Comity and Claim Construction: The Court of Appeal on Foreign Designations and Measurement Fluctuations
The Court of Appeal establishes a framework for adjudicating non-EU/LC European patents and clarifies that precise numerical claim values do not automatically include measurement fluctuations.
The doctrinal framework governing the Unified Patent Court's reach over foreign patent designations has been steadily taking shape following the Court of Justice of the European Union's ruling in BSH v Electrolux. In a consolidated appeal concerning lithographic printing plates, the Court of Appeal has now established a comprehensive mechanism for handling infringement and validity claims that span both Unified Patent Court territory and non-contracting states.
How does the Court of Appeal handle numerical claim features and measurement fluctuations?
The dispute over EP 3 511 174 centred on a printing plate precursor designed to suppress occurrence of appearance failure. Kodak argued that the precise numerical values defining the micropores in the anodised film should be read to include inherent deviations. The Court of Appeal rejected this approach. The panel held that there is no general rule that the skilled person would always and automatically take into account fluctuations which are due to the manufacturing process and the measurement method and in doing so would automatically add deviations to the precise numerical value in a claim feature. While such an outcome might result from specific claim interpretation, it is not inherent to the use of a numerical value.
When can parties submit additional evidence in the front-loaded system?
Kodak challenged the admission of certain materials, arguing it violated the procedural rules. The Court of Appeal clarified the boundary of evidentiary preclusion. The panel ruled that it is not contrary to Rule 29 RoP and the front-loaded system if a party submits additional evidence of an already stated fact or submitted argument for which other evidence had already been submitted, but which was disputed by the other party.
How does the Court exercise jurisdiction over non-EU/LC European patents?
The Mannheim Local Division had assumed jurisdiction over the United Kingdom designation of the patent. On appeal, the Luxembourg panel confirmed that Article 34 UPCA does not confine the Unified Patent Court's jurisdiction to its own territory. Because Kodak is domiciled in the territory, Article 4 of the Brussels I bis Regulation precludes the Court from declining jurisdiction in favour of a non-Member State forum. Applying international law principles such as comity, the panel established a clear framework for non-EU/LC European patents. The Court held that it can consider the validity of such patents in inter partes proceedings and may on that basis decide the infringement action. To avoid undue delay while respecting comity, the Court may issue its orders under a condition subsequent that the patent is not held invalid by the competent national court.
Does jurisdiction over infringement extend to allegations of joint tortfeasorship?
Kodak GmbH acts as a German sales company purchasing products from a United Kingdom based group company, while Kodak Graphic operates a manufacturing facility. Addressing liability across these entities, the panel confirmed that an infringer within the meaning of Article 63 UPCA in conjunction with Article 25 UPCA includes a person who does not personally carry out the acts but to whom the acts of a third party are attributable because he is an accessory. Citing Belkin v Philips, the Court held that jurisdiction extends to allegations of joint tortfeasorship.
What should litigators change when asserting foreign designations after UPC CoA 312/2025?
Patentees seeking to enforce non-EU/LC European patents against defendants domiciled in the Unified Patent Court territory now have a confirmed path to litigate both infringement and inter partes validity in a single forum. However, practitioners must account for the new conditional order mechanism. If a parallel national revocation action is pending, any resulting injunction may be issued under a condition subsequent. Furthermore, when drafting or defending claims with precise numerical values, litigators cannot rely on a general rule that the skilled person will automatically add deviations for manufacturing or measurement fluctuations. The exact numerical value will bind the patentee unless specific claim interpretation dictates otherwise.
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