FUJIFILM v Kodak (CFI, 27 March 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 27 March 2024 (UPC_CFI_355/2023, ACT_578607/2023, App_6761/2024), the Düsseldorf Local Division (Thomas, presiding and judge-rapporteur, Thom, Lopes) ruled finally on the confidentiality application of Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH, defendants in FUJIFILM Corporation’s action on EP 3 594 009 B1, concerning information in their statement of defence relating to a right based on prior use (Art. 28 UPCA). It sets out a method for balancing the right to be heard against the protection of secrets and rejects the most onerous restrictions.

Question

To what extent may access to confidential information in the statement of defence be restricted under Rule 262A RoP, and what additional measures may be imposed on the other side?

Decision

Access to the file is an indispensable part of the right to be heard. Any restriction must be justified passage by passage, and a mere competitive relationship is not enough (sections II.2 and II.3). Directive (EU) 2016/943 serves as a reference point, to be applied with care. Rule 262A.6 RoP requires at least one natural person per party: an attorneys’ eyes only regime is rejected, as is an undifferentiated cap of three persons, technical staff, including research and development employees, may have access save in rare cutting-edge cases (sections II.6 to II.8). Access is granted to the representatives, private experts, three employees immediately and six more after the appeal period plus one week, to avoid a fait accompli. The security and destruction measures sought and a five-year bar on certain roles are refused, the latter as manifestly disproportionate. Penalty payments may sanction any breach. Leave to appeal is granted, the questions not being settled.

Key points for practice

• Practical point: the party seeking confidentiality must justify each redacted passage and can obtain neither an attorneys’ eyes only regime nor the exclusion in principle of the other side’s technical teams.

Provisions applied

Agreement on a Unified Patent Court

Art. 28, Art. 56(2), Art. 58 and Art. 76(2)

Rules of Procedure

Rules 220.2, 262A.1, 262A.5, 262A.6 and 354.3

Directive (EU) 2016/943

Art. 9(1) and (2)

Case law cited

Düsseldorf Local Division, 11 March 2024, App_8500/2024

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.