Huawei v Netgear International (CFI, 24 April 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 25 April 2024 (UPC_CFI_9/2023, ACT_459771/2023, App_9728/2024), the Munich Local Division (M. Zigann, T. Pichlmaier, E. Brinkman, P. Vidon), in the infringement action on EP 3 611 989, said to be essential to the Wi-Fi 6 standard, brought by Huawei Technologies Co. Ltd against three Netgear companies, ordered Huawei to produce its licence of August 2020 with Qualcomm, relied on by the defendants in support of exhaustion, subject to a penalty of up to EUR 20,000 per day. The order dovetails Rule 190 RoP with restrictions flowing from US discovery.

Question

May the patentee be compelled to produce a licence which the defendants already hold but are barred by US orders from filing, and on what confidentiality terms?

Decision

Rule 190.1 RoP allows the court, on a reasoned request supported by reasonably available and plausible evidence, to order production of evidence in a party’s control (paragraph 1). The defendants hold the licence but may neither file it nor describe its terms, and the US court referred them to the UPC. Given the oral hearing on 18 and 19 June 2024, production is necessary (paragraph 2). The lateness of the request and the fact that not all products contain the Qualcomm chip are no bar, the defendants’ possession of the document reducing the weight of the opposing interests (paragraph 4). The licence, to be produced in full within ten working days (paragraph 7), is classified as confidential. Access is limited to the representatives, their assistants and a named in-house lawyer of Netgear (paragraph 3). Its use is extended to the parallel non-infringement proceedings and those on EP 3 678 321 (paragraph 5), but not to other Wi-Fi 6 disputes (paragraph 6).

Key points for practice

• Practical point: a defendant holding a document through US discovery but unable to file it may obtain from the UPC an order compelling the patentee to produce it, with a confidentiality club and use extended to parallel proceedings.

Provisions applied

Agreement on a Unified Patent Court

Art. 45, 58 and 82(4)

Rules of Procedure

Rules 9, 115, 190, 262 and 262A

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.