UPC Weekly - Coming around again - UPC revisits confidentiality clubs and long arm jurisdiction

2026 Week 6

We’re catching up some recent strands at the UPC this week. We have the Court of Appeal giving its view on confidentiality clubs and the Mannheim Local Division proffering an apparent olive branch in the exercise of the UPC’s wider jurisdiction.

External eyes only confidentiality clubs and licensing bars

UPC Weekly 2025 w39 was our take on a series of FRAND cases at the UPC where Apple had applied to intervene in the proceedings in order to protect its commercially sensitive licence agreements.

June 2024 saw the start of UPC patent infringement proceedings between Ericsson and Asustek and then in April 2025 litigation started between Sun Patent Trust and Vivo based on different patents. Relevant to the FRAND terms for licensing in the cases were pre-existing licence agreements involving Apple. It was clear and agreed that confidentiality clubs were needed, but the parties could not agree whether this should be limited to external attorney eyes only. The first instance division in each case ordered that natural persons from the defendants should have access, and it was these orders that were appealed to the CoA by the patentees in each case.

The interventions filed by Apple were deemed admissible in the CoA orders in Ericsson v Asustek (1) and Sun Patent Trust v. Vivo (1). Apple therefore filed statements in intervention and to support the patentee side in the appeal oral hearings on the format of the confidentiality clubs and the subsequent use of the information.

We promised that we would come back with a report when there was an update, so here we are. The Paris Local Division had said that the UPC Rules of Procedure (Rule 262A.6 RoP) are clear that a normal confidentiality club must include a natural person from the relevant party, and so not be restricted to external attorney eyes only (unless overridden by agreement between the parties).

On 26 January 2026, the CoA issued its orders in Ericsson v Asustek (2) and Sun Patent Trust v. Vivo (2). The CoA’s simple answer to the basic question is that where information is to be subject to a confidentiality club, at least one natural person from the receiving party must have access to the information in addition to external attorneys. Unless the parties agree otherwise.

But the court recognised that this can cause problems in practice, especially in FRAND cases. Therefore, the CoA decided to impose licensing bars on the relevant individuals, i.e. that they should not be allowed to take part in licensing negotiations for a specified time period. Although the individuals would remain bound by confidentiality, the court considered that this would not be sufficient to prevent their knowledge of the licence agreements affecting their conduct in subsequent licensing negotiations. In the Sun Patent Trust v. Vivo case the licensing bar was for 2 years, whereas 5 years was ordered in Ericsson v. Asustek.

This is quite a nice example of the CoA being able to flex to fit the circumstances. It would be difficult to say that the UPC Rules of Procedure should routinely allow an external eyes only regime for a confidentiality club, in view of the clear wording of Rule 262A.6 RoP. The imposition of the licensing bar helps to soften the practical effects of the rules for particularly sensitive information and presumably corresponding restrictions could be placed on individuals for confidential information of a different nature.

When the rubber hits the road – enforcement of long-arm jurisdiction remedies

There have now been plenty of cases started at the UPC with assertions of long arm jurisdiction. These have included all sorts of permutations in terms of the number and domicile of defendants and the non-UPC countries of interest (although Spain, UK and Ireland have featured more than most). Our last take on this topic was in UPC Weekly 2026 w4. A nice recent example is Establishment Labs v. GC Aesthetics, with the Brussels LD dismissing a preliminary objection and holding that the UPC must have jurisdiction over at least some of the defendants in the case, and that the actual territorial scope of remedies over some defendants can be worked out in the main decision on the merits.

So it’s now clear that the UPC is happy to assert long arm jurisdiction when deciding a case on the merits. But what happens when it comes to enforcement of the UPC decision?

The earliest set of decisions at the UPC using long arm jurisdiction were two cases involving Fujifilm and Kodak, but only in one set of these (at the Mannheim Local Division) were the patents deemed both valid and infringed. The initial decision of 2 April 2025 on infringement and validity of EP3511174 B1 looked at only Germany, and then the 18 July 2025 decision was issued in respect of the UK and included a permanent in junction covering the UK, a penalty payment order in respect of breaches of that injunction, back damages in respect of infringement in the UK, an order for the provision of information, recall and destruction.

On 30 January 2026, the Mannheim LD issued its order in Fujifilm v. Kodak to deal with various points of contention between the parties in the implementation of the ordered remedies in respect of Germany. Fujifilm were asking the court to order Kodak to pay penalties to the court for non-compliance.

The decision deals with these points, by imposing hefty penalty payments on Kodak for past non-compliance and setting even larger penalty payment amounts for future non-compliance. But what is particularly interesting is a section of the decision (see paragraphs 39-55) that addresses what may happen if Fujifilm seek enforcement of the remedies ordered in respect of the UK. The decision sets out a series of general statements and comments that seem aimed at de-escalating jurisdictional disputes between the UPC on one hand and national courts of other members of the European Patent Convention such as the UK. The court explicitly accepts that, in the absence of treaty arrangements, a decision of the UPC can only be enforced outside the EU when recognised by the competent national court. Specifically with respect to the UK, there are at present no such treaty arrangements.

The upshot of the court’s high level legal explanation is that the enforcement of its injunction covering the UK, whether directly or by the imposition of penalty payments for non-compliance, requires a competent UK court to recognise the UPC decision. Whether this will be likely or even possible as a routine matter, we will have to see. But the Mannheim LD here seems to be laying down a marker in respect of the practical limits of the UPC’s jurisdiction, presumably also with an eye to symmetrical acceptance of the practical limits of jurisdiction of other courts such as the UK’s. To make this totally clear, the UPC decision even refers to SEP cases, even though the Fujifilm patent is clearly not a SEP. This is all with the backdrop of parallel actions in FRAND determination cases in the UK and at the UPC, with the UK courts developing a practice of global interim licence declarations and the UPC being prepared to issue anti-anti-suit injunctions in reply.

As it happened, because the sole defendant was domiciled in Germany and manufacture of the products took place in Germany, the Mannheim LD was still happy to impose penalties for the lack of provision of information covering products that would subsequently be exported to the UK for sale. But the explicit acknowledgement of the current jurisdictional tension between different courts in Europe is interesting to see, as are references to comity between courts and the desire to find workable solutions.