, is
`insufficient to assume compelling reasons under article 22 section 2 DCCP. According to
`the Supreme Court, compelling reasons are only present if, in the concrete circumstances of
`the case, the interests to which the obligation of secrecy with respect to the requested
`information or documents is specifically directed, outweigh the important public interest in
`discovering the truth (see further on this §4 below).11 This case law equally applies to article
`843a DCCP,12 which, in section 4, contains a similar provision as article 22 section 2
`DCCP.13
`
`Philips’s Expert Statement also refers to article 1019a section 3 DCCP,14 which imposes
`additional restrictions on the disclosure of information in the context of infringement
`proceedings, to the extent that the protection of confidential information cannot be
`guaranteed. However, potential infringement of U.S. patents do not fall within the scope of
`rights protected by article 1019a DCCP, according to the District Court of The Hague.15 As
`such, these additional restrictions do not apply to the case at hand.
`
`So while the Dutch legal system does not automatically allow for the pre-trial discovery of
`documents, there are various ways in which a party can nevertheless be ordered by the
`Dutch court to produce certain documents, provided that the legal requirements in that
`respect have been met. Contrary to what is stated in Philips’s Expert Statement, these
`measures for obtaining evidence are not rarely used in patent infringement matters in The
`Netherlands.
`
`PRODUCTION OF DOCUMENTS UNDER DUTCH LAW
`
`I will now briefly address the position taken in Chapter IV of Philips’s Expert Statement
`with respect to the production of documents under Dutch law.
`
`Under Dutch law, article 843a DCCP provides the legal basis for parties to seek a court
`order for the disclosure of specific documents. In order for the Dutch court to allow such
`
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`3.4
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`3.5
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`4.
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`4.1
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`4.2
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`
`10
`R. van der Velden, ‘De positie van de octrooihouder in bewijsnood’, Bulletin Industriële
`Eigendom, December 2010, p. 445 referring to Dutch Supreme Court 11 July 2008,
`ECLI:NL:HR:2008:BC8421 (Telegraaf/Staat), cons. 3.4.6 (Exhibit 11).
`Ibid, cons. 3.4.6 and 3.4.8. An example of a substantial reason could for example be the
`confidentiality of documents relating to national security and foreign policy, see T.F.E.
`Tjong Tjin Tai, in: GS Burgerlijke Rechtvordering, art. 21 Rv, nr. 3 (Exhibit 10) under
`reference to Supreme Court 29 June 2020, ECLI:NL:HR:2020:1148, cons. 3.15.2.
`Exhibit 12.
`of The Hague
`example, District Court
`See
`for
`ECLI:NL:RBDHA:2016:1225 cons. 4.11 (Exhibit 13).
`Exhibit 14.
`District Court of The Hague 21 September 2016, ECLI:NL:RBDHA:2016:11387
`(Quest/A.Hak), cons. 4.4 (Exhibit 15).
`
`11
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`12
`13
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`14
`15
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`9
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`February
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`2016,
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`4
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`4.3
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`disclosure, article 843a section 1 DCCP requires that the following legal requirements are
`met: (i) the party requesting certain documents has a legitimate interest; (ii) the requested
`documents relate to a legal relationship to which the requesting party is a party; and (iii) the
`request should be tailored to specific documents.
`
`(i)
`
`Legitimate interest and legal relationship
`
`Regarding the first two requirements of article 843a DCCP, legitimate interest and legal
`relationship, the following applies. Dutch case law stipulates that the need to substantiate a
`defence or a claim can be considered a legitimate interest within the meaning of article 843a
`DCCP. Dutch legal literature describes that the term legal relationship has to be interpreted
`broadly. Pursuant to established case law, an obligation arising from the law (e.g., an
`obligation to pay damages pursuant to a tortious act such as patent infringement) is
`considered a legal relationship.16 According to the District Court of The Hague this was
`clear from the parliamentary history of the draft legislation where article 843a DCCP was
`expanded and article 1019a DCCP was introduced.17 See District Court of the Hague 16
`April 2008, IEPT 20080416, Sisvel v Acer:
`
`“3.2 Acer has in theory correctly stated that substantiation of its defence
`against SISVEL’s claims in the main action, as well as substantiation of
`its claim in the counterclaim proceedings is a legitimate interest within
`the meaning of Article 843a Rv. In addition, it is correct that an
`obligation arising
`from
`tort also
`falls under
`the
`term “legal
`relationship” stated in the provision. This last item is adequately
`apparent from the parliamentary treatment of the draft legislation where
`the provision was expanded (Kamerstukken II 1999-2000, No. 5, p. 78-
`79) and, with respect to violations of intellectual property rights, from
`Article 1019a section 1 Rv.”
