Key takeaways
Both, claimant and defendant can rely on R. 190.1 RoP to request an order to produce evidence.
In view of the principle of equality of arms, Art. 59 UPCA and R. 190.1 RoP have a broader scope than the initial wording may suggest (evidence in support of its claims). The purpose of these provisions is to ensure that the party who has the burden of proof will have access to the tools for carying this burden.
A request to produce evidence may be denied at a certain stage of the proceedings which does not preclude the possibility of the court ordering such production at a later stage.
In case a FRAND defence is raised and a R. 190 RoP request is filed by the alleged infringer, the court must balance (i) the alleged infringer’s interest in obtaining evidence to support its FRAND defence and (ii) the patent proprietor’s interests in maintaining its business secrets (and those of third parties) and not to be overburdened by procedural obligations that may delay proceedings. It is within the Court of First Instance´s discretion when it decides the request for an order to produce evidence. The success of such a request may depend on the current stage of the proceedings.
It is possible for a party to request an order to produce evidence against itself if certain requirements are fulfilled.
Before filing a request to be ordered to produce own licence agreements, a party is required to request permission from their contracting parties to submit such licence agreements in the proceedings subject to confidentiality measures. Only if such attempts are unsuccessful or if the terms of such licence agreements prevent any such request, a party may file a R. 190 RoP request against itself.
There is no decision on legal costs for the appeal proceedings in this case, as the order of the Court of Appeal is not a final order or decision.
The order is not a final order or decision since it is not an order or decision concluding an action (R. 118.5 RoP, R. 242.1 RoP, Art. 69 UPCA). The outcome of this appeal must be considered in the final decision on the action when it comes to the reimbursement of costs.
Division
Court of Appeal Luxembourg
UPC number
UPC_CoA_298/2024, ORD_48652/2024
UPC_CoA_299/2024, ORD_48654/2024
UPC_CoA_300/2024, ORD_48655/2024
Type of proceedings
Appeal proceedings
Parties
Appellants, Defendants in main proceedings: Guangdong OPPO Mobile Telecommunications Corp. Ltd., OROPE Germany GmbH
Applicant and Respondent, Claimant in main proceedings: Panasonic Holdings Corporation
Patent(s)
EP 2 568 724
EP 2 207 270
EP 3 096 315
Body of legislation / Rules
Rule 118.5 RoP, Rule 190.1 RoP, Rule 191 RoP, Rule 242.1 RoP, Rule 334(e) RoP, Art. 59 UPCA, Art. 69 UPCA
