Client Alert: The CJEU’s BSH Hausgeräte Decision and the UPC’s Long Arm Jurisdiction over Foreign Patents

The CJEU’s BSH Hausgeräte Decision and the UPC’s Long Arm Jurisdiction over Foreign Patents

The Court of Justice of the European Union’s (CJEU) February 2025 decision in BSH Hausgeräte GmbH v Electrolux AB has already had a profound impact on patent infringement proceedings, both within European national courts and the Unified Patent Court (UPC). This landmark ruling enables European patent owners to consolidate infringement claims - including those based on foreign national parts of a European Patent - before the court of the defendant’s domicile, significantly increasing that court’s reach and allowing for cross-border injunctions. Recent rulings from the Düsseldorf, Paris, and Milan Local Divisions of the UPC have found the UPC competent to hear infringement actions regarding patents outside the UPC territory, too, even before the CJEU’s decision. Unsurprisingly, plaintiffs are now amending their complaints to include such additional territories.

I. BSH Hausgeräte GmbH v Electrolux AB (CJEU)

BSH sued Electrolux, a company incorporated under Swedish law, before a Swedish national court for infringement of all national parts of BSH’s European Patent, namely the German, Greek, Spanish, French, Italian, Dutch, Austrian, Swedish, UK, and Turkish parts. BSH sought injunctive relief and damages regarding infringing acts in all of those jurisdictions. Electrolux challenged the Swedish court’s jurisdiction over the European Patent’s parts validated outside Sweden and argued that they were invalid. The Swedish court initially dismissed the infringement action with regard to the foreign parts of the European Patent for a lack of jurisdiction under Article 24(4) Brussels I bis Regulation, granting exclusive jurisdiction over the validity of patent to the courts of the EU Member State in which that patent has been registered or validated. On BSH’s appeal, the Svea Court of Appeal, Stockholm, stayed the proceedings and referred the following three questions to the CJEU:

1. Does a national court that has jurisdiction over a patent infringement action under Article 4(1) Brussels I bis Regulation (i.e. based on the defendant’s domicile) lose its jurisdiction if the defendant raises a validity challenge or does it merely lack jurisdiction to rule on validity under Article 24(4) Brussels I bis Regulation (given the exclusive jurisdiction of the courts of a EU Member State for the validity of a patent validated in that EU Member State);
2. Does the answer depend on national provisions requiring a separate invalidity action to make a decision about a patent’s validity; and
3. Does Article 24(4) Brussels I bis Regulation apply to courts in third states that are not EU Member States, conferring exclusive jurisdiction on them to hear patent cases regarding the national parts of a European Patent validated in that third state?

Answering the first question, the CJEU confirmed that the national courts of an EU Member State where the defendant is domiciled/has its registered office have jurisdiction to hear cases about the infringement of a patent granted by/validated in another EU Member State under Article 4(1) Brussels I bis Regulation (cf. the CJEU’s 1983 Duijnstee, C-288/82, and 2022 IRnova, C‑399/21, decisions). The CJEU also confirmed that these courts cannot rule on the validity of such a patent, not even incidentally if raised as a defense to the infringement allegation, because Article 24(4) Brussels I bis Regulation confers exclusive jurisdiction for that to the courts of the EU Member State where the patent was granted/validated in (confirming its 2006 GAT v. LUK decision, C-4/03).

The key clarification of the CJEU’s BSH decision is that a court of an EU Member State with jurisdiction based on the defendant’s domicile under Article 4(1) Brussels I bis Regulation does not lose that jurisdiction merely because the defendant raises an invalidity defense in any form or files a foreign revocation action. The court of the defendant’s domicile stays competent to hear the infringement case. According to the CJEU, this allows the plaintiff and owner of a European Patent to bundle claims for the infringement of all national parts of that patent in one proceeding at the court of the defendant’s domicile.

To resolve the potential conflict between the infringement action, the incompetence of the infringement court to decide any validity questions, and a foreign revocation action, the CJEU allows the infringement court to stay its proceedings if there is a reasonable, and non-negligible possibility of the patent subject to the foreign revocation action being declared invalid (referring to the CJEU’s 2012 Solvay decision, C-616/10). The CJEU does not explain how the infringement court should deal with a situation in which there is no foreign revocation action as it cannot even make an incidental, inter partes decision about the validity of a patent validated or registered in an EU Member State (see, GAT v LUK, para. 30 et seq., which is different for third countries, see below). In fact, the UPC had to deal with precisely this question and we will explain the solutions found there below.

