Earlier
today, the Court of Justice for the European Union issued its decision in BSH
Haugeräte GmbH v. Electrolux AB, Case C‑339/22. As I noted in my April 2024 blog post, published after the CJEU decided that a Grand Chamber would rehear the matter, BSH owned EP 1 434 512, which was validated in ten EPO member states,
including non-EU members Türkiye and the U.K.
In 2020, BSH filed an infringement action against Electrolux in Sweden, where
Electrolux is domiciled, alleging the infringement of all ten of these national
patents. The patents have since expired,
but BSH still hopes to recover damages. In
its defense, Electrolux argued that, because Electrolux has raised invalidity
as a defense, article 24(4) of the Brussels I bis Regulation (Regulation
(EU) No 1215/2012 of the European Parliament and of the Council of 12 December
2012 on jurisdiction and the recognition and enforcement of judgments in civil
and commercial matters) and CJEU case law (specifically, GAT v. LuK,
Case C-4/03 (2006) and Roche Nederland BV v. Primus, Case C-539/03
(2006)), constrain the Swedish court to adjudicate only the alleged
infringement of the Swedish patent; and that the question of whether the
defendant has infringed the other national patents can be decided only in each
of the ten patent-validating nations, even if invalidity is raised only as a
defense.
Of particular relevance here are article 4(1) of the Regulation, which
states that “Subject to this Regulation, persons domiciled in a Member State
shall, whatever their nationality, be sued in the courts of that Member State,”
and the aforementioned article 24(4), reads as follows:
The following courts of a Member State
shall have exclusive jurisdiction, regardless of the domicile of the parties:
…
(4) in proceedings concerned with the
registration or validity of patents …, irrespective of whether the issue is
raised by way of an action or as a defence, the courts of the Member State in
which the deposit or registration has been applied for [or] has taken place …
Without prejudice to the jurisdiction
of the European Patent Office under [the EPC], the courts of each Member State
shall have exclusive jurisdiction in proceedings concerned with the
registration or validity of any European patent granted for that Member State.
The questions
referred to the CJEU were the following:
1. Is Article 24(4) of Regulation (EU)
1215/2012 1 of the European Parliament and of the Council of 12 December 2012
on jurisdiction and the recognition and enforcement of judgments in civil and
commercial matters to be interpreted as meaning that the expression
‘proceedings concerned with the registration or validity of patents …
irrespective of whether the issue is raised by way of an action or as a
defence’ implies that a national court, which, pursuant to Article 4(1) of that
regulation, has declared that it has jurisdiction to hear a patent infringement
dispute, no longer has jurisdiction to consider the issue of infringement if a
defence is raised that alleges that the patent at issue is invalid, or is the
provision to be interpreted as meaning that the national court only lacks
jurisdiction to hear the defence of invalidity?
2. Is the answer to Question 1
affected by whether national law contains provisions, similar to those laid down
in the second subparagraph of Paragraph 61 of the Patentlagen (Patents Law),
which means that, for a defence of invalidity raised in an infringement case to
be heard, the defendant must bring a separate action for a declaration of
invalidity?
3. Is Article 24(4) of the Brussels I
Regulation 1 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 Türkiye in respect of the part of the European
patent which has been validated there?
In its decision today, the Court concludes, with respect to questions 1
and 2, that under article 24(4) “the courts of each [EU] Member States are to
have exclusive jurisdiction in proceedings concerned with the registration or
validity of any European patent granted for that Member State” (para. 32). However, “the exclusive jurisdiction rule
laid down in Article 24(4) of the Brussels I bis Regulation concerns only the
part of the dispute relating to the validity of the patent. Accordingly, a
court of the Member State in which the defendant is domiciled, which has
jurisdiction, under Article 4(1) of the Brussels I bis Regulation, in an action
alleging infringement of a patent granted in another Member State, does not
lose that jurisdiction merely because, as its defence, that defendant
challenges the validity of that patent” (para. 41). That said, if the court in which the infringement
action is pending “considers it justified, in particular where it takes the
view that there is a reasonable, non-negligible possibility of that patent
being declared invalid by the court of that other Member State that has
jurisdiction . . . the court seised of the infringement action may, where
appropriate, stay the proceedings, which allows it to take account, for the
purpose of ruling on the infringement action, of a decision given by the court
seised of the action seeking a declaration of invalidity” (para. 51).
