UPC_CFI_359/2023 – Fujifilm v Kodak

Court: Local Division Mannheim
Date: 2025-04-02
Outcome: Denied
Sector: Other
Decision Type: MERITS

Expert Commentary

Defense not admissible Background Fujifilm filed an infringement suit against Kodak. Kodak filed a counterclaim for revocation. The Court 1. The case relating to the alleged infringement in the UK has already been separated. 2. The Court has no jurisdiction to hear claims based on national EPs that had expired before the entry into force of the UPC. 3. The patentee’s arguments based on the validity of the dependent claims are inadmissible because no R. 30 RoP request (auxiliary request) was filed. 4. The patent is revoked. 5. The infringement claim is dismissed. Comment 1. The Court held that the infringement action was inadmissible for national parts of the EP that had lapsed before 1 June 2023 (the date of UPC entry). That seems correct, as Article 3(c) UPCA provides that the UPCA applies only to European patents which have not lapsed. The phrase “without prejudice to Article 83” simply means that national jurisdiction remains available for these lapsed patents. “European patent” in Article 3(c) UPCA refers to each national part of the EP, as is standard practice. Although the defendants apparently raised this only during oral argument, I believe the Court should have applied Article 3(c) UPCA ex officio since it relates to subject-matter jurisdiction. The same would apply if an infringement suit were filed based on a national or US patent. 2. In its Statement of Claim, the claimant alleged direct infringement of claims 1–7 and 9–10, and indirect infringement of claim 13. 3. In its counterclaim, the defendant argued that the patent should be revoked in full for lack of novelty or inventive step and raised an additional “added matter” objection concerning claim 6. 4. In its response to the claim for revocation, the claimant (in the infringement case) inter alia argued that at least the dependent claims are valid. It is quite a surprise to see that the Mannheim Local Division calls the defence inadmissible, invoking the formality that the claimant did not file “a proper application to amend the patent”, referring to R. 30 RoP. 5. As I explained above in relation to JingAo v Chint, so-called dependent claims are in fact nothing else than independent granted claims. Dependent just means that the claim includes all the limitations of the main claim (and – often – of the further dependent) claims. 6. Thus, if a claimant (as here) alleges infringement of both claim 1 and dependent claims (because the accused product incorporates the subject matter of such claims) and the defendant wants to raise invalidity as a non-infringement defence, then the defendant must argue that the dependent claims are also invalid. In this case, the Court stated that the defendant indeed argued that the whole patent should be revoked. That then means that the defendant did indeed argue or at least is of the opinion that also the dependent claims are invalid. 7. It is of course unsurprising that the patentee will defend their independent claims and, if they are prudent (for in case the independent claim(s) will not survive), one or more dependent claims. The drafters of the Rules specifically mentioned that in a Defence to the counterclaim for revocation a defendant should do so (R. 29A sub c RoP). There is no requirement to request an amendment, because there is nothing to amend – it pertains granted claims. I note that R. 30 RoP makes clear that even for a true amendment of claims (where the claim is changed) a formal request is not necessary if it is submitted in response to the counterclaim for revocation. Only if thereafter the patentee wants further changes to his patent claims, a request is necessary (see R. 30(2) RoP). 8. There is certainly nothing surprising for a court which is used to deal with infringement and validity in the same proceedings (such as the French and Dutch courts) that a patentee would assert the validity of dependent claims during invalidity proceedings. German national courts, which deal only with infringement, may be less familiar with this practice—and in my opinion that seems to be reflected in this ruling. 9. My impression is that the Court focused on the validity of claim 1 (and independent claim 13) and is now invoking a procedural formality to avoid having to deal with the validity arguments regarding the dependent claims. 10. As I have said repeatedly: defending granted dependent claims does not require auxiliary requests. You also do not have to file an “auxiliary request” if for infringement you (also) rely (as here) on dependent claims. 11. The Court refers to R. 30 RoP. As explained above, R. 30 RoP requires a formal request only when new (amended) claims are submitted after the initial auxiliary requests. However, when defending the validity of granted dependent claims, there is no amendment of the patent. You just defend the different granted claims of the patent. If one argues that an amendment of claim 1 is invalid and only claim 2 and following survive, then that has nothing to do with R. 30 RoP. The meaning of R. 30 RoP is that you want to defend new claims. This follows also very clearly from R. 30.1(a) RoP makes this clear: [the Application shall contain] “(a) the proposed amendments of the claims of the patent concerned and/or the specification”. 12. I also believe the Court’s reliance on this formality is inconsistent with Article 138(2) EPC. The Court revoked the entire patent despite the fact that, based on its reasoning, the grounds for revocation only affected part of the European patent. 13. In a situation where there is no precedent from the Court of Appeal or any Local Division, the Court should at the very least have given the patentee an opportunity to submit the amendment it deemed necessary before revoking what may be a valuable and innovative patent. This approach in my view seems contrary to the principles of “flexibility, fairness and equity” cited in Preamble 2 of the Rules of Procedure. Disclaimer: This case was handled by a team from my firm. I am not a UPC representative and was not part of that team. All opinions expressed above are strictly personal and do not necessarily reflect the views of the firm or the representatives involved.

