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.
No comments:
Post a Comment