UPC CFI 16/2024 – Ortovox Sportartikel GmbH v. Mammut Sports Group AG and Mammut Sports Group GmbH

Expert Commentary

Full Decision Text

1 Local Chamber Düsseldorf UPC CFI 16/2024 Decision of the Court of First Instance of the Unified Patent Court pronounced on January 14, 2025 concerning EP 3 466 498 B1 LEADERSHIPS: 1. If a device in its offered or marketed state is not yet capable of making use of all the features of the patent claim because it first requires the activation of certain functions by the customer, the alleged infringer must accept responsibility for the conduct of his customers if he induces them such activation or if he deliberately exploits such activation by the customer in the knowledge that such activation will take place. 2. Destruction is intended to reliably prevent the products from entering or re-entering the market. The possibility of a software-based deactivation of a certain function necessary for the realization of the claimed technical teaching can only speak against destruction if it is ensured that the attacked embodiment cannot be put into a patent-infringing state again when using such a solution. 3. Art. 80 UPCA leaves it to the discretion of the court whether or not to order such publication. For such an order to be issued, the plaintiff's interest in publication must outweigh the necessary consequences of such publication for the defendant. As a rule, such publication can only be considered if the protection of the plaintiff is not already guaranteed by other measures. KEYWORDS: Direct patent infringement; indirect patent infringement; novelty; inventive step; destruction; recall and removal from the distribution channels; permission to publish the decision 2 KLÄGERIN: Ortovox Sportartikel GmbH, represented by the managing director Christian Schneidermeier, Rotwandweg 5, 82024 Taufkirchen, represented by: Attorney Miriam Kiefer, Attorney Robert Knaps, Kanz- lei Kather Augenstein, Bahnstraße 16, 40212 Düsseldorf, electronic delivery address: kiefer@katheraugenstein.com Contributing: Patent attorney Michael Siebel, law firm Hofstetter, Schurack & Part- ner, Patent- und Rechtsanwälte PartG mbB, COMPLAINTS: 1. Mammut Sports Group AG, represented by its legal representatives, Birren 5, 5703 Seon, Switzerland, 2. Mammut Sports Group GmbH, represented by its legal representatives Mammut-Base- camp 1, 87787 Wolfertschwenden, Germany, represented by: Attorney Oliver Jan Jüngst, Attorney Dr. Moritz Schroe- der, Dr. Alexander Bothe, attorney-at-law, Bird & Bird LLP, Carl- Theodor-Straße 6, 40213 Düsseldorf, electronic delivery address: oliver.jan.juengst@twobirds.com Contributing: Patent attorney Dr. Dr. Fabian Leimgruber, Sozietät Thomann Fi- scher, Elisabethenstrasse 30, CH-4010 Basel, STREITPATENT: European Patent No. EP 3 466 498 B1 ADJUDICATING BODY/CHAMBER: Judges of the Düsseldorf Local Division Co-Judges: This was pronounced with the participation of the presiding judge Thomas as rapporteur, the legally qualified judge Dr. Thom, the legally qualified judge Dr. Schober as well as the technically qualified judge Dr. Wismeth. LANGUAGE OF PROCEDURE: German SUBJECT MATTER: Action for infringement and action for annulment ORAL NEGOTIATION: November 26, 2024 3 BRIEF DESCRIPTION OF THE FACTS: The plaintiff is suing the defendants for infringement of the European patent EP 3 466 498 B1 (hereinafter: patent in suit). The patent in dispute was filed in German on October 9, 2017. The patent application was published on April 10, 2019. The mention of the grant of the patent in dispute was published on December 4, 2019. The patent in dispute is currently in in the Federal Republic of Germany and the Republic of Austria, among others. The plaintiff has not declared an opt-out in relation to the patent in dispute. No opposition was filed against the grant of the patent in suit. However, the defendant 1) challenged the Swiss part of the patent in suit with an action for revocation of July 11, 2023 (process number: 02023 012). With regard to the content of this nullity action, reference is made to the annexes KAP 15 to KAP 28 in the previous summary proceedings and to the annex BB 1. A decision by the Federal Patent Court of Switzerland on this nullity action is still pending. With regard to the content of the expert opinion of November 4, 2024 available in the proceedings before the Swiss Federal Patent Court, reference is made to Annex KAP 24. The patent in suit protects an "avalanche transceiver" (hereinafter: avalanche transceiver). Its patent claim 1 is formulated as follows: "Avalanche transceiver, comprising a transmitting unit (16) for transmitting at least one transmission signal (18), a receiving unit (16) for receiving at least one transmission signal (30) from at least one further avalanche transceiver (32), and a control device (24) for controlling at least one loudspeaker (22), wherein the control device (24) is designed to control the at least one loudspeaker (22) for outputting at least one voice message as a function of at least one event, wherein the at least one event is associated with a search for the at least one further avalanche transceiver (32), the avalanche transceiver (10) having the at least one loudspeaker (22) and the at least one loudspeaker (22) being designed to output at least one audio signal, characterized in that the at least one audio signal is associated with the search for the at least one further avalanche transceiver (32), wherein the control device (24) is designed to control the at least one loudspeaker (22) in such a way that the at least one audio signal is suppressed during the output of the at least one voice message or is output at a reduced volume." In addition, the patent in suit in claim 13 protects a "method for operating an avalanche transceiver", which is designed as follows: "Method of operating an avalanche transceiver (10) comprising a transmitter unit (16) for transmitting at least one transmission signal (18), and a receiving unit (16) for receiving at least one transmission signal (30) which is output by at least one further avalanche transceiver (32), in which a control device (24) of the avalanche transceiver (10) controls at least one loudspeaker (22), the control device (24) controlling the at least one loudspeaker (22) in such a way that the at least one loudspeaker (22) outputs at least one voice message, the at least one loudspeaker (22) being controlled by the control device (24) as a function of at least one event which is associated with a search message, that the at least one loudspeaker (22) emits at least one voice messagethe at least one loudspeaker (22) being controlled by the control device (24) as a function of at least one event which is associated with a search for the at least one further avalanche transceiver (32), the avalanche transceiver (10) having the at least one loudspeaker (22) and the at least one loudspeaker (22) emitting at least one voice message. 4 an audio signal, characterized in that the at least one audio signal associated with the search for the at least one further avalanche transceiver (32), whereby the control device (24) controls the at least one loudspeaker (22) in such a way that the at least one audio signal is suppressed or output at a reduced volume during the output of the at least one voice message." Figures 1 and 2, shown below, explain the technical teaching of the patent in suit by means of a preferred embodiment. While the avalanche transceiver (10) in Figure 1 in a transmit mode, it operates in a receive mode in Figure 2. In this case, another avalanche transceiver (32) is in a transmit mode. With regard to the wording of sub-claims 3, 6, 9 and 11, which are only asserted in the context of "in particular if" claims, reference is made to the patent in suit. The plaintiff's action is directed against the offer and sale of the avalanche transceiver "Barryvox S2" (hereinafter referred to as the attacked model), which is shown in the following illustration: Defendant 1) exhibited the attacked embodiment at the "ISSW" trade fair in Bend, Oregon (USA) from October 8, 2023 to October 13, 2023, where it was examined by employees of the plaintiff. At the beginning of November 2023, the plaintiff received a notice from a dealer that the attacked embodiment for the year 2024 could be pre-ordered via the B2B platform of the defendant's group. According to the general terms and conditions to be found on this platform, defendant 2) is responsible for offers and deliveries in the 5 The Federal Republic of Germany and the Republic of Austria are responsible. With regard to the further content of the platform, reference is made to Annex KAP 9. Furthermore, the defendant 1) was present as a co-exhibitor at the trade fair "ISPO Munich 2023", which took place in Munich from November 28, 2023 to November 30, 2023. The challenged design, which received the "ISPO Award 2023", was also exhibited at this trade fair. After the plaintiff had unsuccessfully warned the defendants by letter dated November 28, 2023 (Annex KAP 12), it applied to the Düsseldorf Local Chamber for an ex parte order for interim measures by letter dated December 1, 2023. In response, the Local Chamber of Düsseldorf issued an ex parte order on December 11, 2013 (UPC CFI 452/2023; ACT 589655/2023; ORD 592936/2023) ordering the defendants to refrain from offering and distributing the challenged embodiment in the Federal Republic of Germany and the Republic of Austria. At the same time, the Local Chamber of Düsseldorf threatened the defendants with a penalty payment of up EUR 10,000 per product and/or up to EUR 30,000 per day in the case of permanent acts, such as offers on the Internet, for each case of non-compliance with this injunction (possibly repeated) and to be paid to the court. In addition to this, the Düsseldorf Local Court also ordered the defendants to hand over the avalanche transceivers in question or devices suitable for carrying out a procedure for operating an avalanche transceiver to a bailiff for the purpose of safekeeping, which will continue until the existence of a claim for destruction has been finally decided between the parties or an amicable settlement has been reached. Following an application for review by the defendants (App 4074/2024), the Düsseldorf Local Chamber upheld the order for interim measures on April 9, 2024 (ORD 13918/2024) and ordered the defendants to provisionally reimburse the plaintiff costs in the amount of EUR 33,375.70. An appeal against this decision was rejected by the Court of Appeal on September 25, 2024 (UPC CoA 182/2024; APL 21143/2024; ORD 44387/2024). The defendants are currently offering the "Barryvox S2" with the information that voice control is currently not available in Germany and Austria, among other countries. With these devices, voice control can only be activated for the first time via the "Barryvox App". To do this, the user establishes a connection between the "Barryvox App" and the "Barryvox S2". To do this, location tracking must also be activated on the device running the "Barryvox App", such as a smartphone. This location tracking is used to check whether the user is in a country in which voice control should not be available (such as the Federal Republic of Germany or the Republic of Austria) when voice control is activated. However, once voice control has been activated abroad, it can also be used in the Federal Republic of Germany and the Republic of Austria, at least temporarily. MOTIONS BY THE PARTIES: Lawsuit: The applicant claims that the Court should, I. declare that the defendants have infringed European patent 3 466 498; II. order the defendants to cease and desist, 6 1. Avalanche transceivers to offer, place on the market or use in the Federal Republic of Germany and/or the Republic of Austria, or to import or possess for these purposes, with at least a transmitter unit for transmitting at least one transmission signal, a receiver unit for receiving at least one transmission signal from at least one further avalanche transceiver, and with a control device for controlling at least one loudspeaker, wherein the control device is designed to control the at least one loudspeaker to output at least one voice message depending on at least one event, wherein the at least one event is associated with a search for the at least one further avalanche transceiver, wherein the avalanche transceiver has the at least one loudspeaker and the at least one loudspeaker is designed to emit at least one sound signal, characterized in