Key takeaways
On international jurisdiction: The CoA confirms long-arm jurisdiction for European patents in accordance with the CJEU’s decision in BSH v Electrolux (C-339/22), i.e. where the Defendant is domiciled in a UPC contracting member state (headnotes 5-8). In this course, the CoA clarifies that the UPC cannot decline jurisdiction in such case, confirming the CJEU’s decision in Owusu (C-281/02) (headnotes 9 and 10).
[5] Art. 34 UPCA 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 has effect”. It is not meant to confine the UPC’s jurisdiction to its own territory. Art. 34 UPCA clarifies that as a rule – unless a more limited scope is requested (cf Art. 43, 76 UPCA) – decisions of the UPC shall cover the territory of all Contracting Member States where a European patent has effect.
[6] There is no indication that the Contracting Member States when entering into the UPCA wished to confer a more limited jurisdiction to the UPC – confined to its own territory – in situations where the national courts would have extra-territorial jurisdiction.
[7] The UPCA is expressly not limited to European patents insofar as validated for the UPC territory only. As such, European patents validated in territories outside the UPC territory is ‘matter governed by the UPCA’.
[8] Art. 24(3) UPCA specifically leaves open the possibility that there is a need for the UPCA to apply national law, including that of non-contracting States. The use of ‘in particular’ makes clear that the areas of application of such foreign law is not limited to the matters referred to in the articles mentioned.
[9] Where a court has jurisdiction under Article 4 Br I bis because the defendant is domiciled in its territory, as is the case in the present proceedings, the Regulation precludes that court from declining jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action, even if the jurisdiction of no other Member State is in issue, or the proceedings have no connecting factors to any other Member State (CJEU, judgment of 1 March 2005, Owusu, C-281/02, ECLI:EU:C:2005:120, paras 36 ‒ 46). This approach has recently been endorsed by the CJEU in BSH v Electrolux.
[10] Accepting jurisdiction in the infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement.
On exercising international jurisdiction: The CoA sets up a structured guideline for exercising international jurisdiction, pointing out that international law principles, such as comity, must be applied (headnotes 11 – 18, mn. 301 et seqq).
A court which has jurisdiction to hear an alleged infringement of a patent validated outside of its own territory, is not only required to apply the law applicable to that patent, but must also apply international law principles such as comity.
In situations where the Court has jurisdiction to decide on the alleged infringement and remedies requested by the patentee based on a non-UPC designation of a European patent (EP), and where the defendant has – as a defence – asserted that the EP relied on is invalid, then:
- where designations in the territories of Members States of the European Union (EU) and Signatories to the Lugano Convention (LC) are concerned (‘EU/LC EPs’), it follows from Art 24(4) Br I bis and Art. 22(4) LC that the Court shall not consider the validity of such patents, but as decided in BSH v Electrolux the Court does not lose jurisdiction to decide the infringement action based on such patents;
- where designations in territories of non-EU and non-LC States are concerned (‘non-EU/LC EPs’), it follows from BSH v Electrolux that the Court can consider the validity of such patents in inter partes proceedings and the Court may on that basis decide the infringement action based on such patents.
The Court of Appeal considers the following approach regarding actions based on EU/LC European patents and/or non-EU/LC European patents to be in line with BSH v Electrolux and international principles of law, including comity, for the following situations (I, II and III respectively):
I. a revocation action is lodged with the Court with respect to (a) EU/LC EP(s) and/or non-EU/LC EP(s)
The Court shall declare that it lacks jurisdiction to decide the action.
II. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid
It will be appropriate for the Court to first offer the patentee the opportunity to withdraw the infringement action insofar as based on (a) EU/LC EP(s) and/or non-EU/LC EP(s) within an appropriate period of time.
Where it concerns EU/LC EPs:
a. if the patentee does not wish to withdraw the infringement action, and insofar a revocation action is not already pending with the relevant competent national court(s), it is appropriate to give the defendant the opportunity to file a revocation action with the relevant competent national court(s) within an appropriate period of time.
b. if and to the extent that (a) revocation action(s) is pending, or the defendant has lodged such action(s), it is generally appropriate for the Court to use its discretion and/or case management powers (cf R. 295(l) and (m) RoP) to stay the infringement proceedings insofar as based on that EU/LC EP(s) until a final decision has been rendered in the revocation action(s) by the competent national court(s).
c. if and to the extent that the defendant does not lodge such action(s) within the given time period, the Court must assume that the patent(s) is/are valid and shall decide the infringement action on that basis.
