LD Düsseldorf rejects last-minute pivot from direct to indirect infringement (UPC_CFI_100/2024)
UPC Case Law | 07.04.2026
Court docket: LD Düsseldorf, Decision of 15.01.2026
UPC_CFI_100/2024 [EP 2 263 098 B1]
Parties: Ona Patents v. Google
Contributor: Rifat Camurdan
Headnote
1. The Rules of Procedure show that in constellations where a claimant wants to obtain a decision to remove the effects of a granted patent (be it the validity of the patent or the declaration that a specific act does not constitute an infringement) the law prioritizes the registration over the entitlement. Ratio legis is the legal certainty for the claimant. It does not have the burden to “search” the entitled proprietor.
2. If a product consists of different components, the alleged infringing product must show every claimed component. Cases where only certain features of a product are infringed may be examples for an indirect infringement (Art. 26 UPCA), but not for direct infringement (Art. 25 UPCA).
Relevance of the decision
In this decision UPC CFI 100/2024, the Düsseldorf Local Division rejects the notion that a direct infringement claim can be used to subsequently introduce an indirect infringement claim, pointing out the differences in legal framework between the two, and distinguishes between a device “receiving” certain information and the device “forming” the information.
The invention relates to localising objects such as earphones, a smartwatch or a “Tag”, using a mobile device (a mobile phone or tablet). The location of the mobile device is established relative to base stations and the location of the object relative to the mobile device is derived using observable quantities such as signal strength.
The asserted claim directed to a “positioning engine” requires other signalling devices to exchange signals in order to make a “positioning-assisting observation set” which is then received by the positioning engine. The positioning engine then uses this information to estimate the location of the object. The patent proprietor only contested one type of device (the mobile device) in the Statement of Claim.
The Local Division considered that the contested mobile devices do not directly infringe the claim, as certain claimed features are only present in combination with an accessory such as an earphone, whereas only the mobile devices were the subject of the infringement claim.
The Patent Proprietor subsequently attempted to introduce an indirect infringement claim to the proceedings, which was rejected by the Local Division due to being late and not justified, referring to the “front-loaded system of the UPC”. In particular, the additional requirements for an indirect infringement claim regarding the subjective knowledge of the alleged infringer, were pointed out as a reason why a claim of direct infringement cannot be used to introduce a claim of indirect infringement.
Another point at issue stemmed from the entitlement to the patent. Although the Claimant had acquired the right to the patent, the transfer of the French and German parts had not been registered by the time the Statement of Claim was filed. The Local Decision considered that what is relevant is the registered proprietor, and the validity of a claim is not affected by whether the registered proprietor is entitled to hold the patent.