that the at least one audio signal is associated with the search for the at least one other avalanche transceiver, wherein the control device is designed to control the at least one loudspeaker in such a way that the at least one sound signal is suppressed during the output of the at least one voice message or is output at a reduced volume; (direct infringement claim 1) 2. Devices suitable for carrying out a method for operating a la- wine burial detector in the Federal Republic of Germany and/or the Republic of Austria for use in the Federal Republic of Germany and/or the Republic of Austria to offer and/or deliver, wherein the method comprises at least the following: a transmission unit for transmitting at least one transmission signal, a receiving unit for receiving at least one transmission signal, which 7 is issued by at least one other avalanche transceiver, in which a control device of the avalanche transceiver controls at least one loudspeaker, wherein the control device controls the at least one loudspeaker in such a way that the at least one loudspeaker emits at least one voice message, wherein the at least one loudspeaker is activated by the control device as a function of at least one event which is associated with a search for the at least one further avalanche transceiver, the avalanche transceiver has at least one loudspeaker and the at least one loudspeaker emits at least one sound signal, characterized in that the at least one audio signal is associated with the search for the at least one other avalanche transceiver, wherein the control device controls the at least one loudspeaker in such a way that the at least one sound signal is suppressed during the output of the at least one voice message or is output at a reduced volume; (indirect infringement of procedural claim 13) III. order the defendants, at their own expense, to 1. to destroy at its own expense the products its direct or indirect possession and/or ownership mentioned above under No. II. or, at its discretion, to hand them over to a bailiff to be appointed by the plaintiff for the purpose of destruction; 2. the products mentioned under No. II. and placed on the market since December 4, 2019. December 4, 2019, in writing to commercial customers with reference to the patent-infringing condition of the products as determined by the Unified Patent Court and with the binding commitment to return the products, to reimburse any fees and to bear any necessary packaging and transportation costs as well as customs and storage costs associated with the return and to take back the products, whereby the plaintiff is to be provided with a sample of the recall letters as well as a list of the addressees with their names and postal addresses or - at the defendant's option - a copy of all recall letters; 3. the products referred to under no. II. that have been placed on the market since December 4, 2019 8 products must be permanently removed from the distribution channels, in particular the following measures must be taken: a) the defendants must take all possible and reasonable measures to identify the locations and owners of the products referred to in No. II; b) insofar as the defendants themselves have legal or actual power of disposal over the products referred to in No. II, legally permissible and reasonable measures must be taken ensure that these products come into the direct possession of the defendants and remain there; c) Insofar as the defendants neither legal nor actual power of disposal over the products referred to in No. II, they must take all legally permissible and reasonable measures to induce the persons who have claims for surrender or destruction against the holders of the power of disposal of the products to assert these claims and/or to assist these persons in asserting these claims; IV. order the defendants to pay the costs, 1. to provide the applicant, in a list structured for each month of the calendar year and by patented products, from December 4, 2019, with information on the products mentioned under No. II. on a) the origin and distribution channels of the products mentioned; b) the quantities delivered, received or ordered and the prices paid for the products mentioned under No. II; c) the identity of all third parties involved in the distribution of the products mentioned under No. II; 2. to to the plaintiff its accounts to prove the information provided in accordance with No. IV.1. plus the information on the profit made by providing the following documents for each month of a calendar year and for each infringing product in electronic form which can be evaluated with the aid of a computer: a) invoices - or, if these are not available, delivery bills - for the individual deliveries, breaking down the respective deliveries according to quantities offered, offer times, prices of the goods offered and type designations as well as the names and addresses of the commercial recipients of the sales offers for all products sold or otherwise disposed of; b) Evidence of the advertising carried out, including evidence of these advertising activities, whereby they must classify the advertising carried out according to 9 advertising media, their distribution, the distribution period and the distribution area; c) The company provides evidence of the costs, with breakdown of the costs by individual cost factors and the profits generated; d) Invoices - or, if these are not available, delivery bills - and corresponding statements of all costs incurred, on which the defendants rely in calculating their profits; the accuracy of which is audited and confirmed by a sworn auditor appointed by the plaintiff at the defendant's expense, whereby the auditor is obliged to maintain confidentiality vis-à-vis the plaintiff beyond the above-mentioned information; in the alternative: 2. to provide the plaintiff with the following documents for each month of a calendar year and for each infringing product in electronic form, which can be analyzed with the aid of a computer, to prove the information provided in accordance with No. IV.1. plus the information on the profit made: a) invoices - or, if these are not available, delivery bills - for the individual deliveries, breaking down the respective deliveries according to quantities offered, offer times, prices of the goods offered and type designations as well as the names and addresses of the commercial recipients of the sales offers for all products sold or otherwise disposed of; b) Evidence of the advertising carried out, including evidence of these advertising activities, breaking down the advertising carried out by advertising medium, its distribution, the distribution period and the distribution area; c) The company provides evidence of the costs, with breakdown of the costs by individual cost factors and the profits generated; d) Invoices - or, if these are not available, delivery bills - and corresponding statements of all costs incurred, on which the defendants rely in calculating their profits; the accuracy of which is audited and confirmed by a sworn auditor appointed by the plaintiff at the defendant's expense, whereby the auditor is obliged to maintain confidentiality towards the plaintiff beyond the above-mentioned information; V. authorize the applicant, at the defendant's expense, to announce and publish the decision in whole or in part in the following public media 10 The following publications were published: for the Federal Republic of Germany in the Frankfurter Allgemeine Zeitung and in the newspaper Handelsblatt; for the Republic of Austria in the newspaper Der Standard; VI. declare that the defendants are obliged to compensate the plaintiff as joint and several debtors for any damage that she has suffered or will suffer in the future as a result of actions pursuant to No. II. since December 4, 2019 VII. order the defendants to pay the plaintiff as joint and several debtors an amount EUR 100,000.00 as provisional damages; VIII. order the defendants to pay the costs and expenses of the proceedings, including the proceedings for interim measures; IX. that the decision can be enforced as follows: 1. The orders mentioned under No. II.1 and II.2 are directly enforceable. In the event of any infringement this injunction, the defendants must pay a (possibly repeated) penalty payment of up to EUR 10,000.00 per product and/or up to EUR 30,000.00 in the case of permanent acts such as offers on the Internet. 2. The orders mentioned under No. III, No. IV, No. VII and No. VIII are enforceable, after the plaintiff has notified the court which part of the orders it intends to enforce and after the notification has been served on the defendant. 3. After the expiry of a period of 45 days after service pursuant to no. IX.2, the Defendants shall pay to the Court a penalty payment of up to EUR 30,000.00 per day of delay in the event of any breach of any of the orders referred to in No. III, No. IV, No. VII and/or No. VIII. With regard to the wording of the "in particular if" claims, reference is made to the statement of claim. The defendants request; 1. dismiss the action as unfounded; in the alternative: 2. to stay the proceedings until the final decision, or at least until the conclusion of the first-instance proceedings on the counterclaim for a declaration of invalidity against the patent in dispute; 3. Condition 11 3.1. to condition any orders of the local division against the defendants with the condition precedent that the proceedings mentioned under item 2 are decided in favor of the plaintiffs here with final effect, at least until the conclusion of the proceedings at first instance; further in the alternative: 3.1.1. to at least condition an injunction on the fact that the proceedings referred to in point 2 are decided in favor of the present plaintiffs with final effect, at least until the conclusion of the proceedings at first instance; further in the alternative: 3.2. to make any order or measure against the defendant subject to a security deposit to be determined by the court in accordance with Rule 352, which should not be less than EUR 2,000,000.00 in the case of an injunction; further in the alternative: 3.3. to make any orders of the local division against the defendants subject to the condition that the proceedings referred to in item 2 are decided against the plaintiffs in the first instance, alternatively with final and binding effect; further in the alternative: 3.3.1. to condition any orders of the local division against the defendants by dissolving the proceedings against the legal validity of the patent in suit mentioned under item 2 in the first instance or, in the alternative, to rule against the plaintiffs here at least to the extent that the patent in suit is restricted or revoked to such an extent that the infringement ceases; further in the alternative: 3.4. to make an injunction against the defendants subject to the condition subsequent that the defendants provide security, the amount of which is at the discretion of the court ("permanent power to avert"); further in the alternative: 3.4.1 to condition an injunction against the defendants until the final decision, but at least until the conclusion of the proceedings at first instance pursuant to section 2, by the defendants security, the amount of which is at the discretion of the court ("limited power to avert"): 12 Counterclaim and amendments: The defendants request, I. declare the European patent EP 3 466 498 B1 invalid in its entirety for the territories of the Federal Republic of Germany and the Republic of Austria; II. to set the value in dispute of the counterclaim for annulment at EUR 1 million; III. order that English language documents and citations filed with or in the counterclaim for annulment and/or filed at a later date need not be translated; IV. order provisional and immediately enforceable reimbursement of the counterclaimants' costs at first instance in the amount of EUR 60,000.00; V. order the defendant to pay the costs. The applicant claims that the Court should I. dismiss the defendant's action for annulment of April 2, 2024; II. order the defendants to pay the costs. In the event that the Court of First Instance considers some of the challenges to the declaration of invalidity to be well-founded, the applicant requests the Court to III. in the alternative in each case: to amend and maintain the patent in suit in the order of auxiliary requests HA1 to HA11. With regard to the content of these auxiliary requests, reference is made to the alternative request