UPC – OPPO v. Panasonic – Appeal / FRAND/ Order to produce evidence

Orope Germany GmbH, Guangdong OPPO Mobile Telecommunications Corp. Ltd. v. Panasonic Holdings Corporation, Order of the Court of Appeal of the UPC, 24 September 2024

OPPO was unsuccessful in its appeal against the Mannheim LD’s rejection of its request to order the production of various Panasonic license agreements.

The Court of Appeal ruled that the rejection falls within the margin of appreciation of the court of first instance, as it is still not decided whether the court has jurisdiction in relation to OPPO’s counterclaim for the determination of the FRAND license.

OPPO’s application for an order to produce its own 3G/4G licenses also failed, as OPPO must first obtain permission from its contractual partners to produce the licenses in the proceedings, while respecting confidentiality.

The Court of Appeal stresses that the assessment could well be different at a later stage of the proceedings.

“56. The file of the Court of First Instance shows that the defendants put forward several lines of defense. They raise objections to the jurisdiction of the UPC, an objection that will be dealt with in the main proceedings. They have filed a counterclaim for revocation of the patents and also contest patent infringement. In addition, they raise the FRAND objection. They also put forward further arguments
against the legality of Panasonic’s claims.

“57. The contested decisions were largely based on the current status of the proceedings, which is characterized by the fact that no decision had yet been made on the defendant’s basic willingness to license and on whether Panasonic had submitted a (justified) FRAND offer.

“58. Such considerations remain within the margin of appreciation explained above. The contested order makes it clear that the rejection of the request for the submission of evidence does not preclude the possibility of submitting such evidence at a later date.

“59. It is therefore not necessary to decide at this stage of the proceedings whether the local chamber was correct in holding (paragraph 2) that the request for the production of evidence could not be granted at this stage of the proceedings because insufficient evidence had been submitted or it was otherwise apparent that Panasonic had other – perhaps even more suitable – settlement licence agreements that could reasonably be used by the parties to conclude a FRAND licence agreement, in particular because it is primarily Panasonic’s own decision whether and, if so, which and how many settlement licence agreements Panasonic would submit in the proceedings in order to counter the defendant’s FRAND objection and to show that its conduct complied with EU antitrust law.

“60. Against this background, there is no objection to the fact that the court did not order the submission of the documents in relation to the counterclaim for the determination of the FRAND license at the current stage of the proceedings. It is clear from the files (which were consulted in accordance with R.222.1, second sentence of the Rules of Procedure) that the local chamber is still unsure whether the court has jurisdiction to do so. At the current stage of the proceedings, it is not necessary to decide whether this is the case. Since the local chamber has not yet decided on this question, it is within its discretion at the current stage of the proceedings to refrain from ordering the submission of evidence which is claimed to be relevant to the counterclaim for the determination of the FRAND license.

“61. OPPO and OROPE’s applications for an order to produce their own 3G/4G licenses are success also fails.The Local Chamber has rightly taken the position (I. para. 4 of the contested order) that OPPO and OROPE must first obtain permission from their contractual partners to produce the licenses in the proceedings, while respecting confidentiality in accordance with R.262 and R. 262A. Should such a request be unsuccessful or the terms of the contracts preclude such a request, the next step for OPPO and OROPE would be to apply again for an order of the court against themselves pursuant to R.190 of the Code. It is incumbent upon them to obtain the opinion of their contractual partners on confidentiality. This will avoid unnecessary court orders and increase the efficiency of the proceedings.

[machine translation]

The entire order (in German) can be read here.
An English machine translation can be found here.