Fujifilm v Kodak Graphic Communications (CFI, 2 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 2 April 2025 (UPC_CFI_365/2023), given after a hearing on 11 and 12 February 2025, the Mannheim Local Division (Judges Tochtermann, presiding and rapporteur, Böttcher, Agergaard and Wismeth, technically qualified) ruled on the merits of FUJIFILM Corporation’s infringement action on EP 3 511 174 (lithographic printing plate precursor) against Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH, and on their counterclaim for revocation. It held the action admissible and well founded for the German part of the patent, dismissed the counterclaim and the private prior use defence for that part, and declined jurisdiction over the national parts that lapsed before 1 June 2023. The decision gives a clear reading of Article 3(c) UPCA: jurisdiction is assessed national part by national part. It ordered an injunction, damages, information, destruction, recall and removal for Germany, and an interim award of costs of EUR 300,000, the defendants bear the costs and the value in dispute was set at EUR 15,000,000.

Facts and procedure

The patent, filed on 31 May 2018 claiming Japanese priorities of 29 September 2017 and 30 March 2018, remains in force only in Germany and the United Kingdom, the other national parts having lapsed before 1 June 2023 (paragraph 1). FUJIFILM, which amended claim 1 unconditionally (Rule 30.1 RoP), targeted the SONORA XTRA-3 plates and sought, among other things, an injunction in Germany and the United Kingdom, damages, an interim award of EUR 10 million and information and recall orders (paragraphs 3, 6 and 8). The defendants pleaded invalidity (public prior use, WO’379 and EP 2 878 452, lack of inventive step, added matter) and a right based on prior use (paragraphs 7, 18 and 21). Faced with an objection to jurisdiction over the United Kingdom, the panel separated that part by order of the same day, since the CJEU judgment in C-339/22 was given on 25 February 2025, after the hearing (paragraphs 10 and 15).

The applicable law

Article 3(c) UPCA brings existing European patents within the UPC’s jurisdiction, subject to the transitional regime of Article 83. A right based on prior use falls under Article 28 UPCA, which refers to national law (Section 12 of the German Patent Act). Validity is assessed under Articles 54, 56 and 123(2) EPC. Article 26(1) of Regulation (EU) No 1215/2012 governs jurisdiction by appearance. National law continues to apply to acts before 1 June 2023 (paragraphs 122 to 126).

Question

Does the UPC have jurisdiction over national parts of a European patent that lapsed before 1 June 2023 and, for the German part, is the patent valid and infringed, subject to a prior use right?

Decision

The words « any European patent » in Article 3(c) UPCA refer to each national part, which becomes independent on grant: a surviving part confers no jurisdiction over lapsed ones, and Recital 2 looks to the future (paragraphs 32 to 36). The objection, raised at the hearing, was not out of time, since Article 26(1) of Regulation 1215/2012 concerns international and territorial jurisdiction, not subject-matter jurisdiction (paragraphs 37 to 39). The action was inadmissible for parts other than Germany (paragraph 23).

Public prior use was not shown, because the plates were subject to at least an implicit confidentiality regime and the burden of proof lay on the defendants (paragraphs 64 to 73). Novelty, inventive step and the absence of added matter were upheld (paragraphs 74 to 101), and the counterclaim was dismissed for the German part (paragraph 63). The SONORA XTRA-3 plates realise feature 1.7′ (paragraphs 102 to 116). The prior use right failed for want of a firm and final decision to use before the priority date (paragraphs 117 to 121).

In the reasons, a declaration of infringement was refused for lack of legitimate interest (paragraph 128), an injunction for Germany was granted and not found disproportionate (paragraphs 129 and 130), the penalty was set at EUR 50 per square metre (paragraph 131), and entitlement to damages was recognised with the amount reserved, the period before grant falling under Article 67 EPC (paragraphs 132 to 134). By contrast, separate damages for moral prejudice were refused for want of special circumstances (paragraph 135), as was the EUR 10,000,000 interim award, which was not justified under Rule 119 (paragraph 136). Information covers all items in Art. 67(1) UPCA, with no time limit based on national law, and non-commercial customers may be disclosed to an impartial auditor only. Neither a deadline nor accountant certification was imposed (paragraphs 137 to 140). Destruction, recall confined to the channels of commerce and definitive removal were ordered, without a list of recipients or proof by a bailiff, and publication was refused (paragraphs 141 to 144). An interim award of costs of EUR 300,000 was granted (paragraph 145), and indirect infringement of claims 15 and 16 justified an unrestricted injunction (paragraph 147). No security was required, the defendants having failed to substantiate their risk (paragraphs 148 to 150). Despite the partial withdrawal concerning SONORA X and SONORA XTRA-2, the defendants bear all the costs (paragraph 151) and the value in dispute was set at EUR 15,000,000 (paragraph 153), no interim relief was granted for the United Kingdom, which was severed (paragraph 154).

Key points for practice

• Transitional jurisdiction under Article 3(c) UPCA is assessed national part by national part, including for States outside the Agreement.
• Prior use against novelty fails where the products circulated under at least implicit confidentiality.
• A prior use right requires a firm and final decision to use, taken before the priority date.
• Practical point: proprietors should confine their claims to national parts in force on 1 June 2023, and defendants may raise the point up to the hearing.

Provisions applied

Agreement on a Unified Patent Court

Arts 3(c), 25, 26, 27(a), 28, 63, 64, 67, 68, 69, 72, 80, 82 and 83

Rules of Procedure

Rules 19, 30.1, 118, 119, 125, 150.2, 191, 262A, 263, 265 and 354.3

European Patent Convention

Art. 54, 56, 67, 123(2)

Regulation (EU) No 1215/2012

Arts 26(1) and 71a

Other provisions

German Patent Act, Section 12

Case law cited

Fives ECL v REEL, Court of Appeal, 16 January 2025, Mannheim Local Division, 11 March 2025 (UPC_CFI_159/2024 and UPC_CFI_162/2024), Munich Central Division, 16 July 2024 (UPC_CFI_14/2023), Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023) and 31 October 2024 (UPC_CFI_373/2023), Mannheim Local Division, 22 November 2024 (UPC_CFI_210/2024), CJEU, 25 February 2025, C-339/22, EPO Enlarged Board of Appeal, G 2/98

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.