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Fujifilm Corporation v. Kodak GmbH, Kodak Graphic Communications GmbH, Kodak Holding GmbH
ACT_579338/2023
Mannheim (DE) Local Division
Infringement Action
EN
EP3511174B1
Local Division Mannheim delivered on 2 April 2025 concerning EP 3 511 174 B1
FUJIFILM Corporation, 26-30, Nishiazabu 2-chome, Minato-ku,Tokyo 106-8620, Japan, represented by:
Tobias Hahn, HOYNG ROKH MONEGIER, Steinstraße 20, 40212 Düsseldorf, Germany electronic address for service:
tobias.hahn@hoyngrokh.com
represented by:
Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Feldmühleplatz 1, 40545 Düsseldorf, Germany
electronic address for service:
elena.hennecke@freshfields.com
Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany
European patent EP 3 511 174
Panel of the Local Division in Mannheim
This decision is delivered by the presiding judge Tochtermann as judge-rapporteur, the legally qualified judge Böttcher, the legally qualified judge Agergaard and the technically qualified judge Wismeth.
LANGUAGE OF THE PROCEEDINGS: English
SUBJECT OF THE PROCEEDINGS: Patent infringement
an aluminum support; and
wherein the aluminum support includes an anodized film on a surface of the image recording layer side, the anodized film has micropores extending in a depth direction from the surface of the anodized film on the image recording layer side,
the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 µm to 0.30 µm, and wherein an average value of depths of the large-diameter pores to the bottom from the surface of the anodized film is in a range of 100 nm to 1500 nm, an average pore diameter of the micropores in the surface of the anodized film is 90% or less of the maximum diameter of the micropores inside the anodized film,
the image recording layer contains an acid color former.
a step of imagewise-exposing the lithographic printing plate precursor of any of claims 1-14; and a step of supplying at least any of printing ink or dampening water and removing an image recording layer in a non-image area on a printing press.
the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 µm to 0.30 µm, and wherein an average value of depths of the large-diameter pores to the bottom from the surface of the anodized film is in a range of 100 nm to 1500 nm, an average pore diameter of the micropores in the surface of the anodized film is 90% or less in a range of 10% to 50% of the maximum diameter of the micropores inside the anodized film,
the image recording layer contains an acid color former.'
manufacturing facility in Germany as contract manufacturer of printing plates for said UK entity. Defendant 1 is a wholly owned subsidiary of Defendant 2, which itself is a wholly owned subsidiary of Defendant 3 and subject to a control and profit and loss transfer agreement with Defendant 3.
the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 µm to 0.30 µm, and wherein an average value of depths of the large-diameter pores to the bottom from the surface of the anodized film is in a range of 100 nm to 1500 nm, an average pore diameter of the micropores in the surface of the anodized film is in a range of 10% to 50% of the maximum diameter of the micropores inside the anodized film,
the image recording layer contains an acid color former,
and/or, c. the lithographic printing plate precursor according to any one of claims 1 to 2, wherein the acid color former is a leuco dye
and/or
d. the lithographic printing plate precursor according to any one of claims 1 to 3, wherein the image recording layer further contains an acid generator
direct infringement of subclaim 4 EP 3 511 174 B1 - and/or
e. the lithographic printing plate precursor according to claim 4, wherein the acid generator contains an organic borate compound
f. the lithographic printing plate precursor according to any one of claims 1 to 5, wherein a value of a brightness L* in an Lab* color system of the surface of the anodized film on the image recording layer side is in a range of 70 to 100
g. the lithographic printing plate precursor according to any one of claims 1 to 5, wherein a value of a brightness L* in an Lab* color system of the surface of the anodized film on the image recording layer side is in a range of 72 to 90
h. the lithographic printing plate precursor according to any one of claims 1 to 7, wherein a steepness a45 representing an area ratio of a portion having an inclining degree of 45° or greater obtained by extracting a component with a wavelength of 0.2 µm to 2 µm in the surface of the anodized film on the image recording layer side in a frequency distribution based on fast Fourier transformation of three-dimensional data obtained by performing measurement using an atomic force microscope is 30% or less
i. the lithographic printing plate precursor according to any one of claims 1 to 8, wherein an amount of the image recording layer is in a range of 0.5 g/m 2 to 2.5 g/m 2
j. the lithographic printing plate precursor according to any one of claims 1 to 13, which is a lithographic printing plate precursor for on-press development.
