Short Summary
This appeal concerned a dispute over European patent EP 2 044 709 B1, which had effect only in Germany. The Court of Appeal of the Unified Patent Court held that while Articles 29 to 32 of the Brussels I recast Regulation apply to UPC proceedings during the transitional period under Article 83 UPCA, they did not require the UPC to decline jurisdiction because the German revocation action and the UPC proceedings did not involve the same parties. However, the Court of Appeal granted Mala's auxiliary request to stay the UPC revocation proceedings pending a final decision by the German Federal Court of Justice (BGH) in the parallel German revocation proceedings.
Detailed Summary
Mala Technologies Ltd. is the proprietor of European patent EP 2 044 709 B1, which has effect only in Germany. On 29 April 2021, Nokia Solutions and Networks GmbH & Co. KG filed a revocation action against Mala with the German Federal Patent Court, seeking to invalidate the German part of the patent. On 18 July 2023, the German Federal Patent Court dismissed the revocation action and upheld the patent in its entirety. The written decision was served on the parties in December 2023.
On 15 December 2023, Nokia Technology GmbH filed a revocation action with the Court of First Instance of the Unified Patent Court (Central Division, Paris seat). On 15 January 2024, Nokia Solutions filed an appeal against the German Federal Patent Court's decision with the Federal Court of Justice (Bundesgerichtshof, BGH).
On 16 February 2024, Mala lodged a preliminary objection in the UPC revocation action, requesting the Court to either decline jurisdiction or, alternatively, stay the proceedings until the BGH issued a final decision. The Court of First Instance rejected the preliminary objection in its order dated 2 May 2024, holding that Articles 29 to 32 of the Brussels I recast Regulation were not applicable to the UPC, and that there was no legal basis for staying the proceedings.
Mala appealed. On appeal, the Court of Appeal addressed three key legal questions: (1) whether Articles 29 to 32 of the Brussels I recast Regulation apply to UPC proceedings during the transitional period under Article 83 UPCA when parallel national proceedings were initiated before the transitional period; (2) whether Article 31 departs from the general principle of Article 29 regarding the requirement of same cause of action and same parties; and (3) whether a request for a stay under Article 30 constitutes a preliminary objection under Rule 19 RoP.
The Court of Appeal held that Article 71c(2) of the Brussels I recast Regulation must be interpreted in light of the objective of Articles 29 to 32, meaning these provisions apply where proceedings are pending before both the UPC and a national court during the transitional period, even if the national proceedings were initiated prior to the transitional period. The Court also held that Article 31 does not depart from the general principle of Article 29, which requires declining jurisdiction only if proceedings involve the same cause of action and the same parties. Additionally, the Court held that a request for a stay under Article 30 is a preliminary objection within the meaning of Rule 19 RoP.
Despite finding that Mala's complaint regarding the non-applicability of Articles 29 to 32 was well founded, the Court of Appeal concluded that these provisions did not require declining jurisdiction because Nokia Technology GmbH and Nokia Solutions and Networks GmbH & Co. KG are not the same party. The Court relied on CJEU case law on the concept of 'same parties' and recital 22 of the Brussels I recast Regulation, noting that the two Nokia entities are separate legal persons, even if they belong to the same group.
However, the Court of Appeal granted Mala's auxiliary request to stay the UPC proceedings. The Court found that a stay was warranted under Rule 295(m) RoP in the interests of the proper administration of justice. The Court noted that the German revocation action was at a more advanced stage, with a first instance decision already issued and the case pending before the court of last instance (BGH), while the UPC proceedings were only at the first stage of first instance. A stay would avoid the costs of conducting the largest part of the UPC proceedings if the parties settled the case based on the BGH decision.
The Court of Appeal also declined to refer questions to the CJEU, finding that the outcome would be the same regardless of the interpretation of Article 71c(2), since Articles 29 to 32 do not require declining jurisdiction when the parties are different, and a stay would be granted under Rule 295(m) RoP in any event.
The final order: (1) set aside the impugned order insofar as it rejected the request for a stay until a final decision by the BGH; (2) rejected the appeal insofar as it related to other parts of the impugned order; and (3) ordered a stay of the UPC revocation proceedings until the BGH issued a final decision in the German revocation proceedings or those proceedings were otherwise concluded.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in Mala Technologies Ltd. vs Nokia Technology GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
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