Roku Inc & Anor v Sun Patent Trust (APL_15039/2025)

• Dolby and Sun Patent Trust filed infringement actions against Roku at the Munich LD. Roku filed a preliminary objection in both sets of proceedings and requested that the actions be dismissed as inadmissible or, alternatively, that the proceedings be stayed for questions to be referred to the CJEU on the UPCA's compatibility with EU law. The objections were dismissed by the judge-rapporteurs. Roku appealed to the Court of Appeal.
• The Court of Appeal dismissed Roku's appeals.
• Rule 19 RoP contains an exhaustive list of preliminary objections. The Court of Appeal confirmed that a preliminary objection to the court's competence, including its international jurisdiction, is permitted under Rule 19.1(a) RoP. However, the Munich LD had correctly assumed that the requirements for international jurisdiction under Article 31 UPCA, in conjunction with Articles 71a and 71b of the recast Brussels Regulation, were met in this case.
• Under Article 31 UPCA, the international jurisdiction of the court is determined by reference to Article 71a and 71b recast Brussels Regulation. Pursuant to Article 71b(1), a common court has jurisdiction where a national court would have had jurisdiction for a matter covered by the agreement establishing the common court. In this case, the agreement establishing the common court is the UPCA and the field of law is patent law, a field over which national courts had competence. As such, the Court of Appeal stated that Dolby and Sun Patent had "conclusively argued" that an act of infringement justifying the jurisdiction of the UPC had taken place.
• The Court of Appeal also confirmed that the argument that Article 32 UPCA (competence of the court) is not applicable can be a ground for a preliminary objection under Rule 19.1 RoP, but that was not successful here.
• The Court of Appeal was clear that, contrary to Roku's arguments, the allocation of international jurisdiction and competence of the UPC under Article 31 (in conjunction with Article 71a et seq of the recast Brussels Regulation) and Article 32 UPC do not constitute an interference with division of tasks between the CJEU and the national courts laid down in the Treaty on EU (TEU) or the Treaty on the Functioning of the EU (TFEU). The UPC is, as required by the CJEU, subject to appropriate mechanisms to ensure effectiveness of EU law. Accordingly, it was not necessary for the Court of Appeal to refer the question of compatibility to the CJEU.
• The Court of Appeal dismissed Roku's other claims. These included: i) the argument that there was a violation of the right to a lawful judge pursuant to the Charter of Fundamental Rights of the EU and European Convention on Human Rights (which the court said would not be admissible unless it fell within one of the exhaustive grounds for objection in Rule 19.1 RoP); and, ii) that there was a violation of the right to a lawful judge due to the lack of a CD in London under Article 7(2) UPCA (the Court of Appeal noted that the Administrative Committee of the UPCA was authorised under the UPCA to determine that Milan would replace London as a CD).
• Lastly, Roku's request to pay a single court fee across both appeals was rejected. Fees are payable for each appeal even when the appeals concern the same issues.

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