With respect to the third question, however, involving patents issued by
non-EU Member States, we get a different result, unless the third country is a member
of the Lugano Convention, which has a provision similar to article 24(4), or
there is a bilateral convention in place stipulating that “the courts of that
third State are to have exclusive jurisdiction over disputes relating to the
validity of patents granted in that third State” (para. 64). (The non-E.U. members of the Lugano Convention are Iceland, Norway, and Switzerland.) A court of an E.U. Member States also may,
under some circumstances, stay proceedings if there are proceedings “already
pending before a court of a third State” (para. 65). Here, however, it appears that “Türkiye is
not a State that is party to the Lugano Convention and the file before the
Court contains no indication as to whether there is an applicable convention
between the Kingdom of Sweden and that third State or as to whether there are
proceedings pending before a court of that third State, within the meaning of
Articles 33 and 34 of the Brussels I bis Regulation” (para. 66). The Court then considers whether, if as here none
of the above conditions apply, general international law would pose an obstacle
to an E.U. Member State court evaluating the validity of a patent issued by a third
country. The Court concludes that, because
such issuance “is an exercise of national sovereignty,” a court of an E.U.
Member States cannot nullify such a patent, but it may decide the question of
validity as long as that decision applies only inter partes—that is, it
doesn’t cancel the foreign patent as against everyone, but only finds the patent
invalid as between the plaintiff and the defendant in the specific case before
the court (para. 75).
So, consider the following example.
Patentee P, domiciled in Germany, owns corresponding patents in Germany,
France, and the United States. P sues defendant
D in France, where D is domiciled. D
argues, in its defense, that all three national patents are invalid under the laws
of the issuing country. If I understand
correctly, the French court may adjudicate the infringement of all three
patents. It also may determine, in accordance
with French law, whether the claims in suit of the French patent are valid or
invalid—and if it decides they are invalid, then that decision will apply erga
omnes (against the world), because that is the effect of such a
determination in France. On the other
hand, the French court may not adjudicate, even indirectly, the validity of the
German patent, though it has discretion to stay the infringement action with respect
to the German patent pending an invalidation action in Germany. Finally, the French court may adjudicate the
infringement of the U.S. patent, and it may determine whether the claims in
suit are valid—though if it decides they are invalid, that decision will apply
only inter partes; and as Florian Mueller suggests it probably could instead
stay the action under its own domestic law. But even if it does conclude the
U.S. claims are invalid, the U.S. patent would still be presumed valid as against
the rest of the world.
Some questions to consider are the following. First, in the above example, would the French
court decide the remedies for the infringement of the German and U.S. patents
in accordance with, respectively, German and U.S. law, or in accordance with
French law? That may depend on whether French
law considers remedies to be procedural or substantive, which is something I
may research in the coming days. I am
inclined to think that they should be considered substantive, and therefore
determined by the law of the state of registration, but that may not be the
universally-held view. (For discussion,
see, e.g., my article Extraterritorial Damages in Copyright Law, 74 Fla.
L. Rev. 123, 163 n.204 (2022) (citing various sources). Second, would the Unified Patent Court, as
opposed to the French domestic court in the above hypothetical, be able to decide
the infringement of non-EPO patents? It
would appear not, under UPCA arts. 2, 32, which limits the court’s jurisdiction
to EPO-granted patents and to SPCs; but after BSH, it could decide infringement
and award remedies for the infringement of EPO-granted patents even in non-UPC
countries such as the U.K., or countries such as Ireland that have signed but
not yet ratified the UPCA. (In fact, that
would be consistent with a recent UPC decision, Fujifilm Corp. v. Kodak GmbH,
UPC_CFI_355/2023 (Düsseldorf Local Division 2025), that predates BSH.) Third, in the above example, would a U.S.
court enforce a judgment rendered by the French court against the defendant’s
U.S. assets? Presumably yes, unless
there were some credible argument that the French decision was against U.S. public
policy. Fourth, will U.S. courts rethink
their view, as expressed in Voda v. Cordis Corp., 476 F.3d 887 (Fed.
Cir. 2007), that they lack subject matter jurisdiction to adjudicate the
infringement of foreign patents, even when invalidity is not at issue? Time will tell.
