Case Law
Rule 262A: Protection of Confidential Information

Court of First Instance - Hamburg (DE) Local Division, Order dated 09/08/2024, AGFA NV v. Gucci Sweden AB, Gucci France SAS, Guccio Gucci S.p.A., Marbella Pellami S.p.A., Gucci Logistica S.p.A., GG Luxury Goods GmbH, Gucci Belgium SA, G Commerce Europe S.p.A. , GG FRANCE SERVICES SAS (Case/ Registry number: App_39127/2024, ORD_39257/2024)
Example of decision on balance of interests between parties: "When balancing the interests of the parties, a distinction, as a starting point, has to be made between applications under R. 262 on the one hand and R. 262A RoP on the other. Confidentiality applications under R.262A RoP concern confidentiality vis-à-vis the party to the proceedings, while applications under R. 262 concern confidentiality vis-à-vis third parties not involved in the proceedings, R. 262.1 (b) and .3 RoP. With regard to R. 262A RoP applications the other party’s right to be heard and the right to argue its case successfully before the Court are at stake. However, in cases – like the present – where the party applying for confidentiality does not seek to limit the access to the confidential information to a limited number of natural persons, but aims at restricting the use of the confidential information included in the Defendant’s pleadings to be used for the purposes of the present proceedings, but not outside the proceedings, only, these rights of the other party are not endangered. This situation is closer to an application under R. 262.2 RoP as the use outside of the present proceeding is the essence of such an R.262A application. To limit only further use of the said information does not require the same strict balancing of interest as a limitation of access within the proceedings. A request for confidentiality for any use outside of the proceedings is therefore not only reasoned when the characterisation as a trade secret is predominantly probable, but when it is probable to a lesser extent. As the right of the other party to be heard is not inflicted any overly strict handling of confidentiality requests regarding post- or outside trial use can lead to a limitation of a party’s ability to defend and explain itself and to present evidence."

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 08/08/2024, Curio Bioscience, Inc v. 10x Genomics, Inc. (Case/ Registry number: App_41690/2024, ORD_42284/2024)
Example of decision on number of persons having access to a confidential information: "Regarding the group of authorised persons is concerned, the Mannheim Local Division rightly pointed out that there is normally no reason to limit the access of Claimant’s representatives to a certain number or even to UPC representatives and their internal assistants, who must also be named (UPC_CFI_471/2023 (LD Mannheim), Order of 3 July 2024, ORD_33986/2024 Aylo Freesites v. DISH). Where the Düsseldorf Local Division has ordered such a restriction in the past, this was due to the specific situation in the summary proceedings (UPC_CFI_463/2023 (LD Düsseldorf), Order of 11 March 2024, ORD_8550/2024 - 10x Genomics v. Curio Bioscience). However, it cannot be ignored that R. 262A.6 RoP requires that the number of persons having access to the confidential information shall not be greater than is necessary to ensure that the rights of the parties to the proceedings to an effective remedy and to a fair trial are respected. This requirement also applies to the parties’ representatives. Therefore, the number of representatives granted access to the confidential information should not be “unlimited “or “indeterminable”. Nor should the latter be the case, as effective protection of confidential information also requires clear accountability. It must be clear who is obliged to maintain confidentiality and who can be held responsible and legally liable in the event of a breach of the confidentiality order."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 30/07/2024, BEGO Medical GmbH v. CEAD USA B.V., CEAD B.V. (Case/ Registry number: App_37662/2024, ORD_39244/2024)
Example of decision on the granting of confidentiality: "3. When deciding on the application pursuant to R. 262.2 of the Rules of Procedure, the public’s general interest in information must be considered first and foremost. The requirements for the granting of confidentiality are therefore lower than in R. 262A of the Code of Procedure.
4. The public’s interest in learning about individually agreed attorney’s fees in patent disputes regularly takes a back seat to the litigant’s interest in keeping the negotiated fees confidential."

Court of First Instance - Mannheim (DE) Local Division, Order dated 10/07/2024, Panasonic Holdings Corporation (Case/ Registry number: App_32822/2024, ORD_40950/2024)
Example of decision on disclosure of confidential information to legal representatives in parallel national proceedings: "Access to the sensitive information in proceedings before the UPC shall be granted exclusively to authorised representatives pursuant to Art. 48 UPCA who represent the parties in the specific proceedings and in further proceedings before the UPC. Disclosure to legal representatives appointed in parallel national proceedings is not permitted for the purpose of use in national proceedings (contrary to Local Chamber Munich, Panel 1, order of 4 July 2024, UPC_CFI_220/2023, ORD_26378/2024)."

