Fives v REEL (UPC_CFI_559935/2023)

• Fives filed a claim for damages following a German national infringement case in which it had been found to infringe the patent at issue. REEL filed a preliminary objection under Rule 19.1(a) RoP asserting that the Hamburg LD did not have jurisdiction to hear an application for damages under Article 32(1) UPCA, which conclusively lists those actions for which the UPC has competence.
• The Düsseldorf Regional Court had already made a decision on the infringement of the patent, in which Fives was injuncted and ordered to pay damages (amount to be determined). That verdict was final as neither party had appealed. As such, the court decided that it did not have jurisdiction to hear the action for a determination of damages for patent infringement proceedings that had already been fully concluded before a national court. In doing so, it upheld REEL's preliminary objection.
• Under Article 32(a) UPCA, the UPC only has jurisdiction to determine damages after a previous action for patent infringement before the UPC. Additionally, Article 32(f) UPCA establishes jurisdiction only for actions for damages or compensation based on the provisional protection conferred by a published EP application. Neither of these provisions were applicable in this case.

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