UPC finds that it has jurisdiction to consider infringement in the UK (UPC_CFI_355/2023)

In this decision addressing the jurisdictional reach of the UPC jurisdiction to the UK post-Brexit, the Düsseldorf Local Division found that the UPC had jurisdiction over infringement of a UK patent right (UPC_CFI_355/2023). Following Brexit, the UK chose to withdraw itself from participation in the UPC. Naively, it might therefore be assumed that the UPC has no reach into the UK. However, European patents granted by the EPO may be validated within both UPC and non-UPC contracting states to the EPC, including the UK. According to the decision in UPC_CFI_355/2023, in certain circumstances, the UPC has jurisdiction over the UK with respect to infringement actions for such patents. 

Case background

The case in UPC_CFI_355/2023 concerned European patent EP 3594009 B1, owned by Fujifilm. The patent was validated and in force in both Germany and the United Kingdom. Fujifilm brought an infringement action against three German Kodak entities, whilst the defendants filed a counterclaim for revocation. The defendants challenged the Local Division's jurisdiction to hear claims concerning the UK part of the patent. In a whistle-stop tour through the relevant EU regulations, the decision considers which legal provisions from the UPCA and broader EU legislation dictate the jurisdictional reach of the UPC. 

The Düsseldorf Local Division assessed whether the UPCA (Article 34 or Article 31, in conjunction with the Brussels Ibis Regulation (Regulation 1215/2012)) gave it jurisdiction to consider a case of infringement of a UK patent. The division determined that it did have jurisdiction. However, in the end, this didn't impact the outcome of the case, in view of the court's finding that the patent was invalid in German under the EPC and the lack of a revocation action in the UK 

Article 34 UPCA does not limit the UPC's jurisdiction to UPC contracting states

The defendants in the case argued that Article 34 UPCA limited the UPC's jurisdiction to UPC Contracting Member States only. Article 34 UPCA states that "Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect". The defendants contended that "pursuant to Art. 34 UPCA, Germany is the only Contracting Member State for which the patent in suit still has effect. The United Kingdom is not a Contracting Member State of the UPC. On this basis alone, it follows that the territorial scope of a decision of the UPC in this case cannot be extended to the United Kingdom." (para. 14). 

In response, the claimant argued that "Art. 34 UPCA complements Art. 3(2) of Regulation (EU) 1257/2012

Winds of change
, which states that: "A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States". The claimants argued that as "traditional" European patents do not have unitary effect, Article 34 UPCA is necessary to ensure that decisions of the Court also apply uniformly to these patents in all Contracting Member States (para. 15). However, the claimant argued, "Art. 34 UPCA is unconcerned with the international jurisdiction of the Court" and that jurisdiction is instead governed by Art. 31 UPCA and the Brussels Ibis Regulation (Regulation 1215/2012) (para. 15). 

In its decision, the Local Division agreed with the claimant and explicitly rejected arguments based on Art. 34 UPCA that it did not have jurisdiction with respect to the UK. The Local Division specifically agreed with the claimant that "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" (page 23, emphasis added).

Article 24(4) Brussels Ibis Regulation (Regulation 1215/2012) does not give exclusive jurisdiction to the registration state of the patent

Article 4(1) Brussels I Regulation (Regulation 1215/2012) states that "persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State". However, Article 24 Brussels I Regulation (Regulation 1215/2012states that: "The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties [...] (4) in proceedings concerned with the registration or validity of patents [...] irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for". 

The defendants argued that Article 24(4) Brussels I Regulation (Regulation 1215/2012) gave exclusive jurisdiction over patent validity to the courts of the registration state (i.e. to the state in which the patent was validated). However, the Local Division rejected this argument. The Local Division, citing the ECJ's decision in GAT v LUK, found that Article 24(4) Brussels I Regulation (Regulation 1215/2012"does not apply to the question of which court has jurisdiction in infringement proceedings" (page 21).

Additionally, the Local Division noted that Article 24(4) Brussels I Regulation (Regulation 1215/2012) only applies between EU Member States. For non-EU countries like the UK, the exception in Article 24(4) to the general rule of defendant's domicile jurisdiction (Article 4 Brussels I Regulation) does not apply per se. Therefore, since the UK is now a third country, Article 24(4) does not give exclusive jurisdiction to UK courts over the UK part of the European patent.

Article 31 UPCA and Article 4(1) Brussels I Regulation give the UPC jurisdiction in the UK

Having rejected the defendants' arguments based on Article 24(4) Brussels I Regulation (Regulation 1215/2012and Article 34 UPCA, the Local Division concluded that Article 31 UPCA and Article 4(1) Brussels I Regulation (Regulation 1215/2012gave it jurisdiction in the UK in the case in question. 