which are suitable and intended to use with
whereby details requiring confidentiality may, at the discretion of the court, be redacted or made available only to certain persons;
within twenty-one days of the date of service of the decision, supported by evidence verified by an independent accountant, under a penalty of EUR 10.000 per delay day from the month following the date of service of the judgment to be handed down;
whereby an exhaustive list of all recipients is to be provided to the Claimants;
'On [date of decision], the Unified Patent Court has ruled that Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH infringed European Patent No. 3 511 174 held by Fujifilm Corporation by manufacturing, selling, and offering for sale SONORA XTRA-3 printing plate precursors. As a consequence, Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH were ordered to terminate all commercial activities related to these products in Germany and the United Kingdom immediately. We apologize for any inconvenience this may cause and will be reaching out directly to clients to offer an appropriate solution.'
[For requests C. to F., see infra under 'Counterclaim for revocation']
IV. to consequently order the corrective measures requested under request B. of the Statement of Claim;
of EP 452 and common general knowledge, or in combination with prepublished patent applications EP 968, US 599,
granted accordingly in order not to frustrate the possibility to amend the patent-insuit in accordance with R. 30 RoP so as to obtain a judgment against the defendant for infringement of the patent-in-suit in a version partially maintained according to the amendments applied for.
withdrawal. In particular, no further embodiment is apparent, which would fall into the scope of the original, but not the scope of the current main request. As far as Claimant explicitly decided not to attack SONORA X and SONORA XTRA-2 plates anymore but limit this infringement claim to SONORA XTRA-3 plates, such amendment is to be interpreted as a partial withdrawal of the claim, which is admissible pursuant R. 265 RoP as Defendants did not forward any interest in a decision on the action with regard to these products.
UPC_CFI_162/2024 mn. 95 et seqq.). Said acknowledgement also follows from the fact that the UPCA leaves some legal aspects of infringing acts committed after its entry into force to the substantive national laws of its member states without further harmonization (cf. Art. 29 UPCA (exhaustion), Art. 28 UPCA (private prior use right)). Therefore, Art. 3 (c) UPCA cannot be read as a basis to transfer the national parts of a traditional European bundle patent into a single uniform international patent. Art. 3 (c) UPCA cannot be interpreted so as to establish the UPC's jurisdiction over national parts having lapsed before the UPCA's entry into force provided that one single national part is still in force at that date. Otherwise, in extreme cases, such single national part would suffice to establish the UPC's jurisdiction over infringing acts with regard to lapsed national parts, even if said single national part is not part of the infringement action and all infringing acts reside in periods before the UPCA's entry into force. This would also be true if said single national part was the national part of a UPCA non-member state because Art. 3 (c) UPCA in general speaks of a European patent without differentiating between UPCA member and non-member states so that the UPC would have jurisdiction over national parts of UPCA non-member states to the same extent as a national court of the UPCA member states would have under the Brussels Ia Reg. In the absence of any indication to the contrary, it cannot be assumed that the member states to the UPCA intended to transfer the jurisdiction to the UPC for their national parts that had already lapsed before its entry into force.
any effect for the period thereafter. On the contrary, the member states intended to mitigate the fragmentation considered by them to be negative for the future only by establishing the UPC's jurisdiction over patents still in force on 1 June 2023 and accepted the fragmentation for the past. Against this backdrop, it cannot be assumed that the contracting member states wished to give up the jurisdiction of their national courts over national parts lapsed before the UPCA's entry into force.
the demarcation of the subject-matter jurisdiction of a court common to EU member states such as the UPC and the national courts of these member states either. When applied pursuant to Art. 71a, 71b Brussels Ia Reg., the scope of Art. 26 (1) does not change insofar. On the contrary, Art. 71a (1) Brussels Ia Reg. explicitly stipulates that, for the purposes of the Brussels Ia Regulation, a court common to several member states as specified in Art. 71a (2) Brussels Ia Reg. including the UPC shall be deemed to be a court of a EU member state when, pursuant to the instrument establishing it, such a common court exercises jurisdiction in matters falling within the scope of the Brussels Ia Regulation, thereby confirming that Art. 26 (1) Brussels Ia Reg. applies in the same way between national courts and a common court as between national courts, i.e., dealing with the international and at most local jurisdiction, but not with the subject-matter jurisdiction.
