UPC_CFI_724/2025 – Microsoft v Suinno

Court
Central Division Paris
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Confidentiality of lawyers’ invoices Facts Microsoft requested in cost proceedings that the exhibit containing the invoices of their law firm including the hours worked on the case would be treated as strictly confidential. The Court Cites the case law of the EU: three conditions for protection have to be fulfilled: a) the information is only known to a limited number of people; b) its disclosure is likely to cause serious harm to the person who provided it or to third parties; c) the interests likely to be harmed by disclosure are objectively worthy of protection. The Court considers that the invoices of lawyers qualify as confidential information and are also covered by the attorney-client privilege of R. 287 RoP. Comment 1. If I lose a case and I have to pay the legal costs claimed by the winner, why are these legal costs and the hours worked on the case confidential information? Can it be because it tells you something about the financial situation of the company which hired the lawyers? That is hardly convincing, as financial information is readily available. Even my own retirement BV has to publish financial data . Can it be because it reveals how important the patent is? I have hardly ever heard a client say: “Mr. Hoyng we want to start a lawsuit but the patent is not that important so please do not spend much time on it”. I have also never heard clients say: “This is an important patent so please charge higher rates and spend as much time as you like on it”. It is all very unrealistic. On the contrary, what matters is transparency in terms of: how can you get (realistic) information on what the costs of defending a UPC case with a given law firm are; how efficient is it; do you see a high number of hours of unexperienced associates which in fact are learning while you pay for it; how is its service, etc. The best information does not come from legal guides or rankings, but from other companies who have had experience with a given law firm in UPC proceedings. In this case I understand that neither the winner (because it himself claims confidentiality) nor the loser can disclose the information and nothing will be publicly available. Lastly, the number of hours billed by a law firm and its invoices fall, according to this JR, under attorney-client privilege. I do not understand why. Does it mean that I, as an attorney, cannot disclose to a third party what was charged in a case and how many hours were worked on a case? Has the UPC been created for the lawyers or for the potential users? One of the most important things for a user is finding a good representative and knowing what they can expect in terms of costs and what amount is reasonable. Again I think that if parties are willing to litigate about costs, then one of the consequences is that this normally should be accessible to the public. This is normally not likely to cause serious harm. 2. The Court is not willing to fix a penalty sum in case of non-compliance with the order so as to be able to assess the circumstances of the non-compliance. That seems to make sense but it means that in order to determine the penalty payments due you will have to go through extra proceedings. I do not see why the amount cannot be fixed right away especially because the defendant can always argue that what the claimant proposed as penalty is excessive. Of course, in order not to reach unreasonable sums, the Court can and should set a maximum which can be forfeited.

