In brief
- On 30 January 2026, the Mannheim Local Division of the Unified Patent Court (UPC) issued an order addressing enforcement and procedural issues in the Fujifilm v Kodak printing plate patent dispute, upholding a €1.72 million penalty for Kodak's non-compliance with information, destruction, recall and removal orders.
- The court confirmed that Kodak must provide information on products manufactured in Germany for foreign markets, not just domestic sales, whilst recognising that UPC decisions require recognition by national courts before enforcement in non-UPC Contracting Member States for which the patent has effect (in this case, the UK).
- The court further decided that a penalty or enforcement order can be issued by a Judge-rapporteur alone and does not require the full panel of the court.
Background to the proceedings
This latest decision concerns proceedings in the Mannheim Local Division (MLD) for infringement of Fujifilm's German part of European Patent 3511174 (the case concerning the UK part of the patent was dealt with by the UPC at a separate hearing due to a jurisdictional challenge which has been refused but this decision takes into account that enforcement in relation to the UK will likely be sought). In April 2025 the MLD found the patent valid and infringed, and ordered Kodak to: (a) cease making, selling or offering for sale infringing products; (b) pay damages for acts of infringement in Germany; (c) provide information about past infringements for calculating damages; (d) destroy infringing products; and (e) recall infringing products.
Fujifilm sought a penalty in the event of violations of these orders. The MLD ordered Kodak to pay €50 per square metre for any violations of the injunction in (a) above but refused to stipulate penalties or deadlines for the other orders.
Fujifilm subsequently claimed Kodak had not complied and filed an enforcement notice seeking penalties. In July 2025, the MLD ordered Kodak to pay a lump sum of €100,000, €2,500 daily until 4 August, and €10,000 thereafter for every day of non-compliance. In October 2025, the Court of Appeal set aside the €100,000 order, holding there was no legal basis under Rule 354.4 Rules of Procedure (RoP).
The Court of Appeal permitted Fujifilm to increase the penalty by further application. Two weeks later, Fujifilm requested an increase to €25,000 per day for further non-compliance.
On 20 January 2026, the Judge-rapporteur of the MLD issued a penalty order, requiring Kodak to pay €1.72 million for non-compliance with the information, destruction and recall orders, with a penalty of €25,000 per day for any further non-compliance.
Kodak requested leave to appeal, arguing such an order could only be issued by the full panel and that the order was wrong in its findings as to Kodak's obligations.
The panel confirmed the decision of the Judge-rapporteur
On 30 January 2026, the panel of the MLD confirmed the decision by the Judge-rapporteur made 10 days' earlier.
The panel held that Kodak's appeal could be construed as an application for review by the panel under Rule 333 RoP, avoiding an unnecessary referral to the Court of Appeal which would prolong the proceedings.
The panel addressed comity, jurisdiction, enforcement scope and disclosure requirements. Given Kodak's non-compliance, the panel ordered Kodak to have an auditor verify the completeness and accuracy of the required information.
Judge-rapporteur authority
The panel rejected Kodak's argument that an order issued by the Judge-rapporteur alone, rather than a full panel of the court, was not permitted.
Whilst Rule 354.4 RoP refers to "the first instance panel of the division", the panel held this does not exclusively reserve such acts to the full panel (which is specifically stated in the RoP and referred to as the "panel of the Court", as identified at Rule 1.2(a) RoP and exemplified in Rule 322 RoP). The terminology of Rule 354.4 ensures enforcement applications are handled by the same panel that dealt with the original decision. Requiring all enforcement applications to be dealt with by the whole panel would multiply caseload unnecessarily. Compliance questions can adequately be dealt with by the Judge-rapporteur deciding first, with panel review available under Rule 333 RoP if required, before any Court of Appeal referral.
Territorial limits of UPC enforcement
In this case, the UPC had exercised its long-arm jurisdiction and the MLD previously granted an injunction which covered Germany but also extended to the UK (which is not a Contracting Member State of the UPC).
