A Trans-Atlantic approach to “long-arm jurisdiction”? – U.S. patents asserted in Europe

A Trans-Atlantic approach to “long-arm jurisdiction”? – U.S. patents asserted in Europe

Introduction

National courts seeking to flex their international reach will be no surprise to legal practitioners working in the patent litigation space (particularly those regularly involved in SEP/FRAND litigation).

However, in what is a significant development in the hotly discussed and debated topic of the “long-arm jurisdiction” of European courts, Onesta IP LLC (a U.S. based non-practicing entity) has issued patent infringement proceedings in the Landgericht München I (Munich I Regional Court) concerning three semiconductor patents (one European patent and two U.S. patents) against Munich based BMW. This is the first time that the CJEU’s finding concerning the scope, or reach, of long-arm jurisdiction in BSH Hausgeräte v. Electrolux (C-339/22)  (“BSH”) is being tested in territories beyond Europe and could mark a significant development for European national courts.

Current position of “long-arm jurisdiction”

EU national courts:

In February 2025, the CJEU handed down its ruling in BSH clarifying the correct application of Article 24(4) (Exclusive jurisdiction) of Regulation (EU) No 1215/2012 (“Brussels Recast”) and addressed the extend to which EU national courts are able to assert their jurisdiction when the case concerns infringement of foreign patents, particularly when a validity (or rather invalidity) defence is raised.

In relation to litigation concerning EU patents the CJEU found that:

1. Under Article 4(1) (General Provisions) of Brussels Recast, a claimant can bring infringement proceedings in the courts of an EU Member State where the relevant defendant is domiciled, even if the action in question concerns the infringement of a patent granted by a different Member State; and

2. Should the defendant raise an in/validity defence then per Article 24(4) (Exclusive Jurisdiction) of Brussels Recast the court hearing the infringement action will be unable to rule on the validity of the patent in question as such validity will be under the exclusive jurisdiction of the Member State in which the patent is registered. This does not, however, prevent the infringement court continuing to hear the infringement action, provided it does not find that there is a “reasonable and non-negligible” chance the patent will be invalidated by the courts of the Member State in which it is registered, in which case the infringement action may be stayed pending resolution of the validity question.

However, in relation to litigation concerning non-EU patents the CJEU found that:

1. Article 24(4) of Brussels Recast does not confer jurisdiction on non-EU countries. It therefore found that it is possible for a court in an EU Member State to consider the validity of a non-EU patent right provided that:

• the non-EU country in question is not a signatory to the Lugano Convention;
• there is no bilateral agreement in place providing that country exclusive jurisdiction over the validity of non-EU patents; and/or
• that there are no proceedings already pending in the non-EU country in question (if so that EU court may be required to stay or terminate the European proceedings).

It is worth bearing in mind, however, that any ruling on the validity of non-EU patents was found to only apply on an inter partes basis and would not result in any erga omnes effect or formalisation on the relevant national patent register(s).

The UPC:

Per Article 31 (International jurisdiction) of the UPC Agreement (“UPCA”) the UPC has international jurisdiction in line with both Brussels Recast or, where applicable, the Lugano Convention. The UPCA also states that the UPC should be:

“a court common to the Contracting Member States and thus part of their judicial system, with exclusive competence in respect of European patents with unitary effect and European patents granted under the provisions of the EPC”

This is also confirmed in Articles 71a(2)(a) and 71b(1) (Relationship with other Instruments) of Brussels Recast. The BSH decision therefore equally applies to the UPC’s jurisdiction over defendants domiciled in territories participating in the UPC. This is unsurprising as it aligns with the UPC’s aims of: (i) avoiding irreconcilable national judgments; (ii) streamlining European patent litigation; and (iii) the harmonisation of European patent law.

The UPC has been quick and keen to adopt the post-BSH position and seek to extend its jurisdiction to include non-UPC member states.

In Fujifilm v Kodak (UPC_CFI_635/2023) the Mannheim Local Division, applying BSH, found that as: (i) the UK is not a signatory to Lugano; (ii) there were no bilateral treaties in place; and (iii) there were no pre-existing UK proceedings concerning validity or infringement, then under Article 4(1) of Brussels Recast the UPC (as a common court of the EU) had jurisdiction to rule on the infringement of a UK designation (to be determined according to UK patent law) even when, as was the case here, invalidity was raised as a defence to infringement. Whilst the Local Division recognised that it would not have the jurisdiction to formally revoke or amend the UK designation, it did uphold an amended form on an inter partes basis and granted an injunction covering the UK (finding it had the power to do so under both Article 63(1) (Permanent Injunctions) of the UPCA and section 61(1)(a) (Proceedings for infringement of patent) of the UK Patent Act 1977).

