Guangdong OPPO Mobile Telecommunications v Panasonic Holdings (CoA, 24 September 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In an order of 24 September 2024 in three joined appeals (UPC_CoA_298/2024, UPC_CoA_299/2024 and UPC_CoA_300/2024), the Court of Appeal dismissed the appeals of Guangdong OPPO Mobile Telecommunications and OROPE Germany against the Mannheim Local Division’s orders of 16 May 2024 refusing to order Panasonic to produce its licences for 4G standard essential patents (EP 2 568 724, EP 2 207 270 and EP 3 096 315). The Court accepted that a defendant may seek production of evidence under Rule 190.1 in support of its FRAND defence, but upheld the refusal at the current stage of the proceedings for want of necessity and proportionality. The order opens the door to defendants’ production requests in SEP litigation, while leaving the first-instance court in control of when they become useful.

Facts and procedure

Panasonic sued for infringement of three patents which the parties agree are essential to the 4G standard, FRAND licence negotiations failed, and both OPPO’s willingness to take a licence and whether Panasonic’s offers were FRAND are disputed (paragraphs 1 to 3). The defendants raised the FRAND defence, counterclaimed for revocation and, for EP 2 568 724, sought a determination of FRAND terms. They applied for production of licences “X” and “Y” relied on as benchmarks, all other 3G and 4G licences covering mobile devices and further documents (paragraph 4). The Mannheim Local Division rejected those applications on 16 May 2024 (paragraph 5). Licences “X”, “Y” and “Z” were subsequently filed (paragraph 10).

The applicable law

Article 59 UPCA and Rule 190 allow the Court to order a party or a third party to produce reasonably available evidence. Rule 190 implements Article 6(1) of Directive 2004/48 (paragraph 39). Only Rule 190 applies, not Rule 191 (paragraph 30). The appeal is admissible under Rule 220.1(c) whether the order grants or refuses production (paragraph 29).

Question

Can a defendant obtain, under Rule 190.1, production of the SEP holder’s licences to support its FRAND defence, and was the refusal at this stage of the proceedings justified?

Decision

Rule 190.1 is available to defendants: the terms “a party” and “the other party” are neutral, the French version refers to “allégations”, and the aim of access to evidence and equality of arms preclude a narrow reading (paragraphs 32 to 38). The documents sought are relevant to the FRAND defence (paragraph 41). Their production nonetheless calls for a balance with the protection of confidential information of the patentee and its contracting partners (paragraphs 42 to 47), by analogy with CJEU case law on disclosure in competition damages claims, requests must be relevant, specific and proportionate, and overly broad requests fail (paragraphs 48 to 53). The first-instance court may set the order in which issues are decided (Rule 334(e)) and, as OPPO’s willingness and the FRAND nature of the offers are yet to be decided, the present refusal does not preclude a later order (paragraphs 54 to 58). It is primarily for Panasonic to choose which comparable licences to file (paragraph 59), and jurisdiction over the FRAND counterclaim remains open (paragraph 60). OPPO and OROPE must first seek their own licensing partners’ consent before applying for an order against themselves (paragraph 61). The appeals were dismissed. Costs will be decided in the final decision (paragraphs 62 to 67).

Key points for practice

• A defendant may rely on Rule 190.1 to seek production of counter-evidence, in particular in support of a FRAND defence (paragraphs 32 to 38).
• A request covering all of the patentee’s licences, without targeting, fails the specificity and proportionality requirements (paragraphs 48 to 53 and 62).
• Timing matters: necessity, relevance and proportionality may be lacking at one stage and met later, once FRAND issues come up for decision (paragraphs 56 to 58 and 63).
• Practical point: a production request in SEP litigation should target identified licences and fit the order of issues set by the Division, and may be renewed later.

Provisions applied

Agreement on a Unified Patent Court

Arts 41(3), 42, 45, 52(1), 58, 59, 60, 62 and 69

Rules of Procedure

Rules 114, 118.5, 150.1, 190, 191, 220.1(c), 242.1, 262, 262A and 334(e)

Directive 2004/48

Art. 6(1) and recital 20

Other provisions

Directive 2014/104/EU, Art. 5(1)

Case law cited

Court of Appeal, 26 April 2024, UPC_CoA_500/2023, CJEU, Huawei Technologies, C-170/13, 16 July 2015, CJEU, PACCAR and Others, C-163/21, 10 November 2022, CJEU, RegioJet, C-57/21, 12 January 2023

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.