Article 31 UPCA states that: "The international jurisdiction of the Court shall be established in accordance with EU Regulation No. 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention)". As discussed above, Article 4(1) Brussels I Regulation (Regulation 1215/2012) states that persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State. 

In the case in question, all the defendants were domiciled in a Member State (Germany). Article 4(1) Brussels Ibis (Regulation 1215/2012states that persons domiciled in a Member State shall be sued in the courts of that Member State. Through Articles 71a-d Brussels Ibis, the UPC is deemed to be a court of a Member State for these purposes. Critically, the Local Division found this jurisdiction extends to infringement actions concerning non-EU states like the UK. The Local Division specifically cited the ECJ's Owusu case (C-281/02), which found that Brussels jurisdiction rules apply even to "circumstances involving relations between the courts of a single Contracting State and those of a non-Contracting State" (page 22). 

Thus, for the Local Division, Article 31 UPCA combined with Article 4(1) Brussels Ibis (Regulation 1215/2012provided jurisdiction over both German and UK infringement claims against the German defendants.

What about jurisdiction for revocation?

The Local Division did not need to address whether it could revoke the UK part of the patent, since the defendants only sought revocation in UPC Contracting Member States. However, the Local Division nonetheless rejected proposals to stay proceedings pending UK validity proceedings or grant relief conditional on UK validity, finding no legal basis for such approaches: "Since revocation is not sought for the United Kingdom, there is no situation in which the Court has to decide whether it has jurisdiction to revoke the UK-part of the patent in suit." (page 21). The Local Division noted that the defendants' request for a declaration regarding UK validity "has no legal basis, at least in the counterclaim" (page 21).

Practical implications for UK rights

Whilst the headline from this case is that the UPC found it had jurisdiction for infringement in the UK, the Local Division nonetheless declined to grant remedies regarding UK infringement. It reasoned that: "Even though the UK part of the patent in suit is not covered by the counterclaim for revocation and, at least at the time of the conclusion of the oral hearing, no revocation action has been filed in the UK, the validity of the patent in suit is a prerequisite for an injunction and further orders based on a finding of infringement." (page 60)

The Local Division also rejected proposals to stay proceedings pending UK validity proceedings or to grant relief conditional on UK validity: "R. 118.2. RoP only provides for such a possibility where a revocation action is pending between the same parties before the Central Division or an opposition is pending before the European Patent Office. An analogy presupposes an unforeseen gap in the law where the interests are the same. There is no such unforeseen gap in the present case" (page 61). 

With respect to the German rights, the Local Division found that due to its finding of the invalidity of the patent, the infringement action in German was without any basis (page 60). Interestingly, the Local Division was also clearly of the view that its finding of invalidity would be applicable to the UK (given that the same provisions of the EPC would apply in the UK as in Germany). Nonetheless, the Local Division accepted that it had no jurisdiction to consider validity in the UK. In view of such a "factual and legal situation", the Local Division concluded that the UK infringement action could not be successful (page 60). 

Final thoughts

For patent holders and practitioners, the decision highlights both opportunities and limitations in UPC enforcement strategy regarding UK rights. Whilst infringement actions may be brought against EU-domiciled defendants, it appears from this decision that obtaining remedies may prove challenging without parallel UK validity proceedings.

Interestingly, post-Brexit and the UK's decision to no longer participate in the UPC, there was some discussion that the UK courts might be used to "torpedo" the validity of Unitary Patents (PatKat was always a little sceptical of this, given the jurisdictional restrictions placed on the UK courts by the Moçambique principle in the UK, see IPKat). If the decision of the Local Division in UPC_CFI_355/2023 is anything to go by, the UK may conversely find itself subject to the long-armed jurisdiction of the UPC. 

Further reading

UPC finds that it has jurisdiction to consider infringement in the UK (UPC_CFI_355/2023) UPC finds that it has jurisdiction to consider infringement in the UK (UPC_CFI_355/2023) Reviewed by Rose Hughes on Tuesday, January 28, 2025 Rating: 5

6 comments:

  1. In the summary of the facts at the beginning of the decision, I failed to notice any acts carried out by the defendants in the UK. This would seem to point to a lack of jurisdiction. Maybe the court just wanted to set out its stall for later cases.

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    1. "Maybe the court just wanted to set out its stall for later cases".

      There is no maybe about it. Every time that the UPC is asked a highly contentious question concerning its jurisdiction, the answer is always "Yes, we have jurisdiction".

      At least we can be grateful that the LD conceded that it did not have jurisdiction to decide the validity of the UK equivalent. On the other hand, that means that any exercise of the UPC's long-arm jurisdiction will always be "bifurcated", with only infringement being considered (and the UPC rejecting as inadmissible any counterclaim for revocation of the patent in the non-contracting state).

