On 18 July, in what was a landmark ruling in European patent litigation, the Mannheim Local Division of the Unified Patent Court (UPC) granted a permanent injunction covering the UK, after first finding that the UK part of a European patent was valid and infringed.
Background
Kodak v Fujifilm, UPC_CFI_365/2023, 18 July 2025 forms part of an ongoing dispute between Fujifilm and Kodak in the field of lithographic printing plates. In this case, Fujifilm brought an infringement action against three German-based Kodak entities at the Mannheim Local Division (LD) of the Unified Patent Court (UPC). The patent-in-suit (EP3511174) is in-force in Germany and the UK.
Earlier this year, the court heard the case in respect of the German part of the patent, but delayed consideration of the UK part of the patent in view of the expected decision of the CJEU in BSH Hausgeräte vs Electrolux. When considering the German part of the patent, the court found that the patent, as amended, was valid and infringed.
In BSH Hausgeräte vs Electrolux, the CJEU held that the court of an EU Member State can consider the validity of patents granted for "third states" (i.e. states that are not party to the Brussels I bis Regulation or the Lugano Convention, such as the UK) during infringement proceedings brought against defendants domiciled in that EU Member State. However, this consideration of validity will not affect the existence or content of the patents in the third state, or cause its national register to be amended. As such, the decision only has inter partes effect. Further detail regarding the BSH Hausgeräte vs Electrolux decision is provided in our earlier news item.
After the judgement in BSH Hausgeräte vs Electrolux had been handed down, the Mannheim LD considered the UK part of the patent. It is the decision of the Mannheim LD in respect of the UK part of the patent which is discussed here.
UPC considers validity of UK patent
This was not the first UPC decision to apply BSH Hausgeräte vs Electrolux: in cases such as IMC Creations v Mul-T-lock and Dainese v Alpinestars, UPC LDs had already shown enthusiasm to follow the principles set out by the CJEU. In IMC Creations v Mul-T-lock, the Paris LD held that, in view of BSH Hausgeräte vs Electrolux, the UPC (as a court common to the UPC states) is competent to assess infringement and validity (with inter partes effect) of the UK parts of European patents where the defendant was domiciled in France.
In the present case, with all three of the defendants being domiciled in Germany, it is unsurprising that the Mannheim LD came to the same conclusion, i.e. that the UPC has jurisdiction to decide upon the infringement and validity of the UK part of the European patent, but the UPC does not have jurisdiction to revoke that UK part of the European patent (see [31]-[35]). Kodak were not required to file a national revocation action in the UK in order to raise an invalidity defence in the UPC infringement proceedings.
The court went on to note that that, in the absence of any proceedings in the UK relating to infringement or validity, there is no reason to stay or dismiss proceedings. Thus, going forwards it seems that any defendants hoping to make a serious attempt to restrict the territorial scope of a UPC infringement action to only UPC states will be required to file revocation actions in the non-UPC states included in the infringement action. Such revocation actions may be considered to be partial torpedoes, which are able to limit territorially UPC infringement actions, but not bring them to a complete halt.
As has been seen with other decisions of the UPC (see e.g. the Düsseldorf LD in Kodak v Fujifilm, UPC_CFI_355/2023, 28 January 2025), and as is to be expected, the consideration of the validity of the UK part of the patent did not involve beginning the analysis afresh with the approaches typically applied in UK courts. Rather, the Mannheim LD merely noted that "[i]n the absence of deviating arguments of the defendants challenging the validity of the patent-in-suit when UK patent law or the EPC as applied by UK courts is concerned, reference is made to the [earlier decision in respect of the German part of the patent]" (see [43]). Thus, this case does not give any indication of how the UPC will proceed when a party submits evidence that the law of a relevant foreign jurisdiction would lead to a different outcome to the law of the UPC.
UPC issues UK injunction
What makes this case notable is that it is the first time that the UPC has applied BSH Hausgeräte vs Electrolux to its ultimate conclusion, i.e. to the issuance of the injunction in a country where the UPCA is not in-force.
One wonders how this matter would proceed if, in the future, the UK courts were to revoke the UK part of the patent. Presumably, Kodak would need to request that the UPC rescinds the UK injunction ordered by the Mannheim LD on the basis that the UK part of the patent is no longer in-force. The Mannheim LD did not provide for that eventuality.
