The Munich I Regional Court issued a judgment dated: 5. December 2019 (7 The 5314/18) decided, that software is also a “means” in the sense of indirect patent infringement according to § 10 PatG can be. The subject was a messaging app, which was offered via an app store in Germany.

Guiding principles

• 1. Means within the meaning of § 10 Abs. 1 PatG can also be non-physical objects, a limitation to physical objects is not justified. (Unlike BGH GRUR 2001, 228, 231 – Air heater)
• 2. In the control and domination of a subsidiary by the parent company, The mother may have contributed to a patent infringement.
• 3. If the patent is only pursued to a limited extent in infringement proceedings, This does not result in an automatic suspension. If only individual features from subclaims are added and the scope of protection of the patent in suit is reduced in this respect, The grant of the patent in suit continues to constitute a presumption of novelty. A suspension is only justified if there is a high probability that the patent in suit will be destroyed.

Facts

The patent in suit protects a user interface for news services: While the user is typing in a conversation, an incoming message from a second conversation is displayed with the sender and message part; by tapping it you switch to this conversation, and without notification the area remains hidden. The plaintiff attacked a messaging app, which was made available for download to iOS devices domestically. The company responsible for the app and its parent company were sued.

The decision

The board interpreted the disputed features broadly: A single-stage switch by tapping is sufficient, one part of the message is sufficient as an “activity part”, and even a notification area that was not displayed in the first place is “hidden”. The app itself does not yet meet the requirements, but enables the user's device, carry out the protected procedure. It relates to an essential element of the invention and is objectively and subjectively intended for immediate use. Due to the lack of sensible patent-free use, the chamber issued a ban.

The parent company is also liable as an accomplice, because she controls and dominates her daughter; She had not adequately substantiated the presentation. The court rejected a stay with regard to the action for annulment, since cancellation of the patent was not overwhelmingly likely.

Importance for practice

The decision expands the scope of proceedings- and device patents in the software sector: You can also use the app provider, once the user uses the patent directly. Corporate parents should take note, that their ability to control can give rise to their own liability. This is a first instance judgment, which expressly deviates from an older BGH statement; it reflects the legal situation at the time of the decision.

Full text: Munich Regional Court I, CERTIFICATE 7 The 5314/18

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Summary of the decision; no legal advice in individual cases.