Private prior use in Germany and patent infringement in the UK: UPC Court of Appeal applies national law

Background

The claim was brought by Fujifilm, the patent-holder, against German companies, Kodak Graphic Communications GmbH, Kodak GmbH and Kodak Holding GmbH (Kodak) for infringement of the UK and German designations of EP 3 511 174. This concerned a lithographic printing plate precursor, a method of manufacturing a lithographic printing plate, and a lithographic printing method (the Patent).

In two separate decisions, the LD Mannheim had found that Kodak infringed the UK and German designations of the Patent and rejected Kodak’s private prior use claim regarding the German designation of the Patent and rejected Kodak’s private prior use claim regarding the German designation of the Patent. 

On appeal, the CoA first reviewed the jurisdiction and infringement claims. As set out in our previous article, the CoA first confirmed that it had jurisdiction to hear infringement claims against the German-domiciled defendants regarding the UK designation of the Patent. It then applied German law on private prior use and UK law on importation and joint tortfeasorship to assess whether Kodak infringed the Patent in those territories, ultimately reversing the two decisions of the LD Mannheim.

German infringement: private prior use

In relation to the German designation of the patent, Kodak claimed private prior use of its Sonora X plates and the modified/new version Sonora Xtra-3 plates. Based on Article 28 UPCA, the CoA assessed the private prior use claim under German law. At first instance, the LD Mannheim decided that Kodak had not provided sufficient facts to establish private prior use.

The CoA considered that, under German law, private prior use requires pre-priority date evidence of: 

1. the use of a product falling within the scope of the invention and 
2. the putting into practice of a serious intention to commercially use the product. The firm and final decision to commercialise does not have to be publicly available. The LD Düsseldorf specified in a separate case that “overall circumstances before the priority date have to indicate to an unbiased observer that the commencement of use is imminent”. This means that preparatory acts that do not translate to almost imminent use but only confirm that the invention can or should be realised are unlikely to be sufficient. 

In parallel proceedings between the same parties and relating to another patent, the CoA applied the same principles in its decision dated July 13, 2026. 

Private prior use of the Sonora X plates

The CoA considered that the evidence provided by Kodak demonstrated the following: 

Use of the plates in manufacturing activities before the Patent priority date

The evidence showed testing of the plates’ composition and decision-making regarding their final composition. It appears that Kodak provided at least a witness statement, and the CoA reviewed experimental reports, an email exchange, invoices and a list of billing documents.

Implementation of the intention to commercialise the plates before the Patent priority date

There was a witness statement, supported by invoices and billing lists with a pre-patent priority date demonstrating increased manufacturing and sales volumes. And the commercial name of the products had been approved and there was a publication on an external website (before the Patent priority date) announcing their commercialisation (after the Patent priority date). 

In its decision of July 13, 2026 between the same parties and relating to another patent, the CoA considered that Kodak could not demonstrate a firm and final decision to commercialise the plates as evidence related to tests and experiment before deciding on the composition of the final product, and deliveries occurred internally and within a development project. 

In particular, the CoA stressed that commercialisation requires a final product. A decision to commercialise components of a final product is not sufficient to demonstrate a business decision to commercialise the final product. Here, pre-priority date preparatory steps seemed to be limited to testing, experimentation and development phases, with a final decision to commercialise the products after priority date. In this later decision, Kodak could not demonstrate private prior use. 

Modified versions and the Sonora Xtra-3

While private prior use is limited to pre-patent filing embodiments, the CoA noted two important principles regarding modified versions: 

• A subsequent modification of the patent claims does not affect private prior use. 
• A product benefiting from private prior use may, after subsequent modification, still benefit from private prior use if the modification does not bring an additional advantage over the initial product, according to German law. 

For modified/new versions of a product the main question is therefore whether the modified version of the product realises the patented features in a qualitatively or quantitatively different manner than the initial product and realises an additional advantage disclosed in the patent specification. If so, the modified product does not benefit from prior use. This requires a substantive examination and a balance between the interests of the beneficiary of the private prior use and the patent-holder. 

In this case, the CoA extended the benefit of private prior use to the Sonora Xtra-3 plates. It had not been demonstrated that the Sonora Xtra-3 plates achieved an additional advantage over the initial Sonora X plates. The fact that the plates were manufactured in a different manner was not relevant. Under German law, private prior use includes the establishment of a distribution system with multiple partners. 

UK infringement

UK law applied to the infringement of the UK designation of the Patent. The CoA applied Article 8 of Regulation 864/2007 (Rome II) combined with Article 24(2)(a) of the Unified Patent Court Agreement: patent infringement is to be assessed under the law of the country of registration. 

The CoA recognised that, under the UK Patents Act 1977, importation of a product embodying the invention into the UK constitutes an infringing act. The main question was therefore whether one of the German Kodak defendants was an importer under UK law—that is the party who has the legal and beneficial interests in the plates. 

This point was not mentioned in the decision of July 18, 2025, when the LD Mannheim found infringement in the UK through direct delivery of infringing plates in the UK. However, the CoA ruled that, it was clear from Kodak’s financial statements that Kodak Ltd (not a party to the case) always held title to the attacked embodiments. As such it was Kodak Ltd and not Kodak Graphic who was importing into the UK. 

The CoA also rejected Fujifilm’s claims that Kodak was liable as a joint tortfeasor. This can arise under UK law when multiple entities commit a tort by “acting pursuant to a common design” but the joint tortfeasor needs to know the essential facts which make the act unlawful. 

The CoA considered that this required knowledge of the existence of the UK designation and that the attacked embodiments disclosed all features of the Patent. Fujifilm had not demonstrated that any of the Kodak companies had such knowledge. The CoA applied the same principles in its decision of July 13, 2026. 

Key takeaways

• A finding of jurisdiction does not necessarily mean a finding of infringement: While the UPC considered it had jurisdiction over the UK designation of the Patent, this did not lead to a finding of infringement.
• Evidence is key: The LD Mannheim did not think that Kodak had submitted sufficient evidence to claim private prior use in Germany or to rebut the claim of infringement in the UK. On appeal, evidence and arguments made a difference and led to the reversal of the decision. 
• Knowledge of national law is necessary: When parties in UPC proceedings rely on national/foreign law to support their claim, expert local knowledge of the relevant national law is required to be able to substantiate the claims. The CoA appears to have assessed the questions of German and UK law based on the parties’ submissions regarding the relevant foreign law. UPC litigants should therefore ensure that their legal representatives are part of a global team that can advise and coordinate legal submissions covering the laws of multiple jurisdictions.