development), a so-called print-out image, can be examined by coloring or decoloring an exposed region [0007]. An acid color former can be used for this purpose [0008]. However, unintended coloring, also referred to as 'appearance failure', may occur with time in a case where an aluminium support on which an anodized film is formed is used for a lithographic printing plate precursor. Said appearance failure occurs in a case where an aluminium support on which the anodized film is formed is used and an image recording layer or even is not exposed [0009], [0026]. The description of the patent speculates about the reasons for such appearance failures. A reason may be that a component, particularly an anion containing a halogen atom, in the image recording layer infiltrates into the anodized film so that a part of the aluminium base of the aluminium support is dissolved. Due to the consequential presence of a proton H + , i.e., an acid being formed during that dissolution process, the acid color former may develop color in spots where no image is intended [0027].
negative type [0094].
lithographic printing plate is obtained [0033].
is preferably in a range of 100 nm to 1500 nm and more preferably in a range of 200 nm to 1000 nm [0076]. Optionally the large-diameter pore (130) has communicating from its bottom a small-diameter pore (132) [0062].
suit (see supra admissibility), is to be dismissed. Neither can the Defendants rely on public prior use, nor does the patent-in-suit lack novelty or inventive step, nor does it contain added matter.
manufactured on […] (batch #[…]) had been retained. Plates from that batch had been delivered to […] in […].
whatsoever that an interested member of the public would have been granted access to the test plates, which had been sent to […] in the course of the cooperation which aimed at carrying out test runs and test prints so as to assess the quality of the plates. Under these circumstances it would have been decisive in the eyes of the panel to submit facts and present evidence that the partner involved in these test runs, […], understood the delivery not to be subject to any confidentiality restrictions but that the test plates could be shared with anyone, even Claimant, in case there were an interest. Defendants especially did not offer any evidence in the form of witnesses from […] so as to affirm their allegations. However, it would have been critical to see, how the circumstances of the test job had been understood at their end. Confronted with this point in the oral hearing, representatives of Defendants only put forward that such witnesses were not available as […] had fallen into insolvency and therefore no witnesses could be reached. Furthermore, Exhibit T-17, which is in part redacted for the court as well as for the Claimant, does not establish any facts which lead into another direction as it only deals with the future business plans and apparently aims at swearing in sales people of Defendants' group to support the future commercialization of the new product line and highlight the business potential of the project […]. Still, as the burden of proof to establish that the plates were publicly available rests on Defendants' side, that is insufficient.
micropores having an average outer micropore diameter of at least 15 nm and up to 30 nm. The layer has an average dry thickness of at least 130 nm and up to 650 nm. A combination of two anodizing processes is carried out in such a manner as to achieve the recited features of both the inner and outer aluminium oxide layers (p. 8, l. 4-8).
sufficient reason to rework example 7 in order to study the properties of the result achieved thereby, it has not been submitted that the document itself discloses in sufficient details the conditions for reworking example 7.
diameter is preferably from 10 nm to 25 nm, more preferably from 11 nm to 15 nm and even more preferably from 11 nm to 13 nm [0026].
FIG. 2
100 lithographic printing plate support
which sets out quality levels of the example plates with regard to certain properties. Neither of example 3, 11 or 12 stands out when compared with the other examples. Therefore, the skilled person does not have reason to focus on these examples, nor do they give him a reason to put both values of the diameters in context with regard to avoiding appearance failure.
explanation why exactly this desired effect is achieved remains unclear (patent-insuit at [0030]). Still, it lays out in [0031] that dissolution of the anodized film is unlikely to be promoted even in a case where the component in the image recording layer infiltrates into the micropores. Hence it elaborates explicitly on the connection of the micropore structure and here on the ratio between the diameter of the largediameter pores inside the anodized film in relation to the diameter of the pores in the surface of the film. No such correlation is addressed in EP'452. Therefore, the skilled person, when studying the technical teaching of EP'452 is not motivated to specifically narrow its focus on just these three examples, on which Defendants rely in their line of arguments. Even if the argument were followed that 'appearance failure' as being addressed by the patent-in-suit and the avoidance of 'dotted scumming' in EP'452 are to be equated, for which there is little reason to agree as the first relates to the problem of errors in the print-out image (i.e., an image used for checks before the final image is printed) whereas the latter relates to defects in the printed image as the final product of the printing job, picking out examples 3, 11 and 12 and analysing further the properties of the micropores in these examples and in a next step musing on whether or not the ratio of micropore parameters contributes to advantageous results, nothing would motivate the skilled person to focus on examples 3, 11 and 12. All the examples had only a performance of 'B' in respect to microdots whereas other examples performed 'A' or even 'AA'.
