Rule 190 – Order to produce evidence

1. Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating 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 protection of confidential information the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure.

2. During the written and interim procedures, a party may request such an order to produce evidence.

3. The judge-rapporteur may make such order in the written procedure or in the interim procedure having given the other/third party an opportunity to be heard.

4. An order to produce evidence shall in particular specify:

(a) under which conditions, in what form and within what time period the evidence shall be produced;

(b) any sanction which may be imposed if the evidence is not produced according to the order.

5. Where the Court orders a third party to produce evidence, the interests of that third party shall be duly taken into account.

6. An order to produce evidence shall be subject to the provisions of Rules 179.3, 287 and 288. The order shall indicate that an appeal may be brought in accordance with Article 73 of the Agreement and Rule 220.1.

7. If a party fails to comply with an order to produce evidence, the Court shall take such failure into account when deciding on the issue in question.

Relation with Agreement: Article 59

Case Law

Court of Appeal

IPPT20240924, UPC CoA, Guangdong OPPO v Panasonic
Order to produce evidence is not only open to a claimant, but also to a defendant, such as in the present case, an order to produce (counter)-evidence. (Article 59 UPCA, Rule 190 RoP, Article 6 Enforcement Directive). In case of a FRAND-defence an order to produce evidence (R. 190 RoP) must strike a balance between the defendant’s interest in obtaining evidence which may be useful for its FRAND-defence, and the interest of the other party and its contracting parties in protecting confidential information. Disclosure of evidence to be limited to what - at the discretion of the court – is strictly relevant, proportionate and necessary. Margin of discretion includes decision-making on the request in accordance with what the judge-rapporteur, the presiding judge or the panel has decided on the order in which issues are to be decided pursuant to R.334(e) RoP. The assessment of a request for an order to produce evidence may depend on the stage of the proceedings. Such a request may be considered not to meet the criteria of necessity, relevance and proportionality at one stage of the proceedings, but could be considered to meet those criteria at a later stage. 

Court of First Instance

IPPT20241020, UPC CFI, LD Mannheim, DISH v AYLO - II
Order to produce a document  (R. 190 RoP) can only be granted if it has been established that this would be used to prove a disputed fact. If it remains unknown whether the opposing side will dispute the fact which the evidence aims to prove, no order can be given.

IPPT20241014, UPC CFI, LD The Hague, Winnow v Orbisk
Request to produce evidence partially awarded (Article 59 UPCA, R. 190 RoP). Limited to evidence pertinent to the fulfilment of features 1.4 and 1.5 which has been disputed and thus far only has been supported by publicly available evidence. It is credible, and at any rate not really put into question, that such evidence exists and lies in control of Orbisk.

IPPT20240806, UPC CFI, LD The Hague, Winnow v Orbisk
Extension granted from 20 August 2024 to 6 September 2024 for filing response to Rule 190 RoP request (order to produce evidence). The Statement of defence and the reply to the R. 190 request so not (necessarily) have to be filed on the same date.

IPPT20240604, UPC CFI, LD Hamburg, Avago v Tesla
Rebuttable presumption that the registered person is the patent proprietor (Rule 8(5) RoP). Defendants allowed to examine those resolutions to which the property right holder listed in the register, i.e. the plaintiff, has itself referred in the proceedings (Rule 190 RoP), inluding: the resolution of the Board of Directors of [...] to authorise [...] to act on behalf of [...], as referred to in the Power of Attorney submitted as Exhibit EIP 12 and the resolution of the Board of Directors of [...] referred to in the Power of Attorney submitted as Exhibit EIP 12 authorising the transfer of the patent-in-suit from [...] to Avago Technologies General IP (Singapore) Pte. Ltd.

IPPT20240516, UPC CFI, LD Mannheim, Panasonic v Orope
Order to produce evidence in FRAND proceedings denied as being too vague and too broad as a mere request for investigation (Rule 190 RoP).Insofar as the defendants have requested the naming and submission of the licence agreements with the companies ‘X’ and ‘Y’, previously unnamed by the plaintiff, an order is no longer necessary after the plaintiff has in the meantime introduced these agreements into the proceedings, naming the contracting parties. Insofar as the defendants request the submission of all other agreements concluded by the plaintiff and to be concluded in the future regarding 3G and/or 4G SEPs that extend to mobile stations, as well as the agreements concluded by third parties in their possession, the request is too vague and too broad as a mere request for investigation.

IPPT20240430, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Plaintiff is upon its own request ordered to submit redacted licence agreements, subject to further to be determined confidentiality regimes under Rule 262 and 262A RoP. Order is based on the extensive case management powers vested in the Court (Article 43 UPCA) and the judge-rapporteur (Rules 101, 111 and 331 et al. RoP), not Rule 172 RoP or Rule 190 RoP.

IPPT20240214, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Submission of SEP Patent Licenses. There is typically a recognisable need for confidentiality of business-related information contained in licence agreements and only permit submission upon a court order, which may require involving the respective license agreement partner in the proceedings. Incremental 13-step procedure enables the parties to obtain comprehensive protection of secrets and allows the parties to submit the documents in the protected proceedings even without a court order to produce them (Rule 262A RoP, Rule 190 RoP). The confidentiality regime (Rule 262 RoP, Rule 262A RoP) is organised in the following 13 steps [....] (see also the order of the Düsseldorf Local Chamber of 14 February 2024 [[in 10x Genomics v Curio Bioscience, IPPT20240214]..Against the background of this regime, a decision on the requests pursuant to Rule 190 of the Rules of Procedure is not intended for the time being.