Six months on from the CJEU's landmark decision in BSH Hausgeräte vs Electrolux, the UPC has already issued two injunctions covering states which are not party to the UPCA. In this briefing, we provide analysis of the UPC's decisions leading to the two injunctions, and explore what the decisions may mean for future strategies in European patent litigation.
Introduction
In February of this year, the CJEU handed down a landmark decision which opened the door to cross-border litigation in Europe (C-399/22, BSH Hausgeräte vs Electrolux). This decision came at an important juncture in the development of the UPC's jurisdictional jurisprudence: at the time, one local division of the UPC had ruled that the UPC has jurisdiction to consider the infringement and validity of patents in states which are not party to the UPC Agreement (UPCA) (Kodak v Fujifilm, UPC_CFI_355/2023, 28 January 2025), but this finding had been criticised by some.
Now, some six months on from BSH Hausgeräte vs Electrolux, it has become clear that the UPC is eager to embrace the principles set out by the CJEU (see, for example, IMC Creations v Mul-T-lock, UPC_CFI_702/2024, 21 March 2025 and Dainese v Alpinestars, UPC_CFI_792/2024, 8 April 2025). Recently, this has been highlighted by the issuance of two injunctions covering states which are not party to the UPCA.
The first injunction (UPC_CFI_365/2023, 18 July 2025, Kodak v Fujifilm) was a permanent (final) injunction covering the UK, and was issued by the Mannheim Local Division against three German defendants. The second injunction (UPC_CFI_387/2025, 14 August 2025, Dyson v Dreame) was a preliminary (interim) injunction covering Spain, and was issued by the Hamburg local division against several defendants including a defendant based in Hong Kong.
This briefing provides an analysis of the decisions to issue the two injunctions, and explores what the decisions may mean for European patent litigation.
BSH Hausgeräte vs Electrolux
For many years, even though Article 4(1) of the Brussels I bis Regulation (Recast) ("BR") – which governs jurisdiction in civil matters in Europe – provides that parties can be sued in the courts of the state in which they are domiciled, cross-border litigation in Europe was not the norm. This was because of a decision of the CJEU (GAT v LuK, C‑4/03, 13 July 2006), in which it was held that, where a court of an EU Member State is hearing an action relating to infringement of a patent granted by another Member State, and the defendant raises an invalidity defence, that court must declare that it does not have jurisdiction regarding the validity of the patent in view of the exclusive jurisdiction of the court of the Member State in which the patent is granted. This finding was codified in Article 24(4) BR.
Following GAT vs LuK, the common understanding was that the court could also not proceed with the infringement action in the other Member States where the validity of the patent had been challenged.
However, in BSH Hausgeräte vs Electrolux, the CJEU ruled that the exclusive jurisdiction arising from Article 24(4) BR relates only to the part of the dispute relating to the validity of the patent. Accordingly, a court of an EU Member State in which the defendant is domiciled does not lose jurisdiction over an infringement action where the defendant challenges the validity of the patent. However, the CJEU noted that the court hearing the infringement proceedings may stay those proceedings if it considers that there is a reasonable chance that the court of the state in which the patent was granted will declare the patent to be invalid.
Moreover, the CJEU held that Article 24(4) BR does not apply to "third states" (i.e. states that are not party to the Brussels I bis Regulation or the Lugano Convention, such as the UK). Thus, the court of an EU Member State can consider the validity of patents granted in third states during infringement proceedings brought against defendants domiciled in that EU Member State. However, this consideration of validity will not affect the existence or content of the patents in the third state, or cause its national register to be amended. As such, the decision only has inter partes effect.
Further detail regarding the BSH Hausgeräte vs Electrolux decision is provided in our earlier briefing.
An injunction covering the UK issued against German-domiciled defendants
Background
Kodak v Fujifilm, UPC_CFI_365/2023, 18 July 2025 forms part of an ongoing dispute between Fujifilm and Kodak in the field of lithographic printing plates. In the present case, Fujifilm brought an infringement action against three German-based Kodak entities at the Mannheim LD of the Unified Patent Court (UPC). The patent-in-suit (EP3511174) is in-force in Germany and the UK.
In early February of this year, the court heard the case in respect of the German part of the patent, but delayed consideration of the UK part in view of the expected decision of the CJEU in BSH Hausgeräte vs Electrolux. When considering the German part of the patent, the court found that the patent, as amended, was valid and infringed.
After the judgement in BSH Hausgeräte vs Electrolux had been handed down, the Mannheim LD considered the UK part of the patent.
