Q1 in Review: UPC Expands Its Reach as PTAB Sees Fintiv Revamp

NPE litigation increased significantly in Q1 2025, making it the busiest first quarter in nearly a decade: Such plaintiffs added 608 defendants to patent campaigns, or 47% more than in Q1 2024.

Meanwhile, the Patent Trial and Appeal Board (PTAB) faces newfound uncertainty as a result of recent changes from Acting USPTO Director Coke Morgan Stewart, who rolled back prior limitations on the Board’s use of the NHK-Fintiv rule and created a new two-stage institution process where the director addresses requests for discretionary denial prior to a panel’s evaluation of the merits.

The first quarter also saw a series of rulings that could dramatically expand the reach of the EU’s Unified Patent Court (UPC), as the court held it has the power to issue damages based on infringement judgments from foreign courts and asserted long-arm jurisdiction for the first time. However, the UPC could see increased competition as a pan-European patent venue due to a landmark judgment from the EU Court of Justice that could also encourage cross-border patent litigation by national courts.

Q1 was a particularly impactful period for standard essential patent (SEP) litigation as well. In February, the European Commission unexpectedly withdrew its proposal for an EU-wide SEP framework, while key developments also came in some of the world’s top SEP venues—including notable UK rulings on interim licenses and pool rate-setting claims, and a new approach to fair, reasonable, and nondiscriminatory (FRAND) licensing disputes recently adopted by one of Germany’s busiest courts.

This is also a pivotal time for the US IP system, with the new administration’s policy reforms potentially wielding enormous consequences for innovation, economic stability, and geopolitical relations. RPX has compiled an overview of recent policy developments in the US IP space, including patent-related bills pending before Congress; the White House’s picks for US Commerce Secretary and USPTO Director; and other recent changes at the USPTO.

One of the IP-related bills moving through the legislative branch relates to third-party litigation funding, an investment strategy that appears to be attracting more hedge funds to the patent space. The first quarter of 2025 saw at least two new patent litigation campaigns kicked off by plaintiffs that RPX has tied, based on public records, to New York City-based hedge funds.

Assignment records suggest that one of those hedge funds may have received a portfolio of patents during Q1. RPX flagged this patent transaction, and several others made public during the quarter, in light of the transacted portfolios’ origination, new owners, and/or evidence of third-party funding.

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RPX members will also soon have exclusive access to an on-demand RPX Community webinar covering highlights from this post; CLE credit may be available.

Additionally, the operating company data above leave out another distinct category of litigation filed by a small group of design and utility patent owners targeting copycats and counterfeiters selling products online. RPX excludes such “e‑seller” cases from analyses of district court litigation because they tend to follow a different dynamic compared to what one might consider the usual patent suit. These e‑seller cases sometimes name hundreds of defendant entities, many of which may be merely online storefronts or aliases for the same ultimate parent. Also, plaintiffs primarily seek injunctive relief instead of damages, and their cases often end with the e‑seller defendant’s failure to answer, followed by a default judgment.

This category of litigation is shown in grey below to illustrate its magnitude. As shown by the rightmost bar, e‑seller litigation in Q1 2025 accounted for 1,794 defendants added, or 67% of all litigation during the quarter—though this number remains subject to the caveat about defendants potentially having multiple online storefronts noted above.

Apart from the following graph, the other analyses in this report exclude pure design patent and e‑seller litigation.

The Eastern District of Texas has seen a resurgence in recent years: A longtime patent hotspot, the district was dethroned by the Supreme Court’s 2017 patent venue decision in TC Heartland. However, it vaulted back into first place in Q2 2023 after two unrelated developments caused a drop in NPE filings in the District of Delaware and the Western District of Texas, both of which had risen in popularity post-TC Heartland.

