Context:
- There are opportunities in the UPC, but sometimes there can be a downside. The Court of Appeal’s (CoA) Fujifilm v. Kodak decision (June 2, 2026 ip fray article) resulted in the reversal of an injunction the Mannheim Local Division (LD) had granted.
- In Section 1.1 of our latest UPC Roundup, we announced a potential follow-up concerning the part of the decision that deals with private prior use in Germany.
Further analysis:
- There are strong reasons to believe that a German lawsuit over that particular patent (and maybe even a separate one in the UK) would have been reasonably likely to work out better for Fujifilm, not simply because it couldn’t have gone worse but because a different decision on only one of three controversial questions might have been enough for Fujifilm to overcome Kodak’s private-prior-use defense. And there was nothing particular to gain from the UPC, given that the only remaining territories for the patent-in-suit where Germany and the UK.
- The CoA decision lays out a permissive approach to (German) private prior use in evidentiary, substantive, and procedural terms that should serve as a warning to other patent holders in scenarios where a private-prior-use defense under German law is reasonably foreseeable.
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Court and counsel
CoA (panel 2): Presiding Judge Rian Kalden, Judge Ingeborg Simonsson, Judge Dr. Patricia Rombach, Technically Qualified Judge Max Tilmann, and Technically Qualified Judge Lorenzo Parrini.
Counsel for plaintiff Fujifilm: Kather Augenstein’s Dr. Christof Augenstein. He came in only after the first-instance ruling, which was a limiting factor. He might have recommended different decisions at earlier stages if he had been involved.
Counsel for defendant Kodak: Freshfields’s Wolrad Prinz zu Waldeck und Pyrmont and Dr. Nina Bayerl.