1. Key takeaways
1) Art. 7(2) in conjunction with Art. 71b(1) of the Brussels I recast Regulation must be interpreted as meaning that the UPC has international jurisdiction in respect of an infringement action where the European patent relied on by the claimant has effect in at least one Contracting Member State and the alleged damage may occur in that particular Contracting Member State. Where the damage is allegedly caused via the internet, the likelihood of such damage may arise from the possibility of obtaining products and/or using services from an internet site accessible within the territory of the Contracting Member State where the European patent has effect.
15) The harmful event put forward by DISH and SLING in their
Statement of claim is that AYLO through its websites offers and
supplies video files and media players to end-users in, inter alia,
Germany, which, when operating on the end-user stations, perform
the method claimed in the patent in suit. DISH and SLING argue that
this constitutes an indirect infringement of the patent at issue.
This is sufficient to establish the jurisdiction of the UPC
pursuant to Art. 7(2) in conjunction with Art. 71b(1) of the
Brussels I recast Regulation, since (as is not disputed) the patent
at issue has effect in, inter alia, Germany, and (that) AYLO's
websites are accessible in, inter alia, Germany.
16) AYLO's complaint that DISH and SLING have not submitted
that AYLO's servers are located within the territory of the
Contracting Member States must be rejected. Where, as in the
present case, the damage within the meaning of Art. 7(2) of the
Brussels I recast Regulation is allegedly caused via the Internet,
the likelihood of such damage arises from the possibility of
obtaining products and/or using services from a website accessible
within the territory of the Contracting Member State in which the
European patent has effect, even if the server is located outside
that territory (see paragraph 13 above). More specifically, the
likelihood of damage in this case arises from the accessibility of
AYLO's websites through which users in the Contracting Member
States can obtain means (media players and video files) which,
according to DISH and SLING, relate to an essential element of the
patented invention and are suitable and intended for putting the
invention into practice.
2) The identification of the place where the harmful event occurred or may occur within the meaning of Art. 7(2) of the Brussels I recast Regulation, does not depend on criteria which do not appear in this provision and which are specific to the examination of the merits, such as the conditions for establishing an indirect infringement within the meaning of Art. 26 UPCA.
12)vii) (...) At the stage of examining the jurisdiction of a
court to adjudicate on damage caused, the identification of the
place where the harmful event giving rise to that damage occurred
for the purposes of Article 7(2) of the Brussels I recast
Regulation cannot depend on criteria which are specific to the
examination of the substance and which do not appear in that
provision. Article 7(2) lays down, as the sole condition, that a
harmful event has occurred or may occur (see, Pinckney, paragraph
41);
viii) Thus, unlike Article 17(1)(c) of the Brussels I recast
Regulation, which was interpreted in Joined Cases C‑585/08
and C‑144/09, Article 7(2) thereof does not require, in
particular, the activity concerned to be 'directed to' the
Member State in which the court seised is situated (see, Pinckney,
paragraph 42);
3) The place "where the actual or threatened infringement has occurred or may occur" as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place "where the harmful event occurred or may occur" of Art. 7(2) of the Brussels I recast Regulation is interpreted in relation to alleged patent infringements.
26) The Court of First Instance assumed that the place "where the actual or threatened infringement has occurred or may occur" as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place "where the harmful event occurred or may occur" of Art. 7(2) of the Brussels I recast Regulation is interpreted in relation to alleged patent infringements. The Court of Appeal shares this view because the provisions have a similar purpose, namely to define a ground of jurisdiction or competence on the basis of the connection between the subject-matter of the dispute and the court or division respectively.
4) The list of preliminary objections of R. 19.1 RoP must be regarded as exhaustive. The application of R. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.
32) R. 19 to 21 RoP provide for a special procedure for deciding
on preliminary objections. This procedure differs in several
respects from the general procedure for dealing with defences (R.
23 et seq. RoP) and the special procedure for deciding actions
which are manifestly inadmissible or manifestly lacking any
foundation in law (R. 361 RoP). For example, the failure to lodge a
preliminary objection within the time period is treated as a
submission to the jurisdiction of the Court and the competence of
the division (R 19.7 RoP), the preliminary objection is decided by
the judge-rapporteur (R. 20.1 RoP) and the decision or order of the
judge-rapporteur is subject to appeal under certain conditions (R.
21 RoP). Against this background, the list of preliminary
objections of R. 19.1 RoP must be regarded as exhaustive. The
application of R. 19 to 21 RoP therefore cannot be extended to
other defences, such as abusive procedural conduct and manifest
lack of foundation.
33) The limited scope of the preliminary objections procedure does
not, however, prevent the judge-rapporteur, the presiding judge or
the panel from using case management powers to identify issues at
an early stage, to decide the order in which issues are to be
resolved, to direct a separate hearing to any issue and to dismiss
a claim after a decision on a preliminary issue makes a decision on
further issues irrelevant to the outcome of the action (see, to
that effect, R. 332(b) and (d) and R. 334(d), (e) and (g) RoP).
Thus, the judge-rapporteur, the presiding judge or the panel may
decide to deal with a particular defence, such as abusive
procedural conduct or manifest lack of foundation, at an early
stage of the proceedings.
2. Division
Luxembourg Court of Appeal
3. UPC number
UPC_CoA_188/2024
ORD_42716/2024
4. Type of proceedings
Appeal against order rejection Preliminary Objection
5. Parties
APPELLANTS and Defendants in the main proceedings:
- AYLO PREMIUM LTD (Nicosia, Cyprus)
- AYLO BILLING LIMITED (Dublin, Ireland)
- AYLO FREESITES LTD (Nicosia, Cyprus)
RESPONDENTS and Claimants in the main proceedings:
- DISH TECHNOLOGIES L.L.C. (Englewood (CO), United States)
- SLING TV L.L.C. (Englewood (CO), United States)
6. Patent(s)
EP 2 479 680
7. Body of legislation / Rules
Art. 7(2) in conjunction with Art. 71b(1) Brussels I recast, Art. 30(2) Brussels I recast, Art. 33(1)(a) UPCA, Rule 19.1 RoP
To view the full article, click here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.