The Unified Patent Court’s (UPC’s) Court of Appeal recently issued a landmark jurisdictional ruling in Fives v. REEL, establishing in part that the UPC may issue damages based on infringement rulings from national courts. Now, one of the UPC’s busiest local divisions has pushed the envelope even further. On January 28, the Düsseldorf Local Division (Düsseldorf LD) held for the first time that the UPC can exercise long-arm jurisdiction and decide claims of infringement for European patents issued in countries not participating in the UPC—here, the UK—when the defendant is domiciled in a UPC member state.

The litigation below involved a dispute over lithographic printing plates used in high-volume commercial printing systems, such as those used for newspapers. In November 2023, patent owner FUJIFILM filed a trio of UPC cases targeting plates offered by defendant Kodak, filing two cases in the Mannheim Local Division, each asserting a single European patent (EP 3 511 174 and EP 3 476 616); and a single case in the Düsseldorf LD over a third patent (EP 3 594 009). Notably, in at least the Düsseldorf action, FUJIFILM sought both an injunction covering infringing products sold in both Germany and the UK (the ’009 patent being in force in both countries), as well as those products’ recall and destruction; plus damages spanning 29 of the countries covered by the patent, including both Germany and the UK.

In a preliminary objection filed later that same November, Kodak (per the court’s summary) argued that the ’009 patent is invalid on various bases, and that by raising that invalidity defense, the UPC lacks jurisdiction over the UK portion of the patent. The reason, per Kodak, is that under Article 71(b) of the Brussels Ibis Regulation (1215/2012), the framework that provides unified rules for international jurisdiction within the EU, the UPC only has jurisdiction “pursuant to the instrument establishing it”. That instrument is the UPC Agreement (or UPCA, the treaty that created the UPC), Article 34 of which—per Kodak—provides that the UPC’s decisions can only cover the territory of the UPC member states where the patent is still in effect, whereas the UK is not a UPC member state. (The UK withdrew from the EU in 2020 due to Brexit. Later that year, the UK government announced that it would also not participate in the UPC—which is an international court and not an EU institution—stating that it would not agree to “[p]articipat[e] in a court that applies EU law and bound by the CJEU” in light of Brexit.)

Patent owner FUJIFILM, in contrast, argued that not only does the UPC have jurisdiction over defendants domiciled in “Contracting Member States” (i.e., UPC member states), it is also “clearly intended to have jurisdiction (also) over non-Contracting Member States”. That jurisdiction, FUJIFILM explained, flows from Article 71(b) of the Brussels Ibis Regulation, which it characterized as laying out various scenarios where the UPC’s decisions have effect beyond the territories of UPC member states; as well as from Article 24 of the UPCA, which relates to choice of law and includes language requiring the court to apply national law under certain circumstances. The defendant countered that FUJIFILM was wrong to rely on UPCA Article 24’s provisions on choice of law, in particular language requiring the court to apply national law, given that key provisions of the UPC’s substantive patent law—covering provisional and protective measures, permanent injunctions, and patent validity—are excluded, though not damages. This “would be a very peculiar way to give the UPC (partial) exorbitant jurisdiction”, the defendant observed (as summarized by the court).

Additionally, FUJIFILM contended that there is nothing in Article 24(4) of the Brussels Ibis Regulation, which provides that national courts have exclusive jurisdiction over questions of validity and registration of the relevant national portion of a European patent, indicating that this exclusive jurisdiction extends to infringement claims.

As a result, FUJIFILM asserted, the UPC has jurisdiction to award damages for the infringement of a patent in the UK. This includes the period before Brexit, during which the Brussels Ibis Regulation applies; whereas for claims arising afterward, including those in the present case, “the Brussels Ibis Regulation regime is not applicable to claims relating to the UK, even if those claims relate to past infringements”. In the alternative, if the court were not willing to issue a permanent injunction with respect to the UK, FUJIFILM argued that the UPC could at least grant a provisional injunction subject to the patent’s validity being confirmed by the European Patent Office in opposition proceedings.

The Düsseldorf LD issued its judgment on January 28. It began by rejecting the defendant’s argument that its invalidity claims barred the court from exercising jurisdiction over the UK part of the asserted patent, here simply because there had been no revocation sought for the UK part—meaning that the court did not need to address whether it had jurisdiction to revoke that portion of the patent. (However, the Düsseldorf LD held later in the decision that it lacks jurisdiction to invalidate the UK portion.) Additionally, the court held that it has international jurisdiction over the revocation of the portion issued in Germany “pursuant to Art. 24(4), 71a(2)a), 71b(1) of the Brussels Ibis Regulation”, given that the patent had not been opted out of the UPC’s jurisdiction.