The NPE decline in Delaware was largely the result of two standing orders imposed by Chief Judge Colm F. Connolly in April 2022, one requiring litigants in his courtroom to provide extensive disclosures on their ownership and corporate control and the other mandating the disclosure of certain types of litigation funding. Beginning later that year, Judge Connolly proved that unlike many other courts with heightened disclosure requirements, he was actually willing to go to the mat to enforce those rules—extensively probing the activities of former top filer IP Edge LLC after it came to light that entities under its control had failed to make sufficient disclosures. That investigation led Judge Connolly to uncover what he deemed widespread “fraud” underpinning the business model of IP Edge and its affiliates, as a result of which he referred some of the individuals involved to various disciplinary authorities for related misconduct. The pressure ultimately led IP Edge to stop filing litigation altogether, while other NPEs have largely avoided Delaware since this saga came to a head—perhaps seeking to avoid similar scrutiny.

Some other volume filers have not been entirely scared away from Delaware, however—in some instances, their involvement only being revealed after their cases have ended up before Judge Connolly, forcing them to disclose more about their ownership and control than otherwise would have been required.

Meanwhile, NPEs have filed less litigation in the Western District of Texas in the wake of rule changes that targeted the patent caseload of District Judge Alan D. Albright. Judge Albright, a former patent litigator, openly and successfully sought to attract patent cases to his courtroom since taking the bench in late 2018, becoming the nation’s top patent judge by litigation volume in Q3 2019. The aforementioned rule changes, implemented in a July 2022 case assignment order, focused on the divisional filing rules that previously allowed plaintiffs to file directly in his courtroom by bringing cases in the Waco Division, where he is the only district judge. Instead, the order required that patent cases filed in Waco Division be randomly distributed across a larger set of judges in the district. A practice subsequently developed, though, by which new cases involving the same patents and parties as prior litigation were assigned to the previous judge, meaning that while his overall caseload had fallen significantly, Judge Albright still received the bulk of these “legacy” cases. A May 2024 order zeroed in on that practice, requiring that parties seeking to get their cases consolidated before a single judge must provide sufficient legal and factual justifications. Judge Albright has since moved to the Austin Division.

Relatedly, another West Texas judge appears to have taken steps to make his own courtroom an attractive destination for patent cases. Just one week after the July 2022 case assignment order took effect against Judge Albright, District Judge David Counts of the Midland-Odessa Division—also a former patent litigator—adopted a patent standing order based in large part on Judge Albright’s. Significantly, Judge Counts is the only district judge in Midland-Odessa, and since no special case assignment rules presently target his division, plaintiffs have been free to seek out his courtroom.

By all accounts they have done so: Judge Counts has steadily risen in the judge rankings, overtaking Judge Albright in mid-2024 and tying for fifth place last year overall. As of the first quarter of 2025, Judge Counts is now the number-two patent judge in the nation—albeit, at 6%, in a distant second place.

Holding a commanding lead once again was District Judge Rodney Gilstrap, whose seven-year term as East Texas’s chief judge ended on March 1, 2025—passing the torch to Chief Judge Amos L. Mazzant, who was appointed to the bench in 2014 by President Barack Obama.

Among the NPEs that filed the most E-Commerce and Software litigation this past quarter were a variety of plaintiffs associated with notable individuals active in the patent assertion space. One patent monetization professional who appears to be linked to a growing number of NPE plaintiffs was particularly prolific in this space in Q1, hitting E-Commerce and Software products and services through 11 distinct plaintiffs that filed litigation throughout the quarter. Those include nine NPEs formed in New Mexico (listed in reverse chronological order by case filing date): first-time plaintiffs SmartOrder LLC, targeting mobile ordering, pickup, and curbside to-go services (covered here); Fintegrity LLC, products with functionality for authorizing financial transactions and preventing fraud (here); Monitor Systems LLC, traffic monitoring and enforcement systems (here); TicketMatrix LLC, NFL season ticket systems (here); PanoVision LLC, websites and software with tools for customizing room designs (here); BillSure LLC, products with features for monitoring users’ spending data and identifying anomalies (here and here); and Quantion LLC, Wi-Fi systems with features for displaying advertisements to users (here); plus existing litigants Muvox LLC, hitting content recommendation systems that allegedly utilize AI (here); and FrameTech LLC, enterprise products with functionality related to remote operating system upgrades (here). Still more NPEs linked to that same individual, these ones incorporated in Delaware, also added complaints to existing campaigns: Hyperquery LLC, focusing on app stores/marketplaces and game subscription services (covered here); and Secure Matrix LLC, websites with secure authentication (here).

