Infringement and revocation actions over Fujifilm-owned lithographic printing plate technology were both deemed admissible today by the Unified Patent Court, in a dispute which involves a patent in force in the UK and Germany. The Düsseldorf Division said that while they cannot revoke the UK portion of the patent, that the patent is invalid dooms Fujifilm’s infringement case against Kodak GmbH. Despite the loss for Fujifilm, the decision bodes well for patentees hoping to litigate — within the UPC — infringement which occurs in countries who remain non-parties to the UPC Agreement.
The Unified Patent Court today clarified the upper limits of its fledgling jurisdiction in disputes involving patents in force in EU member states not parties to the UPC Agreement, or UPCA, with defendants who are domiciled in contracting member states.Led by Judge Ronny Thomas, the UPC’s Düsseldorf Division deemed a preliminary objection by Kodak GmbH and several other Germany-based subsidiaries to the UPC’s ability to decide whether the defendants infringe the UK portion of Fujifilm’s EU Patent No. 3,594,009, admissible — but unfounded.
— Rules harmonized —
Under the Brussels Ibis Regulation, which harmonized the rules on international jurisdiction prior to the enactment of the UPCA, “persons domiciled in a Member State, whatever their nationality, shall be sued in the courts of that Member State,” Thomas observed (see here).
“Since the revocation action seeks only the revocation of the patent in suit in the territory of the Contracting Member States, the question whether the UPC has jurisdiction for revocation actions concerning the validity of third-state-patents does not arise. The Court also has competence to hear the case with respect to the infringement action for the United Kingdom,” he added.
In a blow to Fujifilm, however, the UPC went on to deem the ‘009 patent invalid in its entirety. In assessing Kodak’s claim that the technology is not sufficiently enabled, inventive or novel, Thomas observed, “the UPC has exclusive jurisdiction for counterclaims for revocation of (European) patents.”
“Since there is currently no opt-out (Art. 83(3) UPCA) from the exclusive jurisdiction of the UPC with respect to the patent in suit, the UPC — as a court common to the Member States of the UPCA — has international jurisdiction for the present counterclaim for revocation pursuant to Art. 24(4), 71a(2)a), 71b(1) of the Brussels Ibis Regulation,” the UPC added.
The ‘009 is in force in Germany, a UPCA member state, and the UK, a non-UPCA member state, and discloses a method for producing a lithographic printing plate. After Fujifilm sued Kodak and various Kodak subsidiaries for infringement in connection with their “SONORA X,” “SONORA XTRA-2” and “SONORA XTRA-3” products, Kodak counterclaimed for revocation on several grounds, including that the SONORA printing plates were already in development as of the ‘009 patent priority date.
Fujifilm responded by proposing amendments intended to overcome Kodak’s challenge.
— International element —
Before it could reach any of those arguments, however, the Düsseldorf Division tackled the question of jurisdiction.
Per a 2005 European Court of Justice holding in Osuwu v. Jackson, Thomas wrote, “the uniform rules of jurisdiction contained in the Brussels Convention” — which would later become Art. 4(1)(2) Brussels Ibis Regulation — “are not intended to apply only to situations in which there is a real and sufficient link with the functioning of the internal market, which by definition involves a number of Member States.”
To the contrary, he continued, Article 2 of the Brussels Convention also applies to “circumstances involving relations between the courts of a single Contracting State and those of a non-Contracting State, not the relations between the courts of a number of Contracting States.” Effectively, Thomas held, “this means that the ECJ has accepted that the international element required for the application of the Brussels Ibis Regulation may not only be intra-EU.”
Support for such an interpretation can be found more recently in a February 2024 opinion by the Advocate General in BSH Hausgeräte GmbH v Electrolux AB, which Thomas said, “describes the jurisdiction of the courts of the Member State in which the defendant is domiciled under Art. 4(1) Brussels Ibis Regulation as universal.”
With their ability to proceed solidified, the panel turned their attention to the merits and agreed with Kodak that the ‘009 patent is not sufficiently enabled to allow a person of skill in the art to practice the claims. What’s more, the UPC ruled, the amendments proposed by Fujifilm either do not go far enough to overcome that rejection, or in other instances, go too far — by introducing new subject matter not covered by the original claims.
Accordingly, the UPC ruled, the ‘009 patent must be revoked in its entirety.
— Stay not warranted —
The UPC declined Fujifilm’s call for a stay of proceedings in order to allow the UK courts to weigh in on the validity of the ‘009 patent, noting, “the prerequisite for such a stay would be a pending revocation action in the UK, which is lacking.” Nor is there any legal basis to order the Kodak defendants to pursue revocation there, the UPC added.
As for a pending decision by the European Court of Justice in BSH, which was argued in front of the Grand Chamber in May 2024 and presents the question of whether member states can decide infringement of patents registered in other member states where the validity of the patents is also challenged, the Düsseldorf Division found no reason to wait.
“In view of the scope of the revocation action,” the UPC held, the outcome of BSH would not be decisive.
“Under the Brussels Ibis Regulation, the transferring Contracting Member State does indeed have jurisdiction over third state patent infringement actions in accordance with the case law of the ECJ . . . The jurisdiction of the UPC is therefore not more limited than that of a national patent infringement court, as not all EU Member States have become Members of the UPCA,” they declared.
— Obvious choice —
The practical significance of today’s holding means the infringement of European patents can be litigated in the UPC regardless of whether the infringement takes place in a country which has joined the UPCA, so long as the accused infringer, like Kodak, is domiciled in a UPC member state.
That’s good news for small and medium-sized enterprises, or SMEs, hoping to avoid the expense of litigating in the UK and instead take advantage of the “efficient case processing and high-quality UPC decisions we’ve seen so far,” Keltie LLP partner Joeri Beetz tells MLex.
For cases without a “sizeable” European element, however, Beetz predicts “the UK courts will remain the obvious choice of court to go to.” He also said he expects the UK to remain a preferred venue for litigation spearheaded by patentees with deeper pockets, including those in the pharmaceutical and telecom industries, for whom “litigation costs may be less of a concern.”
In the near term, “it will be far more important to learn what damages and other results may be expected from the UPC compared to the UK for deciding to start a case in the UK, the UPC, or both.” Beetz said today’s decision should also factor into the decision-making process of UK patent attorneys who are dual-registered to practice before the UPC when deciding where to sue for infringement of patents in force in the UK.
“In the UPC,” he noted, “they will have a chance to represent the interests of their clients themselves, either assisted by a European lawyer or even on their own. In the UK, a case will primarily be run by UK solicitors and barristers.”
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