Next, the Düsseldorf LD proceeded to the question of its jurisdiction over the infringement of the UK portion, holding that it does have that jurisdiction. Here, the court agreed with FUJIFILM that Article 24(4) of the Brussels Ibis Regulation, providing “exclusive jurisdiction” to national courts over registration and validity claims, does not apply to the issue of jurisdiction over infringement.

The Düsseldorf LD then addressed the reach of the EU law providing for the Düsseldorf LD’s international jurisdiction: Article 4(1) of the Brussels Ibis Regulation, which allows “persons” domiciled in an EU member state, regardless of their nationality, to be sued in that member state. Here, the Düsseldorf LD held that according to the Court of Justice of the European Union (CJEU), the “uniform” rules of jurisdiction encompassed by the Brussels Convention are not intended to apply only to situations within the EU (i.e., those involving a number of EU member states, or “Contracting States”). In particular, Article 2 “applies to circumstances involving relations between the courts of a single Contracting State and those of a non-Contracting State, not the relations between the courts of a number of Contracting States” (emphasis in decision). The Düsseldorf LD ruled that this means the CJEU “has accepted that the international element required for the application of the Brussels Ibis Regulation may not only be intra-EU” (emphasis in decision), further noting that the CJEU Advocate General also held in February that jurisdiction under Article 4(1) is “universal”.

As a result of that Advocate General opinion and related CJEU caselaw (its July 2006 decision in GAT v. LUK), the Düsseldorf LD held that Article 4(1) jurisdiction extends to “infringement of the European patent committed in all the States for which it has been granted”—thereby “enabl[ing] the patent holder to bring all his or her infringement claims before a single court and to obtain a comprehensive relief from a single forum”.

The Düsseldorf LD then determined that this result is unchanged for the UPC by Article 71(b) of the Brussels Ibis Regulation: Article 31 of the UPCA establishes that the court’s international jurisdiction is determined by the Brussels Ibis Regulation, Article 71(b) of which incorporates the “new common court into the existing Brussels Ibis Regulation System” by deeming the UPC a “court of a Member State”. Per the Düsseldorf LD, this means that “all the bases for jurisdiction contained in Brussels Ibis Regulation also apply to the UPC and the same is true for the applicable case law of the ECJ” (citations omitted).

Moreover, the Düsseldorf LD held that Kodak was wrong to characterize the language of Article 71(b) referring to the “matter governed by that instrument” as limiting the territorial scope of EU member states. Rather, it held that this provision is to be “only as limiting the legal matters transferred by the UPCA from the national courts of the Member States to the UPC”. Additionally, the Düsseldorf LD held that under Article 71(b), the jurisdiction transferred to the UPC by those states applies where the transferring states would have already had jurisdiction. Since those transferring states “have jurisdiction over third state patent infringement actions in accordance with the case law of the ECJ”, it follows that the UPC does as well, since the UPC’s jurisdiction is “therefore not more limited than that of a national patent infringement court”.

Lastly, the Düsseldorf LD rejected the defendant’s argument that jurisdiction is barred by UPCA Article 34, which covers the territorial scope of UPC decisions—countering that this provision “does not deal with the international jurisdiction of the court in the first place”, and noting that this issue is instead “dealt with” in UPCA Article 31. Rather, the court held that Article 34 is meant to clarify that while UPC decisions normally cover all UPC member states, they do not where the patent-in-suit is not or is no longer in force in some of those states—and that nothing in Article 34 prevents UPC decisions from having effect beyond the UPC’s member states.

The Düsseldorf LD did not, however, proceed to evaluating infringement in this case—instead determining, for reasons detailed in the remaining bulk of the decision, that the asserted patent is invalid. The court declined to reach infringement for the UK portion of the asserted patent, explaining that while it lacked jurisdiction to actually invalidate that portion, the patent owner had not distinguished between the German and UK parts during the proceedings on validity—leading the Düsseldorf LD to assume that the grounds for validity on which it invalidated the German portion applied to the UK one as well. Given the lack of a pending UK revocation action, the court denied the plaintiff’s alternative request for a decision on the condition that UK courts uphold the patent’s validity.

For more on the aforementioned Court of Appeal ruling in Fives v. REEL, see “Plaintiffs Can Now Seek Damages at UPC Based on National Court Judgments—and for Pre-UPC Infringement” (January 2025). Further analysis of UPC trends can also be found in RPX’s review of the fourth quarter and 2024.