Fives v REEL (UPC_CoA_30/2024)
Decision date:
16 January 2025
Osborne Clarke summary
- Before the entry into force of the UPCA, Fives brought an action against (among others) REEL before the Düsseldorf Regional Court (Germany), for infringement of the German part of EP 740. The patent concerned a compact service module for installations for the electrolytic production of aluminium. On 9 August 2022, the Düsseldorf Regional Court issued a judgment where it established that REEL was liable to compensate Fives for all damage that it had suffered and would suffer as a result of acts of patent infringement. This judgment was not appealed.
- Fives subsequently brought an action before the Hamburg LD, requesting determination of damages under Article 32(1)(f) and Article 68(1) UPCA, and Part 1, Chapter 4 of the RoP to compensate it for the damages it had suffered due to REEL's patent infringing offers in Germany in accordance with the judgment of the Düsseldorf Regional Court.
- REEL lodged a preliminary objection, maintaining that the Hamburg LD did not have jurisdiction to make the damages determination pursuant to Article 32(1) UPCA. The Hamburg LD upheld REEL's preliminary objection, holding that the UPC did not have jurisdiction for actions for the determination of damages on the basis of patent infringement proceedings that had become final before a national court. Fives appealed the decision.
- The Court of Appeal disagreed with the Hamburg LD, holding that the UPC's competence included dealing with separate actions for the determination of damages after a national court had established the existence of an infringement of a European Patent and an obligation principle for the infringer to pay damages.
- REEL had pointed to the potential adverse consequences related to forum shopping by moving from one set of legal provisions to another (German national law to the UPCA). The Court of Appeal described these arguments as "not entirely without merit" but said that they must be rejected as the concept of different applicable laws being applied by the national courts and the UPC was already envisaged by the transitional regime.
Issue
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