In an ongoing revocation action brought by Nokia Technology GmbH against Mala Technologies Ltd., a preliminary objection filed by Mala Technologies required the Unified Patent Court (UPC) to examine its relationship with the national Courts of member states. As previously reported, on 2 May 2024 the Court of First Instance ruled that Article 71c(2) of the Brussels I Regulation (recast) specifically addressed the transitional period (as defined by Article 83 UPCA) and applied Articles 29 to 32 only to proceedings initiated in both the UPC and a court of a Member State party to the UPCA during this period. Consequently, the UPC rejected the preliminary objection filed by Mala Technologies which sought to have the revocation action declared inadmissible based on the prior German proceedings. An explanation of the legislative background and analysis of the Court of First Instance's decision can be found here.
Mala Technologies appealed on the grounds that Article 71c(2) of the Brussels I Regulation (recast) could not be interpreted in such a limited manner. In the decision issued on 17September 2024 (UPC_COA_227/2024), the Court of Appeal of the UPC overturned the lower court's decision and provided its authoritative opinion on how the doctrine of lis pendens is applied in the context of patent disputes within the EU's legal framework.
The Court of Appeal acknowledged that, pursuant to Article 30 of the Brussels I Regulation (recast), the UPC and German cases are "related actions" and therefore the potential for conflicting decisions exists. In light of this, the UPC partially sided with Mala Technologies by ordering a stay on the UPC proceedings. This means that the UPC would not proceed with the revocation case until a final decision is made by the Bundesgerichtshof (Federal Court of Justice) in the German proceedings.
However, the UPC also noted that the lis pendens conditions of identical parties and cause of action were not fully met since the identity and interests of Nokia Solutions (claimant in German action) are not identical to those of Nokia Technology (claimant in UPC action). As a result, the UPC did not relinquish its jurisdiction in this case.
The UPC Court of Appeal made clear that Articles 29 to 32 of the Brussels I Regulation (recast) should offer a clear and effective mechanism for resolving cases of lis pendens and related actions and should, thus, be interpreted broadly so as to cover all such situations before the Courts of Member States. In the light of this objective, Article 71c(2) of the Brussels I Regulation (recast) must be interpreted as meaning that the provisions of Articles 29 to 32 apply where, during the transitional period of Article 83 UPCA, proceedings are pending before the UPC and a national court, even if the proceedings before the national court were initiated prior to the transitional period. A different interpretation would have the consequence that there would be no mechanism for resolving cases of lis pendens and related actions before the UPC and a national court where the proceedings before the national court commenced before the transitional period. This would not be in line with the express purpose of the provisions.
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