Fujifilm Corporation v. Kodak GmbH, Kodak Holding GmbH, Kodak Graphic Communications GmbH

UPC_CFI_359/2023 and UPC_CFI_365/2023

Orders of 18 July 2025

The UPC has begun to shape the contours of European patent litigation following the landmark ECJ decision in BSH Hausgeräte GmbH v Electrolux AB (“BSH Hausgeräte”) [1]. The recent Fujifilm v Kodak decisions regarding infringement of the EP’616[2] and EP’174[3] (collectively the “Patents”) offer critical insights into how the UPC navigates jurisdictional complexities, particularly when dealing with national parts of European patents validated in non-EU states such as the United Kingdom.

Jurisdiction

Following the Mannheim LD’s decision on 2 April 2025[4],[5] to separate the UK-related infringement proceedings of the Patents, the court held a dedicated hearing for this issue. In its decision, the Court first confirmed it had jurisdiction over infringement in the UK. Citing the ECJ’s ruling in BSH Hausgeräte, the court held that under Article 4(1) of the Brussels Ia Reg, it may decide infringement actions involving patents validated in non-EU states—such as the UK—if the defendant is domiciled in a Member State. This follows on from the decision of the Dusseldorf LD on 28 January 2025 between the same parties about a different patent (EP’009) where the court previously said it had jurisdiction to determine infringement in respect of UK but held the patent was invalid[6]. Similar conclusions were reached in relation to UPC jurisdiction over a European patent in various non-UPC territories within and outside the EU in Alpinestars S.p.A. v. Dainese S.p.A.[7] and Mul-T-Lock France and ors v. IMC Créations[8].

While exceptions exist (e.g. under the Lugano Convention, bilateral treaties, or Articles 33 and 34 Brussels Ia Reg), the court found that none applied. It emphasized that its assessment of the UK patent’s validity was only a prerequisite to deciding infringement and only had inter partes effect; clarifying that the UPC does not have jurisdiction to determine a defence which may affect the existence or content of that patent in that third state (erga omnes effect) as established by BSH Hausgeräte.

Additionally, the Mannheim LD clarified that Article 71b Brussels Ia Reg allows common courts like the UPC to exercise the same jurisdiction as national EU courts. As such, the court concluded it had jurisdiction to hear the UK infringement claims of both patents.

Validity

Following the finding on jurisdiction, the Court then proceeded to analyse the validity of the Patents. The Court acknowledged that UK law on validity may differ, but chose not to assess whether this would have made a difference, noting that the parties hadn’t submitted any arguments on validity specific to the UK.

The Court’s assessment of inventive step, in particular, would certainly have raised eyebrows in the UK, for both Patents. The UK approaches assessment of inventive step differently in certain respects, see further below.

The Court’s method for assessing inventive step does share some features with the UK’s test, such as identifying the skilled person and their relevant common general knowledge. But the Mannheim LD didn’t follow the remainder of the UK’s unique test, and opted simply to repeat the findings on validity it made in its previous decisions on the German parts of the Patent[9]. It found that EP’616 was not valid, while EP’174 was valid and infringed in the amended form put forward by the proprietor.

Orders given

EP’616

The UK part of EP’616 was found invalid, and accordingly, the Claimant’s requests for relief were dismissed. However, the Defendants’ request for revocation or a declaration of invalidity concerning the UK part of EP’616 was also rejected.

The Court stressed that revoking a UK part of an EP patent would have an erga omnes effect, for which it does not have jurisdiction. A declaration of invalidity would similarly not serve a legitimate purpose for the Defendants other than to influence potential UK proceedings; therefore, it would indirectly carry an erga omnes effect which is contrary to principles set in BSH Hausgeräte by the ECJ.

EP’174

The UK part of EP’174 was, however, found to be valid and infringed. In reaching this conclusion, the UPC allowed the Claimant to amend the patent in a narrower form pursuant to Rule 30.1 of the Rules of Procedure. The Court noted that although under UK procedural laws, the UK Intellectual Property Office must also be notified when an application for such an amendment is made, the Court held that this action was governed exclusively by the procedural rules of the UPC, and the effect of the decision will only have inter partes effect and does not carry erga omnes effect on the UK part of EP’174. Therefore, the Court concluded that such a notification was not required for the amendment.

These findings resulted in the Claimant’s request for remedies being granted in part, with the courts accepting that the facts demonstrate that the Defendants deliver the infringing product directly to UK distributors. These acts constituted importing, offering and disposing under s. 60 (1) (a) of the UK Patents Act 1977 (“PA 1977”).

However, the court refused to enjoin the Defendants from “making” the infringing product in the UK. The Claimant had not demonstrated the Defendants are currently manufacturing in the UK, nor was there an imminent risk of manufacturing in the UK; the complexity of the manufacturing process and existing infrastructure in Germany made relocation to the UK unlikely. Further, the Claimant did not explain the legal basis under UK law to support such an injunction against the Defendants.

The court similarly refused to issue a declaration of infringement, reasoning that the Claimant had not demonstrated a legitimate interest in such relief, mirroring the court’s refusal to grant a declaration of invalidity to the Defendants. The court found no basis in PA 1977 to depart from this reasoning.

