Enforcement of UPC orders in non-UPC territories requires prior recognition by national courts, but information orders can be enforced against defendants within the UPC territory (Art. 34 UPCA)
The Court stresses that UPC decisions have automatic effect only within Contracting Member States.
Outside that territory, they are treated as foreign judgments and must first be recognised under the national private international law of the corresponding third state before any enforcement (including coercive penalties) can validly occur. This distinction between jurisdiction and enforceability is rooted in comity and territoriality.
However, if the defendant is established in UPC territory, the Court may still order it to provide information about activities abroad and back this up with penalties, because the enforcement act (penalty) is implemented entirely within UPC territory and does not directly interfere with foreign sovereign enforcement mechanisms.
The information obligation for infringing manufacturing in a UPC state extends to exported products and profits realized by group entities abroad, for calculating damages for the domestic infringement
The Court holds that where the infringing act is manufacturing in Germany, the information duty is not confined to German sales. All subsequent commercialisation—whether in Germany or abroad—causally linked to that infringing manufacturing must be disclosed, because it is relevant to quantify damages for the German part of the patent.
This includes profits booked by other group entities that exploit products made in Germany. The Court relies on German Federal Court case law to emphasize that requesting information on foreign “follow‑up” acts serves only to value the harm caused by the domestic infringement and, when combined with value-based apportionment of profits, does not amount to an impermissible extraterritorial extension of patent protection.
A defendant must actively obtain information from other group entities and cannot limit disclosure to information it already possesses. The burden of proof for compliance lies with the defendant
The Court rejects the Defendants’ position that they are only obliged to disclose information existing in their own files or in those of their subsidiaries.
A party bound by an information order must use its corporate influence to obtain relevant data from other entities in the same group, such as a foreign sales company or parent, if those entities hold data needed to fulfil the order. Whether legal title to the goods or accounting revenues sit with another group company is irrelevant.
Consistent with the Court of Appeal’s guidance, the burden lies on the Defendants to show full and timely compliance with penalty-backed orders. Failure to evidence such efforts justifies penalties for non-compliance.
Information must be easily verifiable. Providing data in opaque “units” instead of units commonly used in the market or failing to detail cost deductions is insufficient and constitutes non-compliance
The Court finds it a “considerable shortcoming” that Defendants reported production quantities in square metres (sqm) but deliveries only in internal “unit” codes, without disclosing the sqm content of each unit, making it impossible for FUJIFILM to verify how many sqm went to which market.
Because the operative part refers consistently to “quantities” in sqm, delivery data must also be provided in sqm and in an accessible, traceable format. Similarly, revenue and margin figures are incomplete if only “gross sales” values are given but the underlying cost deductions and factors are withheld.
An auditor’s memorandum based on limited, selected input cannot substitute for full disclosure. The Court insists on primary, verifiable data rather than opaque summaries.
The recall obligation is broad, extending to products sent to insolvent companies and those past their official shelf-life, as they may still be used
The Court holds that recall must cover all customers who received infringing products, including those now insolvent. Insolvency does not exclude the possibility that an administrator or debtor in possession continues to use the plates if economically sensible.
It also repudiates the argument that plates with an expired ten‑month shelf life are outside the scope of the recall order. Even if high‑end German printers may no longer wish to use them, these plates can still be used for lower-quality printing or in other markets, possibly at discounted prices.
Accordingly, carving out expired or “demo” plates undermines the effectiveness of the recall remedy and constitutes non-compliance.
For manifest non-compliance, courts can impose substantial daily penalties and order the defendant to appoint and pay for a sworn auditor to verify the completeness of its information
The Court, relying on Art. 67 UPCA, underscores that recurring penalty payments must be proportionate but can be substantial where disobedience is clear and persists despite prior enforcement orders.
Here, after a first penalty order and partial upholding by the Court of Appeal, the Local Division imposes EUR 1.72 M for past non-compliance and sets EUR 25,000 per day for future non-compliance, stressing that a prudent, well-advised party should have eliminated obvious deficiencies.
In addition, to restore trust in the completeness and accuracy of the accounts, the Court orders verification by a certified sworn auditor in Germany at Defendants’ expense, with full access to documents and confidentiality vis-à-vis the claimant.
Division
Local Division Mannheim
UPC number
UPC_CFI_365/2023
Type of proceedings
Application for the imposition of penalties
Parties
Claimant: FUJIFILM Corporation
Defendants: Kodak GmbH, Kodak Graphic Communications GmbH, Kodak Holding GmbH
Patent(s)
EP 3 511 174
Jurisdictions
Germany
Body of legislation / Rules
Art. 34 UPCA
Art. 67(1) UPCA
Rule 36 RoP