This raises the question of whether Kodak would be permitted to bring a revocation action in the UK. While the Mannheim LD suggested that any validity declaration it made would not be binding between the same parties in revocation proceedings in the UK, Fujifilm may argue that Kodak should be estopped from bringing a revocation action in the UK on the grounds that doing so would amount to a re-litigation of the same cause of action between the same parties. A similar question could be asked in relation to infringement.
There are, of course, significant legal and political complexities here. For instance, Kodak, as a multinational corporation, could bring a UK revocation action through a UK entity, in which case the parties involved would not be identical. This option may not be available to smaller companies in different cases. Further, if a UK Court were to take the view that the UPC does not have jurisdiction over the UK part of the patent, it would seem unlikely that the Court would hold that there is any estoppel.
The UK injunction will be enforced by the imposition of a penalty payment (in this case, EUR 50 per square meter of the contested printing plate precursor) to be paid by the German defendant's upon breach of the injunction. With regard to the availability of this enforcement mechanism under UK law, the decision states that "[d]efendants did not submit that UK law would not allow such order."
As the UPC's long arm has developed, some have asked how an injunction issued by the UPC may be enforced in non-UPC states – especially if the courts of the non-UPC states were to take the view that the UPC does not have jurisdiction. However, given the nature of the penalty payment in the present case, it seems that the UK courts will not need to be involved for the injunction to be enforced.
In addition to the injunction, the Mannheim LD ordered that Kodak shall pay damages compensating all losses caused by infringing acts performed in the UK dating back to the date of publication of the patent application.
UPC refuses requests for declaratory relief
Kodak and Fujifilm each sought declaratory relief, with Kodak requesting that the UK part of the patent be declared invalid, and Fujifilm requesting a declaration of infringement. With regard to the Kodak's request, the Mannheim LD held that there is no legitimate interest of a defendant obtaining a declaration that the UK part of a European bundle patent is invalid, because such declaratory relief is not binding on the UK courts (see [37]). Fujifilm's request was denied on the grounds that Fujifilm did not set out why the declaration of infringement would serve a legitimate interest, and in any case the judgement itself explicitly refers to the infringing embodiment, and thus is tantamount to a declaration of infringement.
Amendment of the patent during proceedings
During proceedings, Fujifilm requested an amendment to claim 1. This amendment was found to be admissible in the hearing in respect of the German part of the patent. In the hearing for the UK part of the patent, Kodak argued that Fujifilm had not observed the procedural requirements under UK law in relation to the amendment of the patent, e.g. in relation to notifying the UKIPO of the amendment.
The Mannheim LD dismissed this argument, finding Fujifilm's amendment to be admissible in respect of the UK part of the patent. This was on the grounds that: (i) UK procedural requirements are not applicable because the infringement action should be "exclusively governed by procedural law of the forum at hand in accordance with fundamental principles of international procedural law"; (ii) in any case, failing to notify the UKIPO of the amendment would not have affected the course of the infringement proceedings before the UK court if infringement proceedings were brought there; and (iii) the requirement to notify the UKIPO is for amendments which apply erga omnes (for everyone), whereas the amendment made during the infringement proceedings has only inter partes effect.
It follows from the above that the Mannheim LD is of the opinion that there is no need for Fujifilm to request limitation of the UK part of the patent at the UKIPO. This leads to a curious situation where the patent in respect of which the UK injunction has been issued (i.e. the patent as amended during the proceedings) is different to the patent that is actually in-force in the UK.
Application of UK law
In respect of various issues, the Mannheim LD referred to UK law. For example, the Mannheim LD referred to the UK Patents Act 1977 in relation to the prior use defence (see [49]), available remedies (see [53], [56] and [62]) and indirect infringement (see [67]). In relation to the prior use defence, the court also referred to UK legal principles derived from case law (see [46] and [63]). The Mannheim LD did not, however, refer to expert evidence regarding how the UK law would be applied.
Final comments
This case is noteworthy primarily because it is the first example of the UPC applying BSH Hausgeräte vs Electrolux to issue an injunction covering a non-UPC and non-EU state. It will be interesting to see how the availability of such injunctions comes to shape European patent litigation in the coming years.
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