30/01/2025
On 28 January 2025, the Düsseldorf Local Division of the UPC issued decision UPC_CFI_355/2023 relating to the infringement and validity of European patent EP3594009B. A copy of the decision can be found here.
EP3594009B had been validated in both Germany and the UK, and the Claimant (Fujifilm) had requested that the UPC Local Division consider the infringement of both the UK and German parts of the patent and provide appropriate relief against alleged infringements put on the market by the Defendants (various Kodak subsidiaries) in the UK and Germany.
The Claimant’s request and the question of how the Court would respond had attracted some attention, not least because it would require the UPC Local Division to consider the fact of the UK’s position outside of both the EU and the UPC frameworks (UK applicants and attorneys continue to have access to the EPO and UPC courts), and provide clarity on the extent to which UPC court decisions might deal with extra-territorial rights.
Not surprisingly, the Defendants (domiciled in Germany, but selling in the UK and Germany) had argued that it was not appropriate for the Local Division to consider or make any award based on infringement of the UK part of EP3594009B since the UK patent was outside of the jurisdiction of the UPC.
Infringement and the Long-Arm Jurisdiction Question
In reply to the Claimant’s request, the Local Division decided that the Unified Patent Court is indeed competent to decide on infringement of both the German and the UK part of the European patent:
“If the defendant is domiciled in a Contracting Member State (here: Germany), the Unified Patent Court has jurisdiction to hear the infringement action in respect of the UK part of the patent in suit. This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case.” (emphasis added)
The Court relied for its conclusion on commentary from the ECJ (now the Court of Justice of the EU) which interpreted the recast Brussels Regulation (Regulation (EU) No 1215/2012 (recast)) as allowing European Courts to rule on matters “between the courts of a single Contracting State and those of a non-Contracting State”, not only on intra-EU matters.
In particular, the Düsseldorf Court noted that this interpretation was supported by the opinion of the Advocate General of 22 February 2024 in BSH Hausgeräte GmbH v. Aktiebolaget Electrolux (C-339/22), which viewed the courts of the EU Member State in which a defendant is domiciled as having “universal” jurisdiction:
“By contrast, the jurisdiction of the courts of the Member State where the defendant is domiciled, under Article 4(1) of the Brussels I bis Regulation, is universal. Thus, it may extend to the infringement of the European patent committed in all the States for which it has been granted. (21) Those courts may award damages to compensate for the total loss suffered by the patent holder, or issue an injunction prohibiting the continuation of the infringement in all those States. In sum, that provision enables the patent holder to consolidate all his or her infringement claims before, and to obtain a comprehensive relief from, a single forum”.
It is worth noting however that the CJEU has not yet issued its final decision in the BSH Hausgeräte GmbH v. Aktiebolaget Electrolux (C-339/22) case, and the European Court may still choose not to follow the Advocate General’s ruling. In view of this, the Mannheim UPC divisions hearing similar disputes and questions between the parties have chosen not to rule on the question of UK infringement at the present time (see here) to await a final decision from the CJEU.
Validity Questions
Although the UPC Local Division in Düsseldorf has taken the view that it can consider infringement, at the same time it acknowledged that validity remained a question for the national courts. Indeed, as stated in the decision, “…the Court cannot decide on the validity of the UK part of the patent in suit, and certainly cannot revoke that part”.
A number of interesting questions therefore remain as to how the court would proceed if the validity of the UK patent had been challenged in a separate action, or if the German patent had not been found invalid by the Local Division. However, in this case, in the absence of a reasoned argument by the Claimant as to why the UK patent would have survived a validity attack in the UK, the UPC court was happy to dispose of the Claimant’s request for a ruling on infringement in the UK.
“It would have been up to the Claimant to comment specifically on the differences between the Contracting Member States and the UK and to explain why these (possibly) lead to a different assessment of the validity of the UK part of the patent in suit. The Claimant has not done so. It must therefore be assumed that the grounds for invalidity set out in detail above also apply to the UK part of the patent in suit, irrespective of any differences between the Contracting Member States and the United Kingdom.” (emphasis added)
Summary
In this case, the Düsseldorf Local Division has shown itself willing to consider infringement of parts of a European Patent outside of the UPC framework, albeit in a situation where it may have been procedurally pragmatic to do so – the UK part of the European Patent had not been separately challenged by the Defendants at the UK courts.
If established as agreed practice, this “long-arm” infringement power of the UPC courts would apply of course not just to the UK, but to other non-UPC but EPO contracting states such as Norway, Iceland, Spain and Turkey, and would further strengthen the merit of bringing actions at the UPC. Defendants at the UPC would need to make validity challenges or seek declaration of non-infringement actions in respect of the non-contacting UPC states, at the local courts of these states, to escape the trap.
It is also worth noting that the basis given by the Court for this “long-arm jurisdiction” (inter alia Art. 71b(1) of the Brussels Regulation) only arises where a defendant is domiciled in an EU member state. On the other hand, if the defendant in this case were based in the UK (or any non-EU state), the Art. 71b(1) of the Brussels Regulation would not apply. Nevertheless, it may be that in the future the UPC extends its jurisdiction in such cases anyway, based on Art. 71b(2) and (3) of the Brussels regulation which relate to defendants not domiciled in an EU state. The wording of these provisions is open to some interpretation, and awaits clarification.
The position is not yet final, however, since a decision has not yet been handed down in the CJEU case BSH Hausgeräte GmbH v. Aktiebolaget Electrolux (C-339/22) which forms part of the basis for the Düsseldorf Division’s decision here. In addition, the view of the Düsseldorf Division could always be overturned on appeal at the UPC Court of Appeal.
This case illustrates the fact that although the UPC system may prove itself to be a forum that offers claimants and defendants in litigation of European Patents wide ranging powers, the need to consider actions at the local courts of non-UPC members states still remains key.
This also highlights the benefits to a patentee that is considering infringement action (as well as an alleged infringer considering a counterclaim for revocation) of using representatives who are familiar with both UPC law and the national law of the relevant non-Contracting Member States in a particular case. The nuanced differences between two approaches to validity may be the difference between success and failure if infringement of a non-Contracting Member State patent is considered. In this case, UK representatives would have been well placed to argue why the UK patent should have been considered valid in spite of the Court’s decision on the German patent.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
