BG 2.47: How to Work Without Stress or Attachment

Hey, I am Dr. Ernst Wetter Highline, I am a qualified German and European patent attorney, founder of Highline IP Law and the longtime senior IP leader at BSH-Home Appliance. And you are listening to IP Fridays. Hello and welcome to this episode of IP Fridays. Our names are Ken Suzanne and Ralph Clayson and this is the podcast dedicated to intellectual property. It does not matter where you are from, in-house or private practice, novice or expert. We will help you stay up to date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more. Hi, I am Ralph Clayson and my co-host Ken Suzanne and I are welcoming you to episode 177 of our podcast IP Fridays. Today's interview guest is Dr. Ernst Wetter Highline, who is a German and European patent attorney, the founder of Highline IP Law and the longtime IP leader at BSH-Home Appliance. He is the mastermind behind the BSH versus Electrolux decision of the European Court of Justice about long arm jurisdiction in Europe that has the whole patent words during in Europe at the moment. But before we jump into this fascinating interview, I have news for you. The UPC Court of Appeal has clarified for the first time how a conditional revocation counterclaim should be handled in a dispute over Ambolyne's ambolic protection patent against our Arctic lab. A defendant can validly make its revocation counterclaim conditional on infringement being found first, meaning no ruling on the counterclaim is needed if the infringement claim fails, as the Munich local division had held. The Court of Appeal also closed a related gap. If the claimant appeals a non-infringing finding, the counterclaimant may conditionally appeal the unresolved counterclaim too. Our Arctic lab missed its own appeal deadline and can now at best seek a reestablishment of rights, while Ambolyne has already appealed the non-infringement finding. Following the closely watched long arm jurisdiction ruling on June 2nd of the UPC, the UPC Court of Appeal chaired by a Ryan Carden has now granted Fudji film an injunction against Kodak in a second proceeding. The Court upholds the limited printing plate patent and found that Kodak Sonora X-3 played infringes it. Kodak can no longer sell or use that plate in Germany. The General Court's 8th Chamber of the European Union dismissed open AIS action against the EU IPO decision to partially cancel the open AI trademark. The partial refusal for classes 9, 42 and 45 rests decisively on article 7 UTMR, the descriptive NIS ground. For a significant part of the English-speaking public, open AI directly conveys that the goods or services are provided using freely accessible artificial intelligence. In the US on July 7th, 2026, the Federal Circuit confirmed that AI and deep learning patent claims covering dental imaging analysis are not patent eligible under Section 101. Simply training a deep learning device on a specific data set does not amount to a patent eligible technical solution. The Munich One Regional Court issued a preliminary injunction borrowing Google from spedding false effectual claims about a publishing company in its AI overviews. A search query combining the company's name with the German term for fraud scheme had triggered an AI-generated summary containing entirely fabricated accusations of subscription traps. In the US on July 1st, the Federal Court of Justice dismissed KPN's appeal against the revocation of a central claim of its LTE patent. Oppo had successfully challenged the claim leaving KPN's infringement action against Oppo's German distribution entity with the outer legal basis for now. And now let's jump into the interview with Ernst Peter Highline. Ernst Peter Highline. If you don't know Ernst Peter, he's German and European patent attorney, the founder of Highline IP Law and to long-time IP leader at BSH Horma Plains. Thank you for being on IP Fridays. Yeah, great to be here. When looking at your career, one thing stands out. You never really followed the traditional path of either private practice or industry. How did your professional journey begin actually? My professional roots are actually in private practice. After qualifying as a patent attorney, I worked in private practice and fairly early founded my own law firm, which later became Highline IP Law. So you never really completely left private practice behind? Exactly. In 2005, I had the opportunity to take on additional responsibilities on the BSH side. There I was able to build and lead a new unit within the IP organization. The team was responsible for patents in the small appliances business as well as global design and trademark protection. At the same time, I helped build an international network of internal and external IP council and coordinated their work. That still sounds fairly like traditional IP work. When did international disputes become part of your career? Over time, my focus gradually shifted from traditional IP protection to strategic enforcement. That included anti-counterfighting activities, global trademark and design matters and cross-poder patent disputes. So your work became more about enforcing rights rather than simply obtaining and managing them, right? Exactly. And that development eventually lead me to play a strategic role in the case BSH Home Appliances vs Electrolux, a case that still accompanies me today. I'm looking back now from private practice to building an international IP organization and eventually becoming involved in the case before the European Court of Justice. Did you ever imagine that path? No, not at all. Looking back, this combination of private practice responsibilities on the business side and international enforcement experience turned out to be very useful when our case eventually reached the European Court of Justice. Yeah, talking about this case, the case BSH vs Electrolux started long before it reached the European Court of Justice. When did the story actually begin? The