Context: Fujifilm is suing Kodak in the Unified Patent court (UPC). Fujifilm is asserting European patent in the sense of patents granted by the European Patent Office (EPO). As discussed in item 3 of our most recent UPC Roundup, the Mannheim Local Division (LD) has indicated that it will await the European Court of Justice (ECJ) decision in BSH Hausgeraete v. Electrolux (May 31, 2024 ip fray article) before ruling on the UK-related part of the case.
What’s new: Unlike the Mannheim LD, the Dusseldorf LD has now held that the UPC has jurisdiction over the UK parts of EPO-granted patents provided that the defendant is domiciled in a UPC contracting state (PDF).
Direct impact: In the case in question, it has no practical impact (short of a successful appeal on the merits) given that the court held the patent invalid. While revocation was not and could not have been sought with respect to the UK part, the invalidity determination made with respect to other EPO contracting states also applies to the UK part for the UPC’s purposes.
Wider ramifications: The UK-related holding goes beyond a dictum as the court had to reconcile the territorial scope of the infringement claim and the revocation counterclaim. This will make Dusseldorf an attractive venue for cases in which parties seek to benefit from such long-arm jurisdiction. Even though the Dusseldorf LD decided not to make its holding dependent on the outcome of BSH v. Electrolux, the possibility remains that an ECJ ruling changes everything.
In this case, all that is left for us to provide for the time being is what exactly the court said about its long-arm jurisdiction concerning infringement.
First, the headnote:
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.
And now, the reasons:
b) The Court still has to decide whether it has jurisdiction to decide the infringement action in respect of the UK-part of the patent in suit, which it answers in favour of the Claimant. In this context, it should be clarified that the question of jurisdiction is to be separated from the question of which substantive law is applicable.
aa) Art. 24(4) Brussels Ibis Regulation codifies the case law of the ECJ in its decision GAT v LUK (ECJ, 17 July 2006 – C-4/03), which grants exclusive jurisdiction to the court of the Member State where the relevant national part of the patent is registered. This provision does not apply to the question of which court has jurisdiction in infringement proceedings (see GAT v LUK, cf. 16: “If, on the other hand, the dispute does not concern the validity of the patent or the existence of the deposit or registration and these matters are not disputed by the parties, the dispute will not be covered by Article 16(4) of the Convention (Duijnstee, paragraphs 25 and 26)”).
bb) Pursuant to Art. 4(1) Brussels Ibis Regulation, persons domiciled in a Member State, whatever their nationality, shall be sued in the courts of that Member State. All the Defendants are domiciled in Germany.
According to the decision Owusu (ECJ, 1.3.2005 – C-281/02, cf. 34 f.), the ECJ notes with respect to Art. 4(1)(2) Brussels Ibis Regulation (former Art. 2 of the Brussels Convention) that the uniform rules of jurisdiction contained in the Brussels Convention are not intended to apply only [underlined, not boldface, but also italics, in original] to situations in which there is a real and sufficient link with the functioning of the internal market, which by definition involves a number of Member States. Art. 2 of the Brussels Convention applies to circumstances involving relations between the courts of a single Contracting State and those of a non-Contracting State, not the relations between the courts of a number of Contracting States. This means that the ECJ has accepted that the international element required for the application of the Brussels Ibis Regulation may not only be intra-EU (see Kalden, GRUR Patent 2023, 178, 182 cf. 48). This understanding is also supported by the Advocate General’s opinion of 22 February 2023, which describes the jurisdiction of the courts of the Member State in which the defendant is domiciled under Art. 4(1) Brussels Ibis Regulation as universal. It may therefore extend to the infringement of the European patent committed in all the States for which it has been granted. In summary, that provision enables the patent holder to bring all his or her infringement claims before a single court and to obtain a comprehensive relief from a single forum (ECJ, 1.3.2005 – C281/02, cf. 31). Later on, the Advocate General points out that infringement proceedings are governed by the general rules of the Brussels Ibis Regulation. Jurisdiction is therefore predictable and certain for the patent holder. If he or she brings proceedings outside the State of registration and the alleged infringer raises an invalidity defence, the courts seized will not lose the competence to hear and determine the action. In the case of a ‘multistate’ infringement of a European patent, that reading [of the GAT v. LUK decision] allows partial consolidation of the claims before a single forum (ECJ, 17 July 2006 – C-4/03, cf. 77).
