UPC_CFI_365/2023 – FUJIFILM v Kodak

Expert Commentary

Application for imposing a fine Facts 1. FUJIFILM requested a (second) enforcement order and the imposition of fines, arguing that Kodak had still not fully complied with the judgment, with respect to recall, provision of information and destruction. 2. A penalty order was issued by the President and Judge-Rapporteur on 20 January 2026. 3. Kodak requested leave to appeal from the Local Division (“LD”), arguing that such an order could only be issued by the full panel and that R. 333 RoP (request for revision) was not applicable. The Court 1. The Court decided that a penalty order (R. 354.4 RoP) can be granted by the Judge-Rapporteur (“JR”) and that R. 333 RoP is therefore applicable, meaning that Kodak is considered to have asked for revision. 2. The Court confirms the order of the JR. 3. As an obiter dictum, the Court held that a UPC decision is enforceable within the UPC only as far as it concerns the UPC. With respect to a (cross-border) decision for outside the UPC, a UPC decision can only be enforced after it has been recognized by the country for which enforcement is sought. Such recognition may be based on an international instrument (Brussels I bis Regulation for the EU, or a Treaty). 4. However, in a situation where the manufacture of infringing products takes place in Germany and information is asked with respect to the sales of such products outside the UPC territory, in order to establish the damages caused by the infringement within the UPC, the UPC can order the disclosure of information about such sales. 5. All arguments raised by Kodak were dismissed, and the order imposing fines of 26 January 2026 was confirmed. Comment 1. In my opinion, one can argue both ways on whether the imposition of penalties must be decided by the full panel. The reference in R. 354.4 RoP to the possibility of an appeal (R. 220.2 RoP), as well as the reference to “the first instance panel of the Division in question” seems to suggest that the full panel should decide – and that was also the intention of the Drafting Committee. However, the Court gives reasons for adopting a different view which are credible and certainly leading to a more efficient way of dealing with such a matter. 2. In earlier comments, I have already expressed the view that the current enforcement system is inefficient and should be reviewed. The judgment itself should state the penalties to be forfeited in case of non-compliance. If non-compliance occurs, the Registry should be able to immediately start enforcement if a party refuses to pay the forfeited penalties, unless the non-compliant party files an application contesting the enforcement within two weeks of the Registry’s enforcement letter. Such an application should then be dealt with by the Judge-Rapporteur of the panel that issued the decision. 3. I disagree with the Court’s view that a judgment of the UPC –for instance granting an injunction for the UK– cannot be enforced as long as such decision is not recognized by the foreign (in my example the UK) court. This would lead to the situation in which a German company infringing in the UK, and sued for that infringement in its home court, could simply continue its infringing sales in the UK following the grant of an injunction, for as long as (potentially expensive) recognition proceedings (in three instances?) in the UK have not yet resulted in recognition of the decision. This would be the end of the cross-border practice and (more implicitly) the efficient enforcement of patents. 4. Apart from these impractical consequences, I also fail to see the legal basis for such a view. It is the UPC that renders the decision – after having determined its jurisdiction – on infringement in the UK, and if it grants an injunction (and there is nothing in principle preventing it of doing so), than such injunction should be obeyed and, if not, enforced. Recognition is only necessary if one seeks to rely on the UK courts to enforce the decision. I emphasize that this reasoning applies after the UPC Court has decided it has jurisdiction. For reasons of comity, it may decide it does not have jurisdiction. As an example of the latter, I can imagine that if the UPC subsidiary of a UK company is infringing within the UPC territory, the UPC is not going to accept jurisdiction against the parent company for infringements in the UK (Article 8(1)of the Brussels Regulation). 5. The decision of the Mannheim Division would mean that if a German citizen causes a traffic accident in the UK with serious consequences for UK victims, those victims could sue in Germany, with the German court applying UK tort law. Yet, if they want to enforce the decision of the German court, they would first need recognition of the judgment by a UK court before being able to collect damages in Germany? Maybe the underlying message of the Division is: you should sue in the UK. However, this example illustrates how impractical that approach would be where the person who caused the traffic accident has only assets (or insurance) in Germany. 6. The Court seems to confuse the international jurisdiction of the UPC, the material law applicable in international cases, and the enforcement of UPC decisions. It would be very strange to not be able to enforce a UPC decision in the territory of the UPC itself! 7. The decision also shows that court orders should be taken seriously and that attempts to avoid (full) compliance by advancing “clever” arguments can prove costly. If one has good reasons against (the application of) an order, they should raise them during the proceedings on the merits, not at the enforcement stage.

