FUJIFILM v Kodak (CFI, ORD_598590/2023, 2 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 2 April 2025 (UPC_CFI_365/2023), the Mannheim Local Division found that three Kodak companies infringed the German part of FUJIFILM’s EP 3 511 174, which concerns a planographic printing plate precursor, through their SONORA XTRA-3 plates, and dismissed the counterclaim for revocation as to that part. It declined jurisdiction over the national parts that lapsed before 1 June 2023, the UK part having been separated. The decision is relevant to the scope of Art. 3(c) UPCA and to the burden of proof for a right based on prior use. It ordered an injunction, information, recall, removal and destruction, and granted an interim award of costs of EUR 300,000, but refused moral damages, an interim award of damages and publication.

Facts and procedure

The patent remained in force only in Germany and the United Kingdom (paragraph 1). FUJIFILM confined its action to the SONORA XTRA-3 plates by a brief of 4 February 2025 and filed an application to amend the patent with three auxiliary requests (paragraphs 6, 13 and 27). The defendants relied on public prior use, prior art, added matter and a right based on prior use (paragraphs 7 and 18). The hearing took place on 11 and 12 February 2025, as the CJEU gave its BSH Hausgeräte judgment on 25 February 2025, the UK part was separated on the same day as the decision (paragraph 15).

The applicable law

Art. 3(c) UPCA covers European patents still in force on 1 June 2023, interpreted autonomously in the light of the Vienna Convention, it refers to each national part, which becomes independent after grant (paragraphs 33 and 34). Its forward-looking purpose was not to transfer to the UPC disputes over parts that had already lapsed (paragraphs 35 and 36). Art. 26(1) of Regulation 1215/2012 governs international jurisdiction, not the allocation of cases between the UPC and national courts (paragraph 39). The prior use right is governed by German law (Art. 28 UPCA, section 12 PatG).

Question

Does the UPC have jurisdiction over national parts that lapsed before it came into operation, and on what conditions can a defendant rely on prior use or a prior user right?

Decision

The UPC has no jurisdiction over national parts that lapsed before 1 June 2023, including those of states not party to the Agreement, and the objection was not late, since the countries were only specified on 4 February 2025 (paragraphs 32 to 39). Claim 1, construed so as not to exclude an uneven, spiked surface (paragraphs 46 to 62), was held novel, inventive and free of added matter (paragraphs 74 to 101). Public prior use was not established: new facts in the rejoinder were disregarded and the circumstances pointed to at least an implied confidentiality regime (paragraphs 64 to 73). Infringement was found, as the skilled person can measure pore diameters on an uneven surface and the average diameter of 23 nm was not disputed (paragraphs 102 to 116). The prior user right failed for want of proof of a firm and final decision to exploit before the priority date of 29 September 2017 (paragraphs 117 to 121). The injunction for Germany covers direct infringement of claim 1 and indirect infringement of claims 15 and 16 (paragraph 147), backed by a penalty of EUR 50 per square metre. Entitlement to damages was recognised without any prior warning being required, the amount being left to proceedings under Rules 125 et seq., and, for the period back to 17 July 2019, the request is read as one for compensation under Art. 67 EPC (paragraphs 132 to 134). Moral damages and an interim award of EUR 10 million were refused for want of justification (paragraphs 135 and 136). Information is owed without any time limit drawn from national law, and non-commercial customers may be disclosed to an impartial auditor only (paragraphs 137 to 140). Destruction, recall from commercial customers and removal were ordered, publication refused (paragraphs 141 to 144). No security was required from the claimant (paragraphs 148 to 150), the defendants bear all costs despite the partial withdrawal (paragraph 151), and the value in dispute was set at EUR 15,000,000 (paragraph 153).

Key points for practice

• National parts of a European patent that lapsed before 1 June 2023 fall outside the UPC’s jurisdiction, even where other parts remain in force.
• Facts supporting a prior user right must be pleaded in the statement of defence. Later briefs may only respond to the reply.
• A defendant relying on prior use must prove, by documents or witnesses, a firm and final decision to exploit taken before the priority date.
• Practical point: an interim award of damages under Rule 119 RoP does not follow automatically from a finding of infringement and must be supported by figures specific to the products found to infringe (paragraph 136).

Provisions applied

Agreement on a Unified Patent Court

Arts 3(c), 20, 26, 28, 29, 63, 64, 65, 67, 68, 69, 72, 80, 82 and 83

Rules of Procedure

Rules 9.1, 19, 23, 24(g), 25.1, 29, 30.1, 118.5, 118.8, 119, 125, 150.2, 191, 262A, 263, 265, 352.1, 354.2 and 354.3

European Patent Convention

Art. 54, Art. 56, Art. 67, Art. 87(1), Art. 123(2), Art. 138

Regulation (EU) No 1215/2012

Arts 26(1), 71a and 71b

Other provisions

Vienna Convention on the Law of Treaties, Arts 31 and 32, German Patent Act (PatG), section 12

Case law cited

Fives ECL v REEL, Court of Appeal, 16 January 2025 (UPC_CoA_30/2024), Hurom v NUC Electronics Europe, Mannheim Local Division, 11 March 2025 and Hurom v NUC Electronics, same date, Munich Central Division, 16 July 2024 (UPC_CFI_14/2023), Umedwings v Abbott Diabetes Care, The Hague Local Division, 19 June 2024 (UPC_CFI_131/2024), Panasonic v OPPO, Mannheim Local Division, 22 November 2024, Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023), Düsseldorf Local Division, 31 October 2024 (UPC_CFI_373/2023), CJEU, 25 February 2025, BSH Hausgeräte, C-339/22

Related decisions

• FUJIFILM v Kodak, Mannheim Local Division, 2 April 2025, order separating the UK part

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.