story actually begins much earlier than most people would expect. The invention itself dates back to 2001 and concerns a new vacuum cleaner technology. In 2006, we identified what we believed to be an unauthorized use of the invention and contacted Electrolux to clarify the situation. The European patent ensued was granted in 2009 and validated in the number of European countries. At the time, nobody could have imagined that this would eventually lead to a decision of the European Court of Justice almost 20 years later. Wow, 20 years, that's a long time. So at first, this was simply a normal patent dispute. Yes, absolutely. After many years of opposition and appeal proceedings before the European patent office, we were finally able to defend the patent successfully in late 2018. Less than one year later, in the summer of 2019, the higher regional court of Düsseldorf found that certain Electrolux vacuum cleaner models influenced the patent. At the point one might think that the patent owner had achieved this goal, right? That is what many people would think, but that judgment did not bring the dispute to an end. A new challenge emerged. The patent had been validated in many European countries, winning in one country like Germany did not automatically solve the enforcement issue in all the other countries. What was the practical problem then? We were facing a very simple question, how do we enforce a patent that exists in many countries? And how do we prevent claims from becoming time-bared without finding separate infringement actions in very single country? Doing that would not only be legally complex. It would also require a huge amount of time, effort and money. That sounds less like a major legal question and more like a business problem. Exactly. At the beginning, this was not an academic discussion about jurisdiction. It was a very practical business question. How can we enforce our rights effectively without running parallel lawsuits all over Europe? That was a real challenge we were trying to solve. So how did the idea of one central action emerge? While looking for possible solutions, we came across article 4 of the the one A regulation. The idea behind that rule is very simple. In general, a person can be sued in the country where that person is based. In our case, that pointed us towards the Swedish home court because electologs is based in Stockholm. That sounds like a fairly ordinary jurisdiction rule. Yes, and that was exactly what made it interesting. Article 4 is the general rule. The question was whether that rule could also be used for patent infringement claims covering several countries. Was that a common approach at the time? No, quite so opposite. Many people believed that cross-border patent litigation in Europe was effectively dead. That sounds rather dramatic. Why did people think that? Because there was a widely held view that a central patent case could be stopped as soon as the defendant challenged the validity of the patent. As a result, many companies assumed they had no real choice but to litigate country by country. Yet you decided to look at the issue differently. Yes, sometimes it is worth taking a fresh look at accepted assumptions. We felt that Article 4 might play a much more important role than many people believed. At that point, you already saw an opportunity. We saw a possibility. Not the clarity, but we believed there was a strong little basis for winning all claims before the Swedish home court. That eventually led to the loss of being filed in Sweden. Exactly. In 2020, we decided to file the action in Sweden that followed our success before the European Payton Office in late 2018 and in the Düsseldorf infringement proceedings in 2019. At that stage, our objective was very practical. We were simply trying to find an effective way to enforce why that exists in many countries. At the point, you already think the case might end up before the European Court of Justice? No, not at all. We were focused on solving a business problem. The idea that the case would eventually reach the European Court of Justice came much later. You mentioned that many people believed cross-border petnall litigation in Europe was no longer a realistic option. Why was that? The main reason was an earlier decision of the European Court of Justice, known as GAT vs LUK, decided in 2006. For many years, that decision was understood to mean that a home court could lose its ability to hear a patent infringement case as soon as the defendant challenged the validity of the patent. In practice, that understanding made many cross-border patent cases extremely difficult. As a result, many people believed that cross-border patent litigation was not effective. And yet, you decided to follow exactly that path, right? Yes, sometimes it is worth questioning assumptions that have been accepted for many years. We believed that article 4 of the Brussels 1A regulation played a more important role than many people thought. That is why, in 2020, we decided to file the case in Sweden. And at that point, did you already realize that the case might eventually reach the European Court of Justice? No, not at all. Our goal was simply to find a practical solution to a real enforcement problem. The idea that this would eventually become a case before the European Court of Justice was far from our minds. So how did the case eventually reach the European Court of Justice then? After we filed the lawsuit in Sweden in 2020, electorlogs challenged the validity of the patents. The Swedish home court then concluded that it could not hear the case and declared itself not competent to proceed. We appealed that decision because the issue were important and affected far more than just our case. We suggested that several questions should be referred to the European Court of Justice. The Swedish Court of Appeal agreed and sent those questions to Luxembourg. So what were these main questions? It's the heart of the case there