BSH vs. Electrolux vacuum cleaner case takes jurisdiction question to CJEU

The Grand Chamber of the Court of Justice of the European Union (CJEU) is examining whether an EU national court also has jurisdiction over foreign rights of a European patent if the defendant has filed a nullity suit against the patent abroad. Court president Keon Lenaerts chairs today’s specific case, which will examine this issue in the context of the dispute between German company BSH Hausgeräte and Swedish company Electrolux.

In parallel proceedings, BSH and Electrolux have fought in Germany and Sweden since the beginning of 2020. In Sweden, BSH’s infringement action covers the German, as well as Austrian, Spanish, French, UK, Italian, Dutch, Greek and Turkish, parts of EP 1 434 512 which covers a vacuum cleaning technology. Electrolux had also filed a nullity suit against EP 512 in Germany, among other countries.

Currently, the CJEU is running a pilot project, in which it broadcasts all grand chamber oral hearings via livestream. While today’s oral hearing in Luxembourg began at 9:30, the livestream will be available from 14.30 onwards.

Swedish CJEU referral

In the Swedish case, BSH is seeking damages from the Swedish Electrolux group for past infringement. This pertains not only to Sweden, but also nine other countries in which the patent was valid. BSH refers to Art. 4(1) of the Brussels Ibis Regulation.

Electrolux contended that the Stockholm Patents and Market Court should dismiss that action to the extent that it concerns the Austrian, French, German, Greek, Italian, Netherlands, Spanish, Turkish and UK parts of EP 512 . The Swedish company questioned the validity of the foreign patents.

In the first instance, patent & market court denied it had jurisdiction for the non-Swedish parts of EP 512. BSH then appealed to the Swedish Court of Appeal. In May 2022, the appeal court referred a question to the CJEU concerning the jurisdiction of Swedish courts for ruling on infringement proceedings arising from non-Swedish parts of patents (case ID: C-339/22).

After the CJEU Advocate General Nicholas Emiliou rendered an opinion on 22 February 2024, the CJEU decided to hear the case before the Great Chamber. The court does this only in exceptional cases of great importance and impact.

Legal advice

In his opinion, the Advocate General advised the court to answer the Swedish Court of Appeal’s submission as follows:

“(1) Article 24(4) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that where the courts of a Member State are seised of proceedings concerned with the infringement of a patent registered in another Member State, and an invalidity defense is raised by the alleged infringer, those courts have no jurisdiction to adjudicate the validity issue [sic].”

According to the Advocate General, (2) Article 24(4) of Regulation No 1215/2012 “must be interpreted as meaning that that provision does not apply with respect to the validity of a patent registered in a third State. However, the courts of the Member States, where competent under another rule of that regulation, may not adjudicate that issue.” In most cases, the CJEU follows the Advocate General’s guidelines.

BSH successful in Germany

After a long-standing dispute between BSH and Electrolux, the German Federal Court of Justice found EP 512 fully valid (case ID: X ZR 19/21). In doing so, the court overturned a first-instance ruling by the German Federal Patent Court. In 2019, the court had fully nullified the patent.

The Düsseldorf regional and higher regional courts suspended parallel infringement proceedings pending a decision on the patent’s validity. In the meantime, the court is continuing the infringement cases.

In 2018, the Technical Boards of Appeal confirmed the validity of EP 512 in EPO opposition proceedings (case ID: T 0621/15).

Advisors in Luxembourg

In the Swedish proceedings and the CJEU case, BSH Hausgeräte relies on a patent team from Swedish full-service firm, Gulliksson, with partner Magnus Dahlman and Therese Grennard in the lead. Litigator Roman Sedlmaier and patent attorney Jan Gigerich of Munich-based IP firm IPCGS coordinate the battle for BSH on a European level. The German proceedings also involves both Sedlmaier and Gigerich.

In Germany, BSH also relies on patent attorney Norbert Struck of Gille Hrabal, and on Axel Verhauwen of Düsseldorf IP boutique Krieger Mes Graf von der Groeben.

In Germany, Electrolux has relied on Christian Harmsen of Bird & Bird in patent litigation matters for over 20 years. In nullity proceedings, a patent attorney team from mixed firm Meissner Bolte took the lead. It also conducted EPO opposition proceedings for Electrolux and is active for the client in prosecution.

In the CJEU and Swedish proceedings, Electrolux instructed a patent team from Westerberg & Partners, which specialises in litigation, including IP cases. Björn Rundblom Andersson leads the case, assisted by Jonas Westerberg and Petter Larsson.