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Overview · Filed: Oct 11, 2023

UPC_CFI_355/2023

LITHOGRAPHIC PRINTING PLATE ORIGINAL PLATE, AND METHOD FOR PRODUCING LITHOGRAPHIC PRINTING PLATE

InfringementMain Infringement ActionDusseldorf LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
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 reasonsImplicit 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 teachingAdded matter under Art. 123(2) EPC: subject-matter must be directly (specific, clearly defined embodiment) and unambiguously (beyond doubt) taught in original applicationLong-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.