were three questions. First, if a home court has jurisdiction over a patent infringement case, does it lose that jurisdiction simply because the defendant argues that the patent is invalid? Second, does it make a difference if the national legal system requires validity issues to be decided in a separate proceeding? And third, do this jurisdiction rules also apply to patents from countries outside the European Union? Third question sounds particularly interesting. Yes, at the time the discussion in our case focused on Turkey. Today, many people immediately think about the United Kingdom and some even think about US patents. But originally, the question was much simpler. We wanted to know whether the same jurisdiction rules also apply when patents from non-European countries are involved. And did you realize how important that third question might become? No, certainly not to that extent. At the beginning, most of the discussion focused on the relationship between the different jurisdiction rules within Europe. Only later did it become clear that the European Court of Justice answers might have consequences far beyond the European Union. So how did the European Court of Justice react then? That was actually quite interesting. The European Court of Justice first heard the case before a Schamber of seven judges. Later, it refers the case to the Quantschamber of 15 judges that already showed that the European Court of Justice considered the issues to be important. And when the judgment finally came out, some of the answers were very different from what many observers had expected. Let's talk about the European Court of Justice's answers. What was in your view the most important part of the decision? The most important point was this. A home court does not automatically lose jurisdiction just because the defendant argues that the patent is in Belied. For many years, many people believed exactly the opposite. The European Court of Justice made it clear that this understanding was too narrow. The home court where the defendant is based can generally continue to hear the infringement case. That is really the key message of the decision. Why is that so important? Because it gives new momentum to cross-border patent enforcement in Europe. Before this decision, many people assumed that a defendant could effectively stop a certain infringement case simply by challenging the validity of the patent. The European Court of Justice made clear that this is not automatically the case. Does that mean the home court hearing the infringement case will now also decide whether the patent is valid? No, and that is a very important point. The European Court of Justice confirmed that questions about the validity of a European patent should still be decided by the national courts of the country for which the patent was granted as provided for in article 24 for of the Brussels 1A regulation. What is new is that the infringement case does not automatically fall apart because of a validity challenge. The whole court can keep control of the overall case. So how does that work in practice? The European Court of Justice gives the home court some flexibility for patents from member states of the European Union. The home court does not automatically lose its power if the defendant says the patent is invalid. The home court can look at the validity challenge. If it seems strong, the home court may stay the infringement case. If it seems weak, the home court may continue the infringement case. For patents from countries outside the European Union, the home court may also stay the case if there is already a validity case pending in that country. In such situations, article 33 and 34 of the Brussels 1A regulation may apply. That creates a much more flexible system than many people expected. We have discussed the implications for patents from member states of the European Union, but a lot of attention has been given to another part of the decision that we already talked about briefly, namely patents from countries outside the European Union. Absolutely, and that may be the part of the judgment with the biggest international impact. Why? Because the European Court of Justice decided that the special jurisdiction rule for patent validity does not generally apply to patents from non-European countries. In simple terms, that means the general rule can still apply and that opens the possibility of bringing infringement cases based on non-European patents before the home court where the defendant is based in the European Union. That sounds like a really far-reaching statement. It is. That is why many commentators started talking about what is often called "long armjuris" that she, in other words, a European home court may, under certain circumstances, deal with infringement claims relating to patents from countries outside the European Union. So many listeners may now wonder, can a Swedish or a German home court really decide to dispute involving a British or Turkish patent? Ah, we need to be careful here. The European Court of Justice did not say that a European home court can cancel or evoke a foreign patent. That remains a matter for the authorities and national courts of the country that are quanted to patent. Did you realize during the proceedings how important this part of the decision might become? Not to this extent. We started with a very practical enforcement problem. Only later did it become clear that the European Court of Justice answers might have consequences far beyond the original case. Today the decision is discussed not only in connection with Turkish patents, but also British patents and even possible claims involving US patents. If you had to summarize this decision in one sentence and I know this is a very difficult task, what would that sentence be? The European Court of Justice did not re-event cross-border patent enforcement in Europe, but after many years it clearly gave it much more room to develop. So how was the