Key takeaways
If the Court of Appeal revokes a first-instance decision in merits proceedings in which orders were granted under recurring penalty payments, the revocation has retroactive effect and the order must be regarded as never having had any legal effect.
The revocation of an order of the Court of First Instance granting a permanent injunction (Art. 75(1) UPCA, R. 242.1 RoP) will have retroactive effect as a general rule. The revoked order must therefore be regarded as never having had any legal effect. It follows that the revocation of an order granted under recurring penalty removes the legal basis for any following order actually ordering the penalty payment, even if that decision relates to alleged breaches of the order prior to the revocation. (cf. CoA, December 10, 2024, UPC-CoA-470/2023, Nanostring v 10x) (headnote 1, mn. 19)
The value of the proceedings is assessed based on claimant’s interest at the time of the filing of the action – not based on the interest of the defendant and appellant at the time of appeal.
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. (headnote 2, mn. 21)
The value of the enforcement proceedings is determined in view of claimant’s interest in the proper fulfilment of the obligations which the penalties serve to incentivize – not based on the amount of penalties as such.
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. (headnote 3, mn. 24).
Division
Court of Appeal
UPC number
UPC-CoA-28/2026
Type of proceedings
Appeal concerning enforcement (penalty orders)
Parties
Appellants (and Defendants in 1st instance main proceedings):
Kodak Holding GmbH, Kodak GmbH, Kodak Graphic Communications GmbH
Respondent (and Claimant in 1st instance main proceedings):
Fujifilm Corporation
Patent(s)
EP 3 511 174
Body of legislation / Rules
Art. 75 (1) UPCA, R. 242.1, R. 370.6 RoP