UPC considers validity of UK patent
At the time of the hearing in respect of the UK part of the patent, UPC local divisions had already shown enthusiasm to follow the principles set out by the CJEU in cases such as IMC Creations v Mul-T-lock, UPC_CFI_702/2024, 21 March 2025 and Dainese v Alpinestars, UPC_CFI_792/2024, 8 April 2025. In IMC Creations v Mul-T-lock, the Paris LD held that, in view of BSH Hausgeräte vs Electrolux, the UPC (as a court common to the UPC states) is competent to assess infringement and validity (with inter partes effect) of the UK parts of European patents where the defendant was domiciled in France.
In the Kodak case, with all three of the defendants being domiciled in Germany, it is unsurprising that the Mannheim LD came to the same conclusion, i.e. that the UPC has jurisdiction to decide upon the infringement and validity of the UK part of the European patent, but the UPC does not have jurisdiction to revoke that UK part of the European patent (see [31]-[35]). Kodak were not required to file a national revocation action in the UK in order to raise an invalidity defence in the UPC infringement proceedings.
The court went on to note that, in the absence of any proceedings in the UK relating to infringement or validity, there is no reason to stay or dismiss the UPC proceedings. Thus, going forwards it seems that any defendants hoping to make a serious attempt to impede UPC infringement proceedings in non-UPC states might need to consider filing revocation or declaration of non-infringement actions in the non-UPC states. Such actions may act as partial torpedoes, which are able to hold up UPC infringement actions in respect of some territories, but not bring them to a complete halt.
As has been seen with other decisions of the UPC (see e.g. the Düsseldorf LD in an earlier case forming part of the same dispute, Kodak v Fujifilm, UPC_CFI_355/2023, 28 January 2025), the consideration of the validity of the UK part of the patent in the Kodak case did not involve beginning the analysis afresh with the approaches typically applied in UK courts. Rather, the Mannheim LD merely noted that "[i]n the absence of deviating arguments of the defendants challenging the validity of the patent-in-suit when UK patent law or the EPC as applied by UK courts is concerned, reference is made to the [earlier decision in respect of the German part of the patent]" (see [43]).
Thus, this case does not give any indication of how the UPC will proceed when a party provides arguments that the law of a relevant foreign jurisdiction would lead to a different outcome to the law of the UPC. It is apparent from other decisions of the UPC (e.g. UPC_CoA_446/2025 and UPC_CoA_520/2025, Boehringer v Zentiva, 13 August 2025) that such arguments would need to be substantiated by evidence. As stated in the UPC Court of Appeal's decision in Boehringer v Zentiva:
"Although national law is a source of law pursuant to Art. 24 UPCA, it is for the parties to bring forward facts and evidence about the content of national law and its application."
Thus, the situation at the UPC is similar to English law, where foreign law is a question of fact. In the UK, evidence regarding foreign law may comprise an expert's report, such as a statement from an overseas lawyer.
There are principles of law on which there is significant divergence across Europe. One prominent example is that the UK's approach to plausibility is different to that of the EPO and other European courts, as highlighted by the recent UK Court of Appeal decision regarding AstraZeneca's dapagliflozin (Generics (UK) Ltd & Ors v AstraZeneca AB [2025] EWCA Civ 903). Thus, when such principles are under consideration in a UPC infringement action which extends to non-UPCA states, parties could consider filing evidence in relation to the law of those countries and how that law would be applied by the relevant national courts.
UPC issues UK injunction
What makes the Kodak case notable is that it is the first time that the UPC has applied BSH Hausgeräte vs Electrolux to its ultimate conclusion, i.e. to the issuance of the injunction in a country where the UPCA is not in-force, and to order that damages are paid for past infringements in that country.
One wonders how this matter would proceed if, in the future, the UK courts were to revoke the UK part of the patent. Presumably, Kodak would need to request that the UPC rescinds the UK injunction ordered by the Mannheim LD on the basis that the UK part of the patent never existed. The Mannheim LD did not provide for this eventuality. However, Rule 354(2) of the UPC Rules of Procedure gives the UPC a discretion to order that an order is no longer enforceable, e.g. to lift an injunction. Kodak could also request that any damages already paid be returned. Whether or not the UPC could and/or would grant such an order is unclear.
Another question raised is that of whether Kodak would be permitted to bring a revocation action in the UK. While the Mannheim LD suggested that any validity declaration it made would not be binding between the same parties in revocation proceedings in the UK, Fujifilm may argue that Kodak should be estopped from bringing a revocation action in the UK on the grounds that doing so would amount to a re-litigation of the same cause of action between the same parties. A similar question could be asked in relation to infringement.
