Milan Local Division

UPC CFI no. 319/2024 Act. no. 35575/2024 and CC no. 62950/2024 App. no. 22313/2025 order issued on 20.6.2025

CLAIMANT

TELEFONAKTIEBOLAGET LM ERICSSON - 21 Torshamnsgatan, Kista, 164 83 Stockholm, Sweden represented by Mr. Wim Maas

DEFENDANTS

ASUSTEK COMPUTER INC - 15, Lide Road, Beitou Dist., Taipei City 112019, Taiwan

PATENT AT ISSUE

EP3076673

PANEL/DECIDING JUDGES

Pierluigi Perrotti

presiding judge and judge rapporteur

Alima Zana

legally qualified judge

Rute Lopes

legally qualified judge

Christoph Norrenbrock

technically qualified judge

LANGUAGE OF THE PROCEEDINGS

English

SUBJECT OF THE PROCEEDINGS

Application for review by the Panel under Rule 333 RoP

SUMMARY OF FACTS AND PROCEEDINGS

On 14.6.2024 Telefonaktiebolaget LM Ericsson filed an action for infringement of patent no. EP3076673 against Asustek Computer Inc., Arvato Netherlands b.v. and Digital River Ireland ltd. (UPC CFI no. 319/2024 - Act. no. 35575/2024).

On 29.11.2024, the Defendants filed a counterclaim for revocation (UPC CFI no. 728/2024 Act. no. 62950/2024) and two identical applications under rule 262A and 262.2 RoP (App no. 67595/2024, related to the main action for infringement UPC CFI no. 319/2024 - Act. no. 35575/2024; App. no. 63684/2024, related to the counterclaim for revocation UPC CFI no. 728/2024 - Act. no. 62950/2024).

On 20.12.2024, Claimant filed a ' response to the application for the protection of confidential information ' (App. no. 67633/2024) clarifying that it may have submitted with the reply to the statement of defence one or more exhibits - for the purpose of the RAND discussions - that contained highly confidential information, such as license agreements between Ericsson and third parties which were likely in direct competition with Asustek.

Ericsson therefore requested to apply an ' external eyes only ' confidentiality regime, granting access to all the confidential documents to (i) UPC representatives and respective legal teams and (ii) one expert on the side of the Claimant and one expert on the side of the Defendants.

By preliminary order no. 9503/2025 of 26.2.2025 the Court:

-invited the Parties to explore the possibility of reaching a procedural agreement on the confidentiality regime to be applied to all confidential documents already submitted or to be submitted in the future by the Parties during the proceedings, expressly identifying the names, personal qualities and roles of the persons included in the confidentiality club, without prejudice to the right to challenge the confidential nature of the same documents; -invited the parties to inform the Court of the outcome of these negotiations by means of pleadings to be submitted no later than 17.4.2025 (as lastly extended by order no. 10654/2025 dated 4.3.2025), setting out all the elements on which an effective agreement, even if only partial, has been reached, so as to make clear the remaining disputed profiles on which a decision will be necessary;

With separate comments lodged, respectively, on 8.4.2025 (Claimant) and 7.4.2025 (Defendants), the Parties informed the Court of the outcome of the negotiations.

The only point of contention was the admissibility of an ' external eyes only ' regime.

Asustek maintained its position that rule 262A.6 RoP requires that at least one natural person from a party should have access to the confidential information where the party so requests. Ericsson held the view that this typology of confidentiality regime was possible and should have been imposed even without the consent of both parties.

The regime for the protection of confidential information was established by the judge rapporteur with Order no. 69254/2024 dated 28.4.2025 in accordance with the agreement reached between the parties on this point. Ericsson's request to order the adoption of an ' external eyes only ' confidentiality regime was rejected.

In order no. 69253/2024 of 28.4.2025, the JR pointed out that a possible deviation from the general provision outlined in Art. 58 UPCA and rule 262A RoP, is permitted and may even be considered necessary in the event of interference of the patent system with the antitrust system, according to:

(i) the soft law instructions given by the European Commission on the protection of confidential information by national courts in proceedings concerning the private enforcement of EU competition law (2020/C 242/01, para. 61 et seq); (ii) the general principles set out in Art. 20 and 42.2 UPCA concerning the supremacy of EU law and the interpretation of all UPC regulatory sources (Agreement, Statute and RoP) so as not to distort competition.

As stated by the JR in said order, it is therefore possible to order the adoption of an ' external eyes only ' regime, at least in cases where there is an actual and proven risk of conflict between the patent system and antitrust law and provided that the further conditions set out in the provisions of the above-mentioned European Commission communication are also met.

The restriction of access to documents is indeed exceptional and subject to a strict burden of proof of the party requesting such a restriction, pursuant to Art. 54 UPCA. The burden of proof is met by a rigorous showing of the risk of disclosure and, in any event, the risk of abuse with anticompetitive effects that the court would otherwise be unable to prevent.

Ericsson appears to have confined itself to a mere statement of principle and, in particular, has not provided any concrete factual elements to support the risk of an effective violation of the antitrust rules. On the other hand, the risks threatened by Ericsson appear to be indeed extremely limited, considering that the Defendants have requested access to the confidential information only to a single natural person, and thus to the minimum extent provided for in rule 262A RoP.