Full Decision Text

1 Mannheim Local Division UPC CFI 365/2023 Order of the Court of First Instance of the Unified Patent Court issued on 30 January 2026 concerning EP 3 511 174 CLAIMANT: FUJIFILM Corporation, 26-30, Nishiazabu 2-chome, Minato-ku,Tokyo 106-8620, Japan, represented by: Christof Augenstein, Kather Augenstein Rechtsanwälte PartGmbB, Bahnstraße 16 - 40212 - Düsseldorf - DE electronic address for service: augenstein@katheraugenstein.com DEFENDANTS: 1. Kodak GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Feldmühleplatz 1, 40545 Düsseldorf, Germany electronic address for service: elena.hennecke@freshfields.com 2. Kodak Graphic Communications GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: elena.hennecke@freshfields.com 3. Kodak Holding GmbH, Kesselstraße 19, 70327 Stuttgart, represented by: Elena Hennecke, Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Maximiliansplatz 13, 80333 Munich, Germany electronic address for service: elena.hennecke@freshfields.com 2 PATENT AT ISSUE: European patent EP 3 511 174 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by Judge Tochtermann acting as Presiding judge and Judge-rapporteur, legally qualified judge Sender, as substitute under the substation scheme according to the decision of the President of the CFI of 18 March 2025 for legally qualified judge Böttcher being absent due to leave, legally qualified judge Agergaard and technically qualified judge Wismeth. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: 2ND Application for the imposition of a penalties, application of Defend- ants dated 26 January 2026 STATEMENT OF FACTS AND REQUESTS: 1. Claimant requests in the further course of the enforcement proceedings in its brief of 30 October 2025, which followed after the Panel’s main decision of 2 April 2025 was rendered and after the Court of Appeal decided upon and in part upheld the 1st enforcement order of 23 July 2025 of this Panel (CoA Order of 14 October 2025, UPC CoA 699/2025) as fol- lows: 3 2. Claimant submits, that Defendants still did not comply with the decision of 2 April 2025 and continued their misconduct beyond 23 July 2025, to which conduct the present request is limited, despite Claimant giving proper notice of enforcement. All formal requirements were met. 3. Notification for enforcement of operative part B.II (information) was made on 29 April 2025, notification for enforcement of operative parts B.III. (destruction), B.IV. (recall) and B.V. (removal) on 9 May 2025 and served on that day upon Defendants on that date via the CMS. 4. A certified translation, as confirmed by the Court of Appeal, was furnished for the enforce- ment of B.III alone, since a translation was only necessary in that respect as the enforce- ment of the obligation to destroy attacked embodiments needs the support of national authorities, whereas enforcement of the other parts of the decision lies in the hands of the UPC itself, so that no translation was required. 5. The Court of Appeal explicitly only dealt with facts prior to the impugned order of the Panel, i.e. until 23 July 2025 (KAP E 22). 6. In the eyes of Claimant, Defendants did not comply with the operative part of the decision. Neither the measures taken by Defendants as contained and/or described in their brief of 23 July 2025 (KAP E 16) nor those contained and/or described in their briefs of 2 September 2025 (KAP E 19), 16 September 2025 (KAP E 20 and 21) and 17 November 2025 were suffi- cient. It points out that according to the Court of Appeal the burden of proof that a penalty reinforced order has been fully and timely complied with lies with the defendant (CoA, ibid. par. 43 et seqq.). Defendants had not fulfilled these requirements. 7. The quantities communicated were incomplete at least for the last quarter of 2022 starting with the delivery of 10 October 2022 at first. That these numbers were supplemented later by brief of 2 September 2025 would not advocate against imposing a penalty (CoA Order of 31 May 2025, CoA 845/2024 para. 51, and 2nd headnote). 8. Furthermore, the quantities were not verifiable as Defendants did not explain how many sqm of infringing products were contained in delivered “units” or “quantities” as contained in Annex D. The verification of the delivered sqm of infringing plates was not possible as Defendants set out the manufactured quantities by sqm in Annex A only to rendered infor- mation on deliveries in Annex D in “units” without making clear, how many sold sqm of plates are contained in each “unit” even though this was clearly identifiable from the prod- uct labels. The explanation in Defendants’ brief of 16 September 2025 was insufficient. 9. Importantly, the provided information was limited to offers, deliveries and revenues and margins solely for the German market, which was insufficient as well. Rather, Defendants were obliged to disclose all information caused by infringing activities, which had their roots in the territory of protection of the German part of the patent-in-suit. If profits were made with transactions, such as sales in other countries or services based on infringing products, which were undisputedly manufactured in Germany, these turnovers were 4 caused by the initial infringing activity and had to be disclosed to Claimant as the infringer was obliged to reimburse all damages resulting from selling products that were illegally manufactured in a country with patent protection irrespective of the final point of sale. The arguments of Defendants that they were not responsible for sales outside of Germany was ill-founded. In addition, the information to be rendered had to comprise the exact sales volumes inside and outside Germany for all infringing products produced in Germany. 10. Further, the information on revenues and margins was insufficient as the information was in contradiction to the allegations made in the context of the value of an enforcement se- curity in the main proceedings. Defendants had not given any justification or explanation for the stark contrast between the figures. 11. A further shortcoming was, that the deducted costs were untransparent as Defendants made a variety of deductions without further specification or explanation. 12. The recall again was insufficient as recall letters had not been sent to all customers. It was no sufficient excuse to argue that orders placed before 15 May 2024 had not to be taken into consideration as those plates were not good for printing jobs anymore. 13. As far as Defendants denied any information on advertising with the argument that none of the present Defendants commissioned or paid for advertising regarding Sonora Xtra-3, this was no acceptable excuse as the order was not restricted in that sense. 14. Finally, Defendants could not deny destruction of plates which they intended to possess as samples for evidentiary purposes arguing that those plates were neither designated nor suitable for use on printing presses. 15. Due to these inconsistencies, it was reasonable to impose a verification by an independent auditor upon the Defendants. 16. Defendants request as follows: 5 6 17. Defendants highlight that they have updated Claimant monthly on sent back printing plate precursors in reaction to their recall campaign. 18. In the absence of any guiding case law on enforcement under the UPC regime, any penalty imposed upon Defendants had to be proportionate and had to take this point into consid- eration. Further, if a respondent complied with a decision based on a reasonable interpre- tation that a court later clarifies is not what the decision required, penalties should not begin to accrue until a reasonable period of time has elapsed after the court has provided such clarification to permit respondent to comply with the decision as clarified. 