Kodak v Fujifilm (CoA, 3 August 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 3 August 2026 (UPC_CoA_28/2026), the Court of Appeal sets aside the Mannheim Local Division’s orders of 20 and 30 January 2026, which had ordered three Kodak companies jointly to pay penalties of EUR 1,720,000 for failing to comply with the infringement decision obtained by Fujifilm Corporation on EP 3 511 174. That decision having been reversed on appeal, the court holds that reversal has, as a general rule, retroactive effect: the enforced decision is treated as never having had any legal effect, and the penalties lose their basis, including for earlier breaches. The sums paid are refunded, the value of the enforcement proceedings is set at EUR 1,000,000 and Fujifilm bears the costs. The decision spells out the risks of enforcing a decision under appeal.

Facts and procedure

The Mannheim Local Division (UPC_CFI_365/2023) had imposed penalties by an order of the judge-rapporteur of 20 January 2026, confirmed on 30 January 2026 with leave to appeal. Kodak appealed on 16 February 2026. In the meantime, the Court of Appeal, ruling on the appeals on the merits (UPC_CoA_312/2025, 333/2025, 880/2025 and 882/2025), reversed the infringement decision, Kodak being entitled to rely on a right of prior use. On 29 June 2026 the court had ordered the enforcement proceedings to continue, since a possible request for rehearing has no suspensive effect. The parties agreed to a decision on the written record, without a hearing. They agreed that the enforcement had no legal basis. The value of the proceedings and the allocation of costs remained in dispute (paragraphs 19 and 20).

The applicable law

Article 75(1) UPCA and Rule 242.1 govern the effect of reversing a decision (paragraph 19). The value of the proceedings is assessed under Rule 370.6 by reference to the interest of the party that brought the action (paragraph 21). Costs follow Article 69 UPCA: the unsuccessful party bears the successful party’s reasonable and proportionate costs (paragraph 1), unless costs are apportioned on equitable grounds (paragraph 3). Rule 354.2 places enforcement of a decision that is not final at the risk of the enforcing party (paragraph 27).

Question

What becomes of penalty payments imposed to enforce an infringement decision that is later reversed on appeal, and how are the value and the costs of the enforcement proceedings to be determined?

Decision

Building on the order in NanoString v 10x Genomics of 10 December 2024, the court holds that reversal has, as a general rule, retroactive effect, including for a decision on the merits: the reversed decision is treated as never having had any legal effect (paragraph 19). The value is determined by the interest of the party that brought the action at first instance, an appeal not being an “action” within Rule 370.6, on a defendant’s appeal, the claimant’s interest in upholding the decision remains decisive (paragraphs 21 to 23). Penalties, payable to the Court and carrying a coercive and punitive element, do not measure that interest. What counts is Fujifilm’s interest in proper compliance, undisputed at EUR 1,000,000 (paragraph 24). Fujifilm, as the unsuccessful party, bears Kodak’s costs (paragraphs 25 and 28). Since the obligations never existed, there is no basis for assessing whether Kodak’s conduct, criticised by Fujifilm as late and incomplete, unnecessarily increased the costs (paragraph 26). Enforcement of a decision under appeal is at the enforcing party’s risk (paragraph 27), and the penalties already paid are refunded to Kodak (paragraph 29).

Key points for practice

• Reversal on appeal of an infringement decision retroactively removes the basis for penalties imposed to enforce it, even for breaches committed before the appeal ruling.
• The value of enforcement proceedings reflects the claimant’s interest in proper compliance, not the amount of penalties forfeited.
• A party enforcing a decision that is not final cannot avoid costs, if the decision is reversed, by blaming the defendant for late or incomplete compliance.
• Practical point: before seeking penalties on a decision under appeal, the patentee should factor in the risk of refund and of an adverse costs order if the decision is reversed.

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1) and (3) and Art. 75(1)

Rules of Procedure

Rules 220.2, 242.1, 262.2, 354.2 and 370.6

Case law cited

NanoString v 10x Genomics, Court of Appeal, 10 December 2024, Kodak v Fujifilm, Court of Appeal, 2 June 2026, appeal decision on the merits.

Related decisions

• Fujifilm v Kodak, 30 January 2026, the Mannheim Local Division penalty order set aside.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.