Also hitting this sector was Rothschild Patent Imaging LLC (RPI), a plaintiff tied to a former inventor who in recent years has shifted to the assertion of patents acquired from others. In mid-March, RPI added two new complaints to its ongoing image sharing campaign targeting disparate accused products: cameras with support for filtering images and then transmitting alerts or data to a paired mobile app on the one hand, and an online dating platform with features for showing matches based on a distance filter.

In addition, early February saw Dialect, LLC add a new case targeting virtual assistants and supporting products that utilize natural language processing and voice recognition to the campaign that it launched in February 2023. Dialect, which has procured litigation funding (according to a 2022 filing), is connected to yet another well-known figure in patent monetization associated with established NPE plaintiffs with somewhat rocky litigation histories—including Oyster Optics, LLC and Document Security Systems, Inc. Days later, WinView IP Holdings, LLC, an entity formed by the chairman of sports betting company WinView, restarted a campaign targeting online betting and gaming platforms previously waged by the latter company—this time with funding in hand.

Multiple established monetization firms also hit the E-Commerce and Software space this past quarter—including Empire IP LLC, which, through plaintiff AR Design Innovations, LLC, added a new complaint targeting e-commerce apps with certain augmented reality (AR) features to a campaign started in 2020. Others joining the fray were three NPEs associated with Dynamic IP Deals, LLC (d/b/a DynaIP) and affiliated entity Pueblo Nuevo LLC: Random Chat LLC, which in late February and mid-January collectively added several more retailers to a campaign begun in June 2024, targeting the defendants’ websites’ respective customer support chat features; WirelessWERX IP LLC, which throughout February and January filed a wave of complaints against products with geofencing features (see here, here, and here) to the campaign that it began in late 2022; and AK Meeting IP LLC, which focused on web conferencing products with remote screen control features in a complaint added to the campaign that it also kicked off in 2022. Georgia-based monetization firm IPInvestments Group LLC, through associated plaintiff DataCloud Technologies, LLC, also filed another round of cases targeting mobile apps, website infrastructure, and/or firewalls utilizing certain virtualization technology.

The PTAB instituted trial for 67% of the AIA review petitions addressed in Q1, down slightly from that same quarter last year (during which the institution rate was 69%) but up from Q4 2024 (60%).

Arguably the most significant factor impacting AIA institution rates in recent years has been the NHK-Fintiv rule, a set of discretionary factors governing the PTAB’s practice of discretionarily denying institution due to the status of parallel litigation. That practice could see a resurgence due to two key changes implemented by Acting USPTO Director Coke Morgan Stewart this past quarter.

–  USPTO Withdraws Vidal’s Guidance Limiting NHK-Fintiv Rule

The first of those changes was the rollback of a June 2022 memorandum from Stewart’s predecessor, former Director Kathi Vidal, that had limited the application of NHK-Fintiv in certain respects. That guidance essentially exempted AIA reviews that are especially likely to succeed, explaining that the Board should not discretionarily deny petitions that present “compelling, meritorious challenges”. The guidance also established that the NHK-Fintiv factors apply only to district court litigation and not investigations before the ITC, since the latter lacks the power to issue binding invalidity rulings; and provided that discretionary denial would not occur where petitioners agree not to assert invalidity grounds that they raised or reasonably could have raised at the PTAB in a parallel district court case (formalizing a practice established in the PTAB’s December 2020 precedential decision in Sotera Wireless v. Masimo, now known as a “Sotera stipulation”). Additionally, the guidance lessened the impact of the controversial NHK-Fintiv factor allowing discretionary denial when the PTAB’s final written decision falls after a scheduled trial date, stating that this factor alone cannot tip the scales toward denial under NHK-Fintiv when the other factors are neutral, and further clarified that this determination must be made based on aggregate data, including the district’s median time to trial.

