UPC_CFI_1536/2025; UPC_CFI_982/2026; UPC_CFI_168/2026 – Dolby v Acer

Court
Local Division The Hague
Date
Outcome
Granted
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Production of license agreements Facts 1. Dolby asked that all deadlines for the claimant and the intervener shall be extended with two months after the confidentiality order and to set a separate deadline regime for the counterclaim for rate-setting. 2. With regard to the R. 190 RoP request, Acer requested to order Dolby and Vectis to disclose all license agreements or settlement agreements with respect to patents essential to the Opus standard and all documents relating to one or more of these agreements. In addition, Acer requested the Court to order a confidentiality regime (under R. 262A RoP and R. 262.2 RoP) with respect to all documents which Dolby and/or Vectis has to disclosed as a result of the R. 190 RoP order of 12 February 2026. 3. Vectis asked to be added as an intervener on the side of the claimant. Order of the JR 1. Dolby, Fraunhofer and NTT did not participate in setting the Opus standard. Vectis is managing the pool containing their patents. 2. Dolby and Acer do not object against the intervention of Vectis in support of Dolby. The Court rules that a counterclaim for rate-setting against Vectis is possible because Vectis has become a party to the proceedings and because Vectis is the company which licenses the patent on behalf of Dolby. 3. The arguments put forward by Dolby/Vectis, namely that such a counterclaim is not possible as Vectis has no standing to sue because it neither owns the patents nor is a licensee, are rejected as these rules apply to a party who brings an action, not to an intervener. 4. Whether or not Dolby made a FRAND declaration and whether or not Acer is a willing licensee is for the panel to decide. This may not be deemed a necessary requirement for the panel to look at the counterclaim for rate setting. 5. The JR orders Dolby and Acer to produce the license agreements. Only licenses that are clearly not comparable do not have to be submitted as seemingly different licenses may still shed a light on the non-discrimination nature of the offer. A solution may be to start with an attorney-eyes-only regime and if there still remains a dispute about the relevance of certain agreements, the parties can ask the Court for a new decision. 6. The Court allows a short extension because all documents except 1 were already accessible. 7. The counterclaim for rate setting will have the same deadline regime as the counterclaim for revocation.

Full Decision Text

The Hague Local Division UPC-CFI-0001536/2025 UPC-CFI-0000982/2026 UPC-CFI-0001168/2026 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 1 May 2026 regarding: Comparable licences, confidentiality club, intervention and extension of deadline **CLAIMANT** 1) Dolby International AB Represented by Tilman MÜLLER 77 Sir John Rogerson's Quay Block C Grand Canal Docklands, Dublin, D02 VK60, Ireland (hereinafter also “Dolby”) **DEFENDANTS** 1) CPYou B.V. Represented by Hsueh-Yen LIN Europalaan 89, 5232BC 's-Hertogenbosch, The Netherlands 2) Acer Italy s.r.l. Represented by Hsueh-Yen LIN Viale Delle Industrie, 1/A, 20044 Arese (MI), Italy 3) Acer Computer GmbH Represented by Hsueh-Yen LIN Kornkamp 4, 22926 Ahrensburg, Germany 4) Acer Computer B.V (Benelux) Represented by Hsueh-Yen LIN Europalaan 89, 5232 BC 's-Hertogenbosch, The Netherlands 5) Acer Denmark A/S Represented by Hsueh-Yen LIN Strandvejen 70, 3 tv, 2100 Hellerup, Denmark 6) Acer Finland Oy Represented by Hsueh-Yen LIN Teknobulevardi 7, 01530 Vantaa, Finland 7) Acer Computer France Represented by Hsueh-Yen LIN Immeuble Seine 2 – 8 rue Sarah Bernhardt, CS 90045, 92601 Asnières-sur-Seine Cedex, France 8) Acer Sweden AB Represented by Hsueh-Yen LIN Helio, c/o Acer Sweden AB, Frösundaviks Allé 1, 169 70 Solna, Sweden (hereinafter also “Acer” (singular)) **INTERVENER** 1) Vectis IP Ltd., Represented by Tilman MÜLLER 1 Lyric Square, London W6 0NB, United Kingdom, (hereinafter also “Vectis”) **PATENT AT ISSUE** Patent no. Proprietor/s EP3079153 Dolby International AB **DECIDING JUDGE** Edger Brinkman - presiding judge / judge rapporteur **LANGUAGE OF PROCEEDINGS:** English **SUBJECT-MATTER OF THE PROCEEDINGS** Infringement action, counterclaim for revocation and “counterclaim for rate-setting” **ORDERS SOUGHT** Dolby requests the Court: - To order that all deadlines for Claimant (and Intervener) shall be extended until two months as of the date on which the Court orders a confidentiality regime. - To set the deadline-regime for the