Fives: A landmark victory before the Unified Patent Court (UPC)

Major victory for Fives before the Court of Appeal of the Unified Patent Court (UPC) regarding its jurisdiction over damages claims in a patent infringement case.

The Court of Appeal confirmed the UPC’s jurisdiction to handle claims for damages related to acts of patent infringement, including those committed before the entry into force of the UPCA on June 1, 2023, provided the European patent in question has not expired. This decision concerns service modules for aluminum production and follows a final ruling by the Regional Court of Düsseldorf on August 9, 2022, where a competitor was ordered to compensate Fives for infringing European patent EP 1 740 740 B1.

Fives filed an action before the UPC in August 2023 to determine the damages. Initially, the Local Division in Hamburg rejected the claim, arguing that the UPC was not competent to handle a separate action for damages after a final national judgment. However, after an appeal, the Court of Appeal disagreed and confirmed the UPC’s jurisdiction for this separate action.

This victory overturns the decision of the Local Division of Hamburg from November 17, 2023 (UPC_CFI_274/2023) and refers the case back to the same division for a decision on the merits. This judgment represents an important step forward for handling damages claims within the European patent judiciary system.

Read the full decision here.

Fives is a French industrial engineering group with over 200 years of experience designing machines, equipment, and production lines for major global industries, from the railway sector to the elevators of the Eiffel Tower.

Plasseraud IP has been supporting Fives for over 20 years in all stages of patent management. This victory before the Court of Appeal of the UPC, along with our previous successes, showcases our expertise in navigating new European procedures and foreign jurisdictions.

We sincerely thank Fives ECL for their trust and congratulate all the teams involved in this success, particularly Konstantin Schallmoser, Daniel Hoppe and Carl-Alexander Dinges from Bonabry who represented Fives before the UPC, and Denis Boubal, Partner, UPC Representative, European & French Patent Attorney, and Claus-Michael Mayr, Consultant, European & German Patent Attorney at Plasseraud IP whose works enabled that the Federal Court of Justice Karlsruhe upheld the patent in stake in the revocation action appeal proceedings, only a few weeks ago.