for amendment of the patent in suit pursuant to R. 30.1 VerfO (App 34230/2024) of June 3, 2024. The defendants request, declare the European patent EP 3 466 498 B1 invalid in its entirety for the territories of the Federal Republic of Germany and the Republic of Austria, also in the version of auxiliary requests HA1 to HA11. In a pleading dated November 25, 2024 (App 62736/2024), the plaintiff filed the request for injunctive relief under item II. from the complaint dated January 17, 2024 in the version of the auxiliary requests. The defendants countered this at the hearing. FACTUAL AND LEGAL ISSUES: Area of protection: According to the defendant, the sound signal of the patent in suit only communicates "right/wrong" on the semantic level. A more complex and freely definable instruction such as "right/left" or "up/down" is provided solely by the voice message. "Sound patterns" in the sense of individually distinguishable signal patterns with a freely assignable, discrete meaning are to be distinguished from sound signals within the meaning of the patent in suit. The sound pattern technology does not only allow an instruction in the sense of "right/wrong", but can also be used as an alternative by a 13 control unit to give specific, clearly distinguishable instructions. Such "sound patterns" are not covered by the term "sound signal" of the patent in suit. Rather, such sound patterns are the subject matter of the proprietary technology of the defendant's group of companies as described in EP 2 527 011 A1 (hereinafter: EP '011, Annex BB 1, Exhibit 28). Its teaching discloses an acoustic signal generator which provides a technical signal language with a differentiated, freely definable meaning. Insofar as "the at least one audio signal is suppressed during the output of the at least one voice message" according to the invention, there must be an audio signal for such "suppression" which is retained. It is not sufficient if the sound signal is not generated in the first place. Only then would the loudspeaker be activated as required by the invention in order to suppress the sound signal. This also corresponds to the applicant's understanding in the grant proceedings. There, in order to distinguish the patent in suit from the state of the art WO 2006/015721 A1 (hereinafter: WO '721, Annex BB 1, Exhibit 32) and DE 299 22 217 U1 (hereinafter: DE '217, Annex BB 1, Exhibit 33), the plaintiff deliberately limited itself to the simultaneous signals (sound and speech signal) and their relative volume or suppression. Injury: Based on their understanding of the scope of protection as described above, the defendants deny the existence of patented sound signals in the challenged embodiment. There, a specially patented technology for the generation of (event-dependent) sound patterns is , which provide the searcher with further information in addition to a certain spatial angle to the buried person. In the challenged embodiment, instructions are alternatively given for certain solid angle ranges. This is done by means of tone patterns that are set off (alternately) in a self-contained manner. These sound patterns have a semantic content which is clearly excessive compared to simple sound signals and are therefore not sound signals within the meaning of the patent in suit. Furthermore, in the contested embodiment, the sound pattern is indisputably completely switched off while a voice message is being output. This involves switching from one signal generator to a completely independent second signal generator. Therefore, the different signals do not exist simultaneously, but only alternately/consecutively. Depending on activation, the loudspeaker either emits the corresponding signal or not. Therefore, nothing is "suppressed" (or "reduced in volume") for activation. Thus, the contested embodiment also lacks a control device within the meaning of the patent in suit. According to the invention, the control unit controls the output of both signals relative to each other. Therefore, both signals must be available to it. Only in this way can it control the output of the two signals relative to each other. In the challenged embodiment, there are two completely independent signal generators, only one of which is active at any one time. There is therefore no control unit that controls the loudspeaker with a sound signal and a speech signal. Only one of the two independent signal generators would be active at any one time, which would address the loudspeaker independently of each other. In addition, the defendants raised the objection of earlier/better right on the basis of the earlier EP '011. If the term "sound signal" is interpreted broadly in the interpretation of the patent in dispute in the sense that sound patterns are also covered, then a corresponding interpretation must also be applied to EP '011. This would then disclose voice message and sound signal. However, the defendants would then have to be in a position to be able to exercise their earlier teaching. It is recognized in German national case law that the 14 the proprietor of a later patent cannot prohibit the proprietor of an earlier patent from using his property right if both patents are identical in terms of their features. The nationally recognized principles reflect essential and generally applicable principles of patent law and must therefore also be taken into account in the context of UPC proceedings. The collision of two patents is not expressly regulated in the UPCA. It could therefore only be sensibly resolved by way of a balancing of interests: Either the later patent is not legally valid vis-à-vis the earlier patent or the proprietor of the earlier right retains the possibility of exercising its teaching vis-à-vis the later patent. The more recent patent proprietor's right of exclusion pursuant to Art. 25 and Art. 26 UPCA cannot restrict the same right of earlier property rights. Finally, the defendants held a license to the European patent EP 1 577 679 B1 (BB4) for the Federal Republic of Germany and the Republic of Austria, among others, which is outright novelty-destroying compared to the patent in suit. This means that the defendant has a right of defense against a claim based on the patent in suit, irrespective of the legal position. The challenged embodiment is either directly licensed or - in the alternative - the plaintiff's action against its own licensee is an abuse of rights. Counterclaim: According to the defendant, the technical teaching of the patent in suit is covered by EP 1 577 679 A1 (hereinafter: EP '679, Annex BB 2), WO 2006/015721 A1 (hereinafter: WO '721, Annex BB 1, Exhibit 32), DE 299 22 217 U1 (hereinafter: DE '217, Annex BB 1, Exhibit 33) and DE 299 22 217 U1 (hereinafter: DE '217, Annex BB 1, Exhibit 33). EP 2 527 011 A1 (hereinafter: EP '011, Annex BB 1, Exhibit 28) as to novelty. In particular, EP '679 already discloses an avalanche transceiver which provides a bearing search and can have not only (classical) sound guidance but also voice guidance (see paragraphs [0049], [0065] and [0097]). Furthermore, the patent in suit was not inventive on the basis of EP '679, WO '721 and DE '217 and on the basis of a classic avalanche transceiver. The three aforementioned documents describe an avalanche transceiver which can output sound signals in one embodiment and, in any event, voice messages in another. Thus, all three documents already mention both output variants (sound and voice), which are combined in the patent in suit. Therefore, all three documents are also a suitable "springboard" because the skilled person knows that the parallel audio output can cause comprehension problems. Combining speech and sound is not inventive. The same applies to the design of the hierarchy between competing audio sources. The solutions stated in the patent in suit had been known to the skilled person for a long time. In addition, the assessment of the inventive step could also be based on a conventional avalanche transceiver which is indisputably known in the prior art. This refers to a direction finder with one or more antennas, which picks up a signal received from a buried avalanche transceiver and calculates the distance and direction to this device on the basis of the field strength, in order to then make this position information visually perceptible by means of information on a display or acoustically perceptible by means of louder/quieter beeps. The classic avalanche transceiver described in US 2006/0148423 A1 mentioned in the patent in suit already contains all the features of the patent in suit, with the exception of the combination of audio signals and voice messages and the regulation of the relationship between these two audio sources. However, the integration of these additional functions did not constitute an inventive step. First of all, it was undisputed that at the time of filing the patent in suit 15 avalanche transceivers equipped with voice guidance have already been disclosed (WO '721; DE '217; EP '679). Assuming that the combination of sound and voice guidance in an avalanche transceiver was not already disclosed in these documents, it would be obvious for the skilled person to refer to the aforementioned state of the art with a view to a possible further development of the classic avalanche transceiver. The skilled person therefore familiar with avalanche transceivers with audio guidance and others with voice guidance. It was not apparent to what extent the mere combination of these two functions in one device should constitute an inventive step. If two audio sources were combined, the only remaining question was how the output of the respective sound signals and voice messages could be designed in such a way that both could always be easily perceived by the searcher. The patent in suit offers a solution to this problem by suppressing the sound signal which is heard continuously during the search during the output of a voice message or by outputting it at a reduced volume. Both variants were already known to the skilled person at the time of filing the application and were, moreover, frequently observed in everyday life. The skilled person also had reason to use the technology used in navigation devices in the further development of a classic avalanche transceiver. Both EP '679 and DE '217 clearly referred to the proximity of avalanche transceivers to other navigation devices. Finally, the installation of a control device within the meaning of the patent in suit was also obvious, since the output of competing audio sources could not be controlled in any other way. Finally, there was also a lack of sufficient disclosure pursuant to Art. 138 (1) (b) EPC. Legal consequences: From the defendant's point of view, an injunction is inappropriate in the present case. In particular, the challenged design is probably the most advanced avalanche transceiver and the only device with an intelligent fine search function, which could save lives. Moreover, by refraining from seeking legal protection in Switzerland and thus at the defendant's place of business, the plaintiff has demonstrated that it has no legitimate interest in obtaining a (permanent) injunction. Furthermore, the plaintiff was only pursuing purely monetary interests, which could be adequately satisfied by damages. The plaintiff had not substantiated the preliminary damages of EUR 100,000 requested by her. It was not apparent per se what damage should have been caused by the issue of a prototype. In the absence of a claim for damages, a claim for information is also ruled out on the merits. Disclosure of the books would be disproportionate. The submission of an affidavit is available as a milder means. Furthermore, it is also not clear to what extent information about advertising measures should be suitable for calculating possible damages. Furthermore, even in the event of an infringement of the patent in dispute, the plaintiff is not entitled to recall, removal from the distribution channels and destruction of the products in dispute. In particular, the defendants are entitled to continue to distribute the products in dispute outside Germany and Austria even if they are unsuccessful in the present proceedings. Therefore, ordering the destruction of the products would be clearly disproportionate, as they could simply be relocated to other countries. The publication of the decision requested by the plaintiff lacked the necessary interest. 