The order for the production of evidence before the Unified Patent Court (Huawei v. Netgear)

In this case, the claimant, Huawei, brought an action for infringement of its essential patent no. EP 3,611,989 titled «Method and apparatus for transmitting wireless local area network information». In response, the defendants, Netgear, pleaded exhaustion of rights based on a license agreement concluded between the defendants' supplier and the claimant. This same license agreement had already been used as evidence in parallel discovery proceedings in the United States. The defendants requested the CUP to order the claimant to produce this license agreement. They pointed out that some of the disputed embodiments included a Qualcomm chip. Huawei had concluded a license agreement with Qualcomm, which also included Wi-Fi 6 standard patents, and this license agreement was already available to Netgear due to the discovery proceedings in the United States. However, Netgear was not authorised to produce this agreement: the US court, as part of a request for production in the CUP proceedings, invited Netgear to submit a production request in the present proceedings.

In accordance with rules 190 (order for the production of evidence) and 262A (protection of confidential information), the Court held that since the defendants, although already in possession of the contract through the American proceedings, were nevertheless unable to produce the said licence agreement, it was equitable to order its production for their defence. However, the interests of the parties had to be protected by confidentiality measures. Furthermore, this licence could only be used for the purposes of evidence in the proceedings before the JUB and not, from the contrary, in other procedures.

This decision is particularly interesting as it illustrates the implementation of the mechanisms of Rule 190(1) and 262A mentioned above. Under Rule 190(1), the Court may order the production of evidence in a party's possession. Simultaneously, Rule 262A provides for the possibility of taking measures to protect legitimate confidential interests. Thus, an order to produce evidence complements other evidentiary mechanisms established by the AJUB, such as seizure. At the same time, the Court could order measures to protect confidential information.

It remains to be determined what is precisely meant by «confidential information». The definition in Directive 2016/943 on the protection of trade secrets could serve as a useful basis in this regard. The question of the definition of confidential information could more particularly be raised as a result of the execution of an order. ex parte of evidence preservation and premises inspection (Article 60, § 1 of AJUB). This issue of the protection of trade secrets within the framework of seizure for infringement has given rise to, and continues to give rise to, significant litigation before the French courts, which are accustomed to seizure for infringement (see here for some comments on this subject).