Full Decision Text

Central Division Paris Seat ORDER of the Court of First Instance of the Unified Patent Court Central division (Paris seat) issued on 8 September 2025 concerning the Application RoP262A No. App_35761/2025 UPC_CFI_724/2025 HEADNOTES: 1. In compliance with EU law, for the purposes of applying Rule 262A ‘RoP’, information may be considered confidential when it is known only to a limited number of persons, its disclosure is liable to cause serious harm to the person who has provided it or to third parties and the interests liable to be harmed by disclosure are, objectively, worthy of protection. 2. The information concerning the number of hours spent on the case by the instructed representatives and the fees agreed upon between the parties must be considered confidential because its disclosure provides insight into the client’s financial standing and commercial strategy, the perceived value of the patent as a corporate asset, and the resources committed to fighting particular infringements. 3. The information concerning the number of hours spent on the case by the instructed attorneys and the fees agreed upon between the parties falls within the scope of the attorney-client privilege provided by Rule 287 ‘RoP’, as it pertains to the communication between the party and its representatives concerning the management of the judicial proceedings. KEYWORDS: Protection of confidential information. Invoices from law firm to client. Attorney-client privilege. APPLICANT: Microsoft Corporation - One Microsoft Way - 98052-6399 - Redmond - US represented by Tilman Müller-Stoy and Nadine Westermeyer, Bardehle Pagenberg RESPONDENT: Suinno Mobile & AI Technologies Licensing Oy - Fabianinkatu 21 - 00130 - Helsinki - FI represented by Petri Eskola, Backström & Co PATENT AT ISSUE: European patent n° EP 2 671 173 PANEL: Panel 2 Paolo Catallozzi Presiding judge and judge-rapporteur Tatyana Zhilova Legally qualified judge Wiem Samoud Technically qualified judge DECIDING JUDGE: This order is issued by the Presiding judge and judge-rapporteur Paolo Catallozzi SUMMARY OF FACTS: 1. On 29 August 2025 the applicant requested that the content of lodged in the proceedings for cost decision No. ACT_34440/2025, be treated as strictly confidential and be made accessible only to the respondent’s legal representative and their representative, namely Mr. Mikko Väänänen and Mr. Petri Eskola. The applicant notes that the exhibit contains invoices from its law firm to the client, including a list of the work expended on the proceedings, specifying by whom, what for and at what rate. This constitutes highly sensitive business information for both the applicant and its representatives, and it falls under the applicant’s trade secrets. The applicant further points out that this information is also privileged under Rule 287 (1) of the Rules of Procedure ('RoP'). 2. The applicant also requested that a penalty payment, in an amount to be determined by the Court, be imposed for each case of non-compliance with the confidentiality protection order, that the confidential information be excluded from publications pursuant to Rule 262 (1) (a) ‘RoP’ and that, in the event of a request by a member of the public pursuant to Rule 262 (3) ‘RoP’, the information referred to not be made available. 3. On 4 September 2025 the respondent objected arguing that that this application should be denied as it provides no specific reason for confidentiality. The respondent asserts that the request does not concern information contained in its pleadings or the collection and use of evidence in proceedings, as required by Rule 262A ‘RoP’, and that the specification of alleged costs of a party in infringement proceedings cannot be considered as a trade secret or pertaining to the attorney-client privilege. The respondent further adds that no prima facie ethical and honest business reason exists for declaring the taxable invoices between the party and its representatives confidential. Lastly, the respondent objects to the request for penalty payment, also because it does not concern the party but its representatives (individuals), which is contrary to Article 82 (4) of the Unified Patent Court Agreement (‘UPCA’) and Rule 354 (3) ‘RoP’. GROUNDS FOR THE ORDER: 4. According to the case-law of the European Union Courts, three cumulative conditions must be met in order for information to be considered, by its nature, confidential and enjoy protection against disclosure: (i) that it is known only to a limited number of persons, (ii) that its disclosure is liable to cause serious harm to the person who has provided it or to third parties and (iii) that the interests liable to be harmed by disclosure are, objectively, worthy of protection (see GC 28 January 2015, case T-345/12, Akzo Nobel and Others v Commission; GC 8 November 2011, case T-88/09, Idromacchine v Commission; GC 30 May 2006, case T‑198/03, Bank Austria Creditanstalt v Commission). 5. These principles have been incorporated into the Commission Communication on the protection of confidential information by national courts in proceedings concerning the private enforcement of EU competition law, adopted by the European Commission (2020/C 242/01), and, although formulated in proceedings concerning the enforcement of competition law, they also apply to cases with a different subject matter, given their general nature. 