Panasonic Holdings v Xiaomi Technology Germany (CFI, ORD_14600/2024, 30 April 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 30 April 2024 (UPC_CFI_219/2023, App_14390/2024), the judge-rapporteur of the Mannheim Local Division (P. Tochtermann), in the infringement action on the standard essential patent EP 2 568 724 brought by Panasonic Holdings Corporation against six European Xiaomi group companies, granted the patentee’s request to be ordered to produce two of its own licence agreements, which confidentiality clauses prevented it from disclosing voluntarily. The order rests that power on the general case management powers, read in the light of EU competition law.

Question

May the court order a party, at its own request, to produce its licence agreements where the licensees refuse to waive confidentiality, given that Rules 172.2 and 190 RoP do not apply directly?

Decision

EU competition law (Articles 101 and 102 TFEU, Huawei v ZTE) requires transparency in FRAND negotiations, with which licence confidentiality clauses often conflict. The party must first seek the licensee’s consent, and an unreasoned refusal will generally justify an order (part A.I). Rules 172.2 and 190.1 RoP do not apply directly, since the agreements go to legal assessment and a party cannot be its own opponent (part A.II). The case management powers (Art. 43 UPCA, Rules 103 and 334 RoP) nonetheless allow the order, subject to the right to be heard and proportionality, preferably early in the written procedure. The patentee may redact passages it does not rely on. Confidentiality is a matter for separate applications under Rules 262 and 262A RoP (part B). Production is due by 9 May 2024, failing which non-compliance may be taken into account (Rules 190.7 and 9.2 RoP).

Key points for practice

• Practical point: a SEP holder bound by a confidentiality clause may ask to be ordered to produce its licences, it must show that it sought its licensees’ consent in vain and should apply early.

Provisions applied

Agreement on a Unified Patent Court

Art. 20, 43 and 59

Rules of Procedure

Rules 9.2, 103, 172.2, 190, 191, 262, 262A and 334

Treaty on the Functioning of the European Union

Art. 101 and 102

Case law cited

CJEU, Huawei v ZTE, C-170/13, ECLI:EU:C:2015:477, Mannheim Local Division, 25 March 2024, UPC_CFI_365/2023, FUJIFILM v Kodak, Düsseldorf Local Division, 27 March 2024, Mannheim Local Division, 14 February 2024

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.