UPC CFI 355/2023

Oct 11, 2023·EP3594009 · LITHOGRAPHIC PRINTING PLATE ORIGINAL PLATE, AND METHOD FOR PRODUCING LITHOGRAPHIC PRINTING PLATE

Case details: Status
Case Closed (No infringement)
Action
Infringement
Category
Main infringement action
Parties: Claimants
Fujifilm CorporationOperating co.
Representatives
Lars Baum-Hoyng Rokh Monegier
Amedine Métier-Hoyng Rokh Monegier
Laurène Borey-Hoyng Rokh Monegier
Alix Fourmaux-Hoyng Rokh Monegier
Joscha Torweihe-Hoyng Rokh Monegier
Christian Hollatzsupporting-Ter Meer Steinmeister & Partner Patentanwalte mbB
Claudia Schwartzkopffsupporting-Ter Meer Steinmeister & Partner Patentanwalte mbB
Respondents
Kodak GmbHOperating co.
Kodak Graphic Communications GmbHOperating co.
Kodak Holding GmbHOperating co.
Representatives
Eva Acker-Freshfields
Wolrad Prinz zu Waldeck Und Pyrmont-Freshfields
Kilian Seidel-Freshfields
Natalia Berrymansupporting-Vossius & Partner
Ursula Schnakenbecksupporting-Vossius & Partner
Division: Dusseldorf LD
Judges: Ronny Thomas
Berenice Thom
Rute Lopes
Stefanie Parchmann
Technology: Instruments
Optics
Mechanical engineering
Textile and paper machines
Language: English
First decided: Feb 21, 2024
Last decision: Mar 27, 2024

How this compares

The court's record for this kind of case, counted in first-instance rulings. A figure in brackets is the number of rulings a rate rests on.

	Infringement found	Median days to first decision
All UPC	53% (62/117)	124
Dusseldorf LD	Locked	Locked
Judge Ronny Thomas	Locked	Locked
Judge Berenice Thom	Locked	Locked
Judge Rute Lopes	Locked	Locked
Judge Stefanie Parchmann	Locked	Locked

At the UPC: Fujifilm Group (52 cases)·Kodak Group (52 cases)

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Related cases

All proceedings on this patent

This dispute contains 7 other proceedings

UPC CFI 186/2025·CC 3088/2024·UPC APP 17472/2024·UPC APP 54506/2024·UPC APP 61143/2024 and 2 more

Start a free trial to see how each one ended.

More cases: Dusseldorf LD·2023

Decisions

2024-11-29
Public
Summary: Procedural order rejecting and disregarding Defendants' (Kodak entities) further written submissions filed on 28 November 2024 because no reasoned request was made and no leave was granted by the judge-rapporteur for further submissions pursuant to Rule 36 RoP.
Show the legal issues (2)
- Admission of further written submissions (Rule 36 RoP)
- Rejection of unauthorised submissions
2024-11-29
Public
Summary: Procedural order granting the Claimant's request for simultaneous interpretation from English to Japanese at the oral hearing scheduled for 17-18 December 2024, issued pursuant to Rule 109.1 RoP.
Show the legal issues (3)
- Simultaneous interpretation (Rule 109.1 RoP)
- Fair trial principle
- Equality of arms
2024-08-02
Public
Summary: The Düsseldorf Local Division issued a procedural order addressing the scope of applications to amend the patent under R. 30 RoP and R. 263 RoP. The court clarified that amendments to auxiliary requests in an application to amend the patent are subject to R. 30.2 RoP (requiring court permission), and that territorial limitation of an amendment application should only be made if there are objective reasons for it under Art. 34 UPCA.
Show the legal issues (3)
- Admissibility of amended application to amend patent (R. 30.2 RoP)
- Territorial limitation of patent amendment application (Art. 34 UPCA)
- R. 263 RoP scope and amendments to auxiliary requests
—
revocation counterclaim
Summary: A. The preliminary objection is rejected. B. The European patent EP 3 594 009 B1 is revoked in the territory of all Contracting Member States in which the patent has effect. C. The application to amend the patent in suit is dismissed. D. The infringement action is dismissed.

