Aesculap AG v. Shanghai International Holding Corporation GmbH (Europe)

This order concerns European Patent No. EP 2 892 442 B1 and was issued by the Local Chamber Düsseldorf on July 30, 2025, by Presiding Judge Ronny Thomas as the reporting judge.

Background: On July 10, 2025, the Local Chamber Düsseldorf had ordered the respondent, Shanghai International Holding Corporation GmbH (Europe), upon the applicant's request, to (A.I.) cease and desist from offering, distributing, using, importing, or possessing certain cutting tools of surgical torque-transmitting instruments in Germany and/or France, and (A.III.) provide the applicant with structured written and electronic information regarding the origin and distribution channels of the infringing products, including names and addresses of manufacturers, suppliers, commercial buyers, and details of individual offers and deliveries. The respondent was informed of this order on the same day.

On July 21, 2025, the applicant (Aesculap AG) filed a written notice of its intention to enforce the July 10, 2025 order in full, requesting the respondent to provide the required information within one month of service of the notice. The applicant also requested the threat of a coercive fine for any delay or non-compliance. The respondent was notified of this filing on the same day. The respondent did not make use of the opportunity to submit a statement despite being granted this possibility by a procedural order of July 22, 2025.

The applicant's request: The applicant requested that the respondent be ordered, under threat of repeated coercive fines of up to EUR 30,000 per day of delay and/or non-compliance payable to the court, to provide the information under A.III. of the July 10, 2025 order within one month of service of the notice of enforcement intention.

Court's reasoning: Under R. 354(3) RoP, the court may provide for repeated penalty payments payable to the court in case a party does not comply with an order. Under R. 118(8) sentence 1 RoP, orders are only enforceable after the claimant notifies the court which parts they intend to enforce. The applicant properly submitted such a notice on July 21, 2025. Since the main order did not set a deadline, it was the applicant's responsibility to set a deadline with the notice of enforcement intention, which the applicant did (one month). The court found this deadline proportionate given that the respondent was at the very beginning of its activities with the disputed milling cutters in Germany and Europe.

The court held that the applicant's request for an order to provide information with a deadline was unnecessary, as the obligation already existed in the July 10, 2025 order and the deadline had already been set by the applicant. However, the request for the threat of coercive fines was successful. While the Local Chamber Mannheim had held that such a threat is not strictly necessary before imposing coercive measures, some academic literature requires it. Since the Court of Appeal had not yet clarified this question, the applicant had a legitimate interest in obtaining such a threat to effectively enforce the information disclosure. Setting a daily maximum gives the Local Chamber the necessary flexibility to impose an appropriate coercive fine under R. 354(4) RoP.

Final order: The respondent was threatened, for the case of improper fulfillment of the information disclosure obligation under A.III. of the July 10, 2025 order, with a coercive fine payable to the court, potentially repeated, of up to EUR 30,000 per day of delay and/or non-compliance, beginning one month after service of the applicant's notice of enforcement intention. The further request was rejected.