6. This judge-rapporteur has already stated on several occasions that the information contained in documents relating to the hours billed by the attorneys to their clients with reference to activities regarding the main proceedingsis to be considered confidential, as it meets the criteria of being known only to a limited number of persons, its disclosure is likely to cause serious harm to the disclosing party or to third parties, and the interests liable to be harmed by the disclosure of this information are, objectively, worthy of protection (see orders of 6 March 2025, UPC_CFI_11/2025, 14 April 2025, UPC_CFI_601/2024, 18 June 2025, UPC_CFI_391/2025). 7. Indeed, the information concerning the number of hours spent on the case by the instructed attorneys and the fees agreed upon between the parties must be considered confidential because its disclosure provides insight into the client’s financial standing and commercial strategy, the perceived value of the patent as a corporate asset, and the resources committed to fighting particular infringements (see UPC, LD Mannheim, 6 August 2025, UPC_336/2025; UPC, CD Milan, 5 June 2025, UPC_477/2025). 8. This information is also to be considered confidential with regard to the representatives – who may be deemed a “third party” pursuant to Article 58 ‘UPCA’ – as it also involves how professionals organize their activities, and, moreover, falls within the scope of the attorneyclient privilege provided by Rule 287 ‘RoP’, as it pertains to the communication between the party and its representatives concerning the management of the judicial proceedings. 9. Having established the confidential nature of the information in question, it must be observed that, according to Rule 262 (5) 'RoP', the Court must assess whether the grounds relied upon by the applicant for the order significantly outweigh the interest of the other party to have full access to the information and evidence in question. 10. In the case at hand, while the interest of the applicant, along with that of its representatives, is clear – namely, the protection of confidential information for reasons pertaining to the right to freely conduct its business in a fair competitive environment – the respondent's interest in having such information released from access restrictions is not equally apparent. 11. This is all the more so considering that the request for confidentiality does not exclude either the respondent’s sole instructed counsel or its managing director and main shareholder. It is therefore unclear to which other persons within the company access to the information would be precluded. 12. Nor, from another perspective, is it clear what public interest there would be in such information, given that, in the matter of legal costs of the judicial proceedings before the Unified Patent Court, a public interest can only be conceived with reference to the Court’s final decision on their determination, but not with regard to the hours spent on the defence, their allocation within the instructed legal team, or the fees agreed upon between the parties. 13. It follows that the request for protection of the information contained in must be granted. 14. The Court considers it expedient not to establish penalties in a determined amount for any prospective failure to comply with the terms of the order, but rather to reserve the determination of such penalties until after the ascertainment of the severity of each such noncompliance failure and the degree of culpability of the non-compliant party (see UPC, LD Dusseldorf, 23 December 2024, UPC_CFI_336-605/2024 and 9 September 2024, UPC_CFI_347/2024). 15. The Court notes that the request for the confidential information to be excluded from publications pursuant to Rule 262 (1) (a) ‘RoP’ requires a specific application targeted to the Registrar and does not necessitate any action by the Court to achieve the effect sought by the applicant. The Court intervenes only in the event that a member of the public requests that any information excluded from the public pursuant to Rule 262 (2) ‘RoP’ is made available, but this situation has not arisen. ORDER The judge-rapporteur, i) orders that access to and the information contained therein is restricted to Mr. Mikko Väänänen and Mr. Petri Eskola; ii) orders that the persons identified in point i) are obliged not to disclose the information disclosed in the aforementioned Exhibit; iii) dismisses the request to order the respondent to pay a penalty of a determined amount for each case of culpably non-compliance with this order; iv) dismisses all further requests of the applicant. Issued on 8 September 2025. The Presiding judge and judge-rapporteur Paolo Catallozzi Order no. ORD_35853/2025 in ACTION NUMBER: ACT_18406/2024 UPC number: UPC_CFI_724/2025 Action type: Infringement Action Related proceeding no. Application No.: 35761/2025 Application Type: APPLICATION_ROP262A Paolo Catallozzi Firmato digitalmente da Paolo Catallozzi Data: 2025.09.08 17:50:15 +02'00'

Key Holdings

  • Lawyers' invoices and hours worked qualify as confidential information.
  • Covered by attorney-client privilege (R. 287 RoP).
  • Penalty sum for non-compliance not fixed in advance.

Tags

  • Attorney-Client Privilege
  • Confidentiality
  • Security for Costs

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