The court ultimately made an order granting partial remedies in the UK, grounding its orders in UK statutory law where applicable, particularly the PA 1977, and supplemented them with UPC procedural rules. The court also emphasized that none of the defendants contested the applicability of these UK legal standards.

Discussion

These decisions by the UPC raise several important questions on the divergence between UPC and UK substantive and procedural law, and the legal implications of that divergence.

This is the first instance where a patent has been held valid for the purposes of infringement, and a UK injunction has been granted as a result. As mentioned above, the Court used its own test when assessing inventive step, instead of using the UK’s approach. For example, the UK courts consider that the “problem-solution” approach adopted by the EPO and followed (with adaptations) by the UPC has flaws, and in general they do not use it.

Another aspect of UK law on inventive step is that courts are more apprehensive about determining that an invention is obvious over a combination of prior art documents (sometimes referred to as ‘mosaicing’). The EP’616 decision concluded that the invention in claim 1 was obvious over a combination of prior art documents which didn’t cross-reference each other – a UK judge would have been unlikely to combine the disclosure of two documents in the absence of a specific pointer from one to the other.

These actions may have been decided on the evidence, but whether the UPC will continue to take a broad-brush approach to applying the substantive law of a non-UPCA member state when their long arm jurisdiction is engaged can only be tested in future cases.

Relatedly, another interesting thing to note is the court’s decision that the UPC has exclusive jurisdiction over procedural law of the case, including amendments as seen in the EP’174 decision, where the court allowed the amendment to EP’174 and decided validity based on those amendments, but also decided that notification to the UKIPO was not a prerequisite as that procedure is only relevant to narrowing the patent with erga omnes effect. This contrasts with the observations of the Paris LD in Hurom Co., Ltd v. NUC Electronics Europe GmbH and ors[10], which noted (in relation to alleged infringement in the non-UPC territory Poland) that “the Polish part of the [patent] cannot be revoked by the UPC nor amended” and “the only possible request concerning the acts of infringement must relate to the patent as granted.” Further developments will be required from the Courts to resolve this apparent difference in view.

The implication of the approach of the Mannheim LD seems to be that a patent owner can narrow a European patent in proceedings before the UPC with only inter partes effect in relation to non-UPC countries, so that the national parts of the European patent outside the UPC remain in unamended form. Consequently, subsequent cases relating to the European patent outside the UPC with other parties in either national courts or the UPC will be conducted with the original unamended patent as the starting point. In theory, the original patent could be subject to other, different amendments on an inter partes basis, creating a web of different amendments over multiple litigation cases without ever amending the original patent itself in the relevant national registry. Whether this is an intended effect, and if so, how the UPC will consider such interactions, will remain to be seen.

Conclusions

These decisions mark a pivotal moment in the UPC’s evolution, demonstrating the application of long arm jurisdiction following BSH Hausgeräte, leading to the UPC granting its first injunction for a patent of a non-UPCA state and non-EU state. The UPC has shown that they are able to rule on validity and infringement issues on patents of third country states once they have subject matter jurisdiction over the matter; and goes even further in this case by deciding these issues for an amended patent. However, the UPC will only decide such matters on an inter partes basis in accordance with BSH Hausgeräte.

We’ve identified some discrepancies as discussed above between these decisions and established UK law on inventive step and procedural issues, even though the UPC seemed to have glossed over this point. The Court’s willingness to combine prior art documents and its flexible approach to amendments—particularly those with inter partes effect—may lead to outcomes that differ from those under UK law. This is in spite of the Court repeatedly emphasizing the importance of applying UK law in deciding infringement issues and the requests of the parties; with some issues being decided on the lack of evidence on UK law.

As cross-border patent enforcement becomes increasingly complex, these decisions underscore the need for litigants to carefully consider jurisdictional strategy and the evolving interplay between UPC and national courts, including the UK. Considering these decisions, it seems that input from a team of UK patent attorneys and UK lawyers would be instrumental when infringement of the UK part of a European patent is alleged at the UPC.

[1] https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex:62022CJ0339

[2] https://www.unifiedpatentcourt.org/en/node/136514

[3] https://www.unifiedpatentcourt.org/en/node/136513

[4] https://www.unifiedpatentcourt.org/en/node/81in which it c266

[5] https://www.unifiedpatentcourt.org/en/node/81255

[6] EIP article available at https://eip.com/uk/latest/article/upc_weighs_in_on_extraterritorial_jurisdiction/, with the original judgement available at https://www.unifiedpatentcourt.org/en/node/53123

[7] https://www.unifiedpatentcourt.org/en/node/94398

[8] https://www.unifiedpatentcourt.org/en/node/74961

[9] https://www.unifiedpatentcourt.org/en/node/81265 and https://www.unifiedpatentcourt.org/en/node/81254

[10] EIP article available at https://eip.com/us/latest/article/paris_local_division_rules_on_validity_of_juicer_patent_scope_of_r_19_rop/, with the original judgement accessible at https://www.unifiedpatentcourt.org/en/node/124296