UPC_CFI_100/2024_Sept09_Confidentiality – Ona v Google
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Confidentiality order Facts Ona asked for a confidentiality order with respect to, inter alia, agreements with third parties containing confidentiality clauses. It also wants to prevent use of the confidential information from being used in parallel proceedings in Munich. The JR The JR grants the request. Comment 1. The JR does not allow the defendant (Google) to use the confidential information in parallel proceedings between the same parties regarding another patent, even though this information, according to Google, is relevant for the standing to sue. 2. How is this going to work in practice? Google’s representative and two Google employees now know that Ona has documents containing relevant information for their case. They cannot produce these documents nor use this information. Can they ask the Munich Court to order Ona to produce the documents which are relevant with respect to the standing to sue? 3. Assuming the answer is negative because “confidentiality” not only relates to the content of the information but also its existence (which I think would be the correct view), then it would not be acceptable in my opinion that Google loses the proceedings in Munich because it cannot use confidential information which it knows does exist. 4. On the other hand, lawyers know that there are two kinds of truth: the formal truth and the material truth. The Rules of Procedure were created to try to make sure that decisions are based on the material truth.
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_100/2024 UPC_CFI_411/2024 Final Order of the Court of First Instance of the Unified Patent Court issued on 9 September 2025 concerning EP 2 263 098 B1 CLAIMANT: Ona Patents SL, represented by its Managing Director Raúl Diaz Morales, Carrer de Calàbria 149 En. 1, 08015 Barcelona, Spain represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com COUNTER-DEFENDANT 2: Ekahau Oy, represented by the Board of Directors Jeremy Rossen, Brian Conrad Stewart und Ari Olavi Tourunen, Jaakonkatu 5, 00100, Helsinki, Finland represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein Rechtsanwälte PartGmbB, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com DEFENDANTS: 1. Google Ireland Limited, represented by its directors Elizabeth M. Cunningham, David M. Sned- don, Vanessa Hartley, Colin Goulding, Amanda Storey, Gordon House, Barrow Street 4, Dublin 4, D04 V4X7, Republic of Ireland 2 2. Google Commerce Limited, Gordon House, Barrow Street, Dublin 4, D04 E5W5, Republic of Ireland represented by: Attorney-at-law Dr Marcus Grosch, Attorney-at-law Dr Jesko Preuß, Attorney-at-law Dr Andreas Hahne, Quinn Emanuel, Her- mann-Sack-Straße 3, 80331 Munich, Germany electronic address for service: marcusgrosch@quinnemanuel.com PATENT AT ISSUE: European patent n° EP 2 263 098 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Judge Dr Thom acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 262A RoP – Protection of confidential information GROUNDS OF THE ORDER: The confidentiality order is to be issued as follows. The Defendants´ request to reject Claimant´s confidentiality request insofar it extends beyond considering confidential and limiting access to the specific section of Exhibit KAP 33 cited in para. 123 of the statement dated 20 August 2025 as well as para. 123, is to be dismissed. In its statement, the Claimant rightly points out that most of the documents submitted as exhibits relate exclusively to third parties who are not involved in these proceedings, and that confidentiality clauses have been agreed. Such confidentiality clauses may incorporate applicable law between parties to an agreement. The full content of the contracts has not yet been submitted in writing as part of the proceedings. Furthermore, other exhibits include internal business documents that have not been fully disclosed to the public. Even the legal opinion refers to confidential agreements and provides a legal assessment of them. Overall, the Claimant did not request confidentiality for anything that the Defendants would not have requested if they had been ordered to present further facts and evidence. Finally, the Court declines to permit the disclosure of the confidential information to the District Court of Munich I in the pending case for alleged patent infringement of EP 1 354 491 B1 between the same parties (case no. 7 O 3152/24). The mere allegation of almost identical arguments regarding the standing to sue and the high relevance of documents in parallel proceedings does not justify waiving confidentiality per se. 3 ORDER: I. Access to the unredacted version of Claimant’s brief dated 20 August 2025 and the unredated version of Exhibits KAP 21 to KAP 33 shall be restricted, on the part of the Defendants, to 1. the authorised representatives involved in these proceedings on their side and their staff (including experts and their team members); 2. the following individuals: - […] - […] II. Information identified as confidential by the Claimant shall be treated as such by the Defendants’ representatives and the individuals named in paragraph I. above. It shall not be used or disclosed outside of these court proceedings, except to the extent that it has verifiably come to the knowledge of the receiving party outside of these pro- ceedings, provided that the receiving party has obtained it on a non-confidential basis from a source other than the Claimant or its affiliates, provided that such a source is not bound by a confidentiality agreement or other obligation of secrecy with the Claim- ant or its affiliates. III. In the event of a culpable breach of this order, the Court may impose a penalty pay- ment for each breach, to be determined having regard to the circumstances of each case. DETAILS OF THE ORDER: App_35230/2025 concerning ORD_34156/2025 referring to the main proceedings ACT_11921/2024, CC_41214/2024 UPC-Number: UPC_CFI_100/2024 and UPC_CFI_411/2024 Subject of the Proceedings: Patent infringement action and counterclaim for revocation Issued in Düsseldorf on 9 September 2025 Judge Dr Thom
Key Holdings
- Confidentiality order granted.
- Use of info in parallel proceedings prohibited.
Tags
- Confidentiality
- Evidence
- Parallel Proceedings