UPC and FRAND: Please order me to disclose!

The judgment relates to an application for an order against the applicant itself requiring it to produce licence agreements.

The wider dispute concerned a FRAND/patent dispute between Panasonic and a number of other entities. A patentee will be blocked from enforcing their patent rights, under EU Antitrust law, if it has failed to offer licence terms which are fair, reasonable, and non-discriminatory (FRAND). Parties typically demonstrate conformity with the FRAND rules by referring to licence agreements in the sector to act as a benchmark. In this case, the applicant sought to rely on two licence agreements with third parties. However, the agreements contained confidentiality clauses prohibiting disclosure without consent or inter alia a court order to that effect. Accordingly, the applicant sought an order against itself such that it could disclose the agreements without breaching the terms. Whilst the third parties in question had been contacted, neither responded in substance.

The Judge-rapporteur, Dr Tochtermann, considered the rules of procedure and held that their general case management powers under Article 43 UCPA enabled them to make the order sought.

The judge ordered that the licence agreements could be ordered but that passages be redacted insofar as they are not relied upon for factual assertions or legal arguments. The judge noted that the third parties had failed to provide sufficient reasons to preclude a production order.

The judgement is likely to be of significant procedural interest to those seeking to engage in UPC/FRAND disputes. With the Rules of Procedure not providing for standard disclosure in such disputes, it will often be the responsibility of the parties to make applications of the sort seen in this case to bring comparable licence agreements into the case.