April 2025 The UPC breaks new ground in Fujifilm vs. Kodak, reshaping the extent to which it can assess infringement actions in non-member states.
In a recent decision, Fujifilm v. Kodak, the UPC has clarified the extent of its jurisdiction over infringement actions concerning the portion of European patents validated in the UK and other non-UPC member states. Following the UK’s withdrawal from the EU and the UPC one might have expected UK infringement issues to fall entirely outside the UPC’s reach. However, this ruling establishes that a European patent in a non-UPC member state (such as the UK, Spain or Turkey) can still be litigated before the UPC, provided the defendant is domiciled in a Contracting Member State of the UPC.
Background
The decision (UPC CFI 355/2023) of the UPC’s Düsseldorf Local Division relates to European patent EP 3594009, owned by Fujifilm.
The patent was validated and remained in force in both Germany and the United Kingdom. Fujifilm initiated an infringement action against three Kodak entities domiciled in Germany (collectively referred to as “Kodak”), while Kodak counterclaimed for revocation, challenging the UPC’s jurisdiction over the UK portion of the European patent, given that the UK is not a UPC member state.
The court chose to address the jurisdictional objection as part of the main proceedings, examining which provisions of the UPC Agreement and broader EU legislation define the jurisdictional scope of the UPC.
Preliminary Objection – UPC’s jurisdiction
The Düsseldorf Local Division ultimately ruled that it did possess jurisdiction over the UK infringement claim. This determination hinged on the interpretation of Article 31 UPCA, which establishes the court’s international jurisdiction in accordance with the Brussels Ibis Regulation and the Lugano Convention. Article 4(1) of the Brussels Ibis Regulation stipulates that “persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State”. The court reasoned that since the defendants were domiciled in Germany, a UPC contracting member state, the UPC had jurisdiction over them.
Notably, the court extended this principle to infringement actions concerning non-EU states like the UK. It cited the European Court of Justice (ECJ) decision in Owusu (C-281/02), which confirmed that Brussels jurisdiction rules apply even in disputes between courts of a contracting state and those of a non-contracting state.
The ruling effectively established that, despite the UK not being a UPC member, jurisdiction could still be asserted as long as the defendant was domiciled in a contracting state.
Validity and Infringement – Patent Revoked
Following the court’s dismissal of Kodak’s preliminary objection regarding the UPC’s jurisdiction, it proceeded to assess the validity and infringement of the patent. Ultimately, the patent was revoked in its entirety, including the main request and all three auxiliary requests, across all contracting member states.
Given the court’s findings on invalidity, the infringement action in Germany was deemed without basis. Although the UPC acknowledged that it lacked jurisdiction to rule on the validity of the UK portion of the patent, the validity of the patent as a whole was extensively discussed, with the conclusion that it should be revoked under EPC law. Since the claimant had not provided reasons why the UK portion should be assessed differently, the court assumed it was also invalid.
On this point, the Advocate General noted that while a Member State court cannot formally rule on the validity of a patent in a non-Member State, it is not contrary to international law for the court to consider validity as a preliminary issue in the context of an infringement action. This is because a valid patent is a prerequisite for establishing infringement.
While the court ultimately did not decide on the UK infringement claim due to the patent’s revocation across all UPC states, the Advocate General’s commentary on Kodak’s jurisdictional objection suggests that if the patent had been upheld, the UPC would likely have ruled on infringement in the UK. This could have led to Kodak being prohibited from selling or offering the infringing product in the UK and potentially being liable for damages or loss of profits related to the UK portion of Fujifilm’s patent.
Conclusions
The Fujifilm v. Kodak decision carries significant implications for patent litigation involving European patents in non-EU countries. It suggests that the UPC may assert jurisdiction in infringement actions in non-UPC member states, provided the defendant is domiciled in a UPC contracting member state. This “long-arm jurisdiction” could make the UPC an attractive venue for patent owners seeking to enforce their rights across Europe, including in countries like the UK that are not part of the UPC system.
However, securing remedies for infringement in non-UPC states remains challenging without parallel validity proceedings in those jurisdictions. In this case, the UPC declined to grant remedies for UK infringement, reasoning that the patent was invalid and that it lacked jurisdiction to assess validity in the UK.
While this ruling presents new enforcement opportunities, it also introduces complexities and uncertainties regarding what actual remedies are available through UPC proceedings when European patents validated in non-UPC states are involved.
