UPC_CFI_1695/2025; UPC_CFI_721/2025 – IQIP v TMS

Court: Local Division The Hague
Date: 2026-04-29
Outcome: Partially Granted
Sector: Mechanics
Decision Type: PROCEDURAL

Expert Commentary

Request to produce evidence Facts 1. Infringement proceedings. The defendants allege public prior use of the plugs claimed in the patent EP 2 148 123. 2. The defendants state that these plugs were used by the patentee in two projects in 2008. 3. The defendants ask the Court to order the claimant to provide information about the plugs delivered for these projects. 4. The claimant states that certain documents do not exist, argues that the request is overly broad, and wants a confidentiality regime with respect to certain information. The JR The JR partially allows the request after citing the requirement for a request to produce evidence. The JR further proposes a practical regime outside the CMS system for the preservation of confidentiality. Comment The Local Division in The Hague is starting to build a reputation for receiving and granting (within reasonable boundaries) R. 190 RoP requests during litigation that can be helpful for a party to prove infringement or invalidity.

Full Decision Text

1 Local Division The Hague UPC CFI 721/2025 UPC-CFI-0001695/2025 (CC) ORDER of the Court of First Instance of the Unified Patent Court issued on 29/04/2026 concerning: R. 190 order to produce evidence HEADNOTE: Request to produce evidence on the basis of R. 190 RoP par;ally awarded. Request too broad and therefore limited. KEYWORDS: Evidence, duty to produce. Date of receipt of Statement of claim : 08-08-2025 CLAIMANT 1) IQIP Holding B.V. Represented by Peter VAN GEMERT Molendijk 94, 3361 EP, Sliedrecht, NL DEFENDANTS 1) TMS Technical & Maritime Supplies B.V. Represented by Wim MAAS Biesboschhaven Noord 18, 4251 NL, Werkendam, NL 2) TMS Technical & Maritime Services B.V. Represented by Wim MAAS Biesboschhaven Noord 18, 4251 NL, Werkendam, NL 2 THIRD PARTY 1) IQIP B.V. Represented by Peter VAN GEMERT Molendijk 94, 3361 EP, Sliedrecht, NL PATENT AT ISSUE Patent no. Applicant EP2148123 IHC Handling Systems V.O.F. DECIDING JUDGE Presiding judge Edger Brinkman Judge-rapporteur Edger Brinkman LANGUAGE OF PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS Infringement proceedings - Request to produce evidence REQUEST AND ITS GROUNDS 1. In defence against the infringement claim brought by Claimant, Defendants allege public prior use. Plugs having all features as claimed by the Patent were already used in the public domain before the priority date of the Patent (24 July 2008) or the filing date of the Patent (23 July 2009) in two projects from 2008: the 2008 Rhyl Flats Project and the 2008 Gunfleet Sands Project. 2. These Plugs were supplied for use in these 2008 projects by IHC Handling Systems, which later merged into IQIP BV, a subsidiary of Claimant in these proceedings. 3. Defendants therefore request that the Court order: I. IQIP and IQIP BV to provide to TMS materials, such as technical specificaZon documents, plug specificaZons, instrucZons for use, photos, towing plans and project reports regarding the Prior Plug (as defined in par. 1.6 of this applicaZon) supplied for use in the 2008 Rhyl Flats Project and the Prior Assembly (as defined in par. 1.6 of this applicaZon) used in this project, which: (1) specify the design of the Prior Plug, (2) specify how the Prior Plug is arranged on or in the pipe of the Prior Assembly, (3) specify the design of the sealing means of the Prior Plug, (4) specify how the sealing means of the Prior Plug exerts a sealing force onto the pipe of the Prior Assembly when assembled, 3 (5) which specify the technical requirements of the Prior Plug for directly towing the Prior Assembly from the Prior Plug, (6) specify the loads or forces the Prior Plug needs to be able to bear when in use, and (7) specify how the driving force exerted on the Prior Plug when towing the Prior Assembly is transferred to the pipe of the Prior Assembly, II. IQIP and IQIP BV to provide to TMS materials, such as technical specificaZon documents, plug specificaZons, instrucZons for use, photos, towing plans and project reports regarding the Prior Plug (as defined in par. 1.6 of this applicaZon) supplied for use in the 2008 Gunfleet Sands Project and the Prior Assembly (as defined in par. 1.6 of this applicaZon) used in this project, which: (1) specify the design of the Prior Plug, (2) specify how the Prior Plug is arranged on or in the pipe of the Prior Assembly, (3) specify the design of the sealing means of the Prior Plug, (4) specify how the sealing means of the Prior Plug exerts a sealing force