Anyone developing or marketing an innovative product will want to ensure that they do not infringe existing intellectual property rights. This includes avoiding indirect patent infringement by providing specific instructions or the technical possibility of using a patented function.
Two recent UPC decisions illustrate the strict standards that apply and the measures that parties can take to promote and market their products safely. In particular, they should avoid providing explicit instructions on how to activate patented functions in their advertising or other customer information. Customer warnings are generally not sufficient, and neither is deactivation of a patent-infringing function if it can be subsequently activated by simple means such as an app. Manufacturers and suppliers should carefully review and secure their software and customer notices accordingly.
Background
The decisions refer to European Patent EP 3 466 498 (EP’498), a “search device for avalanche victims and method for operating a search device for avalanche victims” (avalanche transceiver). The main aspect of the invention is to reduce or suppress audio signals when generating a voice message, making the instructions more understandable. This method must relate to an event that occurs during the search for other avalanche transceivers.
Mammut was selling its “Barryvox S2” avalanche transceiver, which did not come with voice control by default. However, users had the option to manually activate voice control. Although Mammut had stated that this feature was not available in Germany and Austria, customers could use it in those countries if they first activated voice control abroad.
On December 11, 2023 (ORD_592936/2023), the LD Düsseldorf as Court of First Instance granted an ex parte preliminary injunction (PI) against Mammut, which was upheld in an inter partes proceeding on April 9, 2024 (ORD_13918/2024). It was also the first PI in UPC history that was confirmed on appeal (Court of Appeal, order no. ORD_44387/2024 of September 25, 2024).
Judgment
In its decision on the merits of January 14, 2025, the LD Düsseldorf again confirmed that Mammut infringed the patent both directly and indirectly by distributing its "Barryvox S2". Interestingly, the court still found indirect infringement with regard to the voice function, despite the warnings that the defendants had by then published for Germany and Austria. The court stated that, by providing their customers with the option of activating the voice control function via a corresponding app, the defendants were encouraging them to make use of this option. Even a temporary unavailability of the function in certain countries did not preclude a patent infringement since the infringing feature was available if activated abroad.
The court further clarified that negligent ignorance is sufficient for the subjective element of indirect infringement, for example, if the manufacturer should have known that they were enabling or instigating patent-infringing conduct. Because the defendants advertised the patent-infringing feature, the LD held that the defendant had sufficient knowledge of the potential indirect infringement.
Finally, the LD declared that it was only possible to prevent the entry or reentry of the infringing products onto the market by a software-based deactivation of voice control if it was not possible to restore the product to a patent-infringing state.
UPC approach on indirect patent infringement
The LD Munich was the first to elaborate on the issue of indirect patent infringement in its decision of August 27, 2024 in Hand Held Products, Inc. v. Scandit AG, ORD_46277/2024 (UPC_CFI_74/2024). The patent in suit EP 3 866 051 concerned a mobile computer configured for reading decodable characters such as bar codes.
In that case, the defendant knew that the means it provided (a software development kit) were suitable and intended to be used for the use of the invention in dispute (to create a specific software program). The court focused on the distinction between direct and indirect patent infringement. Direct patent infringement may occur, for example, if the supplier or manufacturer deliberately controls the actions of its customers, thereby using them as an "extended workbench". At the same time, advertising certain patent-protected functions may constitute indirect patent infringement. The LD Munich ruled that Scandit had indirectly infringed the patent because it could be assumed that the customer would use the products in the way suggested in the supplier's advertising messages, instructions for use and other documents.
The LD Düsseldorf in Ortovox supports this view by finding that, based on the advertising measures taken, the defendants knew (or at least should have known) that the products could objectively be used in a patent-infringing manner.
The LD Munich considered an “absolute ban” (a complete sales ban) to be appropriate, since a “relative ban” (e.g., warnings for customers) would not be sufficient as there would be no control. The LD Düsseldorf in Ortovox also followed this approach by finding that, if the software is deactivated, it must not be subsequently activatable by simple means such as via an app.
Both decisions are in line with the wording of Art. 26(1) UPCA and show that the UPC takes a consistent and rather strict approach to ensure effective enforcement of patent rights. They clarify that inattentive or overly clever manufacturers can quickly expose themselves to an unexpected liability risk. Accordingly, manufacturers and suppliers need to be particularly careful when designing advertising and product information.
Key takeaways
- Manufacturers and suppliers can be held responsible for the conduct of their customers if they induce them to enable a specific feature that leads to infringement or deliberately exploit such a feature when they know or ought to know that such infringing use is likely to take place.
- Infringers who adopt the actions of their customers as an extended workbench may even run the risk of being held liable for direct patent infringement.
- To prevent infringement, manufacturers and suppliers should not provide explicit instructions on how to activate patented functions in their advertising or other customer information.
- Using appropriate clauses or sending out warnings to (potential) customers is generally not enough to prevent patent-infringing conduct since it is not sufficiently certain that the notice will be recognized and followed by the customer.
- If a patent-infringing function is deactivated via software, it should be ensured that the feature cannot be subsequently activated by simple means such as via an app.
The author thanks Laura Schnackerz and Eva Lühring for their help in drafting this article.
