Central Division
Paris Seat
ORDER
of the Court of First Instance of the Unified Patent Court
Central division (Paris seat)
issued on 26 June 2024
concerning the application RoP262A No. App_19084/2024
lodged in the infringement proceedings UPC_CFI_164/2024

HEADNOTES:

KEYWORDS:

REFERENCE CODE ECLI:

APPLICANT:
Suinno Mobile & AI Technologies Licensing Oy - Fabianinkatu 21, 00130 Helsinki, Finland.
represented by Mikko Kalervo Väänänen

RESPONDENT:
Microsoft Corporation - One Microsoft Way, Redmond Washington 98052-6399, USA
represented by Nadine Westermeyer, Bardehle Pagenberg

PATENT AT ISSUE:
European patent n° EP 2 671 173

PANEL:
Panel 2

DECIDING JUDGE:
This order has been issued by the presiding judge and judge-rapporteur Paolo Catallozzi

SUMMARY OF FACTS AND PARTIES’ REQUESTS:
1. On 9 April the applicant, claimant in the infringement action brought against the defendant
before this Central Division of the Unified Patent Court (registered as No. ACT_18406/2024
UPC_CFI_164/2022), requested that the ‘Agreement A & B’ submitted as evidence in the main
proceedings be kept secret from the defendant and the public, as they comprise business secrets
of licensees
2. On 22 May 2024 the defendant, asked for written comments, requested the application to be
dismissed.

GROUNDS FOR THE ORDER
Admissibility of the application.
3. The defendant's objection of inadmissibility of the application raised on the grounds of a
violation of Rule 290 (2) of the Rules of Procedures (‘RoP’) in relation to the non-compliance
with the code of conduct by the plaintiff's representative should be examined preliminarily.
4. The defendant argues that plaintiff’s representative, is also: the named
inventor of the patent-in-suit; the original applicant of the application underlying the patent-in-
suit; - the Managing Director of the first assignee of the patent-in-suit, Suinno Oy; the managing
Director of the subsequent assignee of the patent-in-suit and Plaintiff in the present
proceedings. It would follow that could not be considered as an independent
counsellor and, as such, would not be complying with Article 2.4.1. of the Code of Conduct for
representatives, adopted by the Administrative Committee of the Unified Patent Court, which
prescribes that quality.
5. The objection is unfounded.
6. The defendant bases its argument on Rule 290 (2) ‘Rop’ according to which ‘Representatives
who appear before the Court shall strictly comply with any code of conduct adopted for such
representatives by the Administrative Committee’ and to Article 2.4.1. of the Code of Conduct
for Representatives, adopted by the Administrative Committee on 8 February 2023, according
to which ‘A representative shall act towards the Court as an independent counsellor by serving
the interests of his or her Clients in an unbiased manner without regard to his or her personal
feelings or interests’.
7. The obligation to act as an independent counsellor is imposed by the aforementioned provision
of the code of conduct in order to protect the effectiveness of the party's right to defence in
court, even in relation to the possibility of situations that may give rise to conflicts of interest
or, in any event, to disloyal representation.
8. The lack of independence must therefore be assessed not in an absolute sense, but with
reference to the possible harm to the interests of the party on whose behalf the professional
acts.
9. It follows that the mere fact that also carries out active administrative tasks
on behalf of the represented party and that he may be directly interested in the outcome of the
case is not decisive in order to consider that the representative is not independent for the
purposes of interest here.
10. In any case, it can be observed that given the instrumental nature of the obligation of
independence to protect the party's right to an effective defence in court, its possible violation
cannot be asserted by the counterparty, which has no interest in such a finding, but only by the
party for whose benefit such an obligation is placed.
11. Finally, while it is true that the Court may exclude a lawyer from the proceedings when he or
she uses his or her rights for purposes other than those for which they were granted, there is
no evidence to support such conduct.
Protection of confidential information.
12. Article 58 of the Unified Patent Agreement and Rule 262A ‘RoP’ allows that, upon a reasoned
request by a party, certain information contained in its pleadings or the collection and use of
evidence in proceedings may be restricted or prohibited or that access to such information or
evidence be restricted to specific persons.
13. Restricting access to specific persons or prohibiting access to such information aims at efficiently
protect the confidential information, even from opposing party. This is also regulated at
European Union level in certain types of court cases [see Directive 2016/943 on the protection
of undisclosed know-how and business information (trade secrets) against their unlawful
acquisition, use and disclosure; Communication from the Commission Communication on the
protection of confidential information by national courts in proceedings for the private
enforcement of EU competition law 2020/C 242/01].
14. When addressing the request for protection of confidential information the Court must balance
the opposing interests. Confidentiality of information is important for businesses, while open
access is crucial for presenting a proper defence. The Court may grant the request if the reasons
provided by the applicant significantly outweigh the opposing party's interest in having full
access to the information [see paragraph (5) of Rule 262A].
15. In the current case, the applicant argues that the two agreements in question contain ‘business
secrets’ related to licenses granted to The respondent does not explicitly
contest this claim and, anyway, there is no evidence suggesting this is incorrect.
16. As a business secrets, the information in question is to be considered as confidential information
for which Article 58 ‘UPCA’ and Rule 262A ‘RoP’ provide that the judge may order prohibit or
restrict of access.
17. The respondent argues that restricting this information to specific persons is unnecessary
because it has been already disclosed by the applicant in Exhibit B (which is not included in the
application) and in past negotiations occurred between the parties in 2021. Additionally, the
defendant points out that in the statement of claim the plaintiff expressed interest in stipulating
a license agreement with the defendant at effective license rates already accepted by
18. The respondent’s claim of disclosure of the relevant information in other documents submitted
by the applicant into proceedings lacks sufficient evidence. Similarly, there is no proof that this
information was shared during past negotiations.
19. Furthermore, the applicant’s desire to offer the respondent a licensee at rates already accepted
by does not imply a willingness to share the relevant information.
20. Therefore, the applicant’s interest in keeping secret, contained in the two agreements, even
from the opposing party, is undeniable.
21. Conversely, the respondent has not demonstrated any specific interest in accessing these
documents or the information they contain.
22. It follows that the application should be granted and access to the agreements in question
should be restricted to Microsoft attorneys and Microsoft directors who have a legitimate need
to access this information.
23. This measure appears to be proportionate and suitable to guarantee the protection of
confidential information and the right to a fair trial and a proper defence.

ORDER
The judge-rapporteur,
pursuant to Article 58 ‘UPCA’ and Rule 262A ‘RoP’,
orders that the access to Agreements A & B is restricted to Microsoft attorneys and Microsoft
directors who have a legitimate need to access these Agreements for the purposes of the current
proceedings.

Issued on 26 June 2024.

The Presiding judge and judge-rapporteur
Paolo Catallozzi

ORDER DETAILS
Order no. ORD_27206/2024 in ACTION NUMBER: ACT_18406/2024
UPC number: UPC_CFI_164/2024
Action type: Infringement Action
Related proceeding no. Application No.: 19084/2024
Application Type: APPLICATION_ROP262A