29 July 2024

Comparable licenses before the UPC: compelled production and confidentiality clubs

Updated on 30 August 2026.

FRAND litigation is litigation about evidence. Whether an offer is fair, reasonable and non-discriminatory is rarely demonstrated in the abstract: it is measured, for the most part, against the licenses the patentee has already granted. Hence the central role of so-called comparable licenses, and the awkward question: who must produce them, and who may read them?

These agreements are also the most confidential material the parties hold. Producing them means exposing rates, royalty bases and discounts negotiated with third parties who are strangers to the proceedings. As early as 2024, the Unified Patent Court (UPC) built a framework combining compelled production and protection of secrecy, which the Court of Appeal refined in 2026.

The orders issued in the Panasonic saga, supplemented by the recent case law on confidentiality clubs, draw a clear line: transparency in the service of FRAND licensenegotiations, but no indiscriminate exploration of the opponent's portfolio of agreements.

Article 59 UPCA and Rule 190 RoP: the framework for compelled production

The textual basis is twofold. Article 59 UPCA allows the court to order a party, or a third party, to produce evidence lying within its control, subject to the protection of confidential information. Rule 190 of the Rules of Procedure (RoP) organizes the exercise of that power: the requesting party must identify the evidence sought and explain why it is necessary to support its allegations.

The mechanism follows the logic of Directive 2004/48/EC on the enforcement of intellectual property rights and, as regards confidentiality, meets the requirements of Directive (EU) 2016/943 on trade secrets. On the FRAND front, it provides the tool by which one party may obtain the other's existing license agreements, in line with the framework laid down by the CJEU in Huawei v ZTE.

The Panasonic orders: transparency, but no fishing expedition

The movement began before the Munich local division: by order of 24 April 2024 in Huawei v Netgear, the production of a comparable license concerning standard essential patents was ordered. The Panasonic cases, born of the twelve actions brought in July 2023 against Xiaomi and Oppo on four patents declared essential to the WCDMA and LTE standards withETSI, then allowed the Mannheim local division to refine the method.

First decision, on 30 April 2024, in Panasonic v Xiaomi (UPC_CFI_218/2023, UPC_CFI_219/2023 and UPC_CFI_223/2023): the judge-rapporteur granted Panasonic's request to put its own licenses into the proceedings, in the name of transparency in FRAND negotiations, subject to the protection of the confidential information of the third parties concerned. Transparency is an instrument of the negotiation, not an end in itself.

Second decision, on 16 May 2024, in Panasonic v Oppo (UPC_CFI_216/2023): the defendant's request for production of all of Panasonic's 3G and 4G licenses for mobile devices was rejected as too vague and too broad, amounting to an exploratory measure designed to probe the patentee's licensing practice. The line is drawn: Rule 190 RoP confers no right to a fishing expedition, especially where the posture of the party seeking the measure suggests an unwilling licensee.

Rule 262A: protecting secrecy without depriving a party of its case

Once production is ordered, access must be organized. Rule 262A RoP allows the communication of confidential information to be restricted to a defined circle of persons, the confidentiality club, comprising representatives of the opposing party and, in principle, at least one natural person from that party. The challenge is to reconcile the protection of trade secrets, safeguarded by Article 58 UPCA, with the right to a fair trial.

For comparable licenses, this mechanism is the systematic counterpart of production: rates, royalty bases and sensitive clauses circulate only within the club, under confidentiality undertakings backed by sanctions. The Panasonic orders already foreshadowed this, making transparency conditional on the protection of third parties, whose consent in principle is often sought beforehand.

2025-2026: the Court of Appeal frames confidentiality clubs

The case law has since grown considerably, up to three orders of the Court of Appeal of 26 January 2026. In Sun Patent Trust v Vivo (UPC_CoA_755/2025, 757/2025, 791/2025 and 793/2025), issued precisely with respect to comparable licenses produced in support of a FRAND argument, the Court held that the "external eyes only" regime, which excludes any employee of the opposing party, must remain exceptional: access for at least one representative of the party prevails in principle, with the circle confined to what is necessary.

The Court of Appeal added a balancing device: the "licensing bar", by which the employee admitted to the club is prohibited, for a set period, from taking part in license negotiations with third parties. Two years in Sun Patent Trust v Vivo, five years in Ericsson v Asus (UPC_CoA_632/2025): the person who has read the opponent's comparables cannot use them at the negotiating table. A third order of the same day, Merz v Viatris (UPC_CoA_917/2025), finally recalls that Rule 262 RoP (confidentiality vis-a-vis the public) and Rule 262A RoP (vis-a-vis the opposing party) must not be conflated.

All of these orders are available in the UPC register of decisions. What emerges is a now predictable regime: targeted production, a restricted confidentiality club that nonetheless includes the party itself, and temporary neutralization of the individuals exposed to sensitive data.

What this means for FRAND negotiations

For the patentee, comparables cut both ways. They substantiate the FRAND character of the offer, and the UPC's first decision on the merits indeed held that, at the initial offer stage, the patentee need not produce its third-party agreements, as we analysed in relation to the UPC's first FRAND decision in Panasonic v Oppo. But once litigation is under way, their production can be requested or compelled: the confidentiality regime must be prepared in advance, third-party agreements included.

For the implementer, the path is narrow but real: a precise, circumscribed request for production tied to a structured argument on the rate, for instance on the risk ofroyalty stacking, stands every chance; a request sweeping across the opponent's entire licensing practice will fail, and will moreover betray the posture of an unwilling licensee. The quality of the evidence request has become part of the demonstration of good faith.

