Criteria for obtaining an order to produce evidence under Rule 190

We recently reported¹, a number of first instance UPC judgments relating to orders to produce evidence under Rule 190.  One of those has now been (unsuccessfully) appealed, and the Court of Appeal has commented in detail on the prerequisites for obtaining evidence from the counter-party under this procedure.

Criteria for orders to produce evidence

Noting that Rule 190 “does not permit fishing expeditions” the Court of Appeal emphasised that the three fundamental and cumulative requirements for an order to produce evidence being granted are specificity, necessity and proportionality.

On the first requirement, the Court noted that measures can only be granted on the basis of specific and substantiated allegations and cannot serve exploratory or speculative purposes: the UPC provides only for targeted and justified access to specific evidence.

The necessity requirement refers to the need for the requested evidence to be strictly relevant to the issues in dispute.

The proportionality requirement means that the evidence cannot reasonably be obtained by the requesting party through less burdensome means and that the burden imposed on the responding party be justified in the light of the interests at stake.

Assessment on appeal

The Court noted that the assessment of Rule 190 requests falls within the margin of discretion of the Court of First Instance.  Thus, the Court of Appeal will intervene only where that assessment is affected by an error of law, a manifest error of assessment, or where the limits imposed by the requirements of necessity and proportionality have been exceeded.

On this basis, many arguments raised by the Appellants were rejected as not having been part of the case before the Judge-Rapporteur at first instance.

Application to the case

Avient, the Respondent, had been partially successful before the LD The Hague, which granted its Rule 190 request in part.  In particular, the Respondent had sought samples of six fabrics, but the LD The Hague ordered only two to be produced.  The Appellants argued that the Respondent had access to samples and had tested them, but this did not engage with the Respondent’s position that the fabric was not available in the quantities required for the intended ballistic testing through normal commercial channels.  The Judge-Rapporteur at first instance considered that the Appellants had not challenged that it was not possible to obtain the required quantities commercially, and the Court of Appeal upheld this view, declining to consider further arguments raised for the first time on appeal.

The Appellants also argued that the intended testing was not necessary, because the Respondent had already conducted testing of fabric samples.  However, the need for testing arose because the Appellants had expressly challenged the methodology of the Respondent and maintained that compliance with the requirements of the patent claims could not be established by extrapolations or assumptions but required actual ballistic testing of the relevant products.

In those circumstances, the Court of Appeal found that there was no inconsistency between the Respondent maintaining that the evidence already available supported its infringement allegations and, at the same time, seeking access to material capable of enabling further testing in response to the objections raised by the Appellants.

The Appellants also criticised the timing of the Rule 190 request, arguing that it should have been made at the latest with the Statement of Claim.  There is no specific time limit for making a Rule 190 request and the Court of Appeal emphasised that the necessity and proportionality of the request must be assessed in the light of the issues actually in dispute at the stage of the proceedings at which the request is made.  The Court considered that the request arose out of the assertion of the Appellants in their Statement of Defence that infringement could only be established on the basis of actual ballistic testing of the relevant products.  Since the request was directed precisely at obtaining material to enable such testing, the timing of the request could not be criticised.

Outcome

The Court of Appeal rejected the appeal, and also rejected a cross-appeal from the Respondent seeking to obtain the production of the wider range of samples requested at first instance.

The judgment shows that the fate of a request for evidence production is intimately tied to the arguments presented by the parties.  If a party disputes a fact, or that a fact has been proved by the evidence already presented, it is in a weak position to resist production of evidence to provide further substantiation of the fact.