Headwater Research v Samsung Electronics (CFI, 12 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 12 November 2024 (UPC_CFI_54/2024), the judge-rapporteur of the Munich Local Division, in Headwater Research’s infringement action against Samsung Electronics based on EP 2 391 947, ordered Qualcomm, a third party, to produce within seven days an electronic copy of a patent assignment agreement of 18 December 2006. The defendants sought to show that the claimant is not the sole proprietor of the invention, which would affect its standing and ground revocation under Art. 138(1)(e) EPC. The order illustrates the production of documents held by a third party under Rule 190 RoP.

Question

Can production of an assignment agreement held by a third party be ordered where the third party does not object and the claimant disputes the document’s relevance?

Decision

As Qualcomm did not oppose the request and stated that it would comply, production was ordered. A refusal would only be justified if the document were of no use at all in the proceedings, which was not the case. A US decision finding that the claimant had standing is not final and, even if it were, would not bind the UPC. Non-compliance may lead to a penalty payment of up to EUR 5,000 per day, confidentiality will be addressed on application when the document is produced. The defendants were invited to withdraw their parallel applications against the claimant, which become moot once the document is produced.

Key points for practice

• Practical point: to challenge entitlement, a production request may be directed at the third-party contracting party, whose lack of objection eases the order, a foreign ruling on standing does not bind the UPC.

Provisions applied

Agreement on a Unified Patent Court

Arts 45, 58, 59(1) and 82(4)

Rules of Procedure

Rules 102.2, 115, 190, 262 and 333

European Patent Convention

Art. 138(1)(e)

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.