Key takeaways
1) Art. 7(2) in conjunction with Art. 71b(1) of the Brussels I recast Regulation must be interpreted as meaning that the UPC has international jurisdiction in respect of an infringement action where the European patent relied on by the claimant has effect in at least one Contracting Member State and the alleged damage may occur in that particular Contracting Member State. Where the damage is allegedly caused via the internet, the likelihood of such damage may arise from the possibility of obtaining products and/or using services from an internet site accessible within the territory of the Contracting Member State where the European patent has effect.
15) The harmful event put forward by DISH and SLING in their Statement of claim is that AYLO through its websites offers and supplies video files and media players to end-users in, inter alia, Germany, which, when operating on the end-user stations, perform the method claimed in the patent in suit. DISH and SLING argue that this constitutes an indirect infringement of the patent at issue. This is sufficient to establish the jurisdiction of the UPC pursuant to Art. 7(2) in conjunction with Art. 71b(1) of the Brussels I recast Regulation, since (as is not disputed) the patent at issue has effect in, inter alia, Germany, and (that) AYLO’s websites are accessible in, inter alia, Germany.
16) AYLO’s complaint that DISH and SLING have not submitted that AYLO’s servers are located within the territory of the Contracting Member States must be rejected. Where, as in the present case, the damage within the meaning of Art. 7(2) of the Brussels I recast Regulation is allegedly caused via the Internet, the likelihood of such damage arises from the possibility of obtaining products and/or using services from a website accessible within the territory of the Contracting Member State in which the European patent has effect, even if the server is located outside that territory (see paragraph 13 above). More specifically, the likelihood of damage in this case arises from the accessibility of AYLO’s websites through which users in the Contracting Member States can obtain means (media players and video files) which, according to DISH and SLING, relate to an essential element of the patented invention and are suitable and intended for putting the invention into practice.
2) The identification of the place where the harmful event occurred or may occur within the meaning of Art. 7(2) of the Brussels I recast Regulation, does not depend on criteria which do not appear in this provision and which are specific to the examination of the merits, such as the conditions for establishing an indirect infringement within the meaning of Art. 26 UPCA.
12)vii) (…) At the stage of examining the jurisdiction of a court to adjudicate on damage caused, the identification of the place where the harmful event giving rise to that damage occurred for the purposes of Article 7(2) of the Brussels I recast Regulation cannot depend on criteria which are specific to the examination of the substance and which do not appear in that provision. Article 7(2) lays down, as the sole condition, that a harmful event has occurred or may occur (see, Pinckney, paragraph 41);
viii) Thus, unlike Article 17(1)(c) of the Brussels I recast Regulation, which was interpreted in Joined Cases C‑585/08 and C‑144/09, Article 7(2) thereof does not require, in particular, the activity concerned to be ‘directed to’ the Member State in which the court seised is situated (see, Pinckney, paragraph 42);
3) The place “where the actual or threatened infringement has occurred or may occur” as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place “where the harmful event occurred or may occur” of Art. 7(2) of the Brussels I recast Regulation is interpreted in relation to alleged patent infringements.
26) The Court of First Instance assumed that the place “where the actual or threatened infringement has occurred or may occur” as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place “where the harmful event occurred or may occur” of Art. 7(2) of the Brussels I recast Regulation is interpreted in relation to alleged patent infringements. The Court of Appeal shares this view because the provisions have a similar purpose, namely to define a ground of jurisdiction or competence on the basis of the connection between the subject-matter of the dispute and the court or division respectively.
4) The list of preliminary objections of R. 19.1 RoP must be regarded as exhaustive. The application of R. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.
32) R. 19 to 21 RoP provide for a special procedure for deciding on preliminary objections. This procedure differs in several respects from the general procedure for dealing with defences (R. 23 et seq. RoP) and the special procedure for deciding actions which are manifestly inadmissible or manifestly lacking any foundation in law (R. 361 RoP). For example, the failure to lodge a preliminary objection within the time period is treated as a submission to the jurisdiction of the Court and the competence of the division (R 19.7 RoP), the preliminary objection is decided by the judge-rapporteur (R. 20.1 RoP) and the decision or order of the judge-rapporteur is subject to appeal under certain conditions (R. 21 RoP). Against this background, the list of preliminary objections of R. 19.1 RoP must be regarded as exhaustive. The application of R. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.
33) The limited scope of the preliminary objections procedure does not, however, prevent the judge-rapporteur, the presiding judge or the panel from using case management powers to identify issues at an early stage, to decide the order in which issues are to be resolved, to direct a separate hearing to any issue and to dismiss a claim after a decision on a preliminary issue makes a decision on further issues irrelevant to the outcome of the action (see, to that effect, R. 332(b) and (d) and R. 334(d), (e) and (g) RoP). Thus, the judge-rapporteur, the presiding judge or the panel may decide to deal with a particular defence, such as abusive procedural conduct or manifest lack of foundation, at an early stage of the proceedings.
Division
Luxembourg Court of Appeal
UPC number
UPC_CoA_188/2024
ORD_42716/2024
Type of proceedings
Appeal against order rejection Preliminary Objection
Parties
APPELLANTS and Defendants in the main proceedings:
- AYLO PREMIUM LTD (Nicosia, Cyprus)
- AYLO BILLING LIMITED (Dublin, Ireland)
- AYLO FREESITES LTD (Nicosia, Cyprus)
RESPONDENTS and Claimants in the main proceedings:
- DISH TECHNOLOGIES L.L.C. (Englewood (CO), United States)
- SLING TV L.L.C. (Englewood (CO), United States)
Patent(s)
EP 2 479 680
Body of legislation / Rules
Art. 7(2) in conjunction with Art. 71b(1) Brussels I recast, Art. 30(2) Brussels I recast, Art. 33(1)(a) UPCA, Rule 19.1 RoP
