UPC Injunction Restraining Infringement of a European Patent (UK) - Fujifilm v Kodak

View of Mannheim

Author Georg Buzin Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

Court of First Instance of the Unified Patent Court, Mannheim Local Division (Presiding Judge Tochtermann, Legally qualified Judges Böttcher and Agergaard and Technically qualified Judge Wismeth) Fujifilm Corp. v Kodak GmbH and Others UPC_CFI_365/2023 18 July 2025

A “European patent (UK)” is defined by s.130 of the Patents Act 1977 as "a European patent designating the United Kingdom."  S.77 (1) of the Act provides that "a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act."  Until now, an owner of a European patent designating the UK who believed that his or her patent had been infringed would issue proceedings in the Patents Court or the Intellectual Property Enterprise Court in England or Wales (or the Court of Session in Scotland or the High Court in Northern Ireland).  The significance of the decision of the Mannheim Local Division of the Court of First Instance of the Unified Patent Court in Fujifilm Corp v Kodak GmbH and Others of 18 July 2025 is that a court outside the United Kingdom has restrained the infringement of a European patent (UK).

The Dispute

Fujifilm Corporation of 26-30, Nishiazabu 2-chome, Minato-ku, Tokyo 106-8620, Japan is the proprietor of European patent 3 51 1174, which designates the United Kingdom and Germany among other countries.  Fujifilm believed that Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH of Stuttgart ("Kodak") had infringed the patent by importing infringing items from a UK company in the Kodak group and marketing them in Germany.  Kodak denied infringement and challenged the validity of the patent on grounds of anticipation, obviousness and added matter and counterclaimed for the patent's revocation.

Procedural History

The proceedings regarding the German designation were separated from those regarding the British designation pending the Court of Justice of the European Union's judgment in C‑339/22, BSH Hausgeräte GmbH v Electrolux AB in the light of the Advocate-General's opinion  EU: C:2024:687, [2024] EUECJ C-339/22_O, ECLI:EU: C:2024:687.  In the German proceedings, the patent was found to be valid and infringed.

BSH Hausgeräte GmbH v Electrolux AB 

The Court of Justice delivered judgment in Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB EU: C:2025:108, [2025] EUECJ C-339/22, [2025] WLR(D) 306, ECLI:EU: C:2025:108 on Feb 2025. I discussed the judgment in Cross-Border Jurisdiction in Patent Disputes - BSH Hausgeräte GmbH v Electrolux AB yesterday.   The salient points were that: 

• A court in the EU member state in which a defendant is domiciled pursuant to art 4 (1) of  Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 Dec 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) can determine claims for the infringement of patents in states other than its own;
• Art 24 (4) of Regulation 1214/2012 does not apply to states outside the EU unless they are party to the Lugano Convention or other agreement; and
• A court can consider a patent's validity in infringement proceedings, but its judgment will bind only the parties to the litigation and does not affect the subsistence of the patent or bind the authorities of the country that granted the patent.

Judgment

Referrinng to to the CJEU’s ruling in BSH Hausgeräte that the court of the EU member in which the defendant is domiciled pursuant to art 4 (1) does have jurisdiction to rule on an infringement action based on a patent granted or validated in a non-EU member state even if the invalidity of this patent is raised as a defence, the Mannheim judges held at para [31] of their judgment that the UPC has jurisdiction to decide upon the infringement action as far as it relates to acts infringing the UK national part of the patent in suit. That is subject to the Lugano Convention or other bilateral treaties that may exist, but in the case of the UK, there are none.  The judges proceeded to consider the claims and defences and found that the patent was valid and infringed.  They considered the available remedies and decided that they had the power to grant injunctions under s.61 (a) of the Patents Act 1977 as well as under art 25 (a) and art 63 (1) of the Agreement on a Unified Patent Court OJ 20.6.2013  C175/1.