counterclaim for rate-setting After some amendment, Acer requests the Court: In the Application for an order to produce evidence pursuant to R. 190 RoP: (A) To order Dolby and Acer to submit within two weeks of the date of the order to be given on this application, subject to the confidentiality regime in (B) below, the following documents: (i) all licence agreements, including any settlement agreements, entered into by Dolby and/or Vectis relating to one or more patents that form part of their respective portfolios of patents allegedly essential to the Opus standard; and (ii) any side letters, modifications, amendments, supplementary agreements and similar documents relating to one or more of the agreements referred to in (i) above. In the Application for confidentiality pursuant to R. 262A RoP and R. 262.2 RoP: (B) To order that access to (a) information in relation to the negotiations between the parties (including but not limited to information marked grey in Acer's SoD and accompanying exhibits), and (b) information in relation to agreements with third parties, i.e. the documents to be disclosed by Vectis and/or Dolby pursuant to the Court's order on Acer's application for an order to disclose evidence under R. 190 RoP dated 12 February 2026, as well as the information marked green in Exhibit DE16, shall be governed by the confidentiality regime as set out below: (i) The information under (a) above is classified as “Confidential Information”; (ii) The information under (b) above is classified as “Highly Confidential Information”; (iii) Access to the Highly Confidential Information shall be limited on the side of the receiving party to the following persons: a) The team of UPC Representatives assisting the receiving party(s) in the present proceedings before the LD The Hague (court ref. UPC_CFI_1536/2025) and any appeal proceedings related thereto, including personnel (paralegals, trainees and support staff working under their supervision); b) A number of maximum three persons of the receiving party's external economic experts who (i) are not employees of the receiving party, and (ii) have a legitimate need to access the Highly Confidential Information; c) A maximum of three representatives of the receiving party who (i) have a legitimate need to access the Confidential Information and (ii) will not participate in or advise upon any licensing negotiations with the counterparties to the disclosed license agreements or related agreements (for the avoidance of doubt: counterparty shall mean the party to the specific license agreement that is not a party to the present proceedings) for a period of two years after ceasing to be in possession and/or have access to such agreements (or any related material submitted in the proceedings), save with the relevant counterparty's consent, more in particular, for Acer: (iv) The individuals mentioned under I.(iii) a)-c). above must treat the Highly Confidential Information as strictly confidential, in that they: a) shall use the Highly Confidential Information solely for the purpose of these proceedings, including settlement thereof; b) shall keep the Highly Confidential Information confidential and shall not disclose the Highly Confidential Information to any unauthorised third party; c) shall implement adequate confidentiality measures to ensure that only the designated persons referred to above have access to the Highly Confidential Information, in particular by applying adequate physical and electronical access restrictions vis-à-vis third persons. (v) In the event of a culpable breach of point (iii) and (iv) of this Order, the Court may impose a penalty payment for each breach, to be determined in light of the circumstances of each case. (vi) The Court shall: a) exclude the Highly Confidential Information and the Confidential Information from the possibility of inspection by third parties and not publish it in the register or otherwise disclose the Highly Confidential Information and the Confidential Information; b) exclude the public from the oral hearing during the direct and indirect discussion of the Highly Confidential Information and the Confidential Information; c) redact prior to publication of decision or notices, any information contained therein which concerns the Highly Confidential Information and the Confidential Information. (vii) The parties shall keep the Confidential Information confidential and shall not disclose the Confidential Information to any unauthorised third party. In the Application to add Vectis as a party pursuant to R. 305.1 (a) RoP: (C) add Vectis as a party on the