Short Summary
FUJIFILM Corporation sued three Kodak entities before the Unified Patent Court Local Division Mannheim for infringement of EP 3 511 174 B1, a European patent relating to lithographic printing plate precursors. The proceedings concerning the UK part of the patent were separated following the ECJ's decision in BSH Hausgeräte (C-339/22). The court held that while it has jurisdiction to decide infringement of the UK part of a European bundle patent, it cannot revoke the UK part with erga omnes effect, and the defendants may raise invalidity as a defense with inter partes effect only.
Detailed Summary
This case concerns European patent EP 3 511 174 B1, owned by FUJIFILM Corporation, which relates to a lithographic printing plate precursor comprising an aluminum support with an anodized film and an image recording layer containing an acid color former. The patent was still in force in Germany and the United Kingdom but had elapsed in all other designated contracting member states before the entry into force of the UPCA on 1 June 2023. FUJIFILM sued Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH (all German companies belonging to a multinational group producing and distributing printing plates) for infringement, alleging that printing plates marketed under the product name 'SONORA XTRA-3' fell within the scope of claim 1 and constituted means relating to essential elements of claims 15 and 16 of the patent-in-suit.
The defendants filed a preliminary objection challenging the UPC's international jurisdiction and competence with regard to the United Kingdom. The panel separated the proceedings concerning the UK part of the patent by order of 2 April 2025, following the ECJ's decision in BSH Hausgeräte (C-339/22) delivered on 25 February 2025. This decision addresses only the separated UK proceedings.
The court established several key principles: (1) The UPC has jurisdiction to decide upon infringement of the UK part of a European patent, but does not have jurisdiction to revoke the validated national part of a European patent in relation to the UK with erga omnes effect. (2) The defendant in a UPC infringement action relating to the UK part of a European bundle patent is allowed to raise an invalidity defense 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. (3) In the absence of a pending national revocation proceeding in the UK, there is no reason to stay the infringement proceeding or to make the decision conditional upon the validity of the UK part. (4) There is no legitimate interest of a defendant in obtaining a declaration that the UK part of a European bundle patent is invalid, since such declaratory relief would not be binding on national authorities.
The defendants challenged validity based on public prior use, lack of novelty in relation to EP 2 878 452 A1 and WO 2018-160379 A1, lack of inventive step in view of combinations of prior art documents, and added matter. FUJIFILM unconditionally amended claim 1 under R. 30.1 RoP to address validity concerns. The court found that the defendants' invalidity arguments did not prejudice the patentability of the amended claim 1, and that the contested embodiment 'SONORA XTRA-3' infringed claim 1 of the patent-in-suit as amended.
The court ordered: (A.I.) that the defendants were to refrain from infringing the patent-in-suit in the United Kingdom; (B.II.-VI.) the defendants were to provide detailed information regarding the infringing acts, render accounts, pay damages, and the court determined the appropriate basis for damages calculation; (B.III.) destruction of infringing products in the UK; (B.IV.) recall of infringing products from channels of commerce; (B.V.) definitive removal of infringing products from channels of commerce. All further requests were dismissed, and the defendants were ordered to bear the costs of the litigation. The orders were made enforceable only after the claimant notified the court of which parts it intended to enforce, with service on the defendants and provision of certified translations.
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 UPC Decision UPC-000540 vs Respondent is valuable context for structuring arguments or assessing risk in similar proceedings.
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