In Dyson v Dreame & ors (UPC_CFI_387/2025) Dyson sought a PI against certain of Dreame’s hair styling products in both the UPC and Spain (which is not participating in the UPC), the Hamburg local division found that as Dreame (based in Hong Kong) had appointed Eurep GmbH (a German entity) as its authorised representative, it could use Eurep GmbH as an ‘anchor defendant’ so as to extend its jurisdiction in order to grant a PI covering all of Dreame’s alleged infringements, including those taking place in Spain (outside UPC territory).

Similarly in HL Display v Black Sheep Retail Products (UPC_CFI_386/2024), the Hague local division flexed its long-arm jurisdiction to hear infringement claims covering all of the patent in suit’s designations. This included UPC participating member states (Austria, Belgium, Germany, France, Italy, The Netherlands, Portugal and Sweden), and non-UPC territories (Liechtenstein, Ireland, Norway, Poland, Switzerland and the UK). The local division found the patent to be valid (albeit again only on an inter partes basis for non-EU/UPC territories wherein the counterclaim for revocation was only to be considered a defence to infringement) and granted an injunction covering all territories in which the patent was in force (including the non-EU/UPC territories).

It is therefore clear that post-BSH the UPC considers its long-arm jurisdiction to reach beyond UPC participating states, albeit its reach is limited to European patents (Articles 1 and 3 of the UPCA).

In each of the above cases there was at least one defendant domiciled in the same country as the local division before whom the claim was issued (in accordance with Article 33(1)(b) (Competence of the divisions of the Court of First Instance) of the UPCA). Whether the UPC will seek to apply the same approach where this is not the case, i.e. when all defendant(s) are domiciled in different UPC territories to the local division hearing the action still needs to be confirmed.

Impacts of Onesta v. BMW:

National actions vs. the UPC:

As stated above, the recent action brought by Onesta is the first (publicly reported) action involving the alleged infringement of U.S. patents to be brought before a European regional court post-BSH. This could have significant implications for both the European and UPC patent litigation landscape should the national court use its newfound long-arm jurisdiction to reach beyond Europe and find infringement of the asserted U.S. patents.

This is clearly Onesta’s goal; it has stated that it hopes for a “swift, thorough, and high-quality decision from a specialized single forum” so as to avoid the need for parallel proceedings across multiple jurisdictions.

Should to Munich Regional Court conclude that its long-arm jurisdiction reaches across the Atlantic to consider the infringement of U.S. patents by a defendant anchored in Europe, one key question would be what does this mean for the UPC?

Article 3 (Scope of application) of the UPCA limits the UPC’s authority to European patents (classical or unitary). Should the Munich national court rely on BSH to further extend its jurisdiction to cover infringement of U.S. patents in addition to national designations of other European countries (i.e. broader even than the UPC’s European reach), this could arguably diminish the attractiveness of the UPC for certain international disputes. Especially since the European national route post-BSH would appear to allow patentees the ability to seek cross-border injunctive relief without running the risk of a centralised European revocation counterclaim.

Impacts outside the EU:

Another question for practitioners and litigants to consider post-BSH is the reactions of how non-EU jurisdictions and courts will respond to the apparently expanding reach of the European Court’s/UPC’s jurisdiction, in particular those countries not covered by Article 24(4) of Brussels Recast; a post Brexit-UK for example could, in response, seek to extend its own jurisdiction beyond its territorial waters (as has been recently seen in the UK court’s willingness to grant global interim licence rates and the issuing of various anti-anti suit injunctions in the FRAND space).

Impacts on general litigation strategies:

The above could lead to interesting developments both from claimants and defendants looking to bring or defend actions before the European national courts and/or the UPC. A local defendant is of course required to sufficiently anchor an action within the jurisdiction of the European courts. It could be that we see claimants deploying creative arguments (building on that seen in Dyson v Dreame) in attempts to anchor defendants within European jurisdictions.

It could also be the case the defendants wishing to avoid EU or UPC jurisdictions would seek to pre-emptively launch a (cross-border) “torpedo” style action (declarations of non-infringement, revocation actions etc.) in a non-EU or non-UPC country so as to block a ‘long-arm jurisdiction’ action being brought before EU Courts/the UPC.