Fujifilm Corporation v. Kodak GmbH, Kodak Graphic Communications GmbH, Kodak Holding GmbH, UPC Court of Appeal, 13 July 2026, Case nos. UPC_CoA_473/2025, UPC_CoA_474/2025, UPC_CoA_873/2025, UPC_CoA_881/2025
Defending dependent claims requires no auxiliary request
The UPC Court of Appeal overturned the decision of the Local Division Mannheim and granted an injunction against Kodak covering Germany. Fujifilm’s infringement claims based on the UK designation were dismissed.
At first instance, the Mannheim Local Division had revoked Fujifilm’s patent in its entirety, declining to consider the dependent claims on the ground that Fujifilm had not submitted them in a formal application to amend under Rule 30 RoP.
On appeal, the Court reversed that decision and drew a clear line between defending a patent and amending it: a patentee who relies on the dependent claims as granted is not required to file a Rule 30 application, since no amendment of the patent is being sought.
“R. 30 RoP does not require that the patentee submit an auxiliary request as a prerequisite for defending dependent claims. An Application to amend the patent is only required if the patentee wishes to maintain its patent with amended wording, i.e. deviating from the wording of the claims as granted, or proposes combinations of dependent claims not explicitly included therein, thereby limiting the scope of the patent as granted. This is not the case where a patentee merely defends the dependent claim(s), including combination(s) already encompassed thereby.”
HEADNOTES
1. A claimant is required to indicate the extent to which revocation of the patent is requested and is required to sufficiently substantiate this request for each of the claims covered by its request (see R. 25.1(a)-(d) RoP).
2. It follows from R. 29A(c) RoP that where the patentee requests that claimant’s request for revocation of several or all claims of the patent is rejected, he is required (whether or not as a subsidiary defence) to identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid (see R. 29A(a)-(c) RoP).
3. If the patentee wishes to rely on a combination of dependent claims that does not directly and specifically follow from their wording, such as where the dependent claims rely on several or even any of the previous claims, the patentee should clearly indicate which combination(s) it considers to be valid, (also) in the language of the patent, should the independent claim be held invalid.
4. It follows from the principles of due process – in a similar manner as provided for in R. 30.1 (c) RoP – that the number of such combinations that the patentee wishes to rely on must be reasonable in number, considering the circumstances of the case.
5. R. 30 RoP does not require that the patentee submit an auxiliary request as a prerequisite for defending dependent claims. An Application to amend the patent is only required if the patentee wishes to maintain its patent with amended wording, i.e. deviating from the wording of the claims as granted, or proposes combinations of dependent claims not explicitly included therein, thereby limiting the scope of the patent as granted. This is not the case where a patentee merely defends the dependent claim(s), including combination(s) already encompassed thereby.
6. If there is no pointer to combine a reasonable starting point with another document, a motivation to take the next step in the direction of the invention cannot be derived from the content of such a combination document itself. Failing a motivation for the skilled person to consult a document it will not become aware of its content, and it cannot be concluded that the skilled person would implement the missing feature disclosed therein.
7. It is not appropriate and proportionate to impose a penalty in case of non-fulfilment of an enforceable monetary obligation.
8. A publication of an own declaration by the infringer on its webpage pursuant to Art. 80 UPCA is justified only in the event of special circumstances which call for such a publication as corrective measure due to ramifications of an infringement which cannot be undone or sufficiently compensated otherwise.”
A copy of the Decision can be read here.