16 In the alternative, the proceedings should be stayed at least until the final conclusion of the nullity proceedings, or at least until a first-instance decision has been issued. In any case, the decision in the infringement proceedings should at least be conditional on the outcome of the nullity proceedings. In the further alternative, the plaintiff would have to provide an enforcement security of at least EUR 2,000,000. In addition to legal costs, a first instance judgment would also cause the defendants considerable damage, which would be caused by a final/permanent failure to market the embodiments at issue. This would exclude the defendants from the German and Austrian markets, at least until a favorable decision in the appellate instance. They would also not be able to regain the lost market shares over a longer period of time, as an avalanche transceiver is usually purchased for several years. REASONS FOR THE DECISION: The admissible action is successful in the tenor the case. The action for annulment is admissible but unfounded. A. Admissibility of the action and the action for annulment Both the action and the action for annulment are admissible. I. Since the defendants did not file an opposition within the opposition period, both the jurisdiction of the Unified Patent Court and the jurisdiction of the Düsseldorf Local Court are deemed to be recognized, R. 19.7 VerfO. II. There are no concerns regarding the admissibility of the counterclaim. In particular, the Unified Patent Court (UPC) also has international jurisdiction. Pursuant to Art. 32 (1) (e) UPCA, the UPC has exclusive jurisdiction for counterclaims for invalidity of (European) patents. As there is currently no opt-out (Art. 83 (3) UPCA) from the exclusive jurisdiction of the court in relation to the patent in dispute in force, the UPC - as the common court of the member states of the UPCA - has international jurisdiction for the present counterclaim pursuant to Art. 24 (4), 71a (2) (a), 71b (1) of Regulation (EU) No. 1215/2012. B. Scope of protection of the patent in suit With regard to the scope of protection of the patent in suit, the following applies: I. The invention relates to an avalanche transceiver with a transmitting unit for transmitting at least one transmission signal, a receiving unit for receiving at least one transmission signal from at least one further avalanche transceiver, and with a control device for controlling at least one loudspeaker, as well as a method for operating such a device. According to the description of the patent in suit, avalanche transceivers are known in the prior art. For example, WO 2006/015721 A1 describes an avalanche transceiver 17 with a display device that generates stimuli perceptible to the human senses, such as acoustic stimuli in the form of buzzers or loudspeakers. Furthermore, a voice output device is provided which guides a user by voice to a person to be located (para. [0002]). In addition, US 2006/0148423 A1 describes an avalanche transceiver with a display on which directional arrows indicate the direction in which a searcher should move in order to locate a transmitting avalanche transceiver. The distance from the transmitting search device is also shown. The avalanche transceiver also a loudspeaker which emits an audio signal in search mode. This audio signal becomes louder as the searching avalanche transceiver approaches (para. [0003]). The patent in suit describes this prior art as disadvantageous in that the search for the transmitting avalanche transceiver difficult despite the instructions for the search and the audio signal shown on the display. In particular, paying attention to the instructions shown on the display and the audio signal in the stressful situation in which the person searching for the buried carrier of the transmitting search device finds himself is a considerable challenge (para. [0004]). According to the description of the patent in suit, the patent in suit is therefore based on the task of creating an avalanche transceiver and a method of the type mentioned at the beginning, which simplifies the search for a transmitting avalanche transceiver (para. [0005]). To solve this problem, the patent in suit protects an avalanche transceiver which is characterized by the following features according to patent claim 1: 1. Avalanche transceiver, 1.1. with a transmission unit (16) for transmitting at least one transmission signal (18), 1.2. a receiving unit (16) for receiving at least one transmission signal (30) from at least one further avalanche transceiver (32) 1.3. and with a control device (24) for controlling at least one loudspeaker (22). 2. The control device (24) is designed to control the at least one loudspeaker (22) to output at least one voice message as a function of at least one event. 2.1. The at least one event is associated with a search for the at least one further avalanche transceiver (32). 3. The avalanche transceiver (10) at least one loudspeaker (22) and the at least one loudspeaker (22) is designed to emit at least one sound signal. 3.1. The at least one audio signal is associated with the search for the at least one further avalanche transceiver (32). 4. The control device (24) is designed to control the at least one loudspeaker (22) in such a way that the at least one sound signal is suppressed or output at a reduced volume during the output of the at least one voice message. 18 II. Some features require explanation. 1. Pursuant to Art. 69 EPC in conjunction with the Protocol on its interpretation, the patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim does not solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim and not only be used to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject matter also extends to that which, after examination of the description and drawings, appears to be the patent proprietor's request for protection (UPC CoA 335/2023, order of 26.02.2023 in conjunction with order of 11.03.2023). Order of 11.03.2024, GRUR-RS 2024, 2829, guiding principle 2. and para. 73 - 77 - 10x Genomics v. NanoString; UPC COA 182/2024, order of 25.09.2024, para. 82 - Mammut v. Ortovox; see also UPC CFI 7/2024 (LD Düsseldorf), decision of 03.07.2024, ORD 598324/2023 - Franz Kalde- wei v. Bette). 2. The relevant skilled person is a graduate engineer or master of electrical engineering with a degree from a university of applied sciences and several years of professional experience in the development and design of avalanche transceivers, who at least knows the functions of mobile navigation devices in detail (see also UPC CoA 182/2024, order of 25.09.2024, para. 83 - Mammut v. Ortovox). 3. Having said this, the local chamber bases its decision on the following understanding of the characteristics: a) According to the invention, the avalanche transceiver (LVS) has, in addition to a transmitter and a receiver unit (16), a loudspeaker (22) and a control device (24) for controlling this loudspeaker (feature group 1.). Why such a control device is required is obvious to the skilled person in charge when looking at feature groups 2. to 4. b) As the skilled person can see from feature group 3, the at least one loudspeaker is designed according to the invention to emit at least one sound signal which is associated with the search for the at least one further avalanche transceiver. Patent claim 1 is silent on how such a connection is to be designed, as well as on the content and the more detailed technical design of the audio signal. A person skilled in the art who attempts to determine the scope of protection on the basis of the wording of the patent claim therefore has no reason to limit the term "sound signal" to certain acoustic signals. Rather, when considering the aforementioned feature groups in isolation, he will understand a "sound signal" to mean any acoustic signal in connection with another avalanche transceiver, irrespective of whether this signal contains information beyond the required context or not. Purely optical signals, for example in the form of directional arrows, are not to be classified as sound signals within the meaning of the patent in dispute. They may be present in addition and as a supplement to the sound signals (para. [0047], col. 11, lines 17 - 26), but do not make the presence of sound signals superfluous. 19 However, the skilled person does not stop at such a view based solely on the wording of the patent claim. According to Art. 69 (1) sentence 2 EPC, the description and the drawings must be used to interpret the patent claim (cf: UPC CoA 335/2023, order of 26.02.2024, GRUR-RS 2024, 2829, para. 73 - 79 - Nach- method). If the skilled person takes this as a starting point and looks at the description of the patent in suit, it is disclosed to him in paragraph [0010] that the sound signals emitted by the at least one loudspeaker are, for example, beeps which vary in frequency, repetition rate and/or volume depending on the distance to the buried person (Sp. 2, lines 49 - 53, emphasis added). Since the description of the patent in suit expressly emphasizes the exemplary character of the sound signals described therein in detail, the skilled person has no reason to assume that the patent in suit understands the term "sound signal" in a way that deviates from the broad understanding previously elaborated. There is no indication in the patent in suit of the distinction between "sound signals" and "sound patterns" advocated by the defendants. If they are associated with the search for at least one other avalanche transceiver, "sound patterns" are therefore also "sound signals" within the meaning of the patent in suit. Insofar as the defendants refer to EP '011 in support of their differing view, this was not mentioned in the patent in suit. The defendants also failed to prove in the main proceedings that this prior art and in particular the aforementioned distinction between sound signals and sound patterns was part of the general technical knowledge in the field of the patent in suit at the time of priority. This document is therefore not admissible interpretative material from the outset. c) The skilled person must also take into that, in addition to the audio signals, claim 1 also recognizes voice messages which are also associated with a search for the at least one avalanche transceiver (feature group 2.). Although these voice messages are also output through the loudspeaker and thus acoustically perceptible, feature 4. leaves no doubt that voice messages and sound signals must be distinguished from each other according to the conceptual understanding of the patent in suit. Only then does it make sense to suppress the sound signal during the output of a voice message or to play it back at a reduced volume. Even if claim 1 does not contain any specifications for the more detailed form of the sound signal or the voice message, it is clear from the overall system of the claim that a sound signal within the meaning of the patent in suit is any acoustic signal associated with the search for another WMS which is not to be classified as the output of speech and thus as a voice message. By contrast, the patent in suit defines a voice message as an instruction or information to the searcher in the form of words (see, for example, paragraphs [0017] f., [0021], [0023] f., [0028] f., paragraphs [0031], [0033] f., paragraphs [0036] - [0039]). Contrary to the defendant's view, the presence of one or more words is a suitable criterion for distinguishing between sound and voice messages. Insofar as the defendants refer to Khoisan languages, whistling languages and the Turkish bird language (cf. grounds of counterclaim, para. 29), a distinction between these languages and sounds or sound samples is also possible in this respect because they also directly reproduce words. The fact that the language merely comes "in a different sound" does not change fact that communication takes place directly by means of words and not merely by sound patterns representing words. Moreover, as the Court of Appeal already rightly pointed out, cannot be assumed that the person skilled in the art would have understood these particular forms of communication to be similar to the understanding of the patent applicant. 