Mannheim Local Division confirms UPC can judge on UK infringement

Mannheim Local Division confirms UPC can judge on UK infringement 

UPC _CFI 359/2023 – Decision of 18 July 2025 (FUJIFILM v Kodak)

In UPC _CFI 359/2023 (FUJIFILM v Kodak) the Mannheim Local Division dealt with EP 3 476 616, a lithographic‑plate patent that had already been invalidated by the Division for Germany in April 2025. A second tranche of the case – directed solely at alleged infringing acts in the United Kingdom – was held over while the court awaited guidance from the CJEU. That guidance arrived in February in the BSH Hausgeräte judgment, and Mannheim has now applied it.

Jurisdiction after BSH Hausgeräte

The panel confirmed that Article 71b Brussels Ia, read in light of BSH, gives the UPC jurisdiction over UK‑territorial infringement where the defendant is EU‑domiciled. The court rejected Kodak’s objections grounded in comity, forum non conveniens and “non‑interference”, noting that BSH addresses such international‑law concerns exhaustively.

What the UPC lacks – again following BSH – is power to revoke the UK validation with erga omnes effect or to order amendments on the UK register. Mannheim therefore refused Kodak’s request for a declaration of UK invalidity that would have gone beyond a mere defensive plea.

Validity as a defensive issue

Kodak advanced an “invalidity defence” against the UK portion, relying on the same prior art that had doomed the German part. Mannheim accepted that the UPC may consider UK validity inter partes as a prerequisite to infringement and found claims 1, 13 and 14 obvious. FUJIFILM’s two auxiliary claim sets fell for the same reasons, and a further array of dependent‑claim permutations was ruled inadmissible because FUJIFILM had not set out each fallback version – and its order of priority – with the required clarity.

Procedural pointers

The court emphasised that, although an application to amend under Rule 30 RoP is unnecessary when only a UK validation is at stake, the same discipline applies: every auxiliary set must be identified precisely, and the sequence in which they are relied upon must be unmistakable. Vague references to “all combinations” will not do; they compromise both procedural efficiency and the defendant’s right to an effective defence.

Outcome

With the UK claims held invalid inter partes, the infringement action was dismissed.

Takeaways

• UPC has jurisdiction over UK‑territorial infringement where the defendant is EU‑domiciled, but cannot revoke the UK validation.
• UK invalidity can be raised defensively in a UPC infringement suit; the ensuing finding binds only the parties and leaves the UK register untouched.
• The court will not stay UPC proceedings, nor issue advisory UK invalidity declarations, merely because the patent is validated outside the UPCA.
• Auxiliary claim sets (or fallback combinations) must be spelled out – and ranked – explicitly, even when the contested validation lies in a non‑UPCA country.

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