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Unified Patent Court, Court of Appeal (Rian Kalden (Presiding Judge and Judge-Rapporteur), Patricia Rombach (Legally Qualified Judge), Ingeborg Simonsson (Legally Qualified Judge), Lorenzo Parrini (Technically Qualified Judge) and Max Tilmann (Technically Qualified Judge) Fujifilm Corp, v Kodak GmbH and others UPC_CoA_312/2025 2 June 2026
This was an appeal by Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH ("Kodak") from the order of the Mannheim Local Division of the Unified Patent Court in Fujifilm Corp. v Kodak GmbH and Others UPC_CFI_365/2023 18 July 2025. The order restrained Kodak from infringing European patent 3 51 1174 in the United Kingdom and awarded substantial damages to the Fujifilm Corporation ("Fujifilm"). I discussed that case in UPC Injunction Restraining Infringement of a European Patent (UK) - Fujifilm v Kodak on 25 July 2025.
German Proceedings
Kodak also appealed against a finding by the Mannheim Local Division on 2 April 2025 that the patent was valid and had been infringed in Germany.
Hearing
The appeal was heard by Presiding Judge and Judge-Rapporteur Rian Kalder, Legally Qualified Judges Patricia Rombach and Ingeborg Simonsson and Technically Qualified Judges Lorenzo Parrini and Max Tilmann on 27 March 2026. They handed down their judgment in both appeals in Fujifilm Corp, v Kodak GmbH and others, UPC_CoA_312/2025 2 June 2026.
The Court held at para [273] of its judgment that the Mannheim Local Division had been right to accept jurisdiction to hear the infringement of the UK designation of the patent and that none of the arguments raised by Kodak against that decision had merit. Art 34 of the Unified Patent Court Agreement (OJ 20.6.2013 C 175/1) provides:
"Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect."
The Court rejected Kodak's contention that the Court's decisions shall cover only the territories of the contracting parties to the Unified Patent Court Agreement. Article 34 is not meant to confine the Court’s jurisdiction to its own territory. The word "only" does not appear in the article, and it is not to be understood. Unless a more limited scope is requested in accordance with art 43 or art 76 of the Agreement, art 34 makes clear that the Court's decisions shall apply to all parties to the European Patent Convention. The Court noted at [278] that there was no indication that the parties to the Unified Patent Court Agreement wished to confer a more limited jurisdiction on the Court.
Fujifilm argued that accepting jurisdiction was incompatible with TRIPS (Agreement on Trade- Related Aspects of Intellectual Property Rights), that there was no pleaded case on infringement in the UK and that the amendment of the German designation of the patent rendered the UK designation invalid. The Court rejected all those arguments.
Exercise of Jurisdiction
Although the Court confirmed that it had jurisdiction to resolve disputes over European patents designating countries that are not party to the Unified Patent Court Agreement, such as the United Kingdom, it emphasised at [301] that such jurisdiction had to be exercised in accordance with the applicable national law and international legal principles such as comity. It offers guidance between paras [302] and [308] on when jurisdiction should be exercised and when it should be declined.
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