The answer to the second question was a clear “No” as the interpretation of the Brussels I bis Regulation cannot depend on national laws.

The CJEU further confirmed in response to the third question that Article 24(4) Brussels I bis Regulation, i.e. the exclusive jurisdiction for the revocation of a patent of the courts of the country in which the patent was granted/validated, does not apply to third states such as Turkey, but only to EU Member States (once again referring to the 2022 IRnova decision, C‑399/21). As such, Article 24(4) Brussels I bis Regulation does not confer any particular jurisdiction regarding the validity of a foreign patent to foreign courts. Other special rules, such as Article 73(1) Brussels I bis Regulation, which mirrors Article 24(4) Brussels I bis Regulation for member states of the Lugano Convention, or similar provisions in a bilateral treaty between the affected states falling within the requirements of Article 73(3) Brussels I bis Regulation could have the same effect as Article 24(4) Brussels I bis Regulation, however. This would lead to the same regime as just described (no decision on validity by the infringement court, but the possibility to stay in light of a foreign revocation action).

If none of that applies, as was the case in the decision at hand regarding Turkey, the only limitation for the infringement court to decide on validity defenses are rules of international law, in particular the national sovereignty of the foreign country that granted or validated the patent at issue and the principle of non-interference with such sovereign acts. Under those rules, only the courts of that country can be competent to invalidate such a patent. Still, that does not mean that the EU court would lose its jurisdiction for the infringement case under Article 4(1) Brussels I bis Regulation even if the defendant raises an invalidity defense because the EU court can decide inter partes on the validity defense. This does not result in an invalidation of the foreign patent with effect erga omnes and does not have any effect on the status of any patent register in the country in which the patent was granted or validated.

Additionally, Articles 33 and 34 Brussels I bis Regulation provide that EU Member State courts may stay proceedings in cases where related litigation is pending in a third state, such as a revocation action, particularly where a risk of conflicting decisions exists.

To summarize, EU courts have jurisdiction for patent infringement cases involving foreign patents based on the defendant’s domicile, regardless of whether the defendant attacks the asserted foreign patent’s validity. The EU infringement court can stay the infringement case if there is a foreign revocation action and can also decide on a validity defense inter partes as long as there is no applicable rule on the exclusive jurisdiction of a foreign court for validity questions, such as for the courts of other EU Member States.

II. Reception of BSH by the UPC and the UPC’s Longarm Jurisdiction

While this long arm jurisdiction of EU courts over foreign patents applies to any EU Member State court (BSH was not a UPC case, but a Swedish national case), it further enhances the UPC’s attractiveness as one of the preeminent global patent litigation venues, adding to the already wide territorial reach of the UPC covering up to 18 EU Member States. As such, it was not surprising that the UPC had already picked up on the Advocate General’s opinion in the BSH case even before the CJEU’s decision to find itself competent to adjudicate foreign patents and that several of the first decisions implementing the CJEU’s new holdings were UPC decisions.

The Düsseldorf Local Division (UPC, Düsseldorf Local Division, FUJIFILM v Kodak, UPC_CFI_355/2023) had already ruled on January 28, 2025, thus prior to the CJEU’s decision, that it has jurisdiction to hear infringement actions including the UK part of a European Patent if the defendant is domiciled in Germany (notably, the Mannheim Local Division severed the UK part of a parallel case between the same parties to decide it after the CJEU’s decision; decision of April 2, 2025, UPC_CFI_359/2023), and despite the defendant’s attacks on the validity of all asserted parts of the European Patent at issue.

The German defendants argued that all parts of the European Patent were invalid, attacked the parts of the asserted European Patent with effect for the UPC Member States with a revocation counterclaim, and further requested that the Local Division assume jurisdiction over the UK part only if the plaintiff consents to its revocation by the competent UK authority in the event that the UPC declares any part of the European patent invalid. The defendants did not file a revocation action in the UK.