There are, of course, significant legal and political complexities here. For instance, Kodak, as a multinational corporation, could bring a UK revocation action through a UK entity, in which case the parties involved would not be identical. This option may not be available to smaller companies in different cases. Further, if a UK Court were to take the view that the UPC does not have jurisdiction over the UK part of the patent, it would seem unlikely that the Court would hold that there is any estoppel.
The UK injunction will be enforced by the imposition of a penalty payment (in this case, EUR 50 per square meter of the contested printing plate precursor) to be paid by the German defendants upon breach of the injunction. With regard to the availability of this enforcement mechanism under UK law, the decision states that "[d]efendants did not submit that UK law would not allow such order."
As the UPC's long arm has developed, some have asked how an injunction issued by the UPC may be enforced in non-UPC states, especially if the courts of the non-UPC states were to take the view that the UPC does not have jurisdiction. However, given the nature of the penalty payment in the present case, it seems that the UK courts will not need to be involved for the injunction to be enforced. That said, the UPC does not have contempt of court provisions corresponding to those in the UK.
UPC refuses requests for declaratory relief
Kodak and Fujifilm each sought declaratory relief, with Kodak requesting that the UK part of the patent be declared invalid, and Fujifilm requesting a declaration of infringement. With regard to Kodak's request, and leaving aside that the patent was in any event held to be valid, the Mannheim LD held that there is no legitimate interest of a defendant obtaining a declaration from the UPC that the UK part of a European bundle patent is invalid. The LD's reasoning was that such declaratory relief would only have inter partes effect, and would not be binding on the UK courts (see [37]). Such declaratory relief would therefore serve no purpose beyond a finding of invalidity in the judgement itself. Fujifilm's request was denied on the grounds that Fujifilm did not set out why the declaration of infringement would serve a legitimate interest, and in any case the judgement itself explicitly refers to the infringing embodiment, and thus is tantamount to a declaration of infringement.
Amendment of the patent during proceedings
During proceedings, Fujifilm requested an amendment to claim 1. This amendment was found to be admissible in the hearing in respect of the German part of the patent. In the hearing for the UK part, Kodak argued that Fujifilm had not observed the procedural requirements under UK law, e.g. in relation to notifying the UKIPO of the amendment.
The Mannheim LD dismissed this argument, finding Fujifilm's amendment to be admissible in respect of the UK part of the patent. This was on the grounds that: (i) UK procedural requirements are not applicable because the infringement action should be "exclusively governed by procedural law of the forum at hand in accordance with fundamental principles of international procedural law"; (ii) in any case, failing to notify the UKIPO of the amendment would not have affected the course of the infringement proceedings before the UK court if infringement proceedings were brought there; and (iii) the requirement to notify the UKIPO is for amendments which apply erga omnes (for everyone), whereas the amendment made during the infringement proceedings has only inter partes effect.
It follows from the above that the Mannheim LD was of the opinion that there is no need for Fujifilm to request limitation of the UK part of the patent at the UKIPO. This leads to a curious situation where the patent in respect of which the UK injunction has been issued (i.e. the patent as amended during the proceedings) is different to the patent that is actually in-force in the UK. And now, one wonders whether Kodak could bring proceedings in respect of the patent against a different party at the UPC or at the UK courts, and amend the patent in a different way (e.g. in order to cover a different infringement) during those proceedings.
Application of UK law
In respect of various issues, the Mannheim LD referred to UK law. For example, the Mannheim LD referred to the UK Patents Act 1977 in relation to the prior use defence (see [49]), available remedies (see [53], [56] and [62]) and indirect infringement (see [67]). In relation to the prior use defence, the court also referred to UK legal principles derived from case law (see [46] and [63]). When applying UK law, the Mannheim LD either referred to evidence (e.g., Exhibit 39, setting out "the standards of UK law", at [49], and "A Practitioner's Guide to European Patent law 2nd ed." at [63]), or noted that the defendant had not disputed the principles of UK law.
Conclusions
This case is noteworthy primarily because it is the first example of the UPC applying BSH Hausgeräte vs Electrolux to issue an injunction covering a non-UPC and non-EU state.
By the patent being found to be valid in amended form, the case also highlights the complexity arising when the UPC considers the validity of a patent granted in a non-UPC state – something that was not possible in the days before BSH Hausgeräte vs Electrolux.
