News
UPC stakes claim for wide-reaching long-arm jurisdiction for European patents
February 2025
Fujifilm Corporation v Kodak GmbH & ors – Thomas J, Dr Thom J and Dr Parchmann J. – UPC_CFI_355/2023 – 28 January 2025
The Düsseldorf Local Division has delivered the UPC’s first Judgment on long-arm jurisdiction, finding that the UPC does have jurisdiction that extends beyond the UPC, including the UK (a non-EU, EPC state). The Düsseldorf LD held that it had jurisdiction in the UK in the infringement action because the defendants (three Kodak GmbH entities) were all domiciled in a UPC Contracting Member State (Germany). Ultimately, however, the Düsseldorf LD held that European Patent No. 3594009B1 (the “Patent”) was invalid for insufficiency and rejected all Auxiliary Requests as invalid too.[1]
As a party cannot infringe an invalid patent, the Düsseldorf LD stated that there was no infringement in Germany but also went on to state that a finding for infringement in the UK was “not an option”. The Düsseldorf LD held that although the EP(UK) was not part of the action for revocation before the UPC, validity of the EP(UK) was a prerequisite for an injunction “and further orders” following a finding of infringement. Despite acknowledging that the UPC had no jurisdiction to decide on the validity of EP(UK), the Düsseldorf LD suggested that the Claimant could have made submissions as to why the UK Patents Court might have reached a different conclusion to the UPC’s finding of invalidity of EP(DE). It is not clear, however, if such submissions had been made successfully, whether the Düsseldorf LD would have ordered any of the enforcement measures for the EP(UK) sought by the Claimant (including injunction, damages, compensation for moral prejudice suffered, destruction, recall and publication of the Judgment on the Defendants’ website plus notification to their customers).
Background
The Patent had granted in April 2021 before the launch of the UPC and only remained in force in Germany and the UK at the time that UPC proceedings were filed. The Patent was validated as an EP bundle of national patents, which had not been opted-out of the UPC’s exclusive jurisdiction. No opposition had been filed and nor had there been any national revocation proceedings (this remained the position at the date of trial).
Fujifilm sued Kodak for infringement of the DE and UK parts of the Patent and sought an order for (i) an injunction prohibiting the infringing acts in DE and UK together with penalty payments for breach; (ii) damages across a number of EPC territories (UPC states, non-UPC EU member states (e.g., ES, GR, CZ, SK and PL) and third party states (e.g., CH and UK) from the date of publication; (iii) compensation for moral prejudice; (iv) opening of the Defendants’ accounts and distribution channels (v) an interim award of damages of €10million; (vi) destruction of products in DE and UK; (vii) recall of products with full reimbursement of associated costs; (viii) procurement of a hold and recall / cancellation of orders by commercial customers of the Defendants; (ix) publication of the Judgment; and (x) notification of the Judgment to customers. The Claimant also sought an interim award of legal costs of €300,000.
The Defendants lodged a preliminary objection with regards to international jurisdiction and competence of the UPC for the UK part of the Patent. The Defendants subsequently filed a counterclaim for revocation. Together with its Defence to the counterclaim for revocation, the Claimant made an application to amend the Patent, with three Auxiliary Request being considered by the Court.
The three German Kodak defendants were direct and indirect subsidiaries of US-based Eastman Kodak Company. The first defendant acted as a German sales company that purchased the Kodak products from the UK Kodak company (Kodak Ltd) and sold to German customers. The second defendant operated as a contract manufacturer of printing plates for Kodak Ltd pursuant to a 2017 Manufacturing Toll Agreement. The third defendant, was a holding company managing Kodak entities in Germany and abroad. The second and third defendants had a control and loss transfer agreement in place. All three German Kodak GmbH entities had the same CEOs. The UK Kodak Ltd company was not a defendant to the proceedings.
UPC’s long-arm jurisdiction under the Brussels Regulation (recast)
The Brussels Regulation (recast) sets out the rules on jurisdiction for the national courts of EU member states in relation to civil actions with cross-border implications. The Regulation aims to ensure comity between the courts of different EU MS and avoid irreconcilable judgments. The Regulation was amended in 2014 to recognise the UPC as a common court (i.e., with a multi-jurisdictional scope) that was to be treated as having the same powers and obligations any other EU MS’ national court.[2] Although the UK was an EU MS at the time of the amendment to the Regulation, as of 31 December 2020 when the Brexit transition period ended, the UK has not been a party to the Brussels Regulation regime and is now a “third State”.[3] The UK also withdrew its ratification of the UPC Agreement in 2020.
