Brief review of AG Emiliou Opinion in the case BSH v Electrolux, C-339/22

How should the Member State Courts deal with the situation when a comprehensive relief is sought by the Claimant in an infringement claim brought to a universal forum under the general jurisdiction of the Brussels regime (forum domicili under Art.4(1) of the Brussels I bis Regulation)?

Example: The Claimant initiates an infringement action at the Defendants forum domicili under Art.4(1) of the Brussels I bis Regulation for infringement of various national parts of a European Patent (EP) validated and in-force in various EPC Contracting States, both within and also outside the EU, seeking an injunction as well as damages for the alleged infringement in all those States. The Defendant raises an invalidity defense of the foreign parts of the EP, thus the court seized should presumably decline jurisdiction in favour of the relevant courts of the Member States for which the EP was granted for those foreign EP parts (under Brussels regime in Art.24(4)).

In view of the CJEU judgment C-4/03 GAT v. LuK (as now explicitly codified in Art.24(4) BR), it is clear that the rules on exclusive jurisdiction do apply even in this case. However, the Brussels I bis Regulation (BR) leaves open the question of how the court seized should proceed in applying Art.24(4) BR and to what extent shall they relinquish its jurisdiction, when invalidity is pleaded as a defense in infringement proceedings – shall those courts of State for which EP was granted become exclusively competent to both the infringement and validity proceedings in their territory (‘broad’ view) or shall they have exclusive jurisdiction as to the validity of their EP parts only (‘narrow’ view)?

Another point at issue is, how should the court seized deal with the invalidity defense raised for the EP parts in-force outside the EU and invoked in the infringement proceedings, since the exclusive jurisdiction to the courts of the State for which EP was granted under Art.24(4) BR is limited to the courts of the Member States, thus it does not extend to third States outside the EU.

On 22 February 2024, AG Emiliou delivered his Opinion in the case BSH v Electrolux, C-339/22 (https://curia.europa.eu/juris/document/document.jsf?text=&docid=283062&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=8503659). A case that may perhaps bring further clarity to this issue after the final judgment will be rendered by the CJEU.

Overall, his Opinion (at [18-33]) provides a very nice summary and explanation of the nature of territoriality limited patents rights and possible ‘multistate’ patent infringement proceedings.

In its first part, relating to the approach that shall be endorsed by the Member State courts in applying Art.24(4) BR in intra-EU case, the AG seriously condemns the CJEU judgment in C-4/03 GAT v. LuK as unfortunate and wishes to set it aside, if it would not have been already codified in Art.24(4) BR (at [63-64]). In his view, the CJEU is ‘trapped’ in the solution that it initially adopted and is left to choose between two possible readings of the judgment in GAT (and its codification in Art.24(4) BR) – in AG’s view, the ‘narrow’ reading of the judgment in GAT is ‘the lesser evil’ (at [88]).

And how would that work in practice? (at [89-94]) When an invalidity defense would be (properly) raised by the alleged infringer, the courts hearing the infringement proceedings should stay the proceedings until the validity of the patent in question has been determined by the authorities of the State of registration… but such stay shall not be automatic, inter alia as patents benefit from a presumption of validity. Those courts shall assess seriousness of the invalidity challenge (which is apparently not prohibited by the wording of Art.24(4) BR) and shall only consider granting a stay where that invalidity challenge has a genuine prospect of success on a prima facie level.

Further, those Courts would not be prevented from ordering provisional measures, including protective ones, such as an interlocutory injunction for the duration of the stay, as expressly preserved by CJEU in Solvay, C?616/10 (at [94]).

Although it remains to be seen what approach will the CJEU endorse in its final judgment, the reliance on the presumption of validity of (European) patents seems concerning, especially in view of the available statistics regarding invalidity of EP patents in the later contentious proceedings after grant. Such approach does also not take into account the (non-EP) patents that may be granted nationally without any substantive examination and would seem to endorse a wider interpretation as to any patent rights invoked in intra-EU infringement proceedings at Defendant's forum domicili, where invalidity defense is raised, which should not be accepted

Also, the mere prima facie assessment of the invalidity challenge and the need for assessing its prospect of success (under the national law of the State for which EP was granted - see also para [62] and footnote 53 for AG's view) looks problematic, as it is on the verge of the exclusive competence under Art.24(4) BR, even if not explicitly prohibited under its wording as mentioned by the AG. Moreover, such approach could, in the event that the prima facie assessment of the court seized is later overturned by the final assessment on the merits by the court of the State for which EP was granted, give rise to further damages claims by the deprived (and even perhaps provisionally injuncted) Defendant, which could be far more complex and uncertain, especially in view of the CJEU's recent decisions in Bayer, C-688/17 and Mylan, C-473/22 on the claimant's liability in similar situations.

In its second part, the AG Opinion rightly recognizes that the question in relation to jurisdiction with respect to validity of EP parts outside the EU is a far reaching question even beyond patent law – it would relate for example also to rights in rem over immovable property (as in Art.24(1) BR) located e.g. in China (at [99]), as well as those concerned with the validity of entries in public registers or patents (as in Art.24(3) and (4) BR)).

In AGs’ view, the courts of the Member State seized should basically ‘reflect’ the system established by the Brussels regime as the only rational answer (at [147]). Since the Brussels Regulation is silent on the issue of the exclusive jurisdiction for third State courts outside the EU, such an approach of filling the gap is not contra legem (at [154]) and is also not at odds with the rationale of the judgment in Owusu, C-281/02 since this discretion ('reflexive' approach) is much narrower, in comparison with the much wider construction of forum non conveniens doctrine which was rejected in Owusu(at [158]).

Any other approach put forward - either relinquishing jurisdiction of the seized court in favour of the third State courts (as in Art.24 or 25 BR), or applying the general jurisdiction under Art.4(1) BR in that such Member State courts would be bound to exercise it and thus had to determine the case, which would apparently be even questionable from the point of view of public international law (at [128]), indeed seem less logical over the 'reflexive' approach supported by Electrolux and endorsed by the AG in his Opinion.

It could also further be discussed, what will be the implications of this judgment on the UPC, remembering that the UPC is bound by the CJEU case-law and that its own international jurisdiction is based on the Brussels Regulation. Any further comments are most certainly welcome!