side of the claimant. Vectis requests the Court: to admit the intervention of Vectis IP Ltd. in the dispute UPC_CFI_1536/2025 in support of Claimant. **GROUNDS FOR THE ORDER** Background 1. Opus is a standard for an audio codec. Dolby, together with Fraunhofer and NTT, did not participate in the Opus standardisation process. These three companies, acting through Vectis, have constructed a patent pool (the “Vectis Opus Patent Pool”) through which they seek to obtain royalties from device manufacturers for the use of Opus. Vectis is a UK-based IP and technology licensing company whose business model centres on the formation and management of patent pools. The patent asserted in these proceedings, EP 3 079 153 B1 (“EP153” or “the Patent”), is one of the patents in the Vectis Opus Patent Pool. Intervention 2. Dolby nor Acer oppose the intervention. The Court sees no reason to hold differently so Vectis is admitted to the proceedings as intervener in support of Claimant, based on R. 313/314 RoP. 3. Parties do however differ on whether the counterclaim for rate-setting may be directed against Vectis. For this, Defendants have requested to add Vectis as a party on the basis of R. 305. The Court may leave this basis undecided, as R. 315.4 RoP makes plain that an intervener is to be treated as a party, unless otherwise ordered by the Court. This means that a counterclaim for rate-setting may be directed to such party. The more so since Vectis licences the Patent on behalf of Dolby. 4. The reasons submitted by Dolby/Vectis to deviate from this main rule are unconvincing. It may be true that Vectis alone may not have standing to initiate proceedings before this Court as it is neither patentee, exclusive nor non-exclusive licensee (Art. 47 UPCA). However, that article limits the persons who may bring an action, not who may join (as an intervener, for which Vectis specifically applied and to which Dolby did not object). The point Dolby and Vectis make that Vectis does not own patents and therefore cannot have any dominant market position, is a question of substance not of admissibility and is therefore to be decided later by the panel after the oral hearing. Access to licences 5. According to established case law, with which this judge-rapporteur agrees, an important task for such judge is to prepare the oral hearing as much as possible, using active case management (R. 331. 332, 334 RoP). For this R. 334 (j) juncto R. 103(c) RoP make plain that the JR can make orders to produce evidence. According to equally established case law, this includes an order to a SEP owner to produce licences already concluded to ascertain the FRANDness of the offer or the counteroffer. While Dolby calls into question whether the framework of ECJ Huawei v ZTE is even applicable, since Dolby did not execute a so-called FRAND-declaration, a solid argument can be made that the same or similar principles should apply. Equally, Dolby's assertion that Acer is not a willing licensee is something for the panel to decide, and may not even be deemed a necessary requirement for the panel to look at the counterclaim for rate-setting. 1 CJEU 16 July 2015, C-170/13 (Huawei v. ZTE) 6. To this may be added that active case management includes encouraging ADR or helping parties to settle (R. 332(e) and (f) RoP). For both aims, it may be helpful to orchestrate access to existing licences, both concluded by the pool (Vectis) or bilaterally by Dolby. After all, a recognized concern of implementers like Acer is that they do not want to pay more than their competitors. Possibly for this reason, Dolby/Vectis have also indicated they are not unwilling to grant access. In a similar vein, Acer also grants access to its licences according to their request. 7. Dolby/Vectis may be followed in their objection to all licences being accessed. It is a well-established principle that only comparable licences are relevant to assess the condition of non-discrimination. However, a word of caution is appropriate here. An SEP holder/pool may not engage in cherry picking. Similarly, seemingly different licensees or licences may nonetheless shed light on the (non) discriminatory nature of the offer (or counteroffer), especially when not many truly comparable licences have been concluded. This means that while it is at first up to the SEP-owner/pool to make a selection, the net should be cast sufficiently wide and thus only licences that are clearly not comparable should be excluded. Any non-compliance will mean that the Court may draw its conclusions. Nonetheless, should parties need more guidance while complying