BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Fetter Lane, London, EC4A 1NL
B e f o r e :
(Sitting as a High Court Judge)
| EDWARDS LIFESCIENCES LLC
|- and -
|BOSTON SCIENTIFIC SCIMED, INC
- and -
(1) EDWARDS LIFESCIENCES SA
(2) EDWARDS LIFESCIENCES LIMITED
(3) EDWARDS LIFESCIENCES (SINGAPORE) PTE LIMITED
Hugo Cuddigan QC and Kathryn Pickard (instructed by Simmons & Simmons LLP) for the Defendant
Hearing date: 21 March 2018
Crown Copyright ©
Judge Hacon :
Boston's proposed way forward
"61 (1) Subject to the following provisions of this Part of this Act, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made —
(c) for damages in respect of the infringement;
(d) for an account of the profits derived by him from the infringement;
(2) The court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits."
"As the writ makes plain, they are seeking an account of profits as an alternative remedy to damages, against both defendants. If the action proceeds to trial it would, I think, be open to them to pursue a remedy by way of damages against one [of] the defendants, and a remedy by way of an account of profits against the other. No authority has been cited to us which suggests the contrary."
"A right of election, if it is to be meaningful, and not a mere gamble, must embrace the right to readily available information as to his likely entitlement in case of both the two available remedies. It is quite unreasonable to require the plaintiff to speculate totally in the dark as to whether or not the sum recoverable by way of damages will exceed that recoverable under an account of profits."
"Whether transfer pricing or profit shifting within a group of companies comprises a legitimate deduction for the purpose of an account of profits."