2024-03-27 - LD Düsseldorf - Fujifilm v. Kodak - UPC_CFI_355/2023

1. When deciding an application to grant protection for the allegedly confi­den­tial information, the court has to weigh the right of a party to have unlimited access to the documents contained in the file, which guarantees its fundamental right to be heard, a­gainst the interest of the opposing party to have its confidential information protected. 2. A party seeking protection for confidential information has – in a first step – to put forward sufficiently substantiated arguments, why it believes the information concerned is to be protected. It is therefore not enough to have resort to general circumstances such as there being competition between the parties to the dispute. The court has to be put in a position to understand, why the applicant believes that the concrete information to be protected is vulnerable and confidential. It is therefore necessary to substantiate with regard to each redacted part of the written submissions, why this explicit part of the submission amounts to confidential information. 3. Once adequate explanation in that regard has been received, it is then for the court to decide, which extent of certainty has to be reached for the court to believe that the applicant’s allegations are true. The necessary level of persuasion that the information is confidential in nature may differ having due regard to the substance matter of the dispute. 4. In a further step, the court has to strike a balance between the adequate level of protection of said confidential information and the right of the claimant to have sufficient access to the information in order to exercise its right to be heard. In this context, R. 262A.6 RoP establishes with all desirable clarity as a ground rule of paramount importance that at least one natural person from each party and the respective lawyers or other representatives are to be granted access in order to ensure a fair trial. When deciding upon the level of restriction, again the circumstances of the case are to be taken into consideration. Whereas in some cases a restriction may be more important to safeguard the confidential information concerned, in other cases the right to full access to the files of a party trumps the interest of protection.

The Düsseldorf Local Division panel issued a reasoned final order under R. 262A RoP setting out a four-step framework for confidentiality protection in UPC proceedings. Protection requires (i) balancing the fundamental right to be heard against the opponent's confidentiality interest, (ii) particularised per-redaction justification by the applicant, (iii) a level of judicial certainty calibrated to the type of dispute, and (iv) a composition decision consistent with R. 262A.6 RoP. On the facts, the panel confirmed the confidential nature of Kodak's prior-use-right information and created a confidentiality club of counsel, private experts and nine named Fujifilm employees (three immediately, six after the appeal window). The panel expressly rejected an 'attorneys' eyes only' model based on Dutch practice as incompatible with Art. 20, 24(1)(a) UPCA and the trade-secrets Directive, and granted leave to appeal under R. 220.2 RoP.