Under the general provisions, Article 4(1) of the Regulation[4] states that parties domiciled in a MS shall, whatever their nationality, be sued in the court of their domicile. The Regulation also sets out various rules relating to specific types of disputes, including Article 24(4) that reserves exclusive jurisdiction for “proceedings concerned with the registration or validity of patents… irrespective of whether the issue is raised by way of action or as a defence, [to] the courts of the Member State in which the … registration has taken place…”.[5]
Chapter II of the Regulation deals with the issue of lis pendens, and stipulates what national courts must consider when proceedings involving the same cause of action and between the same parties are issued in the courts of different EU MS. This provides for consideration of which court is first seized of the matter and for the later action to be stayed until jurisdiction is established. Where the court first seized establishes it has jurisdiction, any other court must decline jurisdiction for the matter in favour of that court. Similar rules apply to related actions, albeit stays of actions and declining of jurisdiction is discretionary. Related actions are defined as those that “are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings”.
Article 71b (1) of the Regulation sets out that the UPC shall have jurisdiction where the UPC Contracting MS would have jurisdiction.
Article 71b (2) of the Regulation sets out that the UPC has jurisdiction over a defendant not domiciled in an EU MS and provides that where the Regulation doesn’t otherwise confer jurisdiction, Chapter II of the Regulation would apply irrespective of the defendant’s domicile.
Article 71b(2) also states that an application can be made to the UPC for provisional measures even where the Court of a third State had jurisdiction as to the substance of the matter. In the context of European patents which can be validated and in force across all 39 EPC states, this stakes the EU MS’s position that the UPC has jurisdiction to award e.g., a preliminary injunction relating to the EP(UK) even where Article 24(4) makes it clear that validity of the EP(UK) is the sole preserve of the UK Patents Courts.
Article 71b(3) limits the jurisdiction at Article 71b(2) to a defendant in patent infringement proceedings that gives rise to damage within the EU but states that the Court may also exercise jurisdiction in relation to damage arising out of the EU from such infringement. This long-arm jurisdiction can only be established if the defendant has property located in a UPC contracting member state[6] and the dispute has a sufficient connection with a UPC contracting member state.
The UPC’s international jurisdiction under the Regulation is set out at Article 31 of the UPC Agreement. Article 34 of the UPC Agreement 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 had effect”.
The Judgment
The Düsseldorf LD held that the preliminary objection regarding jurisdiction was admissible but unfounded.
Jurisdiction in relation to the claim for revocation
The Düsseldorf LD stated that as the Defendant had not sought revocation of the EP(UK) portion of the patent in the UPC proceedings, no question of jurisdiction for validity of EP(UK) arose. It is difficult to follow the Court’s reasoning on this point, as the Düsseldorf LD acknowledged it did not have jurisdiction to decide on the validity of the EP(UK) pursuant to Article 24(4) of the Regulation which aligned with the Defendant’s position was that there was no ability for it to ask the UPC to revoke the UK part of the patent. The Defendant had put forward a request that given the patentee had sought to enforce the patent in the UK, it should agree to consent to apply to the UK Patents Court or UKIPO in the event that the UPC revoked the patent in the UPC Contracting Member States. This request was dismissed as having no legal basis.
In terms of a request for a stay of proceedings,[7] the Düsseldorf LD also distinguished the matter from that before the pending CJEU referral (BSH Hausgerate GmbH v Electrolux AB, C-339/22) on the basis that unlike in that case, in this action, validity was not in issue in the relevant third party state.[8]
Jurisdiction in relation to infringement
The Düsseldorf LD held that it had competence to hear the action with respect to the infringement action for the EP(UK) (as well as the EP(DE)).
Although Article 24(4) of the Regulation reserved the exclusive jurisdiction for matters relating to the registration and validity of a patent to the court of the MS where it is registered, it did not exclude jurisdiction for infringement proceedings. All of the defendants were domiciled in Germany and under Article 4(1) of the Regulation the UPC had jurisdiction. According to the Düsseldorf LD, CJEU case law[9] established that the uniform rules of jurisdiction contained in the Regulation (in the form at that date) were not intended to apply only to situations in which there was a real and sufficient link with the functioning of the internal market of the EU but also extended to relations between EU courts (including the UPC) and non-contracting states. Citing commentary from Court of Appeal Judge Kalden, the Düsseldorf LD asserted that the jurisdiction of the EU MS where the defendant is domiciled was “universal”. On that basis, the Düsseldorf LD stated that such jurisdiction “may therefore extend to the infringement of the [EP] committed in all the [EPC] States for which it has been granted”. Accordingly, the patentee could bring all of their infringement claims before a single court to obtain comprehensive relief in a single forum.
