Brita v Aquashield (UPC_CFI_248/2024)

• Brita brought infringement proceedings in the Munich LD against four Aquashield entities located in Germany, Austria, France and Italy in respect their distribution of Philips‑branded replacement water filter cartridges. Brita alleged direct infringement of its patent (EP 547) (claims 1–2) and indirect infringement (claims 12–13). The defendants counterclaimed for revocation.
• In considering claim construction, the court found that claim 1 protects a valve actuation device. The reference to a “valve” was construed as defining a purpose/fit (a purpose feature), and was considered to be an additional claimed component.
• In respect of validity, the patent was maintained in amended form with a single independent claim covering a liquid treatment device (comprised of a cartridge and a container) in which the valve is opened by applying a horizontal force component in such a way that the shut-off body is tilted to release the valve seat. The claim was found to clearly define the protection sought (meeting Article 84 EPC requirements) and the “tilting” feature did not amount to added matter (meeting the requirements of Article 123(2) EPC). The claim was also not found to be obvious over the cited art.
• As the defendants sold cartridges only, not the full “liquid treatment apparatus” of the maintained claim, the court found that there was no direct infringement. However the cartridges were held to be "a means which relates to an essential element of the protected invention". Such an element can be assumed if the means is "suitable to functionally interact with one or more features of the patent claim in the realisation of the protected inventive concept". As such, the contested embodiments were found to have indirectly infringed the amended patent.
• The defendants exhaustion defence under Article 29 UPCA was rejected by the Munich LD. The exhaustion defence failed because the filter cartridge offered and marketed by Brita does not have the characteristics of the maintained claim and therefore Brita has not exhausted its rights in respect of the patented combination.
• The court provided some clarity on the exhaustion defence more generally. The lawful acquirer of a product placed on the market by the patent proprietor is authorised to, among other things, use the product as intended. In this sense, exhaustion has occurred according to Article 29 UPCA. Intended use also includes customary maintenance and restoration for use if the functionality of the product is wholly or partially impaired due to wear, damage or other reasons.
• However, intended use does not include all measure that result in the re-manufacture of a patented product. If a part of a patented product is replaced, the decisive factor for determining whether it is treated as intended use or a new manufacture is whether the replacement "preserved the identity of the specific patented product placed on the market or whether a new product in accordance with the invention is created as a result". This is assessed by weighing the interests of the patent proprietor worthy of protection in the commercial exploitation of the invention and the interests of the customer in the unhindered use of the product according to the invention placed on the market, taking into account the nature of the patented product.
• If the part in question is normally expected to be replaced during the lifetime of the product and the public or customers legitimately expect to be able to continue to use the product by means of the replacement part, it can normally be assumed that the patented product placed on the market can be used permissibly. However, there are exceptional cases where the technical effects of the invention are reflected in the replaced part.
• This was held to be one of these exceptional cases because the technical and economic advantages of the invention were realised by the replacement of the part. As such, the Munich LD found there was no exhaustion
• A limited injunction was ordered, with the defendants being prohibited from offering, placing on the market etc its product without appropriate warnings. The Munich LD noted that if the attacked embodiment can (as was the case here) also be used without a patent, only limited protection is generally justified. This is to ensure, on the one hand, that economic trade with the attacked embodiment outside of the patent right remains unimpaired and, on the other hand, the patent-infringing use by the customer is excluded with sufficient certainty. The court ordered the defendants to put the following warnings in place: (i) B2B offers must carry a clear warning that use in a patented combination without Brita’s consent is not permitted; and (ii) consumer facing offers must clearly state the cartridges are not suitable for use in Brita “PerfectFit” containers. Brita was also awarded damages.

This analysis is based on a machine translation of a decision not available in English.