Fujifilm v Kodak
A. Facts
The Claimant, FUJIFILM Corporation (Fujifilm), owns European Patent EP 3 594 009 B1 relating to lithographic printing plate precursors for offset printing (patent in suit) [1] . The patent in suit is in force in Germany and the United Kingdom (UK). No opposition was filed at the EPO, and no national revocation action was pending when the infringement action was initiated [2] .
The Defendants are German subsidiaries of the Eastman Kodak Group based in New York, USA (Kodak) [3] .
Fujifilm lodged an infringement action on 10 October 2023 before the Unified Patent Court (UPC) Düsseldorf Local Division (Court), claiming that Kodak's products (printing plates [3] ) infringe the patent in suit [3] . Fujifilm sought injunctive relief, damages, product recall and destruction, disclosure of information, and corrective measures for multiple acts in both Germany and the UK. The UK is not a contracting state of the UPC Agreement (UPCA), which establishes the jurisdiction of the UPC.
In response, Kodak raised a preliminary objection challenging the UPC’s jurisdiction over alleged infringing acts in the UK [4] . Kodak did not contest the Court’s jurisdiction as far as acts in Germany are concerned.
On 2 February 2024, Kodak filed a counterclaim for revocation of the patent in suit for the territory of all UPC contracting states based on insufficient disclosure, lack of novelty, and lack of inventive step. Kodak did not seek revocation of the UK part of the patent in suit. In case that the UPC would consider assuming jurisdiction over the infringement action with regards to the UK, Kodak requested, however, without prejudice to the jurisdictional challenge that the Court takes this step only if Fujifilm first committed to consent before the UK Intellectual Property Office (UK IPO) to the revocation or restriction of the UK part of the patent in suit in line with any decision handed down by the UPC concerning validity.
In its decision dated 28 January 2025, the UPC rejected Kodak’s preliminary objection. The Court revoked the patent in suit for insufficiency of disclosure and dismissed the infringement action [5] .
B. Court's Reasoning
Jurisdiction for infringement action
The Court held that it has jurisdiction to hear the infringement action in respect of the UK part of the patent in suit, even though the UK is not an UPCA contracting member state [6] .
Since all defendants are domiciled in Germany, the Court has jurisdiction under Art. 4(1) in conjunction with Art. 71b(1) Brussels Ibis Regulation [7] .
Following the case law of the Court of Justice of the EU in the matter Owusu (judgment dated 1.3.2005 – C-281/02), the Court confirmed that Art. 4(1) Brussels Ibis Regulation establishes ‘universal’ jurisdiction of the courts of defendants’ domicile [8] . This means that jurisdiction according to this provision is given also in cases with a link to non-EU member states [8] .
Consequently, the Court confirmed that Art. 4(1) Brussels Ibis Regulation can be extended to infringement of European patents in all states for which they have been granted, including non-contracting member states of the UPCA [8] . Art. 4(1) Brussels Ibis Regulation, thus, ‘enables the patent holder to bring all his or her infringement claims before a single court and to obtain comprehensive relief from a single forum’ [8] .
The Court stressed that this conclusion does not conflict with either Art. 71b Brussels Ibis Regulation or Art. 34 UPCA [8] .
The UPC has jurisdiction where a national court of a UPCA contracting member state would have jurisdiction under the Brussels Ibis Regulation. Art. 71b(1) limits the legal matters transferred to the UPC from member state national courts, not its territorial reach [9] .
On the other hand, the Court clarified that Art. 34 UPCA does not concern the international jurisdiction of the UPC [10] . It specifies the territorial scope of decisions within UPCA contracting member states but does not exclude decisions having effect beyond those territories [10] .
Finally, the Court observed that Art. 24(4) Brussels Ibis Regulation, which grants exclusive jurisdiction to courts of the state where patents are registered, applies only to validity disputes, not to infringement proceedings [7] .
Jurisdiction for revocation counterclaim
The Court ruled that the UPC has exclusive jurisdiction to hear the revocation claim under Art. 32(1) UPCA [7] . Since Kodak sought revocation only for UPCA contracting member states (Germany) and not revocation of the UK part of the patent in suit, no jurisdictional questions were raised [7] .
Furthermore, the Court dismissed Kodak’s request to require Fujifilm to consent to the revocation of the UK part of the patent in suit [7] . The Court saw no legal basis for this request, at least in the counterclaim [7] .