Fives ECL v REEL (CFI, 11 February 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 11 February 2026 (UPC_CFI_274/2023), given in German, the Hamburg Local Division dismissed Fives ECL SAS’s claim for EUR 6,500,000 in damages against REEL GmbH, whose liability for infringing EP 1 740 740 had been finally established by the Düsseldorf Regional Court. It held that national law governs damages for acts completed before the UPCA entered into force on 1 June 2023, and that the claim would also fail under Art. 68 UPCA. The decision matters for every damages action concerning pre-UPC acts, and for proof of lost profit.

Facts and procedure

On 9 August 2022 the Düsseldorf Regional Court enjoined REEL from offering service modules for aluminium electrolysis cells and held it liable for damage caused by acts since 2 December 2016, that judgment is final (paragraphs 2 and 39). Fives brought a damages determination action before the UPC on 8 August 2023: in a tender for the Alba smelter in Bahrain it had lost to REEL’s infringing bid, then won the contract after the tender was reopened by granting a discount of EUR 6.5 million (paragraph 22). The jurisdictional objection, initially upheld, was overturned by the Court of Appeal on 16 January 2025, which remitted the case to Hamburg (paragraphs 4 and 24).

The applicable law

The division considered the scope of Art. 75(2) UPCA, the principle of non-retroactivity (Art. 28 of the Vienna Convention and Union law, applicable through Art. 20 UPCA), then lost profit under §§ 249 and 252 BGB, § 139 PatG and § 287 ZPO, and in the alternative Art. 68 UPCA, which mirrors Art. 13(1) of Directive 2004/48 (paragraphs 26 to 38 and 100 to 102).

Question

Which law governs damages before the UPC for infringing acts committed before 1 June 2023, and is a discount granted to win a contract recoverable lost profit?

Decision

The division was not bound by the remittal on applicable law, as the Court of Appeal ruled only on jurisdiction, and jurisdiction and applicable law are distinct (paragraphs 26 and 27). Since the UPCA shows no intention to apply retroactively, its substantive law does not govern acts committed and completed before it entered into force: a defendant that assessed its risk under national law cannot later face harsher rules (paragraphs 31 to 37). On the facts, Fives did not show that the alleged profit was probable: its margin was not shown to be reasonable, the patented feature was not a decisive tender criterion, and REEL’s assembly concept gave it an edge (paragraphs 48 to 77). Since the parties agreed the customer would in any event have asked for a second bid, REEL’s viable and cheaper non-infringing alternative had to be taken into account, and the discount was not rationally justified (paragraphs 78 to 96). Causation was not established and Art. 68 UPCA would not change the outcome, as both regimes require proof of lost profit (paragraphs 97 to 110). Fives bears the costs and the value in dispute was set at EUR 6,500,000.

Key points for practice

• UPC jurisdiction over a standalone damages action says nothing about the applicable law: for acts completed before 1 June 2023, national law applies.
• Lost profit requires proof that the margin was reasonable and that the loss was caused by the infringement, including in light of the lawful alternative bid the infringer could have made.
• As both German law and the UPCA rest on Directive 2004/48, the division saw no difference in outcome (paragraph 102).
• Practical point: a claimant must file the calculation behind its original bid and its margin, a party expert report is not enough if the underlying data are not in the record (paragraph 108).

Provisions applied

Agreement on a Unified Patent Court

Art. 3(c), 20, 32, 68, 69, 75(2) and 83

Directive 2004/48/EC

Art. 13(1)

Rules of Procedure

Rules 131.2(a) and 220.1(a)

Case law cited

Fives v REEL, Court of Appeal, 16 January 2025, XSYS v Esko, Court of Appeal, 2 June 2025, Mannheim Local Division, 11 March 2025, UPC_CFI_159/2024 and UPC_CFI_162/2024, CJEU, C-376/02, C-267/20, C-428/20, C-284/16 (Achmea), C-604/13 P

Related decisions

• Fives ECL v REEL, 17 November 2023, order of the judge-rapporteur upholding the jurisdictional objection, later overturned on appeal.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.