Defendants' view EP'452 also referred in general to on-press developability, e.g., in [0008], so that a skilled person would have reason enough to combine examples 3, 11, 12 with such acid color former in the image recording layer. Still, Claimant rebutted this argument by advancing that the prior art EP'452 focussed on increasing press life and did not deal with the problem of appearance failure in the context of on-press development. Insofar as the prior art EP'452 dealt with a phenomenon called 'dotted scumming' (see paras. [0305] et seqq.) this - according to Claimant must not be equated with appearance failure as dotted scumming concerned defects on the final print, whereas appearance failure relates to defects of the printout image, which is used for checking quality before mounting the plate on the press, i.e., does not relate to the final product of the printing process. Also the reference in EP'452's [0215] to JP'434 were to no avail as the optional compounds disclosed as colorants may perhaps be used as acid color formers, but had not been disclosed in that specific context or functionality so that the skilled person were not motivated to use those substances in that function, i.e., as color switching agents triggered by acid. Rather the disclosure of radical color formers in that list would render such choice arbitrary. The same were true for the colorants mentioned in the context of the 'second configuration' in [0224].
addressed by feature 1.7' . Also US 2009/00047599 A1 (US'599, T40) does not add any further aspects, it has been relied upon only so as to argue on inventive step in regard to feature 1.9 (acid color former).
description of both, the application [0014] and the patent-in-suit [0014], the description of constituent elements is made based on representative embodiments of the present disclosure in some cases, but the present disclosure is not limited to such embodiments. Correspondingly, the small diameter pores with respect to figure 3 are optional (application EP'174 [0109]; patent-in-suit [0062]). Therefore, the depth of the large diameter pores within the range given in feature 1.6 is originally disclosed, even without the other features mentioned with respect to the second aspect or figure 3, respectively.
and produced a picture of the surface of the attacked embodiment as follows:
.
Figure 8 schematic 3D view of (parts of) Fig. 1 of WO '054
Figure 9 excerpts from analysis report; Exhibit KI5 Annex Ic (diameter small-diameter pore, FE SEM imaqe #348754 n3) 110.
regard to some contested measurements Defendants define the distance to be measured between side walls of the pore in an inconclusive manner by measuring distances where there is a structure in between two walls (green line: correct measurement in the eyes of Defendants; red line: measurement of Claimant):
SONORA XTRA 3 #348754 n1
(Exhibit K 15 Annex Ic, p. 25, green and red lines added) 113.
SONORA XTRA-3 #348754 n1
(Exhibit K 15 Annex Ic, p. 25. green red lines added) and 115.
accompanying or subsequent acts of use or preparatory acts for immediate use (Kühnen, loc. cit. E. ciph. 666). Substantive submissions are particularly necessary if the documents presented by the defendant do not show the inventive concept (Kühnen, loc. cit. E. ciph. 666).
also not reaffirmed by T17, the already addressed mid-year review of Kodak of […], which swears in staff members to the new generation of plates and sets out that the new […] plates are considered to be a game changer for the group of companies. Still, no sufficient facts are presented in that document that a final decision on the properties of such a plate had already been present as it states that […] has to be 'accelerated' (p. 8) which can only be understood to underline that the development had not yet been finalized.
of Kodak dated […], i.e., long after the priority date, (Exhibit T20) reads as an announcement that the old generation of SONORA UV plates will be upgraded only in 2018 and that the plate at that time is only known under its project name […]. It continues by setting that the official product name will also only be announced 'during the marketing launch in early 2018' and that 'extensive field trials with customers in all regions of the world have had impressive results'. This reaffirms the panel in believing that there is a high probability that any deliveries to customers like […] and […] in […] are still part of the extensive field trials. Even in the customer bulletin the attached technical specifications as of […], i.e., well after the priority date, are referred to as 'Draft technical specification', which again points into the direction that the final settings had not yet been fixed by a prior firm and final business decision. As the project and development proceeds and the plates are deemed to work for printing jobs already with sufficient reliability it is also not surprising that customers, even if plates are received in the course of such trials pay a certain price for consideration as they actually can do their print jobs with the test plates. Therefore, the fact that invoices have been sent and paid alone also is no sufficient point to be relied on that the firm and final business decision had already been taken before the relevant priority date.
