Kodak Holding GmbH and others v. Fujifilm Corporation, UPC Court of Appeal, 3 August 2026, UPC-CoA-28/2026
The Court of Appeal decided two issues still in dispute between the parties in enforcement proceedings, following an earlier Court of Appeal decision (UPC_CoA_312/2025 and others, see here and here) in which the CoA set aside the decision of the Mannheim Local Division and held that Kodak did not infringe the patent in issue.
Kodak had been ordered to pay a penalty of EUR 1,720,000 and Kodak argued that this should be taken as the value of the enforcement proceedings; as enforcement should not have happened at all and all Kodak’s costs should therefore be compensated by Fujifilm. Furthermore Fujifilm had chosen to enforce a decision that was not yet final at its own risk.
Fujifilm argued that the value of the enforcement proceedings should not exceed EUR 1,000,000: the value of the relevant infringement action of four million Euro and it followed the value of the enforcement proceedings should be one million Euro. Furthermore, the penalty payments ordered cannot represent Fujifilm’s interest in the case, as those penalty payments were punitive in nature and depended on the defendant’s behaviour, not the claimant’s interest in enforcement of the decision in the infringement action.
Regarding costs, Fujifilm argued that the appropriate order was that each party should bear their own costs, alleging that most of the costs had been caused by Kodak’s own behaviour, which Fujifilm claimed had been designed to frustrate reasonable enforcement of the order.
The Court of Appeal noted that the parties correctly did not dispute that there was no longer any legal basis for the enforcement proceedings, in view of the Nanostring order of the CoA, which decided that the revocation under Art. 75(1) UPCA and R.242.1 RoP of an order of the CFI granting a provisional injunction will, as a general rule, have retroactive effect. A revoked order must therefore be regarded as never having had any legal effect. It followed that the revocation of an order for a provisional injunction prohibiting the continuation of infringements with a recurring penalty removed the legal basis for a subsequent decision ordering payment of the penalty, even if that decision related to alleged breaches of the provisional injunction prior to the revocation of the (provisional injunction) order.
The Court of Appeal has now confirmed that the same applies if the Court of Appeal revokes a decision of the Court of First Instance in final on the merits proceedings granting orders subject to a recurring penalty payment.
The only remaining issues were therefore the value of the enforcement proceedings and the question of who should bear the legal costs and other expenses.
On the first question, the CoA confirmed that, in accordance with R. 370.6 RoP, the assessment of the value of the relevant action should reflect the objective interest pursued by the filing party at the time of filing the action, i.e. Fujifilm. The rule referred to the action, not the appeal, and the appeal could not be considered a distinct action. It was therefore Fujifilm’s interest on appeal that needed to be assessed. Further, Fujifilm was right that the amount of penalties forfeited by Kodak could not be taken to represent Fujifilm’s interest.
Regarding the legal costs, given that the CFI decision had been set aside and Fujifilm’s requests in the infringement action denied, Fujifilm was to be regarded as the unsuccessful party who should bear the reasonable and proportionate legal costs and other expenses of the successful party.
There was therefore no room for consideration of whether Kodak’s behaviour had unnecessarily increased the costs. The legal basis for the penalty order had been removed, even if the penalty order related to non-compliance with the CFI’s decision prior to the revocation of that decision. The enforcement proceedings should therefore never have happened.
Furthermore, it followed from R. 354.2 RoP that enforcing a decision that is subject to appeal proceedings is at the risk of the party enforcing it.
Accordingly, the Court of Appeal set aside the penalty orders, fixed the value of the enforcement proceedings at EUR 1 million, ordered Fujifilm to bear Kodak’s legal costs, and ordered repayment of the penalties already paid by Kodak.
The Order can be read here.