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 24/06/2024, Dolby International AB (Case/ Registry number: App_34724/2024, ORD_35903/2024)
Example of decision on the protection of confidential informations: "2. Such an exceptional case regularly exists if access to a pleading in the unredacted version (R. 262A RoP). Only by granting access to the relevant information to the party’s knowledgeable employees can it be ensured that the party concerned can exchange information with its representatives, develop a strategy taking into account the arguments of the other party and, if necessary, provide technical and/or economic input."

Court of First Instance - Milan (IT) Local Division, Order dated 14/05/2024, OERLIKON TEXTILE GMBH & CO KG / Bhagat Textile Engineers (Case number ORD_27218/2024 ORD_27218/2024)
Example of decision on confidentiality of the interim conference: “2. That the interim conference be open to the public, unless in the course of the interim conference, for the purposes of protecting confidential information, the Court decides to limit attendance to the parties’ advocates only, in respect of specific issues dealt with, in particular with regard to the matters examined in the order rendered on 6.05.2024 ;
3. that the interim conference be recorded. The recording shall be made available to counsel for the parties following a party’s request and consequent order of the Court, which shall also determine the manner of access, where confidential information is discussed during the conference.”

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 use of confidential evidence in other proceedings: “5. In addition, the licence agreement will also play a central role in the parallel proceedings for a declaration of non-infringement ACT_16294/2024 UPC_CFI_152/2024 and in the separate infringement proceedings concerning EP 3 678 321 (ACT_18917/2024 UPC_CFI_168/2024). It should therefore also be ordered that it may also be used in these two proceedings.
6. however, an order for authorisation to use the agreement in further proceedings concerning the plaintiff’s Wi-Fi 6 standard portfolio is out of the question. The necessary consideration can only ever be carried out on a case-by-case basis by the court appointed to make the decision.”

Court of First Instance - Hamburg (DE) Local Division, Order dated 02/04/2024, Tesla Manufacturing Brandenburg SE, Tesla Germany GmbH/ Avago Technologies International Sales Pte. Limited (ORD_17267/2024)
Example of decision about confidentiality and access restriction: “a) In the present case, the existence of business or trade secrets is to be assumed with the certainty required for an order pursuant to R. 262A RoP with regard to the predicted sales results. According to R. 262A.5 RoP, this is the case in particular if the reasons given by the applicant for the order significantly outweigh the other party’s interest in unrestricted access to the information or evidence in question (with regard to the further requirements, see the local division’s order of 3 November 2023 - ORD_577763/2023 - in these proceedings). The plaintiff has also rightly not denied that the information on the forecast sales result is a business or trade secret of the defendant. They are based on the defendants’ own forecast estimates, which go beyond the calculation based on the official registration figures, the average price of the Tesla 4 Model Y and the published return on sales.
b) In this respect, access to the information or evidence concerned was to be restricted to certain persons, R. 262A.1 of the Code of Procedure. According to R. 262A.6 of the Rules of Procedure, the number of persons referred to may not be greater than necessary to ensure compliance with the right of the parties to the proceedings to an effective remedy and a fair trial and must include at least one natural person from each party and the respective lawyers or representatives of these parties to the proceedings.”

Court of Appeal - Luxembourg (LU), Order dated 28/03/2024, Curio Bioscience Inc. / 10x Genomics, Inc. (Case/ Registry number: App_12137/2024, ORD_16931/2024)
Example of decision on a request to restrict access to information or evidence to specific persons: "A non-appealed order by the Court of First Instance pursuant to R.262A RoP that restricts access to certain information or evidence to specific persons, unless otherwise stated in the order, continues to apply after the proceedings, and therefore applies also to the appeal proceedings.
Article 9(1) second sentence of Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, makes clear that an obligation of non-disclosure shall remain in force after "the legal proceedings" have ended. Against this background, any limitation of a non-disclosure obligation must be explicit."

