Home » UPC decisions » Local Division » Mannheim Local Division » LD Mannheim, April 30, 2024, Order re producing license agreements, UPC_CFI_ 218/2023, UPC_CFI_ 219/2023, UPC_CFI_ 223/2023,

LD Mannheim, April 30, 2024, Order re producing license agreements, UPC_CFI_ 218/2023, UPC_CFI_ 219/2023, UPC_CFI_ 223/2023,

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Key takeaways

In order to demonstrate that FRAND obligations as required by Art. 101 and 102 TFEU and the CJEU’s case law (Huawei v. ZTE) have been met, Plaintiff can request an order, directed against themselves, to produce a SEP license agreement with a third party. Passages may be redacted insofar as the Plaintiff does not refer to these passages for its factual assertions and legal argumentation. This follows from the freedom of the parties to determine the supporting evidence for their cases according to Art. 43 UPCA.

The Court announced to issue confidentiality orders according to R. 262 and/or R. 262A RoP once the license agreements were submitted and corresponding applications for confidentiality are filed.

In contrast to the opinion articulated by both parties, the Court derived the power to issue a corresponding order not from R. 172.2, 190 and 191 RoP. Rather the Court dervied this power from general principles, following Art. 43 UPCA, and the “extensive powers to conduct the proceedings” given by the UPCA to the Judge Rapporteur and the Presiding Judge.

Following German practice, parallel to seeking the order from the Court, the Plaintiff has contacted its contractual parties seeking permission to produce the SEP license agreements. One party did not reply, the other objected but did not provide substantative reasons as to its objections. The Court held that the third party’s rights are sufficiently considered if that party was given the possibility to comment. In the present case, the third parties’ conduct was seen as insufficient to prevent the court from issuing the order.

The Court also stated that the contractual partner may also request to be involved in the proceedings relating to this issue and thereby articulate its own interests, if there is a need for this.

In the present case, it was not necessary to order the other party to provide information and to grant a 15-day period for comments, as requested by the Plaintiff. This communication has now already taken place in the proceedings as a result of the plaintiff’s enquiries and is therefore procedurally obsolete. In particular, the more detailed modalities contained in the licence agreements regarding the mutual information of the contracting parties about the impending order cannot affect the Court’s authority to issue an order. Otherwise, the contracting parties would have the power to delay the submission of licence agreements in SEP procedures by including clauses that provide for excessively long deadlines prior to submission, or to tie them to further conditions that hinder the progress of the procedure.

Division

Court of First Instance – Mannheim (DE) Local Division

UPC number

UPC_CFI_ 218/2023

UPC_CFI_ 219/2023

UPC_CFI_ 223/2023

Type of proceedings

application re producing license agreements

Parties

Plaintiff: Panasonic Holdings Corporation

Defendants:

Xiaomi Technology Germany GmbH

Xiaomi Technology France S.A.S

Xiaomi Technology Italy S.R.L

Xiaomi Technology Netherlands B.V.

Odiporo GmbH

Shamrock Mobile GmbH

Patent

EP 3096315

Body of legislation / Rules

Art. 43 UPCA, R. 9.2 RoP, R. 172.2 RoP, R. 190 RoP, R. 191 RoP


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