In an infringement action with a parallel counterclaim for revocation, the court had issued a first R. 190 RoP order (Order I), ordering the claimant to produce seven categories of evidence, which it did. The defendants then filed a second R. 190 RoP application (Application II), arguing that the evidence produced revealed further relevant material in the claimant’s control. In parallel, UK revocation proceedings concerning the same patent were pending, and the parties reached a compromise on disclosure terms before the UK court. The LD Brussels partially granted Application II but aligned the scope and timeframe of the order with the terms agreed in the UK disclosure proceedings, and dismissed the request for an additional physical sample on the grounds that no evidential gap had been demonstrated.
Key takeaways
Alignment of evidence requests with parallel national proceedings
In parallel national and UPC proceedings, the UPC should endeavour as much as possible to align its orders for the production of evidence with the requests and search parameters agreed or ordered in the parallel proceedings. Such alignment leads to a common evidence basis when assessing the infringement action and/or counterclaim for revocation. This approach is dictated by procedural efficiency and proportionality, balancing the respondent’s burden of submitting evidence with the applicant’s right to obtain it.
A second R. 190 RoP application requires demonstration of a genuine evidential gap
A party seeking a second order for the production of evidence, after having received and reviewed material under a first order, must demonstrate a genuine evidential gap. It is not sufficient to argue that the evidence already provided does not conclusively prove the requesting party’s assertions. Merely requesting “further” or “more” evidence where the first order has been complied with does not meet the threshold of proportionality, equity, and fairness
Retention of samples for potential court-ordered expert testing
Where destructive testing has already been performed on disclosed samples, the court may decline to order production of additional samples in order to preserve evidence for potential future court-appointed independent expert testing under a court-approved testing protocol.
Division
Local Division Brussels (Samuel Granata, presiding judge and judge-rapporteur; Carine Gillet; Marije Knijff; Paolo Gerli, technically qualified judge)
UPC number
UPC_CFI_629/2026 and UPC_CFI_1357/2025
Type of proceedings
Application for the production of evidence (R. 190 RoP)
Parties
Claimant (Respondent to Application II): Establishment Labs S.A.
Defendants (Applicants for Application II): GC Aesthetics ParentCo Limited and 12 others
Patent(s)
EP 3 107 487 B1
Body of legislation / Rules
Art. 59 UPCA; Art. 82(4) UPCA; R. 9 RoP; R. 190 RoP; R. 190.7 RoP; R. 262A RoP; R. 263.3 RoP; R. 354.3 RoP; R. 361 RoP
