UPC_CFI_169/2024, ORD_51859/2024 – Daedalus Prime vs Xiaomi

Court
Local Division Hamburg
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

JR granted confidentiality order with access only to the Representatives and the Managing Director but not to two US attorneys. Claimant asked panel for review of the Order (pursuant to R. 333 RoP), arguing: 1. US attorney is coordinating and is very important; 2. Order is also not clear. The Defendants argue that the JR’s Order is correct Decision of the Panel: 1. Order is clear; 2. US attorneys will not be allowed. The confidential information is not part of the parallel US proceedings and the interests of defendants, who in order to defend themselves were forced to disclose confidential information, weighs heavier than the interests of the claimant, which interests are sufficiently served by access to its representatives and its managing director. 3. Other Divisions may have given different decisions with respect to the UK, but the UK is different from the US as its patent attorneys can act as representatives making the UK an integral part of the UPC system. 4. Leave for appeal is given so that Court of Appeal can set standard. Comment: It happens quite often that worldwide litigation is coordinated by one law firm. This avoids double work and taking conflicting positions in different national proceedings. I cannot see why a US attorney who is coordinating such proceedings (and who is bound to strict ethical rules) should not have access to the Confidential Information, provided that the US attorney can only use the Confidential Information for the purpose of (coordinating) the UPC proceedings.

Key Holdings

  • The panel upheld a confidentiality order denying access to US attorneys, prioritizing the defendant's interests in protecting disclosed confidential information not relevant to parallel US proceedings.
  • The court distinguished UK patent attorneys from US attorneys, noting UK attorneys can act as UPC representatives, integrating the UK into the UPC system for confidentiality purposes.
  • Leave for appeal was granted to allow the Court of Appeal to establish a standard on access to confidential information for non-UPC representatives.
  • The comment questions the rationale for denying access to US attorneys coordinating global litigation, given their ethical obligations.

Tags

  • Access to File
  • Confidentiality
  • Rules of Procedure

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