2025 Week 7
One of the richest seams of UPC procedural case law so far is all about how parties can protect their confidential information from the other side while still being able to substantiate the case they need to make out for infringement and validity, and meet their obligations in terms of production of relevant evidence. The UPC is not unusual in this. Most significant patent litigation jurisdictions have developed an approach to form suitable “confidentiality clubs” – restricted groups of individuals who have access to the most sensitive evidence in the litigation and who are under strict personal duties not to misuse that confidential information.
Often the parties disagree on the implementation of confidentiality clubs, and the divisions of the UPC are asked to step in to adjudicate – leading to a welter of published orders from the court trying to come to a workable solution in each case.
The UPC Court of Appeal has weighed in several times on this topic and most recently and clearly in Daedalus v Xiaomi on 12 February 2025 to address a key issue for multi-jurisdictional teams.
The law on confidentiality clubs
The UPC Agreement (UPCA) itself provides basis for the protection of confidential information in Article 58 UPCA. The UPC Rules of Procedure (RoP) set out the implementation details in Rule 262A RoP. A party applies to the court to explain which information should be designated as confidential, and why. Note that the party must supply the information, in unredacted form, so that the court can make its assessment. To order a restriction, the court must be satisfied that the interests of the party making the application “significantly outweigh” the interests of the other side in having full access.
An issue which keeps coming around is how to apply Rule 262A.6 RoP, which refers back to Rule 262A.1 RoP:
1. … a party may make an Application to the Court for an order that certain information contained in its pleadings or the collection and use of evidence in proceedings may be restricted or prohibited or that access to such information or evidence be restricted to specific persons.
…
6. The number of persons referred to in paragraph 1 shall be no greater than necessary in order to ensure compliance with the right of the parties to the legal proceedings to an effective remedy and to a fair trial, and shall include, at least, one natural person from each party and the respective lawyers or other representatives of those parties to the legal proceedings.
The wording used here is copied almost word for word from Article 9 of the EU Trade Secrets Directive 2016/943.
UPC Court of Appeal explains
The issues in Daedalus v Xiaomi were cleanly focused on the application of Rule 262A.6 RoP. The case is an infringement action based on EP 2792100 B1. Xiaomi filed their statement of defence and requested that certain parts of the statement of defence and a witness statement be treated as confidential and access restricted to specific persons. The confidential information related to processor architecture. There was agreement between the parties that the information should be treated as confidential, but disagreement about who should be given access.
At first instance, the UPC LD Hamburg initially said that only Daedalus’ legal representatives in these proceedings (and their assistants) could see the confidential information, and it was only be used for their role in the UPC litigation. But Daedalus wanted its managing director and two US attorneys to have access. On the point about the managing director, the Local Division relented, but maintained its view that the US attorneys should be excluded, in its order dated 11 October 2024.
There were parallel proceedings running in the US. The Local Division were concerned that the information might be used to inform and coordinate strategy for the US litigation.
The UPC Court of Appeal overturned the Local Division, noting:
Whether a particular person may be granted full access under this provision must be determined on the basis of the relevant circumstances of the case, including the role of that person in the proceedings before this Court, the relevance of the confidential information to the performance of that role and the trustworthiness of the person in keeping the information confidential.
On the facts, the Court of Appeal considered that the US attorneys had a role in the UPC litigation – not as UPC representatives but advising about the technical aspects of the UPC litigation, in view of their expertise and knowledge of the background of the case. It was important that in their statement of appeal, Daedalus had confirmed that the US attorneys, if given access, would use the confidential information only for the purpose of the UPC proceedings and not to develop a litigation strategy for the US proceedings.
On the “trustworthiness” point, the Court of Appeal was satisfied that the two US attorneys are bound by strict ethical rules of professional conduct for lawyers and there was no suggestion that they were likely to breach these rules.
Therefore the UPC Court of Appeal confirmed that a confidentiality club can include team members who may also be running multi-jurisdictional litigation across different continents. It is not necessary to confine the information only to the UPC representatives.
Other updates on confidentiality clubs
There have been many first instance orders on confidentiality clubs, too many to sift through in detail here. But the courts are showing some consistency in their identification of what may constitute confidential information. As well as technical information, non-technical commercial information may qualify for confidentiality and the court will carefully consider which named persons (and their teams, where applicable) should have access – see 10x v Curio (March 2024) and Fujifilm v Kodak (March 2024)
External attorney eyes only confidentiality clubs are possible. However, in view of the explicit requirement in Rule 262A.6 for a natural person from a party, this is typically by agreement between the parties (C-Kore v Novawell (March 2024)) or in exceptional circumstances such as due to a corresponding requirement imposed by a court in another jurisdiction (10x v Vizgen (October 2024)). In Dish v Aylo (July 2024) for example, the Local Division rejected an attempt by one side to restrict access to outside counsel only.
In Motorola v Ericsson (February 2025), Ericsson requested that certain information be withheld not from Motorola but from other companies in the wider Lenovo group. To be fair, reasons were proposed for this, relating to confidential licence negotiations. However, the court rejected the request, saying that there were no grounds to restrict a party’s access to its own information.
