Unlocking UPC secrets: No standardisation of penalties for confidentiality breaches across local divisions

On 30 January 2023, the Paris Local Division decided that it is not necessary to harmonise penalties for breach of confidentiality regarding a common set of confidential information submitted to different local divisions in different infringement proceedings between the same parties. 

In the case of DexCom Inc v various Abbott entities (UPC_CFI_230/2023) Judge Rapporteur Lignières of the Paris (FR) Local Division granted Abbott’s application for confidentiality regarding the statement of defence filed on 14 November 2023, because it contained sensitive information, such as sales figures.  JR Lignières agreed to limit which individuals had access to the statement of defence, to prevent it from being put on the public register and set the penalty for breach of the confidentiality order at €50,000. 

In parallel infringement proceedings relating to a different patent in front of the Munich (DE) Local Division, the Court set the penalty for breach of a confidentiality order protecting the same information at €250,000. Abbott therefore sought to have JR Lignières’ Order harmonised with the Order from the Munich Local Division, and the penalty set at €250,000. DexCom opposed the application, and requested that an additional clause be added to JR Lignières’ Order to prevent a double fine from both the Munich and Paris Local Divisions in the event of a breach of confidentiality. 

In a Panel Review conducted by the Paris Local Division, the Panel upheld JR Lignières’ original decision. The Panel agreed that since this information had already been made available in three other proceedings, including in the German National Courts where it was not protected by a confidentiality order, the potential for damage to Abbott was not significant enough to justify a fine of €250,000. 

The Panel also provided further comment on how orders from different local divisions handling different cases where common confidential information is at issue can be expected to interact. The Panel found that because the cases in the Paris and Munich Local Divisions relate to different patents, there is no requirement to harmonise the judgements, regardless of the fact that they relate to a common set of confidential information. In the Order the Panel states: “In such circumstances, one division is not bound by a decision in another division despite belonging to the same unified court.” 

The Panel also rejected DexCom’s application to add a clause preventing a double fine for breach, stating that “There is no grounds to bind the Paris Local Division, in case of breach and as requested by Dexcom, in cases where the Munich Local Division has already imposed a fine.” The panel did, however, state that should the Order be breached, the Court would consider all of the facts “in concreto” when deciding an appropriate fine; and this would also include any previous fines issued by the Munich Local Division. This is a clear declaration from the Paris Local Division that, in such cases, the local divisions are able to operate autonomously and with their own discretion, regardless of ongoing related proceedings in other local divisions. 

These local decision may of course be subject to further appeals and it will be interesting to see if the Court of Appeal for the UPC will agree that it serves the UPC system well to have such divergent approaches in different local and regional courts.

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