UPC Local Division: Distinction Between Direct and Indirect Patent Infringement

In certain situations, a direct infringement of a device claim may be found if the infringer essentially “adopts” the acts of its customer as an extended workbench, making it inequitable from a policy standpoint to hold the infringer liable solely for indirect infringement. Liability for direct patent infringement in such scenarios can be established only if the completion of the patented device in precise form can be expected with certainty. In the present case, because of the challenged software library in connection with videos and documentation—indicating a risk scenario for indirect infringement—it is possible that the customer might assemble a complete patented device. However, this is not sufficiently certain, given the multitude of different programming and hardware configuration possibilities. When granting an injunction to prevent indirect infringement, it must always be considered whether, in light of the infringer’s remaining opportunities to offer or supply the essential means for other, non-infringing purposes, a relative prohibition or an absolute prohibition should be issued. In particular, one must assess whether the risk of direct infringement by the customer of the indirect infringer can be adequately contained by a relative prohibition, such as warnings, and whether, and with what effort, a modification of the means to remove its suitability for the patented use appears feasible (Local Division Munich, 27 August 2024, Court of First Instance 74/2024).