Where it concerns non-EU/LC Eps:
a. if the patentee does not wish to withdraw the infringement action, the infringement action shall be dismissed, unless there are specific reasons not to do so (e.g. because the claim(s) of an extra-territorial part is different and may be considered valid – in such a situation the next paragraph applies)
III. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered valid and infringed in the UPC territory
Where it concerns either EU/LC EPs (in view of Art. 24(4) Br I bis and 22(4) LC) or non-EU/LC EPs (in view of comity):
a. the Court may – where appropriate and in order to avoid undue delay – consider there is a reasonable, non-negligible possibility that the patent will be held valid by the competent national court and issue a decision including its orders under the condition subsequent that the patent is not held to be wholly or partially invalid to the extent the infringement is based thereon in first instance or appeal proceedings before the national court competent to hear the revocation case in relation to such an EP (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis).
b. if such a competent national court holds the patent to be valid, then the decision including its orders stays in place with the condition subsequent; if the decision is final, the injunction becomes permanent.
c. if such a competent national court at first instance or on appeal holds the patent to be wholly or partially invalid to the extent the infringement is based thereon then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away.
d. In the case under c. the patentee may request the Court for orders consequential on such a decision within two months of the decision of such a competent national court (R. 118.4 RoP), including a request for a stay of the proceedings until a final decision is rendered by the competent national court.
On claim construction: There is no general rule that the skilled person would always and automatically take into account fluctuations which are due to the manufacturing process and the measurement method and in doing so would automatically add deviations to the – as such precise – numerical value in a claim feature. This may be a result of claim interpretation but is not inherent to the use of a numerical value in a claim (headnote 1)
The Court of Appeal emphasizes that any considerations relating to the manufacturing process are generally irrelevant if the claim to be interpreted is a product claim. In the case at hand, the appellant argued that that fluctuations which are due to the manufacturing process are to be taken into account when interpreting a specific claim feature.
However, according to Court of Appeal, there is no general rule that the skilled person would always and automatically take into account fluctuations which are due to the manufacturing process and the measurement method and in doing so would automatically add deviations to the – as such precise – numerical value in a claim feature. This may be a result of claim interpretation but is not inherent to the use of a numerical value in a claim.
In the case at hand, the court’s claim interpretation does not coincide with the appellant’s interpretation because neither the claim nor the description gave any indication that the claimed range of numerical values is meant to be further extended to cover fluctuations.
On the applicable law for private prior use rights: According to Article 28 UPCA, “Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.” Whether a right of private prior use in respect of the German designation of the Patent may be relied on is thus to be determined under German law (headnotes 2 and 3).
According to Article 28 UPCA, “Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.”
The Court of Appeal concludes that the question whether the appellant may rely on a right of private prior use in respect of the German designation of the patent-in-suit is to be determined under German law.
In the case at hand, the Court of Appeal found that the appellant has acquired a private prior use right because the allegedly infringing embodiments realized all features of the asserted patent claim and because there was evidence to show that a decision to commercialise those embodiments was made before the priority date.
Concerning one embodiment, there was a discussion about whether or not it realized an additional advantage exceeding the prior user’s right. However, the Court of Appeal found that the alleged advantage was not caused by features highlighted by the patent-in-suit in dependent claims or the description. As such, the alleged advantage was deemed irrelevant for the prior user’s right.
Frontloaded proceedings: It is not contrary to R. 29(c) RoP and the front-loaded system of the RoP if a party submits additional evidence of an already stated fact or submitted argument for which other evidence had already been submitted, but which was disputed by the other party (headnote 4).
Joint tortfeasorship: As the Court of Appeal held in Belkin v Philips (UPC_CoA_534/2024, of 3 October 2025) an “infringer” within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA is also a person who does not personally carry out the acts referred to in Art. 25 UPCA but to whom the acts of a third party are attributable because he is an accessory. The jurisdiction of the UPCA under Art. 32.1(1) UPCA to hear actions for patent infringement therefore extends to allegations of joint tortfeasorship (headnote 19).
Division
Court of Appeal
UPC number
UPC_CoA_312/2025
UPC_CoA_333/2025
UPC_CoA_880/2025
UPC_CoA_882/2025
Type of proceedings
Appeal proceedings in infringement action and counterclaim for revocation
Parties
APPELLANTS (and DEFENDANTS):
- Kodak GmbH (Stuttgart, Germany)
- Kodak Graphic Communications GmbH (Stuttgart, Germany)
- Kodak Holding GmbH (Stuttgart, Germany)
RESPONDENT (and CLAIMANT):
Fujifilm Corporation (Tokyo, Japan)
Patent(s)
EP 3 511 174
Body of legislation / Rules
Rule 5 RoP, Art. 24(1) (c) UPCA
