The UPC’s first “lay open books” order: how far can damages disclosure reach?

The Munich Local Division has now given the UPC’s first ruling applying the “lay open books” procedure under Rule 141 of the UPC Rules of Procedure (r. 141). For parties litigating in the UPC, this decision provides an indication of how far the Court may be willing to go when ordering disclosure for the purposes of calculating damages, particularly where a patentee argues that the economic effects of infringement extend beyond sales of the infringing product itself.

An earlier, unappealed Court of First Instance decision had found that Meril’s Myval transcatheter heart valve (THV) and supporting products infringed Edwards’ patent EP 3 669 828 (the Patent), entitling Edwards to damages. Edwards therefore applied on 2 April 2026 for the determination of damages and an order under r. 141 requiring Meril to lay open its books.

Edwards’ case was that Meril had used the infringing products as a “springboard” to launch what it called “Other Relevant Devices”. In Edwards’ view, the advantage gained from infringement went considerably further than the profits made from sales of the infringing Myval products themselves. It argued that Meril had obtained advantages in areas including product development, regulatory approval, customer adoption and market positioning, and that those wider economic consequences should therefore feed into the damages calculation. On that basis, Edwards sought information extending into the CE-marking and approval processes for Meril’s other devices, relying on the fact that approvals had allegedly been obtained on the basis that there had been no “significant changes” to the design and intended purpose of the new devices compared with the “legacy device”, namely the infringing Myval System. Edwards also sought details of cases where an infringing Myval product had initially been included in an approval or tender but was later substituted with a non-infringing device.

Meril resisted this, arguing that r. 141 is intended to provide a relatively narrow mechanism for obtaining the financial information necessary to calculate damages, rather than a route to a much broader fishing expedition into non-infringing products, regulatory approvals, tenders or reimbursement arrangements.

The Court held that r. 141 does not categorically exclude financial information concerning non-infringing products or services. The critical issue is that of proportionality and, closely related to that, the causal connection between the infringement and the profits in question. The Court considered that profits from accessory products sold alongside infringing devices could potentially form part of the damages assessment. By contrast, profits from non-infringing “Other Relevant Devices” and their accessories would not ordinarily be included because the necessary causal connection with the infringement was missing. However, one particularly interesting exception concerned tenders. Where Meril participated in a tender by offering at least one infringing device, the Court considered that the original offer was itself an infringing activity. That meant that, even if the infringing device was subsequently replaced with a non-infringing product, profits ultimately earned from the tender could potentially remain causally linked to the original infringement. In practical terms, simply replacing an infringing product later may not necessarily break the chain for damages purposes, where the infringing product helped secure the commercial opportunity in the first place.

The Court was much less receptive, however, to Edwards’ broader “springboard” theory. It found that the alleged advantages associated with Meril’s non-infringing products did not have a sufficiently close causal connection with the acts of infringement. Edwards had not established that activities such as the use of infringing devices in clinical trials, or the process of obtaining CE marks, amounted to relevant direct or indirect use. Even if that hurdle had been overcome, the Court considered that subsequent sales of non-infringing products remained insufficiently connected with the patented invention. The Court also considered that the advantages Edwards claimed Meril had obtained, such as its  distribution network and its relationships with cardiologists, to be independent of the comparatively limited contribution to the state of the art made by the invention protected by the Patent.

Against that background, the Court limited Meril’s disclosure principally to actual sales, rebates and costs relating to infringing products and their accessories. It also permitted disclosure concerning “Other Relevant Devices” and their accessories where those products were connected with a tender in which an infringing device had originally been offered. Meril was therefore ordered to provide detailed information concerning sales and revenue, costs, accounting, intercompany arrangements and licensing, together with relevant information about tender substitutions.

Perhaps unsurprisingly for the UPC’s first “lay open books” order, the Court granted leave to appeal and confirmed that any appeal will have suspensive effect. The decision may therefore not be the last word on the scope of r. 141.

This decision provides a useful indicator of what “laying open the books” will actually involve. The Court appears willing to look beyond a simple account of sales of the infringing product where there is a sufficiently close causal connection between the infringement and later profits, as the tender example demonstrates. At the same time, the Court has resisted turning r. 141 into a wide-ranging disclosure exercise. It appears that patentees seeking broader disclosure beyond infringing product sales will need to explain precisely how the infringement generated the later economic benefit, while defendants should not assume that the subsequent sale of a non-infringing product is, by itself, enough to put the resulting profits beyond the reach of a damages inquiry.