Preliminary injunction covering Spain issued against a defendant based in Hong Kong
Background
In UPC_CFI_387/2025, 14 August 2025, Dyson v Dreame, Dyson brought an infringement action at the Hamburg LD against four defendants, each being an entity of, or working with, the Dreame Group. The patent-in-suit (EP3119235) relates to devices for curling hair, and is in-force in all UPC states and Spain. For the jurisdictional issues of interest in this case, the first defendant (DREAME INTERNATIONAL) and the third defendant (Eurep GmbH) are relevant.
The first defendant is a company based in Hong Kong, and is responsible for manufacturing the allegedly-infringing products. The first defendant offers to supply the allegedly-infringing products throughout Europe (including in Spain) via its website. The first defendant will be referred to as the HK manufacturer.
The third defendant is based in Germany, and acted until recently as the "authorised representative" of the first defendant. It is a legal requirement that non-EU manufacturers of products have an authorised representative in the EU. In the present case, the responsibilities of the authorised representative related to, inter alia, declarations that the products conform to the requirements of EU regulations. The third defendant also appeared on the packaging of the allegedly-infringing products. The third defendant will be referred to as the authorised representative.
Liability of an authorised representative
The Hamburg LD decided that the responsibilities of, and the acts performed by, the authorised representative did not constitute infringing acts. However, the court held that the authorised representative can be subject to an injunction as an intermediary within the meaning of Enforcement Directive 2004/48/EC, which is incorporated into the UPCA in Article 63(1):
"Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent."
On this point, the Hamburg LD noted that the possession of a declaration that a product conforms with EU regulations is a prerequisite for placing the products on the market in the EU, and thus the services of the authorised representative were essential to the distribution of the products in the EU.
With the cause of action against the authorised representative established, there was no question over the UPC's jurisdiction over the authorised representative in respect of the UPC states.
The Spanish Patent Act has a section equivalent to Article 63(1) UPCA addressing injunctions against intermediaries, so the court held that there was also a cause of action against the authorised representative in relation to Spain. And following BSH Hausgeräte vs Electrolux and the growing body of case law of the UPC (e.g. UPC_CFI_365/2023 discussed above) with regard to long-arm jurisdiction, the UPC held that it has jurisdiction over the authorised representative in respect of Spain because of the authorised representative's domicile in Germany.
Jurisdiction over the HK manufacturer
In what was a straightforward application of the statute, the Hamburg LD held that it has jurisdiction over the HK manufacturer in respect of their activities in the UPC states. Article 7(2) BR provides that a party domiciled in a state that is signatory to the Brussels Regulation can be sued in the courts of the state where the harmful event (i.e. the infringement or resulting damage) occurred or may occur, and Article 71b(2) BR opens this up to defendants domiciled elsewhere.
However, the mechanism by which the UPC claimed jurisdiction over the HK manufacturer is more complicated in respect of the acts performed in Spain. This is because, with the harmful event occurring in a state which is not party to the UPCA, Articles 7(2) and 71b(2) BR do not give the UPC jurisdiction.
So, to seize jurisdiction over the HK manufacturer in respect of Spain, the UPC identified the German authorised representative as an anchor defendant, facilitating the joining of the HK manufacturer into the Spanish part of the proceedings. The anchor defendant principle has basis in Article 8(1) BR, which states that "[a] person domiciled in a Member State may also be sued... where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings."
This is not the first time that the UPC has applied Article 8(1) BR to establish jurisdiction over defendants domiciled in non-UPC states performing acts outside of the UPC member states: in UPC_CFI_191/2025 and 192/2025, 23 May 2025, Moderna v Genevant & Arbutus, The Hague LD seized jurisdiction over three Moderna entities domiciled in non-UPCA states (Norway, Spain and Poland) and performing acts in their respective states. This was on the basis that a Dutch Moderna entity was an anchor defendant, because it played a central role in the sales and supply across Europe, including in Norway, Spain and Poland. For more detail on that case, see our briefing here.
The Dyson case differs from the Moderna case in that the defendant in question (the HK manufacturer) was not domiciled in a state that is party to the Brussels Regulation (or the Lugano Convention, which includes a corresponding provision to Article 8(1) BR). However, this difference was of no consequence because, while Article 8(1) BR itself limits defendants that can be joined to an action to those that are domiciled in a state that is a signatory of the Brussels Regulation, Article 71b(2) BR allows for Article 8(1) BR to apply irrespective of the joined defendant's domicile. Thus, the Hamburg LD held that the anchor defendant principle could still be applied even though the joined defendant was domiciled in Hong Kong.
