Written by Jorge Natera Carmona ’28

Introduction

On February 3, 2020, the German company BSH Hausgeräte GmbH filed a patent infringement claim against the Swedish company Electrolux AB in the Swedish Patent and Commercial Court.¹Case C-339/22, BSH Hausgeräte GmbH v. Electrolux AB, ECLI:EU:C:2025:108, ¶ 12 (Feb. 25, 2025). After raising a validity defense, Electrolux argued that the claims should be dismissed because the court lacked jurisdiction over validity claims for the foreign patents asserted, and thus the court could not fully resolve the infringement claim.²Id. ¶¶ 13–14. The court agreed with Electrolux and ruled that it did not have jurisdiction over patent infringement suits validated by other EU Member States under Articles 24(4) and 27 of the Brussels I BIS Regulation.³BSH v. Electrolux, ECLI:EU:C:2025:108, ¶ 16; Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), arts. 24(4), 27, 2012 O.J. (L 351) 1. On appeal, the court asked for clarification from the Court of Justice of the European Union (“CJEU”) on the scope of Article 24(4) and how it affected patent infringement proceedings when a validity defense was raised.⁴BSH v. Electrolux, ECLI:EU:C:2025:108, ¶¶ 19-22. On February 25, 2025, the CJEU held that under Article 24(4), an EU Member State court retained jurisdiction over a patent infringement claim even if a validity defense was raised for patents validated outside of the Member State.⁵Id. ¶ 77. Moreover, the CJEU further clarified that Article 24(4) did not apply to patents registered in countries outside of the EU (“third-states”), and that the Member State court could make an inter partes ⁶Michela Zammit Lupi, Cross-Border Wars: CJEU clarifies jurisdiction rules in BSH v. Electrolux, Chambers (June 26, 2025), https://chambers.com/articles/cross-border-wars-cjeu-clarifies-jurisdiction-rules-in-bsh-v-electrolux (on file with American University International Law Review) (“[H]ave inter partes effect only, meaning that they bind only the parties to the case and do not affect the status of the patent in the jurisdiction of registration.”). ruling on a validity defense during an infringement suit.⁷BSH v. Electrolux, ECLI:EU:C:2025:108, ¶ 77.

On the surface, this ruling is positive as it allows for the resolution of infringement claims for multiple patents in a single forum. Additionally, it improves the legal certainty of these cases by preventing defendants from bringing an end to a properly filed infringement suits by merely raising a validity defense.⁸Caitlin Heard, Markus Deck & Oliver Roberts, Non-EU infringement of European patents: ECJ extends a long arm, Thompson Reuters UK (Mar. 27, 2025), https://uk.practicallaw.thomsonreuters.com/w-046-2774?originationContext=document&transitionType=DocumentItem&contextData=(sc.Default)&ppcid=f14ede855ca14ed8be311f79ac214815&comp=pluk&firstPage=true (on file with American University International Law Review). However, the CJEU granted this new “long-arm jurisdiction”⁹See Client Alert: The CJEU’s BSH Hausgeräte Decision and the UPC’s Long Arm Jurisdiction over Foreign Patents, Quinn Emanuel (May 16, 2025), https://www.quinnemanuel.com/the-firm/publications/client-alert-the-cjeu-s-bsh-hausgerate-decision-and-the-upc-s-long-arm-jurisdiction-over-foreign-patents/ (on file with American University International Law Review) (using long-arm jurisdiction to refer to EU Member State courts’ ability to rule on validity of third-state patents). to all Member State courts for third-state patent lawsuits while also creating a great amount of legal ambiguity for patent infringement cases where a validity defense is raised.¹⁰See Corin Gittinger & Eva Acker, Is the sky the limit? Long-arm jurisdiction – UPC vs EU national courts, Freshfields (July 7, 2026), https://www.freshfields.com/en/our-thinking/blogs/technology-quotient/is-the-sky-the-limit-long-arm-jurisdiction-upc-vs-eu-national-courts-102n8cl (on file with American University International Law Review) (discussing the lack of directive by the CJEU on whether third-state or EU Member State validity proceedings had priority, or the extent of the BSH’s “log arm jurisdiction”, through a hypothetical scenario).

