FUJIFILM v Kodak (CFI, 18 July 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 18 July 2025 (UPC_CFI_359/2023), the Mannheim Local Division dismissed FUJIFILM’s infringement action against three Kodak companies in respect of the UK part of EP 3 476 616, which concerns a lithographic printing plate precursor. It held that it has jurisdiction over infringement of the UK part of a European patent against defendants domiciled in a Contracting Member State, following the CJEU’s BSH Hausgeräte judgment, but examined the validity of that part only inter partes, as a defence. As the patent lacked inventive step, the action failed. The decision draws the practical consequences, on the merits, of the UPC’s jurisdiction over the part of a European patent covering a non-Contracting State.

Facts and procedure

FUJIFILM asserted claims 1, 13 and 14 in Germany and the United Kingdom against the SONORA products (paragraphs 4 and 9). The defendants challenged the UPC’s jurisdiction over the UK part. The division waited for the CJEU’s judgment in C-339/22, given on 25 February 2025, and then separated the UK part on 2 April 2025, the date on which it decided the German part (paragraphs 6 and 7). The defendants relied on lack of novelty, lack of inventive step and added matter, and sought revocation of, or a declaration of invalidity for, the UK part (paragraphs 25 to 28).

The applicable law

The division based its jurisdiction on Regulation (EU) No 1215/2012 as interpreted in BSH Hausgeräte (paragraphs 36 and 37). Since the UK is not a party to the Lugano Convention and there was no bilateral convention or parallel UK proceedings, neither Art. 71b of the Regulation nor Art. 34 UPCA altered that position, and no stay was warranted under Rule 295 (paragraphs 37 to 39). It relied on the Düsseldorf Local Division’s decision of 28 January 2025 and, on validity, applied Arts 54, 56 and 123(2) EPC.

Question

May the UPC decide on infringement of the UK part of a European patent, and how does it then deal with a challenge to validity?

Decision

The UPC has jurisdiction over infringement of the UK part (paragraphs 35 to 39). The defendants’ request for revocation of, or a declaration of invalidity for, that part is however inadmissible: the UPC cannot revoke it with erga omnes effect, and a declaration that would not bind the UK authorities serves no legitimate interest (paragraphs 40 and 41). The defendant may nonetheless raise invalidity as a defence without bringing proceedings in the UK. Validity is then assessed inter partes, as a prerequisite for infringement (paragraph 49). As FUJIFILM did not contest the UK-specific arguments, the reasons of the decision of 2 April 2025 were adopted: the UK part as granted is novel but lacks inventive step, as do auxiliary requests 1 and 2 (paragraphs 47 and 51). Alternative requests based on combinations of claims were inadmissible because their order of priority was not stated unambiguously (paragraphs 52 to 54). Rule 118.2 does not apply (paragraph 57). FUJIFILM bears the costs. The value in dispute was set at EUR 15,000,000 for the dispute as a whole (paragraphs 59 to 61).

Key points for practice

• The UPC decides on infringement of the UK part of a European patent against defendants domiciled in a Contracting Member State, in line with BSH Hausgeräte.
• It cannot revoke that part or declare it invalid. Validity is examined only inter partes, as a prerequisite for infringement.
• Limited versions relied on in the alternative must be specified unambiguously, including their order of priority.
• Practical point: a defendant sued on the UK part of a patent can defend itself on invalidity before the UPC without going to the UK courts, but will obtain only an inter partes effect.

Provisions applied

Agreement on a Unified Patent Court

Arts 28, 31, 34, 65(2), 69(1), 73(1) and 82

Rules of Procedure

Rules 9.1, 23, 25, 30, 118.2, 118.5, 150.2, 158.2, 220.1(a), 224.1(a), 263, 295(a) and (m), 352.1 and 354

European Patent Convention

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

Regulation (EU) No 1215/2012

Arts 4(1), 33, 34 and 71b

Other provisions

Patents Act 1977 (United Kingdom), sections 60(1)(a) and 64

Case law cited

FUJIFILM v Kodak, Düsseldorf Local Division, 28 January 2025 (UPC_CFI_355/2023), decision of the same panel of 2 April 2025 on the German part, CJEU, 25 February 2025, BSH Hausgeräte, C-339/22

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.