19. As far as Claimant points to missing information on pages 167 to 179 of the over 300 pages of Annex D of KAP E 16, this was a mere oversight and was immediately clarified after Claimant objected to it. 20. Defendants were in compliance with the order under B.II. of the main decision to render information. 21. Kodak GmbH, as the responsible German sales company, did not carve out information on sales to other countries as it only sold the attacked embodiments to customers in Germany. It also did not supply other Kodak entities with the attacked embodiments. Therefore, there was no limitation of the information but the information was complete. 22. Kodak Graphic Communications GmbH had also provided all necessary information in its position as sole manufacturing entity for Kodak Limited. This company had not sold any plates to anyone and therefore did not make any offers and did not generate turnover with the sale of these products. This company was therefore not obliged to disclose generated revenue – nonetheless they had done so by disclosing the attributable fee. 23. Kodak Graphic Communications GmbH moreover had recalled SONORA XTRA-3 plates even though it manufactured the plates for Kodak Limited without ever owning them or the raw materials used for the production. 24. None of the Respondents had generated turnovers and profits outside Germany. 25. Kodak Holding GmbH neither manufactured nor sold any attacked embodiments so that no such information could be generated. 26. Also, the incomparability of the production information contained in Annex A and the in- formation on sales contained in Annex D of KAP E 16 was no breach of the decision. The sqm parameter was not an information element provided to a customer with the delivery as the attacked embodiments were sold in several different package sizes and dimensions referred to as category numbers. 27. Moreover, the revenue and margin information were accurate and confirmed as such by external auditors, which had access to all internal data needed. The numbers were also not contradictory to the submissions made by Defendants in the proceedings on the merits with regard to the enforcement security. The difference could be explained by the different 7 purpose of the enforcement security on the one hand and the purpose of the duty to ren- der information on past acts on the other hand side. 28. Defendants neither commissioned nor paid for advertising regarding the attacked embod- iments so that this information was complete. The advertisement was managed by other entities in the Kodak group. 29. Further, there was no obligation to destroy samples under order B.III. of the decision. 30. There was no obligation to recall attacked embodiments, which were delivered at a time so that the shelf life of maximum ten months already expired, since these products were no longer fit for printing jobs and therefore no printing plate precursors according to order A.I.1. of the decision. Other entities did not receive recall letters for a good reason which was explained to Claimant already (see Exhibit KAP E20/21 and FBD-E 14). The same was true for demo samples. No copies of all recall letters were required. 31. Claimant, in its reply brief, argues that a defendant is obliged to also render additional in- formation that might not be used for the actual calculation of damages afterwards (ex- post). For instance, whether and how certain costs might be deductible was not (yet) a question of the scope of information, but a question on the amount of damages that will be discussed and determined in subsequent proceedings about damages. 32. Further, the damages concerned all benefits based on infringing behaviour even if the mon- etary benefit might materialise abroad. 33. Also profits legally realised by different entities within a group of companies should be in- cluded. Arbitrary shifting of profits with infringing products must be avoided, as otherwise the defendants would economically profit from the infringement. If it was correct, that the shifting of infringer’s profits to other entities would limit the damages, the patent holder would have to sue the entire (worldwide) company for compensating a fair share of the illegal infringer’s profit because as a third party the patent owner cannot have any insights how revenues are distributed within the infringer’s group. Here, it was irrelevant whether other entities abroad legally generate the profits. Rather it was decisive that without the illegal manufacturing of the infringing products, the other entities could not generate these profits. Both, German and abroad entities benefited from the illegal manufacturing. 34. Defendants were obliged to render information on export deliveries. It could not serve as an excuse for the internal patent infringement in Germany that products manufactured in Germany were destined for the export market. The argument, that the legal ownership of the plates rested with Kodak Limited in the UK, was irrelevant in this context and legally flawed under German property law. Even if Kodak Limited was owner of the raw materials, Defendant 2 acquired ownership by law under the applicable Section 950 German Civil Code through the manufacturing process in Germany. Defendants would not have substan- tiated an alleged intention between these two companies. Hence, Defendant 2 was in fact the seller, when transferring title to Kodak Limited. 8 35. Furthermore, Defendants still refused to disclose the exact deductions, which led to the information provided in Annex E, even though they would bear the burden of proof in this regard. All numbers right to the “Gross sales” columns were still undisclosed. Out of eight factors that influence the net revenue only the Gross sales in Annex D was verifiable. There- fore, it was impossible to calculate the infringers profits. Referring to a report of an external auditor was insufficient, especially since it was not based on an audit but only was a review of the calculation submitted to the auditor by Defendants. 36. The Claimant was entitled to information based on square meter of delivered products to be able to calculate damages. Defendants themselves accepted, that the Claimant is not able to calculate the sqm quantities in the absence of knowledge of the different packaging sizes of Respondents. 