Order

The Mannheim Local Division made the following order:

"A.I. The Defendants are ordered to refrain from: 

1. offering, placing on the market, using or storing it for those purposes a lithographic printing plate precursor within the United Kingdom, that has the following features: 

a. A lithographic printing plate precursor comprising:

an aluminum support; and
an image recording layer on the aluminum support,

wherein the aluminum support includes a

n anodized film on a surface of the image recording layer side,

the anodized film has micropores extending in a depth direction from the surface of the anodized film on the image recording layer side, 

the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 µm to 0.30 µm, and wherein an average value of depths of the large-diameter pores to the bottom from the surface of the anodized film is in a range of 100 nm to 1500 nm,  

an average pore diameter of the micropores in the surface of the anodized film is in a range of 10% to 50% of the maximum diameter of the micropores inside the anodized film,  

a thickness of the anodized film is in a range of 550 nm to 2850 nm, and  

the image recording layer contains an acid color former,

 - direct infringement of claim 1 EP 3 511 174 B1 -

2. supplying and/or offering to any person other than a party entitled within the territory of the United Kingdom with 

lithographic printing plate precursors  

which are suitable and intended to use with  

a. method of preparing a lithographic printing plate, comprising 

a step of imagewise-exposing the lithographic printing plate precursor of any of claims 1-14; and 

a step of supplying at least any of printing ink or dampening water and removing an image recording layer in a non-image area on a printing press.

 - indirect infringement of claim 15 EP 3 511 174 B1 - 

b. a printing method, comprising: a step of imagewise-exposing the lithographic printing plate precursor according to any one of claims 1 to 4; 

a step of supplying at least any of printing ink or dampening water and removing a non-image area of an image recording layer on a printing press to prepare a lithographic printing plate; and 

a step of performing printing using the obtained lithographic printing plate. 

- indirect infringement of claim 16 EP 3 511 174 B1 - 

A.II. It is ordered, that in the event of any violation of the injunction under A.I. above, the respective Defendants shall pay severally to the Court a penalty payment of EUR 50 per square meter of the contested printing plate precursor. 

B.I. It is held that the Defendants shall pay damages to the Claimant compensating all losses caused by infringing acts referred to in A.I. above in the United Kingdom since 17 July 2019. 

II. The Defendants are ordered to inform the Claimant to the extent of which the Defendants have committed the infringing acts of EP 3 511 174 referred to in A.I – stating 

1. the origin and distribution channels; 

2. the quantities delivered, received or ordered, as well as the price obtained; in particular  

• the individual deliveries, broken down by delivery quantities, times and prices and the respective product designations as well as the names and addresses of the customers;  
• the turnover, the gross margin and the contribution margin generated by the Defendants with the sale of these products; 
• the individual offers, broken down by quantities, times and prices and product designations as well as the names and addresses of the commercial offer recipients;  
• the advertising carried out, broken down by advertising media, their circulation, distribution period and distribution area, and in the case of Internet advertising, the domain, access figures and placement periods of each campaign;  
• the identity of all third parties involved in the distribution, in particular the names and addresses of the commercial buyers and the sales outlets for which the products were intended; 

whereby the Defendants each reserve the right to disclose the names of their non-commercial customers to an impartial auditor only, chosen by Claimant and paid by the respective Defendant, who, upon Claimant’s request, confirms or denies whether a specific non-commercial customer is contained in the disclosure and who, in all other cases, is subject to confidentiality towards the Claimant. 

III. The Defendants are ordered to destroy at their own expense the products, material and/or implements referred to under A.I.1. which are in their possession and/or ownership within the United Kingdom. 

IV. The Defendants are ordered to recall the products referred to under A.I. which have been placed on the market from the channels of commerce, with reference to the infringement determined by a court of law (Unified Patent Court, Local Division Mannheim, decision of 2 April 2025); 

V. The Defendants are ordered to definitively remove the products referred to under A. I. from the channels of commerce at their own expense. 

C. All further requests of Claimant are dismissed. 

D. The Defendants have to bear the costs of the litigation. 

E. The Orders A.I., B.II. to B.VI. shall be enforceable only after the Claimant has notified the Court which part of the orders it intends to enforce, this notification has been served on the Defendant concerned and a certified translation of the orders in the official language of a Contracting Member State in which the enforcement shall take place has been provided by the Claimant and served on the Defendant concerned."