force prior to the entry into force of the UPCA with regard to acts of past use which lie before 1 June 2023 (see LD Mannheim ORD_11865/2025, UPC_CFI_159/2024 of 11 March 2025 at paras. 100 et seq.).
ORD_598506/2023 UPC_CFI_210/2023 of 22 November 2024, para. 175: 1.000 € per mobile) to be dissuasive, the amount is set to 50 € per square meter.
into account when setting the damages. However, pursuant to Art. 68 (3) (a) UPCA, moral prejudice is only one among other aspects which have to be taken into account. Thus, it could already be questionable whether Art. 68 (3) (a) UPCA allows an award of damages in compensation for moral prejudices up-front and separately from the setting of the overall damages. In any case, the award of compensation for moral prejudice requires special circumstances which go beyond the usual consequences of an infringement suffered by the patent holder and which are not fully compensated by the other remedies. The Claimant did not bring forward any specific fact which would justify such compensation but just rely on general aspects as trivializing the patent and negative effects on general research efforts which come with every patent infringement. Also the reference to Kodak's annual report (Exhibit K24) which names Claimant and Agfa as main competitors and in the next paragraph highlight the SONORA process free plates does not suffice to justify the request as it does not specifically deny the innovative capacity of the competitors, let alone the innovative capacity as incorporated in the patent-in-suit, in a way to justify a request for moral damages. Thus, the request had to be denied.
success of the definite removal. It is the infringer's responsibility how he guarantees such success.
63(2), 82 (1) and (4) UPCA, R. 354.3 RoP (penalty). Reference is made to the considerations supra. As far as requests B.V. also refers to A.III.2 this is considered to be a mere oversight by Claimant. It is furthermore not apparent that the attacked embodiment can be used without making use of the invention so that an unrestricted permanent injunction appears justified.
that potential damage and costs are not recoverable in the event the decision at hand is reverted. They only advance in general terms that the attacked embodiment makes up for a large part of Defendants' manufactured products and that enforcement would lead to massive losses in sales revenues and in profits whereas providing security would not be difficult for Claimant. Defendants did not address specifically why an injunction would inevitably result in the losses claimed as, e.g., easy workaround solutions might be available. The same holds true for the damage resulting from an allegedly forced market exit as just referring to the high competitiveness of the business sector alone is not sufficient. As far as the defendants put forward that the customers had to adjust their printing presses to the use of certain printing plates so that it was not possible to switch at short notice is also too vague as is the reference to a new certification process being necessary. This holds true especially before the background that defendants were able to have customers use multiple versions of the printing plates during the field trails and alleged commercial transactions which had been advanced so as to establish a prior use right. Finally, Defendants did not argue that Claimant's group were not sufficiently solvent to compensate damages incurred with an enforced decision being reverted. In contrast Claimant pointed to it having also considerable assets within the EU, which could be subject to any enforcement measure of Defendants.
COSTS
in particular
whereby the Defendants each reserve the right to disclose the names of their non-commercial customers to an impartial auditor only, chosen by Claimant and paid by the respective Defendant, who, upon Claimant's request, confirms or denies whether a specific non-commercial customer is contained in the disclosure and who, in all other cases, is subject to confidentiality towards the Claimant.
Delivered in Mannheim on 2 April 2025
Presiding judge Tochtermann
Legally qualified judge Agergaard
Legally qualified judge Böttcher
Technically qualified judge Wismeth
For the Sub-Registrar: Kranz, Clerk LD Mannheim
An appeal against the present Decision may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73(1) UPCA, R. 220.1(a), 224.1(a) RoP).
Information about enforcement (Art. 82 UPCA, Art. Art. 37(2) UPCS, R. 118.8, 158.2, 354, 355.4 RoP)
An authentic copy of the enforceable decision or order will be issued by the Deputy-Registrar upon request of the enforcing party, R. 69 RegR.