`
`4.4
`
`The party invoking article 843a DCCP must therefore sufficiently substantiate the nature of
`the legal relationship at hand, such as by claiming that a tortious act has taken place. In this
`respect it is not necessary that the alleged tort is established by the claimant beyond dispute,
`but it is also not sufficient to merely assert that a tort has occurred. According to the district
`court:
`
`“(...) it is thus necessary for the claimant to adequately substantiate his
`allegation, underpinned with reasonably available evidence, by
`
`
`16
`District Court of The Hague 16 April 2008, IEPT 20080416 (Sisvel/Acer) (Exhibit R to
`Philips’s Expert Statement); L.A. Bosch in: “Wetboek van Burgerlijke Rechtsvordering
`artikel 843a. 5 Rechtsbetrekking (lid 1)” under “onrechtmatige daad”.
`Art. 1019a section 1 DCCP explicitly stipulates that “an obligation arising from a wrongful
`act pursuant to the infringement of an intellectual property right counts as a legal
`relationship as meant in art. 843a DCCP”.
`
`17
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`5
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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 7 of 433
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`4.5
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`4.6
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`providing adequately specific facts and circumstances for a reasonable
`suspicion of tortious action.”18
`
`I note that most of the Dutch patent case law Philips’s Expert Statement refers to in respect
`of the first two requirements of article 843a DCCP, legitimate interest and legal
`relationship, specifically relates to the situation where the patentee invokes article 843a
`DCCP.19 In these cases, in order to meet the requirement of legitimate interest, the patentee
`must make it sufficiently plausible that his or her patent is being infringed. This is a rather
`strict requirement.
`
`Lastly, I emphasise that art. 843a DCCP is not a matter of dispute in the pending action in
`the U.S. It is therefore self-evident that Fitbit has not built its motion to compel on that
`specific legal basis, but rather on the basis of U.S. law. As such, there has been no need for
`Fitbit to substantiate that the above requirements are met, which ‘lack of substantiation’ is
`wrongly used in Philips’s Expert Statement to attempt to refute the production of the
`Communications.
`
`(ii)
`
`Specific documents
`
`4.7 With respect to the third requirement, Dutch case law requires that the specific documents
`covered by a request are clear to the person from whom the information is requested.20 In
`the X v Theodoor Gilissen case dated 26 October 2012, the requested documents were
`considered sufficiently specific by the Supreme Court in light of article 843a DCCP, where
`they were defined by description of the file and by mentioning the concerned persons and
`authorities.21
`
`4.8
`
`As for the abovementioned requirements of article 843a DCCP, it would ultimately be up to
`the Dutch court to assess whether a claimant has fulfilled the three-pronged test to allow for
`the production of documents.
`
`5.
`
`SCOPE OF LEGAL PRIVILEGE UNDER DPA AND DUTCH CASE LAW
`
`5.1
`
`19
`
`Chapter V.2 of Philips’s Expert Statement argues that Mr. Arie Tol, and Dutch patent
`attorneys in general, are exempt from disclosing confidential communications pursuant to a
`
`18
`District Court of The Hague 16 April 2008, IEPT 20080416 (Sisvel/Acer), cons. 3.3
`(Exhibit R to Philips’s Expert Statement).
`See e.g., Supreme Court 13 November 2015 ECLI:NL:HR:2015:3304 (AIB/Novisem)
`(Exhibit I to Philips’s Expert Statement); District Court of The Hague 26 November 2008,
`IEF7332 (Abbott Cardiovascular Systems/Medtronic) (Exhibit M to Philips’s Expert
`Statement); Court of Appeal of The Hague 19 June 2016, ECLI:NL:GHDHA:2016:2225
`(Dow Chemical/Organik) (Exhibit N to Philips’s Expert Statement).
