2026-07-13 - CoA - Fujifilm v. Kodak - UPC_CoA_474/2025

ENGLISH: "1. A claimant is required to indicate the extent to which revocation of the patent is requested and is required to sufficiently substantiate this request for each of the claims covered by its request (see R. 25.1(a)-(d) RoP). 2. It follows from R. 29A(c) RoP that where the patentee requests that claimant’s request for revocation of several or all claims of the patent is rejected, he is required (whether or not as a subsidiary defence) to identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid (see R. 29A(a)-(c) RoP). 3. If the patentee wishes to rely on a combination of dependent claims that does not directly and specifically follow from their wording, such as where the dependent claims rely on several or even any of the previous claims, the patentee should clearly indicate which combination(s) it considers to be valid, (also) in the language of the patent, should the independent claim be held invalid. 4. It follows from the principles of due process – in a similar manner as provided for in R. 30.1 (c) RoP – that the number of such combinations that the patentee wishes to rely on must be reasonable in number, considering the circumstances of the case. 5. R. 30 RoP does not require that the patentee submit an auxiliary request as a prerequisite for defending dependent claims. An Application to amend the patent is only required if the patentee wishes to maintain its patent with amended wording, i.e. deviating from the wording of the claims as granted, or proposes combinations of dependent claims not explicitly included therein, thereby limiting the scope of the patent as granted. This is not the case where a patentee merely defends the dependent claim(s), including combination(s) already encompassed thereby. 6. If there is no pointer to combine a reasonable starting point with another document, a motivation to take the next step in the direction of the invention cannot be derived from the content of such a combination document itself. Failing a motivation for the skilled person to consult a document it will not become aware of its content, and it cannot be concluded that the skilled person would implement the missing feature disclosed therein. 7. It is not appropriate and proportionate to impose a penalty in case of non-fulfilment of an enforceable monetary obligation. 8. A publication of an own declaration by the infringer on its webpage pursuant to Art. 80 UPCA is justified only in the event of special circumstances which call for such a publication as corrective measure due to ramifications of an infringement which cannot be undone or sufficiently compensated otherwise."

The Court of Appeal set aside a Mannheim Local Division decision that had revoked a patent for the German territory and dismissed the infringement action. Its central holding is procedural: a patentee who defends the granted dependent claims and combinations already encompassed by them needs no R. 30 RoP Application to amend, because R. 29A(c) RoP requires substantiation and not a formal request, and because Art. 65(3) UPCA obliges the Court to maintain a partially valid patent in limited form. On the merits the Court of Appeal itself re-decided validity and infringement: it rejected the public prior use, Art. 54(3) EPC and Art. 54(2) EPC novelty attacks, held the claimed parameter ranges must be assessed as an interrelated whole and that no pointer led the skilled person to combine the starting documents with the secondary documents, and found direct and indirect infringement of the German designation. It confirmed long-arm jurisdiction over the UK designation under Art. 4 and Art. 71b(1) Brussels I bis following BSH v Electrolux, set out a framework for how that jurisdiction is exercised, and then dismissed the UK claim on the merits because the German toll manufacturer never held title to the goods. On remedies it granted the injunction, damages, an interim award, an Art. 67 UPCA information order under existing confidentiality orders, destruction, recall and removal, but refused publication under Art. 80 UPCA and refused any penalty on an enforceable monetary obligation.