37. There was no exception to be made for the recall of demo samples and plates of which the indicated shelf life expired. Moreover, those exceptions should have been brought up in the proceedings on the merits. Also, insolvent companies may still use the delivered plates. Further, all recipients of discounts should have received recall letters as well. 38. Defendants responded again with a further brief of 24 December 2025, for which they filed a further application to allow the brief in these proceedings under R. 36 RoP (FBD- E16). In this brief they argue that Claimant tried to get access to information by third parties to which it had no right under the decision. It was without legal basis to ask for information to be provided by different entities within the Kodak group of companies and following sales of third parties as Claimant deliberately chose only to sue the three companies of the Kodak group, which are parties to these proceedings. Moreover, the three Defendants would not have control over other companies of the Kodak group. Defendants would not have access to such information under the control of different companies of the Kodak group. It was incorrect that the external auditor had no access to the relevant internal data (Exhibit FBD-E13 mn. 11 and 12). For further details reference is made to the briefs and exhibits exchanged between the parties. Defendants requested an oral hearing to discuss these points. Claimant did not object to this. The Court, however, did not deem a further oral hearing necessary. The Presiding judge and Judge rapporteur issued a penalty order on 20 January 2026. On 2026, Defendants requested the court to grant leave to appeal regarding said order. Defendants argue that an application under R. 333 RoP was not foreseen but only a (direct) appeal under R. 354.4, 220.2 RoP. The Order could only have been issued by the full panel, not by the Presiding Judge and Judge-rapporteur according to R. 354.4. RoP. As the amount of penalties was unprecedented, re- view by the CoA was justified. The Order disregarded the corporate and operating structure of Defendants. The Order further was wrong in finding the Defendants obliged to render information in sqm concerning the details of deliveries. The Defendants had already sufficiently explained the disclosed date to Claimant. There was no basis that the information be verified by an external auditor. The Order was also wrong in finding that further recall letters had to be sent out. Defend- ants were also not obliged to render information on advertising activities from which they bene- fited. The Order imposed unjustified conditions for the destruction of samples. Finally, the order 9 did not consider all relevant factors in setting the daily penalties to the maximum amount. For clarification of these points granting of leave to appeal was justified. Claimant was invited to comment and put forward in its brief of 28 January 2026 that R. 333 RoP was applicable. A review under R. 333 RoP would fulfill a useful purpose as the CoA was relieved of unnecessary appeals. Therefore, Defendants’ request should be interpreted as a review appli- cation. An appeal was also possible, if that procedural path was pursued. No further pleadings were necessary as the penalty request had seen multiple briefs already and Defendants would only reiterate their respective arguments. Further penalties should be ordered, as Defendants still did not comply with the decision. Claimant does not raise concerns to grant leave to appeal. GROUNDS FOR THE ORDER: The panel exercises its discretion in the same way as the Judge-rapporteur in his Order of 20 Jan- uary 2026 and supports all arguments, on which said Order is based. It is noted that Defendants’ opinion, that an Order issued by the Judge-rapporteur alone was not allowable, is not supported. The Panel has seen the Order of the CoA, to which Defendants refer. However, the Panel respectfully invites to reconsider such reading of R. 354.4. RoP. Rather, Rule 354.4 RoP makes clear in its last sentence, that , “after having heard both parties the Court may make an appropriate order which may be subject to an appeal pursuant to Rule 220.2.” Where the Rules of Procedure refer to “the Court”, Rule 1.2(a) RoP states that the respective act may be performed by the presiding judge or the judge-rapporteur of the panel. An exception only applies where such act is “exclusively reserved for a panel of the Court”. R. 354.4. RoP is not such a case as its last sentence makes clear. The Panel sees that R. 354.4 RoP, in its first sentence reads that in case of non-compliance “the first instance panel of the division in question” may decide. This does not mean, however, that such act was exclusively reserved to the “panel of the Court” in the sense of R.1.2 RoP. First, Rule 354.4. RoP does not speak of the “panel of the Court” but of the “first instance panel of the division”. In the whole Rules of Procedure, Rule 354.4 RoP is the only place, where the Rules refer to “first instance panel of the division”. In contrast, in all other cases, the Rules of Procedure, refer to the “panel of the Court”, where the Rules want to reserve a decision for the whole Panel (see e.g. R. 320(1) RoP) or just to “the panel” (see e.g. R. 37.1 to .5 RoP, R. 75.3 to .6 RoP, 76.3 RoP, R. 96 RoP, R. 102 RoP, R. 135.2 RoP, R. 254 RoP, R. 321.2 RoP, R. 322 RoP, R. 333.4 RoP, R. 363.1 RoP. In contrast, the terminology “panel of a division” is only used, where the respective Rule deals with the court-internal distribution of cases (see R. 17.2 RoP, R. 92 RoP). This is the meaning of Rule 354.4 RoP first sentence. The rule wants to make clear, that an enforcement application is to be handled by the same Panel – in the sense of organizational unit of the CFI – which dealt with the decision on the merits or the PI as the case may be. The ratio legis is that the resources of the CFI have to be used efficiently and therefore the division and of that division the panel, which already knows the case, should deal with eventual follow-up enforcement questions. Therefore, the rule was introduced in the final 18th draft of the RoP (the rule was not included in the 17th draft of 2014) to ensure that a party may not file an application for enforcement in a different division, arguing that it is “one CFI” and therefore enforcement proceedings can be brought before any convenient 10 division or if more than one panel exists at a division, with a different panel. The provision there- fore solely has an organizational purpose. There also is no reason, why an application for enforcement should always be dealt with by the whole panel. If that is the case, the CFI will need even more judges to deal with its cases appropri- ately as the caseload is multiplied, if all judges of the panel have to get involved for potential con- secutive steps, which may or may not follow. The question, whether the operative part of the panel decision or order has been complied with, can also adequately and more efficiently be dealt with, if the Judge-rapporteur decides upon the application first and if the Panel only gets involved upon application for review under R. 333 RoP. Moreover, the Court of Appeal is relieved of unnecessary appeals, if there is a first instance review by the panel. Also the fact that R. 354.4 RoP refers to R. 220.2 RoP does not justify a different result. This makes clear that any enforcement order may be reviewed by the CoA, but does not exclude a panel re- view under R. 333 RoP beforehand. Also, the wording of R. 333 RoP does not militate against this reasoning. R. 333 RoP does not have to be restricted to “case management decisions or orders” in a sense that only orders, which are of organizational purpose or which move the proceeding to a further stage can be subject to a review by the panel. Rather “case management” can be under- stood broadly so that it also encompasses orders, which deal with the question, if a decision or order has been complied with. Finally, also the aspect that, at the enforcement stage, compliance with the order or decision of the whole panel is subject to examination, does not mandate an immediate decision by the full panel. Where a follow-up part of the CFI procedure, which does not necessarily follow, but is sub- ject to a respective application is concerned, the Rules of Procedure explicitly state it, if such pro- cedure is to be run and decided by the whole Panel as it is the case for the determination of dam- ages., R. 135.2 RoP. No such rule is in place for enforcement proceedings. The Panel, further, in its first enforcement order of 23 July 2025 explicitly stated, in the first para- graph of its grounds for the Order that “this order […] is