Key Takeaways
Two alternatives for requests for information
The Court may order that information which is in the possession of the other or a third party is communicated. Rule 191 of the Rules of Procedure provides for two alternatives for respective requests for information. The purpose of the first alternative of Rule 191 RoP is to obtain information to identify other infringers in the distribution and supply chain or to determine and calculate the damages caused by the infringement. The purpose of the second alternative of Rule 191 RoP is to obtain information which is reasonably necessary for the purpose of advancing the applicant's case.
R. 191 first alternative RoP not directed to information to establish patent infringement
The purpose of the first alternative of Rule 191 RoP is to obtain information to identify other infringers in the distribution and supply chain or to determine and calculate the damages caused by the infringement. The first alternative is not aimed at obtaining information to establish infringement by the defendant in the first place.
It is an open question whether it is possible to order the defendant to identify further infringers in the distribution and supply chain in the ongoing proceedings before the final decision on the patent infringement has been made. In any event, such an order would require special circumstances that would necessitate the early provision of information.
No UPC discovery: R. 191 second alternative RoP directed to specific information
The purpose of the second alternative of Rule 191 RoP is to obtain information which is reasonably necessary for the purpose of advancing the applicant's case. Whether the applicant reasonably requires information for such purpose is assessed according to the circumstances of the individual case from the perspective of a reasonable party. As a rule, only specifically named information can be subject of the application. Requests for comprehensive information not limited to specific facts which are needed for the pursuit of rights constitute an inadmissible investigation (e.g. request for locations of all servers versus specific server locations needed to show domestic nexus). This is in contrast with U.S. discoveries. The reasons for this interpretation is the principle of proportionality and to avoid undermining the principles of burden of proof.
No order to verify the truth of the other party's factual allegations
The second alternative of Rule 191 RoP generally cannot be used to require the other party to make correct submissions if the applicant is of the opinion that the other party's statement is incorrect. Rather, it is the task of the Court to assess whether a disputed fact is true by evaluating the facts presented by both parties and the evidence offered.
No order on premature provision of information
An order for the production of information is generally not possible as long as the other party has the opportunity to submit a written statement on the merits in which it can provide further arguments and facts and comment on the applicant's allegations. The Rules of Procedure provide for specific time limits for the preparation of written submissions on the merits, which would be undermined if the party had to provide information in advance.
Order for the provision of information possible at oral hearing
In exceptional cases, a previously requested and sufficiently substantiated request for provision of information, can lead to an order to provide information and adjournment of the hearing. This requires that the relevance of the information for the case only becomes apparent to the Court during the oral hearing.
Division
LD Mannheim
UPC Number
UPC_CFI_471/2023, ORD_47055/2024 and ORD_47058/2024
Type of proceedings
Infringement proceedings (proceedings on the merits)
Parties
Claimants: DISH Technologies L.L.C. and Sling TV L.L.C.
Defendants: AYLO PREMIUM LTD, AYLO FREESITES LTD, BROCKWELL GROUP
LLC, BRIDGEMAZE GROUP LLC, AYLO Billing Limited, and AYLO BILLING
US CORP
Patent(s)
EP 2 479 680 B1
Body of Legislation / Rules
Art. 59, 67 UPCA, R. 191 RoP
LD_Man_CFI_471_2024_ORD_47055_2024_de Download
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