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UPC CoA 881/2025

Sep 18, 2025·EP3476616 · PLANOGRAPHIC PRINTING PLATE ORIGINAL PLATE, METHOD FOR MANUFACTURING PLANOGRAPHIC PRINTING PLATE, AND PRINTING METHOD

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Case details
Status
Case Closed (Patent infringed)
Action
Appeal
Category
Main appeal
Parties
Claimants
Representatives
Respondents
Representatives
Division
Court of Appeal
Judges
Technology
  • Instruments
    Optics
  • Mechanical engineering
    Textile and paper machines
Language
English
First decided
Jul 13, 2026
How this compares
How long the court takes to reach a first decision.
Median days to first decision
All UPC124
Judge Rian KaldenLocked
Judge Ingeborg SimonssonLocked
Judge Patricia RombachLocked
Judge Max TilmannLocked
Judge Lorenzo ParriniLocked

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

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Related cases
All proceedings on this patent

This dispute contains 13 other proceedings

UPC CoA 158/2026·UPC CFI 3255/2026·UPC CFI 3266/2026·UPC CFI 3270/2026·UPC CFI 766/2025 and 8 more

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More cases: Court of Appeal·2025

Decisions
  • 2026-07-13
    Appeal RoP220.1Public

    Summary: The Court of Appeal reversed the first-instance decision (German designation) and found EP 3 476 616 valid and infringed by Kodak's Sonora X, Sonora Xtra-2 and Sonora Xtra-3 lithographic printing plate precursors; Kodak's counterclaim for revocation was dismissed and a full injunction, damages, recall and destruction were ordered for Germany. For the UK designation (UPC_CoA_881/2025 and UPC_CoA_873/2025), Fujifilm's appeal was dismissed because Fujifilm failed to establish an infringing act by any Kodak defendant in the UK; Kodak's conditional counterclaim for revocation of the UK designation was declared unfulfilled and therefore not decided.

    Show the legal issues (14)
    • Admissibility of defence of dependent claims without auxiliary request under R.30 RoP
    • Patentee's obligations under R.29A RoP to identify dependent claim combinations
    • Novelty over public prior use (Sonora X / T41 plates before priority date of 31 August 2017)
    • Novelty over WO 2018/160379 A1 (Art. 54(3) EPC) and US 4 566 952 A
    • Inventive step starting from EP 2 878 452 A1, EP 2 594 408 A1 or JP 2015-189021 A in combination with EP 2 839 968, EP 1 614 541 A2, JP H08-144090 A
    • Scope of centrally limited claim 1 under Art. 105b(2) EPC during appeal proceedings
    • Direct infringement of claim 1 by Sonora X, Sonora Xtra-2 and Sonora Xtra-3 plates (Germany)
    • Indirect infringement of method claims 10 and 11
    • Private prior use defence under Sec. 12 German Patent Act / Art. 28 UPCA
    • UPC jurisdiction over UK designation of EP under Art. 4 Brussels Regulation I / BSH v Electrolux (CJEU C-339/22)
    • Conditions for non-EU/LC European patent infringement actions and appropriate exercise of jurisdiction
    • Proportionality of injunction and publication on website (Art. 80 UPCA)
    • Penalty clauses for enforceable monetary obligations (Headnote 7)
    • Costs allocation and interim award under R. 150.2 RoP
Documents
Show all 83 documents
Document titleDatePublic
Formal Deficiency found2026-09-17Not public
Receipt2026-09-14Not public
Cover sheet2026-09-14Not public
Application Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Exhibit Respondent2026-09-14Not public
Accepted arguments
What the court agreed with — by party.

  • Patentee may defend dependent claims (including combinations encompassed by the granted claims) without filing an auxiliary request under R.30 RoP; R.30 RoP applies only to amendments deviating from the granted wording

    ClaimantLegal basis: R.29A RoP; R.30 RoP; Art.65(3) UPCA; Art.138(2) EPC

  • All three Sonora plate variants (Sonora X, Xtra-2, Xtra-3) directly infringe claim 1 of EP 3 476 616 as centrally limited; measurements in Analysis Report K15 are reliable and the manufacturing process is irrelevant to claim construction

    ClaimantLegal basis: Art.25 UPCA; claim 1 of EP 3 476 616

  • Patent is novel: Kodak's T41/Sonora X delivery to Laserline on 12 October 2017 was after the first priority date and was a test delivery under implied confidentiality; WO'379 does not disclose features 1.3.6-1.3.8; US'952 does not disclose features 1.3.7-1.3.8

    ClaimantLegal basis: Art.54 EPC

  • Patent has inventive step: starting documents EP'452, EP'408 and JP'021 do not disclose lightness L*, steepness a45 or surface area ΔS and there is no pointer to consult EP'968, EP'541, JP'459, JP'090 or JP'264 to arrive at those features

    ClaimantLegal basis: Art.56 EPC

  • Kodak cannot rely on a private prior use right because it had not taken a firm and final decision to commercialise the Sonora X plate in its final composition before the priority date of 31 August 2017

    ClaimantLegal basis: Sec.12 German Patent Act; Art.28 UPCA

  • UPC has jurisdiction over infringement of the UK designation pursuant to Art.4 Brussels Regulation I (defendant domiciled in Germany) as confirmed by BSH v Electrolux (CJEU C-339/22)

    ClaimantLegal basis: Art.4 Brussels Regulation I; Art.71a-71b Brussels Regulation I; BSH v Electrolux (C-339/22)

  • Fujifilm failed to prove that any Kodak defendant carried out an infringing act of importing into the UK; title to attacked embodiments was retained by Kodak Ltd (UK) not Kodak Graphic, so Kodak Graphic was not importing

    RespondentLegal basis: s.60(1)(a) Patents Act 1977; Sabaf v MFI [2002] EWCA Civ 976

  • Kodak's conditional counterclaim for revocation of the UK designation was not fulfilled because the MLD did not accept jurisdiction to decide validity of the UK designation

    RespondentLegal basis: R.353 RoP
Rejected arguments
What the court did not agree with — and why.

  • Patentee must file an auxiliary request under R.30 RoP in order to defend dependent claims in revocation proceedings

    RespondentLegal basis: R.30 RoP

  • Patent lacks novelty due to public prior use by Kodak's Sonora X / T41 plates before priority date

    RespondentLegal basis: Art.54 EPC; Sec.12 German Patent Act

  • Patent lacks novelty over WO 2018/160379 A1 because features 1.3.6-1.3.8 are implicitly disclosed via Merka reworking

    RespondentLegal basis: Art.54(3) EPC

  • Patent lacks inventive step starting from EP'452, EP'408 or JP'021 combined with EP'968, EP'541, JP'459, JP'090 or JP'264

    RespondentLegal basis: Art.56 EPC

  • Kodak has a private prior use right based on possession of Sonora X plates before the priority date

    RespondentLegal basis: Sec.12 German Patent Act; Art.28 UPCA

  • UPC lacks jurisdiction over UK designation infringement because Art.34 UPCA confines jurisdiction to UPC territory

    RespondentLegal basis: Art.34 UPCA; Art.24(3) UPCA

  • Injunction would be disproportionate given Kodak's investment in Sonora plates and public interest in market competition

    RespondentLegal basis: Art.63 UPCA

  • Publication of infringement declaration on Kodak's website justified under Art.80 UPCA

    ClaimantLegal basis: Art.80 UPCA

  • Penalty clause for non-fulfilment of the monetary damages award (interim award)

    ClaimantLegal basis: Art.63 UPCA