referred to and decided by the whole panel in order not to prolong these enforcement proceedings any further”. Thus, the Local division Mannheim already expressed that it is of the opinion, that an enforcement order can also be issued by the Judge-rapporteur. This has not been subject to any remark from the side of the Court of Appeal in its Order of 14 October 2025, UPC CoA 699/2025. In the case at hand, the application of Defendants aims at getting access to the Court of Appeal so that the legal questions addressed may be clarified by it. The request is of the opinion, that the Judge-rapporteur has to grant leave to appeal for this and that a review procedure is not possible. As laid out before, this opinion is erroneous but the application can be construed so as to be an application for review by the panel, if the court deems this intermediate step necessary. Further- more, in the cited Court of Appeal case, the case was referred back to the respective division for a panel decision. Therefore, the present panel order serves a useful purpose as it avoids an unnec- essary referral, which would prolong these proceedings and would lead to identical results as the Panel confirms the Order of 20 January 2026 for the reasons, which follow: 11 General considerations of enforcement with respect to Non-UPC territory 39. Against the backdrop, that in this case a first decision of 2 April 2025 was delivered con- cerning the German part of the patent-in-suit, to which the current enforcement applica- tion relates, and a second decision of 18 July 2025 was delivered concerning the UK part of the patent-in-suit after a stay of proceedings in light of the ECJ’s case BSH Hausgeräte and taking into consideration that enforcement requests, which are based on the UK decision of 18 July 2025 are also likely to follow, it appears appropriate to clarify fundamental points concerning the interplay of international jurisdiction and the enforcement and enforcea- bility of such decisions. 40. This is not only of fundamental importance for the case at hand, but also so as to de-esca- late the current jurisdictional conflict and to enter into a respectful discussion on equal terms on the matters, which lie before the various courts, in an attempt to resolve them in a way, where courts of one state respect the decisions of the courts of another state and where each court accepts the territorial limitations of each court’s decisions. This appears even more so since the European Court of Justice, when deciding the questions of interna- tional jurisdiction under the Brussels Regulation, was not called upon to decide the follow- up questions in the respective case, but the question concerning the proper construction of European Law on jurisdiction on the merits of a case. 41. As it was the present Local Division of the UPC, which rendered injunctive and further relief concerning a Non-EU territory, here the United Kingdom, for the first time, and as the im- plementation of the ECJ’s decision into the (national) court practice is still developing as the proceedings concerned proceed, this Order takes the liberty to elaborate upon the un- derlying questions on a broader level as the Panel believes this case offers a reasonable opportunity for it. 42. When doing this, it cannot be emphasized enough, that the only basis for such decision has to be the applicable law and not concerns, how the decision may be received by the inter- ested circles and whether or not they will be motivated by the decision to bring further cases to this court or in another appropriate forum. As there is very limited opportunity for foreign courts to engage in an exchange so as to understand each other’s point of view better, the parties and the representatives bear the responsibility, under the applicable ethical codes of conduct, to help the respective court to properly understand the position of a foreign court and its applicable law and to avoid strategically exploiting lack of such knowledge. It is emphasized, that this is not mean to be an accusation directed against any concrete representative in any proceeding before this Division. It cannot be in the interest of the parties as well to waste time and money with measures and counter-measures in the various jurisdictions concerned. Rather the courts should be supported in arriving at sound decisions based on a proper understanding of the foreign law and in being able to concentrate upon the substance matter of the dispute and help to resolve it. 12 Shortcomings of Defendants concerning the German part of the patent-in-suit 43. That being said, the present case has to be resolved and considerations of comity have to be powerfully engaged: Information on products manufactured in Germany for the export market missing 44. Defendants cannot be heard with their opinion, that only information concerning deliveries on the German market is owed under the decision and also profits legally realised by dif- ferent entities within the Kodak group of companies in consequence of the manufacturing of the Defendants in Germany is to be included. Claimant’s point that, if it were correct that the shifting of infringer’s profits to other entities would limit the damages, the patent holder would have to sue the entire (worldwide) company for compensating a fair share of the illegal infringer’s profit, is exactly the reason, why in general and in this case the Claim- ant will sue the manufacturer as the source of the attacked embodiments and not all dif- ferent entities of the respective group of companies in parallel. It is the manufacturing pro- cess in Germany, where the patent-in-suit is in force, which has been found to be infringing behaviour. Therefore, it is evident that the profits, which are causally linked to the manu- facturing on the internal market, are relevant information as they contribute to the dam- ages, which will have to be calculated after the information has been rendered. 45. At this stage, considerations of comity and territorial scope play a significant role. As a court’s decision is only immediately enforceable without further need for recognition in its own territory. In the case of the UPC this is the territory of the UPC members states. Ac- cordingly, Art. 34 UPCA states that decisions of the court shall cover, in case of a European patent, the territory of those Contracting Member States for which the European patent has effect. The decision or order of the UPC, in consequence, does not need formal recog- nition by the courts of the Contracting Member States of the UPCA. This is the logical con- sequence of the UPC being established as a court common to the Contracting Member States (Art 1 UPCA, Art 71a Brussels Ia Regulation, see Tilmann/v Falck/Dorn Art 34 UPCA mn. 29). A decision of the UPC is as good as a decision of the national courts of the Con- tracting Member States and receive automatic recognition and have immediate effect. 46. This is not the case with respect to foreign territories. In such territories, the decision of the UPC has to be recognized by the competent national courts, which decide upon the recognition of the decisions of foreign courts. Only if bilateral or multilateral treaties on recognition and enforcement exists, such decisions may be, subject to the respective pro- visions in the treaties, be enforceable without the need for further recognition. 