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UPC CFI 365/2023

Oct 17, 2023·EP3511174 · PLANOGRAPHIC PRINTING PLATE ORIGINAL PLATE, METHOD FOR MANUFACTURING PLANOGRAPHIC PRINTING PLATE, AND PLANOGRAPHIC PRINTING METHOD

Action number: ACT 579338/2023

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Case details
Status
Case Closed (Patent infringed)Set aside on appeal, Jun 2, 2026
Action
Infringement
Category
Main infringement action
Parties
Claimants
Representatives
Respondents
Representatives
Division
Mannheim LD
Judges
Technology
  • Instruments
    Optics
  • Mechanical engineering
    Textile and paper machines
Language
English
First decided
Apr 2, 2025
Last decision
Jan 30, 2026
Appealed
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 foundMedian days to first decision
All UPC53% (62/117)124
Mannheim LDLockedLocked
Judge Peter TochtermannLockedLocked
Judge Dirk BöttcherLockedLocked
Judge Peter AgergaardLockedLocked
Judge Erwin WismethLockedLocked

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 24 other proceedings

UPC CFI 3254/2026·UPC CFI 3265/2026·UPC CFI 3269/2026·UPC CFI 3173/2026·UPC CoA 130/2026 and 19 more

Start a free trial to see how each one ended.

More cases: Mannheim LD·2023

Decisions
  • 2026-01-30
    Infringement ActionPublic

    Summary: The Mannheim Local Division confirmed the earlier imposition of penalties order of 20 January 2026 against Kodak GmbH and related entities for non-compliance with a final judgment requiring provision of financial and technical information to FUJIFILM Corporation (EP 3 511 174). The Court rejected Kodak's challenge and upheld the maximum daily penalty as justified given the extent and seriousness of the non-compliance. Leave to appeal was granted to develop UPC case law on enforcement measures.

    Show the legal issues (3)
    • Imposition of penalties for non-compliance with court order
    • Enforcement of information disclosure obligations
    • Standard for maximum daily penalty
  • 2025-07-23
    Public

    Summary: Mannheim Local Division issued an enforcement order imposing penalty payments on Kodak entities for non-compliance with the obligation to destroy infringing embodiments under a prior decision. The Court granted Fujifilm's application for imposition of penalties for each week of non-compliance, while rejecting other enforcement requests. Defendants bear the costs.

    Show the legal issues (2)
    • Enforcement – penalty payments for non-compliance with destruction order
    • Obligation to destroy infringing embodiments
  • 2025-04-02
    Infringement ActionPublic

    Summary: The Mannheim Local Division found that the Kodak defendants infringed EP 3 511 174 B1 owned by FUJIFILM Corporation, ordered an injunction, recall and destruction of infringing products, information disclosure, and an interim award of EUR 300,000 toward legal costs; the defendants' counterclaim for revocation was dismissed.

    Show the legal issues (5)
    • Patent infringement
    • Counterclaim for revocation dismissed
    • Prior use right (Art. 28 UPCA)
    • UPC jurisdiction over lapsed national parts
    • Recall and destruction of infringing products
  • 2025-04-02
    Public

    Summary: Mannheim Local Division separated and ordered independent proceedings for claims and counterclaims relating to the UK national part of European patent EP 3 511 174, following the ECJ's judgment in C-339/22 (BSH Hausgeräte) regarding UPC's jurisdiction under Brussels Ia Regulation. The Court acted after awaiting the ECJ decision which was delivered after the oral hearing.

    Show the legal issues (3)
    • Separation of proceedings – UK national part
    • UPC jurisdiction under Brussels Ia Regulation (Art. 71a, 71b)
    • Impact of ECJ judgment C-339/22 (BSH Hausgeräte)
  • 2025-01-22
    Infringement ActionPublic

    Summary: The Mannheim Local Division issued a preparatory procedural order ahead of the oral hearing in a patent infringement action brought by Fujifilm against Kodak entities concerning EP 3 511 174. The order set out preliminary views and questions on contested legal and technical points, including cross-border relief for the UK, interpretation of main vs. subsidiary requests, and claim construction, without making any final substantive ruling.

    Show the legal issues (5)
    • Preparation of oral hearing
    • Cross-border injunction (UK)
    • Pending ECJ case C-339/22 (BSH Hausgeräte)
    • Claim construction
    • Main vs. subsidiary requests
Documents
Show all 1012 documents
Document titleDatePublic
Receipt2026-10-20Not public
Cover sheet2026-10-20Not public
Application document Claimant2026-10-20Not public
Receipt2026-09-10Not public
Cover sheet2026-09-10Not public
Application document Applicant2026-09-10Not public
Application document Applicant2026-09-10Not public
Receipt2026-09-10Not public
Cover sheet2026-09-10Not public
Application document Applicant2026-09-10Not 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 3 511 174 (planographic printing plate technology) before the Mannheim Local Division. The court found infringement, dismissed the revocation counterclaim, and ordered injunction, product destruction, recall, and EUR 300,000 interim costs. Subsequent enforcement proceedings were required when Kodak persistently failed to comply with the disclosure obligation, resulting in accumulated penalties of EUR 1,720,000 being confirmed in January 2026.

