Edwards Lifesciences Corporation v. Meril GmbH, Meril Life Sciences Pvt. Ltd., Meril Italy S.r.l., UPC CFI, Munich Local Division, Case no. UPC_CFI_1160/2026
Damages, Order to lay open books, ‘Springboard Effect’ sale non-infringing devices
Previously, Meril was held to have infringed Edward’s patent EP 3 669 828. Subsequentely, Edwards filed an application for the determination of damages, which included a request for an order to lay open books.
Meril has already disclosed the number of infringing products sold by each Meril company, as well as the total revenue obtained with these sales within the relevant territory.
However, Edwards argues that as a result of the infringement of EP 828, Meril has also sold related (non infringing) accessory products. It argues that all the economic consequences associated with the ‘springboard effect’ enjoyed by Meril should be taken into account in the calculation of the damages unlawfully suffered by Edwards.
Accordingly, Edwards argues that in order to assess the total extent of damages it is necessary to consider the supply of infringing products together with their related accessory devices.
Meril argued that Edwards’ request largely amounts a fishing expedition. Also, the request was overly broad and should be limited. Meril also asked for a confidentiality order with respect to the information the Court would order to provide.
After an interim conference, the parties agreed on a confidentiality club, as well as to suspend the request during possible appeal proceedings. Edwards also withdrew and changed parts of its request.
The Court partly grants the request:
“21. Substance-wise, an order to lay open books will only be granted if it falls within the framework of the regulatory mechanism set out in the Rules of Procedure, and if it is proportionate.
22. With regard to the framework within the Rules of Procedure, due account must be taken of Rule 191 RoP, as Rule 141(b) RoP makes it mandatory for the applicant to disclose, in the request, details of any information ordered by the court and provided by the other party pursuant to Rule 191 RoP.
23. Rule 191 RoP permits the court, at the request of one party and upon providing a reason, to order the other party to disclose information in their possession that is necessary for advancing that party’s case. Clearly, this rule is intended to facilitate the disclosure of substantive information, focusing on the question, ‘What happened?’ In contrast, Rule 141 concerns access to accounting information to facilitate the calculation of damages, and is therefore directed at the question, ‘What are the financial details of what happened?’
24. This is underpinned by paragraph c of Rule 141 RoP, which states that information subject to a request to lay open books may include documents relating to the turnover and profits generated by the infringing products; the extent to which the infringing process has been used; and accounts and bank documents. It may also include any related documents concerning the infringement.
25. It must be stressed that, given the wording of this paragraph, information relating to the financial details of non-infringing products and services is not categorically excluded, given that the list is open and introduced with the words ‘in particular’.
26. However, as any order pursuant to Rule 141RoP must be proportionate, the possibility of ordering access to information is limited, particularly with regard to information relating to non-infringing activities.
27. The need to take the principle of proportionality (and fairness/equity) into account follows from Art. 42 UPCA, the Preamble to the RoP (2-6) and Art. 10.3 and Art. 13.1 of the Enforcement Directive. The latter demands that damages awarded to the patent owner are proportionate to the actual prejudice suffered as a result of the infringement. By virtue of Art. 20 UPCA, the Unified Patent Court shall apply Union law in its entirety and respect its primacy.
28. One aspect of proportionality is necessity. Any action ordered must be necessary in order to achieve the intended goal. Therefore, access to information must not be granted if it is not useful for calculating damages, as governed by Art. 68 UPCA or the applicable national law on damages. In other words, if it is clear that financial details relating to specific activities cannot be considered when calculating damages, a request to open books with regard to these activities must be rejected.”
Sales of related accessory devices, the ‘springboard effect’
With respect to the springboard effect, the Court held:
“43. It cannot be ruled out at this point that profits earned with ‘other relevant devices’ and related accessory devices’ along with them are to be taken into account if Meril participated in a tender offering at least one infringing device. This applies, as explained above, even if the tender offer has been amended subsequently and the infringing device was replaced with a non-infringing ‘other relevant device’. This is because the infringing activity is participating in the tender with an infringing device. Participation in a tender constitutes an offer in the sense of Art. 25(a) UPCA and therefore constitutes an infringing activity. Even if the infringing device is replaced with a non- infringing device later on, any profits earned thereafter are causally linked to the infringing offer that secured the tender. Therefore, these profits might be considered as unfair as these profits would not otherwise have been possible. They are also directly linked to the patented invention, since the invention was incorporated into the device used to win the tender. Profits from ‘related accessory devices’ might also be attributed to the participation in this tender, even if the sales were made after the infringing product was replaced by a non-infringing one.
44. Profits made by Meril from sales of ‘other relevant devices’ and ‘related accessory devices’ outside of this scenario and/or without any close connection to infringing activities, are clearly not to be considered.
45. Edwards is arguing that Meril used the infringing devices to enrol patients in the LANDMARK and COMPARE clinic trials, build a distribution network and establish and deepen relationships with interventional cardiologists. Thus, according to Edwards, Meril used the infringing products as a springboard to launch the “other relevant devices” thereby securing an unlawful start in their development, validation, customer adoption and market positioning. Edwards argues e.g. that the CE marks granted in respect of the “other relevant devices” have been granted on the basis that no signification changes to the infringing Myval THV are present.”
In light of an agreement between the parties the Court rules that any appeal will have suspensive effect.
A copy of the Order can be read here
