Case Law
Rule 190: Order to produce evidence
Court of First Instance - Hamburg (DE) Local Division, Order dated 04/06/2024, Avago Technologies International Sales Pte. Limited / Tesla Manufacturing Brandenburg SE, Tesla Germany GmbH (Case/ Registry number: App_27608/2024, ORD_28831/2024)
Example of decision on the obligation to produce evidences: " With regard to application no. 2, however, the requirements of Rule 190.1 ROP have not been met. This is because it only follows from the power of attorney submitted by the plaintiff as Annex EIP 11 that authorisation by the Management Board is required for the transfer of rights, but not for the acquisition of rights. In this respect, the plaintiff rightly relies on the fact that the halfsentence "authorised by the Board" referred to by the defendants expressly refers only to "(i) Patent IP owned by the Company". If, on the other hand, Avago General IP is the recipient of a patent assignment, this provision does not apply, so that there are no indications of authorisation by the Board of Directors.
d) With regard to application no. 4, however, the requirements of Rule 190.1 ROP are again met.
This is because it also follows from the power of attorney submitted as Annex EIP 12 that authorisation by the Management Board is required for the transfer of rights. In this respect, the transfer of IP rights requires authorisation by the board of directors of [...]., the absence of which the defendant cannot examine and cannot introduce a n y evidence without having seen it.
In principle, the legitimisation to assert annex claims from European patents is based on the substantive entitlement. The entry in the patent register therefore has a significant indicative effect when assessing the question of who is the substantive owner of the patent (see BGH, judgement of 7 May 2013 - X ZR 69/11, GRUR 2013, 713, para. 57 et seq.- milling process). Nothing else applies on the basis of the UPCA.
The Board must therefore assume a rebuttable presumption. The CoA has already taken the same approach for patents with unitary effect and assumed that this person is to be treated as the proprietor of the patent with unitary effect on the basis of his corresponding entry in the Register for Unitary Patent Protection, Rule 8.4 RP. As such, it was entitled to request the ordering of corresponding measures, Art. 47(1) UPCA (UPC_CoA 335/2023, Order of 26 February 2024, p. 24)."
Court of First Instance - Mannheim (DE) Local Division, Order dated 16/05/2024, Guangdong OPPO Mobile Telecommunications Corp. Ltd., OROPE Germany GmbH v. Panasonic Holdings Corporation (Case/ Registry number: UPC_CFI_216/2023, ORD_6152/2024)
Example of decision on the defendant’s request to order production of evidence, in particular licence agreements: “Against this background, at the current stage of the proceedings, in which no decision has yet been made on the question of the defendant’s fundamental willingness to license, it does not appear necessary against the background of the transparency obligation derived from EU antitrust law to order the further submission of all unnamed license agreements that relate to the plaintiff’s 3G and/or 4G portfolio and whose patents extend to mobile devices. This is also contradicted by the principle of proportionality and the necessary consideration of the respective interests of third parties who, as contractual partners of the license agreements, may also have interests in the protection of trade secrets that must be taken into account when deciding on the submission order.[...]
Since no sufficient evidence has been presented or is otherwise apparent that the claimant has other - perhaps even more suitable - settlement license agreements that the parties could use sensibly on their way to concluding a FRAND license, the defendant’s request could not be granted, at least at the stage of the proceedings reached so far, especially since it is primarily the claimant’s own decision whether and, if so, which and how many settlement license agreements it submits in the proceedings in order to counter a possible FRAND objection by the defendant and to characterize its conduct as compliant with EU antitrust law.”
Court of First Instance - Munich (DE) Local Division, Order dated 24/04/2024, Huawei Technologies Co. Ltd / Netgear International Limited, NETGEAR Deutschland GmbH, Netgear Inc. (Case/ Registry number: UPC_CFI_9/2023, ORD_18179/2024)
Example of decision on the order to produce confidential evidence: “2. in the present proceedings, there is the particularity that the defendants are already in possession of the contract to be submitted, but are prevented by orders of the US court from submitting it to the Unified Patent Court or from submitting details. Under these circumstances, it is necessary to order the submission in order to facilitate the comprehensive preparation of the main hearing, which is already scheduled for 18 and 19 June 2024. Anything else would not be fair to the Defendants, especially since the US Court rejected their request to allow the submission to the Unified Patent Court with the argument that the Defendants could file the present submission request before the Unified Patent Court.
(3) Due to the legitimate confidentiality interests of the plaintiff and Qualcomm, the ordered protective measures must be ordered. However, a natural person must be appointed for the defendants. The court appoints Ms Anna Lam, as communicated in the parallel request for a preliminary ruling App_22295/2024. The defendant is free to designate further persons via a Rule 9 application. The contract must be submitted in its entirety and unredacted.”
Court of First Instance - Mannheim (DE) Local Division, Order dated 14/02/2024, Panasonic Holding Corporation v. Guangdong OPPO Mobile Telecommunications Corp. Ltd., OROPE Germany GmbH (Case number UPC_CFI_210/2023 ORD_)
Example of decision on the procedure for protecting confidential data where there is a license agreement between the parties: “In doing so, the court has taken into consideration that there is typically a recognisable need for confidentiality of business-related information contained in licence agreements. The procedure described in the steps below enables the parties to obtain comprehensive protection of trade secrets and allows the parties to submit the documents in the protected proceedings even without the need of a court order to produce them. If, according to the parties’ consensus, the clauses usually contained in licence agreements do not permit production until a court order is issued, this has to be understood before the background that such orders aim at involving the respective licence agreement partner into the proceedings and its confidentiality regime prior to any production in the court proceedings. This interest is fully taken into account by the confidentiality regime which is hereby established, so that a court order to produce the respective documents does not appear appropriate for the time being. Rather, the agreement of the respective licence agreement partner must be obtained on this basis if necessary or, in the event of a refusal, a separate decision on the production must be made by the party concerned. The interests of the licence agreement partner of the party wishing to submit a licence agreement in the proceedings must therefore be safeguarded by the respective party. In this context, it has to be taken into consideration that the documents in question are those that the party wishes to submit and that it is able to contact the third party concerned directly and efficiently. The court would first have to involve the third party, who is generally not represented by a representative in the proceedings, in the proceedings via the often time-consuming route of serving court documents abroad in accordance with the Hague Service Convention or the EU Regulation on Service of Documents. It also appears appropriate to arrange for the third party’s statement to be provided via the party, because the party itself has contributed to making it more difficult to produce documents in court proceedings by concluding corresponding contractual clauses.”