2025-07-18 - LD Mannheim - Fujifilm v. Kodak - UPC_CFI_365/2023
- Aktenzeichen:
- UPC_CFI_365/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Mannheim (DE) Local Division
- Art:
- Application Order
- Parteien:
- Fujifilm Corporation v. Kodak GmbH, Kodak Graphic Communications GmbH, Kodak Holding GmbH
Kernaussage: The Mannheim Local Division took the first full step through the door the Court of Justice opened in BSH Hausgeräte: it decided infringement of the United Kingdom national part of a European bundle patent, applying UK substantive law, while holding that it has no jurisdiction t…
2025-07-18 - LD Mannheim - Fujifilm
v.
Kodak - UPC_CFI_365/2023
landmark
The Mannheim Local Division took the first full step through the door the Court of Justice opened in BSH Hausgeräte: it decided infringement of the United Kingdom national part of a European bundle patent, applying UK substantive law, while holding that it has no jurisdiction to revoke that part with erga omnes effect. A defendant may raise invalidity as a defence without filing a UK revocation action, and the division then assesses validity as a mere prerequisite for infringement, with inter partes effect only. With no UK proceedings pending there is no reason to stay, and no reason to make the decision conditional on the UK part surviving; nor does a defendant have a legitimate interest in a declaration of invalidity that would not bind the UK authorities. On the merits the Sonora XTRA-3 plates infringe claim 1 directly and claims 15 and 16 indirectly, the prior-use defences under German and UK law both fail for want of a proven business decision before the priority date, and the remedies granted include an information order that reaches turnover and margins with an auditor mechanism protecting non-commercial customers.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent survived (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“The novelty attack fails, on public prior use and over WO 379 and EP 452 [43]. The division held the UK part valid as a prerequisite for infringement for the same reasons that led it to dismiss the counterclaim against the German part, adopting the reasoning of its decision of 2 April 2025 (paras. 64–101) in the absence of any deviating argument under UK patent law or the EPC as applied by UK courts.”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“The inventive-step attack over EP 452 with common general knowledge, or in combination with EP 968 and US 599, fails [43], on the reasoning of the decision of 2 April 2025.”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“The added-matter attack under Art. 123(2) EPC fails [43], on the reasoning of the decision of 2 April 2025.”