Comment

As this judgment was only handed down on 18 July 2025 there has been no opportunity to consider what steps a defendant in Kodak's position might take to avoid the enforcement of the claimant's UK patent or European patent (UK) by the UPC or indeed any other court in any other EU member state.  One possibility might be to seek the  revocation of the patent under s.72 of of the Patents Act 1977 or possibly a declaration of non-infringement under s.71 before proceedings are launched in the Unified Patent Court.  The possibility of proceedings in para [35] of the Mannheim judgment because rule 295 of the UPC Rules of Procedure provides that the UPC may stay proceedings where:

"(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly;"

or "where the proper administration of justice so requires" (r 295 (m)."  Another might be an old fashioned anti-suit injunction if the claimant is amenable to the jurisdiction of the English courts.

Anybody wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my contact form at any other time.

Cross-Border Jurisdiction in Patent Disputes - BSH Hausgeräte GmbH v Electrolux AB

Court of Justice of the European Union

Author Luxofluxo Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

Court of Justice (K. Lenaerts, President, T. von Danwitz, Vice-President, K. Jürimäe, C. Lycourgos, I. Jarukaitis, M.L. Arastey Sahún, S. Rodin, A. Kumin, N. Jääskinen and M. Gavalec, Presidents of Chambers, E. Regan, Z. Csehi and O. Spineanu-Matei (Rapporteur), Judges) Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB EU: C:2025:108, [2025] EUECJ C-339/22, [2025] WLR(D) 306, ECLI:EU: C:2025:108, 25 Feb 2025

This was a request by the Swedish Patent and Commercial Court of Appeal for a preliminary ruling on the interpretation of arts 4 (1) and 24 (4) of Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 Dec 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) under art 267 of the Treaty on the Functioning of the European Union.  It was made in patent infringement proceedings that the German company BSH Hausgeräte GmbH (‘BSH’) had brought against the Swedish company Electrolux AB ("Electrolux") in the Swedish Patent and Commercial Court on 3 Feb 2020.

The Dispute

BSH was the registered proprietor of European patent 1434512 A2, which was granted for Austria, France, Germany, Greece, Italy, the Netherlands, Spain, Sweden, Türkiye and the United Kingdom.  BSH alleged that Electrolux had infringed the patent in each of those designated states and sought injunctive and pecuniary relief in respect of all of them.  Electrolux's defence was that the patent was invalid.  It challenged the competence of the Swedish courts to determine the patent's validity in any country except Sweden. Moreover, para 61 of the Swedish Patents Act 1967 requires separate invalidity proceedings to be brought if the validity of a patent is challenged.   The Patent and Commercial Court agreed with Electrolux.  It held that it lacked the jurisdiction to determine whether the patent was invalid in any country other than Sweden and that it lacked jurisdiction to hear any part of the infringement claim in respect of Türkiye.

The Appeal

BSH appealed to the Patent and Commercial Court of Appeal on the grounds that art 24 (4) of Regulation 1215/2012 does not apply to infringement claims and that art 4 (1) confers jurisdiction on the Swedish courts to hear and determine claims against Swedish companies.  The Court stayed the proceedings and referred the following questions to the Court of Justice of the European Union:

"(1) Is Article 24 (4) of [the Brussels I bis Regulation] to be interpreted as meaning that the expression 'proceedings concerned with the registration or validity of patents … irrespective of whether the issue is raised by way of an action or as a defence' implies that a national court, which, pursuant to Article 4 (1) of that regulation, has declared that it has jurisdiction to hear a patent infringement dispute, no longer has jurisdiction to consider the issue of infringement if a defence is raised that alleges that the patent at issue is invalid, or is the provision to be interpreted as meaning that the national court only lacks jurisdiction to hear the defence of invalidity?
(2) Is the answer to Question 1 affected by whether national law contains provisions, similar to those laid down in the second subparagraph of Paragraph 61 of the [Law on patents], which means that, for a defence of invalidity raised in an infringement case to be heard, the defendant must bring a separate action for a declaration of invalidity?
(3) Is Article 24 (4) of the [Brussels I bis Regulation] to be interpreted as being applicable to a court of a third [State], that is to say, in the present case, as also conferring exclusive jurisdiction on a court in [Türkiye] in respect of the part of the European patent which has been validated there?"

