2025 Week 5
Long before the UPC opened its doors for business, there was speculation about whether the court would assert jurisdiction over infringement of European patents even outside the UPC countries. This was fair enough, because existing CJEU case law made it clear that national courts have such jurisdiction in the right circumstances. In the jargon, this is “long arm” jurisdiction.
Eagle eyed patent owners who have opted out any of their European patents from the UPC may have noticed that the opt-out is in respect of all states for which the European patent has been granted – not just in respect of the UPC states. Why? Well, one good reason is in view of long arm jurisdiction – the opt-out makes it clear that the UPC also does not have jurisdiction over non-UPC parts of the European patent.
The long arm of the UPC
The UPC Local Division Düsseldorf took the opportunity to affirm the long arm jurisdiction of the UPC in Fujifilm v Kodak. The facts of the case are slightly unsatisfactory, in the sense that the court could easily have reached the same end result by first deciding on the validity of the patent and noting that the arguments about long arm jurisdiction were then moot. But being first UPC court to decide on long arm jurisdiction was probably just too tempting, and at least it opens up the field for the UPC Court of Appeal to decide on the issue if an appeal is filed.
Without getting into the weeds of how the relevant EU Regulation, UPC Agreement and CJEU case law interact here (and it really can get complicated if you let it), the key points to note in this case are:
- the European patent was only in force in Germany and the UK
- the defendants were all domiciled in Germany
- the action was correctly brought before the UPC, at least in respect of infringement in Germany
- the defendants counterclaimed for invalidity of the patent but only in respect of the German part of the European patent
- the claimant requested an injunction and damages in respect of at least Germany and the UK
- the court said that the patent is invalid in Germany and so there would be no injunction or damages in respect of Germany
- the court has no power to revoke or formally decide on the validity of the patent in the UK … but also would not grant and injunction or damages in respect of the UK in view of the “factual and legal situation”
Is this controversial?
Here, the UPC has only really decided to do what a German national court would already decide to do in the same circumstances. The case law of the CJEU is pretty clear that a national court has wide jurisdiction over defendants domiciled in its territory also to decide on infringement of the same European patent by the same defendant in other jurisdictions.
To the extent that the outcome in this case is controversial, this is political rather than legal, simply because it seems to invite courts to tread on each other’s toes in the shadow of Brexit.
But the reality is that parties should want fast, reliable and cost-effective courts in which to litigate their patent disputes. The UPC assuming long arm jurisdiction can provide just that outcome.
The excitement about jurisdiction has meant that other substantive issues addressed in the decision have not been aired in detail. These are discussed below.
Claim interpretation
European patent EP 3594009 B1 is concerned with lithographic printing and specifically with the composition of an image recording layer for a printing plate. Claim 1 defined the composition and certain properties of components of the image recording layer.
It was in the patentee’s interests to argue for a relatively narrow scope of protection. In the view of the court, the patentee’s interpretation was narrower than the literal scope of the claims. For example, the court considered whether “a polymerization initiator” should be interpreted as “only one” or “one or more” polymerization initiator. They decided that they should use the broadest technically sensible meaning and so opted for “one or more”. This was assisted by the explicit scope of some dependent claims. Considering the issue more generally, the court said:
As a rule, if a patentee wishes to argue for a narrow scope of a claim, this should be on the basis of the wording of said claim, and not on the basis of something appearing only in the description, as the patentee has the possibility of restricting the scope of the claim by means of claim amendment. … The Court therefore takes the position that a narrowing interpretation of the claims … based on the description or drawings should generally not be permitted.
Claim 1 also included a limitation on the difference between a parameter measurable for two components of the image recording layer. The court noted that the calculation method for the parameter was not specified in the claim. Although there was a calculation method set out in the description, the scope of the claim is not necessarily limited to this.
Sufficiency of disclosure
The court decided that claims as granted (main request) were invalid due to lack of sufficiency of disclosure. The court was happy that a significant part of the scope of claim 1 had sufficiency of disclosure. However, their reasoning was that sufficiency is a requirement “across the complete scope of the claim”. The court considered that claim 1 extended further than the patentee contended, and that these outer parts of the claim were insufficient.
The patentee had a first auxiliary request (AR1) that cured the sufficiency problem by incorporating claim 6 into claim 1 and a further limitation. Dependent claim 4 was also amended.
Can amendments be admitted even if not occasioned by a ground of invalidity?
In EPO opposition proceedings, Rule 80 EPC is often invoked to try to prevent a patentee from filing mere “tidying up” amendments.
The court was very clear that there is no such constraint in amendments in UPC proceedings. In any event, the court said that it is fine to make an amendment to a dependent claim to ensure clarity of the claims as a whole if the unamended dependent claim would contradict amended claim 1.
To what extent is clarity examined when the claims are amended at the UPC?
The court confirmed that clarity can only be examined in relation to an amendment. Any lack of clarity present in the claims as granted “must be lived with”. This tallies with practice in EPO opposition proceedings.
Inherent disclosure in the prior art
AR1 came unstuck during an assessment of novelty. The defendant provided three documents that were available as prior art for novelty only (under Article 54(3) EPC). These documents did not explicitly disclose any values for the parameter used in claim 1.
The court decided that the prior art provided inherent disclosure of the combination of features in claim 1 of AR1. It was not relevant whether the prior art mentioned the parameter. It was also not relevant that different calculation methods may yield different values for that parameter, in particular if the calculation method is not specified in the claim. Following an EPO approach to inherency, the court commented:
A feature is implicitly disclosed if, in carrying out the teaching of a prior-art document, the skilled person would inevitably arrive at a result falling within the terms of a claim.
Added matter
The court moved on to consider the second auxiliary request (AR2). However, this fell due to added matter. The court said that, in the test for allowability of an amendment, “direct and unambiguous” requires that it has to be “beyond doubt” rather than merely “probable” that the subject matter of the amended claim is disclosed in the original application.
The final auxiliary request (AR3) also failed, for similar reasons as the preceding requests.
Lessons for everyone
The end result was that the patent was revoked in respect of Germany (the only UPC state in which the patent was in force) and so there was no assessment of infringement.
What are we to make of the outcome of this case in terms of the pros and cons of the UPC? On the positive side for patentees, the clear assertion of jurisdiction for infringement of European patents even outside the UPC territory makes the UPC even more attractive as a central forum for European patent litigation. But on the negative side, the court’s strict approaches to sufficiency of disclosure and added matter, close to those of the EPO, makes it harder to predict that patents will survive a counterclaim for revocation.