With regard to the "closely connected" requirement of Article 8(1) BR, the Hamburg LD referred to case law of the CJEU (C-539/03, 13 July 2006, Roche v Primus) and held that that claims can be "closely connected" within the meaning of Article 8(1) BR only if the acts performed by the different defendants relate to the same part of a European patent. In the present case, both the HK manufacturer and the authorised representative were performing acts in relation to the Spanish part of the European patent.
Further, the Hamburg LD held that there was a close connection between the HK manufacturer and the authorised representative because of the nature of the role of the authorised representative: it would not be possible for the products manufactured and sold by the HK manufacturer to be distributed in Europe without the involvement of the authorised representative, and so the authorised representative is an indispensable party.
After concluding that the UPC has jurisdiction over the HK manufacturer in respect of acts performed in Spain, the Hamburg LD noted that, even if the courts of another EU member state were to have jurisdiction, the preliminary injunction could still be granted by the UPC on the basis of Article 35 BR.
Preliminary injunction issued
After establishing jurisdiction, the Hamburg LD went on to consider infringement, and held that it was more likely than not that two of the allegedly-infringing products did in fact infringe the patent-in-suit. No substantiated attack on the validity of the patent was submitted by the defendants. The court also held that the claimant did not wait for an unreasonably long time to bring the action, and that the weighing of interests was in favour of the claimant.
Consequently, a preliminary injunction was granted in respect of all UPCA contracting states against all four defendants, and in respect of Spain against the HK manufacturer and the authorised representative. The preliminary injunction granted against the first defendant was "to refrain from making, offering, placing on the market, using, importing or storing" the patented article. The injunction granted against the third defendant was "to refrain from providing service for making, offering...", reflecting their position as an intermediary rather than an infringer.
There can be complications in enforcing injunctions when the injuncted party is domiciled outside of the territory of the court which granted the order and outside of Europe, as in this case with the HK manufacturer. Within the UPC member states, the UPC has the power to take practical steps, such as ordering the seizure of products (via national authorities). Whether or not these steps would be effective depends on the nature of the HK manufacturer's business operations.
To take practical steps to enforce the injunction in Spain (for instance if the HK manufacturer were to continue performing infringing acts in Spain and ignore orders to pay the resulting penalty fines), it may be necessary to request that the Spanish courts take action. The action taken by the Spanish courts may include, for instance, a court order to prevent the importation of infringing goods or to prevent their release into the market after they have been seized by customs. However, this raises a question as to whether or not the Spanish courts would cooperate, which could depend on whether the Spanish courts recognise the jurisdiction of the UPC over matters involving Spanish patents.
Conclusions
There are several significant takeaways from this decision. The first is that this is an example of the UPC applying the anchor defendant principle to claim jurisdiction in non-UPC countries over a defendant that is not a party to the Brussels Regulation or the Lugano Convention. While this is perhaps unsurprising in view of Art. 71b(2) BR, it is still notable.
Two other important points are that: (i) a non-infringing "intermediary" within the meaning of Article 63(1) UPCA, second sentence can act as the anchor defendant within the meaning of Article 8(1) BR; and (ii) a European authorised representative can act as that intermediary. A result of (i) and (ii) is that the installation of an authorised representative domiciled in a UPC state may allow an overseas manufacturer to be sued at the UPC in respect of actions being performed in non-UPC states. The Hamburg LD considers this burden to be a fair one because the rationale behind requiring non-EU manufacturers to appoint European authorised representatives is to bring the distribution of the products under the effective control of the European authorities.
If the authorised representative had not been domiciled in a UPC state, the UPC would not have been able to establish the authorised representative as the anchor defendant to join the HK manufacturer into the Spanish part of the infringement action. This outcome may prompt manufacturers situated outside of Europe and wary of European infringement actions to consider establishing their authorised representative in EU, non-UPC states.
Final thoughts
As is clear from the both the Kodak and the Dyson cases, difficult questions are raised by the UPC considering the validity of patents granted by non-UPC states and then issuing injunctions in respect of that non-UPC state. These questions become especially complex when the UPC holds a patent to be valid in amended form. Also, particularly tricky enforcement problems are posed by the UPC issuing injunctions covering non-UPC states against non-European defendants. It will be interesting to observe the approach that the UPC takes to these issues, how the availability of UPC long-arm injunctions shapes European patent litigation in the coming years, and how other non-UPC courts react.
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website
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