HL Display AB v. Black Sheep Retail Products B.V., Decision CFI UPC Local Division of the Hague, 10 October 2025, Case no. UPC_CFI_386/2024
Infringement action about shelf dividers. Patent valid and infringed. Indirect infringement. Long-arm jurisdiction.
Facts
HL Display filed an infringement action for the UPC, non-UPC but EU countries (like Poland) and non-EU but Lugano countries (like Switzerland, Liechtenstein and Norway) and non-EU countries (like the UK).
Black Sheep denied infringement, counterclaimed for revocation of the patent and a declaration of non-infringement regarding a modified product which – compared to the attacked product – allegedly contains a further non-infringing element.
The Court
1. The defendant is a Dutch company.
2. The Court has long arm jurisdiction for all the countries for which the patent has been validated. The defendant declared to have not instituted revocation actions in any of the non-UPC countries and that the invalidity arguments for such countries are raised as defence. The Court therefore decided that for EU and Lugano countries, it would evaluate whether a serious non-negligible chance exists that the patent would be invalidated. Regarding non-EU (and non-Lugano) member states the Court may make an inter partes decision on validity.
3. Competence with respect to the counterclaim was not disputed.
4. The counterclaim is not admissible because of R. 61.1(a) and (b) RoP, which requires that the defendant has first tried in vain to obtain a written acknowledgement from the patentee out of court. According to the Court the institution of the counterclaim for a declaration of non-infringement for a different product than for which infringement is alleged, cannot be considered as fulfilling the requirement of R. 61.1(a) RoP.
5. The Court decides who is the skilled person.
6. The Court interprets the claim features referring to the Court of Appeal’s decision in Nanostring (UPC_CoA_335_2023), adding that “generally the description and drawings do not limit the subject matter of the claimed invention” referring to the Local Division Düsseldorf’s decision in Fujifilm v Kodak (UPC_CFI_355/2023) and that “[i]t is also noted that as has been considered by the UPC a claim need not to be limited to preferred embodiments. Nevertheless in special circumstances it can be clear to the skilled person that the description and drawings are in fact intended to limit the claim e.g. to specific embodiments”.
7. The Court does not accept the very limited claim construction of Black Sheep (reading features from the description in the claim while they are not mentioned in the claim).
8. The patent is inventive. The Local Division The Hague sticks to the problem-solution-approach because both parties used it (using one realistic starting point).
9. The patent is infringed, and as Black Sheep did not sufficiently dispute that it committed infringing acts until the change to product 2, no further proof is necessary.
10. The fact that Black Sheep ceased its sales of product 1 (the infringing product) is insufficient for not imposing an injunction and/or require a bond for enforcement.
Comment
1. The case shows that when the defendant is an Art. 4 Brussels I bis Regulation (“BR”) company (i.e. a company sued in his home court), there can be no discussion that the decision of the Court of Justice of the European Union (“CJEU”) in BSH v Electrolux is applicable. In this case, that was straightforward because the Dutch company was sued in the Local Division in The Hague. But what if the Dutch company would have been sued before the Local Division in Brussels (which on the basis of the internal competence rules of the UPCA would also be competent to hear the case because the Dutch company also infringed in Belgium)? Is the Brussels Local Division also the home court of the Dutch company? One could argue that it is, because there is only one court concerning the whole of the UPC territory. On the other hand, first instance Divisions of the UPC often talk about having international jurisdiction, when talking about decisions covering the other UPC countries. So should Art. 4 BR be interpreted such that only the Local Division of the country where the defendant is domiciled is the “home court” (and if there is no Local Division, the Central Division)?
2. During the last Venice Conference, BSH v Electrolux was discussed and the question was raised if the decision also applies with respect to Art. 8 (1) or 7 (2) BR defendants (i.e. jurisdiction based on “multiple defendants” or “location of the infringement” respectively), or that that should be clarified by another referral to the CJEU. One realizes that this is irrelevant for UPC-established companies if you accept that in the UPC they are always an Art. 4 BR defendant (i.e. a defendant sued in his home court), irrespective the internal rule on the basis of which they are sued.
3. However, if the Dutch company would have sold to the UK, to its UK distributor in the UK (which could be a UK subsidiary company), it is certainly different in such a case if you also sue the UK company. Because of Art. 71b (2), even though the UK defendant is not domiciled in an EU Member State, Art. 8 (1) BR may be applicable.
4. I say may be applicable, because a decision of the UPC with respect to the UK can be different from a decision of a UK Court with respect to the UK (with respect to the same UK entity). However, can these decisions be considered as ‘conflicting decisions’, as these decisions cannot be executed in the other country? Surely, in practice they will probably be considered as conflicting, because if the UK entity continues to sell in the UK, it will forfeit penalty sums imposed by the UPC Court, and if it has any assets in the EU, they may be at risk. Moreover, different material decisions about the same European patent can be seen as “conflicting”, but not automatically for the CJEU under its decision in Roche v Primus, in which it distinguished between the different national parts of a European patent.
5. If we reach the conclusion that Art. 8 (1) BR cannot give jurisdiction against non-EU/Lugano defendants, then Art. 71b (3) BR suddenly becomes relevant as a basis for jurisdiction over a defendant not domiciled in an EU member state. Or could you say that, even if you would in principle accept jurisdiction under Art. 8 (1) BR, this would not be applicable to infringement in non-EU countries because of the lex specialis of Art. 71.b (3) BR?
6. At least the above suggestions could somewhat silence the criticism of our European UK friends, who branded the application of what is now article 8(1) BR (then Art. 6(1) Brussels Convention) as “cowboy justice” in the late 1980s/beginning of the 1990s. Yet, there has never been a so-called cross-border decision including the UK in which a Dutch court came to a different conclusion with respect to validity or infringement than a UK court.
7. Anyway, if we see what the UK courts do in SEP cases nowadays, you could say “the pot calls the kettle back”.
8. As the defendant sensibly did not dispute the competence of the Dutch court and stated that it simply raised the invalidity as a defence for the countries outside the UPC without stating that the validity would be differently judged under the national law of these countries, this was a rather straightforward case under BSH v Electrolux.
9. If you already have replaced the infringing product by an (allegedly) non-infringing product, then this case seemed the perfect case for mediation in the PMAC after the written statements, if PMAC had been already in existence.
The comment was previously published here in UPC Unfiltered.
The decision can be read here.
