UPC Court of Appeal reverses infringement ruling in both Germany and UK

Fujifilm v Kodak UPC-CoA-312/2025, UPC-CoA-333/2025, UPC-CoA-880/2025, UPC-CoA-882/2025

Decision of 2 June 2026¹

The Court of Appeal has reversed the finding of infringement by the Mannheim Local Division in respect of both Germany and the UK, although with different reasons for each jurisdiction. The validity of the patent as amended was upheld. The Court of Appeal has laid down detailed guidance on the UPC exercising jurisdiction in relation to non-EU countries such as the UK.

Background

The Mannheim Local Division had found EP 3511174 valid in the slightly amended form offered as an unconditional amendment, and had found that the Kodak defendant companies, all German companies, infringed. A first decision was taken in respect of Germany, and the action in relation to the UK designation of the European patent was separated.  In a later decision, it was held that the UK patent was also infringed.

Validity

The validity of the patent was upheld, following substantially the reasoning of the first instance. An allegation of lack of novelty by public prior use that was not considered at first instance, was also disregarded on appeal, although the Court of Appeal noted it probable that the prior use did not disclose a value for one of the parameters within the claimed range. This parameter was narrowed compared with the patent as granted in the UPC proceedings by an unconditional amendment.

Infringement Decision in relation to Germany

The Court of Appeal held that the accused embodiments infringed the patent, essentially mirroring the first instance finding. The divergence from the Mannheim Local Division came in the consideration of prior user right. The Mannheim Local Division dismissed this defence as insufficiently substantiated by evidence. The Court of Appeal considered the prior use defence to be sufficiently proved. The facts relied on appear to be essentially those rejected as novelty-destroying in relation to validity.

Importantly however, the Court of Appeal held that the prior user right is made out if the use falls within the scope of the claims as granted, and the subsequent narrowing of the scope of the critical parameter does not extinguish the right to continue the prior use. Moreover, the prior user right extended to later use within the scope of the claims as amended, because the change (from a value outside the amended range to within the amended range) was not considered related to a teaching in the patent. The Court of Appeal saw no teaching in the patent associating the amended range with a relevant additional advantage.

The success of the prior user defence is the key reason for the difference in final outcome on appeal with respect to infringement in Germany. The Court of Appeal confirmed that any prior user right is assessed under the national law of the territory concerned – there is no UPC-wide right provided in the UPC Agreement.

Jurisdiction in relation to UK

A key issue at first instance and appeal was the jurisdiction of the UPC to decide infringement in relation to the UK. It is now well-established at the UPC, especially following the CJEU decision C-339/22, BSH Hausgeräte v Electrolux, that where, as in the case at hand, the defendants are companies located within the UPC territory (Germany), the UPC has competence based on jurisdiction established under Article 4 of the Brussels Ia Regulation to decide infringement on non-EU² designations of the European patent, notwithstanding that for those non-EU countries the national courts have exclusive jurisdiction over the validity of the patent.

Interestingly, the Court of Appeal considered that the terms of the Brussels Ia Regulation preclude the UPC from declining jurisdiction where it has jurisdiction under Article 4 on a ground such as forum non conveniens (i.e. a court of the non-EU country concerned would be a more appropriate forum). If the UPC has jurisdiction, it is obliged to exercise it.

However, the Court of Appeal emphasised that the UPC must apply international law principles such as comity, and set out a structured pathway for the infringement jurisdiction to be exercised while observing comity, as follows:

Where the UPC has jurisdiction over infringement and the defendant asserts invalidity of the patent, for non-EU countries the Court can consider patent validity on an inter partes basis (following BSH Hausgeräte v Electrolux). For EU countries outside the UPC territory, the UPC cannot consider validity, but does not lose jurisdiction over infringement. Therefore:

1. If a revocation action is lodged with the UPC in respect of a non-UPC country
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   The UPC must declare that it lacks jurisdiction.
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2. If an infringement action includes a non-UPC country, and the patent (insofar as it is in force in UPC territory) is considered invalid, but would be infringed if valid
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   The UPC should offer the patentee the opportunity to withdraw the infringement action outside the UPC territory. If the patentee does not wish to do this:
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   1. For EU countries outside UPC territory, the defendant should be given an opportunity to file a revocation action in the country concerned, and if such an action is commenced, the infringement proceedings should be stayed pending a final decision in the national revocation action.
      If no revocation action is filed, the UPC should consider the patent valid and decide the infringement on that basis. (Although it may seem counter-intuitive that the UPC assumes a patent to be valid where it considers the corresponding patent within UPC territory to be invalid, it is arguably the only way to proceed if the defendant declines to launch a revocation action with the competent national court)
   2. For non-EU countries, the infringement action should generally be dismissed.
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3. If an infringement action includes a non-UPC country, and the patent (insofar as it is in force in UPC territory) is valid and infringed
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   The UPC may proceed to a decision, rendering its orders under the condition subsequent that the patent is not held to be wholly or partially invalid by the competent national court. If the competent national court holds the patent to be valid, then the decision including its orders stays in place, and once the decision becomes final, the injunction becomes permanent. If the patent is held wholly or partially invalid, to the extent the infringement is based thereon, then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away. Rule 118.4 provides in that situation that within two months of the national decision the patentee may request from the UPC orders consequential on the national court decision.
   
   This provides a comprehensive framework for the UPC to exercise jurisdiction (for defendants within its territory) in respect of EPC countries outside the UPC.

Infringement Decision in relation to UK

Although the UPC at both instances accepted jurisdiction with respect to the UK, their assessment differed as to whether the defendants were actually responsible for infringement in the UK.

The Court of Appeal was unconcerned that the amendment made unconditionally to the German designation of the patent implied a lack of validity of the patent as granted. The Court seemed willing to consider in respect of the UK that the patent might be partially valid to the extent of the amended version. This mirrors the Mannheim Local Division whose injunction in respect of the UK followed the wording of the amended patent claim, not the patent as granted. This is hard to reconcile with the fact that on any view, the UPC cannot enter an amendment with respect to a non-UPC designation of a European patent.

However, the infringement action with respect to the UK failed because ultimately the Court of Appeal considered that none of the German defendants was actually responsible for any act of infringement in the UK. Any infringement was attributable to the UK company, Kodak Limited, not a party to the UPC proceedings. An allegation that the German companies might be liable as joint tortfeasors (which fell to be decided under UK law on joint tortfeasorship) was rejected.

Outcome

Overall, the Court of Appeal agreed with the Mannheim Local Division on many points, including patent validity and the substantive infringement question of whether the Kodak products fell within the scope of the claims. However, the first instance infringement finding was entirely reversed, in Germany because of a prior user right, and in UK because the defendants were not liable for the acts in the UK.

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[1] https://www.unifiedpatentcourt.org/en/node/183415, https://www.unifiedpatentcourt.org/en/node/183416, https://www.unifiedpatentcourt.org/en/node/183417, https://www.unifiedpatentcourt.org/en/node/183418

[2] More strictly, countries outside the EU and also not signatories of the Lugano Convention

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