Short Summary
This is a Court of Appeal decision concerning EP 3 476 616 (DE and UK designations) relating to lithographic/printing plates. Fujifilm had sued Kodak for patent infringement before the Mannheim Local Division, and Kodak counterclaimed for revocation. The Court of Appeal reversed the first instance's revocation of the German designation, finding the patent valid and infringed by Kodak's Sonora plates, and granted extensive remedies including injunction, recall, destruction, and damages. For the UK designation, the Court of Appeal dismissed Fujifilm's appeal and held that the condition for Kodak's counterclaim for revocation was not fulfilled.
Detailed Summary
This decision was issued by Panel 2 of the Court of Appeal on 13 July 2026 in four consolidated appeal proceedings (UPC_CoA_473/2025, UPC_CoA_474/2025, UPC_CoA_873/2025, and UPC_CoA_881/2025) concerning EP 3 476 616 with German and UK designations.
The parties: Fujifilm Corporation (Tokyo, Japan) is a manufacturer of lithographic plates. The Kodak respondents (Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH) belong to a multinational group producing and distributing printing plates. Kodak GmbH acts as the German sales company, purchasing products from a UK-based entity of the group. Kodak Graphic operates a manufacturing facility in Germany as a contract manufacturer. Kodak GmbH is a wholly owned subsidiary of Kodak Graphic, which is itself a wholly owned subsidiary of Kodak Holding under a control and profit and loss transfer agreement.
Procedural background: Fujifilm filed an infringement action before the Mannheim Local Division (MLD) based on EP 3 476 616 with effect for Germany and the UK. Kodak counterclaimed for revocation. The MLD decided to handle the German and UK designations separately. By decision of 2 April 2025, the MLD revoked the patent in its entirety in Germany (the only Contracting Member State where it was still in force) and dismissed the infringement action. Fujifilm appealed both the infringement dismissal and the revocation (UPC_CoA_473/2025 and UPC_CoA_474/2025). By decision of 18 July 2025, the MLD held it had jurisdiction over the UK part of the patent (following the CJEU judgment of 25 February 2025 in C-339/22, BSH v Electrolux), found the invalidity defence succeeded for the UK part, and dismissed the infringement action for the UK territory. Both Fujifilm (UPC_CoA_873/2025) and Kodak (UPC_CoA_881/2025) appealed this decision.
Key legal issues addressed in the headnotes include: (1) the requirement under R. 25.1(a)-(d) RoP for a claimant to indicate the extent of revocation requested and substantiate it for each claim; (2) the requirement under R. 29A(c) RoP for the patentee to identify which dependent claims it considers valid should the independent claim be held invalid; (3) the need for the patentee to clearly indicate combinations of dependent claims, also in the language of the patent, when such combinations do not directly follow from their wording; (4) the requirement under due process principles that the number of such combinations be reasonable; (5) the clarification that R. 30 RoP does not require an auxiliary request as a prerequisite for defending dependent claims already encompassed by the claims as granted; (6) the principle that absent a pointer to combine documents, motivation for the skilled person to consult a combination document cannot be derived from its content alone; (7) the inappropriateness of imposing a penalty for non-fulfilment of an enforceable monetary obligation; and (8) the principle that publication of an own declaration by an infringer on its webpage under Art. 80 UPCA requires special circumstances.
Fujifilm argued that Kodak's Sonora X, Sonora Xtra-2, and Sonora Xtra-3 plates fell within the scope of claims 1, 2, 3, 6, and 7 of the patent and constituted means relating to essential elements of claims 13 and 14. Fujifilm sought a declaration of infringement, permanent injunction (subject to penalty), a right to prevent indirect use, damages, moral prejudice compensation, information orders, destruction, recall, removal from channels of commerce, publication on Kodak's website, and interim awards. Kodak disputed direct and indirect infringement, arguing that the Sonora Xtra 3 plate lacks micropores as claimed and that the AFM measurements were not carried out at the resolution prescribed by the patent. Kodak also asserted a private prior use right under Sec. 12 German Patent Act in conjunction with Art. 28 UPCA.
Operative outcome: For UPC_CoA_473/2025 and UPC_CoA_474/2025 (German designation), the Court of Appeal found infringement, granted a permanent injunction, ordered information disclosure, damages, moral prejudice compensation, destruction of infringing products, recall from channels of commerce, definitive removal from commerce, and a penalty sum of up to €10,000 per day for non-compliance with certain orders. The Court dismissed Kodak's counterclaim for revocation and ordered Kodak to bear the costs, with an interim award of €300,000 on legal costs. For UPC_CoA_881/2025 and UPC_CoA_873/2025 (UK designation), the Court of Appeal dismissed Fujifilm's appeal, set aside the rectification order of 4 September 2025, dismissed Fujifilm's requests in the infringement action, and declared that the condition under which Kodak's counterclaim for revocation was filed was not fulfilled. The value of the dispute was set at €4,000,000 for the German proceedings and €3,500,000 for the UK proceedings.
What the Court Held — Ratio Decidendi
The Court of Appeal held that a claimant is required to indicate the extent to which revocation of the patent is requested and to sufficiently substantiate this request for each of the claims covered by its request. The Court also ruled that the patentee is required to identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before local courts. 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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