20 (UPC CoA 182/2024, order of 25.09.2024, para. 90 - Mammut v. Orto- vox). d) According to the invention, the loudspeaker thus emits two acoustic stimuli (sound signals, voice message) that can be distinguished from one another. If this is done simultaneously, however, the sound signals emitted (for example in the form beeps) can interfere with the intelligibility of the speech (Sp. 3, lines 3 - 5). Therefore, according to the invention, the control device (24) should be designed such that it can control the at least one loudspeaker as a function of at least one event associated with the search for a further WMS such that the at least one audio signal is suppressed or output at a reduced volume during the output of the voice message (features 2. and 4.). The expert takes two things from this: aa) On the one hand, the loudspeaker should be activated depending on an event related to the search for another WMS (features 2. and 2.1.). The consideration of the at least one event according to feature 2.1 is related to the search for the transmitting search device. Accordingly, a voice message is triggered in particular when an event occurs in the form of a change of state (para. [0013]) or a change in a parameter associated with the search is detected (para. [0014], lines 26 - 32). This makes it particularly easy to react to a change in the search situation (para. [0014], lines 32 - 37). However, as the Court of Appeal already found in its order issued in summary proceedings (UPC CoA 182/2024, order of 25.09.2024, para. 66 - Mammut v. Orto- vox), the event is thus in an operative connection with the transmitting search device, namely its transmission signal. This is because this creates a connection between the devices. Therefore, an arbitrary voice output that is only temporally related to the use of the device during the search is not sufficient. At the same time, there needs to be an effective connection between the output of the sound signal and the voice message by the control device. According to feature 4, the control unit is to control the loudspeaker as a function of at least one event associated with the search for a further avalanche transceiver in such a way that the at least one audio signal is suppressed or output at a lower volume during the output of the voice signal. A functional connection is therefore required between the activation of the loudspeaker by the control unit and the suppression of the audio signal or the reduction of its volume. The scope of protection therefore does not cover designs in which the sound signal and the voice message are output independently of each other without the loudspeaker being controlled accordingly. Only if such a causal relationship exists, a voice output is made in accordance with features 2, 2.1 and 4. Contrary to the opinion of the expert opinion of the Federal Patent Court of Switzerland of November 4, 2024 (Annex KAP 24, p. 17 - 18, para. 29), an arbitrary voice message issued during a search is therefore not sufficient. 21 bb) On the other hand, the at least one audio signal can either be suppressed or output at a reduced volume during the output of the at least one voice message. The second variant allows the sound signal to continue to generated and output during the output of the voice message. Suppression of the sound signal, on the other hand, requires that the sound signal is no longer acoustically perceptible. The technical means used for this purpose are left open in the patent in suit. At no point does it deal with the more detailed technical design of the suppression of the sound signal. Its technical realization is therefore also left to the skilled person. The scope of protection therefore covers both designs in which the volume of the sound signal is temporarily set to zero and those in which the signal temporarily no longer generated. If the sound signal is temporarily not generated, the person skilled in the art recognizes this as a temporary deactivation and thus suppression of this signal. The control device also important in such an understanding. In the case in which the sound signal suppressed by not generating sound signals in the first place, the loudspeaker does not have to be activated to output the sound signal. However, this is not mandatory according to feature 4. The purpose of the control device is to control the loudspeaker "in such a way" (according to feature 4.) that a voice message and not a sound signal is output via the loudspeaker when a predefined event occurs. It is therefore sufficient that a control device is present which is designed to control the loudspeaker to output a voice message (feature .1.) depending on a certain event (feature 2.1.), and which results in a control that either suppresses a sound signal or outputs it at a reduced volume during the output of the voice message (see also UPC CoA 182/2024, order of September 25, 2024, para. 99 - Mammut v. Ortovox). The general use of language invoked by the defendants to justify their differing view does not compel a different assessment, if only because the term "suppression" can also be understood there in the sense of "not allowing to arise" according to the passage from the Duden dictionary cited by the defendants themselves (cf. statement of defense, p. 27, para. 84). Moreover, the Court of Appeal rightly pointed out in the summary proceedings (UPC CoA 182/2024, order of 25.09.2024, para. 97 - Mammut v. Ortovox) that it is true that only something existing can be suppressed. Since the patent claim requires that at least one sound signal is emitted (feature 3.), such a sound signal is also present at times. It should only be suppressed "during" the output of the voice message. The understanding that it is sufficient for an audio signal to be output intermittently during the same search, but that there is no output of audio signals during the output of the voice signal, is confirmed by the fact that, according to the description, the search is triggered both by the audio signal (para. [0011], para. 3, lines 5 - 7) as well as the voice message (para. [0012], para. 3, lines 14 f.) and the suppression of the audio signal only serves to ensure the intelligibility of the voice message (para. [0011], para. 3, line 3). Apart from this, the description to be used for interpretation pursuant to Art. 69 (1) sentence 2 EPC and the drawings may in any case show that the patent specification defines terms independently. Even if patent claim 1 leaves the more detailed technical embodiment of the suppression of the audio signal to the skilled person, the latter must not lose sight of the fact that the control device, audio signal and voice message are in an operative relationship according to the invention: The control device should control the loudspeaker as a function of at least one event associated with the search for a further WMS in such a way that the at least one event associated with the search for a further WMS is suppressed. 22 a sound signal is suppressed or output at a lower volume during the output of the speech signal. A functional relationship is therefore required between the activation of the loudspeaker by the control unit and the suppression of the sound signal or the reduction of its volume. The scope of protection therefore does not cover configurations in which the sound signal and the voice message are output independently of each other without the loudspeaker being activated accordingly. Insofar as the defendants to statements made by the plaintiff in the patent interpretation in the context of the patent proceedings, the Court of Appeal left it open in the previous summary proceedings whether and, if so, to what extent such statements can be taken into account in the context of patent interpretation (UPC CoA 182/2024, order of 25.09.2024, para. 98 - Mammut v. Ortovox). Such a decision is also dispensable in the main proceedings. The Local Court shares the view of the Court of Appeal that the plaintiff did not argue with the simultaneity of the audio and voice signals in the grant proceedings. Rather, it merely argued there that WO '721 does not disclose that a loudspeaker of an avalanche transceiver is designed to emit both a voice message and at least one sound signal which is associated with the search for the other avalanche transceiver (Annex KAP 14, p. 3). This does not result in any restriction for avalanche transceivers in which audio signals are also generated during the output of the voice message. Rather, it merely expresses the fact that a voice message supports the search at certain times. III. The features of the method claimed in patent claim 13 correspond to those of patent claim 1. The subject-matter of the adjacent patent claim 13 is therefore subject to the same assessment as that of patent claim 1. C. Merits of the counterclaim The counterclaim is not successful on the merits. I. Novelty The technical teaching protected by patent claims 1 and 13 is not disclosed in the prior art cited by the defendants as prejudicial to novelty. 1. Scale of the novelty test A technical teaching is new if it deviates from the prior art in at least one of the known features. Only that which is immediately apparent to a person skilled in the relevant technical field from the publication or prior use is anticipated in the prior art. Findings that a skilled person only obtains on the basis of further considerations or the consultation of further writings or uses are not prior art (see UPC CFI 452/2023 (LK Düsseldorf), order of 09.04.2024 - Ortovox v. Mammut; UPC CFI 7/2024 (LK Düsseldorf), decision of 03.07.2024 - Kaldewei v. Bette). 2. Novelty test in individual cases On this basis, the invention protected patent claims 1 and 13 proves to be new compared to the prior art cited by the defendants. 23 a) EP '679 This applies first of all with regard to EP '679. The caveat relates to a search device for locating a transmitter and in particular an avalanche transceiver. This is swiveled by the user to search a search area in an angular range of search angles which covers the search area. The device is equipped with a search antenna, a signal processing device and an output device for outputting result signals to the user (patent claim 1). The output unit (10) can be designed for the graphic output of result signals which represent the transmitter search angle (sub-claim 7). As the person skilled in the art can see from paragraph [0049] of the citation, in a preferred embodiment the avalanche transceiver can a display and a loudspeaker for outputting a synthetically generated search tone as feedback for the user. In such a design, the graphic display is therefore supplemented by a search tone. However, there is no voice output within the meaning of the patent in suit (feature group 2.). Therefore, no control device within the meaning of feature group 4 is required. Insofar as the defendants refer to paragraph [0097] with regard to the voice output, such a device is mentioned there. However, the relevant paragraph must be read together with paragraph [0096]. According to this, it is conceivable to combine a locating device with a GPS system (emphasis added). If use is made of this possibility, the search device therefore has a graphic output as well as a GPS system. The addition of a sound signal is merely a (different) design example. There is no indication in the citation of a combination of both embodiments. According to para. [0093], the citation wants the previously described functions of the search device to be understood as modules which, as separate units, allow numerous combinations, whereby the search device also manages without individual of these units (para. [0094], [0095]). According to paragraph [0096], the search device can be combined with a GPS system. The GPS system is used to provide a true-to-life representation of the terrain. The position of the searcher and the transmitter locations detected by the search device, i.e. the presumed locations of the buried victims, are superimposed on the display of the GPS system. Such a system enables the searcher to intuitively, i.e. quickly, determine the position of the burial point on the basis of any prominent , so that he can locate the burial point with the least possible delay. In the following paragraph [0097], the citation discloses that the search device can alternatively or additionally be combined with voice control, as known, for example, in GPS systems for motor vehicles. In this case, the searcher receives acoustic instructions, for example in the form of a voice generated by the search device. This allows the searcher to concentrate on the terrain. Thus, contrary to the opinion of the defendant, EP '679 does not disclose features 2. and 2.1. The deviating opinion of the Swiss Federal Patent Court in its expert opinion is based on a very broad understanding of feature 2.1. which the Local Division Düsseldorf, as already stated, does not follow. Para. [0097] refers to the design of a search engine by stating "alternatively or additionally". 