Landmark ruling of CJEU with significant impact on european patent litigation strategies

Earlier this week, the CJEU has issued its long-awaited ruling in the matter of BSH vs Electrolux (CJEU, judgement of February 25, 2025, C-339/22), thereby significantly expanding the possibilities for both the UPC and national courts in the EU Member-States to grant cross-border injunctions and decide on matters of patent infringement in countries outside the respective court’s own territory.

In its final and non-appealable ruling, the CJEU responded to several questions on the interpretation of the Brussels I-bis Regulation (“BR”). These were raised by a Swedish Court when confronted with BSH’s request to decide on the alleged infringement by Electrolux of all national parts of its European bundle patent, including in a non-EU state. The Swedish court was principally tasked to render a decision on these requests, considering Electrolux is a Swedish company and that Art. 4 (1) BR grants the courts of the EU-Member States general jurisdiction over all infringing acts committed by a person or company domiciled in their respective territory (irrespective of where the act occurs).

However, Art. 24 (4) BR limits such jurisdiction for cases concerning the “validity of patents”. So far, and following a number of earlier CJEU rulings (in particular: Roche v. Primus, Solvay v. Honeywell and GAT v. LUK), this limitation had been understood to apply as soon as a validity challenge had been brought by a defendant in any of the foreign countries concerned. As this challenge is generally available to any defendant, the above understanding and corresponding court practice led most patent owners in the past years to limit their litigation at a national court in the EU (or now also at the UPC) to infringing acts having occurred in the actual territory of the respective court.

The CJEU has now clarified the scope of Art. 24 (4) BR in relation to patent infringement cases. In the view of the CJEU, the “validity of patents” mentioned in Art. 24 (4) BR only concerns validity challenges that would lead to an erga omnes nullification of the attacked patent. These challenges still need to be brought in the courts of the patent concerned, e.g. at the Bundespatentgericht in case of a German validation of an EP.  In view of the CJEU, Art. 24 (4) BR does not however apply to an inter partes validity defense raised against a patent infringement claim. Consequently, even if an invalidity challenge was brought in a foreign country, Art. 4 (1) BR would still allow the court of the EU Member-State in which the infringement case has been brought to rule on the infringement in such foreign country, by assessing and taking into account the validity challenge in the foreign country for its inter partes decision.

This ruling is expected to have significant implications for global patent litigation and corresponding strategies, only some of which are:

• The patent owner may now sue any EU-based defendant in the national courts of its domicile for patent infringement in any country (worldwide), including the request for an injunction and/or damages. Obviously, the question of infringement would then need to be determined on the basis of the applicable foreign law, which could then lead to the necessity of multi-national litigation teams, expert opinions on foreign law, as well as some possible “twist and tweaks” in relation to how a European court may assess and apply foreign (e.g. US) law.
• Similarly, the owner of a non-opted-out (or opted-in) EP may now sue any defendant domiciled in a UPC member state at the UPC in relation also to EPC states which are not part of the UPC system. In fact, there is already some early precedent in this regard (even predating the CJEU’s decision), namely the LD Dusseldorf’s decision of 28 January 2025 in the matter of Fujifilm vs. Kodak, UPC_CFI_355/2023). Here, the UPC accepted jurisdiction also in relation to alleged infringement of an EP in the UK.
• While granting broad jurisdiction to national courts and the UPC, the CJEU has accepted that an invalidity challenge in a foreign country is to be considered by the infringement court and could also lead to a potential stay of the infringement case. For defendants, this could imply the need to bring multiple invalidity attacks in national courts at the same time, if patent owners decide to bring an infringement action in only one national court for infringement in various countries. Depending on the scale of such action and the number of countries involved, this could put significant economic pressure upon defendants, who obviously will need to advance most of these costs.
• One of the big questions left open by BSH vs. Electrolux is the precise scope of the concept of “domicile”, including the highly relevant question of whether joint defendants could be sued using the aforesaid regime, if only one of them does in fact have a place of business in the relevant EU Member-State. While earlier case law of the CJEU provides for some guidance in this regard, there will certainly be many attempts to broaden this concept and hopefully some clarifying decisions in the months and years to come.
• Lastly, the question of enforcement lingers upon the decision by the CJEU. In case that local authorities of a state, which the decision on infringement extends to, but is not the state of the court seised, are needed to enforce the decision, it is likely that there will be significant pushback by that state, inferring jurisdictional/judicial overreach (especially in the case of a non-EU or non-EPA third party state). Where, however, no help from local authorities of a state, to which a decision extends, is needed, such possible “enforcement-gap” should not be of issue.

For patent owners and possible defendants alike, this is a significant development  that has to be taken into account when planning enforcement strategies or considering the corresponding risk of doing business in the EU. While the discussion of possible further implications of this landmark ruling is evolving rapidly, we will provide further updates within due course.