Discretionary denials fell significantly in the immediate aftermath of the guidance’s issuance. They then partially rebounded (see, e.g., here) in the wake of Vidal’s February 2023 precedential ruling, under her post-Arthrex director review power, that limited the “compelling merits” exception: In CommScope v. Dali Wireless, Vidal held that PTAB panels must first apply the five NHK-Fintiv factors and may only address compelling merits if the other factors favor discretionary denial.

However, the USPTO returned the PTAB to the prior status quo with its February 28, 2025 announcement that it had withdrawn the 2022 guidance and all decisions relying upon it, stating that parties should instead refer back to the PTAB’s precedential decisions in Apple v. Fintiv (the underlying decision, designated as precedential in 2020, that memorialized the five NHK-Fintiv factors, building on NHK Spring v. Intri-Plex Technologies, designated in 2019) and Sotera Wireless v. Masimo (discussed above). PTAB Chief Administrative Patent Judge (APJ) Scott Boalick clarified that withdrawal in a March 24 memorandum that explicitly repudiates the key points from the rescinded 2022 guidance: It explicitly established that the NHK-Fintiv factors will also apply for parallel ITC actions; explained that Sotera stipulations may be “highly relevant” but not dispositive on their own; loosened the “time to trial” factor by allowing any evidence bearing on district court trial dates or ITC final determination target dates; and underscored that “compelling merits” alone cannot be “dispositive” in the discretionary denial inquiry, providing instead that the merits are just one of the factors to be considered in a “balanced assessment”.

–  Director to Decide Discretionary Denials First in New Two-Stage Institution Process

The second of these two changes was Stewart’s creation of a new two-stage process for AIA review institution, established in a memorandum issued on March 26: First, the USPTO director is to make a determination as to the discretionary denial factors, doing so in consultation with three PTAB APJs, and will then issue a decision explaining the reasons why discretionary denial is appropriate or inappropriate. If the latter, the director will refer the case to a standard three-member PTAB panel that will then make an institution decision that addresses the merits and other non-discretionary statutory considerations. In making her discretionary denial determination, the memorandum provides a broader list of relevant considerations drawn from certain precedent, including Fintiv; General Plastics, which lays out factors under which multiple petitions from the same petitioner can be discretionarily denied; and Advanced Bionics, which covers discretionary denials where the USPTO has previously considered the asserted prior art or arguments.

The memo additionally notes that the director “will also consider the ability of the PTAB to comply with pendency goals for ex parte appeals, its statutory deadlines for AIA proceedings, and other workload needs”. That focus on workload management is of particular significance given the sweeping staffing changes being enacted across the federal government by the administration of President Donald Trump: An executive order banning remote work has led the USPTO to begin ordering PTAB APJs to return to the office, potentially triggering attrition; and the administration encouraged voluntary departures through a deferred resignation program allowing employees that accepted through February 12 to offer their resignation, effective on September 30, in exchange for full pay, benefits, and remote work protections. In late March, Chief APJ Boalick reportedly informed PTAB APJs that there would be a reduction-in-force—essentially layoffs—once those and other voluntary retirement programs expire on April 17, as a result of which the Board “is expected to experience staff reductions”. Remarks by Stewart at a recent conference indicate that PTAB APJ staffing has already fallen from a high of about 280 APJs to about 200.

