Retracting the long arm? UPC clarifies territorial scope of enforcement orders and imposes heavy penalties for non-compliance

In a significant decision in Fujifilm v Kodak, the Mannheim Local Division (LD) of the Unified Patent Court (UPC) has ruled on the enforcement of UPC orders and the imposition of penalties for non-compliance, giving obiter (non-binding) guidance on enforcement in non-UPC territories (such as the UK) for the first time. It drew a clear distinction between the question of its international jurisdiction (namely, its long-arm jurisdiction) and the question of whether, having exercised its long-arm jurisdiction, that decision is enforceable in the non-UPC territory concerned.

Recognition by foreign national courts required

The court has confirmed obiter that enforcement of its decisions in non-UPC contracting member states will require recognition by foreign national courts. Only if there is a bilateral or multilateral treaty on recognition and enforcement, would a UPC judgment be enforceable without any further recognition.

An exception may also apply where the effects of enforcement do not affect the foreign territory, for example, where a defendant has its principal place of business in a UPC contracting member state and is ordered to render information that concerns activities in foreign territories. Enforcement and the imposition of penalties may be ordered where the effects of the business conducted in a UPC contracting member state result in damage in a foreign territory.

This is a crucial decision that emphasises the UPC's strict approach to compliance with enforcement orders – here €1.72 million in penalties were imposed on Kodak for non-compliance with information, destruction, recall and removal orders relating to the German part of Fujifilm's patent in suit.

Importantly, the decision also seems to temper the increasingly expansive reach of the UPC's long-arm jurisdiction. The decision makes an implicit reference to the jurisdiction and comity issues (the principle of mutual respect between courts of different jurisdictions) that have arisen as a result of the Mannheim LD's expansive jurisdictional stance in the recent InterDigital v Amazon standard essential patent (SEP) dispute.

Cognisant of this, the court delineated between international jurisdiction and territorial enforcement, rooting its decision in the principles of comity and territorial scope. From the Mannheim LD's obiter stance, it seems the UPC is prepared to exercise its long-arm jurisdiction, but it will not enforce its resulting decision where it affects a non-UPC state, unless national court recognition is received.

In the UK, while the 2019 Hague Convention on the recognition and enforcement of foreign judgments in civil or commercial matters entered into force on 1 July 2025, the Convention expressly excludes intellectual property matters from its scope. Therefore, permission for enforcement will be required from the UK courts.

German and UK designations

Fujifilm brought infringement proceedings against three Kodak entities (Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH) before the Mannheim LD concerning a patent relating to printing plate precursor technology.

In a decision on the merits dated 2 April 2025 concerning the German part of the patent, the Mannheim LD granted an injunction and ordered the defendants to provide information concerning the infringing products, to destroy infringing stock, and to recall and remove infringing products from the channels of commerce. The current enforcement decision also concerned the German part of the patent.

A further decision concerning the UK part of the patent was delivered on 18 July 2025. The court found the patent valid in an amended form on an inter partes basis and infringed by Kodak. The court noted that enforcement requests relating to this decision are likely to follow and therefore sought to provide obiter clarity on enforcement in non-UPC jurisdictions.

Initial enforcement orders

Following a first enforcement order relating to the German patent in July 2025 and a partial review by the Court of Appeal in October 2025 (which dealt only with facts prior to the first enforcement order of 23 July 2025), the judge‑rapporteur (the presiding single judge responsible for case management) issued a second penalty order on 20 January 2026.

Kodak challenged this second penalty order on procedural grounds, arguing that only the full panel could issue such orders and that the matter should proceed directly to the Court of Appeal without an intermediate panel review.

Judge-rapporteur or panel?

The court rejected Kodak's argument that, under Rule 354.4 Rules of Procedure (RoP), only a full panel can issue enforcement and penalty orders. Instead, it held that a judge-rapporteur is able to issue such decisions alone.

The court also rejected Kodak's argument that its challenge should proceed directly to the Court of Appeal under Rules 220.2 and 354.4 RoP, holding that a panel review is not precluded by the RoP and it serves a useful purpose by relieving the Court of Appeal of unnecessary appeals.

Non-compliance

Fujifilm alleged that Kodak failed to comply with the enforcement orders on several grounds, including failures to provide complete and clear information, destroy the samples as ordered, and send recall letters to all customers who had received the infringing products.

The court agreed that Kodak had failed to comply with the order and provided detailed guidance on the standards required:

• Recall obligations are interpreted broadly and require recall to all customers regardless of insolvency, shelf life or demo status.

• Destruction obligations are strict; only minimal, clearly non-usable samples may be retained for evidence.

• When providing accounts, auditors can be required to verify completeness and accuracy, but their role cannot replace the need for full disclosure.

Territorial scope of enforcement

Under Article 34 of the Unified Patent Court Agreement, the UPC's decisions are automatically recognised and immediately enforceable without the need for further recognition in UPC contracting member states. However, that is not the case with respect to foreign territories.

In foreign territories, the Mannheim LD stated obiter that UPC decisions must be recognised by the competent national courts before they can be enforced, unless bilateral or multilateral treaties provide otherwise (for example, the recast Brussels Regulation in the EU).

