UPC Develops Principles For The Assessment Of Indirect Infringement By Replacement Parts

The Düsseldorf Local Division has issued a decision Brita SE v Wessper, UPC_CFI_779/2024 finding indirect infringement of Brita’s patent EP 1748830 by Wessper. As part of its decision, the Court discussed the exhaustion doctrine in the context of replacement parts and the distinction between permissible repair and impermissible reconstruction. This decision builds on the principles set out in the earlier Brita v AquaShield (UPC_CFI_248/2024) decision issued by the Munich Local Division.

Indirect Infringement

Article 26 UPCA provides patent proprietors with the right to prevent any unauthorised third party from supplying, or offering to supply, means relating to an essential element of the invention where the third party knows, or ought to know, that those means are suitable and intended for putting the invention into effect. Article 26 contains both objective and subjective requirements:

1. the supplied product (or means) relates to an essential element of the invention and is suitable for putting the invention into effect; and
2. the third party knows, or it is apparent, that the product is intended to be used for putting the invention into effect.

The provision is intended to prevent third parties circumventing patent protection by only offering components of a patented invention.

Brita’s patent claimed an apparatus for filtering liquids comprising a filter cartridge and a receptacle comprising a funnel into which the filter cartridge is inserted. The assembly is such that together the filter cartridge and receptacle, when correctly assembled, form a valve system and control the flow rate of water. Additionally, the filter cartridge is prevented from tilting during insertion into the receptacle.

Wessper produced filter cartridges in Poland that were advertised on Wessper’s website as suitable replacements for Brita’s own Maxtra and Maxtra Plus+ filter cartridges. Wessper’s alternative filter cartridges were offered on its own website and third-party websites such as Amazon (under the brand name Aquamax).

Wessper argued that there was no indirect infringement as the combination of the Wessper Aquamax filter cartridge with water carafes or jugs (such as the claimant’s carafes) did not result in an apparatus for filtering liquids with all the features of claim 1 of EP 1748830. However, the Court observed that the defendant did not substantially dispute that its cartridge had all of the features of the cartridge described in (at least some of) the claims.

The Court conducted a detailed analysis of Wessper’s cartridge compared to the cartridge features described in claims 1, 13, 14 and 15 (see Items 110 to 140 of the decision). The Court found that Wessper’s filter cartridges were specifically designed for use with Brita’s water carafes or jugs. In particular, when placed within Brita’s jugs, Wessper’s cartridge also formed a valve system and exhibited the same technical effect as the claimed apparatus.

Objective criteria

The Court held that where a patented claim protects a product consisting of two interacting components, the objective requirements for indirect infringement can be satisfied if only one component is supplied. The Court further held that it is not even necessary that the second component actually exists at the time of supply; instead, this only becomes relevant for addressing the subjective requirement of “intended use” for the supplied component.

The relevant question is thus whether the supplied component is designed to interact with the second component in the patented manner. Technical arguments about the second component and its availability are irrelevant.

The Court accordingly found that: (1) there was objective suitability of the defendant’s cartridge for use in implementing the invention; and (2) the cartridge was an essential means for putting that invention into effect.

Subjective Criteria

In particular, because the defendant stated on its website that its Aquamax filters could be used to replace the Brita Maxtra (and Brita Maxtra Plus) filters, the Court found that it was indisputable that there was an intention to put the invention into effect.

Exhaustion of Rights

Exhaustion is the legal principle that a patentee’s rights over a particular patented product are no longer enforceable after that specific product is first placed on the market in the relevant area (in this case, the European Economic Area). However, European case law has drawn a clear distinction between permitted downstream actions such as resale, and acts that amount to making a new patented product.

In the present case, the key legal question was not whether Brita products had been re-sold, but instead whether Wessper’s supply led to the carrying out of acts that produced a new patented product by the installation of Aquamax filters in carafes by consumers (including consumers who had purchased Brita carafes with the PerfectFit filter).

The Court accepted that filter cartridges are generally consumable parts that users would expect to replace through normal use. However, the Court found that the cartridge itself contributed to the inventive concept, particularly by guiding the cartridge into the correct position to form the valve system, preventing tilting during insertion and controlling water flow. The features of the replacement cartridge, together with its installation in place of the original cartridge in a jug, effectively recreated the patented combination.

Accordingly, replacement of the cartridge constituted the manufacture of a new patented product rather than a mere repair or maintenance activity. Accordingly, the defendant could not rely on exhaustion as a defence to indirect infringement.

Concluding thoughts

The UPC’s developing case law indicates that patentees can expect robust protection against indirect infringement, including against provision of replacement parts for patented devices.

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