It will take time for the full impact of these changes to become clear, but initial reactions from stakeholders and the media (see, e.g., here and here) have broadly predicted that the result will be a significant increase in discretionary denials, as well as an increase in uncertainty over how PTAB panels will apply the governing factors. Two of those stakeholders went even further: In a March 11 IAM article, Bracewell partners Christopher “Kit” Crumbley (a former PTAB Lead APJ) and Jeffrey Danley predicted that staffing reductions would lead to an increase in NPE litigation.

In the meantime, Stewart issued her first discretionary denial decision soon after launching the new process, reversing a prior set of PTAB decisions that had instituted trial in four IPRs filed by Motorola Solutions against Stellar, LLC. In a March 28 order issued order sua sponte (on the director’s own initiative, without the request of either party), Stewart found that the PTAB had given too much weight to the petitioner’s Sotera stipulation because its invalidity arguments in the parallel district court case were more expansive than those in its petition. Stewart also determined that the panel had “misapprehend[ed] the relevant inquiry” of the Fintiv factor contemplating the extent of the “investment in the parallel proceeding by the court and the parties” by finding that the PTAB trial could relieve some of the court’s burden, instead pointing to the “substantial time and effort” spent on the litigation as “strongly” favoring denial.

–  Reexams Level Off, But Data Indicate Continued Shift Away from AIA Reviews

Uncertainty caused by changes to the standards governing discretionary denials has also led defendants to increasingly choose another alternative for validity challenges—ex parte reexaminations, which among other advantages are not subject to discretionary denials to the same extent.

The number of requests for ex parte reexam increased by 21% in 2020 (the year that the PTAB designated its Apple v. Fintiv decision, which established the five NHK-Fintiv factors, as precedential) and then by 53% in 2021. While they held steady at about 330 requests per year in 2022 (the year Vidal issued the just-overturned guidance limiting NHK-Fintiv) and 2023, they surged by 27% in 2024.

While reexam filings were relatively flat in the first quarter of 2025 compared to Q1 2024 (which in turn was 41% higher than Q1 2023), data indicate that the share of patents with reexam requests that have also been challenged at the PTAB continues to fall, reaching just 15% in Q1 2025 after dropping to 20% in 2024 as a whole—further indicating a shift away from IPR. In addition, 58% of the patents with reexam requests filed last quarter have also been litigated in district court, up from 55% this past year.

This is broadly consistent with longer-term trends, as Germany’s national courts accounted for 50-60% of all European patent litigation prior to the UPC (see here). However, German national courts that specialize in patent cases have since seen fewer filings, falling by 23.6% in 2023 and by 8.2% in 2024—a decline that has been attributed to the launch of the UPC in June 2023 (see here). German national courts have also lost many experienced German patent judges to the UPC (see here).

Plaintiffs’ early and sustained preference for the UPC’s German local divisions may in part reflect a desire to have cases decided in a manner more consistent with German national caselaw—given that national caselaw can serve to fill gaps in the UPC’s caselaw and resolve questions unanswered by the UPC Agreement (or UPCA, the treaty that led to the court’s creation) and its Rules of Procedure. Such gaps have arguably been among the largest for issues pertaining to fair, reasonable, and nondiscriminatory (FRAND) licensing, which is not discussed in the UPCA. Indeed, early decisions from the UPC Court of Appeal and Court of First Instance on issues like claim construction and validity assessments have been consistent with the approach taken by German national courts (see here), and the German local divisions have been the first to weigh in on FRAND issues (see here for a recent update).

In addition to the more regularly reported filing data discussed above, the UPC also published its first-ever annual report on February 14, 2025, providing statistics on various aspects of UPC activity beyond those released in the court’s monthly reports.

For instance, in addition to various breakdowns of UPC case filings over time and by case type, the report gives a snapshot of patent opt-outs: Just under 550K opt-outs were filed from the date that they became available on March 31, 2023 (the beginning of the “sunrise” period) through the end of 2024, the vast majority filed prior to the court’s launch on June 1, 2023 (over 400K).

