Context: After the European Court of Justice (ECJ) decision in BSH Hausgeräte v. Electrolux (February 25, 2025 ip fray article), the Unified Patent Court (UPC) has long-arm jurisdiction over non-UPCland parts of European bundle patents, as the Paris Local Division (LD) has already clarified (see item 1 of of our March 22, 2025 UPC Roundup).
What’s new: The UPC’s Mannheim LD has just handed down its decisions in two Fujifilm v. Kodak cases. Fujifilm has prevailed on EP3511174 (“Planographic printing plate original plate, method for manufacturing planographic printing plate, and planographic printing method”) (PDF) and won an injunction covering, for now, only Germany. It may be extended to the UK shortly, but the parties will get to brief the court on that question. Fujifilm lost the other case because EP3476616 (“Lithographic printing plate precursor, method for manufacturing a lithographic printing plate, and printing method”) has been declared invalid with respect to Germany (PDF).
Direct impact: Kodak can try to obtain an enforcement stay from the UPC’s Court of Appeal (CoA), but the hurdle for that is high. Fuji will probably appeal the unfavorable parts, especially in orer to salvage EP’616.
Wider ramifications: The dispute over EP’174 has the potential to become a landmark case because the forthcoming decision may be the first UPC injunction covering the UK. Also, today’s decision already provides the important clarification that the UPC does not have jurisdiction over the national parts of a European bundle patent that lapsed prior to June 1, 2023 (when the UPC opened its doors). It furthermore explains that the factual allegations underpinning a prior use defense must be made in the Statement of Defense (which frequently comes with a Counterclaim for Revocation), not just on reply. And to the extent that German law applies to the prior use defense, it lays out the standard in terms of a firm decision to actually use a technique.
It is unusual for a UPC decision to cover only one country. The second country to which the remedies (injunction and accounting for damages) relate may very well be the UK, though it would be a non-UPCland country. The plaintiff apparently hoped to recover damages for some additional countries, but the patent lapsed in those other countries before the official start date of the UPC. The following parts of Fujifilm’s damages claim were therefore rejected:
- Albania, Austria, Cyprus, Czechia, Denmark, Estonia, Finland, Italy, Lithuania, Latvia, Malta, Monaco, The Netherlands, North Macedonia, Poland, Romania, San Marino, Serbia, Slovenia, Spain, Sweden, Tükiye (period: July 17, 2019 to May 26, 2021);
- Belgium, Ireland, Liechtenstein, Luxembourg, Switzerland (period: July 17, 2019 to May 31, 2021);
- France (period: July 17, 2019 to July 26, 2021);
- Bulgaria, Norway (period: July 17, 2019 to August 26, 2021);
- Greece (period: July 17, 2019 to August 27, 2021);
- Iceland (period: July 17, 2019 to September 26, 2021; and
- Portugal (period: July 17, 2019 to September 27, 2021).
If Fujifilm had anticipated this outcome (assuming that the CoA won’t overrule the Mannheim LD and expand jurisdiction to pre-UPC periods even with respect to lapsed national parts) as well as BSH, it would probably have opted out the patent and sued in a German national court, leveraging BSH. Then it could have sought damages in a single court over all those past infringing acts. It may still do so now, given that the UPC held it did not have jurisdiction.
As for prior use rights as an affirmative defense to patent infringement, it is a theory that the judgment treats under German national law. It provides useful clarification for practitioners in that regard.
The headnotes of the case over EP’616 (the patent that was held invalid) are also instructive:
1. Art. 76 (1) UPCA contains a strict application principle. Accordingly, a patent proprietor, who wishes to defend its patent in a limited version, has to submit a clear and comprehensive Application to amend the patent.
2. R. 30 RoP also calls for an Application to amend the patent, if the patent proprietor wishes to rely on a dependent claim as granted as a new independent claim.
Panel and counsel
Panel: Presiding Judge (and judge-rapporteur on EP’174) Professor Peter Tochtermann, Judge (and judge-rapporteur on EP’616) Dirk Boettcher (“Böttcher” in German), Judge Peter Agergaard (Copenhagen, Denmark) and Technically Qualified Judge Erwin Wismeth.
Fuji is represented by Hoyng Rokh Monegier (lead counsel: Dr. Tobias Hahn).
Kodak is represented by Freshfields (counsel of record: Elena Hennecke).