      It is of course an awkward situation to deal, in the same case, with both infringement and validity for the contracting states, but only infringement for non-contracting states. In the Fujifilm case, the LD dealt with this issue by resorting to a highly questionable approach, namely making an assumption about the (in)validity of the UK equivalent.

      Indeed, the questionable nature of the LD's approach can be illustrated by considering a hypothetical case where the UPC's ruling of invalidity is based on a factual scenario that is much more finely balanced (and where there is good reason to believe that, solely due to quirks of UK (case) law, the UK courts would likely find the patent to be valid).

      Potentially worse still is the situation where the UPC finds the patent to be valid in respect of the contracting states. This is because then the UPC will need to contend with the fact that the provisions governing infringement (and, in particular, exemptions from infringement) differ in highly significant respects between the UPCA and, for example, UK law. Unless the UPC believes that it is competent to interpret and apply the law and case law of non-contracting states when asserting its long-arm jurisdiction, I really cannot see how this can possibly work out in the long term.

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    2. And then there is the situation that the court decides that the patent can be maintained in amended form which is also infringed. What is the infringement situation in the UK - as granted it would also be infringed but such a patent is invalid and therefore no infringement?

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    3. Indeed.

      It seems to me that the LD was fortunate that the Defendant's counterclaim for revocation did not explicitly call out the UK equivalent. Otherwise a stay of proceedings would have been required, pending the CJEU's final ruling in C-339/22.

      If the CJEU adopts the answers proposed by the A-G in C-339/22, this might require the UPC to decline to exercise its long-arm jurisdiction where there is a counterclaim for revocation of a patent of a non-contracting state. In that instance, who would bet against the UPC deeming such counterclaims inadmissible (as relating to a matter outside of the court's jurisdiction), thus leaving the UPC free to exercise its long-arm jurisdiction?

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  2. The present decision has been commented on Kluwer Patent Blog and on my own blog.

    It is clear that the UPC wants as much as possible to have its fingers in the pie.

    The present decision was taken by the LD Hamburg and we will have to see what the CoA UPC will make out of it.

    The CoA had decided that a PI was not valid for Irland as Ireland has signed but not yet ratified the UPC.

    There is another decision, this time from the CoA UPC, in which the CoA claims that the UPC has jurisdiction to decide on acts of infringement committed before the entry into force of the UPCA on 01.06.2023, as long as the European patent invoked has not yet lapsed at that date.

    This decision has also been commented in my blog.

    We really live in interesting times.

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  3. Apart from the jurisdiction issue, the decision provides detailed explanations regarding claim interpretation which deserve high attention, esp. in connection with case G 1/24 before the EBA.

    See the following excerpt from section B.II.1 (page 27) :
    “a patent may be used as its “own lexicon” (UPC_CoA_335/2023, Order of 26 February 2024, Head-note 2 – NanoString v 10x Genomics; UPC_CFI_14/2024 (CD Munich), Decision of 16 July 2024, Headnote 1 – Regeneron v Amgen).”

    This clearly states the UPC’s position regarding question 3 before the EBA. This question arose in the patent at suit in the referring decision T 439/22 as to whether the term “gathered sheet” was to be interpreted according to its “ordinary meaning” or according to a specific definition of this term in the description of the original application, which included two different meanings in addition to the “ordinary meaning”. This question, albeit narrow, provided a basis in T 439/22 for raising the much broader question of whether Art 69 EPC is applicable to claim interpretation in EPO proceedings.

    As to the general rule of claim interpretation, the decision states in the same section :
    “The normal rule of claim construction is that the terms used in a claim should be given their broadest technically sensible meaning in the context of the claim in which they appear. Thus, the description cannot be relied on to exclude subject-matter which the broadest technically sensible meaning of the terms used in a claim would include as part of what is claimed (UPC_CoA_335/2023, Order of 26 February 2024, reasons 4.d.cc. – NanoString v 10x Genomics).”

    It is noteworthy that the mention in the decision of the “broadest technically sensible meaning” exactly matches the settled case law of the EPO, applied in many BOA decisions, including very recent decisions T 1886/22 and T 1345/23 of 5 November 2024. It is surprising that T 439/22 did not explicit mention this rule.

    Since the UPC does apply Art 69 for claim interpretation, the decision makes it clear that the principle which is the settled case law of the EPO is fully compatible with Art 69.

    The decision provides several illustrations of the principle. An interesting example relates to the interpretation of indefinite article “a”, which may mean “one” or “one or more” (the French equivalent for the English “a” is “un”, which is more ambiguous since it means both “a” and “one”).

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