The panel sought to clarify "fundamental points concerning the interplay of international jurisdiction and the enforcement and enforceability of such decisions", seeking to "de-escalate the current jurisdictional conflict" through "respectful discussion" where courts of different states respect each other's decisions and territorial limitations. The panel was likely referencing the Amazon v InterDigital standard essential patents case, involving anti-suit injunction applications, in the UK, UPC and German national courts (as we reported here). However, the panel made clear that parties bear the burden of helping courts understand foreign court positions.
Whilst confirming broad information obligations, as detailed below, the panel carefully delineated the territorial limits of the UPC's enforcement powers to ensure comity.
Article 34 of the UPC Agreement provides that decisions cover the territory of Contracting Member States where a European patent has effect (here, Germany) and receive automatic recognition and have immediate effect. For foreign territories (here, the UK), UPC decisions require recognition by competent national courts for enforcement, unless bilateral or multilateral treaties exist. International jurisdiction is strictly differentiated from territorial enforceability. The fact that the UPC is prepared to exercise its long-arm jurisdiction but draws the line at enforcing its decisions on third-party jurisdictions such as the UK suggests that some of the sting is removed from its long-arm jurisdiction because, here in the UK, patentees will have to seek approval from the UK courts to enforce such a judgment.
Scope of information obligations for manufactured products
The panel rejected Kodak's argument that only information concerning German deliveries of its products was required. Manufacturing in Germany constituted the infringing behaviour, and therefore profits from German-manufactured products were relevant to damages calculations, regardless of whether the products were sold domestically or exported.
If Kodak were correct, infringers could produce in patent territories without attributable export income being considered in damages calculations. The panel also held Kodak was obliged to obtain information from other corporate group entities, not merely disclose directly possessed information.
Specific non-compliance findings
The panel identified multiple areas of continued non-compliance warranting penalties:
- Non-verifiable quantities
Kodak provided delivery details in non-verifiable form, preventing Fujifilm from calculating damages. Square metre quantities per market were required but not provided.
- Insufficient revenue and margin information
Kodak disclosed only gross sales and net revenue figures, making it impossible to understand its profits and deductions. Reliance on an external auditor's memorandum was insufficient as the auditor did not have full access to the relevant books.
- Insufficient recall of products
Recall letters were not sent to all customers. The panel rejected Kodak's arguments that no recall was needed for insolvent companies or expired products, noting insolvency administrators may continue production and expired products may be used in markets with lower quality expectations.
- Advertising information and sample destruction
Kodak argued it did not commission or pay for advertising, which was managed by other Kodak entities. The panel held this to be irrelevant; Kodak's obligation extended to information from other group entities, especially since Kodak had undisputedly used that advertising material.
Kodak sought to retain samples for evidentiary purposes. The panel rejected this but offered a pragmatic solution: products could be rendered unusable for printing by cutting out small pieces which could be retained as samples.
The penalty amount and proportionality
Noting the absence of guiding UPC case law on enforcement, the panel confirmed any penalties must be proportionate. It upheld the penalties ordered by the Judge-Rapporteur in the total sum of €1,720,000 and the daily penalty of €25,000 for further breaches in order to compel compliance.
The panel held the proportionality period had passed and Kodak could not avoid enforcement by citing unsettled legal questions about whether its disclosure was complete. A prudent party with experienced counsel would have taken all necessary steps to ensure compliance.
The panel granted Kodak leave to appeal in order to allow the Court of Appeal to develop the scarce UPC case law on enforcement measures.
Key takeaways
This decision represents a significant development in UPC enforcement jurisprudence.
- Procedural efficiency: Confirming that Judge-rapporteurs can issue enforcement orders subject to panel review under Rule 333 RoP establishes an efficient two-tier review system before any Court of Appeal referral.
- Territoriality: The decision demonstrates the UPC's nuanced approach to territorial limitations. Whilst UPC decisions require recognition before enforcement in non-Contracting States where the patent is in force, such as in the UK, information obligations still extend to export activities in those territories.
- Strict compliance standards: The substantial penalties send a clear message that parties cannot offer partial compliance. Technical arguments about data format, reliance on limited auditor reports, or corporate structure are unlikely to excuse non-compliance.
How can Mishcon de Reya help?
Our Patents team is experienced in steering clients through complex UPC litigation, cross‑border enforcement challenges and strategic patent protection. If you require more information or support, please contact our Patents team.