Fujifilm v Kodak & Ors (UPC_CFI_355/2023)
Decision date:
28 January 2025
Osborne Clarke summary
- The Düsseldorf LD revoked Fujifilm's patent relating to lithographic printing plates for insufficiency.
- When considering claim construction, the court confirmed that it is governed by Article 69 EPC in conjunction with Article 24(1)(c) UPCA. The same approach to claim construction is taken when assessing infringement and validity. Article 69 EPC and its Protocol establish a primacy of the claims, which must also be applied when a narrowing claim interpretation is offered by one of the parties.
- As a general rule, if a patentee wishes to narrow the scope of a claim this should be on the basis of the wording of the claim and not on something appearing only in the description. This is because the patentee has the possibility of restricting the scope of the patent by a claim amendment. A narrower interpretation of the claims that deviates from the broader general understanding of the terms used in the claim by the skilled person can only be permitted if there are convincing reasons based on the individual case.
- The normal rule is that the terms used in the claim are given their broadest technically sensible meaning. Therefore the description cannot be relied on to exclude subject-matter that the broadest technically sensible meaning of the words would include. In this case, a narrowing interpretation of the claims based on the description or drawings was not permitted. In considering sufficiency, the court held that the patent did not disclose the claimed invention in a manner sufficiently clear and complete to allow it to be carried out by the skilled person over the entire claimed range. Specifically, the patent failed to sufficiently disclose embodiments where the polymerization initiator comprised only an electron-donating initiator or only an electron-accepting initiator. The patent failed to sufficiently disclose embodiments where the HOMO (Highest Occupied Molecular Orbital) difference was calculated with an electron-accepting initiator instead of an electron donating-initiator. Further, the claimed HOMO difference was anticipated by various pieces of prior art.
- An application to amend the patent and the infringement action were both dismissed.
- This decision was prior to the CJEU's decision in BSH v Electrolux, but the Düsseldorf LD still confirmed that it had jurisdiction to hear an infringement action concerning the UK designation of a European Patent, even though the UK is not a contracting member state of the UPC, because the defendant was domiciled in a Contracting Member State (here, Germany). In this case, revocation of the patent was only sought in the UPC contracting member states in which it was in force (Germany) and therefore no issues with respect to revocation of the UK designation arose.
Issue
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