Last week I published the first half of a post on those portions of the UPC Court of Appeal’s decision in Kodak GmbH v. Fujifilm Corp. in which the Court expresses its understanding of when it is appropriate for the UPC to exercise jurisdiction over a claim for the infringement of the portion of a European Patent that pertains to a non-UPC, non-EU, non-Lugano Convention country (such as the U.K.). Here are the remaining headnotes on this topic (corresponding to decision paragraphs 301-23), followed by a brief discussion:
Exercising international jurisdiction
11. A court which has jurisdiction to hear an alleged infringement of a patent validated outside of its own territory, is not only required to apply the law applicable to that patent, but must also apply international law principles such as comity.
12. In situations where the Court has jurisdiction to decide on the alleged infringement and remedies requested by the patentee based on a non-UPC designation of a European patent (EP), and where the defendant has – as a defence – asserted that the EP relied on is invalid, then:
- where designations in the territories of Members States of the European Union (EU) and Signatories to the Lugano Convention (LC) are concerned (‘EU/LC EPs’), it follows from Art 24(4) Br I bis and Art. 22(4) LC that the Court shall not consider the validity of such patents, but as decided in BSH v Electrolux the Court does not lose jurisdiction to decide the infringement action based on such patents;
- where designations in territories of non-EU and non-LC States are concerned (‘non-EU/LC EPs’), it follows from BSH v Electrolux that the Court can consider the validity of such patents in inter partes proceedings and the Court may on that basis decide the infringement action based on such patents.
13. The Court of Appeal considers the following approach regarding actions based on EU/LC European patents and/or non-EU/LC European patents to be in line with BSH v Electrolux and international principles of law, including comity, for the following situations (I, II and III respectively):
I. when a revocation action is lodged with the Court with respect to (a) EU/LC EP(s) and/or non-EU/LC EP(s)
14. The Court shall declare that it lacks jurisdiction to decide the action.
II. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid
15. It will be appropriate for the Court to first offer the patentee the opportunity to withdraw the infringement action insofar as based on (a) EU/LC EP(s) and/or non-EU/LC EP(s) within an appropriate period of time.
16. Where it concerns EU/LC EPs:
a. if the patentee does not wish to withdraw the infringement action, and insofar a revocation action is not already pending with the relevant competent national court(s), it is appropriate to give the defendant the opportunity to file a revocation action with the relevant competent national court(s) within an appropriate period of time.
b. if and to the extent that (a) revocation action(s) is pending, or the defendant has lodged such action(s), it is generally appropriate for the Court to use its discretion and/or case management powers (cf R. 295(l) and (m) RoP) to stay the infringement proceedings insofar as based on that EU/LC EP(s) until a final decision has been rendered in the revocation action(s) by the competent national court(s).
c. if and to the extent that the defendant does not lodge such action(s) within the given time period, the Court must assume that the patent(s) is/are valid and shall decide the infringement action on that basis.
17. Where it concerns non-EU/LC EPs:
a. if the patentee does not wish to withdraw the infringement action, the infringement action shall be dismissed, unless there are specific reasons not to do so (e.g. because the claim(s) of an extra-territorial part is different and may be considered valid – in such a situation the next paragraph applies)
III. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered valid and infringed in the UPC territory
18. Where it concerns either EU/LC EPs (in view of Art. 24(4) Br I bis and 22(4) LC) or non-EU/LC EPs (in view of comity):
a. the Court may – where appropriate and in order to avoid undue delay – consider there is a reasonable, non-negligible possibility that the patent will be held valid by the competent national court and issue a decision including its orders under the condition subsequent that the patent is not held to be wholly or partially invalid to the extent the infringement is based thereon in first instance or appeal proceedings before the national court competent to hear the revocation case in relation to such an EP (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis).
b. if such a competent national court holds the patent to be valid, then the decision including its orders stays in place with the condition subsequent; if the decision is final, the injunction becomes permanent.
c. if such a competent national court at first instance or on appeal holds the patent to be wholly or partially invalid to the extent the infringement is based thereon then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away.
d. In the case under c. the patentee may request the Court for orders consequential on such a decision within two months of the decision of such a competent national court (R. 118.4 RoP), including a request for a stay of the proceedings until a final decision is rendered by the competent national court.
I’m not going to try to summarize everything, but here is my understanding of four major points. First, the UPC has jurisdiction to consider claims for the alleged infringement of European Patents (meaning patents validated in a member of, and in accordance, with the European Patent Convention), as well as E.U. Supplemental Protection Certificates, but not non-European Patents. So there would be no basis for the UPC to consider an infringement claim concerning, e.g., a U.S. patent or a Japanese patent. (Domestic courts within the E.U. might do so, under BSH, but any decision such a court would render on validity would be applicable only inter partes.) Second, the UPC has jurisdiction to entertain claims for the revocation of European Patents validated in UPC territory, but not non-European Patents and not European Patents validated outside UPC territory. Third, it follows from the above that the UPC has jurisdiction to entertain infringement claims involving European Patents that were validated in a member state of the Brussels I bis Regulation (meaning all current members of the E.U.) or the Lugano Convention (E.U. member states plus Iceland, Norway, and Switzerland); but the court may not reconsider the validity of such a patent even by way of defense or counterclaim. It may, however, stay the infringement litigation pending a revocation action filed in an appropriate forum. Fourth, the UPC has jurisdiction to entertain claims involving European Patents that were not validated in a member state of the Brussels I bis Regulation or the Lugano Convention (such as the U.K.), and it may consider validity by way of defense or counterclaim, but its decision would be binding only inter partes.
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