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.
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