Court of First Instance - Paris (FR) Local Division, Order dated 26/03/2024, Novawell/ C-Kore Systems Limited (ORD_12088/2024)
Example of decision on the possibility for parties to agree on the composition of the confidentiality club|: “In view of all these facts, the Court notes that there is an agreement between the parties on the composition of the confidentiality club and that this proposal by the parties is in accordance with the principle of a fair trial. Even though Rule 262A RoP provides that the confidentiality club shall include at least one natural person from each party, the Court considers that it is possible for the parties to exclude access by a natural person by mutual agreement, provided that the principle of a fair trial is not affected.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 11/03/2024, 10x Genomics, Inc. / Curio Bioscience Inc. (Case number UPC_CFI_463/2023 ORD_8500/2024)
Example of decision on the possibility for a party to name the persons whose access to confidential data it requires: “If a party has made use of its right of nomination, the exclusion of a person cannot be justified solely on the grounds that this person is active in the technical field related to the patent in question. It is precisely because of this proximity that the person in question is often only in a position to provide their company and its representatives with the information required for effective prosecution. This does not mean that the information classified as confidential is unprotected. Even if the person concerned has access to the information in question, they must comply with the confidentiality obligations imposed on them, which can be enforced if necessary by imposing fines or enforced under national law.”

Court of First Instance - The Hague (NL) Local Division, Order dated 04/03/2024, Plant-e, Plant-e Knowledge v. Arkyne Technologies S.L. (Case number UPC_CFI_239/2023 ORD_590350/2023)
Example of decision on the access limited to confidential information: “The wording of R.262A.1 and also Art.58 UPCA seem to allow for a reading that, in addition to limiting access to specific persons, it is also possible in proceedings before the UPC to rule that access to ‘confidential information’ (which is defined broader than trade secrets: “trade secrets, personal data or other confidential information of a party”, Art. 58 UPCA) be prohibited completely. This follows from the use of the wording “restricted or prohibited or (…) restricted to specific persons” (emphasis added, JR). Considering the principles of fair trial, this could in some circumstances result in allowing access to a party’s counsel only. In interpreting the legal framework, it is relevant that in different Contracting Member States Directive (EU) 2016/943 is implemented in different ways”
“This leaves room for more flexibility to align access with the circumstances of a case and the type of confidential information concerned. Also, justification for this may be found in the logic that the principle of fair trial is more likely to be impaired when the essence of the case is the trade secret and no natural person of a party would get access to the confidential information, as compared to a case wherein this information is a side issue.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 23/02/2024, Curio Bioscience Inc. / 10x Genomics, Inc. (Case number UPC_CFI_463/2023 App_8500/2024)
Example of decision on the possibility to postpone the start of the period for responding to an objection: “By procedural order dated February 16, 2024 (ORD_8568/2024), the Düsseldorf Local Chamber set the deadline for responding to the objection as March 1, 2024. The start of the period is therefore the issue of the relevant order, so that there is no scope for the determination of a later start of the period requested by the applicant. Insofar as the applicant wishes to postpone the start of the reply period to the conclusion of the secrecy protection proceedings pursuant to R. 262A RoP (cf. in this regard to the main proceedings: Hamburg Local Chamber, procedural order of November 28, 2023, UPC_CFI_54/2024 and procedural order of January 27, 2024, UPC_CFI_22/2023), such a postponement of the start of the deadline is not compatible with the urgent nature of the proceedings for provisional measures. This applies all the more since the secrecy protection proceedings have not yet been concluded. At present, only a provisional secrecy protection order is in force.
As the local division made clear in the aforementioned procedural order, none of the time limits can be extended in view of the close proximity of the date for the oral hearing. There is no reason to depart from this principle.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 14/02/2024, 10x Genomics, Inc. v. Curio Bioscience Inc. (Case number UPC_CFI_463/2023 ORD_8075/2024)
Example of decision on the procedure for protecting confidential data: “As a general rule, the rapporteur, following the claimant’s initial unilateral assessment of secrecy, will limit, by means of such an order, the circle of persons from the opposing party authorized to access the document until the final decision on the secrecy claim. Initially, the document will only be disclosed to the opposing party’s representative, insofar as the applicant does not himself authorize disclosure to other persons who have yet to be designated by the opposing party’s representative. If, on the basis of the content of the request for protection of confidential information, the judge-rapporteur exceptionally considers that such an interim secrecy order is not necessary, the principles of fairness and loyalty which must always be respected in accordance with point 5 of the preamble to the Rules of Procedure already require that the party requesting secrecy be informed before the unredacted version is disclosed. The opportunity to express its point of view gives the party concerned the chance to react to the threat of unprotected disclosure of the information it deems necessary to maintain secrecy and, if necessary, to declare that the documents concerned should not be the subject of the proceedings or should not be disclosed in their entirety.
As a result, all documents submitted together with an application for secrecy protection in accordance with R. 262A ‘RoP’ are subject to provisional secrecy protection. There is therefore no need for secrecy protection orders in advance of the submission of such completely unredacted documents.”