with this order, for instance when there is legitimate doubt about submission of a certain licence, they may submit an appropriate application. Having said so, a solution may be to grant access at first for external eyes only. When then it still cannot be decided and agreed between the parties, a first take would be that it is apparently not clearly incomparable. But of course, borderline cases may exist and it is incumbent on Dolby/Vectis to ask for more guidance, where necessary and appropriate. Extension request 8. In the SoD there are two kinds of confidential information: (a) information in relation to the negotiations between the parties (including but not limited to information marked grey in Acer's SoD and accompanying exhibits), (termed Confidential Information) and (b) information in relation to agreements with third parties, i.e. the documents to be disclosed by Vectis and/or Dolby pursuant to the Court's order on Acer's application for an order to disclose evidence under R. 190 RoP dated 12 February 2026, as well as the information marked green in Exhibit DE16 (termed Highly Confidential Information). 9. Acer has asserted that Dolby and Vectis have access to the (unredacted) SoD and the exhibits (except for the unredacted Exhibit DE16) since 27 March 2026 (via a shared folder). Dolby and Vectis counter this by stating that while their representatives had access, they were not allowed to share it with their clients since no confidentiality order was rendered. This argumentation is flawed. By then, parties had already agreed on the confidentiality club and the NDA. This means that nothing stood in the way to share this Confidential Information with the clients Dolby and Vectis. Acer rightly points out that the case in EOFlow vs. Insulet (UPC_CoA_930/2025, order of 18 March 2026) is different as the information at issue was not under any kind of confidentiality obligation, as opposed to this case where parties had agreed on confidentiality. 10. That means that only the Highly Confidential Information (i.e. the unredacted part of Exhibit DE16) was not yet available to Dolby/Vectis. In principle, Dolby and Vectis are right that the term for the next submission only starts when access to all redacted parts of exhibits and pleadings has been obtained, where applicable according to the confidentiality club ordered or agreed. The JR does not quite understand why the unredacted version of exhibit DE16 has not yet been made available by Acer according to the confidentiality club parties agree on. At least, the JR cannot tell from the submissions that this has been done since. Nonetheless, it is not really properly contested that this rather limited part in just an exhibit would justify a long delay (i.e. that the term only start today and not earlier). The Court will grant one week extra in good justice, so that the term start on 3 April 2026. schedule for the counterclaim for rate-setting 11. While Dolby and Vectis are right that the RoP do not provide for a specific schedule of submission for this type of counterclaim, the Court sees no proper reason to not apply the same schedule as for the counterclaim for revocation. There is certainly not a rule that may be invoked to already now allow extended terms. **ORDER** The Court: - orders that all deadlines for Claimant (and Intervener) shall start on 3 April 2026, - sets the deadline-regime for the counterclaim for rate-setting the same as for the counterclaim for revocation, In the Application for an order to produce evidence pursuant to R. 190 RoP: (A) orders Dolby and Acer to submit within two weeks of the date of the order to be given on this application, subject to the confidentiality regime in (B) below, the following documents: (i) all comparable licence agreements, including any settlement agreements, entered into by Dolby and/or Vectis relating to one or more patents that form part of their respective portfolios of patents allegedly essential to the Opus standard; and (ii) any side letters, modifications, amendments, supplementary agreements and similar documents relating to one or more of the agreements referred to in (i) above. In the Application for confidentiality pursuant to R. 262A RoP and R. 262.2 RoP: (B) orders that access to (a) information in relation to the negotiations between the parties (including but not limited to information marked grey in Acer's SoD and accompanying exhibits), and (b) information in relation to agreements with third parties, i.e. the documents to be disclosed by Vectis and/or Dolby pursuant to the Court's order in (A) above, as well as the information