UPC grants first-ever injunction for infringement of UK designation of European Patent

The Unified Patent Court (UPC) has delivered two decisions in the ongoing litigation between Fujifilm v Kodak, concerning the alleged infringement of European patent EP 3 511 174 B1 (EP'174) and EP 3 476 616 (EP'616). Both decisions were delivered by the Mannheim local division (LD) on 18 July 2025, but had opposite outcomes – in one infringement was found, in the other it was not.

In separate proceedings between the parties, the Düsseldorf LD found that the UPC had jurisdiction to hear an infringement action in respect of a UK designation of the patent in suit. That decision was handed down before the Court of Justice of the EU's (CJEU) decision in BSH v Electrolux, with the Düsseldorf LD instead relying on the earlier CJEU decision in Owusu as authority.

The present proceedings concerned infringement actions commenced by Fujifilm against three German subsidiaries of Kodak relating to German and UK designations of EP'174 and EP'616. The CJEU's decision in BSH v Electrolux was handed down shortly before the oral hearing in these proceedings. However, the LD panel decided that the short time period between the decision being handed down and the oral hearing meant that it would impede the parties' right to be heard and therefore 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. In contrast, also on the same date, the German designation of EP'616 was found invalid and, as a result, the infringement action was unsuccessful.

The Mannheim LD found that EP'174 was infringed by Kodak's activities in the UK, rejecting Kodak's invalidity defence. The Mannheim LD 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 the EP'616 proceedings for the UK: the LD found EP'616 invalid for lack of inventive step. Accordingly, that infringement action failed.

The grant of an injunction relating to the UK designation marks the first time the UPC has taken the CJEU 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 affirms the UPC's long-arm jurisdiction and has the potential to change the European patent litigation landscape, making the UPC an attractive "one-stop shop" jurisdiction in which to bring patent infringement claims.

Long-arm jurisdiction

The Mannheim LD applied BSH v Electrolux, finding that since a defendant was domiciled in a Member State of the EU it had jurisdiction to rule on the infringement of a patent granted in a non-EU state; in this case, the UK. The UK was not a member to the Lugano Convention nor was there an applicable bilateral convention stipulating that the UK courts had exclusive jurisdiction over disputes relating to the validity of patents granted in the UK.

Also in line with BSH v Electrolux, the LD confirmed that the UPC did not have the authority to revoke the UK part of the patent. It acknowledged that any decision on validity would only have inter partes effect and would not affect the existence or content of that patent in the UK, or cause the UK national register to be amended.

The Mannheim LD noted that the question was left open as to whether, under BSH v Electrolux principles, the courts of the EU (which includes the UPC) have jurisdiction to grant a declaration of invalidity of a UK designation of a European Patent.

However, in the present case, the Mannheim LD found that Kodak did not have a relevant interest in such a declaration. A declaration would not be binding on the authorities in the UK nor on a respective claimant in revocation proceedings in the UK. It found that if it were to grant such a declaration, this would risk indirectly deciding on the validity of the UK part, which would be counter to the principles in BSH v Electrolux.

Revocation counterclaim

In both proceedings, Kodak brought a counterclaim for revocation as a defence against the alleged infringement. However, Kodak did not commence a national action in the UK for revocation of either patent. As there were no pending proceedings in the UK, the Mannheim LD found no reason to stay its proceedings.

The Mannheim LD confirmed that the UPC can only assess the validity of the UK designation of a European Patent with inter partes effect. Notwithstanding this, it deemed it necessary to assess the validity of the patents as a "prerequisite" for the assessment of infringement.

The validity of EP'174 was upheld on the basis of auxiliary requests submitted by Fujifilm, which were made to address a potential partial revocation of the patent. The LD found that such consequential adjustments were admissible pursuant to an earlier decision in the proceedings. This meant that the Mannheim LD made an assessment of the validity of an amended patent for the purposes of its infringement assessment, but those amendments were not in force or in play in the UK because no UK proceedings had been commenced by Kodak.

The LD further held that there was no procedural requirement under UK law for Fujifilm or the court to notify the UK patent office of the decision. This was because the LD held that an infringement action is exclusively governed by the procedural law of the forum at hand in accordance with fundamental principles of international procedural law, and here that was the UPC.

In any event, the Mannheim LD reasoned that the non-observance of an obligation to notify the UK patent office would not affect the course of an infringement action before UK courts. It particularly noted that it would not result in a stay of UK proceedings until the notification had taken place. The Mannheim LD also said that the requirement to notify the UK patent office was linked to the erga omnes effect of the a patent. Since BSH v Electrolux limits the effect of any validity findings to inter partes, it reasoned that the notification requirement would not be applicable.

As such, based on the admitted auxiliary requests, the LD rejected Kodak's revocation counterclaim.

With respect to EP'616, the court followed the earlier decision concerning the German designation, finding the patent-in-suit invalid. As a result, Fujifilm's infringement action was unsuccessful.

Injunction granted

All the defendants were German companies within the Kodak group. However, the claimant asserted that the UK designation of EP'174 was infringed as the second defendant, which owned and operated manufacturing facilities in Germany, was a contract manufacturer of printing plates for a UK entity, Kodak Ltd, within the Kodak group. The second defendant delivered these printing plates to Kodak Ltd in the UK and to UK-based distributors, allegedly retaining title until they reached the distributors' premises.

Only the defendants had exact knowledge of when and under what conditions title to the printing plates was transferred. The Mannheim LD found that general disagreement with the facts is insufficient to dislodge a claimant's allegations. It held that clear and detailed facts to support the defendants' disagreement were required and the defendants failed to provide these. The LD, therefore, held that the alleged acts of offering, placing on the market, and using or storing the infringing product in the UK were made out, and claim 1 of EP'174 (a product claim) was infringed directly. A private prior use defence was also insufficiently substantiated.

The LD declined to grant an injunction prohibiting the defendants from manufacturing the relevant printing plates in the UK as there was insufficient evidence of an imminent danger of manufacturing being relocated from Germany to the UK. However, the LD did hold that claims 15 and 16 (process claims for the manufacture of the printing plates) were indirectly infringed by the UK activities.

Osborne Clarke comment

The Mannheim LD's decision to grant an injunction covering the UK for the first time shows that the UPC is prepared to follow the CJEU's reasoning in BSH v Electrolux to its full conclusion. This sets a precedent for future European cross-border patent litigation. The UPC is willing to assess the validity of a non-UPC European Patent on an inter partes basis in order to make an infringement finding. If infringement is established, the UPC is willing to grant injunctive relief covering third states.

The UPC is unlikely to stay its infringement proceedings concerning a non-UPC state patent where there is no parallel national action for such patent. The Mannheim LD's decision will, therefore, have significant implications for patent enforcement strategies. Defendants will need to consider the implications of raising an invalidity defence without filing a national revocation action. Defendants will need to carefully consider the balance between the cost implications of filing a national revocation action and the impact filing or not filing a national action will have on timing and jurisdiction.

It remains to be seen whether Kodak will try to appeal this decision and whether the UPC's Court of Appeal will affirm the long-arm jurisdiction asserted by the Mannheim LD. It is clear that the CJEU's decision in BSH v Electrolux has caused a shift in the dynamics of cross-border European patent litigation and the Mannheim LD's application of the decision will no doubt increase the popularity of the UPC as a single venue to bring cross-border infringement claims. We still wait to see if and how the English courts might react in response.