Panasonic cases: Clarification on the production of comparable licenses before UPC (orders to produce evidence)

The first decision was handed down in the case opposing Panasonic against Xiaomi. In this case, the President of the Court recalls the importance of transparency in FRAND disputes and therefore the need to produce existing SEP licenses that have been entered into by the plaintiff with third parties (UPC_CFI_218/2023, UPC_CFI_219/2023, UPC_CFI_223/2023). In this case, the request came from Panasonic, which wished to be authorized to disclose licenses signed with third parties. The Court accepted this request on condition that certain third-party confidential information be protected.

In the second case, Panasonic v. Oppo, the presiding judge refused to allow the production of comparable licenses (UPC_CFI_216/2023). In this case, it was the defendant, not Panasonic, who was requesting the production of licenses concluded or to be concluded by the plaintiff concerning 3G and 4G for mobile devices. The request was rejected as too vague and too broad, and therefore resembled a measure of expedition. The Court noted that Oppo’s request did indeed seem to denote a willingness to delve into the patentee’s licensing practice, while pointing out that the order to produce evidence would probably not be granted if the defendant were seen as an unwilling licensee from the outset.

In general terms, we can note that the Court here affirms its willingness to take part in the debates on FRAND licenses. But in the April 30 decision in particular, the Court analyzes the need for an order to produce documents in the light of the idea that an SEP is subject to EU competition law, in particular Articles 101 and 102 TFEU, as developed in the CJEU’s case law in Huawei v. ZTE. As a reminder, in this case, the Court of Justice established a procedural framework to balance the interests and obligations of intellectual property rights holders and implementers in FRAND negotiations. This reminder from UPC is noteworthy, as it serves as a reminder that the case law of the Court of Justice must be applied by UPC, so that the Court of Justice will continue to impose the framework for FRAND disputes. This comes as no surprise, particularly in view of Article 20 UPCA and Article 326 TFEU on enhanced cooperation, but it is a reminder that sets the scene from the outset: SEP holders will have to continue to comply with the principles laid down by CJEU case law before attempting to assert their rights before UPC.

However, somewhat paradoxically, while logically accepting the CJEU’s tutelage, the Court also seems to be doing so to better position itself in the SEP/FRAND debates. While the European Commission has taken up the issue of FRAND licenses, with a view to harmonization, UPC claims that certain practical necessities, such as transparency in FRAND license negotiations, can already be addressed via UPC itself. Perhaps if the development of a SEP/FRAND dispute harmonized European positions on the matter, the Commission would abandon its much-debated project? UPC would still have to answer several questions, which I’ll address (in part) in my next paper.