The Unified Patent Court (UPC) has upended Europe's patent litigation landscape since its launch nearly two years ago. In 2025, the court has played an increasingly significant role in multi-venue patent disputes, due in part to the availability of sweeping injunctive relief spanning up to all 18 participating EU countries in UPC litigation. A series of decisions earlier this year further expanded the court's jurisdiction to hear infringement claims over non-EU patents. Now, the UPC's Mannheim Local Division (Mannheim LD) has applied those decisions in a judgment over infringement occurring outside the EU—imposing its first-ever injunction covering infringement in the UK.
The litigation below involved a dispute over lithographic printing plates used in high-volume commercial printing systems, such as those used for newspapers. In November 2023, patent owner FUJIFILM filed a trio of UPC cases targeting plates offered by defendant Kodak, filing two cases in the Mannheim LD, each asserting a single European patent (EP 3 511 174 and EP 3 476 616); and a single case in the Düsseldorf Local Division (Düsseldorf LD) over a third patent (EP 3 594 009).
Notably, in each case, FUJIFILM sought both an injunction covering infringing products sold in both Germany and the UK (where the products were in force), as well as those products' recall and destruction; plus damages spanning a host of countries covered by the patent, including both Germany and the UK: 35 countries for the '174 patent, 36 for the '616 patent, and 30 countries for the '009 patent. The parties disputed whether the UPC had the jurisdiction to hear infringement claims over non-EU patents—an issue that, at the time the parties were laying out their positions on the matter, was still under renewed consideration by the Court of Justice of the European Union (CJEU) in BSH Hausgeräte v. Electrolux.
The Düsseldorf LD Beats CJEU to the Punch, Asserts Long-Arm Jurisdiction over UK Patent
While the Mannheim LD opted to sever and stay the UK-related claims until after the CJEU issued its BSH decision, the Düsseldorf LD opted not to wait: On January 28, it held that the UPC can exercise long-arm jurisdiction and decide claims of infringement for European patents issued in countries not participating in the UPC—here, the UK—when the defendant is domiciled in a UPC member state.
By so holding, the Düsseldorf LD essentially extended a preexisting rule under EU law: Under Article 4(1) of the Recast Brussels Regulation, persons domiciled in an EU member state shall be sued in the courts of that member state—and because that jurisdiction over EU-domiciled defendants is "universal" under applicable EU caselaw and regulations, an EU member state has jurisdiction to hear claims of "infringement of [a] European patent committed in all the States for which it has been granted". Since Article 71b of that regulation provides that the UPC is a "common court" that, under Article 71a, has jurisdiction wherever a member state's courts would have jurisdiction for matters governed by the UPC Agreement (or UPCA, the treaty that established the UPC), the Düsseldorf LD concluded that the UPC, too, has that same jurisdiction over infringement of the national parts of European patents committed within those countries, including non-UPC states.
A key issue here was the reach of the exception to the above jurisdiction established under Article 24(4) of the Recast Brussels Regulation, which provides that member states have exclusive jurisdiction over validity actions. Here, the Düsseldorf LD held that Article 24(4) does not extend to infringement actions, such that the UPC is not deprived of jurisdiction over infringement claims on that basis.
That said, the court did not ultimately decide on infringement of the UK portion of the asserted '009 patent, as it ruled that the entire patent was invalid.
Meanwhile, litigation proceeded in the parallel cases before the Mannheim LD, which on April 2 issued a judgment of infringement for the '174 patent covering Germany and imposed an injunction covering that company. That same day, it also issued a judgment as to the '616 patent, determining that patent to be invalid.
CJEU Upends Cross-Border EU Litigation in BSH
In late February 2025, the CJEU then issued a sweeping decision in BSH that further expanded the UPC's reach. In BSH, the court focused in particular on the aforementioned jurisdictional exception provided by Article 24(4): While EU law already allowed courts in member states (and the UPC, by extension) to hear infringement claims over patents in other member states, that exception was previously read to establish that the court hearing infringement had to stay the case when a validity challenge was filed in the patent's state of issuance. BSH provided that a stay is no longer required, giving courts the leeway to do so if the validity challenge is reasonably likely to succeed. The CJEU also held that the UPC, and member states, may rule on the validity of patents in non-EU countries not subject to special rules similar to Article 24(4), though those validity decisions are merely inter partes (i.e., they only impact the parties to the case at hand) and may not result in the removal of a patent from the registry of the country of issuance.