onto the pipe of the Prior Assembly when assembled, (5) which specify the technical requirements of the Prior Plug for directly towing the Prior Assembly from the Prior Plug, (6) specify the loads or forces the Prior Plug needs to be able to bear when in use, and (7) specify how the driving force exerted on the Prior Plug when towing the Prior Assembly is transferred to the pipe of the Prior Assembly, III. IQIP and IQIP BV to provide to TMS any materials, such as invoices, order agreements, tender documents or contracts to sell, rent out or service the Prior Plugs, which show that the Prior Plugs have been supplied for use in the 2008 Rhyl Flats Project before the priority date of the Patent (24 July 2008) or the filing date of the Patent (23 July 2009), IV. IQIP and IQIP BV to provide to TMS any materials, such as invoices, order agreements, tender documents or contracts to sell, rent out or service the Prior Plugs, which show that the Prior Plugs have been supplied for use in the 2008 Gunfleet Sands Project before the priority date of the Patent (24 July 2008) or the filing date of the Patent (23 July 2009), V. IQIP and IQIP BV to provide these documents under I to IV within 2 weeks of service of the order (together with – if need be – a R. 262A and/or R. 262.2 RoP request), and VI. that if IQIP or IQIP BV fails to comply with this order, the Court shall take such failure into account when deciding on the issue in quesZon (R. 190.7 RoP). DEFENCE 4. Both Claimant and IQIP BV (hereinaYer: IQIP, singular) filed comments. IQIP defers to the discre;on of the Court on whether any produc;on of evidence should be ordered. Based on the documents IQIP has been able to gather, at least the following documents do either not exist or are in any case not in possession of IQIP: invoices, signed order agreements, tender documents, contracts to sale, rent out or service of the plugs used in the Rhyl Flats and Gunfleet Sands project. With regard to these documents, IQIP will therefore in any case be unable to comply with an order to produce these documents and no such order should be given. 4 5. In addi;on, IQIP argues that TMS’s request for produc;on of evidence is overly broad and dispropor;onate in scope and should at least be denied to that extent. Moreover, the requested documents contain sensi;ve commercial and technical informa;on which should be subject to appropriate terms of confiden;ality. Therefore, if any produc;on of evidence should be ordered, IQIP requests the Court to grant the Applica;on only to the limited extent set out in its comments and subject to the confiden;ality condi;ons set out below, as well as to s;pulate that IQIP be allowed to redact Confiden;al Informa;on not relevant for the purpose of the Applica;on: (i) to order that access to documents containing Confiden;al Informa;on shall be restricted exclusively to: a. TMS's authorised representa;ves in these proceedings, members of the legal team, as well as their internal support staff, b. TMS’s external technical expert(s) for these proceedings, who are not employees of TMS, c. at most two natural persons designated by TMS, to be iden;fied by name to the Court and IQIP; (ii) to order that all persons granted access under (i) above shall treat the Confiden;al Informa;on as strictly confiden;al and shall not use, disclose, or reproduce such informa;on for any purpose other than these proceedings; (iii) to order that the confiden;ality obliga;ons shall remain in full force and effect aYer termina;on of these proceedings; (iv) to order that no later than three months aYer final termina;on of these proceedings, all persons having received access to the Confiden;al Informa;on shall destroy or return to IQIP all documents, copies, notes, and other materials containing or derived from such Confiden;al Informa;on; (v) to order that any breach of these confidentiality obligations shall subject TMS to a penalty payment of EUR 100,000, or alternatively an amount to be determined by the Court having regard to the severity and circumstances of the breach, with such penalty being imposed for each individual violation. GROUNDS FOR THE ORDER 6. The sec;ons of Ar;cle 59 UPCA and Rule 190 RoP relevant to the request read as follows: Ar#cle 59(1) UPCA At the request of a party which has presented reasonably available evidence sufficient to support its claims and has, in substan<a<ng those claims, specified evidence which lies in the control of the opposing party or a third party, the Court may order the opposing party or a third party to present such evidence, subject to the protec<on of confiden<al informa<on. Such order shall not