2025-04-02 - LD Mannheim - Fujifilm v. Kodak - UPC_CFI_365/2023

1. The UPC has no jurisdiction over a European Patent with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023. The same applies to national parts of non-UPCA-member states. 2. Also in the context of a prior use right, the according facts have to be presented in the Statement of Defense and the Counterclaim for Revocation. It is in those briefs that the defendant has to submit reasons why the action shall fail, R. 24(g) RoP and the grounds for revocation have to be presented comprehensively, R. 25(1)(b) and (c) RoP whereas the following briefs have to limit themselves to a response to matters raised in the Reply, R. 29(c) and (d) RoP. 3. Where German Law is applicable upon a private prior use right according to Art. 28 UPCA, it is necessary that a firm and final decision to use the form of alleged prior use took place before the priority date. For this the burden of presentation and proof regarding the underlying facts of a private prior use right lies on the defendant. It is therefore up to the defendant, to prove by submitting relevant documents and/or witnesses that by the date of the priority, he had possession of the invention and exercised the possession of the invention.

This decision by the Mannheim Local Division granted an injunction and ordered the Defendants to pay damages and to inform the Claimant to the extent of the infringing acts; the counterclaim was dismissed. The decision is 65 pages long and deals with many (!) different topics, for example the lack of jurisdiction for EP-parts that lapsed before the UPC's entry into force, the requirement for "front-loading proceedings" - specifically related to the Defendants' right of prior use -, the prior use right in Germany and validity attacks that remained unsuccessful. This decision was published twice.