Context: In the spring, Fujifilm prevailed on one of its two patent assertions against Kodak in the Unified Patent Court’s (UPC) Mannheim Local Division (LD) and lost the other case (April 2, 2025 ip fray article). In a parallel case, the Dusseldorf LD did not even await the European Court of Justice (ECJ) ruling in BSH Hausgeräte v. Electrolux (February 25, 2025 ip fray article) and rightly assumed long-arm jurisdiction over the UK part of the relevant patent-in-suit (January 28, 2025 ip fray article), which had no practical effect as the complaint was rejected on technical grounds, though the defendant is awarded most of its fees for UK legal advice (item 6 of our July 13, 2025 UPC Roundup). The Mannheim LD, however, severed the UK-related claims from the two cases before it so as to address them at a separate hearing and render a UK-specific decision.
What’s new: The Mannheim LD just rendered its two judgments following the UK-specific hearing. It concluded that it has jurisdiction over the infringement claim (not over a declaratory judgment claim, though), and that the UPC does not have to stay a case if there isn’t even a parallel case in the UK. In one case, those UK-specific holdings did not make a difference because the complaint was rejected on technical grounds (PDF). In the other (PDF), the Mannheim LD has granted Fujifilm the UPC’s first-ever injunction covering the UK. Not only is there an injunction in place now (which Fujifilm can enforce) but Kodak will also have to provide an accounting for the purpose of determining damages for past infringement, a remedy over which the UPC equally assumes jurisdiction. To all remedial questions, the Mannheim LD applied UK statutes.
Direct impact: Kodak can appeal this decision and request a suspension (stay) from the UPCs Court of Appeal (CoA). The CoA will presumably affirm long-arm jurisdiction with respect to the UK, but the devil is in the detail and Kodak might try to challenge the way the UK-specific decision was reached.
Wider ramifications: While this development will undoubtedly contribute to the UPC’s growing popularity (in our UPC News for this week we reported on a surge in filings), it will be viewed with concern and dismay by UK judges and lawyers, apart maybe from those who have a strong UPC business (such as through an Irish office) anyway. At a time when cross-jurisdictional overreach by UK judges in connection with standard-essential patents (SEPs) — for the avoidance of doubt, the patent on which Fujifilm prevailed is a non-SEP — is a major problem (July 7, 2025 ip fray article), the fallout from BSH Hausgeräte v. Electrolux further complicates the relationship between UK and EU-based courts. This does not mean to criticize the Mannheim LD for applying the ECJ’s guidance. Much to the contrary, by holding a separate hearing to discuss certain legal questions of first impression the Mannheim LD showed that it was conscious of the enormous importance of getting this decision rights.
Here’s a screenshot of a few lines from this historic decision:
Here are the headnotes:
- The UPC has jurisdiction to decide upon the infringement of the UK part of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with erga omnes effect (following ECJ, judgement of 25 February 2025, C-339/22, BSH Hausgeräte).
- The defendant in an infringement action before the UPC which relates to the UK part of a European bundle patent is allowed to raise an invalidity defence without being obliged to file a national action for revocation in the UK. The UPC will then assess the validity as a mere prerequisite for infringement (following Local Division Dusseldorf, decision of 28 January 2025, UPC_CFI_355/2023). The outcome of the infringement action before the UPC has inter partes effect only.
- In the absence of a pending national revocation proceeding in the UK, there neither is a reason to stay the infringement proceeding before the UPC nor to make the decision conditional upon the validity of the UK part of the European patent.
- There is no legitimate interest of a defendant obtaining a declaration that the UK part of a European bundle patent is invalid, since such declaratory relief is not binding on the national authorities.
Patent-in-suit and defendant entities
The winning patent-in-suit is EP3511174 (“Planographic printing plate original plate, method for manufacturing planographic printing plate, and planographic printing method”). The accused Kodak printing plate is named SONORA XTRA-3. The complaint sought damages for past infringement in some other countries where the relevant parts of the patent-in-suit have already expired, and both monetary and injunctive relief for two countries: Germany (that part was decided in early April as discussed above) and the UK.
The enjoined defendants are three German limited liability companies from the Kodak group: Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH. Therefore, the injunction is based entirely on all defendants’ legal domicile (Stuttgart, Germany) as opposed to an anchor defendant in Germany and other entities in different (potentially non-UPCland) countries, a concept the Hague LD has already recognized (item 1 of our May 25, 2025 UPC Roundup).
Defendants raised UK-specific issues
The defendants made certain arguments specific to this situation in which the UPC is asked to grant remedies with respect to a non-UPCland country:
- They wanted Fujifilm to “undertake[]] to consent before the UK Court and Intellectual Property Office to revocation or restriction of the EP 3 476 616 B1 (UK) in line with decision handed down by this court.”
