UPC_CFI_359/2023, UPC_CFI_365/2023, UPC_CFI_702/2024: Mannheim grants first injunction for UK infringement; Paris confirms jurisdiction for Lugano state (Switzerland) infringement

UPC Case Law | 29.07.2025

(1) Court docket: LD Mannheim, decisions of 18 July 2025 – UPC_CFI_365/2023 [EP 3 511 174] and UPC_CFI_359/2023 [EP 3 476 616]
(1) Parties: FUJIFILM Corporation vs. Kodak GmbH/Kodak Graphic Communications GmbH/Kodak Holding GmbH

(2) Court docket: LD Paris, procedural order of 21 March 2025 – UPC_CFI_702/2024 [EP 4 153 830]
(2) Parties: Mul-T-Lock France/Mul-T-Lock Switzerland vs. IMC Créations

Contributor: Nicolas Mafael

Headnote

UPC local divisions have started to assume jurisdiction over cases concerning infringement of national parts of European patents (“EP”) outside the UPC territory, such as the UK (1. and 2.) or Spain and Switzerland (2.), applying CJEU’s landmark decision BSH Hausgeräte vs. Electrolux[1]. These decisions demonstrate how the UPC positions itself as a forum for patent infringement disputes beyond the UPC Contracting Member States.

Relevance of the decisions

(1) The two first-instance decisions of the LD Mannheim in FUJIFILM vs. Kodak concern the alleged infringement of the UK national part of two EPs by the defendants domiciled in Germany. The claimant requested, inter alia, a cease-and-desist order for the UK regarding the further making and marketing of defendant’s contested products, as well as the determination of liability for damages caused by past infringing acts in the UK. The defendants filed counterclaims for revocation regarding the patents-in-suit.

In both judgments, the LD Mannheim assumed jurisdiction over acts relating to infringements of the UK national part of the patents-in-suit on basis of the defendants’ domicile in a Member State of the European Union (Art. 4 (1) Brussels-Ia-Regulation (“BReg”)) relying on the reasoning in the CJEU’s decision. The LD held it had jurisdiction even if an invalidity defense is raised. The court can assess the validity of the UK national part as a mere prerequisite for the question of infringement with effect between the parties only (so-called effect inter partes), as this does not affect the existence or scope of the UK national part or cause the national register of the UK to be amended. The local division further confirmed that none of the possible caveats laid out in the CJEU ruling applied: Namely an already pending action between the same parties on the same patent brought in the UK (Article 33 and 34 BReg) or the existence of a bilateral convention stipulating an exclusive jurisdiction of the UK courts to decide on validity of the patents-in-suit. The court further confirmed that in the absence of infringe¬ment or revocation proceedings in the UK there was also no reason to stay the proceedings according to the UPC’s Rules of Procedure (“RoP”) (namely R. 295 (a) or (m) RoP).

The decision sheds light on the types of arguments that tend to be persuasive before the UPC, and those that may be unsuccessful:

