[UPCKat] UPC asserts its jurisdiction in parallel patent proceedings in Mala v Nokia dispute

One of these things looks like the other....

The UPCKat team is back covering an order which saw the Paris Central Division foraying into the wonderful world of EU regulations, namely Regulation (EU) No 1215/2012 (recast), to determine whether it had jurisdiction when there were parallel German proceedings pending for the same patent (spoiler alert – the Paris CD decided it did).   Our guest UPCKats,  Hiske Roos and Laura Mikkelsen and members from the team at Carpmaels, are back to report on the 2 May 2024 decision in Mala Technologies v Nokia UPC_CFI-484/2023.  

Over to Laura and Hiske:  

"Background 

Nokia had filed two revocation actions against Mala’s EP 2 044 709  (valid only in Germany) before different courts: the German national court and the UPC.

First on 29 April 2021, Nokia Solutions and Networks GmbH & Co. KG had filed a revocation action in the German Federal Patent Court, which was unsuccessful, and EP 2 044 709 was upheld in its entirety (appeal is pending).  Nokia Technology GmbH then filed a separate revocation action on 15 December 2023 in the UPC.  This order concerns a Preliminary objection filed by Mala in the UPC revocation proceedings objecting to the UPC’s jurisdiction to hear the action due to EP 2 044 709 already being the subject of the German revocation proceedings, and requesting that the UPC reject Nokia Technology GmbH’s revocation action as inadmissible on this basis.  

The key issue was whether the lis pendens rules in Art. 29 – 31 of Regulation (EU) No 1215/2012 (recast) on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels I Reg recast) would (directly) apply to determine the relationship between the German and UPC revocation proceedings.  Mala argued they would apply, and Nokia argued they would not.   

The Court divided this key issue into three questions (without addressing arguments raised by both sides on whether the two different Nokia entities are, or are not the “same parties” in the sense of art. 29 Brussels I Reg): 

1. Question 1: Are the Art. 29 – 31 Brussels I Reg recast lis pendens rules directly applicable to the two proceedings? 
2. Question 2: If not, are Art. 29 – 31 Brussels I Reg recast applicable to the two proceedings in conjunction with Art. 71a – 71d of Brussels I Reg recast regarding the jurisdiction of “common courts” including the UPC? 
3. Question 3: If the answer to Questions 1 and 2 is no, is Art. 71c(2) regarding the transitional period of the UPC applicable by analogy?

Decision 

The Court first referred to Art. 31 UPCA which determines international jurisdiction of the UPC and explained that this article only determines that the international jurisdiction of the UPC is determined in accordance with the Brussel I Reg recast.  During the transitional period, proceedings may still be brought before national courts or other competent national authorities. 

The Court then continued and, in short, responded a firm “no” to each of the three questions: 

• The Court answered question 1 by deciding that Art. 29-31 of Brussels I Reg recast are not directly applicable to the UPC and cannot of themselves determine the relationship between the German and UPC proceedings. The UPC is not a court of a Member State as referred to in Art. 29. The Court held that Art. 71a – 71d make this clear as they set out “special rules” for common courts such as the UPC and if Art. 29-31 were directly applicable those rules would be without meaning.  

• The Court applied the same reasoning in relation to question 2 that Art. 71b does not make Art. 29 applicable because otherwise Art. 71c, which provides for special lis pendens rules, would be without meaning. However, while Art. 71c(2) of Brussels I Reg recast provides for special rules for cases of lis pendens during the UPC transitional period (defined in Art. 83 UPCA as starting at the date of entry into force of the UPCA (i.e. 1 June 2023) and lasting for a period of seven years), based on the literal wording this does not cover cases filed prior to the transitional period (as was the case in these Mala v Nokia proceedings). According to the Court this also follows from the wording of Art. 71c, which uses the wording “shall apply” and indicates that this article exclusively determines applicability of lis pendens rules before common courts such as the UPC and does not allow for applicability of those rules otherwise.    

• The Court answered question 3 by referring to the clear and unambiguous wording of Art. 71c(2) and by emphasising that there was no room for application by analogy, reasoning that its scope should not be extended because: 
• there is a general principle that decisions of courts of sovereign states and sovereign entities like the UPC are independent of each other.  Considering this, only if there are rules which define the interrelationship of judgments of courts of sovereign countries can the judgment of the courts of one country have effects on the jurisdiction of the courts of another country: 

“58.There is no general principle within the UPCA that precludes the UPC from asserting jurisdiction in revocation proceedings merely because other proceedings relating to the same patent are pending before other courts. Rather, revocation 11 proceedings may be brought before the UPC even if an opposition before the EPO is pending, see Art. 33 (8), (10) UPCA. There is no reason why the same principle should not apply to national courts (absent a legal rule to the contrary).” 

o  Claimants have distinct interests in filing revocation lawsuits before and after the UPC has entered into force (it was unclear when the UPC would enter into force, so only during the transitional period would a claimant be able to make a choice to file before the UPC or national court).  

This meant that the UPC had jurisdiction and Mala’s Preliminary objection was rejected.   

Mala had requested that if the UPC had jurisdiction, the proceedings be stayed until a final decision on the German revocation appeal proceedings had been issued and requested a stay of the proceedings until a final decision on the Preliminary objection had been issued.  If the Court did not grant Mala’s request for the proceedings to be stayed until a final decision on the Preliminary objection was issued, Mala alternatively requested that the deadline to lodge its Defence to the revocation be extended by one month.  The Court also declined these additional requests, so that no stay and no extension were granted (see p. 11 - 12 of the order).

The UPC has taken an interesting approach and clarified that it will assert its jurisdiction even when there are parallel national proceedings on the same patent that were brought before the UPC transitional period, in the absence of any rule to the contrary.  This UPCKat has become aware that the decision has been appealed and is very excited to learn the (perhaps different?) view of the UPC CoA on this."