marked green in Exhibit DE16, shall be governed by the confidentiality regime as set out below: (i) The information under (a) above is classified as “Confidential Information”; (ii) The information under (b) above is classified as “Highly Confidential Information”; (iii) Access to the Highly Confidential Information shall be limited on the side of the receiving party to the following persons: a) The team of UPC Representatives assisting the receiving party(s) in the present proceedings before the LD The Hague (court ref. UPC_CFI_1536/2025) and any appeal proceedings related thereto, including personnel (paralegals, trainees and support staff working under their supervision); b) A number of maximum three persons of the receiving party's external economic experts who (i) are not employees of the receiving party, and (ii) have a legitimate need to access the Highly Confidential Information; c) A maximum of three representatives of the receiving party who (i) have a legitimate need to access the Confidential Information and (ii) will not participate in or advise upon any licensing negotiations with the counterparties to the disclosed license agreements or related agreements (for the avoidance of doubt: counterparty shall mean the party to the specific license agreement that is not a party to the present proceedings) for a period of two years after ceasing to be in possession and/or have access to such agreements (or any related material submitted in the proceedings), save with the relevant counterparty's consent, more in particular, for Acer: (iv) The individuals mentioned under (B).(iii) a)-c). above must treat the Highly Confidential Information as strictly confidential, in that they: a) shall use the Highly Confidential Information solely for the purpose of these proceedings, including settlement thereof; b) shall keep the Highly Confidential Information confidential and shall not disclose the Highly Confidential Information to any unauthorised third party; c) shall implement adequate confidentiality measures to ensure that only the designated persons referred to above have access to the Highly Confidential Information, in particular by applying adequate physical and electronical access restrictions vis-à-vis third persons. (v) In the event of a culpable breach of point (iii) and (iv) of this Order, the Court may impose a penalty payment for each breach, to be determined in light of the circumstances of each case. (vi) The Court shall: a) exclude the Highly Confidential Information and the Confidential Information from the possibility of inspection by third parties and not publish it in the register or otherwise disclose the Highly Confidential Information and the Confidential Information; b) exclude the public from the oral hearing during the direct and indirect discussion of the Highly Confidential Information and the Confidential Information; c) redact prior to publication of decision or notices, any information contained therein which concerns the Highly Confidential Information and the Confidential Information; all subject to any subsequent order on an application based on R. 262.3. (vii) The parties shall keep the Confidential Information confidential and shall not disclose the Confidential Information to any unauthorised third party. In the Application to add Vectis as a party pursuant to R. 305.1 (a) RoP: (C) admits the intervention of Vectis IP Ltd. in the dispute UPC_CFI_1536/2025 in support of Claimant; (D) declares the counterclaim against Vectis admissible; (E) rejects the other requests by the parties. Brinkman

Key Holdings

  • Intervention of Vectis in support of Dolby is allowed, and a counterclaim for rate-setting against Vectis is possible as it became a party and licenses the patents.
  • Arguments against an intervener's standing for a counterclaim are rejected, as these rules apply to parties bringing an action, not interveners.
  • The necessity of a FRAND declaration or willing licensee status is for the panel to decide and not a prerequisite for considering a counterclaim for rate-setting.
  • The Court orders the production of license agreements, emphasizing that even seemingly different licenses may be relevant for non-discrimination assessment, suggesting an initial attorney-eyes-only regime.
  • The counterclaim for rate-setting will follow the same deadline regime as the counterclaim for revocation.

Tags

  • Production of documents
  • License agreements
  • Intervention
  • Counterclaim
  • Rate-setting
  • FRAND
  • Confidentiality
  • Time Limits

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