UPC: Software Development Kit and Indirect Infringement

Background

Hand Held Products, Inc. (part of the Honeywell group) filed an application for a preliminary injunction against Scandit AG, alleging that Scandit’s "Data Capture Software Development Kit (SDK)" infringed Hand Held Products’ European Patent EP3866051B1, which covers barcode scanning technology at the Munich Local Division of the UPC. The SDK, distributed across various European countries, allegedly allows users to develop software that performs patented functions, such as displaying product images linked to scanned barcodes.

Factual and Legal Points of Contention

Hand Held Products claimed that Scandit’s SDK enabled users to create software that replicates the patented method of decoding barcodes and displaying related product images, thus infringing claims 1 and 10 of the patent. Hand Held Products presented SDK documentation and promotional materials to argue that Scandit indirectly facilitated the infringement.

Scandit responded by asserting that the SDK itself did not implement the patented features directly, but was a toolkit that required further customization by users. They argued that the SDK did not inherently include the necessary components, such as product images or a compliant database, and could be used in non-infringing ways. Scandit argued that any potential infringement would result from the actions of its customers, not the SDK itself, and that accepting Hand Held Product’s position on direct infringement would blur the line between direct and indirect infringement.

Reasons for the Order

The court concluded that while there was no direct infringement, indirect infringement was likely. Scandit’s SDK provided essential tools that allowed customers to develop software capable of infringing the patent. The court emphasized that, although the SDK itself did not perform all the patented functions, it enabled users to create software that could.

In assessing the request for an injunction, the court considered whether a relative prohibition—such as providing warnings to customers—would suffice to prevent further infringement. However, given the difficulty of controlling how customers might use the SDK, the court determined that a full prohibition on the infringing functionality was warranted. The court also addressed the urgency of the matter, noting that Hand Held Products had acted promptly by filing for provisional measures on the same day the patent was granted, satisfying the urgency requirements.

Order

The court found indirect infringement of the SDK and grated a preliminary injunction, prohibiting Scandit from distributing its SDK in the territories where EP3866051B1is in force. The court nevertheless noted that Scandit could modify the SDK to remove the infringing functionality through an update, while still maintaining the SDK’s non-infringing features.

Conclusion

This decision serves as a useful early indication of the court’s approach to indirect patent infringement and provides a useful guideline for considering the degree of influence an alleged indirect infringer can have on the behaviour of their customers and on consequential direct infringement by them.