Documents

Show all 569 documents

Document title	Date	Public
Case Closure Formal Check	2025-09-12	Not public
Outcome of the Order	2025-07-22	Not public
Confirmation of appointment	2025-07-22	Public
Receipt	2025-03-05	Not public
250305_R115RoP_Request_EP009_signed	2025-03-05	Not public
Headnote-and-Keywords	2025-01-28	Not public
DecisionOutcome	2025-01-28	Not public
Decision	2025-01-28	Not public
Decision	2025-01-28	Public
578607-2023/OH/DUS-LOC/UPC202412170930AM/S01	2024-12-18	Not public

Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.

Plain-English summary

FUJIFILM brought infringement proceedings against three Kodak entities concerning EP 3 594 009 B1 (lithographic printing plate technology) before the Düsseldorf Local Division, which also had jurisdiction over the UK patent part. The court upheld the revocation counterclaim and revoked the patent across all Contracting Member States on grounds of added matter and obviousness, dismissing FUJIFILM's amendments as insufficient to cure the defect. The infringement action was accordingly dismissed and costs awarded to Kodak.

Accepted arguments

What the court agreed with — by party.

EP 3 594 009 B1 is invalid for added matter (Art. 123(2) EPC): amended claims require subject-matter not directly and unambiguously taught in the original application
RespondentLegal basis: Art. 123(2) EPC; Art. 138(1)(c) EPC
Note: The court applied a strict standard: direct teaching requires the subject-matter to be disclosed as a specific, clearly defined individual embodiment without deductive steps; unambiguous means beyond doubt, not merely probable.
UPC has jurisdiction over the UK part of the patent even when a revocation counterclaim is filed only for the German part, where the defendant is domiciled in a Contracting Member State
ClaimantLegal basis: UPCA jurisdiction provisions; long-arm jurisdiction
Note: Headnote 1: jurisdiction over UK part of infringement action is unaffected by a counterclaim for revocation limited to the German part.
Implicit disclosure means only the clear, immediate and unambiguous consequence of what is explicitly stated; a feature is implicitly disclosed if in carrying out the teaching the skilled person would inevitably arrive at it
RespondentLegal basis: EPO/UPC novelty doctrine
Note: This standard was applied in assessing prior art disclosure and added matter alike.

Rejected arguments

What the court did not agree with — and why.

Narrowing claim construction based on description or drawings to exclude what is literally covered by claim language
RespondentLegal basis: Art. 69 EPC and Protocol on Interpretation
Reason: Claim terms should normally be given their broadest technically sensible meaning; Art. 69 EPC and Protocol do not justify narrowing construction based on description; narrowing is only permitted if there are convincing case-specific reasons.
Application to amend the patent (FUJIFILM's auxiliary requests)
ClaimantLegal basis: Art. 123(2) EPC
Reason: All amendment requests were dismissed; the added matter defect could not be cured.
Infringement action concerning EP 3 594 009 B1
ClaimantLegal basis: Art. 65 UPCA
Reason: Patent revoked; infringement action accordingly dismissed.

Key legal principles

Doctrines and rules cited in the reasoning.

Claim terms receive their broadest technically sensible meaning; description-based narrowing requires convincing case-specific reasons Implicit disclosure: only the clear, immediate and unambiguous consequence of what is explicitly stated; a feature is implicitly disclosed if inevitably present when carrying out the teaching Added matter under Art. 123(2) EPC: subject-matter must be directly (specific, clearly defined embodiment) and unambiguously (beyond doubt) taught in original application Long-arm jurisdiction: UPC has jurisdiction over UK patent part in infringement action where defendant is domiciled in a Contracting Member State, regardless of revocation counterclaim scope

Browse other cases on this principle.

Claim construction notes

The Düsseldorf Local Division articulated a broad-meaning default for claim terms under Art. 69 EPC, rejecting any narrowing via description unless convincingly justified by individual case circumstances. This was applied in assessing both infringement scope and whether amendments introduced added matter.