`S. Hoogeveen, ‘Nederlandse stukken in Amerikaanse procedure: fishing expeditions versus
`exhibitieplicht’, Advocatenblad 2015/15 (Exhibit 3) under reference to District Court
`Zutphen 10 March 2003, 168830 AZ 02-14 and District Court Amsterdam 24 April 2003,
`486628 EA VERZ 02-6280.
`Dutch Supreme Court 26 October 2012, ECLI:NL:HR:2012:BW9244 (X/Theodoor
`Gilissen), cons. 3.8.2. (Exhibit 16).
`
`20
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`21
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`6
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`5.2
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`5.3
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`Case 1:19-cv-11586-FDS Document 214-1 Filed 07/30/21 Page 8 of 433
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`claim such as under Article 843a DCCP, as patent attorneys are supposedly entitled to legal
`privilege. Article 843a section 3 DCCP stipulates, in short, that he or she whom, by virtue of
`his appointment, profession, or employment is bound by an obligation of confidentiality, can
`be excused from the obligation to disclose certain documents. The wording used in article
`843a DCCP is similar to that in article 165 section 2 DCCP, which article forms the basis
`for legal privilege with respect to witness examinations.
`
`The exact group of people or professions to which this legal privilege applies is not further
`specified in article 843a DCCP or Article 165 section 2 DCCP. I agree with Dutch legal
`literature that, as a result, Philips has to rely on the case law of the Supreme Court,22 or
`lower court case law in the absence thereof.
`
`According to the Supreme Court, an obligation of secrecy does not by definition imply a
`legal privilege.23 In the Maas II case dated 1 March 1985, the Supreme Court ruled that the
`basis of legal privilege must be sought in a general principle of law applicable in The
`Netherlands, which implies that the obligation of confidentiality must prevail over the public
`interest of discovering the truth.24 The Supreme Court ruled in the International Tin Council
`case dated 22 December 1989 that an obligation of secrecy can only lead to a legal privilege
`if it is unmistakably clear that the legislator has made the required balance of interest.25 If
`this is not unmistakably clear, then a balance of interests will have to be made on a case-by-
`case basis, which shall be done by balancing the interests served by the obligation of
`professional secrecy against the important interests served in discovering the truth in civil
`proceedings.26 In this respect, Supreme Court case law requires that it must be assumed that:
`
`(a)
`
`(b)
`
`(c)
`
`the effective exercise of the profession concerned serves important public interests;
`
`there is a reasonable possibility that without the acceptance of the relevant duty of
`confidentiality and the privilege based thereon, these latter important public interests
`could be substantially harmed; and
`
`for the aforementioned purpose, the interests served by the effective exercise of the
`profession must prevail over the interests in respect of discovering the truth.27
`
`23
`
`24
`25
`
`
`22
`J. Ekelmans, De exhibitieplicht (Burgerlijk Proces & Praktijk nr. x) (diss. Groningen),
`Deventer: Kluwer 2010, nr. 7.4.1. (Exhibit 17); See also W. Pors, ‘Privilege for IP
`professionals in the Netherlands’, IEF 6222/08, p. 2 (Exhibit 18).
`Dutch Supreme Court 13 April 1984, ECLI:NL:HR:1984:AC4795, NJ 1986/822
`(Hillegom/Hillenius), cons. 3.5. (Exhibit 19).
`Exhibit T to Philips’s Expert Statement, cons. 3.1.
`Dutch Supreme Court 22 December 1989, ECLI:NL:PHR:1989:AD0997, NJ1990/779
`(International Tin Council), cons. 3.2. (Exhibit 20).
`Ibid, cons. 3.2.
`J. Ekelmans, De exhibitieplicht (Burgerlijk Proces & Praktijk nr. x) (diss. Groningen),
`Deventer: Kluwer 2010, nr. 7.4.1 under reference to Dutch Supreme Court 15 October 1999,
`NJ 2001/42 (B/P), cons. 3.4. (Exhibit 21), Dutch Supreme Court 7 June 2002, NJ 2002,394
`(Mr X/Van Dommelen and Domaro), cons. 3.3and Dutch Supreme Court 10 April 2009,
`LJN BG9470, (X/Y) cons. 3.6.2.2.
