UPC Court of Appeal limits disclosure and leaves door open for future expert testimony

In a decision issued on 24 September 2024 by the Court of Appeal of the Unified Patent Court (UPC), the court upheld a decision that limited the disclosure of additional licensing agreements in the ongoing dispute between Panasonic and OPPO/OROPE. The case, focused on SEPs and FRAND licensing terms, saw OPPO and OROPE seeking further evidence to strengthen their FRAND defence.

OPPO and OROPE requested broader disclosure of Panasonic’s 3G and 4G SEP licensing agreements, arguing that more comprehensive access to these agreements was essential for evaluating whether Panasonic’s licensing offers adhered to FRAND obligations. Specifically, they sought the disclosure of all similar agreements Panasonic had entered into with other licensees.

However, the Court of First Instance had previously rejected this request, finding that Panasonic had already submitted several key agreements which were deemed sufficient for assessing the FRAND terms at this stage. The Court reasoned that OPPO and OROPE’s request for additional agreements was disproportionate and unnecessary, especially considering the risk to third-party confidentiality.

The Court of Appeal confirmed the earlier decision, agreeing that the existing agreements provided enough evidence for evaluating Panasonic’s licensing terms. The Court concluded that OPPO and OROPE’s demand for further disclosure would overburden the proceedings and was not necessary for a fair evaluation. The court emphasized that the balance between procedural fairness and the protection of confidential business information had to be maintained, and the agreements already submitted by Panasonic were adequate for this purpose.

Although the Court denied the appeal in support of broader disclosure, it left open the possibility of allowing expert testimony later in the proceedings. Under Rule 114 of the UPC Rules of Procedure, expert evidence may be introduced if it becomes necessary as the case evolves or if further clarification is needed regarding the adequacy of the disclosed agreements. This case perhaps shows the limits of the UPC judges’ willingness to order broad documentary disclosure requests – and thought needs to be given to acquiring such key evidence through different routes – such as by use of saisie procedures, disclosure from the UK or by way of seeking a 1782 order in the US.