UPC_CFI_758/2024_Aug26 – Hologic v Siemens
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Confidential information Facts This concerns a request for confidentiality based on R. 262A RoP, which is not challenged by the other party. The JR Classified the information as confidential in the meaning of Art. 58 UPCA, R. 262.2 RoP. Comment This – according to the published decision – was a request based on R. 262A RoP. However, it appears the goal was not to avoid the information going to the other party, as the other party apparently knew the information. Instead, the goal was to make sure that the information does not go to third parties. The JR apparently requalified it as a request under R. 262.2 RoP as that is the Rule which ensures (except if challenged under R. 262.3 RoP) that third parties do not get access. Such decision is not only useful with respect to requests for access, but in my opinion a party can also invoke such decision during public oral hearings to request closed doors (R. 105.2 RoP and R. 115 RoP). The question remains whether you do not also need a R. 262A RoP decision in this situation, to ensure that the other party does not make the information public?
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_758/2024 UPC_CFI_259/2025 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 26 August 2025 concerning EP 2 352 431 B1 Claimant: Hologic, Inc., represented by its President & CEO Stephen MacMillan, 250 Campus Drive, Marlbor- ough, MA 01752, United States of America, Represented by: Attorney-at-law Dr Thure Schubert, Attorney-at-law Christian- Leopold Zapp, Attorney-at-law Arnold Asmussen, Attorney-at- law Dr Christoph Eisenmann, Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstraße 3, 81675 Munich, Germany Electronic address for service: vb-hologic-siemens@vossiusbrinkhof.eu Defendants: 1. Siemens Healthineers AG, Siemensstr. 3, 91301 Forchheim, Germany 2. Siemens Healthcare GmbH, Henkestr. 127, 91052 Erlangen, Germany 3. Siemens Healthineers Nederland B.V., Prinses Beatrixlaan 800, 2595 BN Den Haag, The Netherlands 4. Siemens Healthcare SAS, 6 rue du Général Audran, 92400 Courbevoie, France All Defendants represented by: Attorney-at-law Dr Matthias Meyer, Attorney-at-law Dr Daniel Misch, Patent Attorney Dr Felix Harbsmeier, Patent Attorney Cameron Walker, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany Electronic address for service: matthias.meyer@twobirds.com PATENT IN SUIT: EUROPEAN PATENT NO. 2 352 431 B1 PANEL/DIVISION: Panel of the Düsseldorf Local Division 2 DECIDING JUDGES: This order was issued by Presiding Judge Thomas on behalf of Judge Dr Thom acting as judge-rap- porteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 262A RoP – Protection of confidential information GROUNDS FOR THE ORDER: 1. Art. 9 (1) and (2) (a) of Directive (EU) 2016/943 provide that, in judicial proceedings, access to documents submitted by the parties or third parties containing trade secrets or alleged trade secrets may, upon request, be restricted in whole or in part to a limited number of persons. The protection of confidential information is provided for in Art. 58 UPCA and im- plemented in R. 262A RoP. 2. According to R. 262A.5 RoP, the Court may allow the application for protection of confiden- tial information considering in particular 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 the evidence in question. 3. That being said, the application is to be granted. 4. The formal requirements of R. 262A.2 and .3 RoP were complied with. The Claimant’s repre- sentatives were also heard before the confidentiality order was issued, as required by R. 262A.4 RoP. They made use of the opportunity to submit observations. 5. The Claimant has not challenged that the information in question is confidential. Nor did the Claimant object to the scope of the requested order. ORDER: I. The following information is classified as confidential within the meaning of Art. 58 UPCA, R. 262.2 RoP: - the information regarding the design, components and the functioning of the at- tacked embodiments as well as Exhibit B&B 20, Exhibit B&B 21 and Exhibit B&B 22 and - the content of […] according to Exhibit B&B 23 as well as Exhibit B&B 23 itself. For ease of reference, information classified as confidential is highlighted in grey in the Rejoinder and listed in the table below. […] 3 II. Information classified as confidential in paragraph I. shall be treated as such by anyone who gains knowledge of it, whether as a party, their legal representative, witness, ex- pert or other representative, or in any other capacity, as a result of their involvement in the present proceedings and may not be used or disclosed outside these proceed- ings unless it has been acquired by them outside these proceedings. Any individual who gains access to or knowledge of said information as a result of their involvement in the present proceedings may not use or disclose it outside of these proceedings, unless such information was acquired outside of these proceedings. These obligations shall continue to apply even after the conclusion of these proceed- ings. This shall not apply if the court has denied the existence of the disputed trade secret by a final judgment or as soon as the disputed information becomes known or readily accessible to persons in the circles that usually deal with such information. 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. IV. The access restrictions contained in paragraph I. of the orders issued on 28 July 2025 and 1 August 2025, which restrict access to Defendant’s Rejoinder to the Reply to the Statement of Defence/Reply to the Defence to the counterclaim for revocation/De- fence to the Application to amend the patent of 25 July 2025 as well as Exhibits B&B 19, B&B 20, B&B 21, B&B 22 and B&B 23 is restricted, on the part of the Claimant, to Claimant’s legal representatives only, are hereby lifted. DETAILS OF THE ORDER: App_33733/2025, App_33736/25 and App_33737/2025 under main file reference ACT_63758/2024, CC_14403/2025 UPC number: UPC_CFI_758/2024 and UPC_CFI_259/2025 Type of procedure: Infringement action and Counterclaim for revocation Issued in Düsseldorf on 26 August 2025 NAME UND SIGNATURE Presiding Judge Thomas
Key Holdings
- Information classified as confidential under Art. 58 UPCA / R. 262.2 RoP.
- Request aimed at restricting third-party access rather than opposing party access.
Tags
- Confidentiality
- Public Access