The Mannheim Local Division of the UPC recently issued two interesting decisions in related cases (UPC_CFI_159/2024 and UPC_CFI_162/2024) on the determination of the substantive law applicable to alleged infringing acts. The Local Division also issued orders in the two cases which hint that it is prepared to exert the court's long-arm jurisdiction over infringement actions concerning non-UPC parts of a European patent. This follows from the landmark decision of the UPC's Düsseldorf Local Division in Fujifilm vs Kodak (UPC_CFI_355/2023) regarding the UPC's jurisdiction over infringement actions concerning the UK part of a European patent when the defendant is domiciled in a Contracting Member State, which we reported on in our news item here.
The dispute in the two cases before the Mannheim Local Division is between Hurom and NUC, and relates to juice extractors. Hurom, a Korean manufacturer of kitchen appliances, brought two infringement actions against NUC entities (and their European distribution partner) based on European patent EP 2 028 981, which was validated as a traditional bundle of national patents.
Long-arm jurisdiction of the UPC
The infringement actions related both to parts within the UPC (Germany, Denmark, France, Italy and The Netherlands) and to parts outside the UPC (Poland, Spain, UK and possibly Turkey). Given that the hearings in the two cases took place before the ECJ handed down its decision in BSH Hausgeräte vs Electrolux (C-339/22), which is discussed in our briefing here, the court issued procedural orders on 11 March 2025, ruling that the proceedings based on the national parts outside the UPC be separated. These proceedings include parts relating to states within the EU but which are not signatories of the UPCA (Poland and Spain), as well as states outside the EU which are nonetheless member states of the EPC (Turkey and UK). With the ECJ's decision in hand, it now seems likely that the court will rule that it does have jurisdiction to decide on the infringement actions in respect of each of these national parts.
Separate hearings have thus been scheduled for the infringement actions in respect of the national parts outside the UPC. Commentators expect, however, that the court will reach a similar finding in these separated proceedings to the finding in the proceedings relating to the parts within the UPC. It therefore seems possible that the court will make an award of an injunction and damages at least in Poland, Spain and the UK. The hearings yet to take place are therefore speculated to be somewhat of a formality in order to satisfy the parties' right to be heard on all points of issue.
As regards the proceedings relating to the parts within the UPC, the court ruled in their decisions that the NUC entities and their European distribution partner had infringed Hurom's patent. Hurom were thus awarded inter alia an injunction in the relevant UPC states, as well as damages.
Law applicable to infringing acts before and after entry into force of UPCA
The court noted that the acts of infringement committed by the NUC entities and their European distribution partner occurred after the UPCA entered into force. For this reason, the court applied the substantive law set out in the UPCA to the issues of infringement. However, the court also took the opportunity to clarify which substantive law would apply in situations where the acts of infringement had occurred prior to entry into force of the UPCA, and where the acts of infringement started prior to, but continued after, the entry into force of the UPCA. As summarised in the headnotes of the decisions:
"with regard to the determination whether substantive law as laid down in the UPCA or substantive national laws of the UPCA member states applies to acts allegedly infringing traditional European bundle patents, the following applies:
- a) to acts committed after the entry into force of the UPCA, the substantive law as laid down in the UPCA applies:
- b) to acts committed before the entry into force of the UPCA, the substantive national laws apply;
- c) to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023, the substantive law as laid down in the UPCA applies."
The court further clarified that the "ongoing acts" in part c) above should be interpreted from an evaluative perspective rather than in an overly formalistic way. In particular, where acts of infringement have occurred before and after entry into force of the UPCA, the acts should not automatically be separated into those that occurred before and those that occurred after when determining the applicable law. Instead, consideration should be given to whether the infringer continued its infringing behaviour even though it could have stopped the infringement in the light of the entry into force of the UPC regime on 1 June 2023. If so, such acts of infringement which occurred before and after entry into force of the UPCA could be considered wholly as "ongoing acts".
Thus, following the reasoning in these decisions, for cases at the UPC:
- where infringing acts started after the entry into force of the UPCA; or
- where infringing acts started prior to and continued after entry into force of the UPCA,
matters of infringement (which might include damages calculations), would be determined based on UPCA law.
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