Legal Analysis

While the CJEU holding in BSH v. Electrolux allows EU Member State courts to rule on the validity of a third-state patent during an infringement suit, the Member State court must still apply the third-state’s substantive patent law.¹¹Ayan Roy-Chowdhury & Klaus J. Reindl, Cross-Border Patent Litigation in the EU Post-BSH v. Electrolux: A New Era of Flexibility, Fish & Richardson (Sep. 23, 2025), https://www.fr.com/insights/thought-leadership/articles/cross-border-patent-litigation-in-the-eu-post-bsh-v-electrolux-a-new-era-of-flexibility/ (on file with American University International Law Review). This opens the door to inconsistent rulings between different EU Member States due to a lack of substantive expertise in the third-state’s patent laws. Any validity ruling made by the Member State court is inter partes and thus has no bearing on the actual validity of the patent in the third-state or other litigation within the EU, meaning that it is completely possible for different Member State courts to reach different conclusions on the validity of the patent.¹²See Looking forward: what is on the agenda for European patent litigation in 2026?, Osborne Clarke (January 9, 2026), https://www.osborneclarke.com/insights/looking-forward-what-agenda-european-patent-litigation-2026 (on file with American University International Law Review) (discussing the lack of authority that inter partes rulings have on other jurisdictions).

The ambiguity created by BSH v. Electrolux incentivizes parties in third-states with less beneficial litigation systems to file infringement suits in the EU because they can receive EU court benefits without having to file patents in the EU.¹³Q&A: How an NPE Is Testing the Limits of BSH v. Electrolux, Finnegan (Jan. 20, 2026), https://www.finnegan.com/en/firm/news/qanda-how-an-npe-is-testing-the-limits-of-bsh-v-electrolux.html (on file with American University International Law Review). Bayerische Motoren Werke AG v. Onesta IP, LLC was the first known case where a third-state party invoked the “long-arm jurisdiction” established by BSH.¹⁴Id. In this case, Onesta, a non-practicing entity (NPE) based in the U.S., alleged that BMW had infringed on two of their U.S. patents and filed a claim in Germany, where BMW is incorporated.¹⁵Matthew O’Boyle, Matthew Y. Sim, & Anthony Pericolo, Jurisdictional Crossroads: The BSH Ruling and Judge Albright’s Anti-Suit Injunction in BMW v. Onesta, Steptoe (Mar. 2, 2026), https://www.steptoe.com/en/news-publications/step-into-ip-blog/jurisdictional-crossroads-the-bsh-ruling-and-judge-albrights-anti-suit-injunction-in-bmw-v-onesta.html (on file with American University International Law Review). BMW then filed a motion for an anti-suit injunction (ASI) in the U.S. District Court for the Western District of Texas.¹⁶Id. The court granted the ASI and voiced its fear of Onesta possibly seeking an anti-anti-suit injunction (AASI) in the German court to deprive the U.S. court of the jurisdiction to intervene.¹⁷Id. However, in the end, this case was settled outside of court before the suit could proceed.¹⁸BMW AG Secures Complete Victory at Federal Circuit as Onesta IP, LLC Appeal is Dismissed and Costs Awarded to BMW, Finnegan (Apr. 20, 2026), https://www.finnegan.com/en/firm/news/bmw-ag-secures-complete-victory-at-federal-circuit-as-onesta-ip-llc-appeal-is-dismissed-and-costs-awarded-to-bmw.html (on file with American University International Law Review). But this case highlighted the need for clarity from the CJEU on whether the EU Member State’s proceedings would have priority over the proceedings in the country where the patents were originally filed.¹⁹O’Boyle, supra note 15.

There is also the issue of possible forum shopping that could be caused by this decision. Because all validity rulings made by Member State courts on third-state patents are inter partes and do not influence the decisions made about the third-state patent in a different Member State court, it is possible that in the future, a third-state plaintiff could shop between the forums where an EU defendant has ties and that is most likely to rule favorably for the validity of their patent.²⁰Gittinger, supra note 10.
Although the CJEU cannot proactively clarify its BSH v. Electrolux holding, it is almost certain that a party litigating a third-state patent infringement will apply for clarification when another suit like BMW v. Onesta inevitably comes up.²¹Rules of Procedure of the Court of Justice, art. 158, 2012 O.J. (L 265) 1, 34. Once this occurs, the CJEU will have to decide how far the “long-arm jurisdiction” of BSH v. Electrolux reaches when it comes to third-state patents, and which proceedings will have priority.

Conclusion

While the CJEU took a massive step in simplifying patent infringement suits in the EU through its BSH v. Electrolux ruling, it also created a new gray area affecting the litigation of third-state patents.²²Heard, supra note 8. The ambiguity caused by this holding is something that will inevitably need further clarification from the CJEU once more third-state patent holders begin to file infringement lawsuits in EU Member States in an effort to reap the benefits of the BSH “long-arm jurisdiction” and avoid litigation in their own country’s legal system.²³Q&A: How an NPE Is Testing the Limits of BSH v. Electrolux, supra note 13.