Short Summary
Procedural order from the Mannheim Local Division of the Unified Patent Court concerning EP 3 511 174. The court ordered the separation of proceedings regarding the UK national part of the patent-in-suit because the ECJ decision in C-339/22 (BSH Hausgeräte), which addressed a fundamental question of European law on international jurisdiction under the Brussels Ia Regulation, was only delivered after the oral hearing. The court found it inappropriate to delay the entire decision or hold a second oral hearing, and instead separated the UK-related claims to be dealt with in separate proceedings.
Detailed Summary
This is a procedural order (UPC_CFI_365/2023) issued on 2 April 2025 by the Mannheim Local Division of the Unified Patent Court concerning European patent EP 3 511 174. The claimant is FUJIFILM Corporation of Tokyo, Japan, represented by HOYNG ROKH MONEGIER. The defendants are Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH, all based in Stuttgart, Germany, and represented by Freshfields Bruckhaus Deringer. The panel consisted of presiding judge Tochtermann, judge-rapporteur Böttcher, judge Agergaard, and technically qualified judge Wismeth. The language of proceedings was English.
The subject of the proceedings was patent infringement and the separation of proceedings. The core issue arose because the European Court of Justice decision in case C-339/22 (BSH Hausgeräte), which concerned a fundamental question of European law regarding international jurisdiction under the Brussels Ia Regulation to be applied by the UPC pursuant to Articles 71a and 71b(1), had not been delivered by the end of the oral hearing. The ECJ decision was only issued on 25 February 2025, after the oral hearing had concluded.
The court reasoned that while the ECJ decision was delivered before the scheduled date for the decision in the present proceedings, it would be inadmissible or at least questionable in light of the parties' right to be heard for the panel to base its decision on the ECJ ruling without giving the parties an opportunity to comment on it and its implications. However, the court also found it inappropriate to hold a second oral hearing for the entire case, particularly since the panel could deliver a decision regardless of the outcome of the ECJ decision.
The court held that where infringement proceedings are ready for decision with regard to single national parts only, such a decision should not be withheld on a regular basis if doing so would delay the enforcement of the claimant's potential patent rights (potentially after success before the Court of Appeal). The court also noted that defendants have a legitimate interest in non-delay of proceedings, particularly with regard to counterclaims for revocation. The court therefore applied Rules 302.1, 303.2, and 340.2 of the Rules of Procedure accordingly to separate the proceedings with regard to national parts of traditional European bundle patents that were not yet ready for decision.
By order of 22 January 2025, the parties had been informed that, with regard to the UK, the panel might deal with the questions concerned by the pending ECJ decision in separate proceedings after separation of cases if no ECJ decision was delivered before the oral hearing. The parties did not oppose this approach.
The final order separated the claimant's requests based on the national part of the patent-in-suit in relation to the United Kingdom and the defendants' requests relating to that national part, to be dealt with in separate proceedings.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Mannheim (DE) Local Division. Understanding the court's reasoning in Fujifilm Corporation vs Kodak GmbH, Kodak Graphic Communications GmbH , Kodak Holding GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Rematec GmbH & Co KGvsEurope Forestry B.V.
The Court of Appeal of the Unified Patent Court refused leave to appeal against an order of the Local Division Mannheim that had rejected Rematec's two cost determination applications as time-barred and dismissed its applications for reinstatement. The Court held that an application for leave to appeal under Rule 157 in conjunction with Rule 221 of the Rules of Procedure is inadmissible insofar as it is directed against the rejection of a reinstatement application, since Rule 320.7 expressly precludes appeals against orders on reinstatement. The Court also rejected Europe Forestry's request to impose costs on Rematec, noting that cost reimbursement is generally not available in cost determination proceedings.
Rematec GmbH & Co KGvsEurope Forestry B.V.
The Court of Appeal of the Unified Patent Court refused leave to appeal against an order of the Local Division Mannheim that had rejected Rematec's two cost determination applications as time-barred and denied reinstatement into the missed deadlines. The Court of Appeal held that an application for leave to appeal under R. 157 and R. 221 RoP is inadmissible insofar as it challenges the rejection of a reinstatement application, because R. 320.7 RoP expressly excludes appeals against orders on reinstatement. No arguable grounds for leave to appeal were identified regarding the rejection of retroactive deadline extension requests.
Promosome LLC and The Scripps Research InstitutevsBioNTech SE, BioNTech Manufacturing GmbH, BioNTech Manufacturing Marburg GmbH, BioNTech Innovative Manufacturing Services GmbH, BioNTech Europe GmbH, Pfizer Manufacturing Belgium NV, Pfizer SAS, Pfizer AB, and Pfizer, Inc.
This order of the Court of Appeal of the Unified Patent Court concerns three appeals (UPC-CoA-146/2026, UPC-CoA-147/2026, and UPC-CoA-148/2026) relating to EP 2 401 365. The appellants, Promosome LLC and The Scripps Research Institute, sought a one-month extension of the deadline for lodging their Statements of grounds of appeal, citing heavy professional workload and school holiday periods. Both groups of respondents (BioNTech and Pfizer entities) opposed the extension. The Court of Appeal rejected the applications, holding that the circumstances relied upon were foreseeable and did not justify an extension of the procedural time period.
Kodak Holding GmbH, Kodak GmbH, Kodak Graphic Communications GmbHvsFujifilm Corporation
This is a procedural order from the Court of Appeal of the Unified Patent Court concerning European Patent EP 3 511 174. The Respondents (Kodak entities) requested a one-week extension of the deadline to file written comments on the Applicant's (Fujifilm's) request for rehearing. The Court granted the extension until 23 October 2026, finding the request admissible and well-founded because the Applicant had consented, the extension was brief, and the Respondents' representatives had been occupied preparing for a related oral hearing before the Düsseldorf Regional Court that was postponed shortly before the application was filed.
Huawei Technologies Co. Ltd.vsSercomm Italia SRL
This is a procedural order from the Local Chamber Munich of the Unified Patent Court concerning alternative service of process on Sercomm Italia SRL in a patent infringement action involving European Patent EP 3 611 989 B1. After multiple failed attempts to serve the Italian defendant at its registered business address, the rapporteur had previously ordered under Rule 275.2 RoP that the prior service measures constituted valid service. The present order addresses the fact that notification of that earlier order was unsuccessful and directs additional means of notification to ensure the defendant is informed.
Network System Technologies LLCvsQualcomm Incorporated, Qualcomm Technologies, Inc., Qualcomm Germany GmbH
The Court of Appeal of the Unified Patent Court rejected Network System Technologies LLC's (NST) applications for re-establishment of rights under R. 320 RoP. NST had sought to revive its late-filed appeals against the rejection of its R. 190 Applications (production of evidence) in three infringement proceedings against Qualcomm before the Munich Local Division. The Court held that NST failed to demonstrate that all due care had been taken, as the circumstances cited did not constitute exceptional circumstances or excusable error under the precedent set in AIM v Supponor.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.