24 device that can issue voice instructions instead of or in addition to the true-to-life representation of the terrain. The possible combinations described paragraphs [0094] to [0097] , as already explained in the order of the Court of Appeal in the summary proceedings (UPC CoA 182/2024, order of 25.09.2024, R. 46 - Mammut v. Ortovox), to a "search device according to the invention" (paragraph [0097]). This is characterized by the fact that the position of the buried victim is determined "automatically" (para. [0008]). Since the search device according to EP '679 makes use of the earth's magnetic field as a reference coordinate system (para. [0015]), it is possible to graphically display the position of a buried victim relative to its own location (para. [0049]). It thus differs from "conventional" devices for locating by ear (para. [0004]), which require a high level of concentration, practice and low ambient noise from the searcher, especially at greater distances (para. [0004]) and, in the case of simultaneous reception of signals from several buried persons, an extraordinary amount of practice and a cumbersome search strategy (para. [0007]). While the search with "conventional" or conventional devices is based on the sound of the field lines, the position of the buried person relative to their own location is known with a "search device according to the invention". It can be left open whether, as a result, conventional guidance by means of a synthetically generated search button is required in addition to the output of the position of the buried objects relative to their own location via the display and whether this embodiment is covered by paragraphs [0049] and [0065]. Even if it is assumed in favor of the defendant that the possibility of a voice output according to paragraph [0097] is not an alternative or addition to a true-to-life representation of the terrain, but is understood as an arbitrary combination possibility of the modularly designed search device and thus the search device enables the output of sound signal and speech, features 2. and 2.1 are not disclosed. Para. [0097] does not provide the skilled person with any indication of the functional relationship between the voice output and the sound signal and how they relate to each other. Para. [0097] merely discloses that the device as such can enable a voice output for searching. Whether this is in a temporal relationship with a sound signal at all and, if so, how this relationship is functionally designed, remains open. The event required according to features 2 and 2.1, which initiates a voice message, is therefore missing. The defendant's contrary view, on the other hand, is characterized by a retrospective view, according to which the voice output described in EP '679 is used in a conventional search according to paragraphs [0049] and [0065] in an operative context. Also not disclosed is a control of the output of two acoustic signals and thus a control device within the meaning of feature group 4. b) WO '721 The subject-matter of claims 1 and 13 is also not anticipated in terms of novelty by WO '721, which was already taken into account in the grant procedure and recognized in the specification of the patent in suit. As the Court of Appeal has already elaborated in with a detailed statement of reasons in the summary proceedings (UPC CoA 182/2024, order of 25.09.2024, R. 180 - 183 - Mammut v. 25 Ortovox), the citation discloses not only the output of sound signals but also a device for speech output within the meaning of features 2. and 2.1. However, there is no anticipation of a device which additionally has features 3., 3.1. and 4. In particular, a disclosure of voice signals and sound signals cannot seen in the statements referred to by the defendants on page 5 of the citation, where it is stated: "In the context of the invention, an output device is understood to be any device that generates stimuli perceptible to the human senses, such as preferably optical stimuli in the form of optical displays and screens and/or acoustic stimuli in the form of buzzers or loudspeakers." (WO '721, p. 5, lines 16 - 19, emphasis added) This discloses an output device that can generate visual and/or acoustic stimuli. However, it is not directly and unambiguously disclosed that these stimuli can be generated by both a buzzer and a loudspeaker, so that both sound signals and voice messages can be generated (either in parallel or alternatively). In this respect, only "buzzers or loudspeakers" (emphasis added by the court) are mentioned. Contrary to the defendant's view, the use of the plural for buzzers and loudspeakers does not make it clear that different signals can be emitted simultaneously. The skilled person merely recognizes this as an indication that there are a large number of specific designs for optical displays, screens, buzzers or loudspeakers. Nothing else applies to the statements on page 11, lines 21 to 30, where it says: "This information can preferably be output on the output device signal-connected to the respective receiving device by means of correspondingly assigned signals, symbols or characters. Preferably, the information is on optical displays, such as LCD displays, TFT screens or the like. However, embodiments with LED direction arrows and LED distance scales are also conceivable. In convenient embodiments of the device according to the invention, a voice output device is which guides the user by voice to the person or object to be located." (emphasis added) This merely indicates that an output device with optical display or one with optical and acoustic output is possible. c) EN '217 Compared to DE '217, which was also considered in the granting procedure, the subject-matter of patent claim 1 also proves to be new. The buried object detector disclosed there has a receiving device that receives signals from a navigation satellite. First position values are calculated from this by means of a position calculating device. A transmitting device can send position values to the receiving device of another avalanche transceiver. The receiving device is also able to receive calculated second position values from another avalanche transceiver. A comparator compares the two position values and calculates the determination values, which make it possible to locate the other avalanche transceiver. The determination values are displayed on a 26 output device (claim 1). Based on this, the solution disclosed in DE '217 is characterized by the fact that the position of the buried victim is precisely determined and displayed on the basis of a comparison of the calculated position values and the position signals transmitted by the other burial search device (DE '217, p. 3, 2nd para.). Even if the output of the determination values necessary for localization on this basis can comprise a voice processor (see sub-claim 7 and p. 6, 4th para.), there is no disclosure of the output of at least one sound signal within the meaning of the patent in suit and thus in any case no disclosure features 3, 3.1 and 4 (see also: UPC CoA 182/2024, order of 25.09.2024, R. 190 - 192 - Mammut v. Ortovox). As already explained in detail, sound signal and voice message are not the same thing according to the technical teaching of the patent in suit. Rather, the invention protected by the patent in suit is characterized by the fact that the control device controls the loudspeaker in such a way that the sound signal is suppressed or at least output at a reduced volume during the output of the voice message. Such a partial suppression or reduction of the volume of the sound signal during the output of the voice message excludes an identity of both signals from the outset. The defendants correctly point out that an output device enabling the output of a speech signal is also suitable for outputting a sound signal. Moreover, in addition to the speech processor, the citation only mentions a display and a signaling device as further output devices (subclaims 6. and 8.). The latter is only described functionally in sub-claim 8 in that it emits a conspicuous signal when the first and second position values match. Even if the skilled person draws the conclusion from this functional description of such a signaling device that this signal - unlike the signal light mentioned on p. 6 in the third paragraph - can also be a signal tone, he will not find any indication in the citation to suppress such a tone during the output of the voice message or at least to reduce its volume. d) EP '011 Nor does EP '011 conflict with the novelty of patent claim 1. The citation relates to an avalanche transceiver comprising a receiving unit for determining a receiving direction of a transmitted signal, a processing unit and an acoustic signal generator (para. [0001]). A disadvantage of known search and transmission devices is that the search for a buried victim requires a lot of time and practice. During a search, it is difficult to concentrate on the topography of the avalanche cone, to simultaneously pay attention to the visual and/or acoustic display of the search and transmitting device and to coordinate the search with other searchers (para. [0008]). Based on this, the search process should be simplified so that it can be successfully completed more quickly (para. [0009]). As a solution, the citation proposes an avalanche transceiver that assigns different sound patterns to different spatial angles depending on the direction of reception (para. [0010]). The search and transmitting device comprises a receiving unit and a transmitting unit (par. [0055], lines 50 - 53; par. [0056], lines 4 - 5) as well as an acoustic signal generator with a loudspeaker (par. [0055], lines 38 - 41). In addition, the search and transmitting device comprises a visual display in which the direction of reception determined by the receiving unit can be displayed (par. [0064], lines 50 - 53). In contrast to the solutions known to date, the acoustic signal is not proportional to the 27 The direction of reception is signaled independently of the strength of the received transmission signal. Instead, the direction of reception is signaled independently of the strength of the received transmission signal. Therefore, no swivel movement of the avalanche transceiver is necessary (para. [0016]). For this purpose, the signal generator produces at least three tone patterns. The first tone pattern allows the direction of reception to be assigned to a front solid angle range, the second to a rear solid angle range and the third to a side solid angle range (par. [0010], [0017], [0018], [0020]). Alternatively, it is also possible to the receiving direction to more than 10 solid angle ranges. A quasi-continuous or even continuous display of the direction of reception is made possible by a corresponding number of tone patterns (par. [0034]). Preferably, the tone patterns differ in at least one of the characteristics of tone frequency, repetition rate, duration of the individual tones and volume of periodically repeated individual tones. A tone pattern can also include double tones or multiple tones, whereby their individual tones can in turn differ in the aforementioned characteristics. A temporal variation of individual or several characteristics within a tone pattern is also possible (para. [0039]). Thus, there is no disclosure of the generation of voice messages within the meaning of the contested patent (features 2., 2.1. and 4.). The sound patterns described in the citation consist exclusively of tones and differ in a combination of the parameters tone frequency, repetition rate of individual tones, duration of the individual tones and volume (para. [0045], lines 1 - 41). Instructions in the form of spoken words are not described there. Instead, the searcher should be able to read the direction of reception "intuitively" from the sound pattern generated by the signal generator (para. [0045], lines 54 - 56). Insofar as the defendants refer to paragraph [0046] of the citation in support of their differing view, it states: In the context of this description, the term "sound pattern" should also be understood to mean an empty or silent or inaudible sound pattern that does not include any sounds. This is the case, for example, if the signal generator is to remain silent, i.e. generate no or an inaudible acoustic signal, if the direction of reception has been assigned to one or more specific solid angle ranges." The term "acoustic signal" used here is merely used as a synonym for the term "sound pattern". This does not result in signaling in the form of speech. In contrast, to the extent that the defendants refer to DE 10 2014 204 630 A1 (Annex BB 1, Exhibit 58) and the paragraph [0009] therein for the definition of the term "sound pattern", according to which an acoustic source signal comprises all types of signals that can be output via the speakers of a headphone, for example spoken language, music, noises, tones, etc., this does not lead to a different assessment. Firstly, there is already no definition of "sound patterns". Only acoustic source signals are defined. Secondly, there is also no reference to the general understanding of the skilled person, which is why it cannot be inferred from the cited reference that the definition there is based on the general understanding of the skilled person (see also UPC CoA 182/2024, order of 25.09.2024, R. 168 - 170 - Mammut v. Ortovox). 