The Düsseldorf LD held that the amendments to the Regulation at Article 71b (2) and (3) governed “certain constellations in which the defendant [was] not domiciled in a MS”. This was not the position in this action and referring to Article 71b(1) the Düsseldorf LD held that this provided that the UPC had the same jurisdiction as any EU MS national court’s over third State patent infringement actions. Further, Article 34 of the UPC Agreement did not address nor exclude the international jurisdiction of the UPC but instead determined the territorial scope of the UPC’s Judgments within the UPC’s Contracting Member States.
Separately, the Düsseldorf LD distinguished between the finding that the UPC had jurisdiction to decide the infringement action in respect of the EP(UK), from the question of the applicable substantive law. It is not clear from the Judgment, however, whether either party put forward any submissions or expert evidence as to differences between applicable substantive law in the UK versus the UPC or if they might have done so if the Patent had been held to be valid.
Conclusions
This is the first UPC judgment to consider the scope of the UPC’s long-arm jurisdiction in more detail and aligns with other UPC judgments that have staked a broad interpretation of that jurisdiction.
Ultimately, the invalidity of the Patent meant that the Düsseldorf LD did not go on to consider how it might have worded an injunction or the other relief sought as regards to the EP(UK) part of the Patent. Various commentators have indicated that the powers under the UPC’s long-arm jurisdiction might be directed solely towards the property or actions of defendant(s) located within the UPC’s jurisdiction but still have the effect of penalising defendants for acts committed in third states.
What is also unclear is what the response of the Patents Courts of third States, such as the UK Patents Court, to a UPC order for infringement and damages having an effect within their territory. While the UK was both party to the amendment to the Regulation and UPC Agreement at the time they were drafted, it remains to be seen whether a UPC order covering the UK would be acceptable post-Brexit when part of the public and political reasoning for the UK’s departure was based on regaining UK sovereignty from EU law. While it is clear that the UK Patents Court will give due respect to a specialist patent court and will be watching the development of UPC jurisprudence, equally, it is willing to grant anti-suit injunctions and other forms of declaratory relief where required.
Further, while this action relates to long-arm jurisdiction covering third States, defendants located in EU MS who are not signatories to the UPC Agreement can have no doubt that when engaged, the UPC’s international jurisdiction will have a direct impact on all acts of infringement within the EU.
[1] This case summary is focused on the jurisdictional aspects of the Judgment.
[2] Article 71a and Article 71b(1) of the Brussels Regulation (Recast).
[3] Or the Lugano Convention, which extends certain aspects of the Brussels Regulation (recast) to non-EU, EFTA states in Europe.
[4] Formerly Article. 2 Brussels Convention; see also Andrew Owusu v NB Jackson (T/A Villa Holidays Bal-Inn Villas) and Ors – 1 March 2005 – C-281/02.
[5] As noted by the Düsseldorf LD, Article 24(4) codifies the position established by CJEU case law in GAT v LUK ECJ, 17 July 2006 – C-4/03.
[6] Currently, this extends to 18 EU MS who have ratified the UPC Agreement, including Germany, France, Italy and The Netherlands.
[7] This differed from the Order from the Mannheim LD issued on 22 January 2025, in which the Judge Prof. Dr. Tochtermann declined to determine the granting of a permanent injunction in the UK in respect of a different Fufifilm European patent before the CJEU handed down its decision in BSH Hausgerate GmbH v Electrolux AB, C-339/22.
[8] The third question is: Is Article 24(4) of the Brussels I Regulation to be interpreted as being applicable to a court of a third country, that is to say, in the present case, as also conferring exclusive jurisdiction on a court in Turkey in respect of the part of the European patent which has been validated there?
[9] Owusu ECJ, 1 March 2005, C-281/02 (referring to former Article 2 of the Brussels Convention).
This article was written by Partner Rachel Fetches, Senior IP Solicitor Christie Batty and IP Solicitor Sian Hope