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.”

Court of First Instance - Munich (DE) Local Division, Order dated 27/12/2023, KraussMaffei Extrusion GmbH / TROESTER GmbH & Co. KG (Case number UPC_CFI_181/2023 ORD_588953/2023)
Example of decision on the terms and conditions framing the request for confidentiality from one party: “A request under Rule 262a of the Rules of Procedure aims to protect confidential information vis-à-vis the other party. In the workflow of the infringement proceedings, a redacted version of the brief or attachment containing confidential information must also be uploaded as a "redacted version" at the time of the first submission of a brief or attachment or within 14 days thereafter. The system then prompts the submitter of the "redacted version" to submit corresponding applications in the workflows in accordance with Rules 262 or 262a RoP. If this has been omitted, there is currently no possibility of correction. It is then no longer possible to initiate a 262/262a workflow. This must be repeated for further briefs and attachments containing (the same) confidential information.”

Court of First Instance - Paris (FR) Local Division, Order dated 19/12/2023, Dexcom, Inc. / Abbott Laboratories, Abbott Diabetes Care Inc, Abbott France, Abbott NV/SA, Abbott B.V, Abbott S.r.l, Abbott Sacandinavia Aktiebolag, Abbott GmbH, Abbott Diagnostics Gmbh, Abbott Logistics B.V (Case number UPC_CFI_230-2023 ORD_596021-2023)
Example of decision on the number limited of persons authorized to access confidential data:“Pursuant to Article 9.3 of the EU Directive on Trade Secrets, the Court, when deciding on the measures to protect confidential information, shall take into account the need to ensure a fair trial and any potential harm for either of the parties resulting from the granting or refusal of such measures.
Therefore, considering on the one hand the disproportionate number of representatives on each of the parties’ side, i.e. two against eleven representatives and on the other hand the fact that other attorneys that might work on the Respondent’s defence are bound by strict professional obligations to protect confidential information, it would be unfair to restraint the access to only the representatives identified in the Statement of claim.
Also, the proceedings at hand are part of a global dispute, involving parallel proceedings before the UPC, concerning the same product, namely “Free Style Libre 2” and “Free Style Libre 3” which require coordination between the Respondent’s law firms, i.e. Bird&Bird AARPI France and Quinn Emmanuel Urquhart & Sullivan LLP, Germany.
More precisely, in order to ensure the right to an effective remedy and to a fair trial, within the UPC divisions, a coordination of responses, between the teams is needed when they refer to the same product.
Moreover, considering that proceedings within the UPC require assistance from employees such as administrative and IT, it would be necessary and appropriate to authorize access to the “Legal team” as designated in the CMS provided that they sign a Non-Disclosure Agreement.
Lastly, while it is necessary and appropriate to extend access to parallel pending proceedings within the UPC, allowing the extension of access to the Respondent’s law firm involved in national proceedings in Europe (i.e. Bird&Bird Spain, UK, Quinn Emmanuel Germany), and in the US would weaken the efficiency of the confidentiality measure.”

Court of First Instance - Hamburg (DE) Local Division, Order dated 05/12/2023, Avago Technologies International Sales Pte. Limited v. Tesla Germany GmbH (Case number UPC_CFI_54/2023, ORD_589355/2023)
Example of decision on the extension of the plaintiff’s time limit for responding to the defendant’s action for annulment, following a former defendant’s request for confidentiality: “With regard to the plaintiff’s time limit for responding to the defendant’s action for annulment, a concurrence with the time limit for replying must be ordered. It is true that the application for a 4 extension of the time limit does not expressly result from the wording of the application for determination of the time limit for replying to the action for annulment. However, according to the statement of grounds submitted to the court, the plaintiff reasonably requested that this time limit run concurrently with the time limit for the reply and thus, in substance, an extension of the time limit. This request had to be complied with, as such synchronisation not only appears to be economical in terms of the process, but is also necessary with regard to the right to be heard, as the content of the statement of defence, including the protected information contained therein, is important for the drafting of the reply to the action for annulment.”

