In brief
- In February 2025, the European Court of Justice (CJEU) ruled in Electrolux v BSH that EU member state courts have jurisdiction over infringement claims concerning patents in other countries, where the defendant is domiciled in that member state, even if validity is challenged. We discussed the CJEU's decision in a previous article.
- In Fujifilm v Kodak, the Unified Patent Court (UPC) has now applied the CJEU's reasoning to conclude that, if it has jurisdiction over a defendant because of the defendant's domicile in a UPC Agreement member state, then it has jurisdiction to rule on whether the defendant's activities in the UK infringe an EP(UK) patent (i.e. a European Patent Convention (EPC) patent granted by the European Patent Office (EPO) and validated in the UK). The court went on to grant the first injunction issued by the UPC to extend to the UK.
- UK courts consider that issues of patent validity and infringement are inextricably mixed. The CJEU used to adopt the same view, reflected in its interpretation of the precursor to Article 24(4) of the Brussels Regulation. The CJEU's change of heart in Electrolux risks incoherence and conflicting decisions by different courts on exactly the same subject matter.
- These issues raise interesting questions around the recognition and enforcement of infringement and validity judgments as between UPC member state courts and UK courts.
Background
Fujifilm brought proceedings in the Mannheim Local Division of the UPC, claiming that three companies in the Eastman Kodak group were infringing claims 1, 15 and 16 of German and UK patents in a bundle derived from EP 3511174.
The defendants are all German companies. The second defendant, Kodak Graphic Communications GmbH, is a toll manufacturer for a UK group company based in Watford (Watford). The first defendant, Kodak GmbH, is a German sales company that bought products from Watford. The third defendant is a holding company.
Contemporaneously, Fujifilm brought an action against the same three defendants for infringement of the German and UK patents in a closely related bundle (EP3594009) in the Düsseldorf Local Division. In its decision of 28 January 2025, the Düsseldorf court held that the German patent was invalid. While acknowledging that it had jurisdiction to rule on infringement of the UK counterpart, but no jurisdiction to rule on its validity, the court declined to grant relief for infringement in the UK. Since Fujifilm had not submitted that there were any relevant differences between UK and German law, the court considered that "[i]t must therefore be assumed that the grounds of invalidity set out in detail above [i.e. in relation to the German part] also apply to the UK part of the patent in suit". Accordingly, "the infringement action cannot be successful in such a factual and legal situation".
The trial of the Mannheim proceedings was heard on 12 and 13 February 2025, after the Advocate General had given his opinion in Electrolux v BSH, but before the CJEU published its decision on 25 February 2025. Accordingly, the Mannheim court decided to deal with the German patent first, and to deal with the UK patent once the CJEU's decision had been handed down.
In its first decision, delivered 2 April 2025, the court decided that the German patent, as Fujifilm had unconditionally proposed to amend it, was valid and infringed. On 6 June 2025 the court heard argument about the implications of Electrolux, and delivered its decision on the UK patent on 18 July 2025.
The decision
The patent
The patent relates to printing plates used in lithographic printing. Claim 1 is for a "lithographic printing plate precursor" comprising an image recording layer (onto which the image to be printed is transferred). Claim 15 is for a method of preparing a printing plate (i.e. containing an image to be printed) from the precursor. Claim 16 is for a method of printing using a plate derived from the precursor.
One of the features of claim 1 relates to the shape of micropores on the surface of the precursor. During the proceedings, Fujifilm proposed that claim 1 be amended to add further restrictions to the required shape.
Fujifilm alleged that Kodak's SONORA XTRA-3 plate (Product) was within the scope of claim 1 as amended, and was a means relating to an essential element of the processes of claims 15 and 16. It claimed relief for acts of infringement occurring in Germany and the UK, including damages for infringement, an injunction covering both countries, and recall and destruction of Products in both countries.
The defendants argued inter alia that they did not infringe the UK patent because any relevant activities in the UK were performed by Watford. They also argued that the court should only assume jurisdiction over the UK patent if Fujifilm undertook to agree to its revocation if the court considered that it was invalid. While the defendants argued that the German patent was invalid and that the UK patent was invalid for the same reasons, they had not filed a revocation action in the UK.
The court's decision
First, the court confirmed that, according to Electrolux v BSH, the court of a member state in which the defendant is domiciled has jurisdiction to rule on infringement of a patent granted or validated in a non-EU member state, even if invalidity is raised as a defence. That included the courts of the UPC. It noted that the parties had not identified any bilateral treaties between any member state and the UK pursuant to which respective governments had agreed that courts in the UK had exclusive jurisdiction over disputes relating to the validity of UK patents.
Second, the court assessed infringement and validity of the UK patent as Fujifilm had proposed to amend it, even though it had not in fact been amended. It considered that "[a]ny procedural requirement as to the notification of the UK patent office … according to UK procedural law are not applicable". There was therefore no reason to stay the proceedings pending any such amendment.
Third, the court rejected the defendants' case that any relevant activities in the UK had been performed by Watford and not by them.
Fourth, the court rejected the defendants' case that they had made effective and serious preparations to make and sell the Products before the priority date of the patent and therefore had a prior use defence under section 64 of the UK Patents Act 1977.
