2026-08-03 - CoA - Kodak v. Fujifilm - UPC-COA-0000028/2026

1) The revocation under Art. 75(1) UPCA and R. 242.1 RoP of an order of the Court of First Instance granting a permanent injunction will, as a general rule, have retroactive effect. The revoked order must therefore be regarded as never having had any legal effect. It follows that the revocation of an order subject to a recurring penalty removes the legal basis for any subsequent decision ordering the payment of a penalty, even if that decision relates to alleged breaches of the order prior to the revocation. 2) It follows from R. 370.6 RoP that it is the interest of the party that initiated the action before the Court of First Instance that needs to be considered. The value of proceedings on appeal may differ from the value at first instance, but on appeal by the defendant it remains the interest of the claimant in having the decision upheld that determines the value of the proceedings pursuant to R. 370.6 RoP. It does not then shift to the interest of the defendant to have the decision set aside. 3) The amount of the penalties forfeited by the defendant cannot be taken to represent the claimant’s interest in the enforcement proceedings, since the penalties forfeited are payable to the Court. It is rather the claimant’s interest in proper fulfilment of the obligations that the penalties serve to incentivize that is relevant. 4) There is no legal basis for assessment of whether the defendant’s behaviour unnecessarily contributed to the costs of enforcement proceedings based on a decision that must be regarded as never having had any legal effect. Where a defendant retroactively was not obliged to comply with any orders in the decision that has been revoked, it cannot be said that it was too late or incomplete with doing or providing something it was ordered to do therein.

The Court of Appeal set aside the Mannheim Local Division's orders imposing EUR 1,720,000 in penalties on Kodak, after the same court had set aside the underlying infringement decision on the merits and dismissed Fujifilm's action. Applying and extending NanoString v 10x, the Court held that revocation under Art. 75(1) UPCA and R. 242.1 RoP operates retroactively, so the revoked decision must be regarded as never having had legal effect and the legal basis for any penalty decision falls away, including for breaches alleged before the revocation. On the value of the proceedings the Court held that R. 370.6 RoP looks to the interest of the party that initiated the action at first instance, so on a defendant's appeal the value remains measured by the claimant's interest in having the decision upheld and does not shift to the appellant's interest in setting it aside. Forfeited penalties cannot represent that interest because they are payable to the Court and carry a coercive and punitive element; the relevant interest is the claimant's interest in proper fulfilment of the obligations the penalties incentivise. Fujifilm, whose requests were denied on appeal, is the unsuccessful party under Art. 69(1) UPCA, and there is no room for an Art. 69(3) assessment of the enforcement debtor's conduct under a decision that retroactively never bound it.