UPC_ CFI_ 365/2023; 359/2023 – Fujifilm v Kodak

Court
Local Division Mannheim
Date
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Instructions for hearing Judge-Rapporteur: 1. The views expressed are preliminary 2. Parties are free to address further points Permanent injunction for the UK The Court is inclined to separate the proceedings concerning the UK if there is no decision in BSH Hausgeräte. Further Instructions & Questions - Claimant has to clarify its claim. - Since the Sonora X precursor were only marketed before 1 June 2023, any infringement regarding those precursors relates to the period before the UPCA came into force. - What is the applicable law for these infringements? - Does the UPCA has retroactive effect? - What about the law applicable to UPC-CMS states for infringements after 1 June 2023? - Does the Claimant have to clarify how much damages he wants for each country? - Is Article 67 (request for information) also applicable to the period before 1 June 2023? - Does the prior use have to take place in the UK, in order to obtain a prior user right for the UK? Comment How complicated can you make it! This approach would completely contradict the UPC's objectives if we end up with 17 different national infringement proceedings within one court, with judges who are only familiar with two of these national systems! Please read the UPC’s foundational considerations. It is the clear intention that if a case comes before the UPC, that the Court applies the same law on acts of infringement and revocation. . This is evident not only from the considerations that form the foundation of the UPCA but also from reading Article 24 UPCA. There can be no doubt about this with respect to infringements occurring after 1 June 2023, but also for events that took place partially or entirely before this date. Article 83 UPCA explicitly allows these cases to be litigated before either a national court or the UPC. If the claimant (or the alleged infringer initiating a declaration of non-infringement) chooses the UPC, they also accept the application of Article 24 UPCA and the efficiency the UPC was designed to achieve. Article 24 UPCA is very clear. First, the material provisions of the UPCA apply (see Articles 25-30, 65, 68). Then, the EPC provisions apply (Article 69, etc.). Even if one incorrectly believes that national law must be applied, the fact remains that all Contracting Member States are EPC members, and most have harmonized their patent laws with the Community Patent Convention. Therefore, it seems to me that it is up to the defendant to prove why a particular national law deviates from UPC provisions. Section 61(1) of the UK Patent Act clarifies, among other things, that to obtain a prior user right in the UK, the invention must have been practiced in good faith in the UK before the priority date.