Data on case timing also underscore the relatively accelerated nature of UPC proceedings: for instance, infringement actions have an average time to case closing of 405.42 days, and for revocation actions, 383.43 days.

Furthermore, the report gives a breakdown of party nationality, revealing that the vast majority of plaintiffs and defendants are German, followed in both categories by those from the US.

Caselaw Update: Key Decisions Expand Scope of Damages, Establish Long-Arm Jurisdiction

The first quarter of 2025 saw a series of rulings that dramatically expanded the potential reach of the UPC—including one decision by the Court of Justice of the European Union (CJEU) that could also trigger additional cross-border litigation in national courts within the EU.

–  Damages Claims Based on National Infringement Judgments

The UPC began to issue its first decisions on the merits in July 2024. Since then, much of the focus has been on the court’s handling of injunctions, which are notable in part for their possible scope—as a single claim can result in an injunction spanning up to all 18 UPC member states (though that scope now comes with some new caveats, as discussed below). However, the UPC can also issue damage awards with that same reach, covering a market nearly the same size (by population) as the US.

Now, the breadth of available damages could increase further due to a Q1 ruling from the Court of Appeal. On January 16, the appellate body decided in Fives v. Reel that not only does the UPC have the power to hear a damages-only claim based on a merits judgment from a national court, it may also award damages reaching back before the UPC’s start date—in this case, all the way back to 2016.

It remains to be seen how litigants will respond to this decision—in particular, whether the potential for damages reaching further back in time will lead to additional litigation. The same goes for the court’s ruling that UPC plaintiffs can seek damages based on national court infringement rulings, in part due to the fact that this case only concerned damages over the German portion of the patent-in-suit. However, IP Fray has speculated that “sooner or later”, a plaintiff could seek “multi-country damages” based on a national court ruling—possibly even in this case.

–  UPC Asserts Long-Arm Jurisdiction over European Patents Issued in Non-UPC Countries

On January 28, one of the UPC’s busiest local divisions pushed the jurisdictional envelope even further. In Fujifilm v. Kodak, the Düsseldorf Local Division (Düsseldorf LD) held for the first time that the UPC can exercise long-arm jurisdiction and decide claims of infringement for European patents issued in countries not participating in the UPC—here, the UK—when the defendant is domiciled in a UPC member state.

By so holding, the Düsseldorf LD essentially extended a preexisting rule under EU law: Under Article 4(1) of the Recast Brussels Regulation, persons domiciled in an EU member state shall be sued in the courts of that member state—and because that jurisdiction over EU-domiciled defendants is “universal” under applicable EU caselaw and regulations, an EU member state has jurisdiction to hear claims of “infringement of [a] European patent committed in all the States for which it has been granted”. Since Article 71b of that regulation provides that the UPC is a “common court” that, under Article 71a, has jurisdiction wherever a member state’s courts would have jurisdiction for matters governed by the UPC Agreement (the treaty that established the UPC), the Düsseldorf LD concluded that the UPC, too, has that same jurisdiction over infringement of the national parts of European patents committed within those countries, including non-UPC states.

A key issue here was the reach of the exception to the above jurisdiction established under Article 24(4) of the Recast Brussels Regulation, which provides that member states have exclusive jurisdiction over validity actions. Here, the Düsseldorf LD held that Article 24(4) does not extend to infringement actions, such that the UPC is not deprived of jurisdiction over infringement claims on that basis.

That said, the court did not ultimately decide on infringement of the UK portion of the asserted patent, as it ruled that the entire patent was invalid. However, the UPC may soon revisit that issue in another case between the same parties: On April 2, the Mannheim Local Division (Mannheim LD) found that Kodak infringed the German designation of another patent but deferred its ruling on the question of UK infringement for a separate proceeding in which the parties will be able to submit briefing.

