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ACT 9216/2024

—·EP3866051: MOBILE COMPUTER CONFIGURED TO READ MULTIPLE DECODABLE INDICIA

Case details
Status
—
Action
Provisional measures
Category
Provisional Measures
Parties
Claimants
Division
Munich LD
Judges
Technology
Computing & AI
Language
—
First decided
Aug 27, 2024
Decisions
  • 2024-08-27
    PI grantedPreliminary injunctionApplication for provisional measures

    Munich Local Division granted a preliminary injunction (provisional measures) against Hand Held Products for indirect/contributory infringement of Scandit AG's barcode-scanning patent EP 3 866 051. The court found indirect infringement (mittelbare Patentverletzung) of claims 1 and 10 proved to the necessary standard and ordered Hand Held Products to cease and desist from offering/supplying the infringing SDK software in multiple UPC member states, subject to a periodic penalty of up to EUR 100,000 per day of non-compliance. The application for direct infringement was rejected. The injunction was conditioned on Scandit providing security of EUR 500,000. Cost applications by both parties were dismissed.

    Legal issues:Indirect/contributory patent infringement (mittelbare Patentverletzung)Distinction between direct and indirect infringement of apparatus claimsConditions for preliminary injunction in provisional measures proceedingsRelative vs. absolute injunction for indirect infringementProportionality and standard for validity assessment in PI proceedingsSecurity as condition for enforceability
Documents
  • 81C17323F58CDD78B25B158158ADE234_de.pdf2024-08-27DE
Plain-English summary

Scandit AG applied for provisional measures against Hand Held Products, Inc. concerning EP 3 866 051, a barcode-scanning mobile computer patent, before the Munich Local Division. The court granted a preliminary injunction for indirect infringement of claims 1 and 10 through Hand Held Products' SDK software, but rejected the application for direct infringement because completion of the patented device by customers was not sufficiently certain. The injunction was conditioned on Scandit providing security of EUR 500,000.

Accepted arguments
What the court agreed with — by party.

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

    ClaimantLegal basis: Art. 26 UPCA (indirect infringement / mittelbare Patentverletzung)

    Note: 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

    Respondent

    Note: 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.

Rejected arguments
What the court did not agree with — and why.

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

    ClaimantLegal basis: Art. 25 UPCA

    Reason: 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)

    Respondent

    Reason: 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.

Key legal principles
Doctrines and rules cited in the reasoning.
indirect infringement (mittelbare Patentverletzung) under Art. 26 UPCAextended workbench theory for direct infringement requires certainty of completion of patented devicerelative vs. absolute prohibition for indirect infringement injunctionslimited validity examination in PI proceedings (best three arguments rule)security required as condition of provisional measures enforcement

Browse other cases on this principle.

Claim construction notes

The injunction order reproduces the claim language for claims 1 and 10 of EP 3 866 051 in German, describing a mobile computer/barcode reading device configured to capture, decode, and display images of decodable indicia with product images from a lookup table database. The key construction issue was whether Hand Held Products' SDK, by enabling downstream customers to assemble such a device, constituted indirect infringement — held yes; but whether it constituted direct infringement through the extended workbench theory — held no, due to multiple alternative implementation possibilities.