On 12.5.2025 Ericsson filed an application for review by the Panel under rule 333 RoP.

Claimant requested the panel to review the JR's assessment that Ericsson failed to provide concrete factual evidence demonstrating a credible risk of antitrust violations, fully agreeing with the interpretation of law that the ' external eyes only ' regime is permissible where there is an actual and substantiated risk of conflict between the patent system and competition law.

Ericsson underlined that it has explained: (1) the nature of the confidential information at issue, including sensitive licensing data involving Asustek's direct competitors; and (2) the relationship between the parties and, within that context, the parallel litigation in the United

States where an ' external eyes only ' regime is in place. The current regime could also undermine the fairness of future licensing negotiations between Asustek and Ericsson

On 3.6.2025, Asustek and Arvato filed their comments on the application for panel review.

The Defendants disagreed with the Judge Rapporteurs' opinion that it is possible for the Court to order the adoption on an ' external eyes only ' regime against a party's wishes, as such a regime is explicitly prohibited under rule 262A RoP.

Only in the alternative, if an ' external eyes only ' regime can be applied in cases where there is an actual and proven risk of conflict between the patent system and antitrust law and provided that the further conditions set out in the provisions of the Communication are also met, it would be correct that the restriction of access to documents would be ' exceptional ' and subject to a ' strict burden of proof of the party requesting such a restriction ', as already assessed by the Court.

Ericsson has not provided ' any concrete factual elements ' evidencing the risk of an effective violation of the antitrust rules, also considering that:

(i) access is limited to one employee only of Ericsson and Asustek; (ii) these individuals are required to commit to keep the information confidential; (iii) such individuals may only use the information for the purposes of these proceedings.

GROUNDS OF THE DECISION

The application for panel review is admissible. An order under rule 262A RoP influences the conduct of the proceedings and is thus an order directing the proceedings according to rule 333.1 RoP.

The application for panel review is not successful on the merits.

As explained above, the Claimant agrees with the judge-rapporteur's interpretation of the law regarding the conditions for the application - exceptionally and under certain conditions - of a regime for the protection of confidential information for ' external eyes only ' and challenges the specific decision not to grant it in this particular case. The Defendants disagree with the interpretation of the law but has not requested a review.

The Panel's decision is therefore limited to the only profile specifically challenged by Ericsson, to which the following considerations apply.

The Claimant has not alleged:

procedural violations; new evidence or new allegations; lack of reasoning.

Ericsson has merely reiterated in its application for review exactly the same considerations already made in the proceedings concerning the protection of confidential information under rule 262A RoP. The Claimant has failed to provide any evidence to demonstrate the actual risk of distortion of competition resulting from Asustek's access to the confidential information that the Applicant itself intends to submit in the subsequent stages of this proceeding.

All the factual submissions made by Ericsson in relation to the concurrently pending litigation with Asustek in the United States, concerning different but related patents, have no possible impact on competition, since, as the Claimant itself acknowledges, this circumstance is only raised as relevant for the necessary coordination of the two different regimes of protection of confidential information adopted - respectively - before the U.S. Court and the UPC.

Similar considerations apply to the risk that the current regime of protection of confidential information could undermine the fairness of future licensing negotiations between Asustek and Ericsson. Again, the risk of anticompetitive effects is not even present.

On the specific issue of potential antitrust violation, Ericsson limited itself in a general way to arguing that there is a risky situation related to the disclosure of the financial aspects of the information, in particular because Ericsson's licensees may be in direct competition with Asustek.

As already noted by the judge rapporteur in his order of 28.4.2025, this is in fact a mere statement of principle, generally applicable to all cases in which there is a legal dispute concerning a standard essential patent in the course of which a FRAND defense is raised.

Instead, there is an apparent lack of allegation and substantiation as to what would be:

-the precise elements contained in the Ericsson's documents that are actually relevant to the present case, beyond the very general and not better specified reference to ' financial aspects of the information '; -an indication of the specific risks of distortion of competition associated with access to such sensitive information by (only) one employee of Asustek who is bound to specific confidentiality obligations (taking into account the limitation of access to a single natural person within the Asustek corporate organization).

In the absence of these elements, the Panel reiterates that Ericsson's request to establish a confidentiality club composed only of external persons outside the organization of each Party must be dismissed.

There have been no further decisions on this issue to date.

It is therefore appropriate to grant the Claimant leave to appeal in order to give the Court of Appeal the opportunity to set a standard for the UPC.

ORDER

-the application for review is dismissed;

-leave to appeal for the Claimant is granted.

INFORMATION ABOUT APPEAL

As the Panel granted leave to appeal, this order is subject to an appeal within 15 days of service of the Court's decision (Art. 73.2(b)(ii) UPCA, rule 220.2, 224.1(b) RoP).

Milan, 20 June 2025.

Pierluigi Perrotti presiding judge and judge rapporteur

Alima Zana legally qualified judge

Rute Lopes legally qualified judge

Christoph Norrenbrock technically qualified judge

Digital signiert von Christoph

Robert Norrenbrock

Datum: 2025.06.20 09:45:47

+02'00'

Christoph Robert

Norrenbrock