Fujifilm v Kodak (UPC_CFI_365/2023 & UPC_CFI_359/2023)

• The Mannheim LD delivered two decisions concerning infringement actions brought by Fujifilm against three German subsidiaries of Kodak relating to German and UK designations of EP 174 and EP 616 concerning printing plates. The decisions had opposite outcomes.
• The Mannheim LD rendered two decisions in this case because there was only a short time period between the CJEU's decision in BSH v Electrolux being handed down and the oral hearing. This meant that the parties' right to be heard would have been impeded and therefore the court separated the proceedings concerning the UK designations so that the impact of BSH v Electrolux could be properly considered.
• On the same date as the LD panel separated the UK proceedings, it held that the German part of EP 174 was valid and infringed and an injunction was granted against Kodak covering Germany. However, the German designation of EP 616 was found invalid for lack of inventive step and therefore the infringement action was unsuccessful.
• The Mannheim LD later found that the UK designation of EP 174 was infringed by Kodak's activities in the UK, rejecting Kodak's invalidity defence. The court therefore granted an injunction against Kodak, restraining its behaviour in the UK by ordering Kodak, amongst other things, not to offer, place on the market, use or store the infringing product within the UK. Fujifilm was less successful in relation to the UK designation of EP 616, which was found to be invalid for lack of inventive step and the infringement action failed.
• The Mannheim LD's grant of an injunction relating to the UK designation of a European Patent marked the first time the UPC took the CJEU's reasoning in BSH v Electrolux to its full conclusion – injunctive relief based on an inter partes validity finding and establishing infringement. The Mannheim LD's decision affirmed the UPC's long-arm jurisdiction.
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This analysis is based on a machine translation of a decision not available in English.