Kodak v Fujifilm (CoA, UPC_CoA_312/2025, 2 June 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In its decision of 2 June 2026 on joined appeals UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025 and UPC_CoA_882/2025, the Court of Appeal sets aside both decisions of the Mannheim Local Division that had found Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH liable for infringing Fujifilm’s EP 3 511 174 (lithographic printing plate precursors). The patent is upheld as amended and every validity attack fails, yet the infringement action is dismissed for both designations: in Germany, Kodak Graphic holds a right of prior use that also covers the modified product, in the United Kingdom, no infringing act attributable to the defendants is established. The decision matters most for the framework it lays down, after BSH v Electrolux, for designations outside the UPC territory.

Facts and procedure

Fujifilm sued the Kodak companies before the Mannheim Local Division (UPC_CFI_365/2023) on the German and UK designations. Kodak counterclaimed for revocation, on a conditional basis for the UK designation, and relied on a right of prior use. In its decision of 2 April 2025, the division held the patent valid and infringed in Germany. In its decision of 18 July 2025, it accepted jurisdiction over the UK designation and found infringement, and a rectification order of 5 September 2025 dismissed the counterclaim for that designation (paragraphs 4 to 8 and 329).

The applicable law

Prior use is governed, through Article 28 UPCA, by the law of the State concerned, here Section 12 of the German Patent Act (paragraphs 219 to 230). Jurisdiction over the UK designation rests on Articles 4, 71a and 71b of the Brussels I bis Regulation, and Article 34 UPCA does not confine the UPC’s jurisdiction to its own territory (paragraphs 273 to 282). Infringement of that designation is a matter of UK law under Article 8 of the Rome II Regulation read with Article 24(2)(a) UPCA (paragraph 309).

Question

Can a defendant who possessed the invention before the priority date rely on that right for a later product made by a different process, and how should the UPC exercise its jurisdiction over a non-UPC designation whose validity is challenged?

Decision

Claim 1 as granted is revoked and maintained in amended form. The counterclaim for revocation is dismissed (paragraphs 197 and 337 to 338). The attacked product falls within the claim (paragraph 218), but before 30 March 2018 Kodak Graphic possessed the invention through its Sonora X plates and had taken a firm decision to commercialise them (paragraphs 248 to 256). That right extends to the Sonora Xtra-3 plates: the different process is not taught by the patent and the lower diameter ratio brings no demonstrated additional advantage (paragraphs 257 to 270), neither Kodak GmbH nor Kodak Holding infringes (paragraphs 270 and 271). For the United Kingdom, jurisdiction is confirmed on the basis of the defendants’ domicile (paragraphs 294 and 300). The court then distinguishes three situations: a revocation action against a non-UPC designation, for which it lacks jurisdiction, a patent held invalid in the UPC territory, where the patentee may withdraw, failing which the action is stayed or dismissed depending on whether the designation is an EU or Lugano one, and a patent held valid and infringed in the UPC territory, where the decision may issue under a condition subsequent tied to the outcome of national revocation proceedings (paragraphs 302 to 308). On the merits, the importer under UK law is Kodak Ltd, which retains title to the plates and joint tortfeasorship is not shown (paragraphs 316 to 327). The rectification order is set aside because the condition attached to the UK counterclaim was not met (paragraph 333). Fujifilm must compensate Kodak for any injury caused by enforcement of the decisions set aside and bears the costs of the infringement action. Kodak bears those of the revocation action and of the jurisdictional objection. The value of the dispute remains EUR 15,000,000 (paragraphs 336 and 339 to 342).

Key points for practice

• A right of prior use covers a modified product as long as the modification brings no additional advantage taught by the patent (paragraphs 262 to 269).
• The UPC has jurisdiction over a UK designation against a defendant domiciled in a Contracting Member State. How it exercises that jurisdiction depends on the patent’s validity (paragraphs 294 and 302 to 308).
• Under UK law, the importer is the party holding the legal and beneficial interest in the goods (paragraphs 317 and 318).
• Practical point: a patentee suing on a non-UPC designation should show from the statement of claim, exhibit by exhibit, which company commits the act caught by local law.

Provisions applied

Agreement on a Unified Patent Court

Art. 20, 24(2)(a), 24(3), 25, 28, 32(1)(a), 34, 59 and 63

Rules of Procedure

Rules 29(c), 118.2, 118.4, 125, 190, 222.2, 295(l) and (m), and 353

European Patent Convention

Art. 54, 69, 87, 123(2), 138(1)(c) and (2)

Regulation (EU) No 1215/2012

Art. 4, 24(4), 63, 71a and 71b

Regulation (EC) No 864/2007 (Rome II)

Art. 8

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), Mammut v Ortovox, Court of Appeal, 25 September 2024, Abbott v Sibio, Court of Appeal, 14 February 2025, Belkin v Philips, Court of Appeal, 3 October 2025, Dyson v Dreame, Court of Appeal, 6 March 2026, InterDigital v Amazon, Munich Local Division, 30 September 2025 (UPC_CFI_936/2025), Amgen v Sanofi and Regeneron, Court of Appeal (UPC_CoA_528/2024 and 529/2024), CJEU, Owusu, 1 March 2005, C-281/02, CJEU, Solvay v Honeywell, C-616/10, CJEU, BSH Hausgeräte v Electrolux, 25 February 2025, C-339/22

Related decisions

• Kodak v Fujifilm, 31 August 2026, later order on the suspensive effect of an application for rehearing.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.