Panasonic Business: Clarification on comparable licence production before the JUB (Order for Production of Evidence).

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.

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.

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.