18 July 2025 – UPC’s FujiFilm v Kodak - Decision
Following its previous widely-reported ruling earlier this year, the Mannheim Local Division has now issued its decision in respect of the UK aspect of the infringement proceedings brought by FujiFilm, marking the first time that the UPC has granted an injunction which applies to the UK.
BACKGROUND
FujiFilm is the proprietor of EP 3 511 174 (the “Patent”), which concerns lithographic printing plates. The Patent is in force in Germany and the UK (it has now lapsed in other EU jurisdictions).
The proceedings centred on whether the UPC had jurisdiction to make a ruling in respect of the UK designation of the Patent and whether Kodak’s activities in the UK constituted an infringement of the same. This was the basis of Kodak’s preliminary injunction filed early on in the proceedings.
In April 2025, the Mannheim Local Division ruled that the German part of the Patent was valid and infringed (as amended), but decided to defer its decision with respect to the UK aspect of the claim whilst it awaited the pending decision of the CJEU in BSH v Electrolux (see summary here). It indicated however that, subject to the CJEU’s ruling, it may extend the injunction granted to the UK designation of the Patent.
PARTIES’ ARGUMENTS (IN BRIEF)
FujiFilm argued that the UPC had jurisdiction in respect of the UK under the Brussels I bis Regulation and following the CJEU ruling in BSH v Electrolux – which decision made clear that a Court in an EU Member State where a defendant is domiciled has jurisdiction to hear infringement claims, and grant cross-border injunctions, in respect of patents granted in EU and non-EU territories. FujiFilm further claimed that Kodak’s German subsidiaries were infringing the UK designation of the Patent through manufacturing and sales activities linked to the UK.
Kodak challenged the UPC’s jurisdiction to decide on the above, arguing that due to the UK’s non-membership of the UPC Agreement, infringement regarding the UK designation should be reserved to the UK courts. It questioned the application of UK law by a European Court. Kodak also raised invalidity defences. As a secondary position, Kodak argued that, if the court were to exercise its jurisdiction, it should only do so if FujiFilm first requested and obtained consent from the UK IPO to amend the Patent in line with the decision ultimately handed down by the UPC, which it had failed to do so.
SUMMARY OF DECISION
On jurisdiction: In applying the CJEU’s ruling in BSH v Electrolux, the UPC confirmed that it has jurisdiction over infringement claims concerning the UK designation of a European patent where the defendant is domiciled in a UPC Contracting Member State.
On infringement: Kodak’s activities in the UK - specifically offering, marketing, and storing infringing products - constituted an infringement of the Patent as amended. The Court applied UK law to assess infringement.
On validity: whether, following from the decision in BSH v Electrolux, the EU courts (which include the UPC) have jurisdiction to declare the invalidity of a UK patent was left open. However, the Court clarified that:
- “The UPC has no jurisdiction to revoke the national part of an European bundle patent for states other than UPCA contracting member states”; and
- “A declaration [that the UK part is invalid] would not be binding on the authorities in the UK, which are solely responsible for revocation of the UK part, or on the Claimant in the revocation proceedings in the UK. Otherwise, the UPC would indirectly decide on the validity of the UK part, which would be counter to the principles established by the ECJ.”
Notwithstanding this, the court established that defendants can raise invalidity defences in the UPC without filing separate UK national revocation proceedings. The UPC can then assess the validity of the UK designation of an EP - with inter partes effect only - as a "prerequisite" for establishing infringement.
It also ruled that, in the absence of pending UK revocation proceedings, there is no need to stay the UPC infringement proceedings pursuant to RoP Rule 295, nor to make the decision conditional upon the validity of the UK designation of the Patent.
The Court ultimately rejected the invalidity claim raised in this case, relying on the fact that the German part was upheld and no evidence was submitted to suggest a different ruling should be made in respect of the UK designation.
On amendments: In finding the amendment to claim 1 to be admissible, the Court ruled that Kodak was not required to notify the UK IPO of the amendment to the Patent. It considered that UK procedural rules were not applicable because the infringement proceedings in the UPC should be exclusively governed by the procedural laws of the UPC “in accordance with fundamental principles of international procedural law.” Moreover, a failure to notify the UK IPO of the amendment would not have affected any infringement proceedings before the UK courts (given the amendment in the context of these proceedings had inter partes effect only). It follows from this reasoning that Fujifilm was not required to request limitation of the UK part of the Patent at the UK IPO.
ORDERS GRANTED
The UPC granted an injunction to stop Kodak from undertaking infringing activities in respect of the Patent in the UK. It also ruled that FujiFilm was entitled to damages, the amount of which is to be determined in subsequent proceedings.
The UPC, however, declined to make a declaration on the validity of the UK designation, for the reasons set out above.
OBSERVATIONS
Kodak may well seek to appeal this decision to the UPC Court of Appeal and challenge the way the UPC reached its decision on the UK part of the case. A Court of Appeal decision would provide binding authority for local divisions of the UPC to apply. However, it seems likely that it would go onto uphold the Mannheim Local Division’s ruling given the direction of travel following the CJEU decision earlier this year.
This decision challenges the post-Brexit legal framework and therefore is likely to also trigger legislative or judicial responses from the UK. From one perspective, the decision offers clarity on the relationship between UPC jurisdiction and UK patent rights. However, it is somewhat curious that the UPC judges can make a finding of infringement based on UK law when UK lawyers or judges are themselves unable to participate in the UPC.
UK Courts also traditionally consider validity and infringement together. If Fujifilm seeks to enforce this decision in the UK, complexities are likely to arise given that the finding of validity by the Mannheim Local Division was expressly non-binding on the UK Courts. From the perspective of amendments, the patent in respect of which the injunction was granted in the UPC no longer mirrors the patent claims actually in force in the UK.
Nevertheless, this decision contributes to the UPC becoming an increasingly attractive forum for patent holders who seek to enforce their patents across Europe, potentially eliminating costs associated with bringing separate infringement actions in multiple jurisdictions.
For parties expecting to be sued for infringement, they may seek to bring a revocation action pre-emptively before a UK (or other non-UPC state) court to restrain the UPC’s jurisdiction, and minimise the risk of an unfavourable UPC ruling covering the non-UPC state (i.e. if prospects of succeeding in a defence may be lower in the UPC, based on UPC jurisprudence).
This decision undoubtedly gives rise to new cross-border litigation risks, opportunities and complexities, with the increased prospect of different findings in respect of the same patent by different courts in different jurisdictions. It is therefore important that this line of authority is factored into patent enforcement strategies going forward.
This update was written by senior associate and IP solicitor Georgia Carr, and paralegal Catarina Galhardo Lopes, in the litigation and licensing team.
