Fujifilm v Kodak (CoA, UPC_CoA_474/2025, 13 July 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 13 July 2026, the Court of Appeal ruled on joined appeals UPC_CoA_473/2025 and UPC_CoA_474/2025 (German designation) and UPC_CoA_873/2025 and UPC_CoA_881/2025 (UK designation) in the dispute between Fujifilm Corporation and the Kodak companies over EP 3 476 616 (lithographic printing plate precursor). It sets aside the German decision: the patent, as limited before the EPO, is valid and infringed by all Sonora plates, and Kodak has no right of prior use, an injunction and corrective measures are ordered. For the United Kingdom, jurisdiction is confirmed but infringement is not established. The decision also settles how dependent claims may be defended without a Rule 30 application to amend, and repeats the framework laid down on 2 June 2026 for non-UPC designations.

Facts and procedure

Fujifilm sued for infringement before the Mannheim Local Division, for Germany and the UK, over the Sonora plates. Kodak counterclaimed for revocation (paragraphs 3 and 10 to 14). On 2 April 2025, the Division revoked the German part of the patent and dismissed the infringement action (paragraphs 4, 18 and 19). On 18 July 2025, it accepted jurisdiction over the UK part and dismissed the action, then rectified its decision on 4 September 2025 (paragraphs 6 and 400). During the appeal, the EPO limited claim 1 (paragraph 91).

The applicable law

The Court applies Art. 65(3) UPCA and Art. 138(2) EPC (partial revocation), Rules 29A and 30 RoP, Arts 54 and 56 EPC, and Art. 28 UPCA read with Section 12 of the German Patent Act (paragraphs 277 to 288). Remedies rest on Arts 63, 64, 67, 68 and 80 UPCA.

Question

Is the limited patent valid and infringed, does Kodak hold a right of prior use, and which remedies follow?

Decision

Defending dependent claims as granted requires no application to amend: identifying and substantiating them is enough (paragraphs 55 to 63 and 78 to 90). The novelty, inventive step and added matter attacks fail. Since claim 1 is valid, the dependent claims need not be examined for lack of legal interest (paragraph 251). All Sonora plates fall within claim 1 (paragraph 271), and supplying them indirectly infringes method claims 10 and 11 (paragraphs 272 to 276). The prior use defence fails: before the priority date the batch of 28 August 2017 was still part of testing, and no firm and final decision to commercialise the final product is proven (paragraphs 307 to 321). An injunction is granted, backed by a penalty of up to EUR 50 per square metre or EUR 10,000 per day at Fujifilm’s choice. The proportionality objection is rejected (paragraphs 383 to 385). Damages run from 7 July 2021, with an interim award of EUR 300,000 under Rule 119 (paragraphs 386 and 387). Information is due within 45 days, or 28 days for the Sonora Xtra-3 plates, supported by an independent accountant, and the existing confidentiality orders apply to it (paragraphs 389 to 393). Recall, destruction and removal are ordered, the burden of showing disproportionality lying on the infringer (paragraph 394), but publication on Kodak’s website is refused for want of special circumstances (paragraph 399). For the United Kingdom, jurisdiction based on domicile is confirmed (paragraph 350), but the importer is Kodak Ltd, which retains title to the plates, and joint tortfeasorship is not shown (paragraphs 367 to 380). The rectification order is set aside because the UK counterclaim was conditional (paragraphs 404 and 405). Kodak bears the costs of the German proceedings and an interim costs award of EUR 300,000 (Rule 150.2), Fujifilm bears those of the UK infringement action. The value of the dispute remains EUR 4,000,000 per action for Germany and EUR 3,500,000 for the UK (paragraphs 406 to 409).

Key points for practice

• A patentee defends its dependent claims by identifying and substantiating them from the reply onwards, without presenting them as auxiliary requests (paragraphs 56 to 60).
• Manufacture for testing before the priority date does not found a right of prior use, even if the batch is sold later (paragraph 309).
• Publication of a statement by the infringer on its own website under Art. 80 UPCA requires special circumstances (paragraph 399).
• Practical point: read with the decision of 2 June 2026 on EP 3 511 174, this decision shows that each patent’s priority date can reverse the outcome of a prior use defence for the same product.

Provisions applied

Agreement on a Unified Patent Court

Arts 20, 24, 25, 26, 28, 32(1)(a), 34, 58, 59, 63, 64, 65(3), 67, 68, 76(1) and 80

Rules of Procedure

Rules 25.1, 29(c), 29A, 30.1, 118.2, 118.4, 118.8, 119, 125, 150.2, 190, 222.1, 222.2, 295 and 353

European Patent Convention

Art. 52, Art. 54, Art. 56, Art. 69, Art. 84, Art. 105a, Art. 105b, Art. 123, Art. 138

Regulation (EU) No 1215/2012

Arts 4, 24(4), 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, Meril v Edwards, Court of Appeal, 21 November 2024, Abbott v Sibio, Court of Appeal, 14 February 2025, Amgen v Sanofi and Regeneron, Court of Appeal (UPC_CoA_528/2024 and UPC_CoA_529/2024), Belkin v Philips, Court of Appeal, 3 October 2025, Rematec v Europe Forestry, Court of Appeal, 17 February 2026, Dyson v Dreame, Court of Appeal, 6 March 2026, InterDigital v Amazon, Munich Local Division, 30 September 2025 (UPC_CFI_936/2025), CJEU, Owusu, 1 March 2005, C-281/02, CJEU, Solvay v Honeywell, C-616/10, CJEU, BSH Hausgeräte v Electrolux, C-339/22

Related decisions

• Kodak v Fujifilm, 2 June 2026, parallel Court of Appeal decision on EP 3 511 174, which upholds the prior use defence and sets the framework for non-UPC designations.

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.