The guiding principle of this decision states that an infringement exists in any case if the features of the patent claim are realised and the contested embodiment is objectively suited to achieve the patented properties and effects. According to the court, the fact that a device is normally operated differently and that customers normally do not make use of the patent-infringing teaching does not preclude a patent infringement.
In infringement suits, it is often inferred from the above formulation that the device does not have to satisfy all features of the claim, but that it suffices that those features could be achieved in the contested device even if only via slight modifications. In particular with respect to computers, communication devices and similar items, this is often the case.
The Regional Court of Mannheim has now put a stop to this interpretation in a series of similar judgments (file no. 2 O 200/15, judgment of 21 February 2017). According to the Regional Court’s ruling, the central precondition of a patent infringement formulated by the Federal Court of Justice, namely, the possibility of the contested embodiment using the teaching of the patent, is not met if the product in question would have to be altered. In contradistinction to the BGH’s Rangierkatze decision, for the Regional Court does not find infringement has occurred if the contested product first has to be modified or if its functionality settings have to be changed. If the features of a patent would be realised only after a redesign of a product, then there would be no infringement up to that point, but instead just a risk of infringement of the patent. However, the patent holder could contest such a risk only if the risk of infringement being committed is imminent and if there are serious and tangible indications that in the near future the user will behave illegally, that is, will carry out the modifications.
According to the court, if such a threat of imminent infringement is not present, however, there is no justification for preliminary injunctive relief. According to the court, the second option of a possible defence against the risk of infringement is inherent in the definition of contributory or indirect patent infringement. However, if the preconditions for this are not met either and the modification or redesign is not realised via a self-evident and so-called everyday ingredient, then the non-infringing product—which could only become an infringing product by a modification—cannot be contested.
Therefore, the BGH’s Rangierkatze decision cannot serve to extend the definition of indirect patent infringement and the right to preventive injunctive relief to such products that require a redesign or a reprogramming and, therefore, are not infringing as delivered.
The Higher Regional Court of Dusseldorf dealt with a similar issue along the same lines. There, the Higher Regional Court of Dusseldorf, in the judgment of 19 February 2015 – I-15 U 39/14 regarding a TV satellite box, dismissed the action, in which software was included that could have resulted in the realisation of a claim. However, the software was not activated, and in order to activate it a modification of the device would have been required.