- The defendants denied the UPC’s UK-related jurisdiction with reference to principles of international law, which the Mannheim LD rejected as this was already put to rest by the ECJ in BSH Hausgeräte v. Electrolux, and the scope of application of the UPC Agreement (UPCA), which the Mannheim LD rejected as “[t]here is no indication that the UPCA member states intended to transfer jurisdiction to the UPC with regard to their national parts of a European patent only, thereby reserving jurisdiction with regard to other national parts to their national courts.”
- The defendants alleged that Fujifilm had not observed UK legal requirements for the defense of the patent in a narrowed version.
- At minimum, they wanted a stay of proceedings, and they wanted their invalidity arguments against the patent-in-suit to be understood as an invalidity defense also with respect to the UK part of the patent-in-suit. The latter did not make a difference because the counterclaim for revocation of the German part of the patent-in-suit failed before.
- Prior use rights will be discussed further below.
Validity and auxiliary requests
One of various important aspects of the ruling is that Fujifilm’s auxiliary requests to amend the patent were deemed admissible not only with respect to the German part of the patent-in-suit, but also with a view to the infringement decision on the UK part. The Mannheim LD does not consider it necessary for Fujifilm (much less for itself) to notify the UK IPO, given that whatever the UPC says about the validity of the UK part of the patent-in-suit has no effect on the UK patent register that would apply erga omnes (in proceedings against any other party, meaning that the patent would be narrowed in general and not only be treated as narrowed for the purposes of the UK-related parts of the UPC proceedings).
The Mannheim LD distinguishes clearly between infringement and invalidity jurisdiction. At an inter partes level, it considers itself empowered, under BSH Hausgeräte, to make a determination and order remedies. To the extent it is necessary for that purpose, it also deals with the invalidity defense. But it obviously does not have authority over the UK part of the patent to the extent it is registered in the UK.
Prior use rights
Kodak raised a defense based on prior use rights in two ways:
- They tried to extend to the UK the prior use rights they claimed to have in Germany. The court rejected that argument because, at minimum, the defendants did not submit sufficient facts to support that defense.
- They alternatively claimed prior use rights under UK law, and the Mannheim LD disposed of that defense applying UK law:
As far as Defendants argue additionally that they could refer to a prior use right under s.64 UK Patents Act 1977 this argument falls through as well, as they did not show a business decision amounting to effective and serious preparations in good faith according to s. 64(1)(b) UK Patents Act 1977 in the UK as the burden of proving that defence also rests on the infringer under UK law (cf. standards of UK law as set out in Exhibit 39).
Certain declarations denied as they would not be binding on UK courts
Not only with a view to the defendants’ requests but also with respect to the plaintiff’s request for declaratory judgment (in that case, declaratory judgment of there being an infringement), the Mannheim LD declined to make declarations that would not be binding on the UK courts anyway.
UK statutory law applied to patent remedies
The injunction is based on s.61(1)(a) UK Patents Act 1977, but the decision also says that the outcome would be the same under the UPCA. Either way, the court has the discretion to grant an injunction after identifying an infringement.
The penalty for violating the injunction is a function of the number of square meters of infringing printing plates sold. The decision merely notes that “Defendants did not submit that UK law would not allow such order.”
The holding that Fujifilm is entitled to damages for past infringement is, like the injunction, based on UK statutory law (s.61(1)(c) Uk Patents Act 1977). Kodak will have to provide an accounting that will enable Fujifilm to calculate a damages claim.
The court previously (in its April 2, 2025 decision) already denied a request for damages in compensation for moral prejudice, a concept of UK law.
The destruction of infringing goods is based on s.61(1)(b) UK Patents Act 1977. For a recall, the decision notes that it is accepted (though not codified) in UK law.
For the definite removal of infringing products from the channels of commerce, the judgment does not refer to a UK statute but to Art. 64(d) UPCA in conjunction with the fact that the defendants did not explain why this question would have to be decided differently under UK law.
Enforcement security is required under Art. 82(2) UPCA, R. 118.8 RoP. The costs award is also decided on the basis of UPC statutes.
This decision as a whole will be discussed a lot in the weeks and months ahead. But in the end it’s all for the CoA to decide.
Court and counsel
Presiding Judge (and here, judge-rapporteur) Prof. Peter Tochtermann, Judge Dirk Boettcher (“Böttcher in German), Judge Peter Agergaard (Copenhagen, Denmark) and Technically Qualified Judge Erwin Wismeth.
Counsel for Fujifilm: Hoyng Rokh Monegier (lead counsel: Dr. Tobias Hahn).
Counsel for Kodak: Freshfields (counsel of record: Elena Hennecke).