The Answer

The Court answered those questions as follows:

"1. Article 24 (4) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that a court of the Member State of domicile of the defendant which is seised, pursuant to Article 4 (1) of that regulation, of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity.
2. Article 24(4) of Regulation No 1215/2012 must be interpreted as not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. If a court of a Member State is seised, on the basis of Article 4 (1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4 (1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended."

The First and Second Questions

The Court took those questions together.  It disposed of the second question shortly at para [26] of its judgment:

"In the latter regard, the Court notes at the outset that such a national rule cannot affect the interpretation of Article 24(4) of the Brussels I bis Regulation. That provision makes no reference to the law of the Member States, with the result that the expressions which it contains must be regarded as autonomous concepts of EU law which must be interpreted uniformly in all the Member States, irrespective of any national rule or procedure in that regard (see, to that effect, judgment of 8 September 2022, IRnova, C‑399/21, EU: C:2022:648, paragraph 38 and the case-law cited)."

It recognized at para [34] that the courts of the member state granting a patent are to have exclusive jurisdiction to hear a dispute concerned with the registration or validity of that patent, irrespective of whether that issue is raised by way of an action or as a defence in an infringement action before a court of another member state pursuant to art 24 (4).   However, that did not take away the jurisdiction conferred by art 4 (1). The Court said at para [41] that the exclusive jurisdiction rule laid down in art 24 (4)  concerns only the part of the dispute relating to the validity of the patent. Accordingly, a court of the member state in which the defendant is domiciled, which has jurisdiction, under art 4 (1) in an action alleging infringement of a patent granted in another member state, does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent.

The Court added at [43] that the concept of "proceedings concerned with the … validity of patents", within the meaning of art 24 (4) of the regulation, must be interpreted strictly since it establishes exclusive jurisdiction which is an exception to the general rule, set out in art 4 of that regulation, that the courts for the place where the defendant is domiciled have jurisdiction.  The court where a defendant is domiciled may decide any issue of a patent infringement claim that does not require a decision on the validity of a patent granted for another member state.   If it takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid by the court of that other member state, the Court of Justice said at para [51] that the court where the defendant is domiciled may, where appropriate, stay the proceedings, which allows it to take account, for the purpose of ruling on the infringement action, of a decision given by the court seised of the action seeking a declaration of invalidity.

The Third Question

The Court of Justice held that art 24 (4) applies to the courts of members of the European Union. Accordingly, that provision does not confer any jurisdiction, whether exclusive or otherwise, on the courts of countries outside the EU as regards the assessment of the validity of patents granted or validated for those countries.  At para [61], the Court of Justice concluded:

"It follows that, under the general rule laid down in Article 4 (1) of the Brussels I bis Regulation, the courts of the Member State in which the defendant is domiciled have, in principle, jurisdiction in an infringement action brought against that defendant by the holder of a patent granted or validated in a third State which is domiciled in another Member State. In addition, the jurisdiction of the court of the Member State thus seised does, in principle, by virtue of that general rule, extend to the question of the validity of that patent raised as a defence in the context of that infringement action."

The Court stressed at para [74] that a court having jurisdiction under art 4 (1) cannot make a decision that affects the existence or content of that patent in a state outside the EU, or cause its national register to be amended.  However, there is nothing to prevent a court from making a decision on the validity of a patent that affects the parties to a dispute but not the subsistence of the patent.

Conclusion

The Mannheim Local Division of the Court of First Instance of the Unified Patent Court cited the Court of Justice's judgment in BSH Hausgeräte GmbH v Electrolux AB in Fujifilm Corp v Kodak GmbH and others UPC_CFI_365/2023 18 July 2025 in holding that the Unified Patent Court has jurisdiction to decide upon the infringement of the UK designation of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with ergo omnes effect.  The Court also has power to grant an injunction in relation to the United Kingdom.   I shall discuss recent cases on the UPC's long arm jurisdiction in more detail later.  Anyone wishing to discuss this article may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact page.