NEC v TCL Deutschland (CFI, ORD_41184/2024, 14 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 14 August 2024 (UPC_CFI_498/2023, ACT_596658/2023, ORD_41184/2024), the judge-rapporteur of the Munich Local Division (U. Voß) granted the confidentiality application (No. 40654/2024) lodged by four of the defendants, including TCL Deutschland and TCL Operations Polska, in NEC Corporation’s infringement action on EP 3 057 321. The protected material is information in the FRAND counterclaim and Statement of Defence, concerning in particular negotiations with Access Advance. An order to the same effect was made on the same day in the parallel action on EP 2 645 714 (UPC_CFI_487/2023).

Question

Who on the patentee’s side may access the defendants’ confidential FRAND information, and can access be granted in advance to experts not yet appointed?

Decision

Relying on Art. 58 UPCA, Rule 262A RoP and Art. 9 of Directive 2016/943, the judge classified the information as confidential, NEC having dropped part of its objections (paragraphs 1 to 3). Access is limited to eight persons agreed between the parties: NEC employees and three named representatives, who may involve their teams and are liable for their breaches (paragraphs 4 and 5). The request for advance access for up to four external experts was refused: an expert must be named or identifiable, and the order can be supplemented once one is appointed (paragraph 6). Nothing was decided for Access Advance, whose intervention has not yet been admitted (paragraph 7). The obligations survive the proceedings and each culpable breach may attract a penalty of up to EUR 250,000.

Key points for practice

• Practical point: a confidentiality club cannot include unidentified experts in advance, an extension of the order should be sought when they are appointed.

Provisions applied

Agreement on a Unified Patent Court

Art. 58

Rules of Procedure

Rule 262A

Other provisions

Directive (EU) 2016/943, Art. 9

Case law cited

Avago v Tesla Germany, Hamburg Local Division, 3 November 2023, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 11 March 2024, Abbott Diabetes Care v Dexcom, Munich Local Division, 9 August 2024, Aylo Freesites v DISH, Mannheim Local Division, 3 July 2024, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 8 August 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.