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In the latest development in a longstanding dispute between Fujifilm and Kodak, the Mannheim Local Division of the UPC has today granted an injunction relating to activities in the UK, a non-UPC country.
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In its decision, the Court affirmed earlier LD decisions that the UPC has jurisdiction to decide upon infringement claims as far as they relate to acts infringing the UK part of a European patent bundle.
Kodak was ordered to refrain from offering, placing on the market, using or storing for those purposes a lithographic printing plate precursor in accordance with Fujifilm’s European patent no. EP3511174B1 in the UK. The penalty for violating the injunction is €50 per square metre of the printing plate precursor.
In addition, Kodak was ordered to pay damages in respect of infringing acts occurring in the UK as early as July 2019 (four years before the UPC came into effect).
The Mannheim LD also held that, despite not having authority to revoke the UK part (as the UK is not a UPC member state), it could deal with an invalidity defence in infringement proceedings in respect of the UK part of the patent-in-suit to the extent necessary to decide on infringement. The Court referred to the CJEU’s earlier finding in BSH Hausgeräte GmbH v. Aktiebolaget Electrolux that whilst the UPC has jurisdiction over a non-EU part of a validated European patent (Article 4(1) of the Brussels I Recast Regulation), it does not have jurisdiction for an invalidity defence which seeks to affect the existence of a patent in that non-EU member state.
The Mannheim LD also decided that in the absence of parallel proceedings in a UK court, there was no reason to stay in proceedings (pursuant to R. 295 (a) or (m)) as requested by the defendant (Kodak).
The two related decisions of the Manheim LD are UPC_CFI_365/2023 and UPC_CFI_359/2023.
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This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.