Fujifilm v Kodak (UPC_CFI_365/2023)
Decision date:
23 July 2025
Osborne Clarke summary
- This decision concerned enforcement proceedings following the Mannheim LD's decision on 2 April 2025, which found Fujifilm's German patent relating to planographic printing plates valid and infringed by Kodak. Fujifilm sought an order against Kodak for non-compliance with the court's order relating to the provision of information concerning the infringement and the recall and destruction of the infringing products.
- Fujifilm argued that appropriate notification of enforcement of the operative parts of the court's order had been made to Kodak and a certified translation had been provided for one part of the court's order (relating to the destruction of the attacked embodiments) and this was all that was required because this part of the judgment required the support of the national authorities to enforce, whereas the other parts of the order were in the hands of the UPC. Fujifilm also maintained that Kodak sought to engage in "delaying tactics" by submitting unfounded confidentiality requests.
- The Mannheim LD accepted Fujifilm's application and imposed a penalty on Kodak to "punish their shortcomings and disobedience with the operative part of the decision". The court imposed a three-pronged penalty regime: i) a lump sum penalty payment of €100,000 for the past period of infringement; ii) a "moderate daily penalty" of €2,500 and a time period to catch up on what should have already been provided; and iii) "drastic penalty payments" of €10,000 a day (which could be increased on further application from Fujifilm) to be imposed if Kodak was still not prepared to comply.
- The court made some general observations regarding enforcement requirements, setting the tone that the UPC will not allow procedural points to be used by a party to avoid or delay complying with an order.
- The court found that the general requirements for enforcing the order were fulfilled. As the court had not put the enforcement of the order under preconditions, it said it was clear that from the date of service compliance with the order was mandatory. As such, no warning of enforcement by Fujifilm was necessary.
- In addition, the requirements for the order to be translated had been complied with. In this case, the proceedings were conducted in English and Kodak was doing business not only in Germany but throughout Europe and worldwide and there was no reason for the parts of the decision enforced only by the UPC to be translated. In agreement with Fujifilm, where it relied on national authorities to help with enforcement, then a translation of that part of the order was required, which Fujifilm had done.
Issue
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