–  CJEU Further Expands Long-Arm Jurisdiction for UPC and EU National Courts

In early March, the CJEU issued an even more sweeping decision on long-arm jurisdiction that could upend the status quo for cross-border patent enforcement in the EU, for both the UPC and national courts.

While cross-border infringement actions were already possible in EU member state courts, the aforementioned validity exception provided by Article 24(4) was previously understood to provide a key limitation: that when an EU member state was seized with an infringement action over a patent issued in another member state, it had to stay the case when the validity of the foreign patent was challenged. Thus, defendants could prevent cross-border infringement claims from proceeding by filing a defensive validity challenge.

However, in BSH Hausgeräte v. Electrolux, the CJEU not only confirmed that Article 24(4) does not prevent courts in member states from addressing infringement (consistent with the UPC’s Fujifilm decision), it also held that member state courts (and thus, by extension, the UPC) “may, where appropriate, stay the proceedings” pending the outcome of a validity challenge in another EU member state when there is a “reasonable, non-negligible possibility” that the challenge will succeed. Thus, rather than requiring a stay, the opinion gives the court some leeway based on the seriousness of the invalidity claim.

Beyond that, the CJEU further held that courts in non-EU countries (or “third State[s]”) do not fall under Article 24(4) and thus lack exclusive jurisdiction over validity claims. As a result, where a court in an EU member state sees an infringement case over a non-EU patent, that court has jurisdiction to rule on both the infringement and validity of that foreign patent (barring the application of special rules such as the Lugano Convention, which applies similar exclusive jurisdiction over validity claims as Article 24(4) to non-EU countries Iceland, Norway, and Switzerland). However, that validity ruling cannot affect the existence or content of that patent in its country of issuance or cause the patent to be removed from that country’s national register; rather, the invalidity ruling has effect only in the dispute between the parties in suit, such that it results in dismissal of the case between them.

The upshot of BSH Hausgeräte is that national courts in EU countries, as well as the UPC, may now award damages and/or impose injunctions for the infringement of non-EU patents as long as the defendant is domiciled in the EU (for national court litigation) or in one of the 18 countries participating in the UPC (for UPC litigation). Additionally, while the UPC’s jurisdiction remains limited to claims over the national components of European patents as well as unitary patents, some have observed that BSH Hausgeräte now allows EU national courts to hear claims over a much wider range of foreign patents against EU-domiciled defendants. Litigator Roman Sedlmaier of Munich-based IP firm IPCGS has emphasized in comments to IP Fray that the decision now allows patent owners to leverage patents that were “previously irrelevant because they could not be enforced” in their countries of issuance. Moreover, Bird & Bird partner Wouter Pors commented to IAM that the term “third State[s]”, as used in that decision, could extend beyond EPC countries like the UK and Turkey, thereby enabling “world-wide jurisdiction for defendants based in the EU Member State of the court”—and potentially worldwide injunctions.

Even US patents could be in play, though Taylor Wessing partner Paul England remarked to IAM that that he “would be surprised if the US were to give effect to such a decision”. Others expressed similar skepticism that US courts would respect European rulings on US patents as res judicata (see, e.g., here), alongside broader concerns that cross-border litigation enabled by BSH Hausgeräte could trigger a wave of anti-suit injunctions as courts in foreign patents’ countries of issuance seek to protect their jurisdiction.

England also told IAM that while the Brussels Regulation already allowed for cross-border damages and preliminary injunctions, BSH Hausgeräte also appears to enable permanent injunctions in such cases. This could undercut a key advantage of the UPC relative to EU national courts: While the UPC was previously the only option for seeking cross-border injunctions for European patent infringement, Hoffmann Eitle partner C. Thomas Becher has stated that the UPC has now “lost this unique selling point” as courts in EU member states gain a potentially more sweeping version of that power as a result of the CJEU’s decision. Becher further underscored that as BSH Hausgeräte gives plaintiffs “another arrow in the cleaver”, it will make defensive strategies more expensive for potential infringers.