The upshot of BSH is that national courts in EU countries, as well as the UPC, may now award damages and/or impose injunctions for the infringement of non-EU patents as long as the defendant is domiciled in the EU (for national court litigation) or in one of the 18 countries participating in the UPC (for UPC litigation).
The UPC has since applied BSH in principle to allow infringement claims in non-UPC EU countries, either by dismissing preliminary objections to that jurisdiction or granting motions to amend—allowing claims to proceed over the infringement of patents issued in the Czech Republic (an EU state that has signed but not ratified the UPC Agreement), Poland and Spain (EU states that have not signed the UPC Agreement), Switzerland (which is not in the EU but follows similar jurisdictional rules for cross-border enforcement under the Lugano Convention), and the UK (which is longer in the EU after Brexit, and has been denied admission into the Lugano Convention).
Mannheim LD Issues UK Injunction, Applying BSH
On July 18, the Mannheim LD issued a decision addressing UK infringement in the severed Fujifilm action over the '174 patent. The court held that under BSH, the UPC has "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 the patent is raised as a defence", except where restrictions akin to Article 24(4) (i.e., the Lugano Convention or another applicable bilateral convention) apply to convey exclusive jurisdiction over validity actions. That said, Mannheim LD also held, per BSH, that the UPC has no jurisdiction over a validity defense that seeks to remove a patent from the national register of its country of issuance, or to amend that patent in said register.
Finding that none of the aforementioned restrictions apply (since the UK is not part of the Lugano Convention, as noted above), and that no parallel litigation in the UK otherwise required a stay in this case, the Mannheim LD held that it has jurisdiction to rule on the infringement of the UK part of the '174 patent. The court held that this result was unchanged by Article 71b of the Recast Brussels Regulation establishing the UPC's "common court" status, which BSH interpreted to provide (as mentioned above) that the UPC has jurisdiction over the UK national part because EU member state courts would too. Nor, per the Mannheim LD, was this changed by Article 34 of the UPC Agreement concerning the territorial scope of UPC decisions, which the Düsseldorf LD had interpreted in its January decision in the parallel Fujifilm case as not relating to international jurisdiction, and as not "exclud[ing] the UPC's jurisdiction over national parts of European patents in relation to Non-UPC member states".
The Mannheim LD then left open three questions related to validity: whether the defendant's defense affirmatively sought the revocation of the UK part of the patent or merely a declaratory judgment on its validity, and whether under BSH, EU courts have the jurisdiction to issue the latter. The court rejected these requests as inadmissible under BSH, holding that "[t]he UPC has no jurisdiction to revoke the national part of an European bundle patent for states other than UPCA contracting member states". Additionally, the Mannheim LD held that the defendant lacks an interest in a declaratory judgment on validity, since such a ruling would not bind the UK authorities responsible for revocation or on the claimant in any UK revocation proceedings—since otherwise, the UPC would be "indirectly" ruling on validity in violation of BSH.
Having dispensed with those key jurisdictional issues, the Mannheim LD then proceeded to the merits, finding that Kodak had infringed the patents and that no defense to that liability had been established under UK or German law (the latter relevant to arguments that prior use in Germany would extend to infringing acts in the UK).
Finally, the Mannheim LD addressed remedies, beginning with injunctive relief: Here, it held that the court had the power to award a permanent injunction covering infringing acts within the UK, finding that it had discretion to award the requested injunction under both UK and UPC law—the latter allowing the court to address proportionality, or whether the injunction would be disproportionate under the circumstances of this case. The Mannheim LD determined that here, the penalty for violating the injunction would be based on the "estimated sales price of Defendants [sic] printing plates per square meter".
The court also held that the plaintiff was entitled to damages under UK law, though it held that the amount and relevant time period would be decided in subsequent proceedings under UPC rules. It then held that the destruction of infringing products in the defendant's possession, their recall from commercial recipients, and their removal from the channel of commerce were justified under UK law as well. Among other remaining issues, the Mannheim LD also exercised its discretion to not make the enforcement of the injunction subject to a security, and ordered defendant Kodak to pay plaintiff Fujifilm's full legal costs, despite the latter's withdrawal of certain infringement claims.
For more on the UPC, and other key patent litigation trends from Q2 2025, see RPX's second-quarter report.
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