Panasonic Holdings v Xiaomi Technology Germany (CFI, ORD_14603/2024, 30 April 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 30 April 2024 (UPC_CFI_223/2023, App_14308/2024), the presiding judge and judge-rapporteur of the Mannheim Local Division (P. Tochtermann), in Panasonic Holdings Corporation’s infringement action on EP 2 207 270 against four European Xiaomi group companies, Odiporo and Shamrock Mobile, ordered the claimant, at its own request, to produce two of its licence agreements which confidentiality clauses prevented it from disclosing voluntarily. The order sets out a method for bringing comparable licences into a FRAND dispute.

Question

May the court order a party, on its own application, to produce its licence agreements where the licensees have not waived confidentiality, given that Rules 172.2, 190 and 191 RoP do not apply directly?

Decision

In a dispute over a standard essential patent, Articles 101 and 102 TFEU, as interpreted by the CJEU in Huawei v ZTE, call for reference to comparable licences. The party must first ask the licensee for consent in specific terms, and an unreasoned refusal or silence allows an order to be made (part A.I). Rules 172.2, 190 and 191 RoP do not directly support the order, but the power of case management (Art. 43 UPCA), read in the light of the primacy of EU law (Arts. 20, 21 and 24(1)(a) UPCA), does, production should take place early, at the latest at the reply stage (part A.II). One licensee did not reply. The other gave conditional consent, which the confidentiality regime set by the order of 14 February 2024 can satisfy (part B). Passages not relied on may be redacted, the claimant remains free to file applications under Rules 262 and 262A RoP, the further requests were dismissed and production must take place by 9 May 2024 (Rule 9.2 and Rule 190.7 RoP applied by analogy).

Key points for practice

• Practical point: an SEP holder bound by a confidentiality clause may obtain an order to produce its licences, provided it first sought its licensees’ consent in specific terms and applies at the latest at the reply stage.

Provisions applied

Agreement on a Unified Patent Court

Arts. 20, 21, 24(1)(a), 35, 43 and 59

Rules of Procedure

Rules 9.2, 101, 103, 111, 172.2, 190, 191, 262, 262A and 331 to 334

Treaty on the Functioning of the European Union

Arts. 101 and 102

Case law cited

Mannheim Local Division, 25 March 2024, UPC_CFI_365/2023, ORD_8841/2024, Düsseldorf Local Division, 27 March 2024, UPC_CFI_355/2023

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.