Fujifilm Corporation v. Kodak GmbH, Kodak Holding GmbH, Kodak Graphic Communications GmbH (UPC_CFI_359/2023)

Order of 2 April 2025 (ORD_598586/2023)[1]

This decision is part of the litigation between Fujifilm and Kodak. In this case, Fujifilm sued Kodak for the alleged infringement of EP 3 476 616 B1 (EP 616) by Kodak’s marketing of printing plate products marketed “SONORA X”, “SONORA XTRA-2” and “SONORA XTRA-3.”

The alleged infringement relates to lithographic printing, a technique for producing high-quality prints at large scale, often used in printing newspapers and magazines. Lithographic printing has been around for over 200 years, but the invention in question concerns the dimensions of tiny pores in “white” parts of a lithographic printing plate, that are filled with a chemical solution to make them ink-repellent. When ink is applied to the plate, the repulsion of ink leaves the “white” parts ink-less, and a piece of paper subsequently pressed on to the plate will be coloured only in the non - “white” areas. The patent claims that the specific pore dimensions improve the number of prints that can be made after application of ink and prevent unwanted ink retention by the “white” parts.

EP 616 is currently still in force in Germany and in the UK but has lapsed in all other EPC jurisdictions prior to the commencement of the UPCA on 1 June 2023. Fujifilm seeks amongst other things, a permanent injunction, and damages not only in Germany, but in a number of other EU countries as well. Unusually, Fujifilm also sought a permanent injunction and damages for infringement in the UK, which is currently not part of the UPC.

In response, Kodak counterclaimed against Fujifilm to challenge the validity of EP 616 for lack of novelty and for lack of inventive step. Kodak argued that the Sonora XTRA-3 did not infringe EP 616 as its embodiment did not fit within the claims. Furthermore, Kodak alleges that they have a prior use right pursuant to Section 12 of the German Patent Act in conjunction with Art. 28 UPCA, which allows them to continue manufacturing and distributing the infringing products in Germany. We summarise below the case and takeaway point from the case.

Jurisdiction

The panel hearing the trial consisted of three legally qualified judges and one technically qualified judge. As part of Fujifilm’s request for damages for infringement of EP 616 in multiple EU countries, the court first considered whether they have jurisdiction to determine damages for infringement of national patents of both UPC and non UPC members which lapsed before the UPC was established on 1 June 2023, concluding that they did not.

The court came to this conclusion by reference to Article 3 (c) of the UPCA which, as the court put it, “vests upon the UPC jurisdiction over any pre-existing European patent which has not yet lapsed at the date of the UPCA’s entry into force, i.e., 1 June 2023.” It had to decide the construction of Article 3 (c) to determine whether it had jurisdiction for the EP 616 national patents which have already lapsed.

The court construed “any European patent” as meaning “any national part thereof.” However, the court considers that the UPCA acknowledges the legal effects of the EPC as distinct from the UPC, and therefore, Article 3 (c) cannot be the basis of transferring jurisdiction of national EP patents which have lapsed before the UPC was established just because one national part is still in force at that date. Article 3 (c) UPCA in general speaks of a European patent without differentiating between UPCA member and non-member states, therefore, if this were allowed, the UPC would have jurisdiction over infringement for both members and non-members of the UPCA provided a single EP patent was still in force when the UPC was first established, regardless of whether that EP patent is part of the infringement action or when the infringing acts took place.

Furthermore, the court point out that the purpose of the UPCA is clearly aimed at the future by referring to recital 2 of the UPCA, by which the member states to the UPCA consider the “fragmented market for patents and the significant variations between national court systems … detrimental for innovation, in particular for small and medium-sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims and claims relating to patents which should be revoked.”. There was nothing to suggest the contracting member states wished to give up jurisdiction of their national courts over national parts which lapsed before UPCA entered into force.

Prior Use

Kodak then tried to rely on public prior use as a defence to the infringement action, by stating that the subject matter of EP 616 is anticipated by printing plate precursors being made available to the public before the relevant priority date of 31 August 2017.

The court did not allow Kodak to rely on this ground due in part to the timing in which Kodak submitted facts concerning this ground, which was only in their Rejoinder to Fujifilm’s Reply on infringement and in their Reply to Fujifilm’s Defence to Counterclaim. The Court did not allow reliance on those facts as allowing it would lead to procedural unfairness for Fujifilm, where they must either call for additional briefs or will not have the opportunity to answer those points.

As a result, the court relied exclusively on Kodak’s Statement of Defence and Counterclaim for Revocation for the fact analysis exercise on this ground. The court concluded from those pleadings that Kodak have not discharged the burden of proof to establish their public prior use defence, but rather, the documents show that before the relevant priority date of 31 August 2017, the plates have been protected by a confidentiality regime. The court reached this conclusion as the tests on the plates were done internally and the report of those tests being marked as “confidential/or internal use only”; with the reports also indicating that the general public would not have access to the plates that were tested.

Amendments

Fujifilm also made several applications to amend the claims of EP 616 of which some were allowed. However, the court did not allow Fujifilm to amend specific subclaims so that they can be defended as an independent claim, because Fujifilm did not file a proper application for this. The court stated that the power to grant such a request originates from Art 76. (1), which is a strict principle of requiring the court to decide matters in accordance with the requests by the parties and not award more than is requested.

Therefore, a party which wishes to make such a request must make an application in accordance with RoP 30.1, which governs applications to amend. This includes claim amendments that change a dependant claim into an independent claim, because such a change will also change the subject matter of the patent and will mean that references made in other dependant claims will need to be changed accordingly. This interpretation of the rules would support the broader purpose of requiring a request be unambiguous in determining the subject-matter and the order of priority in which the patent is defended.

The court further commented that even if they allowed Fujifilm’s request without a proper application, the interaction between that request and other requests that Fujifilm had made proper applications for would be unclear to the court; there would not be a natural order of priority of dependant claims in which the court should examine them, since they related to different aspects of the alleged invention. Ultimately the court rejected Fujifilm’s position on this issue.

Interpretation of claims, novelty and inventive step

The court interpreted the claims from the point of view of the person skilled in the art which it held was a chemist or physicist with a master’s degree or diploma from a university and usually a doctorate, specialised in the field of physical chemistry, with several years of experience in the production of lithography plate precursors and the relevant substrates. The court went on to hold that the independent claims were new but lacked inventive step over earlier patent documents that disclosed printing plates with the same pore dimensions.

Of note, the court had no qualms with the idea that the skilled person would combine multiple earlier patent documents to reach the invention. The court even went as far as to say that the skilled person would “browse the relevant patent literature”, and if doing so would yield the invention then the invention was obvious. While this doesn’t seem to be inconsistent with the approach taken by the European Patent Office, it is in marked contrast with the approach taken by national courts in some states party to the European Patent Convention, including the UK, where a combination of patent documents usually cannot be used to support a finding of lack of inventiveness (unless they expressly cross-refer to each other).

Decision

The court ultimately found that EP 616 was invalid, therefore, it was revoked in Germany and Fujifilm was ordered to bear the costs of these proceedings.

[1] https://www.unified-patent-court.org/en/node/81265