Recently, two interesting judgments were published in separate SEP/FRAND proceedings. The first decision pertains to a confidentiality regime and the second to an ex parte AASI.
Confidentiality regime
In the SEP/FRAND proceedings between Philips et al. vs. Xiaomi et al the District Court of The Hague (“DC”) decided on 14 July 2021 (decision published in January 2022), to make use of its discretionary power (pursuant to article 22 of the Dutch Code of Civil Procedure) to order each of the parties to submit all their license and settlements agreements with third parties regarding certain patents. This will allow the DC to determine whether the offer of Philips and the counter-offer of Xiaomi respectively can be considered FRAND. All documents need to be submitted in full, including all side-letters and annexes. There is no need for anonymization, as all the information will be regarded as trade secrets and be subject to a detailed confidentiality regime. This regime will entail, unless the parties agree on a different confidentiality regime themselves prior to submitting the documents, that:
(1) access to the information will be allowed to only a limited number of individuals, namely the lawyers representing the parties in these proceedings, possible experts and at most two, non-commercial, employees of Philips and Xiaomi respectively,
(2) Philips and Xiaomi respectively and the individuals mentioned under (1) are not allowed to share the documents so obtained with third parties,
(3) the information contained in the documents may only be used by Philips and Xiaomi for the purpose of the present proceedings in the Netherlands and not for other purposes, and
(4) Philips or Xiaomi or any of the individuals listed under (1) will forfeit a penalty of € 1.000.000 for each act in violation of (1) – (3) with the exception of the lawyers who are not a party in the proceeding and who are covered as agents by the order against Philips and Xiaomi respectively.
AASI granted ex parte in Ericsson v Apple case
In February 2022, a decision dated 4 October 2021 was published in which the PI Judge of the DC provisionally imposed an AASI on Apple et al. in ex parte proceedings (therefore without hearing Apple et al.). The ex parte AASI was valid until the oral hearing in the inter partes proceedings on the provisional AASI, which hearing was set 4 days later. The AASI was granted on the condition that Ericsson would serve a writ of summons in inter partes PI proceedings on Apple et al before or together with serving the ex parte decision on AASI. The AASI prohibited Apple et al. from requesting ASI(s) (inter alia) valid for the Netherlands before foreign court(s) insofar the ASI(s) pertained to (inter alia) Ericsson’s 4G and/or 5G standard essential patents valid in the Netherlands. During the subsequent provisional inter partes oral hearing on 8 October 2021, the AASI was extended until 13 October and later until 19 October 2021. By interim judgment of 18 October in the PI proceeding, the AASI was lifted because Ericsson had not established a clear threat that, according to the PI Judge, justifies a ‘freezing’ order until the final hearing in the inter partes PI proceedings takes place. As we reported before, the AASI was not upheld in the subsequent stages of the inter partes proceedings.
The present judgment demonstrates that leading up to inter partes proceedings, it is possible to obtain an ex parte AASI from the Provisions Judge of the DC (albeit for a short duration, until an inter partes hearing) in order to ‘freeze’ the status quo.
