Local division Mannheim imposes over €1.7 million penalty against Kodak

In the decision from 20 January, presiding judge and judge rapporteur Peter Tochtermann imposed a penalty of €1.7 million on Kodak.

The penalty comes after Kodak’s continued disregard of the first of two judgments for patent infringement that the local division Mannheim issued in April 2025. Tochtermann found that Kodak’s German subsidaries failed to fulfil their duty to provide information. He specifically criticised Kodak for only providing information about products sold in Germany, despite the infringing products also being manufactured for export.

Kodak has also disregarded other aspects of the local division’s judgment. The company must now also provide information on the turnover it has generated from the sale of printing plates manufactured in Germany for other countries. However, Kodak doubts the German subsidiaries can provide this information. The actual distributor of the printing plates is not a defendant.

Peter Tochtermann

The penalty applies to the period since the judgment and only for infringing acts relating to the German part of EP 3 511 174.

If Kodak continues to not comply, the company faces a penalty of €25,000 for each additional day. Tochtermann thus took full advantage of the maximum rate.

Long-arm jursidiction

The dispute between the two printing product manufacturers entered UPC history books last year when the judges in Düsseldorf and Mannheim first ruled on the court’s long-arm jurisdiction.

Initially, FujiFilm sued Kodak’s German companies at the Mannheim local division over EP 174 and EP 3 476 616. These protect methods for manufacturing planographic and lithographic printing plates. FujiFilm also filed suit at the Düsseldorf local division over infringement of EP 3 594 009, concerning chemical components for the printing plates.

As the patents are also valid in the UK, the Japanese patent holder requested that the UPC order the German Kodak subsidiaries to refrain from making or marketing their products not only in Germany but also the UK. However, Kodak challenged the UPC’s jurisdiction regarding the UK.

In January, the Düsseldorf local division revoked EP 009 and dismissed the infringement claim. The Düsseldorf judges also concluded for the first time that if the defendant is based in a UPC member state, the court has jurisdiction to hear the case regarding the UK part of the patent-in-suit.

Court separates case

In April 2025, the Mannheim local division found EP 174 valid and infringed. The judges ordered Kodak to cease and desist and pay damages in Germany (case ID: UPC_CFI_365/2023). The defendant appealed.

Kodak fared better in the parallel Mannheim proceedings for EP 616. Here, the court revoked EP 616 due to lack of inventive step (case ID: UPC_CFI_359/2023). FujiFilm appealed.

The court separated the UK portion and jurisdiction decision early on, in view of the upcoming CJEU ruling in BSH vs Electrolux. After the CJEU ruled on that case in February 2025, the Mannheim UPC judges concluded that the UPC has jurisdiction to decide upon infringement of the UK part of a European Patent. Thus, the court extended the April rulings on both patents to the UK.

Peace offering to UK courts

Judge Tochtermann used his order to comment on compulsory enforcement in connection with the new long-arm jurisdiction doctrine.

Even though the UPC now feels able to issue an injunction based on a European patent for a non-member state of the UPC, this does not automatically entail the right to compulsory enforcement. The current decision therefore relates exclusively to enforcing the German part of EP 174, not the UK part.

In paragraphs 39 to 42, the judge states that a UK court would likely need to recognise a UPC infringement judgment before the UPC could order compulsory enforcement in the UK. The situation differs for enforcement in an EU member state that does not participate in the UPC, where enforcement would likely be covered by the Brussels Regulation.

In this section Tochtermann also writes: “This is not only of fundamental importance for the case at hand, but also so as to de-escalate the current jurisdictional conflict and to enter into a respectful discussion on equal terms on the matters, which lie before the various courts, in an attempt to resolve them in a way, where courts of one state respect the decisions of the courts of another state and where each court accepts the territorial limitations of each court’s decisions.”

Long-arm issue reaches appeal level

In August last year, the Hamburg local division ordered an injunction against Dreame for Spain. The parties appealed and the UPC Court of Appeal heard the case yesterday.

The FujiFilm vs Kodak case will also soon come before the Court of Appeal. Both sides are preparing for appeals in the main proceedings. Under presiding judge Rian Kalden the court will hear the appeals on 27 and 30 March.

Kodak can now ask judge Tochterman to review his enforcement order. Due to the severity of the penalty and obligations to provide information and pay damages, a subsequent appeal may even be possible.

New advisors for FujiFilm

At the start of the dispute FujiFilm relied on an international team from Hoyng ROKH Monegier. However, the plaintiff later decided to entrust the appeal proceedings to Kather Augenstein.

The team is led by Christof Augenstein and also comprises partner Sören Dahm and counsel Robert Knaps, as well as Nicole Schopp, Benedikt Walesch, Arne-Steffen Kamps, Carsten Plaga, and Christoph Heringlake.

Kodak continues with its original counsel from Freshfields. While partner Wolrad Prinz zu Waldeck und Pyrmont and senior associate Eva Acker represented Kodak in Düsseldorf, partner Nina Bayerl and associates Elena Hennecke and Kilian Seidel acted for the company in Mannheim.

Carlotta Mannes and Anton Porsche from the German practice are also on the Freshfields team. A small London team led by partner Christopher Stothers played a role, with associate Katherine Dudman assisting.

The Freshfields team also remains active for Kodak in the main proceedings for the Court of Appeal.