The Local Division found itself competent to hear the UK part of the case based on Article 4(1) in conjunction with Articles 71a(1), 71b(1) Brussels I bis Regulation, i.e. the defendants’ domicile and because the UPC is to be treated as a court of the EU Member State and has jurisdiction where the court of an EU Member State would have jurisdiction. The revocation counterclaim was limited to the parts effective in the UPC territory and the UK is not an EU Member State. Exclusive jurisdiction of another court for the invalidity under Article 24(4) Brussels I bis Regulation was not an issue.

The Local Division ultimately dismissed the infringement complaint because it found the German part of the asserted European Patent invalid. Not having the competence to declare the UK part invalid and not having a basis to stay the case without a pending UK revocation action, it found that it had to dismiss the infringement complaint regarding the UK part, too, as the same grounds of invalidity would have to apply here as well, as long as the plaintiff does not show that the result should be different under UK law. This result could be one way to implement the CJEU’s concept of inter partes invalidity decisions in cases not falling under Article 24(4) Brussels I bis Regulation or similar rules for the exclusive jurisdiction of a foreign court regarding validity.

On March 21, 2025, the Paris Local Division ruled, in an order addressing a preliminary objection against the Local Division’s jurisdiction, that the principles formulated by the CJEU also apply to a European Patent with unitary effect (“Unitary Patent”) or, to be more precise, to the other, parallel national parts of such a European Patent validated outside of the UPC Member States (here: Spanish, UK, and Swiss parts of the European Patent, UPC, Local Division Paris, Mul-T-Lock France v IMC Créations, UPC_CFI_702/2024), also finding Article 71a Brussels I bis Regulation a sufficient basis to apply the Brussels I bis Regulation and the corresponding jurisprudence of the CJEU to the UPC in the same manner as it would to national courts. Notably, this case involved not only a French defendant subject to the jurisdiction of the Paris Local Division via its French domicile and Article 4(1) Brussels I bis Regulation, but also a Swiss defendant without a domicile in France (or even any UPC Member State). For this defendant, the Paris Local Division’s jurisdiction followed from Articles 8(1) and 71b(2) Brussels I bis Regulation under which even defendants not domiciled in an EU Member State can be sued together with a defendant domiciled in an EU Member State before a common court of that EU Member State with other EU Member States, such as the UPC, provided the claims against the defendants 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.

On April 15, 2025, the Milan Local Division likewise confirmed its jurisdiction to hear an infringement case against an Italian defendant concerning the Spanish part of a European Patent in response to a preliminary objection (UPC, Local Division Milan, Alpinestars v Dainese, UPC_CFI_792/2024). The Milan Local Division described the jurisdiction based on the defendant’s domicile as a “universal” jurisdiction in accordance with Article 32 UPCA and Articles 4(1), 71a and 71b Brussels I bis Regulation. A more restrictive interpretation of the UPC’s jurisdiction compared to the national courts would be contrary to Article 71a Brussels I bis Regulation and undermine the principle of equivalence of jurisdiction.

Establishing the jurisdiction of a UPC Local Division over a foreign patent is only the first step for the plaintiff. It still bears the burden to substantiate and if necessary prove that the defendant actually infringed the foreign patent, as confirmed by an April 24, 2025 decision of the Paris Local Division partially dismissing an infringement complaint regarding other parts of a European Patent beyond the French part (UPC, Local Division Paris, Seoul Viosys v Laser Components, UPC_CFI_440/2023). The Paris Local Division held that the plaintiff has to submit specific facts and evidence for the infringement of the asserted patents in all territories in which he wants relief. The plaintiff cannot just allege that the defendant offers infringing products via a website accessible throughout Europe, for example, and rely on the defendant not disputing that in its defense if the defendant acts solely as a distributor within the country it resides in as part of a larger group of companies, and the website is clearly structured according to different countries and with different distribution entities for the particular countries (ibid., at 104 et seq.).

III. Adding Territories to Pending Cases

Unsurprisingly, plaintiffs before the UPC have scrambled to amend their complaints to cover additional territories after the CJEU’s decision. The UPC’s Court of Appeal and, following it, the Local Divisions have allowed such amendments even if the case had been pending for quite some time, as long as the plaintiff acted swiftly after the CJEU judgment and the addition of foreign patents did not unduly hinder the defendant within the current schedule of the case. According to the Court of Appeal, plaintiffs could wait until the CJEU’s decision (UPC, Court of Appeal, decision of April 11, 2025, AIM Sport Development v TGI Sport, Supponor et al., UPC_CoA_169/2025, APL_9191/2025; UPC, Local Division Munich, decision of April 14, 2025, Syngenta v Sumi Agro et al., UPC_CFI_566/2024, UPC_CFI_39/2025).