The Mannheim LD drew a strict distinction between its international long-arm jurisdiction and the enforceability of its decisions affecting foreign jurisdictions.

As a result, where it has exercised its long-arm jurisdiction, in the absence of a recognition and enforcement treaty, the UPC's decision will only be enforceable in the affected foreign territory after the decision is recognised by that territory's national courts. The court noted that this is the case for injunctive relief, whether it is to be enforced directly by, for example, shutting down manufacturing premises, or indirectly through imposing penalties, and for further remedies granted.

This seems to be the case even if the remedies are granted against a UPC domiciled party and whether or not the UPC relies on the foreign national court for enforcement. Thus, this decision appears to allow, for example, a German-based manufacturer found to be infringing in, say, the UK, to continue to infringe, even when an injunction has been granted by the UPC, until the decision is recognised by the English courts.

Information obligations – foreign activities

An exception to non-automatic foreign enforcement may apply where the effects of enforcement do not affect the foreign territory. For example, where a defendant has its principal place of business within UPC territory, the court may order that defendant to provide information concerning activities in foreign territories and impose penalties for non-compliance. This is because the entity conducts business in the UPC and it is the effect of that business that results in damages in the foreign territory.

In this case, Kodak was ordered to provide information relating to its infringing products. The court held that because manufacturing took place in Germany, the provision of information was not limited to those products put on the market in Germany, but included products exported to foreign jurisdictions.

The Mannheim LD reasoned that Kodak was only able to generate income because of the manufacturing in Germany. In respecting the principle of comity and accepting that the UPC's decisions only have immediate effect in UPC member states, the Mannheim LD stated that the profits generated that were attributable to the German manufacturing would have to be determined on the basis of an "evaluative consideration" to limit the amounts collectable only to those concerning the infringement of the German designation.

It noted that if Kodak had been right and only national figures were required then infringers could produce in a territory where a patent is in force without export income being taken into account when calculating damages within the UPC.

The court also rejected Kodak's argument that it was only obliged to render information that it possessed itself or was in the possession of a subsidiary. The court held that defendants are "obliged to retain such information from the other entities of the same group of companies and exercise [their] possibilities to influence them so as to provide the information".

Hefty penalties

Ultimately, the panel confirmed the decision of the judge-rapporteur. Kodak failed to comply with the enforcement orders and a heavy total penalty of €1,720,000 was imposed on Kodak. The panel added that any "further disobedience" would be met with an additional penalty of €25,000 per day.

Osborne Clarke comment

This decision provides important guidance on enforcement issues in the UPC, an area where case law remains limited. Indeed, the court granted permission to appeal as this case might "provide the Court of Appeal further opportunity to develop the scarce case law on enforcement measures before the UPC".

The court's approach demonstrates that the UPC will demand granular, coherent and verifiable data under information orders; interpret recall and destruction obligations broadly; and impose substantial penalties for non-compliance.

For multinational corporate groups, the decision has significant implications for structuring manufacturing and sales operations. The court's holding that information obligations extend to activities abroad, and that defendants must seek information from affiliated group companies, means that parties cannot insulate themselves from disclosure by routing sales through non-defendant entities.

Parties facing UPC enforcement proceedings should ensure that they have mechanisms in place to obtain relevant information from group companies promptly, and should consider the potential exposure arising from manufacturing activities in UPC member states even where sales occur elsewhere.

The Mannheim LD's decision also represents a notable attempt to address (albeit obiter) both the territorial scope of UPC decisions and principles of comity. It seems to substantially undermine the effect of the court's long-arm jurisdiction. By separating the questions of jurisdiction and enforcement, the court appears to have limited the control it has over foreign activities of even UPC-domiciled infringers (except where the enforcement effects do not affect the foreign country, as with the information obligations in this case).

At least in the case of the UK, recognition of UPC decisions by the English courts seems unlikely, particularly in respect of decisions that make inter partes validity findings with public policy ramifications (as here, where the court has upheld a ghost patent: a patent held valid in an amended form not on the register). This is not to mention the impact the ongoing jurisdictional tensions between the English courts and the UPC in InterDigital v Amazon might have on any recognition of UPC decisions. We wait to see how the UPC deals with any enforcement decision in relation to the UK designation of the patent in suit.

The statements from the Mannheim LD relating to judicial de-escalation are in stark contrast with the position taken by the same LD (an overlapping, though not identical panel) in InterDigital v Amazon, where the court took an expansive approach to jurisdiction despite calls from the English courts for de-escalation and better judicial communication.

The jurisdictional tensions in that dispute are no doubt in part due to the complex, global nature of SEP disputes and the fundamental differences in how (F)RAND disputes are seen by courts in the EU versus the UK. Whether the Mannheim LD's approach in this decision signals a genuine shift in approach or merely reflects the different factual context remains to be seen.

Given that the Mannheim LD's decision on enforcement of decisions affecting foreign countries was obiter, an enforcement decision relating to the UK designation in this case will be crucial to determine how, on a practical level, the court proposes to deal with the distinction between its jurisdiction and enforcement. Guidance from the Court of Appeal will be needed for clarity – whether it will adopt the same approach to enforcement is not yet known.

James Bruce, trainee solicitor at Osborne Clarke, contributed to this Insight.