In a landmark decision, the Court of Justice of the European Union (CJEU) has clarified jurisdictional issues surrounding cross-border patent infringement disputes, opening the door for broader European legal recourse in national courts. The case, BSH Hausgeräte vs Electrolux (C-339/22), addresses critical questions related to the Brussels I bis Regulation, which governs jurisdiction in civil and commercial matters across EU Member States. This ruling is expected to have significant implications for patent litigation across Europe, particularly concerning the jurisdiction of national courts in cases involving patents granted in different EU states.
Key Points of the CJEU Ruling
The CJEU’s ruling provides several important clarifications:
Jurisdiction for Infringement Actions: A court in an EU Member State where the defendant is domiciled has jurisdiction to hear an infringement action related to a patent granted in another EU Member State, regardless of whether the defendant raises an invalidity defense.
Jurisdiction for Invalidity Defenses in Non-EU Patents: Courts in the EU Member State where the defendant is domiciled may also assess the validity of patents granted outside the EU (such as in non-EU countries) in cases involving patent infringement claims that include those patents.
Cross-Border Injunctions: The decision confirms the availability of cross-border injunctions in cases before both national courts and the new Unified Patent Court (UPC), providing broader options for patent holders seeking to enforce their rights across Europe.
Legal Background: The Brussels I bis Regulation
The CJEU’s decision centers on the interpretation of Articles 4(1) and 24(4) of the Brussels I bis Regulation, which governs jurisdiction in civil and commercial matters within the EU.
Article 4(1) establishes general jurisdiction for cases involving defendants domiciled in an EU Member State. In the context of patent infringement, this means that the court in the EU Member State where the defendant is domiciled can hear infringement actions, even if the patent in question was granted in another Member State.
Article 24(4) provides an exception to the general jurisdiction principle, specifying that disputes regarding the registration or validity of patents must be heard by the court of the Member State where the patent was granted. This exclusive jurisdiction applies regardless of whether the validity issue is raised by way of an action or a defense.
In GAT v LuK (C-4/03), the CJEU had previously ruled that when a court in the defendant’s domicile state hears an infringement case and the defendant raises an invalidity defense, that court does not have jurisdiction to rule on the validity of the patent. Instead, the court must refer the validity issue to the jurisdiction of the Member State where the patent was granted. This ruling set the precedent that national courts could not simultaneously handle both infringement and validity claims.
The CJEU’s Latest Decision: Jurisdiction for Infringement and Invalidity
The CJEU’s recent ruling provides clarity on the scope of Article 24(4) in the context of cross-border patent disputes. The court determined that the exclusive jurisdiction under Article 24(4) applies only to the validity of patents. This means that a court in the Member State of the defendant’s domicile can still hear an infringement case, even if the defendant challenges the patent’s validity.
This interpretation narrows the scope of Article 24(4) and helps avoid situations where a defendant’s defense could undermine the court’s jurisdiction over infringement claims. The CJEU’s reasoning is based on the goal of legal certainty, emphasizing that allowing the defendant’s choice of defense (i.e., invalidity) to determine jurisdiction over the entire dispute would lead to uncertainties in jurisdiction and impede the efficient resolution of cases.
Moreover, the CJEU ruled that infringement proceedings can continue in the court of the defendant’s domicile pending the outcome of any validity challenges in another Member State. This allows courts to stay proceedings while awaiting decisions from other jurisdictions where the validity of the patent is being contested.
Implications for Cross-Border Patent Litigation
This ruling has significant practical implications for patent litigation in Europe:
Cross-Border Injunctions and Litigation: The decision affirms that patent holders can seek cross-border injunctions not only through the UPC but also in national courts. This will make it easier for patent holders to enforce their rights across multiple jurisdictions, increasing the effectiveness of enforcement strategies.
Potential for Anti-Suit Injunctions: The ruling may increase the likelihood of parties seeking anti-suit injunctions in non-EU jurisdictions (such as the UK or the US), particularly in cases where the same patent is subject to litigation in both the EU and outside the EU. This is especially relevant in cases where a court in one jurisdiction has already heard a dispute regarding a patent granted in a non-EU state, and a party seeks to prevent further litigation in another jurisdiction.
UPC Alignment: The CJEU’s decision aligns with the UPC’s decision in Fujifilm v Kodak (UPC_CFI_355/2023), where the court ruled it had jurisdiction over infringement cases concerning UK parts of European patents. This reinforces the consistency of the UPC’s jurisdictional principles and its authority over cross-border patent disputes in Europe.
Jurisdiction Over Third-Party Patents: The decision also addresses jurisdictional issues involving patents granted in non-EU states. The CJEU ruled that while Article 24(4) does not apply to third-party patents (e.g., patents granted in the UK or the US), an EU court may still have jurisdiction to rule on the validity of such patents in certain circumstances. However, such decisions would only have inter partes effect, meaning they would not affect the validity of the patent in the non-EU jurisdiction.
Conclusion
The CJEU’s ruling in BSH Hausgeräte v Electrolux (C-339/22) represents a crucial development in European patent law, expanding the jurisdictional reach of EU courts in cross-border patent infringement disputes. It provides clarity on the interplay between national and UPC courts, allowing for more streamlined enforcement of patent rights across multiple jurisdictions. With this decision, patent holders now have enhanced options for securing cross-border injunctions and pursuing infringement actions in EU courts, while also navigating the complexities of invalidity defenses. The ruling paves the way for a more flexible and efficient patent litigation landscape in Europe.