IV. Implications for Litigation Strategies

The decision in BSH Hausgeräte GmbH v Electrolux AB provides clarity for the long-arm jurisdiction of the EU Member States’ patent infringement courts, while the quick adoption of this approach by the UPC’s local divisions underscores this new courts’ ambitions to become a global leader in patent infringement litigation. A notable limitation to the European courts’ long-arm jurisdiction is the requirement of a local defendant. Only the defendant’s domicile allows the consolidation of international infringement cases before one court – whether a national court or the UPC.

While it was apparently not contested in the Mul-T Lock case in Paris, it remains to be seen how strict the European courts interpret Article 8(1) Brussels I bis Regulation that allows to draw in additional defendants with a different domicile. The CJEU has interpreted Article 8(1) Brussels I bis Regulation narrowly to not allow misuse by adding a local defendant with no further connection to the other defendants just to establish the jurisdiction of a favorable venue (cf., Athenian Brewery, C-393/23, and Beverage City Polska, C-832/21). Notably, the CJEU held in its Roche decision that the infringement of multiple national parts of a European Patent in multiple different countries by various companies belonging to the same group alone is not sufficient to establish a sufficiently close connection between defendants from different countries (C-539/03; confirmed in Honeywell v Solvay, C-616/10, which found it sufficient that the same parts of a European Patent are infringed by the defendants, however, and Nintendo/Big Ben, C-24/16, C-25/16, distinguishing EU designs from European Patents). The UPC has so far only dealt with the noticeably broader Article 33(1)b) UPCA, which governs the internal jurisdiction within the UPC and establishes the jurisdiction of a UPC Local Division in a UPC Member State where at least one of several defendants is domiciled as long as all defendants have a commercial relationship and the action relates to the same alleged infringement (UPC, Local Division Munich, Edwards Lifesciences v Meril, UPC_CFI_501/2023; Local Division Paris, ICPIllar v ARM, UPC_CFI_495/2023).

Even more important may be how the UPC and other national EU courts will deal with the defendant’s invalidity defenses. At least the Düsseldorf Local Division’s decision shows that the UPC will not blindly grant injunctions based on foreign patents if it finds the parallel parts of the European patent falling within its own competence invalid, even if there is no foreign revocation action. However, in cases falling under Article 24(4) Brussels I bis Regulation, the only option is a stay of the infringement case under the CJEU’s decision. As none of the cases so far had to deal with parallel invalidity proceedings in the foreign countries, it will be interesting to see how the EU courts implement the CJEU’s standard for such a stay of a “reasonable, non-negligible possibility of th[e asserted] patent being declared invalid by the foreign court”, which is a uniquely European standard without basis in the national or UPC rules of procedure. While the consolidation of infringement actions in one jurisdiction increases efficiency and leverage for the plaintiff, both plaintiffs and defendants will have to carefully weigh the advantages and disadvantages of having to litigate the validity of the asserted patents in various countries in parallel to such a consolidated infringement action.

It also remains to be seen whether the UPC’s Court of Appeal and the CJEU will agree with the UPC’s local division’s interpretation of Article 71a Brussels I bis Regulation as a simple gateway to the applicability of all rules of the Brussels I bis Regulation to the UPC, despite the UPC’s different status as a supra-national court organization of a unique kind established by the UPCA, which sets it apart from the “other” national courts of the EU Member States.

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If you have any questions about the issues addressed in this memorandum, or if you would like a copy of any of the materials mentioned in it, please do not hesitate to reach out to:

Dr. Jérôme Kommer, LL.M. (Berkeley)
Email: jeromekommer@quinnemanuel.com
Phone: +49 89 20608 3002

Dr. Sandra Wandt
Email:sandrawandt@quinnemanuel.com
Phone: +49 621 43298 6014

Anna Chiettini
Email:annachiettini@quinnemanuel.com
Phone: +49 89 20608 3015

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