CJEU Grand Chamber to Hear Argument Concerning Cross-Border Relief

Last week, Florian Mueller published a post on his new site ipfray, titled Grand Chamber of European Court of Justice takes patent case—question of cross-border jurisdiction.  The case at issue is BSH Haugeräte GmbH v. Electrolux AB, and although the questions referred date back to May 2022 and the case has already been heard by a regular chamber, the CJEU’s decision to assign the matter to a “Grand Chamber” of fifteen judges is recent. The questions referred are:

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?

 

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?

 

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 Turkey in respect of the part of the European patent which has been validated there?

The basic facts are these.  BSH owned EP 1 434 512, validated in ten EPO member states, including Türkiye and the U.K.  In 2020, BSH filed an infringement action against Electrolux in Sweden, for infringing all ten national patents.  The patents have since expired, but BSH still hopes to recover damages.  Electrolux argues, however, that because Electrolux raises 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 those patent-validating nations, even if invalidity is raised only as a defense.  Article 24(4), which was added to the Regulation to conform to the decision in GAT v. LuK, reads as follows (with ellipses as in AG Emiliou's opinion, discussed below):

 

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.

For its part, BSH urges that the Swedish court should consider the infringement of all ten patents, though if Electrolux contests validity, the court may provisionally stay any judgment of infringement until invalidation proceedings brought in the patent-validating countries are final. 

Interestingly, the Advocate General’s opinion strongly criticizes GAT v. LuK but recognizes that because the rule the court articulated in that case is now codified as article 24(4), there is no question of the court overruling it.  Instead, he argues that the “lesser evil” is, essentially, that urged by BSH, namely that the Swedish court (the court of the defendant’s domicile) has jurisdiction over the infringement claims, but should consider staying proceedings pending the outcome of invalidation actions in the other countries.  As for Türkiye, which is not bound by Brussels Regulation bis I (as the U.K. is, even after Brexit, as a matter of domestic legislation), EU law cannot confer upon the Turkish court exclusive jurisdiction over matters related to patent validity.  Nevertheless, while the court of an EU member state such as Sweden may have jurisdiction to decide the validity of the Turkish patent (without an erga omnes effect), the AG recommends that it may decline to exercise that jurisdiction “reflexively” (that is, to treat the matter as it would if the other state were an EU member state, subject to "some limited discertion" (para. 152)).      

For further analysis, see posts by Geert van Calster and by Lydia Lundstedt.  For background on GAT v. LuK, Roche v. Primus, and other relevant CJEU case law, see Paul England, Cross-border actions in the CJEU and English Patents Court--ten years on from GAT v. LuK, 12 JIPLP 105 (2017); see also my book pp. 250-53.