Tender Offers and Springboard Damages: The Munich Local Division on Rule 141 RoP
The Munich Local Division clarifies the scope of an order to lay open books under Rule 141 RoP. The panel distinguishes between compensable tender substitutions and rejected springboard damages.
An order to lay open books under Rule 141 RoP can extend to profits from non-infringing replacement products if the initial market entry was secured through a tender offer involving an infringing device.
Why did the Munich Local Division include non-infringing replacement devices in the disclosure order?
In UPC_CFI_1160/2026, the Munich Local Division addressed an application for the determination of damages following a final infringement decision regarding EP 3 669 828. The claimant sought financial disclosure covering not only the infringing Myval THV and Myval System, but also non-infringing "other relevant devices" such as the Octacor and Octapro systems.
The panel found that profits from these non-infringing devices must be disclosed in one specific scenario: where the defendant participated in a tender offering at least one infringing device, but subsequently amended the offer to replace the infringing device with a non-infringing one. The Court reasoned that participation in a tender constitutes an offer under Article 25(a) UPCA and is therefore an infringing activity. Consequently, the panel held that profits earned thereafter are causally linked to the infringing offer that secured the tender (reasons 43). Because these profits would not otherwise have been possible, they may be considered unfair and directly linked to the patented invention.
How did the panel assess the broader springboard damages claim?
Beyond the tender substitution scenario, the claimant argued that the defendant used the infringing devices as a springboard to launch the other relevant devices. This allegedly included using the infringing products to enrol patients in the LANDMARK and COMPARE clinical trials and to obtain CE marks based on a lack of significant changes from the legacy device.
The panel firmly rejected this broader springboard theory. The Court found that sales of the non-infringing devices lacked a sufficient causal connection to the infringing acts. Crucially, the panel anchored this finding to the specific technical contribution of the patent. The invention relates to the folding of tabs within a leaflet structure within an implantable prosthetic heart valve. Because the non-infringing devices use a different leaflet structure, the commercial benefits gained by the defendant, such as establishing a distribution network and relationships with cardiologists, were deemed independent of this limited contribution to the state of the art (reasons 46).
What distinguishes Rule 141 RoP from Rule 191 RoP in damages proceedings?
The decision provides a clear procedural boundary between the gathering of substantive evidence and the calculation of damages. The panel noted that Rule 191 RoP is intended to facilitate the disclosure of substantive information, focusing on the question of what happened.
In contrast, Rule 141 RoP concerns access to accounting information to facilitate the calculation of damages, and is therefore directed at the financial details of what happened (reasons 23). While paragraph (c) of the rule does not categorically exclude financial details of non-infringing products, any disclosure order must remain proportionate. If it is clear that financial details relating to specific activities cannot be considered when calculating damages under Article 68 UPCA, a request to open books regarding those activities must be rejected.
What must practitioners adapt when drafting requests to lay open books after UPC_CFI_1160/2026?
When seeking damages for convoyed goods or substituted products, applicants must establish a direct causal link to a specific infringing act. Relying on general commercial advantages gained through regulatory approvals or clinical trials is likely to fail if those benefits are independent of the patent's specific technical contribution. Practitioners should tie the requested financial disclosure directly to the technical features of the claim.
Furthermore, applicants must be precise when formulating their initial disclosure requests. In this case, the claimant attempted to provide clarifications to narrow the scope of their request during the written procedure. The panel classified these clarifications as an unconditional limitation of a claim under Rule 263.3 RoP. To avoid adverse cost consequences associated with such limitations, practitioners should carefully scope their requests under Rule 141 RoP from the outset, ensuring that every category of requested financial data is strictly necessary for calculating damages causally linked to the infringement.
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