UPC decisions in FujiFilm vs Kodak now extend to the UK

In the dispute between FujiFilm and Kodak over printing plates, the UPC has claimed jurisdiction over the UK part of the patents. Two rulings issued in early April for the UPC territory now extend to the UK.

The current decision in Kodak vs FujiFilm is based on the CJEU ruling in BSH vs Electrolux (case ID: C-339/22). Previously, the Düsseldorf local division had affirmed the UPC’s jurisdiction for the UK in the dispute over another of FujiFilm’s patents.

Now, with the decision from the Mannheim local division, two judgements from early April also apply to the UK part of the patents (case IDs: UPC_CFI_365/2023 and UPC_CFI_359/2023).

Kodak challenges jurisdiction

At the Mannheim local division, FujiFilm sued Kodak’s German companies over EP 35 11 174 and EP 34 76 616. These protect methods for manufacturing planographic and lithographic printing plates. Fujifilm also filed suit at the Düsseldorf local division over infringement of EP 3 594 009. This case deals with the chemical components for the printing plates.

As the patents are also valid in the UK, the Japanese patent holder FujiFilm requested the court order the German subsidiaries of the US competitor to refrain from making or marketing their products not only in Germany but also the UK. However, Kodak challenged the UPC’s jurisdiction regarding the UK.

In January, the Düsseldorf local division revoked EP 009 and dismissed the infringement claim (case ID: UPC_CFI_355/2023). At the same time, the judges concluded that if the defendant is based in a UPC member state, the court has jurisdiction to hear the case regarding the UK part of the patent-in-suit.

Court separates case

In April, the Mannheim local division found EP 174 valid and infringed. Presiding judge Peter Tochtermann, judge Dirk Böttcher and Danish local division judge Peter Agergaard ordered Kodak to cease and desist and pay damages in Germany. The defendant appealed the decision.

Kodak fared better in the parallel proceedings for EP 616. Here, its counterclaim for revocation succeeded. The court revoked EP 616 due to lack of inventive step (case ID: UPC_CFI_359/2023). FujiFilm appealed.

The court separated the UK portion and the decision on its jurisdiction. In early February, the judge-rapporteur had informed the parties that the Mannheim local division would deal with the preliminary objection regarding jurisdiction in the main proceedings pending the opinion of the Advocate General in the CJEU proceedings in BSH vs Electrolux. The Advocate General issued the latter at the end of February.

Referring to the CJEU decision, presiding judge Peter Tochtermann, legally qualified judges Dirk Böttcher and Peter Agergaard together with technically qualified judge Erwin Wismeth concluded that the UPC has jurisdiction to decide upon the infringement of the UK part of a European Patent. Thus, the court extends the April rulings on both patents to the UK.