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First UPC decision on production of confidential licence agreements in SEP dispute

The UPC issued its first decision concerning production of confidential licence agreements in the context of a standard essential patents (SEP) dispute on 30 April 2024. The Order was made in the Panasonic v Xiaomi & Others proceedings by Dr. Peter Tochtermann, the judge-rapporteur and presiding judge in the proceedings before the Mannheim Local Division.

The Claimant, Panasonic, sought an order (against itself) to allow production of two of its licence agreements in the proceedings. This order was sought in circumstances where the Claimant wanted to rely on these licences as part of its case in its reply, but was restricted by the confidentiality provisions in the licence agreements.

The Claimant sought the order under Rules 172.2 and 190 of the Rules of Procedure.

The Judge considered that Rules 172.2 and 190 of the Rules of Procedure did not apply in these circumstances. The request for production of the licence agreements did not relate to “contested” facts (as specified by Rule 172) and the order was sought by the Claimant for production by it, rather than production by the "other party" or a "third party" (as specified by Rule 190).

However, the Judge considered the UPCA and Rules of Procedure showed that the judge-rapporteur and presiding judge have wide-ranging case management powers, provided any such decision is not arbitrary. In this context, the Judge considered the need for an order to produce documents existed to provide the facts in support of the legal argument that enforcement of an SEP is subject to EU competition law - in particular, Articles 101 and 102 TFEU, as further developed in case law from the CJEU in Huawei v ZTE.

It was also relevant to the Judge’s assessment that consent had been sought from the counterparties to the licence agreements and the counterparties were able to make representations in the proceedings if they wished to do so.

Accordingly, the Judge ordered production of the licence agreements, allowing redaction of the passages which are not relied on by the Claimant.


patent litigation, upc, sep frand disputes, commentary