These orders are a reminder, finally, that evidence before the UPC is handled offensively: compelled production, but also measures preserving evidence, and, in the background, the protection of the proceedings themselves through anti-anti-suit injunctions. The Panasonic saga, closed by the global agreements of January 2025, proved the point: command of the evidentiary ground precipitates settlement.

Key takeaways

  • Article 59 UPCA and Rule 190 RoP make it possible to obtain the production of comparable licenses, a central element of the FRAND demonstration before the UPC.
  • Panasonic v Xiaomi (Mannheim, 30 April 2024): the patentee may be authorized to put its own licenses into the proceedings, subject to the protection of third parties' confidential information.
  • Panasonic v Oppo (Mannheim, 16 May 2024, UPC_CFI_216/2023): vague and general requests are rejected as an exploration of the opponent's licensing practice.
  • Rule 262A RoP organizes confidentiality clubs; the Court of Appeal (26 January 2026, Sun Patent Trust v Vivo and Ericsson v Asus) requires access for at least one representative of the party and confines the "external eyes only" regime to exceptional cases.
  • The "licensing bar" (two to five years depending on the orders) neutralizes, in negotiations with third parties, the individuals who had access to the comparables.
  • The precision of the production request has become a marker of the requesting party's good faith within the FRAND negotiation programme.

Frequently asked questions

What is a comparable license in a FRAND dispute?

It is a license agreement already concluded by the patentee (or by the defendant) covering similar patents or portfolios, used as a benchmark to assess whether the proposed rates and terms are FRAND.

Can the UPC be asked to order production of the opponent's licenses?

Yes, on the basis of Article 59 UPCA and Rule 190 RoP, provided the agreements sought are precisely identified and shown to be necessary to support articulated allegations; general and exploratory requests are rejected.

How is the confidentiality of the produced licenses protected?

Through a confidentiality club set up under Rule 262A RoP: access limited to a defined circle, in principle including at least one representative of the opposing party, with confidentiality undertakings and, where appropriate, a temporary prohibition on taking part in license negotiations (a "licensing bar").

Must the patentee produce its comparable licenses at the initial offer stage?

No: in its first FRAND decision (Panasonic v Oppo, 22 November 2024), the UPC held that the patentee was not required, at the offer stage, to disclose its agreements with third parties, whose confidentiality deserves protection; the question of production arises later, within the procedural framework described above.

The firm acts in standard essential patent and FRAND licensing disputes before the UPC and the French courts, including in obtaining or challenging production orders and negotiating confidentiality regimes. Talk to us.

This article is an original and substantially updated adaptation of an analysis by Matthieu Dhenne first published on Kluwer Patent Blog on July 29, 2024: Panasonic cases: Clarification on the production of comparable licenses before UPC (orders to produce evidence).

First decision

The first decision was made in the case between Panasonic and Xiaomi. In this case, the President of the Court reiterates the importance of transparency in disputes FRAND and therefore the necessity to produce the licences SEP existing ones that Applicant has concluded with third parties (UPC_CFI_218/2023, UPC_CFI_219/2023, UPC_CFI_223/2023). In this case, the request originated from Panasonic, which sought authorisation to disclose licences concluded with third parties. The Court accepted this request on the condition that certain confidential information of third parties be protected.

Second ruling

In the second case, Panasonic v Oppo, the court president refused to authorise the production of comparable licences (UPC_CFI_216/2023). In this case, it was the defendant, not Panasonic, who requested the production of licences concluded or to be concluded by the claimant concerning 3G and 4G for mobile devices. The request was rejected as being too vague and too broad, and thus akin to a fishing expedition. The court noted that Oppo's request seemed indeed to denote a will to dig deeper into the patent holder's licensing practice, while pointing out that the order to produce evidence would probably not be granted if the defendant was considered a reluctant licensee from the outset.

The JUB and FRAND licences

In general, it can be noted that the Court here asserts its desire to participate in debates on FRAND licences. But in the decision of 30 April in particular, the Court analyses the necessity of a document production order in light of the idea that a SEP is subject to EU competition law, in particular Articles 101 and 102 TFEU, as developed in the case law of the CJEU in the Huawei v ZTE case. As a reminder, in that case, the Court of Justice established a procedural framework for balancing the interests and obligations of intellectual property rights holders and implementers in FRAND negotiations. This reminder of the UPC It is important as it reminds us that the case law of the Court of Justice must be applied by the UPC, so that the Court of Justice continues to set the framework for FRAND litigation. This is not a surprise, particularly in light of Article 20 of the UPCA and Article 326 TFEU on enhanced cooperation, but it is a reminder that sets the scene from the outset: SEP holders will need to continue to respect the principles established by the CJEU's case law before attempting to enforce their rights before the UPC.

But paradoxically, while logically accepting the CJEU's jurisdiction, the Court also seems to do so to better position itself in the SEP/FRAND debates. While the European Commission has taken up the issue of FRAND licences with a view to harmonisation, the UPC states that certain practical necessities, such as transparency in FRAND licence negotiations, can already be handled by the UPC itself. Perhaps if the development of SEP/FRAND litigation allowed for the harmonisation of European positions on the matter, the Commission would abandon its much-debated project? The JUB still has several questions to answer, which I will address (in part) in my next article.

Author : Dhenne Avocats.