In a far-reaching decision concerning EP 3 511 174, the Court of Appeal has addressed a broad range of issues including claim construction, private prior use, front-loaded proceedings and international jurisdiction. While the judgment also contains extensive substantive findings on validity and infringement, its most significant contribution lies in its detailed treatment of the UPC’s international jurisdiction in relation to non-UPC designations of European patents.
Building on the foundations laid by the CJEU in BSH v Electrolux and earlier first-instance UPC decisions, the Court of Appeal confirms that the UPC may adjudicate infringement actions relating to non-UPC parts of European patents where jurisdiction exists under the Brussels I Recast Regulation. The decision does not introduce a fundamentally new jurisdictional framework. Rather, it provides a comprehensive consolidation and systematisation of principles that had already emerged from the case law of the first instance Divisions.
The Court rejected Kodak’s challenge to the UPC’s jurisdiction over the UK designation of the patent.
The Court first clarified that Art. 34 UPCA is not a jurisdictional provision limiting the territorial reach of the UPC. Rather, it merely defines the territorial scope of UPC decisions. According to the Court, nothing in the UPCA suggests that the Contracting Member States intended to confer a narrower jurisdiction on the UPC than that available to national courts applying the Brussels I Recast Regulation.
The Court further emphasised that the UPCA is not restricted to European patents insofar as they are validated in UPC territories. European patents validated outside the UPC territory remain matters governed by the UPCA. In this context, the Court referred to Art. 24.3 UPCA, which expressly envisages the application of foreign law, including the law of non-contracting states.
Relying on the CJEU’s judgments in Owusu and BSH v Electrolux, the Court confirmed that where jurisdiction is based on Art. 4 Brussels I Recast because the defendant is domiciled within the UPC territory, the UPC cannot decline jurisdiction merely because a foreign court may appear to be a more appropriate forum.
The Court therefore concluded that accepting jurisdiction over infringement actions concerning non-UPC designations of European patents is compatible both with the Brussels regime and with international law principles.
The Court then addressed the question as to how the UPC should exercise that jurisdiction when validity challenges arise.
Most notably, the Court provided detailed guidance on how UPC judges should manage infringement actions involving foreign patent designations when validity is disputed. Depending on the circumstances, the Court may invite withdrawal of the foreign part of the action, allow defendants time to commence national revocation proceedings, stay proceedings, or issue infringement decisions subject to a subsequent condition that the patent survives national validity proceedings.
The Court also provided useful clarification regarding the UPC’s front-loaded procedural system.
It held that Rule 29(c) RoP does not prevent a party from submitting additional evidence in support of facts and arguments that had already been pleaded, where those facts or arguments have been disputed by the opposing party. The submission of further evidence in such circumstances does not undermine the front-loaded nature of UPC proceedings.
The ruling provides welcome confirmation that parties are not necessarily confined to the precise evidentiary material initially submitted, provided the factual basis of the case remains unchanged.
The Court further confirmed that rights of private prior use under Art. 28 UPCA must be assessed by reference to the national law governing the relevant patent designation.
Accordingly, whether Kodak could rely on a private prior use right in relation to the German designation of the patent had to be determined under German law.
On claim construction, the Court rejected the proposition that numerical values in patent claims automatically incorporate manufacturing tolerances or measurement uncertainties.
According to the Court, there is no general rule that the skilled person would automatically read additional deviations into an otherwise precise numerical limitation. Such considerations may arise as a matter of claim interpretation in a particular case, but they are not inherent in the use of numerical values as such.