result in an obliga<on of self-incrimina<on. 5 Rule 190(1) RoP Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substan<a<ng those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence. For the protec<on of confiden<al informa<on the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure. 7. It follows from these provisions that the following requirements must be safisfied before the Court can order any party to submit any evidence into the proceedings: (i) The reques;ng party must have presented evidence “reasonably available” to it in support of its claims; (ii) the evidence to which access is requested must be “specified” and lie in control of the other party; (iii) the other party’s confidenfal informa;on must be protected; (iv) based on the general rules of Arfcles 41(3) and 42 UPCA, as well as Ar;cle 3 of the Enforcement Direcfve, any order to produce evidence must safsfy the requirements of propor;onality, equity, and fairness. (i) reasonable evidence in support of its claims 8. IQIP has not disputed TMS’s en;tlement to the documents as such. The Court will therefore assume TMS has thus far provided reasonably available evidence to support its claim of public prior use, bearing in mind that the public prior use was allegedly done by a predecessor of IQIP. (ii) sufficient specifica<on of the evidence 9. IQIP has contested whether all documents requested exist or are in its possession. Since Defendants have not given any arguments or evidence to the contrary, the Court will accept this and hence exclude these from the order. In as far as TMS seeks to establish the precise timing of when the plugs were used for installing monopiles at the offshore locations, IQIP indicated unconstested that IHC Handling Systems was not involved in the actual Rhyl Flats and Gunfleet Sands projects themselves, but merely supplied the plugs. To the best of IQIP’s knowledge, IHC Handling Systems never possessed documents indicating the exact project timeline or installation schedule. In any case, IQIP has not been able to identify any such documents. For such project-specific timing information, TMS should approach e.g. Ballast Nedam, the project contractor and/or MT Højgaard. 10. IQIP further indicated that “it will not dispute that the plugs used in the Rhyl Flats project were delivered prior to the priority date of the Patent” (mn 21 of its comments). While not mentioned specifically in that paragraph, the Court assumes that the same applies to the plugs used in the Gunfleet Sands project from the wording of the following paragraph: 22. As a result, there is no longer any need for TMS or interest in obtaining access to documents “which show that the Prior Plugs have been supplied for use in the Rhyl Flats project or Gunfleet Sands project before the priority date of the Patent 6 (24 July 2008) or the filing date of the Patent (23 July 2009)”. Ordering their production would therefore also not be proportionate. (iii) protec<on of confiden<al informa<on 11. TMS has not contested that the documents to be provided contain confiden;al informa;on. The uncontested confiden;ality regime requested by IQIP to address this will be ordered. (iv) propor<onality, equity and fairness 12. The Court deems the produc;on of the above evidence propor;onal and reasonably necessary to further the case of public prior use, while ensuring that IQIP's interest in maintaining the confiden;ality of certain informa;on is properly protected. various 13. The Court does not require the documents to be uploaded to the CMS. They are only ; be submined as an exhibit when they are relied on. Four weeks aYer the documents are received, Defendants may submit another pleading, rela;ng only to the allega;on of public prior use. Four weeks aYer this submission, Claimant may reply. Where confiden;al informa;on is submined or referenced, the relevant party should apply for confiden;ality (R. 262/R.262A) and submit both a redacted and an unredacted version. Upon the first request from TMS, IQIP will indicate which parts of TMS's pleading should be redacted and will provide a redacted version of any document to be submined with the pleading. Applica;ons for confiden;ality will be granted, and the same confiden;ality regime will apply, for which no further order is needed unless the panel decides otherwise, subject to any subsequent order on an applica;on under R. 262.3 RoP. ORDER The Court orders: I. IQIP and IQIP BV to provide to TMS materials, such as technical specificaZon documents, plug specificaZons, instrucZons for use, photos, towing plans and project reports regarding the Prior Plug (as defined in par. 1.6 of this