UPC Court of Appeal Clarifies Jurisdiction Over Non-UPC Patents in Fujifilm v Kodak

The UPC Court of Appeal has delivered an important ruling in Fujifilm v Kodak, confirming that the United Patent Court’s jurisdiction may extend to non-UPC European patent designations. The decision distinguishes between the acceptance of jurisdiction and its exercise, the latter requiring application of the relevant national law and taking into account the principles of comity. It also outlines an approach to managing such “long-arm” claims, with potentially significant implications for cross-border patent enforcement before the UPC.

KEY FINDINGS

• The UPC Court of Appeal (the Court) confirmed jurisdiction over infringement claims relating to non‑UPC designations under the Brussels Recast Regulation, including upholding jurisdiction over the UK designation based on Article 4 (defendant domicile).
• The Court clarified that jurisdiction is exercised by reference to the relevant national law and principles of comity and outlined an approach to long-arm infringement claims, including differentiated treatment of EU/Lugano Convention and non-EU/Lugano Convention designations and consideration of relevant national law.
• The Court dismissed the first-instance infringement claims for both the German and UK designations, finding that no actionable infringement arose (in Germany due to Kodak’s successful private prior use defence, and in the UK because infringement was not sufficiently established), and consequently overturned the injunctions.

BACKGROUND

The dispute concerned European patent EP 3 511 174 in force in Germany and the UK. Fujifilm brought infringement proceedings before the UPC Mannheim Local Division against Germany-based Kodak entities. Kodak challenged, among other things, the UPC’s jurisdiction to adjudicate infringement of the UK designation and counterclaimed for revocation.

At first instance, the UPC Mannheim Local Division found infringement and granted relief, including injunctions in Germany and the UK. This marked one of the UPC’s first assertive uses of “long‑arm” jurisdiction to grant injunctive relief extending to a non‑UPC state. Kodak appealed these orders.[1]

COMMENTARY

The Court’s decision provides important clarification of its “long-arm” jurisdiction. By confirming that Article 34 of the UPC Agreement does not impose a territorial limitation on its jurisdiction, the Court reinforces that, as a “common court” under the Brussels Recast Regulation,[2] it may exercise jurisdiction in respect of non-UPC European patent designations where jurisdiction is otherwise established.

In doing so, the Court builds on the Court of Justice of the European Union’s (CJEU’s) reasoning in BSH v Electrolux (on which we previously wrote), which confirmed that courts seised under Article 4 of the Brussels Recast Regulation may hear extra-territorial infringement claims even where validity is raised as a defence.

The judgment emphasises that the existence of jurisdiction does not determine how the dispute will ultimately be resolved. The Court’s distinction between the acceptance and exercise of jurisdiction introduces an important limiting principle. While the UPC is required under the Brussels Recast Regulation to assume jurisdiction where it is established, its exercise requires the application of the relevant national law and must take account of international comity.

The Court moves beyond the binary question of whether jurisdiction exists and provides a practical approach for managing extra-territorial claims. This includes the use of case management tools, such as stays, and coordination with national courts on validity. The result is a more nuanced approach to cross-border adjudication versus an unqualified expansion of the UPC’s reach, which is summarised in a table at the end of this LawFlash.

The decision also underscores the continuing significance of national law. While the Court accepted jurisdiction over the UK designation, it dismissed the UK infringement claims on the merits. In doing so, it reaffirmed that the UPC’s competence extends to allegations of joint tortfeasorship,[3] applying UK law to assess whether Kodak’s conduct met the relevant threshold. On the facts, it found no basis to establish primary infringement by the German defendant by importation into the UK (which was carried out by Kodak UK).

The court also found that the relevant defendants did not have the requisite knowledge to establish secondary liability as a joint tortfeasor. The decision therefore highlights that liability will turn on domestic legal standards and that cross-border supply arrangements alone may not, without more, be sufficient to establish infringement.

A key development to watch is the UPC Court of Appeal’s referral to the CJEU in Dyson v Dreame[4] may provide further guidance on “long-arm” jurisdiction of the UPC. That case concerns the scope of Article 8(1) of Brussels Recast Regulation and whether EU-domiciled intermediaries or co-defendants can be used to anchor jurisdiction over non-EU defendants in relation to acts taking place outside the UPC territory. The CJEU’s answers will be critical in determining whether an expansive approach is endorsed or whether clearer limits are imposed on the UPC’s cross-border reach.

LOOKING AHEAD

The decision in Fujifilm v Kodak confirms that the UPC can exercise broad jurisdictional reach over non-UPC patent designations of European patents where grounded in the domicile of the defendant. However, it also makes clear that the exercise of such “long-arm” jurisdiction will depend on the application of national law, considerations of comity, and coordination with national courts.

Further guidance is expected as the UPC and the CJEU, including in Dyson v Dreame, continue to shape the contours of cross-border patent litigation.

IMPLICATIONS

• The UPC can hear infringement claims concerning non-UPC designations of European patents: Whether the UPC grants relief will be shaped by the application of national law and principles of comity.
• Limited scope to resist the UPC’s jurisdiction: Where jurisdiction is based on Article 4 (defendant domicile), the ability to challenge long-arm jurisdiction will be limited. However, extra-territorial claims will often require coordination with parallel national proceedings, including national revocation actions.
• Outcome driven by national law requirements: Success on non‑UPC claims will depend on satisfying the applicable national law, and the decision highlights that supply chain involvement alone may not be sufficient to establish liability.

THE UPC’S APPROACH TO EXERCISING JURISDICTION

*EU/LC EPs are European patent designations in the territories of member states of the European Union and states that are signatories to the Lugano Convention.