decision received after it was published? Ah, the rejection was very strong. It quickly became clear that many people saw the decision as much more than just another patent case. Many articles and commentaries described it as an important development in European patent litigation. Did you had a surprise you? To some extent, yes. Of course we knew that the questions referred to the European Court of Justice were important, but I was surprised by how quickly the decision became a major topic of discussion across the European patent community. Did you later presented the decision at several conferences yourself, right? Yes, the discussion started right away. I had the opportunity to discuss and present the case at several conferences and events, including the NLVPP conference in Germany and the English-Tet Patent Symposium. I recently received an invitation to serve as a panel speaker on cross-border litigation at the AIPPI World Conquest 2026 in Hamburg. What struck me most was that both internal and external IP council were trying to understand the practice consequences of the decision. So what was the question you were asked most often? Almost always the same one. How far does this decision really go? I wanted to know whether this was simply a correction of earlier case law or whether it marked a beginning of a new phase in cross-border patent enforcement. And what did you say? I would describe it as "nice revolution nor a minor adjustment." The European Court of Justice did not rewrite the system, but it clearly changed the balance between the different jurisdiction rules. That is why I believe the decision will continue to be discussed for many years, both in practice and in academia. One year later, the case received the managing IP award as a Europe impact case of the year. What did that recognition mean to you? First of all, it was a great honor for everyone involved. But for me, the most important thing was the message behind the award. The award showed that the decision affects much more than the parties involved in the case. It has an impact on European patent practice as a whole. And it also shows that the underlying jurisdiction questions reached Harbione patent law. They are relevant whenever companies have to enforce rights across borders in an increasing international world. That is what makes this case special. You often describe this case as a team effort. Absolutely. A case of this size is never the work of one person. Many people contributed over many years. On the BSH side, team members from different functions played an important role throughout the proceedings. And we worked closely with external advisors in several countries. So I see the award as recognition of a shared achievement, rather than an individual success. Looking at the discussion today, would you say the debate is over? Not at all. I actually think we are only at the beginning. There are still many practical questions that home courts will have to answer in the coming years. That is exactly why the decision remains so interesting. Let's move from legal theory to practical business implications. What does this decision mean for patent owners and companies? In my view, the biggest change is strategic. Patent owners now have better opportunities to win cross-border disputes together in one central proceeding. At the same time, companies need to be aware that they may face claims at the European headquarters covering activities in several countries. So the decision creates opportunities, but it also creates new risks. That sounds really like a significant shift, right? I would call it a re-bending thing rather than a revolution. The European Court of Justice did not create a complete new system, but it made clear that the general rule, suing a defendant where it is based, plays a much bigger role than many people had assumed. As a result, the court at the defendant's home base becomes much more important strategically. In the patent community, people often talk about cases such as FUCHIFILM versus Kodak or Regeneron against Formikon or Onesta versus BMV. Why are those cases attracting so much attention now? Because they show how quickly practice is already adapting to the new possibilities. FUCHIFILM was important because it was one of the first UPC cases to test the logic that was later confirmed in BSH. At that time, the BSH case was already pending before the European Court of Justice, and the Advocat General had expressed the view that pointed in that direction. Against that background, the District of the Local Division accepted jurisdiction over the UK part of the European patent, even before the European Court of Justice delivered its judgment. In June 26, based on the principles confirmed in BSH, the UPC Court of Appeal further developed that approach. And what happened in Regeneron versus Formikon? In the Regeneron case, the Lunic Home Court applied the approach confirmed in BSH and granted a Europe-wide injunction based on a European patent. That was one of the first examples of a national home court using the BSH framework in practice. That demonstrates that the decision is not just an academic discussion. It already has practical consequences. And what about the Onesta case? The Onesta case shows that the debate has moved beyond Europe. The Onesta attempted to assert two US patents before the Munich Home Court, BMW obtained an "antissued injunction" from a Texas federal court. That's all right. It talks a view that US patents should generally be decided by US courts. The Onesta case, therefore, illustrates that the limits of the BSH logic are now being tested internationally. Did that end the proceedings in Munich? Not necessarily. What makes the case interesting is that the Texas injunction was directed against Onesta, not against the Munich Home Court. At the same time, Onesta appealed to judge all points' decision in the United States. The Munich Home Court therefore decided to stay the case for the