FUJIFILM Corporation v. (1) Kodak GmbH (2) Kodak Graphic Communications GmbH and (3) Kodak Holding GmbH, Mannheim Local Division, 22 January 2025, Case no. UPC_CFI_365/2023 (EP 3 511 174)
Mannheim Local Division to address key legal questions on UPC jurisdiction and application law before and after the entry into force of the UPCA
On 22 January 2025, the Mannheim Local Division issued a pre-hearing order in the patent dispute between Fujifilm and Kodak. Notably, the order highlights two significant legal questions that will be addressed at the oral hearing scheduled for 11 and 13 February 2025.
First, the panel deferred its decision on whether the UPC has jurisdiction to grant a permanent injunction covering the UK (a non-contracting third state) until the Court of Justice of the European Union (CJEU) delivers its ruling in C-339/22 BSH Hausgeräte. This approach appears to diverge from that taken by the Düsseldorf Local Division in the parallel case between the same parties.
Second, the UPC will consider whether national law or the UPC Agreement applies to infringing acts that took place before the entry into force of the UPC Agreement on 1 June 2023.
The case concerns Kodak’s process free plates (SONORA X, SONORA XTRA-2 and SONORA XTRA-3), which Fujifilm alleges infringe its patent EP 3 511 174. The earliest version, SONORA X, was marketed and distributed only before the UPCA came into effect. To determine the applicable law for such acts of historic infringement, the Court must assess whether Article 28 of the Vienna Convention on the Law of Treaties (VCLT) intended the UPCA to have retroactive effect. Article 28 provides that unless a different intention appears from the treaty or is otherwise established, its provisions do not apply to acts or situations that predate its entry into force.
For infringing acts committed after 1 June 2023, the UPC must decide whether the UPCA applies exclusively or whether national law may still be invoked in cases where applying the UPCA would lead to divergent or disadvantageous outcomes.
The full decision can be read here.
