DECISION: FUJIFILM V KODAK UPC 355/2023
The Düsseldorf Local Division has released a remarkable decision concerning the ‘long arm jurisdiction’ of the UPC, in which it confirmed its jurisdiction to determine infringement of the UK designation of a European patent, provided the defendant is domiciled in a UPC Contracting Member State.
BACKGROUND
FujiFilm brought proceedings for infringement in respect of a European patent (EP 3 594 009), against various Kodak entities, before the Düsseldorf Local Division. In terms of the relevant facts:
- The patent was only in force in Germany and the UK.
- The defendants are domiciled in Germany.
- The defendants brought a counterclaim for revocation in respect of the German part of the patent only.
The defendants also lodged a preliminary objection challenging the UPC’s jurisdiction to hear the UK infringement claim.
RELEVANT LAW
The claimant relied on the following provisions:
- Article 4(1) of the (revised) Brussels regulation (Regulation 1215/2012) (“Regulation”), which states: “persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.”
- 71a of the Regulation, which confirms that the UPC, as a common court, shall be deemed to be a court of a Member State.
- Article 31 UPC Agreement (“UPCA”): “The international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention).”
In contrast, the defendants relied on:
- Article 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.”
- Article 24(4) of the Regulation: “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.”
DECISION
The Düsseldorf Local Division sided with the claimant, ruling that Article 4(1) of the Regulation and Article 31 UPCA give the court jurisdiction to decide on infringement of EP (UK) patents. It also considered that:
- Article 24(4) of the Regulation does not apply to infringement proceedings (citing the European Court of Justice’s decision in GAT v LUK), and, in any case, cannot apply at all to the UK since, following Brexit, it is no longer a member state and instead a ‘third country’.
- Jurisdiction for infringement under the Regulation can extend to non-EU states like the UK (by reference to the European Court of Justice’s ruling in the Owusu case).
In relation to validity, the court made clear that revocation of the UK designation was not (and could not have been) included in the counterclaim, such that it did not have jurisdiction to decide on its validity. However, it did proceed to revoke the German part of the patent and, as such, infringement in Germany could not be found.
Despite the above, the court declined to rule on UK infringement in this case. It did so on the assumption that the same grounds of invalidity advanced with respect to the German part of the patent applied to the UK part (absent any arguments advanced by the defendants supporting a different assessment applying to the UK). The court ruled that, as validity is a prerequisite for an injunction “and further orders”, it could not make a finding of UK infringement.
Therefore, the infringement claim was unsuccessful in its entirety.
It is also noteworthy that the court declined to stay the proceedings pending a decision on validity of the UK part, since there was no pending revocation action before the UK courts.
COMMENTS
This decision is no doubt politically contentious, with some arguing it is a jurisdictional overreach following the UK’s exit from the EU and (as a result) its inability to participate in the UPC (at least directly).
There are certainly some surprising aspects of the ruling. For instance, in the UK, there is no prerequisite to consider validity of a UK patent, if not being challenged by a party, before making a determination on infringement (indeed, albeit very common to counterclaim for invalidity, there may be strategic reasons not to).
This first instance decision is ripe for appeal. However, if upheld by the Court of Appeal, it could have wide-reaching consequences, clarifying the UPC’s competence to opine on infringement in non-contracting member states / non-EU member states (again, provided that the European patent is in force and the defendants are domiciled in a UPCA contracting member state).
Various strategic considerations come into play as a result of this decision. For instance, parties that anticipate being sued for infringement might opt to bring a proactive or reactive invalidity action before a UK court, to mitigate the risk of a UPC infringement finding covering the UK. Equally, for patentees seeking to minimise the costs associated with bringing separate UPC and UK actions, it may seek to bring a single UPC claim instead, and may (at least at this stage) choose to do so in the Düsseldorf Local Division in reliance on this decision as a precedent for the UPC’s long-arm jurisdiction. However, whether a UK court would enforce such a decision of the UPC (to the extent it relates to UK infringement) remains unclear.
