2025-08-22 - LD Munich - Brita Se v. AQUASHIELD EUROPE s.r.o. et al.

1. Purpose-related features in an apparatus claim regularly define the apparatus to the effect that it must be suitable for being used for the function and purpose stated in the patent claim. 2. If an apparatus claim contains a purpose-related feature, then for the assessment of novelty under Art. 54 EPC it is generally only relevant whether the prior art already discloses an apparatus that comprises all the structural features required by the patent. This is different only if the apparatus disclosed in the prior art is unsuitable for the intended use of the patent, or if it would first need to be modified in order to be used for that purpose. 3. If the patent proprietor defends the patent (on an auxiliary basis) for the event that the granted version of the patent does not stand even in part, and only in the version according to the auxiliary requests, there is, in accordance with Article 76(1) UPCA, no need to examine whether the claims of the patent in the granted version are to be declared invalid only in part pursuant to Article 65(3) UPCA. 4. If the patent contains several independent claims, an auxiliary request for defence of the patent by means of a closed set of claims means that the patent can only be maintained based on an auxiliary request in which each of the independent claims of the patent is contained in a valid version. 5. An amendment to the patent must meet the requirements of Art. 84 EPC. It must therefore be reviewed whether the amendment introduces a lack of clarity. 6. The lawful purchaser of a product placed on the market by the patent proprietor is, inter alia, entitled to use that product for its intended purpose. To that extent, exhaustion has occurred pursuant to Article 29 UPCA. The intended use also includes the customary maintenance and restoration of usability where the functionality or performance of the specific product has been impaired or lost, in whole or in part, due to wear, damage or other reasons. However, the intended use does not include any measures that result in the reproduction of a product covered by the patent. The proprietor’s exclusive right to manufacture is not exhausted by the first placing on the market of an individual embodiment of the patented product. 7. If part of a patented product is replaced, the decisive factor in determining whether this constitutes use in accordance with the intended purpose or a new product is whether the replacement preserves the identity of the specific patented product placed on the market or whether it creates a new product that is in accordance with the invention. This is assessed on the basis of a balancing of the interests worthy of protection of the patent proprietor in the economic exploitation of the invention on the one hand and of the purchaser in the unimpeded use of the specific product according to the invention placed on the market on the other, taking into account the unique character of the product protected by the patent. 8. If the replacement of the part in question is normally to be expected during the lifetime of the product, and if the purchasers therefore may legitimately expect to be able to continue to use or make repeated use of the acquired product by means of the replacement part, this will as a rule be regarded as a permissible use of the patented product placed on the market. The situation is, however, exceptionally different where the technical effects of the invention are reflected precisely in the part that is replaced. 9. If a contested embodiment that indirectly infringes the patent pursuant to Art. 26 UPCA can also be used without patent protection, only a limited prohibition is justified, which ensures that, on the one hand, commercial transactions involving the contested object outside the scope of the property right remain unaffected and, on the other hand, the direct infringement of the patent by the purchaser is excluded with sufficient certainty. Warning notices and/or contractual cease-and-desist agreements are generally considered suitable measures for this purpose. 10. Art. 64 UPCA does not apply to indirect patent infringement pursuant to Art. 26 UPCA. Consequently, in particular, no finding of patent infringement can be made.

The Munich Local Division (Panel 2) decided an infringement action and the revocation counterclaim together and produced ten headnotes on claim construction, exhaustion and the remedies available for indirect infringement. On construction it held that a purpose statement in an apparatus claim defines only the suitability of the claimed device, so novelty under Art. 54 EPC turns on whether the prior art discloses all spatial-physical features of that device, irrespective of the disclosed purpose; on that reading granted claims 1 and 4 were anticipated and the patent survives only in the form of auxiliary request 16. The Court developed an autonomous UPC standard for exhaustion under Art. 29 UPCA, distinguishing permissible repair from impermissible re-making by whether the replacement preserves the identity of the product put on the market, and rejected the defence because the proprietor's own cartridge does not practise the amended claim. For indirect infringement under Art. 26 UPCA it held that a means capable of non-infringing use justifies only a limited injunction secured by warning notices, refused a contractual-penalty undertaking as economically equivalent to an unqualified ban, and held that Art. 64 UPCA does not apply to indirect infringement at all, so no positive declaration of infringement and no recall or destruction may be ordered. Information and accounting under Art. 67 and Art. 68(3)(a),(b) UPCA with R. 191 RoP were granted with an auditor reservation and document production, together with a declaration of liability in damages.