In its decision, the Mannheim Local Division (LD Mannheim) of the Unified Patent Court (UPC) issued an enforcement order imposing penalties for Kodak’s continued non-compliance with previous court orders. In doing so, the UPC confirmed its nuanced approach to the territoriality.
The court’s decisions are immediately enforceable without the need for further recognition only within the UPC territory, while the enforcement of non-compliance in non-UPC territories (such as the UK) first requires recognition by the respective national courts.
However, that limitation does not apply to the obligation to render information on infringing activities originating in the UPC territory (and designated for non-UPC territories), including the manufacture of infringing items for export. Furthermore, the court clarified that not only the panel but also the Judge-rapporteur has the authority to issue enforcement orders.
Background
Fujifilm sued several Kodak entities, each domiciled in Germany, for infringement of EP 3 511 174 (the EP) concerning planographic printing plates. One of the defendants was manufacturing and exporting the plates to a UK company for finishing.
On April 2, 2025, the LD Mannheim found the (amended) German designation of the EP to be valid and infringed. The court granted an injunction and ancillary orders for disclosure of information regarding distribution channels, destruction, recall and removal of infringing products from commerce. However, no penalty orders were attached to the ancillary remedies.
On July 18, 2025, the LD Mannheim upheld the UK designation of the EP in amended form, on an inter partes basis, and granted a permanent injunction covering the UK. Please see our previous article for further information on the jurisdictional aspects of this decision.
Fujifilm filed an enforcement notice seeking a coercive penalty payment claiming that Kodak had not complied with the ancillary orders within the set time period. On July 23, 2025, the LD Mannheim ordered Kodak to pay a lump sum penalty of EUR100,000 and an additional penalty of EUR2,500 per day of continued non-compliance with ancillary remedies, increasing up to EUR10,000. Fujifilm was also permitted to request an increase in the daily penalty, which the claimant consequently did and requested a payment of EUR25,000 per day.
However, in October 2025, the Court of Appeal held that UPC penalty payments must be based on a prior penalty court order, specifically reinforced with the threat of forfeiture of a penalty sum for non-compliance. Because the LD Mannheim had not imposed a penalty order for non-compliance with the ancillary measures, the lump sum penalty was set aside, and new daily penalties were set for future non-compliance. Please see our previous article for further details on the framework for penalty payments in UPC enforcement proceedings.
Enforcement order
On January 30, 2026, the LD Mannheim issued a further enforcement order, confirming the penalty order issued by the Judge-rapporteur ten days prior to the order of the panel. In its reasoning, the LD addressed the following:
a. Authority of the Judge-rapporteur
The court rejected Kodak´s interpretation of R. 354 and clarified that the Judge-rapporteur alone has the capacity to issue penalty orders. The wording “the first instance panel of the division” does not establish an exclusivity of the “panel of the Court” in the sense of R.1.2. The rule aims to concentrate enforcement applications within the same panel that dealt with the original decision, thus improving the efficiency of the court. Such orders remain a subject of panel review under R. 333.
b. Non-compliance with ancillary orders
While confirming broad information obligations, the LD Mannheim highlighted multiple deficiencies in Kodak’s compliance with its April 2025 ancillary orders. These included:
- a failure to provide information on products manufactured in Germany for export. All profits causally linked to infringing manufacture within the UPC territory had to be disclosed, even if those profits were realized by different foreign entities within the Kodak group. A defendant is obliged to obtain such information from other entities within the same group and to exercise possible means of influence on them to provide this information.
- rendering non-verifiable information on deliveries. Information must be provided in a way that is easy to understand and to follow by the other side.
- providing insufficient margin and revenue information, based on the memorandum of an external auditor who did not have full access to the relevant books.
- a failure to recall infringing products that were delivered to insolvent companies or past their shelf life.
- a failure to provide sufficient information on advertising that was commissioned and paid for by other group companies. The defendants needed to reach out to other Kodak entities for such information, especially because they had used that advertising material.
c. Territorial scope of enforcement
While under specific circumstances the UPC may assert long-arm jurisdiction over non-UPC states (e.g. under the standards of BSH Hausgeräte), this is to be strictly differentiated from the question of enforcement. The LD Mannheim considered the implications of comity and territorial scope, leading to a nuanced approach. It confirmed its view that UPC decisions are immediately enforceable (e.g. by imposing penalties for not respecting an injunction), without the need for further recognition, only within the UPC territory. This follows the standard interpretation of Article 34 UPCA.
With respect to cross-border enforcement in a non-UPC member state, a UPC decision requires recognition by the competent national court in order to be enforceable (unless there is an appropriate treaty in place for automatic recognition).
However, this did not apply to the request to render information regarding activities outside the UPC territory. The LD Mannheim stated, “that the infringer is obliged to render accounts, if patent-infringing offers or manufacturing leads to deliveries or other acts abroad.”
In the view of the court, the principles of territoriality and comity are not contradicted by the extensive information obligation, as it only serves the purpose of assessing damages due to the infringing actions within the UPC territory. In order to fulfil the obligation, the defendants are also required to obtain information from entities of the same group, even if they are not situated within the UPC territory.
Ultimately, the LD Mannheim imposed a daily penalty of EUR2,500 from July 24, 2025 to August 4, 2025 (totaling EUR30,000) then a daily penalty of EUR10,000 from August 4, 2025 to January 20, 2026 (totaling EUR1.69 million). The total penalty amounted to EUR1.72m and daily penalties were increased to EUR25,000 for continued non-compliance.
Key takeaways
- Judge-rapporteurs have the necessary authority to issue enforcement orders, which remain a subject of panel review.
- UPC decisions are immediately enforceable within the UPC territory. Enforcement in non-UPC territories requires the UPC decision to be first recognized by the courts of the respective territory.
- Claimants should request penalty orders (e.g. when filing the claim or later), specifying both the penalty amount and compliance timeframe. No penalties can be imposed for non-compliance without a prior penalty order.
- Disclosure information must be provided in consistent, verifiable formats. External auditor confirmations are insufficient if they are only based on defendant-selected data. Defendants must disclose profits realized abroad if they stem from domestic infringement (e.g. manufacture) and obligations are not limited to information within the defendant’s direct control. The UPC expects defendants to take steps to obtain information from affiliated group entities, even if they are located outside the UPC’s territory.