applicaZon) supplied for use in the 2008 Rhyl Flats Project and the Prior Assembly (as defined in par. 1.6 of the applicaZon) used in this project, which: (1) specify the design of the Prior Plug, (2) specify how the Prior Plug is arranged on or in the pipe of the Prior Assembly, (3) specify the design of the sealing means of the Prior Plug, (4) specify how the sealing means of the Prior Plug exerts a sealing force onto the pipe of the Prior Assembly when assembled, (5) which specify the technical requirements of the Prior Plug for directly towing the Prior Assembly from the Prior Plug, (6) specify the loads or forces the Prior Plug needs to be able to bear when in use, and (7) specify how the driving force exerted on the Prior Plug when towing the Prior Assembly is transferred to the pipe of the Prior Assembly, 7 II. IQIP and IQIP BV to provide to TMS materials, such as technical specificaZon documents, plug specificaZons, instrucZons for use, photos, towing plans and project reports regarding the Prior Plug (as defined in par. 1.6 of this applicaZon) supplied for use in the 2008 Gunfleet Sands Project and the Prior Assembly (as defined in par. 1.6 of the applicaZon) used in this project, which: (1) specify the design of the Prior Plug, (2) specify how the Prior Plug is arranged on or in the pipe of the Prior Assembly, (3) specify the design of the sealing means of the Prior Plug, (4) specify how the sealing means of the Prior Plug exerts a sealing force onto the pipe of the Prior Assembly when assembled, (5) which specify the technical requirements of the Prior Plug for directly towing the Prior Assembly from the Prior Plug, (6) specify the loads or forces the Prior Plug needs to be able to bear when in use, and (7) specify how the driving force exerted on the Prior Plug when towing the Prior Assembly is transferred to the pipe of the Prior Assembly, III. IQIP and IQIP BV to provide these documents under I to II within 2 weeks of service of the order, IV. that if IQIP or IQIP BV fails to comply with this order, the Court shall take such failure into account when deciding on the issue in quesZon (R. 190.7 RoP), V. that IQIP may redact any informa;on unrelated to public prior use; VI. as to confiden;ality of the documents to be provided: (i) that access to documents containing Confidential Information shall be restricted exclusively to: a. TMS's authorised representa;ves in these proceedings, members of the legal team, as well as their internal support staff, b. TMS’s external technical expert(s) for these proceedings, who are not employees of TMS, c. at most two natural persons designated by TMS, to be iden;fied by name to the Court and IQIP; (ii) that all persons granted access under (i) above shall treat the Confidential Information as strictly confidential and shall not use, disclose, or reproduce such information for any purpose other than these proceedings; (iii) that the confidentiality obligations shall remain in full force and effect after termination of these proceedings; (iv) that no later than three months after final termination of these proceedings, all persons having received access to the Confidential Information shall destroy or return to IQIP all documents, copies, notes, and other materials containing or derived from such Confidential Information; (v) that any breach of these confidentiality obligations shall subject TMS to a penalty payment of EUR 100,000, or an amount to be determined by the Court having regard to the severity and circumstances of the breach, with such penalty being imposed for 8 each individual violation. V.II that four weeks aber receipt of the documents, TMS may file a pleading, only relaZng to its claim of public prior use in the 2008 Rhyl Flats Project and the 2008 Gunfleet Sands Project, and that IQIP may reply to this four weeks later, VIII all further requests are denied. Brinkman, presiding judge and judge rapporteur For the Deputy Registrar, clerk

Key Holdings

UPC Local Divisions can grant requests for evidence production (Rule 190 RoP) to assist parties in proving infringement or invalidity.
The Court may partially allow broad requests for evidence, requiring specific information while considering arguments of non-existence or overbreadth.
A confidentiality regime can be proposed by the Court, potentially operating outside the CMS system, to protect sensitive information during evidence production.
Requests for evidence must meet specific requirements, which the Court will assess before granting.

Related Rules

Rule 1 – Application of the Rules and general principles of interpretation

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