Claiming a direct patent infringement (Sec. 9 Patent Act) is generally easier for the patent proprietor than claiming an indirect patent infringement (Sec. 10 Patent Act), because the latter is subject to additional requirements. Direct infringement is also legally more favorable for the patent proprietor than indirect infringement, because the latter does not neccessarily grant unconditional injunctive relief, particularly in the case of possible non-infringing use of the attacked embodiment, but rather the infringer is not subject to the injunction if certain obligations are complied with.
In case of doubt, a patent owner will therefore want to try to assert a direct infringement instead of an indirect infringement.
Direct infringement of a product claim under Sec. 9 Patent Act, however, generally requires that the attacked embodiment realizes all features of the claim. If this is not the case, indirect infringement can only be considered under the additional conditions of Sec. 10 Patent Act, as stated.
Exceptions in the case law
However, case law has already made exceptions to this in the past and has assumed direct infringement under certain conditions even if not all features of a product claim are realized and the realization of the missing features only occurs on the customer side, for example in case the realization of the missing features only requires the addition of non-essential parts or the mere combination of successively supplied parts (cf. for example Regional Court of Düsseldorf, judgment of 5.2.2004, Ref. 4b O 388/03, BeckRS 2006, 4947; Regional Court of Düsseldorf, judgment of 5.8.2008, Ref. 4a O 220/07, BeckRS 2012, 5045).
In 2011, the Higher Regional Court of Düsseldorf had finally substantiated the legal grounds of this result and referred to the former variant with the now generally known catchword “all-round ingredient”. According to this decision, the decisive factor is whether the supplier of a contested embodiment expects or instructs the addition of this ingredient (see Higher Regional Court of Düsseldorf, judgment of February 24, 2011, Ref. 2 U 122/09, BeckRS 2011, 8375).
This and several other subsequent decisions dealt with the addition of a further subject matter or ingredient on the part of the customer for the complete realization of the patent claim, for example, water to a heatable floor for livestock stables (cf. Higher Regional Court of Düsseldorf, judgment of 19.7.2018, Ref. 15 U 43/15, GRUR-RS 2018, 22632) or the provision of a commercially available PC for installing the software essential to the invention thereon (cf. Higher Regional Court of Düsseldorf, judgment of 2.4.2017, Ref. I-2 U 23/14 GRUR-RS 2017, 109820).
Other decisions transferred this case law to those software-related cases in which the challenged embodiment can be modified on the side of the buyers in such a way that it fulfills the missing features (cf. Higher Regional Court of Düsseldorf, judgement of 19.2.2015, Ref. I-15 U 39/14, GRUR-RR 2016, 97; Higher Regional Court of Munich, decision of 9.4.2019, Ref. 6 U 4653/18, GRUR-RS 2019, 41076; Higher Regional Court of Düsseldorf, judgement of 16.4.2020, Ref. I-2 U 15/19, GRUR-RR 2020, 289).
Decision “Garage Door”
In the decision with the keyword “Garagentor” / “Garage Door” (judgement of 22.7.2021, Ref. 2 U 58/20, GRUR-RR 2021, 429), the Higher Regional Court of Düsseldorf now also transfers these principles to cases in which a direct patent infringement is only constituted when the customer removes a physical component from the attacked embodiment.
The requirements formulated in the above cited case law are adopted. Accordingly, it must first be assumed that the customer carries out a modification that leads to the realization of all features of the asserted patent claim, and that this is attributable to the defendant. Such an attribution is to be considered, for example, if the defendant has – expressly or impliedly – directed this transformation as the last act of manufacture or has at least consciously exploited the fact that customers will proceed with such a transformation for his own benefit (marginal no. 98). This requires precise presentation of according facts (marginal no. 99) and the rules on delay must be observed (marginal no. 100).
To the author’s knowledge, leave for appeals are currently pending against both the “Garage Door” decision and the above cited decision GRUR-RR 2020, 289 (decision keyword “Repeater”) with the Federal Court of Justice (Ref. X ZR 48/20 and X ZR 72/21, respectively). The Federal Court of Justice will therefore have the opportunity to set the course for practice in these and comparable cases.