Bringing enforcement proceedings while an appeal is still pending risks liability for defendant’s costs

Kodak v. Fujifilm

UPC-CoA-28/2026, decision of 3 August 2026

Background

The appeal concerned orders¹ made by the Mannheim Local Division in January 2026 requiring Kodak to pay penalties totalling €1.72 million for alleged non-compliance with orders made following a finding that Kodak infringed Fujifilm’s patent.

In the main proceedings, however, the Court of Appeal subsequently set aside² the infringement decision and held that Kodak did not infringe because it could rely on a private prior-use right. The enforcement appeal therefore focused on the consequences of that reversal for the penalty orders, repayment, the value of the enforcement proceedings and costs.

Retroactive effect and repayment of penalties

In NanoString v 10x Genomics³ , the Court of Appeal held that revocation under Article 75(1) UPCA and Rule 242.1 RoP of a first-instance order granting a provisional injunction generally has retroactive effect. The revoked order is treated as never having had legal effect, so its revocation removes the basis for a later decision imposing penalties for alleged breaches, including breaches predating revocation of the order.

The Court confirmed that the same principle applies where a merits decision imposing obligations subject to recurring penalties is set aside on appeal. Because the underlying infringement decision was retrospectively deprived of legal effect, the penalty orders had no legal basis. The Court set them aside and ordered repayment by the Court of the penalties already paid by Kodak.

Value of the enforcement proceedings

The remaining issues were the value of the enforcement proceedings and responsibility for legal costs and other expenses under Article 69 UPCA.

Kodak submitted that the proceedings should be valued at no less than €1.72 million, corresponding to the penalties imposed. Fujifilm argued for €1 million, reflecting its interest in compliance with the ancillary orders in the underlying action.

The Court held that Rule 370.6 RoP requires an assessment of the objective interest pursued by the party that initiated the action at first instance. Although the value on appeal may differ from the first-instance value, an appeal by the defendant does not shift the relevant perspective to the defendant’s interest in having the decision set aside.

Accordingly, Fujifilm’s interest remained decisive because it had initiated both the infringement action and the related enforcement proceedings. The fact that Kodak brought the appeal did not alter that conclusion.

The penalties themselves did not measure Fujifilm’s interest: they were payable to the Court and included coercive and punitive elements. The relevant interest was instead Fujifilm’s interest in proper performance of the obligations that the penalties were intended to incentivise. As Kodak did not dispute that this interest amounted to €1 million, the Court adopted that figure.

Costs

Because Fujifilm’s infringement claims and the associated orders had been set aside, the Court treated Fujifilm as the unsuccessful party under Article 69(1) UPCA and ordered it to bear Kodak’s reasonable and proportionate legal costs and other expenses of the enforcement proceedings at both first instance and on appeal.

The Court rejected Fujifilm’s argument that Kodak’s conduct during enforcement justified a different costs order. Once the underlying decision was treated as never having had legal effect, Kodak was retrospectively under no obligation to comply with it. There was therefore no basis for finding that Kodak had complied late or incompletely, or that its conduct had unnecessarily increased the costs.

The Court also reiterated that a party enforcing a decision while an appeal is pending does so at its own risk, consistently with Rule 354.2 RoP. This decision (as well as that in NanoString v 10x Genomics) illustrates the risk that a claimant runs in enforcing an order that remains subject to appeal.