47. If, however, no such treaty exists, a decision of the UPC, irrespective of it being rendered in the context of a SEP case or another patent case, is only enforceable and will only be enforced, after the UPC’s decision was recognized by the competent national courts in ac- cordance with the national principles to be applied. Therefore, the question of interna- tional jurisdiction of the UPC is to be strictly differentiated from the question, whether the decision, for which the UPC accepted international jurisdiction – be it under the standards of the ECJ’s judgement in the case BSH Hausgeräte or for other reasons – is enforceable in 13 the territory concerned (see as one example from the German commentaries Stein/Jo- nas/Roth on § 328 German Code of Civil Procedure para 1, and as one general example for this generally accepted principle of international civil procedure German Federal Court of Justice, Decision of 1 June 1983 - IV b ZR 386/81, NJW 1983, p. 1976, 1977). This is differ- ent, if the Brussels Regulation is applicable, as its Art 45(3) foresees that the question, if the foreign court of another EU Member State correctly accepted its jurisdiction, is not to be re-evaluated by the court of recognition (see Schlosser/Hess EuZPR, Art 45 Para. 37). In consequence, in the absence of automatic recognition of the UPC’s decision due to multi- or bilateral treaties as the case may be, the UPC’s decision will only be enforceable, e.g. by imposing penalties, where a party is accused of not respecting the injunction, after the UPC’s decision was recognized by the courts of the respective territory. Before, any request for enforcement is premature. Whether only time periods of disobedience after a decision of the national parts to recognize the UPC’s decision can be taken into consideration for determining the amount of penalties or not, will have to be decided on a later occasion. 48. This is true not only for the injunctive relief granted, which may neither be directly enforced on foreign territory by ordering and enforcing e.g. the shutdown of manufacturing prem- ises, nor indirectly by imposing penalties, but also for further remedies granted. 49. An exception may apply, where the effects of the enforcement do not affect foreign terri- tory, e.g. where a defendant, like in this case, has its principal place of business in the ter- ritory of the UPC Contracting Member States and has to render information, which con- cerns activities on foreign territory. In such a scenario, it may well be possible to order such defendant to render information and to impose penalties. This is because the entity con- cerned has its place of business in UPC territory, does business here and it is only the effects of that business, which result in damages in the foreign territory. For further remedies granted in the operative part of the decision and details, a decision will have to be made based on the individual facts of the case. 50. In the case at hand, the decision on the merits ordered in its operative part B.II, that De- fendants have to render information stating i.a. the quantities produced, manufactured and delivered and in particular manufacturing quantities and times as well as the deliveries and turnover, gross margin and the contribution margin generated by Defendants with the sale of these products. All this concerns the infringement in Germany as defined under A.I. of the operative part of the decision. As the manufacturing takes place in Germany, the respective details have to be rendered and are not limited to attacked embodiments, which are delivered on the German market. Also attacked embodiments produced for export are still produced in Germany and the production was found to be infringing the German pa- tent-in-suit. Therefore, the Defendants are wrong in arguing, that they would only have to disclose deliveries in Germany. The Defendants were only able to generate income because of the manufacturing in Germany. If Defendants were right, a patent infringer could pro- duce in a territory, where a patent is in force, without having to fear that attributable parts of the income resulting therefrom are taken into account when calculating damages, be- cause that income is generated abroad. 14 51. Respecting the principle of comity and accepting that a decision of the UPC only has imme- diate effects in the UPC member states and – in the absence of multi- or bilateral treaties – needs to be recognized in a foreign state first, the generated profits, which can be at- tributed to the manufacturing in Germany will then have to determined on the basis of an evaluative consideration, which limits the amounts collectable by enforcing the present decision to those amounts, which concern infringement of the German part of the patent- in-suit. So as to be able to determine these amounts and so as to be able to decide, which of the possible forms of calculations of the damage is chosen, rendering these details is also necessary and owed under the decision. 52. Defendants are also wrong in their premise, that a defendant is only obliged to render such information, which it possesses itself or which is in possession of a subsidiary of such de- fendant. In the first place the defendant, who is a party to the proceedings, is obliged to retain such information from the other entities of the same group of companies and exer- cise its possibilities to influence them so as to provide the information. Defendants did not bring forward, that they would not possess the requested information themselves, nor did they report on any attempts to retain such information, if not in their hands already, from other Kodak group entities. It is also not of importance in this context, whether or not the Defendants to these proceedings have legal ownership of the attacked products or whether the final turnover is entered into their books or into the books of another entity of the Kodak group like Kodak Limited. 53. As introduced by way of reference to case law of the German Federal Court (BGH, Decision of 7 May 2024 - X ZR 104/22; GRUR-Int 2025, 257, par. 24ff. – published in EN), the under- lying argument is supported, that the infringer is obliged to render accounts, if patent-in- fringing offers or manufacturing leads to deliveries or other acts abroad. Of course, if the Claimant can also assert claims against the infringer for acts committed abroad, this may have the consequence that these acts are included several times in the calculation of dam- ages. In this case, a value-based attribution must be made between the realised profits and the individual acts on the relevant territory. If such assessment is done, it does not lead to a territorial extension of the decision and the patent protection (here of the German part of the patent-in-suit) ,which would contradict the principles of territoriality and comity, because the claim for information regarding follow-up activities abroad is granted and in consequence enforced solely for the purpose of calculating damages within the territory of the decision. 54. As it is undisputed, that Defendants fell short of providing this significant part of infor- mation owed under the decision, the penalty order as granted is justified for this evident deficiency alone. 