Last Friday, June 6, 2025 HOYNG ROKH MONEGIER had the privilege of pleading what is considered to be the first fully-fledged hearing not only on long-arm jurisdiction of the UPC but also on the application of non-CMS law to evaluate patent infringement (UK)..
Last February, the Court of Justice of the European Union (CJEU) delivered a groundbreaking decision in C-339/22 BSH Hausgeräte. The CJEU ruled that an EU patent court in a defendant’s home state has jurisdiction to rule on the infringement of foreign patents, even if foreign courts are the only ones who can revoke the patent in their jurisdiction in case of an invalidity defence. In other words, the CJEU accepted broad, cross-border jurisdiction for EU patent courts and rejected pleas to limit such jurisdiction where non-EU countries are involved.
Although subsequently, various UPC Local Divisions have repeatedly declared themselves competent to rule in the infringement of a UK patent – most notably in another of our cases, Fujifilm v Kodak (LD Düsseldorf 28 January 2025) – the present proceedings before the LD Mannheim come after a win on the merits and will potentially result in the first-ever UPC decision to actually order relief for non-UPC states.
Yet several questions remain, particularly in relation to application of BSH Hausgeräte by the Unified Patent Court (UPC), to which the LD Mannheim may now bring answers:
- Does the UPC Agreement limit the UPC’s competence to the territories of the UPC Contracting Member States?
- Are there grounds for refusing jurisdiction to rule on patents outside of UPC territory or staying the decision, and if so what are they?
- What are the pleading requirements, and who bears the burden of proof, when it comes to foreign law on validity and infringement?
In line with our firm’s philosophy, HOYNG ROKH MONEGIER appeared with a truly international team, composed of @Tobias Hahn (DE), @Amandine Métier (FR) and @Léon Dijkman (NL).
When #wedoip, we do it together, which offers our clients unique pan-European expertise and an integrated team that is a one-stop shop for all IP disputes.