`
`26
`27
`
`
`
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`
`7
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`

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`5.4
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`According to Dutch legal scholars, the requirements under (a) through (c) are strict, meaning
`that the group of professional secrecy holders is limited.28 Over the years, the Supreme
`Court has explicitly awarded legal privilege to only four traditional professions, in
`particular: physicians, priests, civil law notaries, and lawyers admitted to the bar.29 To the
`best of my knowledge, there is some Supreme Court case law on other professions than the
`aforementioned, but not yet on intellectual property professionals, such as patent attorneys.30
`The question remains open whether, in view of the above mentioned case law of the
`Supreme Court, a patent attorney would be awarded legal privilege.31
`
`5.5
`
`In the Netherlands, patent attorneys are regulated in Chapter 2, §1a of the DPA. Article
`23b(4) DPA sets out the duty of confidentiality of a patent-attorney (emphasis added):
`
`“Unless otherwise stipulated by law, a patent attorney or a person
`working under his responsibility has a duty to keep confidential all
`information of which he becomes aware in the course of his work as
`such. This obligation shall continue after the termination of the relevant
`activities.”32
`
`5.6
`
`Rule 4(a) of the Code of Conduct of patent-attorneys (of which Article 23h DPA is the
`basis) further stipulates that (emphasis added):
`
`“A Member shall maintain the strictest confidentiality with respect to
`information of a confidential nature which the Member knows or should
`reasonably know is confidential and which it has received in its capacity
`as a patent attorney.”
`
`5.7
`
`29
`30
`
`31
`
`In other words, a Dutch patent attorney is obliged to observe confidentiality only regarding
`that information of which the patent attorney becomes aware in the course of his or her work
`as a patent attorney acting in that capacity. The rationale behind this confidentiality
`obligation is that it was deemed necessary by the Dutch legislature to give similar protection
`
`28
`J. Ekelmans, De exhibitieplicht (Burgerlijk Proces & Praktijk nr. x) (diss. Groningen),
`Deventer: Kluwer 2010, nr. 7.4.1 (Exhibit 17); See also W. Pors, ‘Privilege for IP
`professionals in the Netherlands’, IEF 6222/08, p. 1 (Exhibit 18).
`A.S. Rueb e.a., Compendium Burgerlijk procesrecht 2021/7.5.8.
`J. Ekelmans, De exhibitieplicht (Burgerlijk Proces & Praktijk nr. x) (diss. Groningen),
`Deventer: Kluwer 2010, nr. 7.4.1 (Exhibit 17).
`I note that the case law of the Supreme Court I refer to in footnotes 23 – 27 is still frequently
`referred to in recent case law and literature. See e.g. Court of Appeal of Amsterdam 30
`January 2018, ECLI:NL:GHAMS:2018:289 (CID-officier), cons. 3.3; G. de Groot in: GS
`Burgerlijke Rechtsvordering, art. 165 Rv, aant. 1.1; G. de Groot in: GS Burgerlijke
`Rechtsvordering, art. 165 Rv, aant. 2.5.3.
`Philips incorrectly translates the original Dutch phrase “uit hoofde van zijn werkzaamheden
`als zodanig” to “pursuant to his activities.” The correct translation of “uit hoofde van zijn
`werkzaamheden als zodanig,” however, is “pursuant to his activities as such.” The words
`“as such” (“als zodanig”) are missing from Philips’s translation, and indicate that art. 23b
`DPA is limited to work that has been performed by a patent attorney in his capacity as such
`(i.e., as a patent attorney) (Exhibit 2).