• Defendants challenged the UPC's jurisdiction by invoking principles of inter¬national law. However, the Local Division rejected these arguments—based on non-interference, forum inconvenience, and comity—stating succinctly that the CJEU had already addressed these issues in detail. 
• The court further rejected the defendants’ interpretation that Article 34 UPCA excludes the UPC’s jurisdiction over the national parts of EPs relating to non-UPCA Contracting Member States, clarifying the international jurisdiction under the UPCA is governed by Article 31 UPCA.
• Considering the possibility of a partial revocation of the patents-in-suit, claimants sub¬mitted auxiliary requests in the infringement proceedings. The admissibility of these requests was contested by the defendants, who argued that procedural requirements under UK law - specifically, notification of the UK Intellectual Property Office - had not been met. The court dis¬mis¬sed this objection, primarily pointing out that the infringement proceedings before the UPC are governed exclusively by the procedural law of the UPCA in accordance with fundamental prin¬ci-ples of international procedural law.
• In the proceedings regarding claimant’s infringement action concerning EP 3 476 616, the court found the infringement action based on the UK part of the patent-in-suit as granted unfounded. Notably, with regards to the alternative limited substantive scopes of the patent-in-suit the claimant wished to base the action upon, the LD held that the infringement action was inadmissible. If the claimant intends to base the infringement action on alternative limited versions of the UK national part of the patent, it must clearly and unambiguously specify the subject-matter of the alleged new independent patent claims and the order of their priority. Although no formal application to amend the UK national part according to the UPC’s RoP (R. 30 RoP), is required (since the proceedings do not affect the UK national part’s validity), the princi¬ples of the effectiveness of the proceedings and of the defendant’s right to an effective defence apply mutatis mutandis. Furthermore, it would have a negative impact on the effecti¬ve¬-ness of the court procedures if the LD had to assess separa¬tely any dependent claim for independent validity without the above-mentioned specifications.
• Since the defendants provided no specific arguments under UK patent law and the EPC as applied by UK courts, the LD referred regarding its assessment of validity to its prior decision on the German part of the patent-in-suit in the separated proceedings. For the infrin¬ge¬ment analysis the UPC applied the UK Patents Act on the infringing acts in the UK, noting that the defendants failed to pre¬sent any facts or legal standards under UK law to rebut the infringement claim. The court empha¬sized it was the defendants’ responsibility to raise any relevant arguments under possibly divergent UK law.

(2) The procedural order of the LD Paris in Mul-T-Lock vs. IMC Créations concerned a preliminary objection filed by defendants based in France and Switzerland to reject jurisdiction over the alleged patent infringement of the Spanish, Swiss and UK national parts of the European patent-in-suit. A dis¬tinc¬tive feature of this order is therefore that it involves all three possible constellations following the CJEU ruling: the national part of an EP in Spain (an EU Member State but not a UPCA Contracting Member State), Switzerland (a non-EU Member State that is a Contracting Party to the Lugano Convention), and the UK (a state that is neither an EU Member State nor a Contracting Party to the Lugano Convention).

The LD Paris dismissed the preliminary objection, assuming jurisdiction according to Art. 4 (1) BReg in conjunction with the CJEU decision to decide on infringement of the Spanish and UK national part of the EP even if invalidity is asserted. Regarding the Swiss national part, the LD Paris held that the CJEU’s reasoning applies also under the Lugano Convention that contains jurisdiction principles similar to the BReg, especially concerning the excep¬tions regarding decisions on the validity of the patent.

Interestingly, the court further held that, with regard to the Spanish and Swiss national parts, it has jurisdiction to hear the infringement claim but may stay the proceedings pending the decision of a national court handling a revocation action, if there is a significant risk that the patent will be invalidated by the court of the state where the patent was granted. In contrast, concerning the UK national part, the court confirmed its jurisdiction without mentioning the need to stay proceedings.

These decisions are part of a wave of orders by the UPC Local Divisions and the Court of Appeal assuming jurisdiction over infringements of EPs in non-UPC territory following the CJEU ruling (Milan Local Division UPC_CFI_792/2024, order of 8 April 2025; Court of Appeal UPC_CoA_169/2025, order issued on 11 April 2025; Munich Local Division, UPC_CFI_566/2024 and UPC_CFI_39/2025, order of 14 April 2025).

Key Takeaways

• Claimants asserting their rights regarding national parts of their EP in non-UPC territory and potential defendants should prepare legal arguments regarding the national court’s application of the EPC and the relevant national patent law.
• Arguments relating to the procedural law may be disregarded by the UPC as the UPC applies its own procedural law.
• Contesting the UPC’s jurisdiction with arguments based on international private law or the Breg will likely fail to convince in view of the CJEU decision.
• It remains to be seen to what extent starting a national revocation action in third states that are neither members of the EU nor bound by the Lugano Convention will prompt UPC LDs to stay the proceedings.

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