Full Decision Text

1 Mannheim Local Division UPC_CFI_359/2023 Procedural Order of the Court of First Instance of the Unified Patent Court Local Division Mannheim issued on 2 April 2025 concerning EP 3 476 616 CLAIMANT: FUJIFILM Corporation, 26-30, Nishiazabu 2-chome, Minato-ku,Tokyo 106-8620, Japan, represented by: Tobias Hahn, HOYNG ROKH MONEGIER, Steinstraße 20, 40212 Düsseldorf, Germany electronic address for service: tobias.hahn@hoyngrokh.com DEFENDANTS: 1. Kodak GmbH, Kesselstraße 19, 70327 Stuttgart, represented by its CEOs, at the same place, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Feldmühleplatz 1, 40545 Düsseldorf, Germany electronic address for service: elena.hennecke@freshfields.com 2. Kodak Graphic Communications GmbH, Kesselstraße 19, 70327 Stuttgart, represented by its CEOs, at the same place, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: elena.hennecke@freshfields.com 3. Kodak Holding GmbH, Kesselstraße 19, 70327 Stuttgart, represented by its CEOs, at the same place, 2 represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: elena.hennecke@freshfields.com PATENT AT ISSUE: European patent EP 3 476 616 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order is issued by the presiding judge Tochtermann, the legally qualified judge Böttcher as judge-rapporteur, the legally qualified judge Agergaard and the technically qualified judge Wismeth. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement – separation of proceedings REASONS FOR THE ORDER: The order is based on R. 302.1, R. 303.2, R. 340.2 RoP applied accordingly. The decision of the European Court of Justice in re C-339/22 (BSH Hausgeräte) had not been delivered until the end of the oral hearing but only thereafter on 25 February 2025. With the decision pending, no guidance was available concerning a fundamental question of European Law concerning the international jurisdiction under the Brussels Ia Regulation to be applied by the UPC pursuant Art. 71a, Art. 71b (1) Brussels Ia Reg. Although the ECJ delivered its decision before the date foreseen for the delivery of the decision in the proceedings at hand, it would be inadmissible, at least questionable in the light of parties’ right to be heard if the panel would now base its decision on the ECJ’s decision without the parties having had the opportunity to comment on this decision and its implications. However, it seems to be likewise inappropriate to hold a second oral hearing for the whole case although the panel could deliver a decision regardless of the outcome of said ECJ decision. The panel believes that, in any situation where the infringement proceedings is ready for decision with regard to single national parts only, such decision should not be withheld on a regular basis, if this would result in delaying in part the enforcement of claimant’s potential patent rights – as the case may be, after being successful before the Court of Appeal. In addition, a defendant has also an interest worthy of protection in the non-delay of the proceedings in particular with regard to its counterclaim for revocation, especially if it is successful at the first instance. Therefore, in the panel’s opinion, such situation calls for R. 302.1, R. 303.2, R. 340.2 RoP to be applied accordingly in order to separate the proceedings with regard to national parts of traditional European bundle patents which are not ready for decision yet. 3 The parties were informed by order of 30 January 2025 that, with regard to UK, the panel may deal with the questions concerned by the pending ECJ decision in re C-339/22 (BSH Hausgeräte) in separate proceedings after the separation of cases in the event that no decision of the ECJ should be delivered until the oral hearing has taken place. The parties did not oppose. ORDER: Claimant’s requests based on the national part of the patent-in-suit in relation to the United Kingdom and Defendants’ requests relating to said national part are separated and will be dealt with in separate proceedings. Issued in Mannheim on 2 April 2025 NAMES AND SIGNATURES Presiding judge Tochtermann Legally qualified judge Böttcher Legally qualified judge Agergaard Technically qualified judge Wismeth

Key Holdings

The Court ruled it has no jurisdiction over claims based on national European Patents that expired before the UPC's entry into force (June 1, 2023).
Arguments regarding the validity of dependent claims were deemed inadmissible due to the patentee's failure to file a formal Rule 30 RoP request (auxiliary request).
The patent was revoked in full, and the infringement claim was dismissed.
The commentator strongly criticized the Court's procedural formality, arguing that defending granted dependent claims does not require an amendment request under Rule 30 RoP, as they are already part of the granted patent.

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