Belkin v Koninklijke Philips (UPC_CoA_683/2024. UPC_CoA_19/2025 & UPC_CoA_534/2024)

• Philips is the proprietor of the standard essential patent (SEP) in suit relating to the Qi wireless charging standard. The defendants are companies in the Belkin group and include the managing director and various directors of Belkin companies (together referred to as Belkin).
• In 2019, Philips brought an action against the second and fourth defendants in the Düsseldorf Regional Court for infringement of the German part of the patent in suit. This was dismissed by the Düsseldorf Regional Court and the appeal was dismissed as inadmissible at the Düsseldorf Higher Regional Court in 2024. Meanwhile, Belkin filed a nullity action with the German Federal Patent Court in 2022, which was dismissed in a (non-final) judgment in 2024 (appeal pending).
• At the UPC, Philips brought an infringement claim against Belkin in the Munich LD, alleging that the challenged embodiment fulfilled all the features of claim 20 of the patent and it sought injunctive relief in Germany, Belgium, France, Finland, Italy, the Netherlands, Austria and Sweden. Belkin filed a revocation counterclaim.
• Philips was successful at the Munich LD against the Belkin companies – injunctive relief was granted, as well as the provision of information, damages and publication of the judgment ordered. The Munich LD also found the managing directors liable as intermediaries under Article 63(1) UPCA (rather than as "infringers"). The order prevented the managing directors from performing their duties in a way that resulted in infringing activities by the companies. In all other respects, Philips' claims were dismissed, as was Belkin's revocation counterclaim.
• Belkin appealed against the infringement findings, the dismissal of its revocation action and the findings against the Belkin directors. Philips appealed against the Munich LD's refusal to order product recall and against the decision relating to Belkin's directors, claiming that they should have been ordered to cease and desist, provide information about the infringement and pay damages.
• Firstly, the Court of Appeal dismissed Belkin's appeal relating to the revocation counterclaim, upholding the Munich LD's decision on claim construction. Notably, the Court of Appeal decided that statements made by the applicant during prosecution can be seen as "an indication of the understanding of the skilled person on the filing date". However, in this case, the Court of Appeal said that no other interpretation of the feature in dispute than that found by the Munich LD could be inferred from Philips' statements during prosecution.
• Secondly, Belkin had sought to argue that the UPC was bound by the decision and reasoning from the Düsseldorf Higher Regional Court (which had dismissed Philips' infringement action against the second and fourth defendants) in accordance with Article 36 recast Brussels regulation.
• The Court of Appeal held that Article 36 could not be applicable to Belkin International Inc as it had not been a party to the German national proceedings. The Court of Appeal, therefore, held that German law was decisive as to the legal effect of the national decision. It concluded that, under German law, the final judgment is generally effective for and against the parties and that the conditions under which res judicata is exceptionally applied to third parties were not applicable here.
• The Court of Appeal continued that, under German law, only the decision and not the underlying reasons would be binding. Article 34 UPCA concerns only the territorial scope of decisions of the UPC and therefore it could not be inferred from Article 34 UPCA that the UPC is bound by a decision of a national court. The court held that a res judicata decision of a UPC member state would preclude a decision of the UPC for the territory of that member state (i.e. here Germany in relation to the second and fourth defendants), but that does not mean that the UPC's decision excludes other UPC member states.
• Thirdly, the Court of Appeal upheld the Munich LD's decision that the Belkin companies infringed claim 20 of the patent in suit. However, the Munich LD's decision regarding the Belkin directors' liability as intermediaries was overturned. The Court of Appeal helpfully gave some guidance on who can be an "infringer" and who can be an "intermediary".
• The Court of Appeal noted that the UPC can issue an injunction against an infringer and against intermediaries whose services are used by a third party for the purpose of infringement.
• Article 63(1) UPCA does not define who an infringer is. Taking into account that Article 25 UPCA gives the proprietor of a European patent the right to prohibit third parties from carrying out the acts specified in that provision, the "infringer" within the meaning of Article 63(1) UPCA is taken to be the "main offender" or the "principal infringer", that is, the person who carries out the acts themselves. Thus, the court can issue an injunction against the main offender in accordance with Article 63 UPCA without them being aware of the patent infringement or at fault. Article 63 and Article 25 UPCA together provide patent proprietors with the ability to prohibit and immediately terminate the use of their invention by a third party without their consent. Only a third party who has direct or indirect control over the act of use is in a position to terminate that use and comply with an injunction.
• However, an "infringer" is also a person who does not themselves perform the acts in Article 25 UPCA, but to whom the acts of the principal offender are attributable because they are "an instigator, accomplice or accessory". Thus, an injunction can be ordered against a "co-perpetrator" as well. Complicity presupposes that the perpetrators "work together on the basis of a common plan of action". An aider or abettor who supports the acts of the principal infringer must not only be aware of the infringing acts, but also realise that those acts amount to infringement (i.e. be aware of the unlawfulness of those acts).
• On the basis of these principles, a managing director can be regarded as an infringer. But, merely holding the position does not make them an accomplice or accessory to the patent infringement. A claim against a managing director as an accomplice or accessory would be excluded if they have no control over the actions. The liability of the managing director depends on whether the acts under Article 25 UPCA are attributable to them as an instigator, accomplice or accessory.
• Knowledge of the patent infringement does not only require the managing director to be aware of the circumstances from which the infringement arises, but it is also necessary that the managing director knows that the company is committing patent infringement and (although possible and reasonable) they do not take action to stop it. The Court of Appeal noted that if the managing director obtains legal advice on the question of patent infringement, they can generally rely on that until a first instance decision establishing patent infringement by their company has been issued. A managing director would also be regarded as an infringer if their behaviour goes beyond the typical duties of a managing director, for example, if they were using the company for the purposes of committing patent infringement. In light of these principles, the Belkin managing directors were not held to be infringers as they did not have the necessary awareness of unlawfulness.
• Additionally, the Belkin managing directors could not be held liable as intermediaries because a managing director of a company cannot be a "third party" in relation to that company. As such, they cannot be an intermediary within the meaning of Article 63 UPCA.
• Next, Belkin unsuccessfully challenged the injunction against Belkin International Inc with regard to Italy, France and the Netherlands. Belkin International is the owner of the relevant website domains that advertised the attacked embodiments. The Court of Appeal held that this already constitutes "an offer" under Article 25 UPCA. The court clarified that the term "offering" in Article 25(a) UPCA is to be determined autonomously. Offering is understood in the economic sense and not based on the legal understanding in the sense of a binding contractual offer. The offer does not need to contain all of the details that would be necessary for the immediate conclusion of a contract.
• Lastly, Philips was successful in its appeal against the Munich LD's dismissal of its applications for recall and removal of the infringing products from the Belkin companies' distribution channels. Although the Court of Appeal acknowledged that recall and removal can be burdensome, that does not justify not granting the measures if the patent proprietor can expect further infringing use.
• Overall, the Court of Appeal amended the Munich LD's order to reflect that: i) the Belkin companies were ordered to recall and remove the infringing products from their distribution channels and destroy them; ii) the consequences of the actions of the second and fourth defendant in Germany were excluded from the decision because of the German national decision and the effect of Article 36 recast Brussels Regulation; iii) the imposition of penalty payments on the Belkin companies in the event of a breach of the decision/further infringement.

This analysis is based on a machine translation of a decision not available in English.