The Court of Appeal (CoA) of the Unified Patent Court (UPC) ruled that the UPC has international jurisdiction for alleged infringement actions that originate outside the UPC’s Member States. Dish and Sling v. AYLO, Case No. UPC-CoA-188/2024 (CoA UPC Sept. 3, 2024) (Grabinski, Pres. CoA; Barutel, Blok, JJ.)

In its ruling, the CoA upheld the order of the Court of First Instance Local Division Mannheim. In the main proceedings, Dish and Sling brought an infringement action against AYLO. The patent in dispute concerned a method for presenting rate adaptive streams from a media player. AYLO was accused of indirectly infringing the patent in numerous UPC Member States, including Germany, by offering and supplying the video files made available for streaming and the media players for streaming videos. AYLO lodged a preliminary objection requesting that the infringement action be dismissed for lack of UPC jurisdiction, Rule 19.1(a) of the UPC Rules of Procedure. After the preliminary objection was rejected, AYLO lodged an appeal against the order of the Local Division Mannheim.

AYLO argued that the UPC does not have international jurisdiction on the basis of Article 7(2) in conjunction with Article 71b(1) of the Brussels I Recast Regulation because the harmful event would not occur in a UPC Member State since AYLO’s servers are located in the United States. The CoA disagreed, explaining that the Article 7(2) phrase “place where the harmful event occurred or may occur” is intended to cover both the place where the damage occurred and the place of the event giving rise to the damage. Consequently, the alleged infringer can be sued in either place.

The UPC has international jurisdiction with respect to an infringement action under two conditions:

• The European patent in suit has effect in at least one contracting Member State.
• The alleged damage may occur in that particular Member State.

Therefore, irrespective of the location of AYLO’s server, the UPC had jurisdiction over the infringement action because AYLO’s websites are accessible in Germany where the patent has effect. This access was sufficient to satisfy the likelihood of damage, which was allegedly caused via the internet. Users in Germany can obtain means (media players and video files) that allegedly relate to an essential element of the patented invention and are suitable and intended for putting the invention into practice. The CoA clarified that it is not necessary for a website to be directed at users in the territory of the concerned Member State. The actual availability of access to the website and damage to the European patent owner in a Member State are decisive.

Practice Notes:

• While UPC courts may consider infringement allegations in a case when evaluating UPC jurisdiction, that consideration is limited to the context of what the patent owner must prove to establish its allegations. Argument as to the specific requirements of the infringement allegations is not necessary. In the reported case, which was based on allegations of indirect infringement, it was not necessary to determine whether AYLOS’s alleged acts actually constituted patent infringement in the Member State (i.e., whether the end-user stations actually carried out the claimed method). This may not be the case where an infringement allegation is predicated on acts of direct infringement.
• The UPC explicitly left open the question of a possible requirement of a country-by-country assessment of the UPC’s jurisdiction pursuant to Article 71b(1) of the Brussels I Recast Regulation. This country-by-county assessment could be an issue in future cases.
• As a result of the decision, the UPC’s jurisdiction is significantly broadened, especially in the digital age, as most websites are globally accessible, and the ruling only requires their availability in a Member State where the allegedly infringed patent has effect – regardless of where the alleged infringer is located or operates.