UPC_CFI_365/2023

Infringement of EP 3 511 174 by Kodak's printing plate products in Germany

Note: The Mannheim Local Division found all three Kodak entities infringed the patent and ordered injunction, disclosure, destruction, recall, and EUR 300,000 interim costs.

UPC lacks jurisdiction over national patent parts that lapsed before 1 June 2023 and over non-UPCA-member states

Note: Court accepted this as a headnote principle limiting the scope of relief.

Prior use right defence must be pleaded in Statement of Defence and Counterclaim for Revocation and cannot be introduced later

Note: The court confirmed the front-loaded pleading requirement applies to prior use right facts.

Penalty enforcement: maximum daily penalty of EUR 10,000 (later EUR 25,000) justified for persistent non-compliance with information/disclosure obligations

Note: The January 2026 enforcement order confirmed accumulated penalties of EUR 1,720,000 based on ongoing non-compliance.

Counterclaim for revocation of EP 3 511 174

Reason: The court dismissed the revocation counterclaim without detailed reasoning visible in the excerpts; the patent was maintained as granted.

Private prior use right under German law (Art. 28 UPCA)

Reason: Under German law applicable via Art. 28 UPCA, a firm and final decision to use the subject matter must have been taken before the priority date; the burden of proof lies on the defendant and Kodak failed to discharge it by documents or witnesses.

Penalties imposed were disproportionate given pending legal questions on UPC enforcement

Reason: The court found deficiencies in compliance were evident and persistent; a prudent party advised by experienced counsel would have taken all steps to avoid doubt; penalties accumulating over time were a foreseeable result of Kodak's deliberate non-compliance.