Last month the UPC handed down its first main action decision on a standard essential patent (SEP) in Philips v Belkin (UPC_CFI_390/2023). In the decision the court found the patent valid and infringed by Belkin, and awarded a permanent injunction covering eight countries. Somewhat unusually for an SEP case, there was no FRAND defence in play and so there is still some waiting to do before the first UPC main action decision on FRAND issues. In the meantime, we have covered some of the UPC's interim decisions that shed light on its approach to FRAND in an article here.
Of wider interest in this decision is the fact that the court held several directors of Belkin liable alongside Belkin itself. It did so under Article 63(1) of the UPC Agreement (UPCA), which allows an injunction to be granted against intermediaries: "The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent." The order against the directors was only given in relation to the injunction and the court did not find them directly liable for any damages. Nevertheless, if other UPC courts adopt the same approach then directors will need to be aware of this potential liability in the UPC system and it may give enforcement actions in the UPC sharper teeth. The court ordered a penalty payment of €100,000 for each day the injunction is breached and provisional damages of €119,000.
The case is also of interest as a prior decision in the German national courts had found that the patent was not infringed by Belkin. This decision by the UPC shows that the new court is clearly willing to chart its own course and won't necessarily be swayed by related decisions in national proceedings. The prior German decision raised interesting issues around what happens when there are directly conflicting UPC and national judgments. In this case the UPC carved out Germany from its decision but only in respect of the defendants that had also been parties to the German proceedings.
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Andrew Moir
Partner, Intellectual Property and Global Head of Cyber & Data Security, London
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