time being. Importantly, however, the Munich Home Court did not reject its own jurisdiction. So at least for the moment, the underlying question remains open. Can a European Home Court ultimately decide infringement claims based on US patents? That question has not yet been answered, but the case has already shown that such an attempt can trigger strong reactions outside Europe. In that sense, the debate has moved from a European jurisdiction question to an international jurisdiction conflict. For our audience of internal and external IP council, what are the main lessons from this decision? For me, there are three key takeaways. First, pay attention. Native enforcement has become more international. National litigation remains important, but companies should think across borders from the very beginning. Second, the choice of form is becoming more important, where you bring a case maybe just as important as the legal arguments themselves. And third, long term commitment matters. This case shows that major developments rarely happen because of a single filing or a single hearing. They usually result from pursuing a clear strategy consistently over many years. Do you think this decision will also influence the unified patent court? Yes, I believe so. The decision fits into a broader tent towards more centralized pay-paget litigation. Both the UPC and the BSH decision are driven by the same idea. Handling was broader disputes more efficiently and more consistently. What is interesting is that many of the questions were faced in BSH, where those electrolux are now reappearing in a new form before the UPC. Cases like Futsche Film, where those co-docs show that the discussion about jurisdiction, scope, and cost-border effects is far from over. Institutions may be new, but the underlying challenge remains the same. How do we enforce patents effectively across borders? Some commentators even see this as a step toward a more independent European patent judiciary to your agree? To some extent, yes. Professor Hans Ulrich, who supervised my doctorated studies on the legal protection of a then-use semiconductor technology many years ago, recently observed that the UPC is gradually developing its own European case law. I think that is, again, a very accurate observation. If you look at the development since BSH and the first UPC decisions, you can see that European pay-paget litigation is becoming more connected. The courts will remain important, but at the same time we are seeing a more integrated European patent system taking shape. How far that developing will go remains to be seen. Looking back on the entire journey from a vacuum cleaner pattern through litigation in several countries, all the way to European Court of Justice in the award-winning decision, what is your personal conclusion? My main conclusion is that innovation needs effective legal protection. But it also requires the willingness to challenge established assumptions and explore new approaches. For me, the BSH-versus-electrologs case shows that persistence, teamwork, a willingness to challenge accepted assumptions and a long-term strategic view can sometimes lead to developments that go far beyond the original dispute. And, Peter, today we have talked a lot about jurisdiction, patent enforcement and European case law. When you look back at this journey, which has lasted almost 20 years, what impressed you most? Probably the relation that major developments rarely follow a straight line. When we started thinking about the case, we were dealing with a very practical problem. Nobody said, "Let's create a landmark decision of the European Court of Justice." We were simply looking for a reasonable and practical solution for a company. The fact that this would eventually lead to a decision with a bright impact was something nobody could foresee at the time. Were there moments when you thought the case might fail? Of course. Whenever a case lasts many years, there will be some facts, new questions and unexpected developments. That is exactly why persistence is so important. In the end, success is often not about one fighting or one hearing. It is about staying focused on a clear objective over a long period of time. You often talk about teamwork, is that one of the main lessons from this case? Absolutely. A case of this size requires commitment from many people and institutes over many years. On the BSH side, my rule was to help maintain the strategic direction and long term commitment that such a case requires. At the same time, experts from different functions within BSH contributed technical expertise, testing, documentation and practical support throughout the proceedings. On the legal side, Roman Sebelmeier and his team at IP councils, Egerrich and Sebelmeier helped develop the cross-border litigation strategy and the overall case architecture. You are Swedish litigation teams and carry out the arguments through all stages of the proceedings. Looking back, it was a combination of institutional commitment, technical expertise, strategic leadership, well-designed case architecture and consistent execution that made the difference. One final question. What advice would you give young internal or external IP council? Don't be afraid to question accepted assumptions. Be patient. Intellectual property is usually a marathon, not a sprint. And never forget that every patent disputes, involves an invention, a business and many people who have worked hard to bring that innovation to market. For me, that connection between technology, law and strategy is what still makes this profession so fascinating today. Hans Peter, thank you so much for joining us today on IP Fridays. Thank you. It was a pleasure to be here. That's it for this episode. If you liked what you heard, please show us your love by visiting ipfreudays.com/love and tweet a link to this show. We would be so grateful if you would do that. 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