UPC flexes long-arm jurisdiction again by granting permanent injunction covering non-UPC and non-EU states

In HL Display v Black Sheep Retail Products, the Hague local division (LD) of the Unified Patent Court (UPC) has asserted its long-arm jurisdiction over the infringement of a European patent validated in various UPC, non-UPC and non-EU states.

HL Display brought an infringement claim against Black Sheep (a Dutch company) in relation to a system for securing shelf accessories to a shelf. The patent is in force in a number of states including UPC contracting member states (such as the Netherlands, France and Germany), non-UPC EU Member States (such as Ireland and Poland), non-EU Lugano contracting states (such as Norway and Switzerland), and non-UPC, non-EU states (such as the UK and Liechtenstein).

Black Sheep denied infringement and claimed that the patent was invalid on grounds of added matter and lack of inventive step. Black Sheep clarified that its counterclaim for revocation applied to the designations from UPC contracting member states only and it was to be considered a defence in relation to non-UPC contracting member state designations. In addition, it confirmed to the court that no revocation claims had been brought in any of the non-UPC countries.

On the basis of the Court of Justice of the EU's decision in BSH v Electrolux, the Hague LD assumed jurisdiction for hearing the infringement claims relating all of the patent's designations. As Black Sheep was domiciled in the Netherlands, it did not dispute the court's international jurisdiction, including its long-arm jurisdiction, or the LD's internal competence to hear the case.

Validity and infringement

The Hague LD found it clear that the patent was valid. Accordingly, it dismissed Black Sheep's counterclaim for revocation with respect to designations in force in UPC contracting member states.

For the designations in force in non-UPC, EU Member States and Lugano signatories, in accordance with BSH v Electrolux, the court found that there was no serious, non-negligible chance that the patent would be revoked by the competent national authorities and therefore it could proceed to determine the infringement claims.

Again in line with BSH v Electrolux, for non-UPC, non-EU states the court made an inter partes finding that the patent was valid.

The court also found the patent to be infringed, both directly and indirectly. Black Sheep had argued that HL Display had not sufficiently demonstrated that it had performed or was performing infringing acts. The court noted that before it considers the question of evidence, a statement of fact should first be sufficiently denied.

It concluded that Black Sheep had not done this. In fact, it held Black Sheep to have conceded in its statement of defence that the infringing products had been "on the market within the territory for which [that patent] is valid since at least 2019". As a result of this concession, the court left it undecided whether the products were also offered on its website.

In light of these findings, the Hague LD granted an injunction covering all states in which the patent was in force, which inevitably covered non-UPC EU and non-EU states.

Osborne Clarke comment

This judgment is another in a line of decisions following BSH v Electrolux where the UPC has been willing to exercise its long-arm jurisdiction, including taking it to its full conclusion of granting permanent injunctive relief based on an inter partes validity finding and a finding of infringement. Following decisions such as Fujifilm v Kodak, where the Mannheim LD also made inter partes findings that the UK designation of one patent was invalid and that the UK designation of another was valid in amended form, and granted an injunction affecting the UK, this judgment should no longer be seen as a surprising outcome.

It is also illustrates the UPC's flexibility in embracing post-BSH world. Black Sheep had filed a revocation counterclaim against all designations of the patent, despite the court not having jurisdiction to revoke non-UPC designations. The decision notes that Black Sheep clarified its position, which court seemed content to treat as turning the revocation claim into an invalidity defence for the non-UPC designations. Black Sheep also confirmed that there no national revocation proceedings had been instituted and therefore the court was satisfied that the claims were within its international jurisdiction and competence.

The UPC's enthusiastic use of its long-arm jurisdiction will no doubt continue to change the European patent litigation landscape and underscore the UPC as an attractive destination for cross-border patent litigation. Quite how far the UPC will extend its long-arm jurisdiction – and how third-country jurisdictions might respond – remains to be seen.