Orders to Produce Evidence at the UPC

The UPC Rules of Procedure allow a party to seek an order for the counterparty to produce evidence under its control, under Rule 190 (“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.”). This procedure is distinct from the “saisie” type procedure under Rule 192. While evidence preservation/inspection orders under Rule 192 have been prevalent among UPC cases, Rule 190 orders have not been routine, except in the field of producing comparable licences in cases relating to standard-essential patents. For example, an early decision from LD Mannheim¹ rejected a request for the defendant to produce source code, because it was unclear whether the facts that the source code was needed to elucidate were actually contested by the defendant, and the claimant had not exhausted other avenues to obtain the evidence.

Recently however there has been a flurry of Rule 190 orders, serving to clarify the criteria applicable to such requests.

GC Aesthetics v Establishment Labs

UPC_CFI_1357/2025, LD Brussels, Order of 14 April 2026²

In this case concerning breast implants, it was the defendants (GC Aesthetics group of companies and others) seeking to obtain evidence from the claimant Establishment Labs, in order to challenge the patentability of the asserted patent over prior products sold by the claimant. The LD Brussels laid down conditions derived from the wording of Rule 190 and in line with an earlier Order from LD The Hague³ for examining such applications as follows:

1. The requesting party must have presented evidence “reasonably available” in support of its claims. The assessment of this condition is prima facie and twofold:
   a. Did the requesting party present “reasonable available” evidence to support its underlying assertions?
   b. As an implied condition, could the requested evidence enable the requesting party to conclusively prove its assertions?
2. The evidence to which access is requested must (i) be “specified” and (ii) lie in control of the other party.
3. The other party’s confidential information must be protected.
4. The requirements of proportionality, equity, and fairness must be satisfied. This assessment is twofold:
   a. The “timing” of the application as such taking into consideration the stage of the proceedings.
   b. Each individual request as a final assessment.

The court considered that the request was not premature and that the patentee disputed the validity allegations of the defendants. Reasonable evidence had been submitted on the prior availability of the products alleged to anticipate the claims, and the defendants needed access to the actual products in order to test in relation to the “unusual parameters” specified in the claims. The threshold that the requested evidence enable proof of the assertions was considered to be low, and was considered to be met for nearly all of the materials requested by the defendants. The court accepted that the materials produced would be subject to a confidentiality order.

Considering proportionality, the Court considered that some of the requested materials could be dispensed with if the claimant produced the requested samples of prior sold product AND accept that these samples represented products publicly available without confidentiality restriction before the priority date.

The order that was issued was later amended to align with the disclosure order made in parallel UK proceedings.⁴

Avient Protective Materials B.V. v. Xingi Technology Co., Ltd et al

UPC-CFI-478/2025, LD The Hague, Order of 11 May 2026⁵

This case concerns antiballistic yarns and fabrics. The claimant sought fabric sample in large quantity (30kg) and test reports, as well as a copy of a company video. The court applied the criteria set out in Winnow v Orbisk (referred to above), and accepted that sample was needed for testing, but considered that sample of two products rather than the six sought should suffice. In particular the court accepted that samples could be sourced on the open market, but not in the quantity needed to perform the tests. The court held that if sample was provided for testing, then it was unnecessary to disclose test reports, as this internal testing was not performed according to the specific conditions required by the patent (the situation seems analogous to the “unusual parameters” in GC Aesthetics v Establishment Labs). The video was needed in order to establish acts of infringement in UPCA territory. As confidentiality was asserted only in respect of the documentation that was not ordered to be produced, the court saw no issue of confidentiality, but advised Avient to have the testing by an independent institution.

Xingi appealed this order and sought suspensory effect. The appeal has not yet been decided. Concerning the suspensive effect, the Court of Appeal mostly denied the request but extended the deadline for compliance.⁶ This was due to an issue not apparently raised at first instance, namely that the products are subject to export control, and obtaining the necessary licence would take 1-2 months. In a subsequent decision, the Court of Appeal extended⁷ the suspensive effect further until service of the appeal decision, because the administrative procedure relating to the export authorisation remained pending and the oral hearing for the appeal had been scheduled.

IQIP Holding B.V. v. TMS Technical & Maritime Supplies B.V.

UPC-CFI-721/2025 LD The Hague, Order of 29 April 2026⁸

This was another case where the defendant sought materials concerning an alleged public prior use by the claimant. However, the disclosure ordered was narrowed compared with what was sought – either because the claimant indicated that it had not such documents, or because the claimant admitted the fact that the documents were intended to prove.

Dall Energy ApS v Polytechnik Luft- und Feuerungstechnik GmbH

UPC-COA-57/2026 Court of Appeal Order of 29 June 2026

This was an appeal of an order to produce documents made following the interim conference in the underlying infringement proceedings relating to a method for the production of a clean hot gas based on solid fuel. The patent was alleged to be infringed by the defendant’s “Polyheld” furnace installation. The judge rapporteur had ordered disclosure of:

1. Complete construction drawings of the furnace at the Oberpullendorf site
2. Complete construction drawings of Polyheld furnaces supplied to other sites
3. Operation and Maintenance (O&M) manuals and other materials provided by the Defendant to its customers relating to the Polyheld.

The Court of Appeal upheld the order but narrowed its scope. It considered that disclosure of “Complete construction drawings of the furnace at the Oberpullendorf site” was warranted, but extension of this to any other furnace at any other site was not justified. There was no reason why the infringement could not be assessed on the basis of the Oberpullendorf installation alone. The documents to be disclosed were likewise restricted to operation and maintenance manuals provided to customers in relation to the Oberpullendorf installation alone, and the request for “other materials provided … to customers” was refused.

The Court of Appeal rejected an argument that the right against self incrimination under Article 59(1) UPCA could be used to resist producing the ordered materials.

Conclusion

From these decisions, it is clear that evidence production orders can be obtained from the UPC, but it is necessary to substantiate that the materials requested are necessary to resolve a material dispute of fact. This also means that the timing of the request is critical – too soon and the fact may not yet be in dispute, while too late and it may be difficult to include the evidence in the case.

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