Daedalus Prime v Xiaomi (CFI, 19 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 19 November 2024 (UPC_CFI_169/2024, ACT_19012/2024, ORD_53958/2024), the judge-rapporteur of the Hamburg Local Division (S. Schilling), in Daedalus Prime’s action for infringement of EP 2 792 100 against Xiaomi Inc., two other Xiaomi companies and MediaTek, amended the preliminary order of 30 September 2024: access to the confidential version of the statements on the transfer of the patent and of the partially redacted Patent Transfer Agreement (Exhibit PS 9b) is extended to two in-house lawyers of the defendants. The order, published twice in the same file, confirms that outside-counsel-only access requires the parties’ agreement.

Question

Could the claimant restrict access to the defendants’ outside representatives, relying on waivers given in parallel proceedings before the Düsseldorf Regional Court and on a US protective order?

Decision

The judge weighs the affected party’s right to be heard and to a fair trial against the requesting party’s interest in secrecy. As trade secret status was not contested, unlimited access is excluded. Access must, however, as a rule include at least one natural person from each party in addition to the representatives, unless the parties agree otherwise, which they did not. The Düsseldorf waivers do not bind the defendants in these proceedings, and the US protective order does not restrict the claimant, which is free to disclose its own information. The redacted content, such as the price, is sensitive and unrelated to the transfer. Access is limited to the two in-house lawyers, excluding the in-house counsel responsible for technical analysis, as the document barely touches that role. The rest of the preliminary order is upheld.

Key points for practice

• Practical point: outside-counsel-only access cannot be obtained without the other side’s agreement, and a waiver given in parallel national proceedings does not carry over to UPC proceedings.

Provisions applied

Agreement on a Unified Patent Court

Art. 58

Rules of Procedure

Rules 220.1, 220.3, 262A, 331.1, 334 and 335

Directive (EU) 2016/943

Art. 9(1) and 9(2)(a)

Case law cited

Mannheim Local Division, 3 July 2024 (UPC_CFI_471/2023), FUJIFILM v Kodak, Düsseldorf Local Division, 27 March 2024, Hamburg Local Division, 22 October 2024, UPC_CFI_22/2023, ORD_49705/2024.

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.