Fujifilm Corporation v. Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH, Decision UPC Court of First Instance, Local Division Mannheim, 18 July 2025, Case no. UPC_CFI_365/2023
Jurisdiction over a national part of a European bundle patent validated in the United Kingdom
1. The UPC has jurisdiction to decide upon the infringement of the UK part of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with erga omnes effect (following ECJ, judgement of 25 February 2025, C-339/22, BSH Hausgeräte).
2. The defendant in an infringement action before the UPC, which relates to the UK part of a European bundle patent, is allowed to raise an invalidity defence without being obliged to file a national action for revocation in the UK. The UPC will then assess the validity as a mere prerequisite for infringement (following Local Division Dusseldorf, decision of 28 January 2025, UPC_CFI_355/2023). The outcome of the infringement action before the UPC has inter partes effect only.
3. In the absence of a pending national revocation proceeding in the UK, there neither is a reason to stay the infringement proceeding before the UPC, nor to make the decision conditional upon the validity of the UK part of the European patent.
4. There is no legitimate interest of a defendant obtaining a declaration that the UK part of a European bundle patent is invalid, since such declaratory relief is not binding on the national authorities.
A copy of the decision can be read here.
