UPC finds that it has jurisdiction to consider infringement in the UK
After the UK’s exit from the EU, the UK withdrew from participating in the Unified Patent Court (UPC) – this was consistent with the idea that the UK would no longer be affected EU laws or courts. However, a recent case at the Düsseldorf Local Division of the UPC has determined that the UPC has jurisdiction to hear a case of infringement action concerning the UK.
In UPC CFI 355/2023, Fujifilm owned European patent (EP 3 594 009 B1) which was in force in Germany and the UK. Fujifilm brought an infringement cation against three German direct and indirect subsidiaries of Kodak Company, requesting an order for the defendants to refrain from making, offering, placing on the market, using a lithographic printing plate precursor within Germany and the UK, or storing it for those purposes, that had the features of claims 1, 2, or 3 of the European patent. Fujifilm also requested that Kodak paid damages to compensating all losses caused by the infringing acts in the Germany and the UK. The defendants filed a counterclaim for revocation of the patent in its entirety of all contracting member states in which the patent had effect.
The defendants argued that pursuant to Article 34 UPCA, as Germany is the only contracting member state for which the patent in suit still has effect, it therefore follows that the territorial scope of a decision of the UPC in this case cannot be extended to the UK, as the UK is not a UPC contracting member state.
The Düsseldorf Local Division rejected the defendant’s arguments and instead agreed with Fujifilm’s argument which was that Article 34 UPCA covers the territorial scope of the Court's decision within the territory of the Contracting Member States, but does not exclude decisions having effect beyond the territory of the Contracting Member States.
In fact, under Article 31of the UPCA, the Düsseldorf Local Division found that the international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012 (Brussels I-bis Regulation). Article 4(1) Brussels I-bis Regulation states that persons domiciled in a member state shall, whatever their nationality, be sued in the courts of that Member State. Thus, as the three defendants were all domiciled in Germany, the Düsseldorf Local Division was considered competent to hear and determine the action as it was deemed to be a court of a member state through Article 71b(1) Brussel I-bis Regulation. The Düsseldorf Local Division found that the UPC has jurisdiction over the UK portion patent in addition to the German patent.
In the end, the Düsseldorf Local Division found the patent to be invalid and thus ordered the revocation of the German portion of the patent. The infringement action (in respect of both the UK and Germany) was dismissed as such.
