Fujifilm v Kodak (CFI, 18 July 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 18 July 2025 (UPC_CFI_365/2023), the Mannheim Local Division (Presiding Judge Tochtermann as judge rapporteur, Judges Böttcher and Agergaard, and Technically Qualified Judge Wismeth) ruled on the UK part of EP 3 511 174, separated from the main proceedings, and found Kodak GmbH, Kodak Graphic Communications and Kodak Holding liable for infringement in the UK through the SONORA XTRA-3 printing plate precursor.

The decision applies the CJEU’s BSH Hausgeräte judgment: the UPC may rule on infringement of a third-country national part even where validity is challenged, but cannot revoke that part with erga omnes effect, validity is assessed only as a preliminary issue, inter partes. For practitioners, it confirms that a patentee can obtain from the UPC, against defendants domiciled in a Member State, an injunction and corrective measures based on UK law.

Facts and procedure

Fujifilm, the proprietor of a patent in force only in Germany and the UK, sued three Kodak companies, which raised a preliminary objection to jurisdiction over the UK part and counterclaimed for revocation. The objection was deferred pending the BSH Hausgeräte judgment of 25 February 2025 (paragraphs 8 and 9). By order of 2 April 2025, the division separated the UK part. On the same day it held the German part valid and infringed (paragraph 9). Oral hearings took place on 11 and 12 February and 6 June 2025.

The applicable law

International jurisdiction rests on Art. 31 UPCA and the Brussels Ia Regulation: Art. 71b(1) refers to subject matter, not territory, and Art. 34 UPCA, which does not govern international jurisdiction, does not exclude it (paragraphs 31 to 35). Infringement is governed by UK substantive law, namely ss. 60, 61 and 64 of the Patents Act 1977. The injunction remains subject to the court’s discretion under Art. 63(1) UPCA (paragraphs 53 and 54).

Question

May the UPC rule on infringement of the UK part of a European patent, and to what extent may it deal with that part’s validity?

Decision

The division accepted jurisdiction over infringement (paragraphs 31 to 35), with no revocation action pending in the UK, there was no ground for a stay under Rule 295 RoP (paragraph 35). Kodak’s request to revoke or declare invalid the UK part was inadmissible: the UPC cannot revoke a non-UPCA national part with erga omnes effect, and a declaration would not bind the UK authorities (paragraphs 36 and 37). Validity was taken as established as a preliminary matter, by reference to the reasons in the decision of 2 April 2025.

Direct deliveries by Kodak Graphic Communications to UK distributors, with title passing in the UK, amounted to direct infringement of claim 1 (paragraph 44), claims 15 and 16 were indirectly infringed (paragraph 67). No prior use right was established (paragraphs 48 and 49). The division granted an injunction in the UK, save as to manufacture, absent any risk of production moving there (paragraph 45), backed by a penalty of EUR 50 per square metre (paragraph 55), declared Kodak liable in damages from 17 July 2019, the earlier period being treated as compensation under Art. 67 EPC (paragraphs 56 to 58), and ordered information, destruction, recall from commercial customers and definitive removal (paragraphs 61 to 64). Kodak bears the costs (paragraphs 69 and 70), the value in dispute is EUR 15 million (paragraph 71).

Key points for practice

• The UPC rules on infringement of a UK part against defendants domiciled in a Member State, applying UK law.
• A defendant may plead invalidity of the UK part without first going to the UK courts, but the finding has inter partes effect only.
• A request to revoke or declare invalid the UK part is inadmissible before the UPC.
• Practical point: the patentee must prove acts done in UK territory, here, delivery with title passing in the UK was enough, but manufacture in Germany was not.

Provisions applied

Agreement on a Unified Patent Court

Arts 31, 34, 63(1) and 73(1)

Rules of Procedure

Rules 118, 125 and 295

European Patent Convention

Art. 67

Regulation (EU) No 1215/2012

Arts 4(1) and 71b

Other provisions

UK Patents Act 1977, ss. 60, 61 and 64

Case law cited

CJEU, 25 February 2025, BSH Hausgeräte, C-339/22, FUJIFILM v Kodak, 28 January 2025, Düsseldorf Local Division (UPC_CFI_355/2023), Franz Kaldewei v Bette, 3 July 2024, Düsseldorf Local Division (UPC_CFI_7/2023), Mannheim Local Division, 22 November 2024 (UPC_CFI_210/2023) and 11 March 2025 (UPC_CFI_159/2024), Court of Appeal, 14 February 2025 (UPC_CoA_382/2024) and 30 May 2025 (UPC_CoA_845/2024)

Related decisions

• Fujifilm v Kodak, 2 April 2025, decision on the merits for the German part, whose reasons on validity are incorporated by reference.

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.