Short Summary
This is a procedural order from the Local Chamber Mannheim concerning an application by MediaTek Germany GmbH under Rule 190 of the Rules of Procedure for the production of license agreements referenced by Huawei Technologies Co. Ltd. in the context of infringement proceedings regarding EP 3 567 731. The court partially granted the application, ordering Huawei to produce the license agreements it had identified on pages 2 and 3 of its August 15, 2025 submission with its reply to the statement of defense, while rejecting the request for two additional agreements and for ancillary agreements/amendments.
Detailed Summary
This order was issued by the Local Chamber Mannheim on September 16, 2025, in case UPC_CFI_247/2025, relating to application App_33294/2025, in infringement proceedings concerning European Patent EP 3 567 731. The plaintiff is Huawei Technologies Co. Ltd., and the defendants are MediaTek, Inc. and MediaTek Germany GmbH.
The dispute concerned an application by MediaTek Germany GmbH under Rule 190 of the Rules of Procedure (VerfO) seeking the production of license agreements that Huawei had referenced, including license agreements with additional licensees specifically named by MediaTek Germany GmbH. Huawei opposed the request only insofar as it sought two additional license agreements beyond those listed on pages 2 and 3 of Huawei's submission of August 15, 2025. Huawei argued that these two additional agreements concerned exclusively network infrastructure products and not mobile terminals, making them unsuitable as comparison agreements. Huawei further explained that it could not share details of the agreements due to strict confidentiality obligations, and that consent from the respective contracting parties for disclosure had been sought but not obtained, necessitating a court order.
The court held that the application was partially well-founded. The court exercised its discretion under Rule 190 VerfO to order Huawei to produce the license agreements listed on pages 2 and 3 of its August 15, 2025 submission with its reply to the statement of defense in the infringement proceedings, with the exception of certain agreements. Huawei was permitted to redact parts of the agreements that it did not rely upon for its factual submissions or legal arguments.
Regarding the two additional license agreements, the court declined to order their production. The court reasoned that it is primarily the plaintiff's own decision whether and which comparison license agreements to submit in the proceedings to counter a potential FRAND defense and to demonstrate EU competition law compliance. There were insufficient indications that Huawei possessed further or more suitable comparison license agreements. Procedural consequences, the court noted, could only be drawn if it were established that a SEP holder had deliberately withheld suitable comparison licenses to exploit its monopoly position.
The court also rejected as overly broad the related request to order Huawei to produce all amendments, supplements, side agreements, and other agreements concerning the license agreements. The court found that a proper assessment of whether Huawei's offer was FRAND-compliant or not was possible without these additional documents, as the status quo of Huawei's portfolio at the time of the comparison agreements could be compared with the current portfolio. The court further noted that it is Huawei's own risk to submit and explain suitable comparison license agreements.
The court ordered that the production of the specified license agreements should occur together with Huawei's reply, allowing MediaTek Germany GmbH sufficient time to address Huawei's submissions within the deadline for the rejoinder. The court indicated that further orders under Rule 262A VerfO regarding confidentiality would be issued in connection with the production. The court warned that non-compliance with the production order could be taken into account (Rule 190.7 VerfO) and that procedural steps, facts, evidence, or arguments not submitted within court-set deadlines could be disregarded (Rule 9.2 VerfO). The decision was signed by Legally Qualified Judge Tobias Sender.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Mannheim (DE) Local Division. Understanding the court's reasoning in Huawei Technologies Co. Ltd. vs MediaTek, Inc. and MediaTek Germany GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
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