2025-07-21 - LD Paris - Sun Patent Trust v. Vivo - UPC_CFI_361/2025

1-Regarding the limitation of the confidentiality club to only representatives: The Claimant requests that a confidentiality club be limited to representatives only (excluding any natural person employed by Defendants), considering the level of protection needed for information designated as “highly confidential”. However, the Court notes that Rule 262A RoP provides regarding the level of that at least one natural person from each party must be part of the confidentiality club, and the UPC has only admitted different solutions thereto in cases where there was an agreement between all parties on this point, which is not the case here. Thus, in accordance with Rule 262A RoP, at least one natural person from each of the Defendants should be included in the confidentiality club. The Claimant refers to a UPC LD Milan decision dated 20 June 2025 (UPC_CFI_319/2024 and 728/2024) stating that while Rule 262A RoP did not authorise a confidentiality club reserved for representatives only (unless the parties agreed otherwise), it was also possible to take account of antitrust laws if these required a confidentiality club to be limited on an exceptional basis. However, the Court notes that in the context of FRAND discussions, the party offering the licence should provide the party receiving the offer with information on other licences in order to be able to determine whether the offer is FRAND or not, by comparison with licences already granted. Against this background, the Court considers it proportionate that three natural persons from the Defendants’ side have access to the “highly confidential information”, notably provided that there are three defendants in the present case. 2-Regarding the capacity of the natural persons identified and the constraints requested by the Claimant: The Court considers that preventing the three highly qualified employees, designated by the Defendants to be part of the confidentiality club, from participating in any future licensing negotiations with the counterparties to the disclosed agreements is disproportionate in view of the rights at stake. The Claimant has moreover not sufficiently substantiated that there exists a concrete risk that these individuals would violate the terms of this Court Order and would (mis)use the Highly Confidential information and/or disclose the Highly Confidential information outside these Court proceedings. The fact that other people within the Defendants´ organisation might also be suitable to assist in the Defendant´s defence is, without further substantiation, also not a ground to refuse access to the named individuals, the ability of whom is not in debate. The constraints requested by the Claimant shall therefore not be accepted in the present case.

The Paris Local Division issued a confidentiality order creating two different levels of confidentiality (confidential information and highly confidential information) with different confidentiality clubs each. The Court stated that it was not possible to limit the confidentiality club to representatives only unless the respondent agreed to that approach. The Court further stated that it saw no basis to exclude the qualified members of the Defendants' organisation from participating in licensing negotiations in the future as there was no indication that they would (mis-)use the confidential information. The order was published multiple times.