Accordingly, the court found that the defendants' activities in the UK directly infringed claim 1 of the UK patent, and indirectly infringed claims 15 and 16.
It therefore granted a permanent injunction restraining the defendants from importing or placing Products on the market in the UK, and ordered the recall and destruction of Products that were already on the market. The average sale price of Products was €10/m2. To dissuade the defendants from continuing to deal in Products in the UK in breach of the injunction it imposed a penalty of €50/m2 for such dealings.
Discussion
Since there is typically a number of entities in any manufacturer-to-user supply chain, and a claimant also has the option of claiming that multiple entities are involved in a joint enterprise, a patentee will almost always be able to identify a number of countries in which potential defendants are domiciled. This facilitates forum shopping. In the present case, for example, Fujifilm could have brought proceedings for infringement of the UK patent in the UK, naming Watford as the anchor defendant.
Courts in the UK have always considered issues of infringement and validity to be inextricably linked. In Anan Kasei v Molycorp, the patentee commenced a claim in the UK against a UK domiciled company (Molycorp), asserting that it had infringed the UK and German designations of a European patent. The patentee requested a declaration that if the German designation was not invalid (a question that could only be determined by the German courts), then Molycorp had infringed it. The UK court rejected the attempt to split infringement and validity into distinct sub-issues because "as a matter of substance those sub-issues are inseparable".
This was also the previous position of the CJEU (before its decision in Electrolux v BSH). In GAT v LuK, the CJEU said that to allow a court seized of an action for infringement to rule indirectly on the validity of a patent granted in another member state would undermine the exclusive jurisdiction rule (now, in Article 24(4) of the Brussels Regulation) and multiply the risk of conflicting decisions. The CJEU considered such an outcome was precisely contrary to the purpose of the Brussels Convention (now Regulation). And it specifically rejected arguments that rulings on validity could be limited so as to only have inter partes effect.
In the Fujifilm v Kodak dispute, the Mannheim Local Division acknowledged that validity was a pre-requisite for a finding of infringement. It found that the German patent (as proposed to be amended) was valid, deemed the UK patent to be valid too, and then found that the UK patent was infringed on that basis. However, the court also acknowledged that (a) it could not make Fujifilm, or the UK patent office, amend the patent, and (b) its findings would not be binding on the parties in subsequent revocation proceedings in the UK.
It also considered that it could not make any declarations about the validity of the UK patent because "[o]therwise, the UPC would indirectly decide on the validity of the UK part, which would be counter to the principles established by the ECJ".
If Fujifilm attempt to enforce any aspect of the Mannheim court's decision in the UK, however, complex questions are likely to arise. The Foreign Judgments (Reciprocal Enforcement) Act 1933 (FJA) was enacted to clarify UK common law principles governing the recognition and enforcement of foreign judgments and thereby facilitate the agreement of conventions between the UK and other nations. Section 8 of the FJA provides for the registration of judgments for the payment of money made by courts in a country that have agreed a convention with the UK. Conventions referencing the FJA were agreed with countries that later became EU member states (including Germany). These conventions were then replaced wholesale by the Brussels Regulation. Now that the UK has left the EU, issues regarding whether and which of such conventions have been resurrected, and whether they could extend to decisions of UPC courts, need to be resolved. For example, section 6 provides that foreign judgments that can be registered and enforced under the FJA may not be enforced using other means. Section 4(3) provides that a foreign court shall not be deemed to have jurisdiction "if the subject matter of the proceedings was immovable property outside the country of the [foreign court]". The term "immovable property" is not defined in the FJA, but it might include patents.
Foreign judgments can sometimes give rise to issue estoppels in the UK. The Mannheim court expressly recognised that its findings on validity would not be binding on the same parties in a UK revocation proceeding. However, it said nothing about its findings on infringement. Could Kodak re-run the same case on invalidity, infringement, and prior use that it ran and lost in Mannheim in enforcement or infringement proceedings in the UK?
A precondition of such issue estoppels is recognition by the UK court of the jurisdiction of the foreign court to determine the dispute in which the issue arises (e.g. The Sennar (No. 2) [1985]). Since a UK court may not recognise the jurisdiction of a foreign court, such as the UPC, to rule on issues of infringement of a UK patent where invalidity is raised as a defence, it is possible that no estoppel would arise on any issue (whether relating to infringement or validity).
Further complex questions may arise in circumstances where the UPC or a court of a member state finds a UK patent valid and infringed and makes a final award of compensation in favour of the patentee, but a UK court subsequently finds the patent to be invalid. Could the defendant ask the court of the member state to revisit its monetary judgment or penalty?
This last problem was considered by the UK Supreme Court in Virgin v Zodiac. In that case a patent was found to be valid and infringed by the UK court but was subsequently revoked by the European Patent Office. Zodiac argued it could rely on revocation of the patent in the inquiry as to what compensation (if any) it ought to pay for infringement of the patent. Virgin argued that the question of validity was, between the parties, res judicata (i.e. finally determined). The Supreme Court considered that Zodiac was not estopped from relying on revocation of the patent because it was not seeking to relitigate validity, but was relying on a new fact (i.e. the patent's revocation) that it could not have relied on earlier in the proceedings. Of course, whether the court of a member state would adopt a similar approach is a matter for that court, applying the domestic law of that state.