55. Defendants are wrong, if they argue that the Order of 20 January 2026 would disregard Defendants corporate and operating structure. Rather, the Defendants disregard their ob- ligation under the decision and try to shift responsibilities within their group of companies disregarding the decision of this panel. Incomplete quantities last quarter of 2022 15 56. Against this backdrop, it does not play a significant role, that Defendants undisputedly fell short of communicating the quantities for the last quarter of 2022 for a certain time due to negligence. Non-verifiable quantities of deliveries 57. In contrast, it is a further considerable shortcoming, that Defendants only rendered deliv- eries, which cannot be verified by Claimant. It is an obvious shortcoming only to share the square meter of produced printing plate precursors but not to share, how many sqm have delivered to which markets. From indicating the units by way of reference to certain inter- nal codes consisting of multi-digit numbers, Claimant cannot derive the quantity in sqm, which were actually delivered, as it does not have the information, how much sqm go into which “unit”. As – for the calculation of damages and for making the choice between the methods to calculate them – the Claimant needs to verify, how much of the sqm, which were manufactured in Germany, went into the internal market and how many sqm went to foreign markets and to which of them, the information rendered is insufficient. 58. To avoid further shortcomings, it is to be remarked, that – as the operative part of the decision speaks of the same “quantities” in B.II.2, first and second bullet point and as also A.II refers to sqm and taking into account, that defendants themselves reported on re- turned plates in sqm – the quantities will have to be rendered in sqm. It is not the task of Claimant to calculate the sqm based on a disclosure by Defendants of how many sqm go into which “unit”. Moreover, uncertainties may arise, as the amount of sqm per dedicated “unit” may have changed over time as package sizes may have been changed. What is owed under the operative part of the decision is a clear indication of how many sqm were deliv- ered in which specific delivery to which market. The information must be provided in a way that is easy to understand and follow. 59. Defendants’ argument is ill-founded that the Order of 20 January 2026 would have in- vented new obligation not encompassed by the decision. What was and is order is to render information in a comprehensive and consistent way. The impugned Order addresses this point based on Defendants providing manufacturing information on sqm-basis and finding inconsistency, when other factors such as unclear “unit”-sizes are used, when reporting on deliveries. Furthermore, that sqm is an appropriate unit, was already subject to the deci- sion on the merits (see mn. 131 and operative part A.II.). Insufficient revenue and margin information 60. Furthermore, the margin and revenue information rendered thus far is insufficient. It is undisputed, that Defendants did not disclose the details and basis of the factors they de- duced, i.e. the numbers right to the “Gross sales” columns. It is not sufficient, to refer to the memorandum of an external auditors for confirmation, if – like in this case – the auditor did not have full access to the relevant books. First, the work of the external auditor in his words “does not represent a statement as to whether and to what extent profit margins were achieved with the production and/or sale of Sonora Xtra-3 printing-plates at the level of other than the aforementioned entities in the global Kodak Group or from the perspec- tive of the Kodak Group as a whole”, i.e. the numbers are insufficient for the reasons ex- plained supra. Further, that work was based on limited material as provided by Defendants 16 only and as listed in mn. 11 of the report (see FBD-E13), not on comprehensive numbers to which the auditor would have had free access. Thus, the numbers disclosed were chosen by Defendants alone as confirmed in mn. 12, 15, 17, 23 of the report (see FBD-E13). So as to limit their liability, the auditor therefore explains in the concluding remarks (see FBD- E13 mn. 35), that the profit margins are “comprehensible and mathematically plausible, assuming that the input parameters are correct”. This is not sufficient as a replacement for rendering the complete information. 61. The Panel confirms that the explanation given so far is insufficient. Insufficient recall 62. Again, it is undisputed, that recall letters were not sent out to all customers, which received the attacked embodiments. The justifications given by Defendants are insufficient. First, also attacked embodiments, which were delivered to now insolvent companies, have to be recalled. Depending on the applicable insolvency regime, the insolvency administrator or trustee or the debtor in court-supervised self-administration may still decide to continue production with the plates, if that makes economic sense. 63. Furthermore, it is not to be accepted, that no recall letters were sent to customers just because allegedly the shelf life of ten month already expired. The Defendants refer to a decision of the Higher Regional Court Düsseldorf in a completely different scenario, where certain ingredients had not to be used due to the regulatory applicable norms. In the case at hand, it may well be – as alleged by Defendants – that German customers, who want to guarantee stellar quality of their printing products, would not use such plates. But still such plates may be used for printing jobs for other markets, where the ordinary customer may not complain about a lower quality level, if the products are then offered at discount prices. 64. Also, Defendants’ brief of 26 January 2026 does not lead to another result. It is rather plau- sible that printing plate precursors delivered to insolvent companies may be used. Even if this might not be the case in individual cases, it is not comprehensible why it should be a tort on Defendants to inform a former business partner, who is off the market as a cus- tomer anyway. The same considerations are true for customers, who may still have older printing plate precursors on stock. Weighing the interests of the parties, Claimant’s interest to have infringing products off the market prevail. Insufficient information on advertising 65. For the reasons explained supra, the argument, that none of the present Defendants com- missioned or paid for advertising regarding Sonora Xtra-3 is not relevant, so that the De- fendants are in breach of their obligations under B.II. of the decisions. Their obligation is not limited to the information readily available without reaching out to other entities of the Kodak Group – especially since the Defendants undisputedly used that advertising ma- terial. The reiteration of their argument in the brief of 26 January 2026 does not justify another result. 17 Destruction of samples 66. Finally, Defendants cannot deny destruction of plates, which they intended to possess as samples for evidentiary purposes. There is no justifiable reason evident and also not ex- plained, for which “evidentiary purposes” that should be necessary. If so, the Defendants can still destroy their samples in the sense, that it is physically excluded that the samples can be used for any future printing jobs, e.g. by just cutting out small pieces of DIN A3/4 size and engrave the words “SONORA X-TRA 3 sample”, which may be kept, but where it is excluded that they could be used for any future printing job. 67. The Defendants criticise the Order of 20 January 2026 without good reason. The Order offers a pragmatic approach, who to safeguard the interest of Claimant and still allow De- fendants to keep parts of the plates for evidentiary purposes as described. Request for auditing 68. Under the circumstances at hand, it was necessary to order Defendants to verify and con- firm the completeness and accuracy by a certified sworn auditor as requested by the Claim- ant (see CoA Order of 14 October 2025 UPC CoA 699/2025 mn. 43 et seqq.). Still, the choice of the auditor is to be left to the Defendants, especially since Claimant did not raise any doubts as to the independence or impartiality of the external auditor appointed by the Defendants, but only criticizes that the auditor was fed with insufficient information. 