UPC Decision UPC-000538 v. Respondent

This case concerns European patent EP 3 476 616 B1, which relates to a lithographic printing plate precursor, a lithographic printing plate manufacturing method, and a printing method. The patent was filed on 31 May 2018, claiming priority from two Japanese patent applications of 31 August 2017 and 19 March 2018, with mention of grant published on 14 July 2021. The patent was still in force in Germany and the United Kingdom but had elapsed in all other designated EPC contracting member states before the UPCA's entry into force on 1 June 2023.

The Claimant, FUJIFILM Corporation, a Japanese manufacturer of lithographic plates and registered proprietor of the patent-in-suit, alleged that printing plates marketed by the Defendants under the product names 'SONORA X', 'SONORA XTRA-2' and 'SONORA XTRA-3' fell within the scope of claim 1 of the patent and constituted means relating to an essential element of claims 13 and 14. The Defendants—Kodak GmbH (German sales company), Kodak Graphic Communications GmbH (contract manufacturer), and Kodak Holding GmbH (parent company)—belong to a multinational group producing and distributing printing plates.

The Defendants challenged the validity of the patent on grounds of lack of novelty, lack of inventive step, and added matter extending beyond the application disclosure. They also filed a preliminary objection rejecting the international jurisdiction and competence of the UPC with regard to the United Kingdom.

The panel separated the proceedings regarding the UK by order of 2 April 2025, after the ECJ delivered its judgment in BSH Hausgeräte (C-339/22) on 25 February 2025. In its decision of 2 April 2025 on the main proceedings, the panel found the German part of the patent invalid and rejected FUJIFILM's request for a provisional injunction for the UK.

Following the BSH Hausgeräte precedent, the court held that while the UPC has jurisdiction to decide upon infringement of the UK part of a European patent, it does not have jurisdiction to revoke the validated UK national part with erga omnes effect. The court further held that a defendant in a UPC infringement action relating to the UK part may raise an invalidity defence without being obliged to file a national revocation action in the UK, with the UPC assessing validity as a mere prerequisite for infringement with inter partes effect only.

The court found no reason to stay the infringement proceeding or to make the decision conditional upon the validity of the UK part, and rejected the Defendants' request for a declaration of invalidity of the UK part as lacking legitimate interest since such declaratory relief would not be binding on UK national authorities.

On the merits, the court assessed the validity of the UK part of the patent as granted and as proposed in various auxiliary requests. The court found that the patent as granted lacked novelty over prior art, and that the auxiliary requests also failed to overcome the validity objections. The court rejected FUJIFILM's argument that the Defendants' validity challenges against dependent claims were inadmissible as new arguments, finding that the Defendants had sufficient opportunity to elaborate on these claims.

The court concluded that the infringement action regarding the UK part of the patent-in-suit as granted was unfounded and inadmissible with regard to the different limited substantive scopes proposed in the alternative. Rule 118.2 RoP was held inapplicable since the UPC's assessment of validity as a mere prerequisite with inter partes effect did not meet its requirements.

The final decision dismissed the infringement action and ordered FUJIFILM to bear the costs of the litigation. The value of the whole dispute had been set at EUR 15,000,000.