FUJIFILM v Kodak (CFI, 28 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 28 January 2025 (UPC_CFI_355/2023), the Düsseldorf Local Division ruled on FUJIFILM’s infringement action against Kodak GmbH, Kodak Graphic Communications and Kodak Holding over EP 3 594 009 (lithographic printing plate) and on the counterclaim for revocation. It held that the UPC has jurisdiction over infringement of the UK part of a European patent where the defendants are domiciled in a Contracting Member State, even where a counterclaim for revocation targets the German part. On the merits, the counterclaim succeeded: claim 1 as granted is not sufficiently disclosed to be carried out over the whole claimed range, and all three auxiliary requests were refused. The infringement action failed for Germany and for the United Kingdom, validity being a prerequisite of any relief, even for a part whose validity the UPC cannot decide.

Facts and procedure

The patent, filed on 11 July 2018 and granted on 21 April 2021 with no opposition, is in force in Germany and the United Kingdom. FUJIFILM targets the SONORA X, SONORA XTRA-2 and SONORA XTRA-3 plates. On 23 November 2023 the defendants lodged a preliminary objection contesting jurisdiction over the UK part, which was referred to the main proceedings pending the Advocate General’s opinion in BSH Hausgeräte v Electrolux (C-339/22), on 2 February 2024 they filed a counterclaim for revocation limited to the territory of the Contracting Member States. The application to amend of 4 June 2024 was admitted under Rule 30.2 RoP. The hearing took place on 17 December 2024.

The applicable law

Jurisdiction rests on Art. 4(1) of the Brussels I bis Regulation, applicable to the UPC through Art. 71b(1), Art. 24(4) of that Regulation does not govern jurisdiction in infringement proceedings, following the Court of Justice in GAT v LuK. Claims are construed under Art. 69 EPC and its Protocol. Insufficiency is a ground for revocation under Art. 138(1)(b) EPC.

Question

Can the UPC rule on infringement of the UK part of a European patent against defendants domiciled in Germany, and is claim 1 sufficiently disclosed to be carried out over its whole scope?

Decision

The preliminary objection was dismissed: a defendant domiciled in a Member State may be sued there for infringement in all designated States, and the UPC has the same jurisdiction, Art. 34 UPCA concerns the territorial effect of decisions and does not exclude decisions with effect beyond the Contracting Member States. Claim terms are given their broadest technically sensible meaning, and a narrower reading drawn from the description requires convincing reasons: claim 1 therefore covers one or more polymerisation initiators, whether electron-donating or electron-accepting. The objection that essential features are missing falls under Art. 84 EPC, not sufficiency. Claim 1 as granted is not sufficiently disclosed to be carried out over the whole claimed range, and the patent must be revoked for Germany, since nothing enables the HOMO difference to be met with an electron-accepting initiator without a research programme. Auxiliary request 1 lacks novelty over three earlier applications (Art. 54(3) EPC): a compound’s HOMO value is inherent to its structure, so the claimed difference is implicitly disclosed by examples combining the same compounds. Requests 2 and 3 contravene Art. 123(2) EPC, the application as filed not teaching a combination of several alkyl-substituted diphenyliodonium salts. Request 2 also breaches Arts 83 and 84 EPC. For the United Kingdom, the claimant did not explain why validity would be assessed differently there, so the action fails. No stay in the absence of a pending action, no conditional decision under Rule 118.2 RoP and no provisional measures are granted. The claimant bears the costs. The value is EUR 15,000,000 per action and the ceiling for recoverable costs, raised by 25%, EUR 1,500,000.

Key points for practice

• The UPC accepts jurisdiction over infringement of the UK part of a European patent against a defendant domiciled in a Contracting Member State.
• A narrowing construction based on the description must be supported by convincing, case-specific reasons.
• A physicochemical parameter that necessarily follows from a compound’s structure, such as its HOMO value, is implicitly disclosed with that compound, even if the skilled person never calculated it.
• Practical point: a proprietor claiming broad alternatives (one or several initiators) must make sure the description enables the invention across each of them.

Provisions applied

Agreement on a Unified Patent Court

Arts 24, 31, 32(1), 33(1), 34, 62, 65 and 69(1)

Rules of Procedure

Rules 19, 30.1, 30.2, 50.2, 118.2, 152.2, 211 and 295

European Patent Convention

Arts. 54, 69, 83, 84, 123 and 138

Regulation (EU) No 1215/2012

Arts. 4(1), 24(4), 71a and 71b

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), VusionGroup v Hanshow, Court of Appeal, 13 May 2024 (UPC_CoA_1/2024), Regeneron v Amgen, Munich Central Division, 16 July 2024, Paris Central Division, order of 2 May 2024 (UPC_CFI_484/2023), Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023), CJEU, Solvay v Honeywell, C-616/10, EPO Enlarged Board of Appeal, G 1/92 and G 3/14.

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.