UPC grants FujiFilm and Hoyng ROKH Monegier injunction against Kodak

Yesterday, the Mannheim local division published four decisions, two of which address the court’s jurisdiction over FujiFilm’s claims in the UK. FujiFilm had sought to prevent Kodak from selling its SONORA XTRA-3 printing plates in Germany and the UK.

It had also claimed damages from Kodak in both countries, where the two patents-in-suit, EP 35 11 174 and EP 34 76 616, remain valid. This is in addition to 32 other EPO states where patent protection lapsed before 1 June 2023. The court separated the UK portion due to implications from the CJEU’s BSH vs Electrolux decision.

The Mannheim local division found FujiFilm’s EP 174 valid and infringed (case ID: UPC_CFI_365/2023). Presiding judge Peter Tochtermann, judge Dirk Böttcher and Danish local division judge Peter Agergaard, ordered Kodak to cease and desist and pay damages in Germany.

The court will decide in separate proceedings whether this ruling also applies to the UK part of the patent.

Mixed result

However, FujiFilm cannot claim damages for infringement of EP 174 in other EPO states. The court ruled that the UPC has no jurisdiction over European patents regarding national parts of UPCA member states which lapsed before 1 June 2023. This also applies to national parts of non-UPCA member states.

Kodak fared better in the parallel proceedings for EP 616. Here, its counterclaim for revocation succeeded. The court revoked EP 616 due to lack of inventive step (case IDs: UPC_CFI_359/2023).

The Mannheim decisions follow an initial setback for FujiFilm at the local division Düsseldorf. The division, led by presiding judge Ronny Thomas, had revoked FujiFilm’s EP 35 94 009 concerning chemical components for printing plates and rejected the infringement claim against Kodak in late January (case ID: UPC_CFI_355/2023). The decision became known as the ‘long arm of the UPC’.

Kodak now has two victories to FujiFilm’s one. However, the next round has begun. Kodak immediately appealed against the Mannheim injunction. The judges must still rule on infringement of the UK part of EP 174. FujiFilm can appeal against the Mannheim judgment revoking EP 616. FujiFilm did not appeal the Düsseldorf revocation judgment.

Hoyng ROKH vs Freshfields

An international team from Hoyng ROKH Monegier filed the lawsuits for FujiFilm. Düsseldorf partners Tobias Hahn and Lars Baum lead the team, which includes an Amsterdam team under partner Theo Blomme and a Paris team led by Amandine Métier. Both the Amsterdam and Düsseldorf offices have long-standing ties with FujiFilm.The Hoyng ROKH Monegier team also includes Moritz Lohr, Nico Schur, Johan Elkenbracht, Leon Dijkman, Inez Ten Brink, Pien Haase, Alexander Lukas, Joscha Torweihe, Alexander Lukas, Frederik Fischer, Alix Fourmaux and Laurène Borey.

Hoffmann Eitle had previously filed the patents-in-suit but it a patent attorney from ter Meer Steinmeister & Partner around Christian Hollatz and Julia Matl supporting FujiFilm on the technical aspects of the case.

Freshfields lawyers and Vossius & Partner patent attorneys are defending Kodak. While Freshfields partner Wolrad Prinz zu Waldeck und Pyrmont and senior associate Eva Acker represent Kodak in Düsseldorf, partner Nina Bayerl and associates Elena Hennecke and Caroline Horstmann are acting for the company in the Mannheim proceedings. Carlotta Mannes and Anton Porsche from the German practice are also on the Freshfields team. A small London team led by partner Christopher Stothers and Laura Whiting is also involved.

The Vossius & Partner patent attorney team of Natalia Berryman and Ursula Schnackenbeck provides technical support for Kodak in all three proceedings. Vossius & Partner has filed Kodak’s European patent applications for years, though its litigation team was not involved this time.