28 II. Inventive activity 1. Scale According to Art. 56 EPC, an invention is considered to involve an inventive step if it is not obvious to a person skilled in the art from the prior art. According to the Munich Central Division (UPC CFI 1/2023 (CD Munich), decision of 16.07.2024 - Sanofi v. Amgen), which the Düsseldorf Local Division has already endorsed in the past (UPC CFI 363/2023, decision of 10.10.2024, ORD 598458/2023 - Seoul Viosys v. expert), the examination of inventive step always requires an assessment on a case-by-case basis, taking into account all relevant facts and circumstances. An objective approach must be . The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. The inventive step is to be assessed from the point of view of the person skilled in the art on the basis of the entire state of the art, including general technical knowledge. It must be assumed that the person skilled in the art had access to the entire generally accessible state of the art at the relevant time. The decisive factor is whether the claimed subject-matter is derived from the prior art in such a way that the skilled person would have found it on the basis of his knowledge and skills, e.g. by obvious modifications of what is already known. In order to assess whether or not a claimed invention was obvious to a person skilled in the art, it is first necessary to determine a starting point in the prior art. Reasons must be given as to why the skilled person would regard a particular part of the prior art as a realistic starting point. A starting point is realistic if its teaching would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a product or process similar to that disclosed in the prior art, i.e. having a similar basic problem to the claimed invention (cf. UPC CoA 335/2024, order of 26.02.2024, p. 34 - Nanostring v. 10x Genomics, under "cc" in the original German version, "For a person skilled in the art who was faced with the task at the priority date of the patent in suit, [...] D 6 was of interest"). There may be several realistic starting points, whereby it is not necessary to determine the "most promising" starting point. If the claimed subject-matter is compared with the prior art after interpretation, the question arises whether it would have been obvious for the skilled person to arrive at the claimed solution on the basis of a realistic disclosure of the prior art in view of the underlying problem. If it was not obvious to arrive at this solution, the claimed subject-matter fulfills the requirements of Article 56 EPC. In general, a claimed solution is obvious if, based on the prior art, the skilled person would be motivated (i.e. have an incentive, see the CoA in NanoString v. 10x Genomics, p. 34) to consider the claimed solution and use it as a next step ("next step", see UPC CoA 335/2024, order of 26.02.2024, p. 35, second paragraph - Nanostring v. 10x genomics) in the development of the prior art. On the other hand, it may be relevant whether the person skilled in the art would have anticipated particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to combine prior art disclosures. A technical effect or advantage conferred by the claimed subject-matter in comparison with the 29 to the prior art can an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step. One-sidedness must be avoided. The question of inventive step should not be answered by searching retrospectively for (combined) prior art disclosures from which this solution could be derived when the patented subject-matter or the patented solution is known. 2. Attacks Measured against this, the defendant's submission is not suitable for calling the inventive step into question. a) Based on the EP '679 Insofar as the defendants question the lack of inventive step on the basis of EP '679, the relevant considerations are based on the premise that the citation discloses all features of claim 1 with the exception of the control of the output of sound signal and voice message required in feature 4. The expert judge's opinion also starts from premise that claim 1 of the patent in suit differs from the technical teaching disclosed in EP '679 exclusively by feature 4 (or 1E in the feature classification of the Swiss Federal Patent Court). However, based on the above explanations, the decisive question is presented. The question arises as to whether the skilled person had any reason (at all) to display audio signals within the meaning of feature 3.1. together with voice messages to search results. In the opinion of the Court of Appeal, this is not the case in summary proceedings (UPC CoA 182/2024, order of 25.09.2024, R. 195 - Mammut v. Ortovox), whereby the local chamber shares this opinion, also taking into account the submissions in the main proceedings. EP '679 considers positioning purely by ear to be disadvantageous (para. [0007]) and therefore provides for independent position determination (para. [0009]). The distance and position are determined and shown on the display. The skilled person, who is faced with the task of simplifying the search, is led away from the use of sound signals in the caveat. Since the simultaneous use of a conventional search and the solution proposed in the caveat can lead to contradictory results, there is a risk of confusing the searcher. While the conventional search guides the searcher on a curved path along the magnetic field lines generated by the avalanche transceiver of the buried victim, the searcher is guided in a straight line the buried victim according to the search proposed in EP '679 (possibly with detours to avoid possible obstacles). Based on EP '679, the skilled person, who faced with the task of simplifying the search, is therefore led away from the use of the sound signals. This follows from the fact that the simultaneous use of conventional search and the search proposed in EP '679 can lead to contradictory results, which the risk of confusing the searcher. The conventional search would lead the searcher on a curved path along the magnetic field lines generated by the buried victim's avalanche transceiver, whereas the search proposed in EP '679 would lead the searcher in a straight line to the buried victim (possibly with detours to avoid possible obstacles). 30 Against this background, the subject-matter of claims 1 and 13 proves to be inventive on the basis of EP '679. b) Based on a classic avalanche transceiver The same applies to the combination referred to by the defendants, based on a classic "avalanche transceiver" and in particular US 2006/0148423 A1 (Exhibit 34), which has already been recognized in the specification of the patent in suit. In this respect, the defendants also assume that there is a lack of disclosure of a combination of sound signals and voice messages and thus also a lack of disclosure of a control of these two audio sources with each other. Based on this, the Court of Appeal denied inventive step in the summary proceedings, referring to the lack of a suggestion from the prior art. In the opinion of the Court of Appeal, such a suggestion does not arise in particular from the knowledge of the person skilled in the art that direction information of the GPS is displayed by means of voice output. The skilled person would refrain from a combination of directions by GPS and conventional audio signals because the simultaneous use of conventional search and directions by GPS could lead to contradictory results, which would not simplify the search but would confuse the searcher. The conventional search would lead the searcher on a curved path along the magnetic field lines generated by the avalanche transceiver of the buried victim, while the directional information via GPS would lead the searcher in a straight line to the buried victim (UPC CoA 182/2024, order of 25.09.2024, para. 202 - 204 - Mammut v. Ortovox). The Local Division Düsseldorf agrees with the opinion of the Court of Appeal, also taking into account the submissions in the main proceedings. Insofar as the Swiss Federal Patent Court nevertheless denies inventive step in the opinion of the expert judge, the considerations there are on the assumption that in the aforementioned EP '679 a voice message is issued in addition to a sound signal, which is why the expert judge opinion, unlike the Court of Appeal, considers features 2. and 2.1. to be disclosed in EP '679. However, as explained above, the Local Division Düsseldorf does not agree with this view, which is why the question of a combination of US '423 with US '857 (motor vehicle navigation systems), which is also raised in the opinion of the expert judge, does not arise. c) Based on WO '721 Insofar as the defendants continue to attempt to justify the lack of inventive step on the basis of WO '721, it is not apparent, even taking into account the defendants' statements in the main proceedings, what reason the skilled person should have to provide the avalanche transceiver disclosed therein with a control device which, depending on the conditions mentioned in notes 2.1., 3.1. and 4. anticipates an alternative control of the loudspeaker with voice messages and sound signals. As explained, the embodiment discloses buzzer and loudspeaker as alternatives and not in combination. The passage referred to on page 11, lines 21 - 30 describes the voice output device as a particularly convenient further development and therefore provides the skilled person seeking to simplify the search with a complete teaching that does not require supplementation. 31 The defendants also argue unsuccessfully in the main proceedings that the juxtaposition of two known technologies (voice guidance and guidance by the sound signal) cannot constitute an inventive step. This applies all the more as the alternative, alternating use of technical means known to be equivalent does not produce any further technical effect. It is not necessary to decide whether such a further technical effect is required for an inventive step. Contrary to the opinion of the defendant, the combination of sound signals and voice guidance has a technical effect that goes beyond the individual features. outputting at least one voice message, the search guided by the sound signals is additionally supported (para. [0008]). The dependence of the output of a voice message on the at least one event makes it possible to make the voice output dependent on certain search situations (para. [0013], see also UPC CoA 182/2024, order of 25.09.2024, para. 196 f. - Mammut v. Ortovox). d) Based on the DE '217 There is also no deviating assessment with regard to DE '217. In particular, a combination of voice messages and sound signals is not provided in claims 7 and 8. It may be that the person skilled in the art considers a signal tone for the conspicuous signal instead of a signal light. However, it makes no sense to suppress this sound signal when outputting the voice message or to output it at a reduced volume, since it must be a conspicuous sound signal. In any case, feature 4. is not disclosed (see also UPC CoA 182/2024, order of 25.09.2024, para. 198 f. - Mammut v. Orto- vox). III. Sufficient disclosure (Art. 83 UPCA) Even taking into account the submissions in the main proceedings, there is no significant doubt that the invention according to patent claims 1 and 13 is disclosed so clearly and completely that the skilled person can carry it out and thus the requirements of Art. 83 EPC are met. As the Court of Appeal has already worked out in detail in the summary proceedings, if the patent claims are correctly understood with regard to the control of the loudspeaker and a distinguishing criterion for the delimitation of voice message and sound signal, there is no lack of disclosure of the feasibility of the invention. Reference is made to the relevant comments UPC CoA 182/2024, order of 25.09.2024, para. 168 - 170 - Mammut v. Ortovox). D. Merits of the infringement action The infringement action is well-founded to the extent tenor. Since the attacked embodiment makes use of the technical teaching of the patent in suit in accordance with the wording, the defendants infringe the patent in suit directly (Art. 25 (a) UPCA) and indirectly (Art. 26 UPCA) by offering and selling the attacked embodiment. I. Rightly, the parties are also not in dispute in the main proceedings regarding the realization of feature group 1 and features 2. and 2.1. so that no further explanations are required in this respect. 