No. 140 - July 21, 2026
In another extensive decision in the dispute between Fujifilm and Kodak, the Court of Appeal has addressed a broad range of issues concerning validity, infringement and remedies.
The principal procedural clarification concerns the defence of dependent claims in revocation proceedings. The Court held that a patentee does not need to file an auxiliary request merely to defend granted dependent claims or claim combinations already encompassed by the claims as granted.
The decision also further develops the Court of Appeal's inventive-step examination. In particular, it clarifies the relationship between a pointer to combine prior-art documents and a motivation derived from the content of the combination document itself. The Court further provides guidance on penalties for monetary obligations and publication orders under Art. 80 UPCA.
Fujifilm brought an infringement action before the Mannheim Local Division based on EP 3 476 616, relating to lithographic printing plate precursors. The action concerned Kodak's Sonora printing plates and the German and UK designations of the patent.
Kodak filed a counterclaim seeking revocation of the patent in its entirety.
The Mannheim Local Division revoked the German designation and dismissed the infringement action. It also refused to consider Fujifilm's separate defence of dependent claims because these claims had not been included in its application to amend the patent under Rule 30 RoP.
The Court of Appeal disagreed. It found the patent, in the centrally limited form relied upon on appeal, valid and infringed in Germany. The appeal concerning infringement of the UK designation was unsuccessful.
The Court started from the principle that a patent must not be revoked in its entirety where the grounds for revocation affect it only in part. Since dependent claims add further features, invalidity of an independent claim does not necessarily mean that the dependent claims are invalid as well.
However, the Court is not required to investigate every dependent claim and every conceivable combination of claims of its own motion. The patentee must sufficiently identify and substantiate the dependent claims it considers valid if the independent claim is held invalid.
Where a patentee relies on a particular combination that does not directly and specifically follow from the wording of the dependent claims, it must clearly identify the combination it wishes to defend. The number of such combinations must remain reasonable in the circumstances of the case.
Importantly, none of this requires an application to amend the patent under Rule 30 RoP. Such an application is necessary where the patentee seeks amended claim wording or proposes claim combinations not explicitly included in the granted claims. Merely defending dependent claims or combinations already encompassed by the claims as granted does not amount to an amendment.
The Mannheim Local Division should therefore have considered Fujifilm's defence of claims 2, 3, 6 and 7 and the relevant combinations of those claims.
The decision also addresses the corresponding position of the party seeking revocation.
A claimant must indicate the extent to which revocation is requested and sufficiently substantiate the request for each claim covered by it. At the same time, the Court recognised that the claimant may initially focus on the independent claims and the additional subject matter introduced by dependent claims.
Once the patentee identifies the specific dependent claims or combinations it wishes to defend, the claimant may provide more detailed invalidity arguments against those combinations in its reply.
The procedural structure is therefore reciprocal: the patentee must make sufficiently clear which fallback positions it relies upon, while the revocation claimant must substantiate its attack against the claims and combinations actually placed in issue.
The Court also further refined its inventive-step examination.
It recalled that the skilled person, starting from a realistic starting point, requires a pointer or motivation directing it to take the next step towards the claimed invention. The claimed solution is obvious where the skilled person would take that next step, prompted by such a pointer or as a matter of routine.
The Court then addressed an important issue arising when an inventive-step attack combines two prior-art documents.
If there is no pointer to combine the starting point with another document, the motivation to take the next step cannot be derived from the content of that second document itself. The reason is straightforward: without a motivation to consult the second document, the skilled person does not become aware of its content in the first place.
Accordingly, a missing feature disclosed in a secondary document cannot itself provide the reason why the skilled person would have consulted that document and implemented the feature.
The statement is particularly relevant for the structure of inventive-step attacks before the UPC. It is not sufficient to show that a second document contains the missing feature. The attack must first explain why the skilled person, starting from the selected realistic starting point, would have consulted that document or otherwise been prompted to take the next step towards the invention.
The decision also contains a short but clear statement on penalties.
The Court awarded Fujifilm an interim payment of EUR 300,000 under Rule 119 RoP pending the subsequent damages proceedings.
However, it rejected Fujifilm's request to make non-payment subject to a penalty. According to the Court, imposing a penalty for non-fulfilment of an enforceable monetary obligation is neither appropriate nor proportionate.
Penalties remain available to secure compliance with other orders, including the injunction and corrective measures, but not as an additional enforcement mechanism for an enforceable payment obligation.
Fujifilm also requested that Kodak be ordered to publish its own declaration concerning the infringement on its website.
The Court accepted that such an order may in principle be based on Art. 80 UPCA. However, publication of a declaration by the infringer is justified only in special circumstances.
According to the Court, such a corrective measure requires ramifications of the infringement that cannot be undone or sufficiently compensated by other measures. Fujifilm had not established such circumstances.
The decision therefore indicates a relatively high threshold for compelling an infringer to publish an infringement statement on its own website.
