In this important decision (UPC_CoA_30/2024 APL_ 4000/2024 Fives ECL, SAS vs. REEL GmbH) the court of appeal decided whether the Unified Patent Court (UPC) has competence for deciding about damages for on infringement decided by a national court and whether it has jurisdiction an acts of infringement committed before the entry into force of the Agreement on a Unified Patent Court (UPCA).
Background
Before the entry into force of the UPCA on June 1st 2023, Fives brought an action against REEL before the Düsseldorf Regional Court (Germany), for infringement of the German part of a European patent.
On 9 August 2022, the Düsseldorf Regional Court issued a judgment where it ordered REEL to compensate Fives for all damages committed since 2 December 2016.
On 8 August 2023, Fives brought an action against REEL before the Unified Patent Court (UPC), Hamburg Local Division, and requested determination of damages.
REEL submitted that the Unified Patent Court did not have jurisdiction for the present application for the determination of damages.
The Hamburg Local Division rejected the action for determination of damages, holding that the UPC does not have jurisdiction for actions for determination of damages on the basis of patent infringement proceedings that have become final before a national court. The Local Division considered that the UPCA confers jurisdiction on the UPC to determine damages only after a prior action for patent infringement has been brought before the UPC. The recognition of a national judgment awarding damages under Brussel Ia Regulation cannot establish the UPC’s jurisdiction to award damages.
Decision of the Court of Appeal
The Court of Appeal did not follow the reasoning of the Hamburg Local Division.
The Court of Appeal considered the UPC as a court of a Member State. As national courts recognise their own judgments, there is no need for the Regulation to provide for recognition by the UPC of judgments of courts of a contracting member state. Further, the Court of Appeal considered that their might be actions before the UPC only relating to damages, for example in case of an undisputed infringement. In addition, they considered that depending on the choice of the jurisdiction, the possibility of different outcomes is accepted already as a result of the transitional regime of the UPCA.
At the end, the Court of Appeal came to the conclusion that the Court’s competence (or jurisdiction) includes a separate action for determination of damages after a national court has established the existence of an infringement of a European patent and an obligation in principle for the infringer to pay damages.
Further, the Court has jurisdiction to decide on acts of infringement committed before the entry into force of the UPCA on 1 June 2023, as long as the European patent invoked has not yet lapsed at that date.
This decision increases the number of actions, which can be brought before the UPC. Further, it clearly states the temporal applicability of the UPCA.
UPC extends its jurisdiction to the United Kingdom!