Kodak v. Fujifilm – UPC Court of Appeal on Long-Arm-Jurisdiction (again)

In its decision of 2 June 2026 (UPC_CoA_882/2025 et al.), the Court of Appeal (CoA) provided further guidance on the UPC’s assessment and handling of actions extending beyond UPC territory, based on national designations of European patents in non-UPC Member States. The decision fits into the emerging post-BSH case law and adds a more structured framework for dealing with non-UPC designations (cf. our previous reports on BSH and Dyson v. Dreame).

I. Procedural Background

Fujifilm sued three German Kodak entities before the Mannheim Local Division (MLD) for infringement of EP 3 511 174  with effect for Germany and the UK.

The MLD (UPC_CFI_365/2023) found the German designation of the patent at issue (in unconditionally amended form) to be valid and infringed. The MLD further found for infringement with respect to the UK designation and dismissed the counterclaim for revocation.

On appeal, the Court set the decision on infringement aside while rejecting the defendants’ appeal in the counterclaim proceedings. Remarkably, the CoA denied infringement for reasons of respective national law for both the German and the UK designation.

• Note: The fact that the Court of Appeal ruled on the merits of the case here is not inconsistent with its referral order to the CJEU in Dyson v. Dreame (UPC_CoA_813/2025, 6 March 2026). In that case, the relevant defendants were domiciled outside the UPC territory.

II. Jurisdiction

The CoA distinguishes carefully between accepting jurisdiction and exercising it, and develops a structured approach for non-UPC-designation validity defences, explicitly framed in light of BSH v. Electrolux and comity.

1. Accepting Jurisdiction

The CoA affirmed the MLD’s finding that the UPC has jurisdiction to hear the infringement action concerning the non-UPC designation on the basis of Art. 4 Brussels I Recast Regulation (referred to as Brussels I bis by the CoA), because the (German) defendants were domiciled in UPC territory.

The grounds set out by the CoA are familiar:

• 34 UPCA does not confine UPC jurisdiction to Contracting Member States; it defines the general territorial scope of UPC decisions, not a ceiling on adjudicatory jurisdiction.
• There is no indication that the Contracting Member States intended to confer on the UPC a narrower jurisdiction than national courts would have had in comparable cross-border situations (UPC as common court of the Member States) (Article 71a (2)(a), 71b(1) Brussels I bis).
• Also, Art. 3 lit. (c) UPCA, treats European patents as still falling within the “matter governed by the UPCA” for these purposes – regardless of their designation being inside and/or outside UPC territory.
• 24(3) UPCA confirms that the UPC may apply the law of non-Contracting Member States.
• Ultimately, in line with previous decisions of the CJEU (Owusu, C-281/02, ECLI:EU:C:2005:120, para. 36-46; BSH v. Electrolux, C-339/22, ECLI:EU:C:2025:108, para. 41-52), Art. 4 Brussels I bis precludes the Court from declining jurisdiction on the ground that another court of a non-Member State (here: a UK Court) was the more appropriate forum for the trial of the action. Consequently, accepting jurisdiction is not incompatible with TRIPS.

Further, the CoA reiterates that the threshold for accepting jurisdiction does not extend to substantial matters – in the present case, where jurisdiction followed from Art. 4 Brussels I bis, this related to the validity of the patent at issue. The patentee’s unconditional amendment of the claim regarding the German designation of the patent at issue during the CFI proceedings does not effect a “loss of the UK designation of the patent”.

• Note: The above cannot be applied to non-European patents, in any case not without further ado. This was not the subject-matter of the case.

2. Exercising Jurisdiction

The decision breaks new ground when the CoA turns to the question of how that jurisdiction should be exercised in light of international-law principles, especially comity.

The starting point is the distinction between two categories of non-UPC-territory designations.

• EU/LC EPs (EU Member States and Lugano Convention States, e.g. Spain and Switzerland): 24(4) Brussels Ibis and Art. 22(4) Lugano prevent the UPC from deciding validity. Following BSH, however, this does not deprive the UPC of jurisdiction over the infringement action as such.
• Non-EU/LC EPs (non-EU and non-Lugano States, g. the UK): BSH allows the UPC to consider validity inter partes in the infringement action and to decide the infringement action on that basis. Such an assessment does not affect the existence or content of the patent in the third state and has no register effect.

On that basis, the Court sets out a three-scenario framework, calibrated to the type of foreign designation and to what happens to the UPC-territory part of the patent.

Scenario I — Standalone Revocation Action (non-UPC-designation, whether EU/LC or non-EU/LC): the Court lacks jurisdiction and must declare so.

Scenario II — Infringement Action (UPC-territory patent invalid): If the UPC-territory patent is held invalid, but the accused embodiment would infringe the foreign designation (if valid), the patentee should first be invited to withdraw the non-UPC-territory part of the claim. If it does not withdraw:

• EU/LC EPs: the defendant should normally be given time to bring national revocation proceedings; if such proceedings are pending or brought, the UPC should generally stay the infringement proceedings for that designation. To the extent the defendant does not lodge an action, the UPC must assume validity and decide accordingly.
• Non-EU/LC EPs: the infringement action should ordinarily be dismissed, unless there are specific reasons not to do so (e.g. if the asserted claims are different and potentially valid).

Scenario III — Infringement Action (UPC-territory patent valid and infringed): for both EU/LC and non-EU/LC designations, the Court may grant relief subject to a condition subsequent (Rule 118.2 RoP). The order stays in place at least until a decision by the competent national court is handed down.

• If the national court holds the non-UPC designation valid, the orders become final once that decision is final.
• If the national court holds the non-UPC designation invalid, the condition subsequent is not fulfilled and the orders fall away. The patentee then has two months to seek consequential orders, including a request for a stay (R. 118.4 RoP).

In the present case, the CoA did not come to apply the framework as, applying UK law, infringement by the Defendants in the UK could not be established.

III. Takeaways

• Jurisdiction and Case Management: The UPC has no jurisdiction for standalone revocation actions relating to EP designations outside UPC-territory. The UPC accepts jurisdiction for (asserted) infringement of European patents by entities domiciled in UPC-territory . Non-UPC designations are not a mere “automatic add-on”, though – instead – the UPC exercises jurisdiction in this respect building up on its finding regarding the UPC-territory designation.
• Flexibility for Patentee: Despite the patent being invalid within the UPC-territory, the patentee still generally retains the option to pursue non-UPC-territory claims – at least, where the UPC does consider infringement possible.
• Conditional Relief: Where the UPC-territory patent is valid and infringed, pending national revocation proceedings do not prevent the UPC from (conditionally) ordering for reliefs sought by the patentee/claimant.

 IV Side Note

The decision is also instructive with respect to (1) the private prior use defence (Art. 28 UPCA) and the UPC’s application of national (here: German) statutory and case law and (2) the front-loaded character of the proceedings and late-filed evidence.