ACT_9216/2024

Indirect (contributory) infringement of barcode-scanning patent claims 1 and 10 established through SDK software supply

Hinweis: The Munich Local Division found indirect infringement proved to the necessary standard: Hand Held Products' SDK software, together with videos and documentation, enables downstream customers to create a device realising all claim features, satisfying the requirements for indirect infringement (Gefährdungstatbestand).

Relative prohibition (Relativverbot) rather than absolute prohibition appropriate for indirect infringement injunction where legitimate non-infringing uses of the SDK exist

Hinweis: The court considered whether the infringing use could be sufficiently addressed through a relative rather than absolute prohibition, weighing remaining possibilities for non-infringing uses of the SDK.

Direct infringement of device claim established because defendant appropriates downstream customer acts (verlängerte Werkbank / extended workbench theory)

Begründung: The court held that direct infringement requires that completion of the patented device by the customer is certain and specifically defined; given the multiple alternative programming and hardware configuration possibilities with the SDK, this certainty was lacking. Direct infringement was therefore not established.

Patent EP 3 866 051 is invalid (validity challenge in PI proceedings)

Begründung: In PI proceedings a full examination of all invalidity arguments is not possible; the number of arguments is limited to the best three from respondent's perspective. The court found that the validity challenges raised did not overcome the presumption of validity.