Short Summary
This is a procedural order from the Local Chamber Munich of the Unified Patent Court in a patent infringement action concerning standard-essential patents (SEPs) for 3G and 4G standards. The court addressed competing requests from both parties for the production of license agreement evidence relevant to determining whether the plaintiff's licensing demands were FRAND. The court ordered mutual production of certain 4G SEP license agreements while reserving decisions on further requests and confidentiality matters.
Detailed Summary
This procedural order (Verfahrensanordnung) was issued on 03.04.2024 by the Local Chamber Munich in case UPC_CFI_208/2023 (ACT_545535/2023), addressing applications App_2352/2024 and App_14378/2024.
Background: The plaintiff, Panasonic Holdings Corporation, brought a patent infringement action. The parties had previously engaged in unsuccessful licensing negotiations regarding Panasonic's 3G and 4G portfolio. The defendants (OROPE Germany GmbH and Guangdong OPPO Mobile Telecommunications Corp. Ltd.) contested the infringement claim by arguing that the licensing demands made during negotiations were not FRAND. Both parties claimed to have acted in a FRAND-compliant manner during negotiations and both requested the court to order production of evidence.
Defendant 1 (OPPO) requested production of: (1) all license agreements concluded by Panasonic covering 3G/4G SEPs for mobile devices; (2) all license agreements concluded by third parties covering 3G/4G SEPs whose holder was or is Panasonic; (3) specific agreements with companies 'X' and 'Y' referenced during negotiations; (4) agreements with 'M.' and 'Q.'; (5) a complete overview of all transactions where Panasonic transferred 3G/4G SEPs; (6) all related agreements including supplementary and financial arrangements; (7) ongoing disclosure obligations for future agreements; and permission to submit OPPO's own license agreements with third parties.
The plaintiff (Panasonic) requested production of two specific agreements: a Patent License Agreement (September 2019) with S.E. and a Patent License Agreement (October 2019) with I., along with permission to redact portions not relied upon, and various confidentiality protections.
The court's reasoning acknowledged that at the current stage (before completion of written proceedings), the relevance of certain evidence could not yet be fully assessed. However, the court found that the FRAND question was central to the dispute and that license agreements were relevant evidence.
The court ordered:
1. Panasonic to produce with its reply (Replik) digital copies of license agreements it concluded with third parties regarding 4G SEPs for mobile devices;
2. Panasonic to produce license agreements concluded by third-party licensors regarding 4G SEPs where Panasonic was/is the patent holder, for mobile devices, and within Panasonic's control;
3. Panasonic to produce the two specific agreements (September 2019 with S.E. and October 2019 with I.), with permission to inform the contracting parties beforehand;
4. Panasonic was provisionally permitted to redact portions of agreements not relied upon for factual assertions, though the court reserved the right to order disclosure of redacted portions;
5. Defendant 1 (OPPO) to produce with its rejoinder (Duplik) all license agreements it concluded with third parties regarding 4G SEPs;
6. Further production orders were reserved;
7. Parties were instructed to respond only within the written pleading regime under Rule 29 RoP;
8. Decisions on further requests in App_2352/2024 and App_14378/2024 were deferred, with the court reserving the right to supplement orders until completion of the interim proceedings;
9. Confidentiality requests would be addressed in the corresponding Rule 262/262A workflow, with reference to the Local Chamber Mannheim's order of 14.02.2024 in parallel case UPC_CFI_210/2023;
10. Evidence submitted in English did not require translation.
The order was signed by Judge Tobias Günther Pichlmaier as Rapporteur.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in Panasonic Holdings Corporation vs OROPE Germany GmbH, Guangdong OPPO Mobile Telecommunications Corp. Ltd. is valuable context for structuring arguments or assessing risk in similar proceedings.
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