UPC_CFI_365/2023_Info – FUJIFILM v Kodak
- Court
- Local Division Munich
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Order to provide information Background FUJIFILM obtained an injunction against Kodak. The Court refused to determine a fixed time to provide information and to set a penalty for non-compliance, in order to keep flexibility if defendant should fail to provide proper information in due time. The Court also refused to order that the information to be supplied should be verified with a report of an independent accountant, because it felt that the possibility of severe penalties was enough to make sure that defendant supplied the right information. Claimant now asked the Court to send a warming to the defendant that if the information is not supplied within three weeks, they would forfeit a penalty for up to € 30.000 for each day they would be late. The Court The Court refused the request, as the panel had explicitly decided not to set a fixed time and an amount of penalties. Comment 1. This is an understandable decision. The claimant tried to get the certainty that the Court had already refused to give him. 2. What can be criticized is the decision of the Court in the judgment in the main proceedings. The Court should have set a period and fixed the penalty. In such proceedings, the claimant should in his Statement of Claim ask for a certain period to provide information and to ask for a penalty amount if the information is not (completely) delivered before that date. It is then for the defendant to argue that that period is too short (and the penalty too high), and for the Court to then make a decision so that the parties have certainty. 3. In this case it was up to the claimant to decide what was a reasonable period for supplying the information. Claimant tried to kick the ball back to the Court but the Court returned the ball! 4. As to the refusal in the main proceedings, to order a report of an independent accountant, I am also not convinced. How can the claimant find out whether or not the supplied information is correct? That is certainly not always possible. Such a report at least avoids further disagreements between the parties.
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 3 June 2025 concerning EP 3 511 174 App_20512/2025 CLAIMANT: 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 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 EP3 511 174 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by Judge Prof. Dr. Tochtermann acting as presiding judge and judge- rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: INTENDED Enforcement warning STATEMENT OF FACTS AND REQUESTS: Claimant requested, contained in Claimant’s Notification of intended enforcement, to issue a warning to the defendants as follows: We r e q u e s t , that the UPC —LD Mannheim issues a warning to the Defendant that in the event of any breach of and/or failure to comply with any of the orders set out in Section B.II. (Information) of the operative part of the judgement dated 2 April 2025, ref. UPC_CFI_365/2023after the expiry of a period of three (3) weeks following service of the notification, the respective Defendants shall pay to the court a penalty of up to EUR 30,000.00 per day of delay and/or non-compliance, with any days that have commenced counting as full days. In this context the court referred to para 140 of its decision of 2 April 2025 which reads: “The panel exercises its discretion not to determine a fixed time period for the provision of the infor- mation and not to set an amount of penalty in case of non-compliance up-front, thereby retaining the flexibility to take into account the circumstances of the failure if the Defendants should fail to provide proper information in due time. As regularly, the infringer has to provide the information as soon as possible without undue delay. Also the request to provide information supported by evi- dence verified by an independent accountant had to be rejected as the comprehensiveness of the information rendered is sufficiently ensured by the possibility of severe penalties to be imposed on Defendants, if falsified and/or insufficient information is rendered.” and gave the defendants the possibility to comment, which request to reject the request. For further details it is referred to the briefs and exhibits. 3 GROUNDS FOR THE ORDER: The request to issue a warning is to be rejected. The panel explicitly decided in the main decision that no fixed time period for the provision of the information is set and that no amount of penalty is set up-front. All related points will have to be addressed in the course of an application to impose penalties. ORDER: The application 20512/2025 to issue a warning of 29 April 2025 is rejected. Issued in Mannheim on 3 June 2025 NAMES AND SIGNATURES Prof. Dr. Tochtermann Presiding judge and judge-rapporteur
Key Holdings
- Request for warning/penalty payment refused.
- Consistent with main judgment which declined to set fixed periods.
- Enforcement flexibility maintained.
Tags
- Enforcement
- Information Order
- Penalty Payment