69. As the possibility to have an auditor confirm information is suggested by the CoA in the cited order in these proceedings, it is not comprehensible, why Defendants still believe such measure was not in line with the applicable law. No further order on duties under the decision 70. However, it was sufficient to detail in the grounds of this orders, where the shortcomings lie, so that it was not necessary to order explicitly again, that Defendants have to submit copies of all recall letters. It is sufficient that this becomes abundantly clear from the grounds. Also, all further points of question have been dealt with in this order. Setting proportionate penalties 71. Claimant’s application had to be accepted and a penalty be imposed upon Defendants to punish their shortcomings and disobedience with the operative part of the decision of the UPC Claimant seeks to enforce and to coerce Defendants to comply with what had been ordered by the Court. As these proceedings have already seen a first enforcement order and as now only dates after this first order was issued are concerned, taking into account the extent of disobedience, the daily penalties as contained in the first order and as ac- cepted in the modified form by the Court of Appeal had to be ordered and had not to be reduced. 72. For reasons of proportionality (cf. Art. 67(1) UPCA), the party obliged to communicate the information must be granted a reasonable period of time, taking into account the specific circumstances of the individual case. In determining the length of this period, particular consideration must be given, amongst other, to the scope of the information required to be provided, the time period to which the disclosure relates, and the resources available 18 to the obliged part (CoA UPC CoA 845/2024, APL 68523/2024, UPC CoA 50/2025, APL 3697/2025 , Order of 30 May 2025 – Belkin v. Philips). This period is well over in the case at hand and Defendants cannot try to evade enforcement by pointing to allegedly yet unsettled legal questions, if the incompleteness flies into the face of every reasonable party. 73. The Defendants are still not complying with the final decision on the German part of the patent-in-suit. Due to the multiple and evident shortcomings, which are detailed supra, and taking into consideration that the Panel already issued a first penalty order, which was up- held in part by the Court of Appeal and only revoked in other parts for formal reasons, it is adequate to impose the daily penalty payments as contained in the first order as modified in its details by the Court of Appeal’s order. As considerable time has passed since 23 July 2025, the date of the first enforcement Order and the starting date for the enforcement request at hand, a considerable amount of penalties has accumulated over time. However, this is the consequence of the evident consequence of Defendants’ shortcomings. The de- ficiencies are so evident, that there is no room to take into consideration, that the current case law of the UPC is not very rich on enforcement issues. A prudent party, advised by experienced defense counsel, would have taken all necessary steps so as to avoid any re- maining doubts, whether or not the decision was properly complied with or not. This is not the case here. 74. Therefore, so as to coerce Defendants to comply with the operative parts of the final deci- sion Claimant seeks to enforce in these proceedings, a penalty of 2.500 € per day is set for each day of non-compliance on 24 July 2025 extending until 4 August 2025. This is 12 cal- endar day times 2.500 €, which accumulates to 30.000 €. 75. For every day of further non-compliance with this order after 4 August 2025, the penalty is set to 10.000 € per day. For the time from 4 August 2025 to 20 January 2026 this makes 169 calendar day times 10.000 € which accumulates to 1.690.000 €. 76. In total the penalties payable to the court are set to 1.720.000 €. 77. Fur any further disobedience, the penalty to be paid is increased to 25.000 € per day. In this context it may be worth mentioning, that the “request” of Claimant is only to be un- derstood as a suggestion to the court as the setting of penalties is done also in the interest of the court and can therefore not be limited by the request of the Claimant concerned. 78. In consequence, Defendants’ requests had to be rejected. 79. The Panel confirms the amount of damages to be proportionate also in the light of the arguments of Defendants presented in the brief of 26 January 2026. It was Defendants de- liberate decision still not to comply with the Panel’s decision even after a first enforcement Order was issued. It is therefore not the point to complain, that considerable time has passed. If they would not have been willing to take that risk, the could and should have complained to the CoA that a daily penalty is inappropriate in the case at hand. Further- 19 more, Defendants submitted extensive briefs, which made appropriate time limits for com- ments necessary and even sent in further unsolicited briefs and even requested an oral hearing. That considerable penalty amounts could accumulate was a very previsible result. 80. Furthermore, Defendants cannot excuse themselves by arguing that they did not violate the injunctive part of the decision on top. Enforcement of operative part A.I/II. is not sub- ject of these proceedings. It is clear from the CFI as well as from the CoA order, that the regime for further disobedience already is triggered by further continuation of Defendants unwillingness to comply with the parts of the decision, which were subject of these en- forcement proceedings. As the extent of incompleteness is as considerable as outlined above, setting the maximum daily penalty was well justified. COSTS 81. Since the Claimant is essentially successful from an economic point of view, the Defendants have to bear the costs of the proceedings. LEAVE TO APPEAL 82. Leave to appeal is granted as the present case may provide the Court of Appeal further opportunity to develop the scarce case law on enforcement measures before the UPC. ORDER: 1. The Panel confirms the impugned Order of 20 January 2026. 2. The Request of Defendants of 26 January 2026 is rejected. 3. Leave to appeal is granted. Issued in Mannheim on 30 January 2026 NAMES AND SIGNATURES 20 Presiding judge Tochtermann Legally qualified judge Agergaard Legally qualified judge Sender substituting for legally qualified judge Böttcher Technically qualified judge Wismeth

Key Holdings

• A penalty order (R. 354.4 RoP) can be granted by the Judge-Rapporteur, making R. 333 RoP (revision) applicable.
• UPC decisions are enforceable within the UPC territory; for outside the UPC, recognition by the foreign country is generally required.
• The UPC can order disclosure of information about sales outside the UPC territory if it's to establish damages caused by infringement within the UPC.
• Arguments against an order should be raised during the proceedings on the merits, not at the enforcement stage.

Tags

• Appeal
• Cross-Border
• Damages
• Enforcement
• Jurisdiction
• Penalty Payment

Related Cases

• UPC_CFI_850/2024 – ZTE v Samsung
• UPC_CFI_2045/2025 – Amazon v InterDigital
• UPC_CFI_132/2024_July09_OralPrep – Total v Texas Instruments
• UPC_CFI_340/2023 – Rematec v Europe Forestry
• UPC_CFI_134/2025;UPC_CFI_660/2024 – Centripetal v Palo Alto