Home » UPC decisions » Central Division » CD Paris, Preliminary objection of a revocation action, May 2, 2024, UPC_CFI-484/2023

CD Paris, Preliminary objection of a revocation action, May 2, 2024, UPC_CFI-484/2023

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Key takeaways

The asserted patent is only validated in Germany.

In 2021, Nokia Solutions and Networks GmbH & Co. KG filed a national revocation action with the German Federal Patent Court (GFPC) against the proprietor (Mala Technologies), which was dismissed by the GFPC in 2023 and the decision was served in December 2023.

On 15 December 2023, one day after the service from the GFPC, Nokia Technology GmbH filed a central revocation action with the UPC Paris CD.

On 15 January 2024, Nokia Solutions and Networks GmbH & Co. KG filed an appeal against the decision of the GFPC.

The Paris CD decided that the UPC has jurisdiction even though a prior national revocation action is pending.

The Paris CD decided that there is no direct applicability of Art. 29 to 32 BR to the UPC because the UPC is a “common court” (Art. 71a (1), (2a) BR), i.e., not a court of a Member State as required by Art. 29 to 32 BR.

Art. 71a (1) BR is not applicable to the UPC, otherwise Art. 71c (2) BR would be superfluous.

A literal application of Art. 71c (2) BR is not possible in the case-at-hand because the German revocation action was lodged before the transitional period, i.e., not within the transitional period as required by Art. 71c (2) BR.

Application of Art. 71c (2) BR by analogy is also not possible because there is no unintended gap and a similarity of the interests. As a general principle, national and international courts can act independently. Moreover, a party which filed a lawsuit in a national court before the entry into force of the UPCA should not be barred from filing a lawsuit before the UPC.

Division

Paris (FR) Central Division

UPC number

UPC_CFI-484/2023

Type of proceedings

Revocation action. Preliminary objection.

Parties

Applicant (=Defendant in the main proceedings): Mala Technologies Ltd. = proprietor of patent-in-suit

Defendant (=Claimant in the main proceedings): Nokia Technology GmbH

Patent(s)

EP 2 044 709 B1 (valid only in Germany)

Jurisdictions

UPC, German Federal Court of Justice

Body of legislation / Rules

Art. 29-31 Brussels I Reg, Art. 71a – 71d Brussels I Reg recast


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  • Maggie Huang

    German and European Patent Attorney, UPC Representative

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