Full Decision Text

Mannheim Local Division UPC_CFI_365/2023 Order of the Court of First Instance of the Unified Patent Court issued on 30 January 2025 concerning EP 3 511 174 CLAIMANT: FUJIFILM Corporation, 26-30, Nishiazabu 2-chome, Minato-ku,Tokyo 106-8620, Japan, represented by: electronic address for service: DEFENDANT: 1. Tobias Hahn, HOYNG ROKH MONEGIER, Steinstraße 20, 40212 Düsseldorf, Germany tobias.hahn@hoyngrokh.com Kodak GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Feldmühleplatz 1, 40545 Düsseldorf, Germany electronic address for service: 2. elena.hennecke@freshfields.com Kodak Graphic Communications GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: 3. elena.hennecke@freshfields.com Kodak Holding GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: elena.hennecke@freshfields.com 1 PATENT AT ISSUE: European patent EP3 511 174 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by Judge Prof. Dr. Tochtermann acting as presiding judge and judge rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Rule 109.1 RoP – Request for simultaneous interpretation SUMMARY OF FACTS: The Claimant is a company based in Japan. It brought an infringement action against the three Defendants, all based in Germany, and chose English as the language of the proceedings. The Claimant filed a request for simultaneous interpretation from English into Japanese at the oral hearing for its attending representatives who do not have the sufficient language skills to follow the course of the oral hearing in English with the necessary level of detail. According to the Claim ant, simultaneous interpretation is necessary to enable the Claimant to make use of its procedural rights for reasons of the fair trial principle and equality of arms in the proceedings. The Defendants object to the request only in respect of Rule 109.1 RoP and to the translation costs becoming costs of the proceedings. PARTIES´ REQUESTS: The Claimant requests (App 1460/2025), the simultaneous interpretation from English to Japanese at the oral proceedings on February 13 and 14, 2025. The Defendants request (App 3424/2025), to reject the Claimant´s request for simultaneous inter pretation from English to Japanese at the oral proceedings according to R. 109.1 RoP. GROUNDS FOR THE ORDER: Pursuant to Art. 51(2) UPCA, any division of the Court of First Instance shall, at the request of a party and to the extent appropriate, provide interpretation to assist that party in oral proceed ings. This general principle is further specified in R. 109.2 (1) RoP to the effect that the Judge Rapporteur shall decide, upon a timely request pursuant to R. 109.1 RoP, whether and to what extent simultaneous interpretation is appropriate. If he considers it appropriate, he shall instruct the Registry to make all necessary arrangements. The costs of simultaneous interpretation in such a case shall be included in the costs of the proceedings, R. 150 RoP. If the Judge-Rapporteur refuses the request for simultaneous interpretation, a party may, at its own expense, engage a simultaneous interpreter and request that arrangements for simultaneous interpretation be made, as far as is practically possible, at its own expense (Rule 109.2 (2) RoP in conjunction with Rule 109.4 of the RoP; cf. CFI, LD Düsseldorf, UPC_CFI_363/2023, procedural order of 12 July 2024). If a party avails itself of this possibility, the costs incurred shall not be regarded as costs of the proceedings within the meaning of the last sentence of Rule 109.5 RoP; they shall be borne solely by the party instructing the interpreter. LD The Hague and Düsseldorf summarise a two 2 step approach for the examination of R. 101 RoP: first, to decide whether it is appropriate to al low interpretation during the oral hearing, and second, to decide whether it is appropriate that the costs of such interpretation shall become cost of the proceedings (cf. CFI, LD The Hague, UPC_CFI_195/2024, procedural order of 25 June 2024, para 5; CFI LD Düsseldorf, UPC_CFI_355/2023, procedural order of 29 November 2024). The LD Mannheim supports this approach. In the first place the simultaneous interpretation in the present highly complex substance matter appears to be appropriate to ascertain that the representatives of Claimant are in a position to fully understand the exchange during the oral hearing (see CFI Düsseldorf in the parallel case as cited above). Still it does not seem appropriate that the cost of the simultaneous interpretation should be come a part of the cost of the proceedings. Japanese is neither an official language of the Con tracting Member States nor an official or designated language of the Local Division Mannheim, where the infringement action was filed in English. The UPC cannot generally be expected to pro vide interpretation into all languages (see CFI, Local Division The Hague and Düsseldorf cited above). Yet, another argument against making the costs incurred cost of the proceedings is that the Claimant's representatives are able to understand and follow the oral hearing in English as such. They simply put forward that they are unable to follow the oral hearing to a necessary de gree of detail without interrupting to ask questions or using additional translation aids. The mere desire to better understand the proceedings in real time, as if they were being conducted in Jap anese, does not justify a request for the Court to provide simultaneous interpretation making the costs incurred cost of the proceedings. That is all the more true considering that these arrange ments are associated with great organisational effect for the sub-registry. In case of need the oral hearing may be interrupted for a reasonable time so as to align between Claimant and its representatives. But the Claimant is free to use an interpreter at his own expense (see R. 109.4 RoP), who may, if necessary, use the simultaneous interpretation equipment available in the court room. Due to the multiple requests in this regard in preparation of the oral hearing it has to be pointed out that the technical environment as provided is to be used and no further improvement upon de mand of the interpretators may be allowed as the general set-up as provided by the hosting member state has proofed to be adequate, sufficient and reliable in the past in other proceed ings. ORDER 1. The Claimant may, at its own expense, engage an interpreter who may, if necessary, use the equipment available in the courtroom for simultaneous interpretation. 2. If the Claimant wishes to make use of this possibility, it shall inform the sub-registry of the Lo cal Division Mannheim in due time before the oral hearing. 3. The request is dismissed in all other respects 3 Issued in Mannheim on 30 January 2025 NAMES AND SIGNATURES Tochtermann Presiding judge and judge-rapporteur 4

Key Holdings

  • The Judge-Rapporteur issued preliminary instructions and questions for a hearing, including the inclination to separate UK proceedings if the BSH Hausgeräte decision is pending.
  • Questions were raised regarding the applicable law for infringements before and after June 1, 2023, the retroactive effect of UPCA, damages per country, and the applicability of Article 67.
  • The comment strongly criticizes the approach of applying different national laws within the UPC, arguing it contradicts the UPC's objectives and Article 24 UPCA, which mandates uniform application of UPCA and EPC provisions.
  • It is asserted that if a case comes before the UPC, the Court should apply the same law on acts of infringement and revocation, as per Article 24 UPCA.

Tags

  • Applicable Law
  • Damages
  • Infringement
  • Jurisdiction
  • Prior Use
  • UPCA

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