Court of Appeal clarifies fundamental questions on jurisdiction in ESKO vs XSYS

The UPC Court of Appeal has clarified key questions regarding its jurisdiction for the period around its launch in June 2023 in the dispute between ESKO and XSYS. A recent decision is now likely to render many preliminary objections regarding the court's jurisdiction superfluous.

According to the latest ruling of the Court of Appeal in the dispute between the two printing technology manufacturers, the UPC also has jurisdiction over infringements committed before the UPC’s start on 1 June 2023, despite the general principle of non-retroactivity of treaties.

Additionally, the UPC has jurisdiction to resolve infringement issues for the duration of an opt-out period if a European patent has been successfully opted back into the UPC’s jurisdiction.

The 1st panel of the UPC Court of Appeal under presiding judge Klaus Grabinski in the dispute between ESKO-Graphics Imaging and XSYS (case ID: UPC_CoA_156/2025) has now confirmed both of these points. The panel, which also included Peter Blok and judge-rapporteur Emmanuel Gougé, thus upheld an order of the 2nd panel of the Munich local division.

In October 2024, XSYS had lodged a preliminary objection in response to an infringement claim filed by ESKO. XSYS questioned whether the UPC has jurisdiction to decide on the related infringement claim concerning acts that occurred before the UPC started, as well as between 1 June 2023 and the date when ESKO-Graphics withdrew the opt-out of EP 3 742 231.

ESKO owns the patent relating to a method of curing photo-curable printing plates. ESKO opted out the patent shortly before the UPC began operations and then withdrew the opt-out on 26 August 2024. One day later, ESKO filed its infringement claim with the Munich local division.

As if the opt-out never was

The Munich local division rejected XSYS’s preliminary objection, against which the company is appealing. However, the Court of Appeal also considers the UPC to be competent for the opt-out phase if the opt-out has been successfully withdrawn. This means that in future, the UPC divisions will have to proceed in such cases as if an opt-out had never taken place.

“In case of an effective withdrawal from an effective opt-out, the UPC is competent to decide on alleged acts of infringement which have occurred during the time period between the date of the opt-out and that of the withdrawal,” the judges write in their detailed headnotes.

No prohibition of retroactivity

In addition, the judges extend the competence of the UPC to the period before the court began operating.

XSYS had invoked the general principle of non-retroactivity of treaties and argued the UPC should not rule on infringements committed before the UPC came into force. However, Klaus Grabinski and his colleagues see things differently. The UPC has jurisdiction because the UPC Agreement does not provide for a clear rule and because the overriding objective of the UPC is to harmonise the European legal system rather than further fragment it.

In their ruling, the judges write: “Art. 3 UPCA does not address the temporal scope of application of the Agreement in relation to acts infringing the rights listed therein. It therefore leaves open whether acts having occurred before the entry into force are within the scope of application of the Agreement.”

Judges finally explain reasons

Two further headnotes state: “The absence of any temporal limitation of the rules on jurisdiction under Article 32(1) UPCA reflects the object and purpose of the Agreement, which is to create a court common to the Contracting Member States integrated into their judicial system and to transfer (exclusive) jurisdiction to that court for those actions and counterclaims listed under Article 32(1) UPCA, in order to prevent the difficulties caused by a fragmented market for patents in Europe and the variations between national court systems. In the absence of any provision to the contrary, these object and purpose of the UPCA neither suggest nor imply any temporal limitation of the Court.”

The Court of Appeal had already indicated this position in its decision in the Fives vs Reel dispute. This case concerned the jurisdiction of the UPC to determine damages after a German court had previously issued an injunction against Reel. The 2nd panel of the Court of Appeal had indicated that the UPC had jurisdiction for the period prior to its launch, but had not provided any reasons for this. The current decision now provides these reasons.

No referral to the CJEU

The ruling now removes the basis for many preliminary objections with which defendants had challenged the UPC’s jurisdiction in similar cases. Patent experts report that such objections were filed as a standard reaction in new UPC actions.

Nevertheless, in their ruling, the UPC judges leave open the question of which law is now applicable in the phases in which the UPC does have jurisdiction.

In its preliminary objection, XSYS had even requested that the CJEU rule on the case but the Court of Appeal judges rejected this.

Long battle for ESKO and XSYS

Esko is based in Belgium and manufactures software and hardware for pre-press, which is used in the packaging industry, publishing and for printing labels, signs and displays. XSYS is a global solutions provider to the flexographic, letterpress and pre-press printing markets with various subsidiaries in Europe, such as Germany, Belgium and Italy.

ESKO has also sued its competitor for patent infringement at the Regional Courts of Düsseldorf and Munich. In addition, the companies are disputing the validity of patents and utility models in various courts. For example, XSYS challenged the validity of EP 231 at the European Patent Office. The Opposition Division initially confirmed the granting of the patent. However, the Boards of Appeal will hear XSYS’s appeal shortly.

In October, the Munich local division will deal with the infringement allegations against XSYS for the first time.