cc) The Court holds that this result is not altered by Art. 71b Brussels Ibis Regulation or Art. 34 UPCA.
(1) Prior to the enactment of the UPCA, the rules on international jurisdiction within the EU were unified by Brussels Ibis Regulation. Therefore, Art. 31 UPCA merely stipulates that the international jurisdiction of the UPC is determined in accordance with Brussels Ibis Regulation (CD Paris, Order of 2 May 2024, UPC_CFI_484/2023, cf. 32). Art. 71 a-d Brussels Ibis Regulation govern this determination by incorporating the new common court into the existing Brussels Ibis Regulation System. Art. 71a Brussels Ibis Regulation governs that the UPC, as a common court, shall be deemed to be a court of a Member State. Art. 71b(1) Brussels Ibis Regulation stipulates that the UPC has jurisdiction where, under Brussels Ibis Regulation, the national court of a Contracting Member State party would have jurisdiction. This means that, in relation to claims against defendants domiciled in a Member State, all the bases for jurisdiction contained in Brussels Ibis Regulation also apply to the UPC and the same is true for the applicable case law of the ECJ (see Kalden, GRUR Patent 2023, 178, 182 cf. 48).
Art. 71b(2)(3) Brussels Ibis Regulation governs certain constellations in which the defendant is not domiciled in a Member State, so that only the scope of Art. 71b(1) Brussels Ibis Regulation is of interest in the case at hand. Contrary to the Defendants’ view, the phrase „matter governed by that instrument“ is not to be read as limiting to the territorial scope of the Contracting Member States, but only as limiting the legal matters transferred by the UPCA from the national courts of the Member States to the UPC. Another argument in favour of this understanding is that Art. 71b(1) Brussels Ibis Regulation recognises the jurisdiction of the UPC under EU law as established by the transfer of the Contracting Member States and limits the effect of the transfer so that it applies only to the extent that the transferring Contracting Member State would have had jurisdiction under the Brussels Ibis Regulation (see Grabinski/W. Tilmann, Einheitspatent, EPGÜ Art. 31, cf. 15). Under the Brussels Ibis Regulation, the transferring Contracting Member State does indeed have jurisdiction over third state patent infringement actions in accordance with the case law of the ECJ, as shown above. The jurisdiction of the UPC is therefore not more limited than that of a national patent infringement court, as not all EU Member States have become Members of the UPCA.
(2) Art. 34 UPCA does not deal with the international jurisdiction of the court in the first place – which is dealt with in Art. 31 UPCA.
Art. 34 UPCA covers the territorial scope of the Court’s decision within the territory of the Contracting Member States, but does not exclude decisions having effect beyond the territory of the Contracting Member States. Art. 34 UPCA does not refer to all decisions of the UPC, but only to decisions covering “in the case of a European patent the territory of those Contracting Member States for which the EP has effect”. European patents are not necessarily in force in all Contracting Member States, so that Art. 34 UPCA can also be understood to clarify that, in the case of a European patent, decisions of the UPC normally cover the entire territory of the UPC, only with the exception of the territories of those Contracting Member States where that European patent is not or is no longer in force (see Kalden, GRUR-Patent 2023, 178, 182 cf. 46, 47).
Panel: Presiding Judge Ronny Thomas, Judge Dr. Bérénice Thom, Judge Rute Lopes (Lisbon, Portugal) and Technically Qualified Judge Dr. Stefanie Parchmann.