`
`32
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`8
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`to Dutch patent attorneys as foreign patent attorneys, whereby U.S. and European patent
`attorneys were given as examples.33 As for European patent attorneys, Rule 153 of the
`Implementing Regulations of the European Patent Convention34 (hereinafter: EPC)
`stipulates that any professional representative (as meant in article 134 EPC (i.e., European
`patent-attorneys)) enjoys privilege before the European Patent Office (EPO). Those
`proceedings before the European Patent Office only concern patent prosecution and
`opposition proceedings. Besides, although the privilege in Rule 153 also applies to
`communications relating to the validity and infringement of a European patent, it does not
`cover all kinds of communications, such as communications relating to licensing (i.e.,
`negotiations). Moreover, given the rationale behind the introduction of this confidentiality
`obligation, legal privilege for European patent attorneys before the EPO would translate to
`legal privilege for Dutch patent attorneys before the Dutch Patent Office,35 and not before
`the Dutch courts. As a result, it is not yet been decided whether legal privilege would be
`awarded to patent attorneys under the rules of the Supreme Court’s case law, at least not
`regarding information relating to subjects beyond patent prosecution and opposition
`proceedings, such as infringement proceedings or licensing (negotiations).36
`
`5.8
`
`Up to date, there has only been one first instance case where the privilege of a patent
`attorney was at issue, which also involved the question of whether a licence agreement had
`been concluded. In the Bruil v Titan International case of the District Court of Zutphen
`dated 5 January 1988,37 a patent attorney’s privilege was rejected because the information in
`question did not relate to the exercise of the patent attorney’s profession and was not
`communicated to him in connection with the patent application he was handling. The court
`considered (emphasis added):
`
`“Baarslag (the patent attorney in question) cannot derive any right to be
`excused from the aforementioned provision, as this case does not
`concern knowledge obtained in his specific capacity as patent attorney,
`but knowledge obtained during the provision of assistance in (an attempt
`to) conclude a licensing agreement. Matters which are entrusted to the
`patent attorney as such, as referred to in the aforementioned article 8,
`should - also in view of the other contents of the 1936 Patent Agents
`Rules, S642 - be understood to mean facts communicated to the patent
`attorney in connection with the patent application handled by him, such
`as information concerning the invention in question.”
`
`
`33
`Kamerstukken II 2000/01, 27 193, nr. 6 (Nota van Wijziging) (Exhibit 22).
`34
`Exhibit 23.
`35
`The Dutch Patent Office (Octrooicentrum Nederland) is the national institute responsible for
`granting and validating patents in the Netherlands.
`36 W. Pors, ‘Privilege for IP professionals in the Netherlands’, IEF 6222/08, p. 3 (Exhibit 18).
`37
`District Court of Zutphen 5 January 1988, ECLI:NL:RBZUT:1988:AB8996 (Bruil/Titan
`International) (Exhibit 24).
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`5.9
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`Insofar as the Code of Conduct for patent attorneys would impose a confidentiality
`obligation which extends to the assistance in negotiating a licensing agreement, this does
`not, according to the court, automatically result in a general privilege for patent attorneys:
`
`“In so far as the Code of Conduct for patent attorneys referred to by
`Baarslag impose on patent attorneys an obligation of secrecy which also
`extends to activities such as those at issue here, the rendering of
`assistance in the negotiation of a licensing contract, those rules, which
`do not constitute a right, cannot automatically create a general privilege
`for patent attorneys to be invoked before the courts (…).”
`
`5.10
`
`Indeed, according to the court, a patent attorney’s interest in keeping information secret in
`relation to ancillary activities, such as assisting in negotiating a licensing agreement, is
`certainly not as such that is outweighs the interest in discovering the truth:
`
`“(…) Article 1946(2)(3) of the DCCP [now Article 165(2) DCCP] is
`intended only to confer a right to refuse to give evidence on those whose
`task it is to provide assistance to others, but who can perform that task
`only if they are able to refuse to disclose to the court the secrets
`entrusted to them by persons seeking assistance who - contrary to the
`public interest - would not seek assistance if there were no certainty that
`those secrets would also be concealed from the court. Where a patent
`agent goes beyond the scope of his specific work, which is to assist in the
`application for a patent, it certainly cannot be said that the performance
`of his duties in respect of ancillary activities such as those at issue here
`involves such a social interest in secrecy - even before the court - that it
`must give way to the overriding interest in the discovery of the truth
`before the courts.”
`
`5.11
`
`It must be noted that the DPA was amended after the Bruil v Titan International case in
`2003, whereby the confidentiality obligation for Dutch patent attorneys was included in the
`law, rather than in a separate regulation. During the law-making process, the words “of the
`applicant” were deleted from article 23b DPA, in order to clarify that any person other than
`the applicant may also be represented at the patent office by a patent attorney.38 As noted in
`