The CoA partially overturned a broad evidence production order of the LD Copenhagen and clarified the limits on the scope. The Court of First Instance had ordered Appellant to produce, subject to a penalty payment of up to EUR 1,000 per day of delay, complete construction drawings, manuals and “other materials” provided to customers.
Appellant appealed, raising five grounds: disproportionality, lack of evidentiary necessity for process features, fishing expedition / pre-emptive remedies, self-incrimination, and insufficient confidentiality measures.
The Court of Appeal partially upheld the appeal. It confirmed that a production order was justified in principle, given that the claimant had presented plausible evidence of infringement and the relevant technical information lay exclusively within the defendant’s sphere of control. However, the scope of the order was excessive in three respects:
1. Missing reasoning on alternatives: The first instance failed to explain why less intrusive means would not have sufficed.
2. Other sites: No justification was provided as to why construction drawings of furnaces at locations other than the single reference installation (Oberpullendorf) on which the defendant itself had based its non-infringement defence were necessary to assess the three disputed features.
3. “Other materials”: This open-ended category was insufficiently linked to the issues in dispute and incompatible with the requirement of specificity.
Key takeaways
Strict necessity and proportionality govern the scope of evidence production orders
An order for the production of evidence under Art. 59 UPCA must be confined to what is strictly necessary and proportionate for the proof of specific contested facts. It must not serve exploratory or speculative purposes and requires a concrete link between the requested measure and the facts in dispute. The court identifies four cumulative constraints:
(1) specific and substantiated allegations,
(2) strict relevance to the issues in dispute,
(3) proportionality including unavailability through less burdensome means, and
(4) a fair balance between competing rights including trade secret protection.
Construction drawings can be relevant for establishing process parameters
The purpose of an order under Art. 59 UPCA is not limited to obtaining evidence that conclusively establishes a disputed fact on its own. It is sufficient that the requested material is capable of contributing, directly or indirectly, to the assessment of that fact. In complex technical systems, process characteristics and operating parameters are often closely linked to the underlying design, so that construction drawings may legitimately be regarded as evidentially relevant even for process-related features.
Self-incrimination privilege does not preclude production of pre-existing documents in civil proceedings
The prohibition in Art. 59(1) UPCA cannot be interpreted as meaning that a party may never be ordered to produce documents merely because they might be adverse to its interests. The provision excludes only orders compelling self-accusatory material incompatible with procedural safeguards, not the disclosure of pre-existing technical or commercial documents relevant to the resolution of a dispute.
Division
Court of Appeal, Panel 1b
UPC number
UPC_CoA_57/2026
Type of proceedings
Appeal against an order for the production of evidence
Parties
Appellant: Polytechnik Luft- und Feuerungstechnik GmbH
Respondent: Dall Energy ApS
Patent(s)
EP 2 334 762
Body of legislation / Rules
Art. 58, 59, 73(2) UPCA
R. 190, 220.1(c), 262A RoP
Directive 2004/48/EC
Directive 2014/104/EU
