The recent judgments by the Court of Justice of the European Union (CJEU) in BSH Hausgeräte GmbH v. Electrolux AB (C-339/22) and the Unified Patent Court (UPC) in FUJIFILM Corporation v. Kodak GmbH et al. (UPC_CFI_355/2023) have significantly broadened the scope of cross-border patent litigation within Europe. These landmark decisions reshape strategic considerations for patent enforcement, jurisdiction, and the overall landscape of intellectual property rights enforcement.
CJEU’s Decision in BSH v. Electrolux
In this case, BSH Hausgeräte GmbH (BSH), the holder of European patent EP 1 434 512 relating to vacuum cleaners, initiated infringement proceedings against Electrolux AB in Sweden. The patent was validated in multiple countries, including Austria, France, Germany, Greece, Italy, the Netherlands, Spain, Sweden, Turkey, and the United Kingdom. BSH sought to prohibit Electrolux from using the patented invention across these states and claimed damages for the alleged infringement.
Electrolux contested the Swedish court’s jurisdiction concerning the parts of the patent validated outside Sweden, arguing that the court lacked authority to rule on infringement claims related to those foreign patents based upon Article 24(4) of the Brussels I bis Regulation, especially since their validity was challenged by Electrolux.
Article 24(4) of the Brussels I bis Regulation reads as follows:
“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, trade marks, designs, or other similar rights required to be deposited or registered, 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, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.”
The CJEU held that national courts have jurisdiction to rule on infringement actions even when the validity of the patent is contested. Article 24(4) of the Brussels I bis Regulation has a limited scope and only restricts national courts from ruling on the invalidity of patents granted in other EU Member States. However, the infringement court may choose to stay proceedings if it finds that there is a reasonable, non-negligible possibility that the patent could be invalidated by a court with jurisdiction over the invalidity action in another Member State.
Additionally, the CJEU addressed the scenario where the infringement proceeding involves national parts of European patents from non- EU Member States, such as Turkey and the UK. Since Article 24(4) does not apply to non-EU jurisdictions, the CJEU ruled that an EU court may also assess an invalidity defense concerning such patents, provided no bilateral treaty establishes exclusive jurisdiction. However, the court clarified that any decision on invalidity in such cases would only have an inter partes effect, meaning it would not bind third parties or alter the official status of the patent in foreign national registers.
UPC’s Decision in FUJIFILM v. Kodak
In another recent case, FUJIFILM Corporation filed an infringement action before the Düsseldorf Local Division of the UPC against Kodak GmbH and its associated companies, alleging infringement of EP 3 594 009 B1, which was in force in both Germany and the UK. FUJIFILM sought relief concerning both the German and UK parts of the patent. Kodak, in response, filed a counterclaim for revocation but only for the German part of the patent. Kodak also challenged the UPC’s jurisdiction over the UK part of the patent.
The UPC ruled that since the defendants were domiciled in a UPC contracting state (Germany), the court had jurisdiction to hear the infringement action concerning the UK part of the patent. The court did not need to determine whether it had jurisdiction over a revocation action for the UK part of the patent, as Kodak had not raised such a counterclaim. However, the court alluded to the possibility that, in theory, it might have jurisdiction over such a claim, though this issue was not decided in the case at hand.
Implications for Patent Litigation Strategies
These decisions significantly impact cross-border patent enforcement strategies. The CJEU’s decision reinforces that national courts can hear infringement cases involving multiple EP national parts, even when an invalidity defense is raised. At the same time, it raises the possibility of EU national courts adjudicating infringement disputes concerning patents in non-EU jurisdictions, provided that no conflicting international treaty applies. However, this development leaves open questions regarding the enforceability of such decisions in non-EU countries.
Similarly, the UPC decision underlines its jurisdictional reach, allowing infringement claims to be heard against defendants domiciled in UPC member states, even if the patent in question has been validated outside the UPC system.
These decisions may influence forum selection strategies in future litigation for plaintiffs, as plaintiffs weigh the advantages of national courts versus the UPC in terms of costs, procedural efficiency, and the potential scope of enforcement. In turn, defendants face the risk of an infringement decision forcing them into multiple national invalidity actions, increasing litigation costs and complexity. Furthermore, the decisions are expected to intensify forum shopping, with plaintiffs favoring jurisdictions perceived as patent-holder friendly.
Looking ahead, these decisions may encourage further harmonization in cross-border patent enforcement within Europe. However, uncertainty remains regarding how these jurisdictional expansions will play out and whether non-EP patents can also be claimed in EU courts. Additionally, it remains to be seen whether non-EU courts will accept and enforce decisions made by EU national courts or the UPC concerning non-EU patent rights. The coming years will determine whether these rulings mark a true shift in cross-border patent litigation or simply introduce new layers of complexity. Businesses and legal practitioners must remain vigilant, adapting their strategies to navigate the evolving jurisdictional landscape and leveraging these developments to their advantage.