Court of First Instance - Hamburg (DE) Local Division, Order dated 28/11/2023, Avago Technologies International Sales Pte. Limitet vs. Tesla Manufacturing Brandenburg SE/Tesla Germany GmbH (Case number UPC_CFI_54/2023, ORD_589355/2023)
Example of decision concerning deadlines for secrecy requests: “It can be deduced from R. 9.3 (a) of the Rules of Procedure that a simple determination of the expiry of the time limit can also be pronounced by the court upon request. With regard to the right to a fair hearing and the interest of a proper defence against the plaintiff’s response, in the case of applications for the protection of secrets, the time from which the party representatives can fully discuss the opposing party’s pleading with their own party or the group of persons of their own party admitted by the court must be taken into account. As a rule, this is only possible once the confidentiality proceedings have been concluded in accordance with R. 262A RoP.”

Court of First Instance - Hamburg (DE) Local Division - Section, Order dated 03/11/2023, Avago Technologies International Sales Pte. Limited vs. Tesla Manufacturing Brandenburg SE/Tesla Germany GmbH (Case number UPC_CFI_54/2023, ORD_577703/2023)
Example of decision recognizing or ruling out trade secrets: “The defendants can successfully argue that the information on the technical implementation of the challenged embodiment (statement of defence under C. IV. 3 c] and Annex B 2) is a trade secret with the certainty required for a confidentiality application under R. 262A of the Brussels Convention. The existence of a trade secret does not have to be established to the court’s satisfaction, but it is sufficient if this is predominantly probable, as shown by the wording in Art. 9 (1) and (2) (a) of Directive (EU) 2016/943, which alternatively refers to "alleged trade secrets". Art. 58 UPCA also refers to the possibility of ordering protective measures "for the protection of trade secrets, personal data or other confidential information of a party to the proceedings" and thus provides an extended scope of protectable information.
(...)
The defendants can also successfully argue that the information regarding the purchase prices of individual chips (all highlighted in grey, there in particular sub D.I.2.a)(4)) is a trade secret with the certainty required for a confidentiality request under R. 262A of the German Constitution. Insofar as the plaintiff asserts that the costs of a [...] chip are not a secret in the market, this does not go to the heart of the confidentiality application.
(...)
In this respect, a distinction must also be made between applications under R. 262.2 of the Code of Procedure on the one hand and R. 262A of the Code of Procedure on the other, in that an application for confidentiality under R.262A concerns confidentiality vis-à-vis the party to the proceedings, while applications under R. 262.2 concern confidentiality vis-à-vis third parties not involved in the proceedings. The defendants are at liberty to assert the confidentiality of this information in the event of a request for access to the file. With regard to the plaintiff itself, this is not appropriate due to the knowledge already acquired by the plaintiff itself.”

Court of First Instance - Hamburg (DE) Local Division - Section, Order dated 04/10/2023, Avago Technologies International Sales Pte. Limited v. Tesla Manufacturing Brandenburg SE/Tesla Germany GmbH (Case number UPC_CFI_54/2023, ORD_577763/2023)
Example of decision granting protection of secrecy: “According to R. 262A.4 of the Code of Procedure, the representative of the other parties must be invited to submit a written statement before an order is issued. However, in the interests of effective protection of secrecy, the requirement to be heard before issuing an order only applies to the final order of a secrecy order and access restriction. In the interest of effective protection of secrecy in accordance with Directive (EU) 2016/943 , however, access can be further restricted until a final order is issued, namely to the person representing the plaintiff. Discussion of the confidentiality application with the party is possible with the redacted versions of the documents concerned.”

Court of First Instance - Munich (DE) Local Division, Order dated 03/10/2023, Huawei Technologies Co. Ltd v. Netgear Inc./Netgear Deutschland GmbH/Netgear International Limited (Case number UPC_CFI_9/2023, ORD 575878/2023)
Example of decision granting protection of secrecy: “Insofar as the applicant’s request is for protection pursuant to Rule 262.2 of the Rules of Procedure, no further action is required at present. Protection is granted automatically as soon as the request is received. As soon as a third party requests access to the information covered by the application, a decision will have to be made on the opposing applications.”