In a far-reaching judgment spanning validity, infringement and remedies, the UPC Court of Appeal delivered comprehensive guidance on several core issues of patent enforcement under the UPCA. The dispute concerned Qi-standard wireless chargers sold by Belkin entities across Europe. Philips alleged infringement of EP 2 867 997 B1 and sought a pan-European injunction, information, damages, and recall/removal/destruction of the products. The appeals (from the Munich Local Division’s decision of 13 September 2024) raised questions of the infringing act “offering”, director liability, and the default nature of corrective measures under Art. 64 UPCA.
Belkin relied on an earlier judgment of the Düsseldorf Regional Court, which had dismissed Philips’s national infringement action regarding the German part of the patent, arguing that the UPC was bound by that outcome under Art. 36 Brussels I Recast.
The CoA disagreed. The binding effect of the German decision extended only to the parties and territory involved. Since Belkin International Inc. had not been party to the national case, and because that case concerned only German territorial acts, no issue of res judicata arose. Moreover, Art. 34 UPCA governs the territorial reach of UPC decisions, not their subordination to national judgments. The Court reaffirmed that national rulings do not preclude UPC decisions on the same European patent covering other Contracting Member States.
One of the most consequential holdings concerns the definition of “offering”. The Court confirmed that this term has an autonomous economic meaning under the UPCA, not the formal contract-law sense of a binding offer.
An “offer” exists whenever a product is presented in a way that enables potential customers to make a purchasing proposal. A price indication or stock availability is not required; even an invitatio ad offerendum may constitute an infringing offer.
Thus, Belkin International Inc.’s country-specific websites – belkin.com/nl, belkin.com/fr, belkin.com/it – qualified as infringing offers for the territories concerned, even though the sites linked to external retailers (e.g. Amazon, MediaMarkt). Domain ownership and product presentation sufficed for attribution to Belkin International Inc.
The Court affirmed injunctions against the corporate defendants for all Contracting Member States where the patent had effect, except Germany – where the national judgment already had res judicata effect.
In contrast, the CoA overturned the injunctions against Belkin’s managing directors. It held that neither Art. 63 nor Art. 25 UPCA excludes the possibility of holding directors liable as instigators, co-perpetrators, or aiders, but such liability is not automatic.
A director’s mere managerial position does not make them an infringer. Personal liability arises only where the director’s actions go beyond normal management duties, for example by intentionally using the company as a vehicle to infringe, or by knowingly tolerating infringement despite the ability and obligation to prevent it.
Importantly, a director may rely on competent legal advice negating infringement until a first-instance decision finds otherwise. This shields directors who act in good faith on counsel’s opinion. The Court thus refused Philips’s claims for injunctions and damages against the individual directors.
The Court of Appeal reinstated Philips’s claims for recall, removal from distribution channels, and destruction of infringing goods – previously denied by the Local Division.
Art. 64 UPCA was interpreted as granting a substantive right, not merely a discretionary power: recall and removal are the default rule. The defendant bears the burden of proving disproportionality. The fact that such measures are onerous or disrupt customer relations does not, by itself, make them disproportionate.
The CoA underlined that these measures implement Art. 10 of Directive 2004/48/EC and aim to ensure a high, uniform level of IP protection. Unless the infringement is minor or the infringer credibly undertakes to neutralise it, recall, removal, and destruction must be ordered.
The CoA upheld the information order under Art. 67 UPCA but refused Philips’s late request to compel disclosure in “machine-readable electronic form”. The request, first made on appeal, was deemed a new claim under Rules 222.2 and 263 RoP. Since Belkin had already provided partial paper disclosure, requiring duplication in electronic format would be disproportionate.
The damages finding against the corporate defendants remained intact: the companies knew or ought to have known that their acts infringed the patent. The directors were again exonerated of personal damages liability, consistent with the Court’s reasoning on Art. 63 UPCA.
The Philips v. Belkin decision is now the leading authority on three key aspects of UPC enforcement:
First, “offering” is defined broadly, encompassing non-binding product presentations and website displays even without direct sales functions.
Second, director liability is possible but narrowly confined to cases of intentional or knowing misconduct. Obtaining and following legal advice remains a robust defence until a first-instance infringement finding.
Third, recall, removal, and destruction are the presumptive remedies under Art. 64 UPCA. Defendants must actively plead disproportionality, and orders should include compliance deadlines or rely on the R. 118.8 notification mechanism.
