Confidentiality Against Oneself: Waiving the Natural Person Requirement at the UPC
The Düsseldorf Local Division confirms that a party may obtain a confidentiality order against itself to comply with US export controls, effectively waiving the statutory guarantee of Rule 262A.6 RoP.
The Unified Patent Court has confirmed that a party may obtain a confidentiality order against itself to exclude its own natural persons from accessing evidence, effectively waiving the statutory guarantee of Rule 262A.6 RoP.
The export control dilemma
In an infringement action before the Düsseldorf Local Division (UPC_CFI_1035/2025), Yangtze Memory Technologies sought to introduce a semiconductor teardown report into the proceedings against Micron. The claimant asserted that the report, prepared by TechInsights and licensed by the claimant's US counsel for parallel litigation over the US counterpart to EP 3 909 047, contained a technical analysis directly relevant to the challenged embodiment.
However, the licensing agreement acknowledged that the report may contain information subject to US export control restrictions. Consequently, the claimant's external representatives were contractually prohibited from disclosing the report's contents to the claimant itself. To safely introduce the evidence without breaching these restrictions, the claimant requested an order for the protection of confidential information under Article 58 UPCA and Rule 262A RoP, specifically asking the panel to restrict access to its own external legal team while excluding all of its own natural persons.
Confidentiality beyond trade secrets
The defendants opposed the request, arguing that the report had been published on 21 June 2024 and was therefore publicly available. They further contended that the claimant had failed to specify exactly which US export control regulation would be violated.
The panel rejected these arguments, adopting a pragmatic approach to the burden of proof. Presiding Judge Thomas noted that while the report was published, it was not freely available; acquiring its contents required concluding a contractual agreement and paying a licence fee. Crucially, the panel held that confidentiality orders are not limited to the protection of trade secrets. Instead, what is decisive is that the information in question is of a nature that requires it to be kept confidential (reasons 16).
The panel also declined to conduct a time-consuming investigation into the exact mechanics of US export law, finding that the claimant had sufficiently demonstrated the risk of a violation. Because the requested order did not significantly disadvantage the defendants, the panel left open the claimant's alternative argument that the report was protected by litigation privilege under Rule 288 RoP.
Waiving the natural person requirement
The most legally significant aspect of the order concerns the composition of the confidentiality club. Rule 262A.6 RoP explicitly states that the group of authorised persons shall include, at least, one natural person from each party.
While previous case law established that a party cannot generally force the opposing party to exclude all of its natural persons, the panel held that a party may voluntarily relinquish this right for itself. The panel reasoned that the provision is intended to protect the addressee of the confidentiality order. Consequently, there is no indication that R. 262A.6 RoP is a mandatory provision to the extent that the person it is intended to protect cannot waive this protection (reasons 28). The panel therefore granted the order, restricting access on the claimant's side exclusively to external representatives and internal support staff, while allowing the defendants unrestricted access for their natural persons.
Practical implications
This order provides a highly effective procedural mechanism for managing cross-border evidentiary conflicts at the Unified Patent Court. By confirming that a party can seek a confidentiality order against itself, the Düsseldorf Local Division has created a safe harbour for introducing third-party technical analyses that are encumbered by strict licensing terms or foreign export controls.
Practitioners should note the panel's pragmatic evidentiary threshold: when seeking to protect information based on foreign regulatory restrictions, it is not necessary to provide an exhaustive legal analysis of the foreign law. Sufficiently demonstrating the contractual obligation and the associated regulatory risk is enough, provided the opposing party's right to a fair trial is not disproportionately affected. Furthermore, the explicit confirmation that the natural person requirement of Rule 262A.6 RoP can be unilaterally waived by the protected party offers valuable flexibility when ring-fencing sensitive technical intelligence from a client's own commercial decision-makers.
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Further Reading
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