Accepted arguments
What the court agreed with — by party.

  • Infringement of EP 3 511 174 by Kodak's printing plate products in Germany

    ClaimantLegal basis: Art. 25 UPCA; EP 3 511 174

    Note: The Mannheim Local Division found all three Kodak entities infringed the patent and ordered injunction, disclosure, destruction, recall, and EUR 300,000 interim costs.

  • UPC lacks jurisdiction over national patent parts that lapsed before 1 June 2023 and over non-UPCA-member states

    RespondentLegal basis: Art. 3 UPCA; transitional provisions

    Note: Court accepted this as a headnote principle limiting the scope of relief.

  • Prior use right defence must be pleaded in Statement of Defence and Counterclaim for Revocation and cannot be introduced later

    ClaimantLegal basis: R. 24(g) RoP; R. 25(1)(b)(c) RoP; R. 29(c)(d) RoP

    Note: The court confirmed the front-loaded pleading requirement applies to prior use right facts.

  • Penalty enforcement: maximum daily penalty of EUR 10,000 (later EUR 25,000) justified for persistent non-compliance with information/disclosure obligations

    ClaimantLegal basis: Art. 82 UPCA; enforcement provisions

    Note: The January 2026 enforcement order confirmed accumulated penalties of EUR 1,720,000 based on ongoing non-compliance.

  • Direct infringement of EP 3 511 174 B1 by making, offering and placing on the market planographic printing plates in Germany

    ClaimantLegal basis: Art. 25(a) UPCA

    Note: Court found FUJIFILM's infringement claims fully established against all three Kodak defendants.

  • UPC lacks jurisdiction over national parts of UPCA member states that lapsed before 1 June 2023, and over non-UPCA-member state parts

    RespondentLegal basis: UPCA jurisdictional rules

    Note: Jurisdiction was limited accordingly as reflected in Headnote 1.

Rejected arguments
What the court did not agree with — and why.

  • Counterclaim for revocation of EP 3 511 174

    RespondentLegal basis: Art. 65 UPCA

    Reason: The court dismissed the revocation counterclaim without detailed reasoning visible in the excerpts; the patent was maintained as granted.

  • Private prior use right under German law (Art. 28 UPCA)

    RespondentLegal basis: Art. 28 UPCA; German patent law

    Reason: Under German law applicable via Art. 28 UPCA, a firm and final decision to use the subject matter must have been taken before the priority date; the burden of proof lies on the defendant and Kodak failed to discharge it by documents or witnesses.

  • Penalties imposed were disproportionate given pending legal questions on UPC enforcement

    RespondentLegal basis: Art. 82 UPCA

    Reason: The court found deficiencies in compliance were evident and persistent; a prudent party advised by experienced counsel would have taken all steps to avoid doubt; penalties accumulating over time were a foreseeable result of Kodak's deliberate non-compliance.

  • Prior use right defense under Art. 28 UPCA

    RespondentLegal basis: Art. 28 UPCA; R. 24(g), R. 25(1)(b)(c), R. 29(c)(d) RoP; German law on prior use rights

    Reason: Defendants failed to meet the burden of presenting and proving a firm and final decision to use the invention before the priority date; prior use right facts must be submitted in the Statement of Defense and Counterclaim for Revocation and cannot be raised later.

  • Counterclaim for revocation of EP 3 511 174 B1

    Respondent

    Reason: Dismissed entirely; no further details on the invalidity grounds visible in the excerpt.

Key legal principles
Doctrines and rules cited in the reasoning.
UPC has no jurisdiction over national patent parts that lapsed before 1 June 2023 or over non-UPCA member statesPrior use right (Art. 28 UPCA / German law) requires proof of firm decision to use before priority date; burden on defendantPrior use right facts must be presented in Statement of Defence / Counterclaim; subsequent briefs limited to responding to ReplyMaximum daily penalty is appropriate where non-compliance with information obligations is evident, persistent, and the result of deliberate choiceSetting of penalties is in the court's interest and not capped by claimant's requestUPC jurisdiction limited to national parts in force on or after 1 June 2023 in UPCA member statesPrior use right under Art. 28 UPCA must be proved country-by-country with facts pleaded in Statement of DefenseBurden of proof for prior use right lies on defendantProcedural timeliness: grounds of revocation must be presented comprehensively in initial pleadings

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • WO [379] (prior art document cited in preparatory order in context of novelty/inventive step)Obviousness combination
  • EP 452 (prior art document cited in preparatory order for novelty and inventive step analysis)Novelty-destroying
  • EP 968 (cited in preparatory order for inventive step combination)Obviousness combination
Claim construction notes

The preparatory order (January 2025) raised extensive questions on claim construction, including: the meaning and measurement of micropore parameters in features 1.5 and 1.7' (standard deviation argument); whether EP 452 disclosures in examples vs. general description can be combined; interpretation of the ratio in feature 1.7'; scope of 'first configuration' and 'second configuration' in EP 452; and whether feature 1.9 relates to DOP processing. The final merits decision (April 2025) found infringement without detailed construction visible in the excerpt.