CASELAW-UPC – reviews of UPC decisions

EP 3 594 009 B1 relates to a lithographic printing plate precursor and a method of preparing a lithographic printing plate.

Brief outline of the procedure before the UPC

EP 3 594 009 B1 is in force in Germany and the UK.

FUJIFILM Corporation instituted infringement proceedings before the LD Düsseldorf of the UPC against a group of Kodak companies, all domicilated in Germany, in the following “Kodak”.

Kodak filed a counterclaim for revocation.

As a result of the revocation action, the CFI the LD Düsseldorf decided that EP 3 594 009 B1 is to be revoked in the territory of all Contracting Member States in which the patent has effect.

The infringement action was dismissed.

FUJIFILM shall bear the costs of the infringement action and the counterclaim for revocation.

The interesting part is that the CFI LD Düsseldorf considered that the UPC has jurisdiction to hear the infringement action in respect of the UK part of the patent.

Kodak’s point of view on the territorial competence of the UPC

Kodak argued that, by rising the defence of invalidity of the patent in suit, the UPC lacks jurisdiction over the European Patent insofar as it relates to the UK. Pursuant to Art. 34 UPCA, Germany is the only Contracting Member State for which the patent in suit still has effect.

The UK 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 UK.

Kodak also referred to the Brussels Regulation 1215/2012 to deny the competence of the UPC to the UK and considered that the UPC would not be able to render a decision which would result in the revocation of the UK part of the European Patent.

FUJIFILM’s point of view on the territorial competence of the UPC

FUJIFILM argued that the UPC’s jurisdiction covers not only infringing acts of Kodak in the existing UPC Member States, but also in the UK.

According to Art 34 UPCA, “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 UPC was clearly intended to have jurisdiction also over non-Contracting Member States, at least in some cases. This follows from Art. 71b Brussels Ibis Regulation.

The Claimant may claim damages for infringement of the patent in the UK, including for the period during which the UK was still an EU Member State. Art. 67 of the UK-EU Withdrawal Agreement provides that the provisions of the Brussels Ibis Regulation “shall apply” to all legal proceedings instituted before the end of the transition period, which ended on 31.12.2020.

An alternative legal basis for the Court to grant the requested provisional relief is RoP 118.2 UPC. This rule allows the Court to grant relief subject to the validity of the enforced patent being confirmed by the EPO in opposition proceedings. This rule could be applied analogously in the present case, where relief could be granted subject to the UK courts confirming the validity of the patent in potential revocation proceedings.

The CFI’s decision

Both the infringement action and the counterclaim for revocation are admissible.

With regard to the UK, Kodak has lodged a preliminary objection. This preliminary objection was admissible but unfounded.

Since the revocation action seeks only the revocation of the patent in suit in the territory of the Contracting Member States, the question whether the UPC has jurisdiction for revocation actions concerning the validity of third-state-patents does not arise.

However, the UPC has also competence to hear the case with respect to the infringement action for the UK.

Since there is currently no opt-out under Art. 83(3) UPCA from the exclusive jurisdiction of the UPC with respect to the patent in suit, the UPC – as a court common to the Member States of the UPCA – has international jurisdiction for the present counterclaim for revocation pursuant to Art. 24(4), 71a(2)a), 71b(1) of the Brussels Ibis Regulation.

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. Kodak is domiciled in Germany.

For the CFI LD Düsseldorf, 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, cf. ECJ, 1.3.2005 – C-281/02, cf. 31.

Contrary to Kodak’s 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, cf. Grabinski/W. Tilmann, Einheitspatent, EPGÜ Art. 23 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.

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.

To summarise, the CFI is of the opinion that, if the defendant is domiciled in a Contracting Member State, the UPC 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 UK, the UPC has jurisdiction to hear the case.

Comments

The present decision shows at best how the UPC intends to have a long-arm jurisdiction extending outside the UPC Contracting States.

It is to be noted that all articles of doctrine referred to in the decision have been drafted by people who supported and promoted the UPC, some having even now a position as judge in the CoA.

Doctrine is one aspect, and merely represents opinions, but it does not replace interpretation of legal rules by competent bodies. In the present case the LD Düsseldorf is both judge and party.

In its order UPC_CFI_130/2024-ACT_14944/2024, the CFI LD The Hague had decided that it had competence over Irland, although Irland had signed but not ratified the UPCA.

In its order UPC_CoA_388/2024-APL_39884/2024, the CoA UPC held that only countries that have not only signed but also ratified the UPCA are Contracting Member States and set aside the part of the order relating to Irland.

A referral to the ECJ is needed

As the CFI bases its opinion on decisions of the ECJ, it appears necessary for the UPC to refer questions to the CJEU, as to the territorial competence of the UPC. If the CFI has not done so, the CoA could do so.

It would also be interesting to know whether the CJEU considers the UPC as a court common to the Contracting Member States and as part of their judicial system, cf. Art 21 UPCA. Art 21 UPCA is a mere declaration.

This is the more so in view of the of the preceding discussion on the competence of the UPC for Irland.

Has the UK actually left the UPCA?

The question whether the UK has actually left the UPCA is still open as the UPCA does not contain any exit clause.

The decisions of the Administrative Committee of the UPC dealing with the consequences of Brexit do not appear to have any legal basis, since those decisions have amended the UPCA in a way which defies any legal reasoning.

None of the mechanisms provided for in the VCLT in case of the absence of an exit clause in a treaty have been respected.

Final comment

The present action also shows the deleterious effect of not having limited the period in which an infringement action can be filed at the UPC once infringement has been established.

This is without any doubt to the benefit of all the firms of legal representatives, mostly Anglo-Saxon, hoping to fill even more their already deep pockets. We should not forget that their members were instrumental in the setting up of the RoP UPC which escaped any scrutiny of the ratifying parliaments.