32 II. In addition, the contested embodiment also makes use of the other features of the patent in suit. 1. As the Local Chamber already found in the previous summary proceedings, the at least one loudspeaker in the contested embodiment is designed to emit a sound signal that is associated with the search for at least one other avalanche transceiver (features 3. and 3.1.; UPC CFI 452/2023 (LK Düsseldorf), order of 09.04.2024, p. 14, point II.4.b). The Court of Appeal shared this view in the summary proceedings (UPC CoA 182/2024, order of 25.09.2024, para. 213 - Mammut v. Ortovox). Reference is made to the corresponding statements to avoid repetition. The defendant's submissions in the main proceedings do not provide any grounds for a different assessment. The sound patterns used in the challenged embodiment are acoustic signals different from voice messages and thus sound signals within the meaning of the patent in suit, irrespective of whether this technology is itself the subject of a patent (EP '011) of the defendant 1). In the present case, it can be left open whether the defendant can defend itself before the Unified Patent Court against the allegation of direct patent infringement by arguing that the attacked embodiment is already disclosed in the prior art on the basis of a certain interpretation (so-called "Gilette defense"cf: UPC CFI 373/2023 (LK Düsseldorf), decision of 31.10.2024, p. 23 - SodaStream v. Aarke). The mere use of sound signals or sound patterns known from the prior art is not in any case. As already explained above, EP '011 does not disclose the generation of voice messages as used in the attacked embodiment. The attacked embodiment is therefore not anticipated with all its features in the prior art. 2. Furthermore, the attacked embodiment also makes use of feature 4. in the alternative of "suppressing" in accordance with the literal meaning. It is undisputed that the search devices at issue two different signal sources, namely one for acoustic patterns (sound patterns) and the other for acoustic speech, whereby during operation of the challenged embodiment in search mode only one of the two sources is selected and reproduced via the loudspeaker, while the output of the other source is deactivated. If the voice message is output in the attacked embodiment, the audio signal is therefore not output. In other words, its generation is temporarily interrupted and thus suppressed within the meaning of the patent in suit. The parallel generation of both signals is, as the Local Board has already explained in detail, not a prerequisite for the realization of the technical teaching under protection. The defendants do not deny that the selection of a source and its reproduction via the loudspeaker is carried out by a control device within the meaning of the patent in suit (R. 171.2 VerfO). 3. It is undisputed and as can be seen on the video already submitted by the plaintiff in the summary proceedings as Annex KAP 32 to the file that the "Barryvox S2" shown at the ISPO trade fair in Munich had 33 via a voice output. Such a feature is also explicitly mentioned in the justification of the ISPO award. Even if at the time of the trade fair, as claimed by the defendants, it was not yet clear in which configuration the "Barryvox S2" would ultimately be launched on the market, the relevant public can assume, at least as long as they do not receive any deviating information, that the product ultimately delivered essentially corresponds to the device that was exhibited at the trade fair. This applies all the more if the product in question - as here - was awarded a prize at the trade fair and certain functions such as the voice output were emphasized in this context. Apart from that, the "Barryvox S2" could in any case already be (pre-)ordered on the B2B platform of the defendant's group of companies (see KAP 9 in the summary proceedings). The order overview submitted by the plaintiff also lacks any indication that the "Barryvox S2" is sold in different configurations and, in particular, without a voice output. There, too, purchasers therefore have no reason to assume that the device in question - unlike the award-winning model exhibited at the trade fair - does not have a voice output. 4. The fact that voice control is initially deactivated in the version of the "Barryvox S2" that is now commercially available and must be activated using the "Barryvox App" does not take it outside the scope of protection of the patent in dispute. The fact that the devices configured in this way not yet capable of making use of all the features of the patent in the delivery state until they are activated by the user in the absence of voice control does not prevent the technical teaching of the patent in suit from being realized in accordance with the literal meaning. Since the defendants the option of activation via the "Barryvox App", they their customers to use of this option. The fact that activation currently not available in certain areas, in particular in the Federal Republic of Germany and the Republic of Austria, does not prevent this. Since voice control was already emphasized at ISPO 2023 as one of the features of the challenged embodiment and (potential) purchasers are only informed that voice control is currently not available in Germany and Austria, among others, users have every reason to activate voice control in other countries as soon as they are outside the aforementioned territories. Only then will the full range of functions of the attacked embodiment be available to them. If such activation has taken place, the voice control is also available at least temporarily after returning to Germany or Austria. The defendants have not taken effective measures to prevent this. They must therefore be held responsible for such activation of the contested embodiment. 5. The use of the attacked embodiment also requires the use of the method according to patent claim 13. Reference is made to the above statements in order to avoid repetition. The other requirements for contributory patent infringement are also met, Art. 26 (1) EPC. In particular, the subjective element of indirect patent infringement is given. The defendants advertise the suitability of the accused embodiment for supplementary voice output in all search phases. Thus, it is not only obvious from the circumstances that the defendants know that the accused embodiment objectively suitable to be used in a patent-infringing manner, but also that the customers of the accused embodiment use it to carry out the patent-compliant process. The defendants would have 34 must therefore know the objective suitability for use in accordance with the patent and the intention of the user. The fact that the defendants now offer the challenged embodiment with the indication that the voice control is currently not available in Germany and Austria justifies no other assessment than the activation of the voice control, which is necessary for use and only possible in patent-free foreign countries. On the basis of the parties' submissions, it cannot be established that such a reference would always be linked to the attacked embodiment in such a way that it would certainly taken note of by its (potential) purchasers or users. defendants should have been aware of the fact that the attacked embodiment with a voice control activated in a patent-free foreign country can also be used with such a voice control, at least temporarily, in Germany, as well as the resulting intention of use of the users. This applies all the more since the voice control of the "Barryvox S2" was mentioned in the context of the "ISPO Awards 2023" presented at the "ISPO 2023" trade fair and can therefore represent a significant decision criterion for the purchase of such devices, at least for some users. III. Objection of older/better law Whether the objection of earlier or better law raised by the defendants can be raised before the Unified Patent Court does not need to be decided in the main proceedings either. As already explained by the local division in the summary proceedings and confirmed by the Court of Appeal, according to the principles developed by the Federal Court of Justice, the earlier right can only be invoked by the person who exclusively uses its teaching and does not make use of additional features that are only taught by the later property right (UPC CoA 182/2024, order v. 25.09.2024, para. 217 - Mammut v. Ortovox with reference to BGH, GRUR 2009, 655, para. 27 - Trägerplatte). However, the EP '011 referred to by the defendants in support of their objection does not anticipate all the features of claims 1 and 13. Reference is made to the above explanations in order to avoid repetition. IV. License screen With regard to the license objection raised by the defendants, the Local Division, like the Court of Appeal in the previous summary proceedings (UPC CoA 182/2024, order of 25.09.2024, para. 218 - 222 - Mammut v. Ortovox), is also unable to see why the patent in dispute should be the subject of the license agreement (see Annex BB 3). The patent in dispute is not among the patents listed there and thus licensed. In view of the clear provision in section 1 and the preamble, the fact that the license according to section 4 of the agreement should also refer to successor models of the "Pulse Bar- ryvox" does not mean that modifications that make use of patents other than those mentioned would be licensed (see also UPC CoA 182/2024, order of 25.09.2024, para. 222 - Mam- mut v. Ortovox). Insofar as the defendants wish to rely on the licensing of EP '679 against this background, their considerations are based on the premise that the citation for the patent in suit is outright prejudicial to novelty. However, as already explained, the Local Board does not share this view. 35 E. Legal consequences The previous statements justify the legal consequences explained in detail below: I. Determination of patent infringement The determination of patent infringement is based on Art. 64 para. 2 lit. a) UPCA. It forms the basis for the court to exercise its powers under Art. 56 et seq. UPCA (cf. on this point: Luginbühl/Hüttermann/Klein, Unitary Patent System, Art. 64 para. 8; Tilmann/Plassmann/Steininger, Unitary Patent/Court, R. 13 para. 19; see also: UPC CFI 210/2023 (LK Mannheim), decision of 22.11.2024 - Panasonic v. OPPO). II. Omission Taking into account the circumstances of the case, the plaintiff has a right to prohibit the continuation of the infringement pursuant to Art. 25 (a) UPCA and Art. 26 UPCA in conjunction with Art. 63 (1) UPCA. Art. 63 (1) UPCA. With regard to the requested injunction, it must be taken into account that the exclusive right is the core of the essence of patent law (Art. 25 UPCA). Refraining from an injunction is only possible in justified exceptional cases (see Tilmann/von Falck/Tilmann, Unitary Patent, Unified Patent Court, Art. 63 UPCA, para. 29 et seq.). However, no such reasons are apparent in the present case. Insofar as the defendants have defended themselves against an injunction on the grounds that the "Barryvox S2" simply does not exist, as only a prototype was shown at the "ISPO 2023" trade fair in Munich and no decision has yet been made on the final configuration, this argument has already become obsolete due to the fact that the "Barryvox S2" is now available. The fact that the plaintiff does not have to be referred to proceedings in Switzerland has already been explained in detail by both the Local Chamber and the Court of Appeal in the previous summary proceedings (UPC CFI 452/2024 (LK Düsseldorf), order of 09.04.2024, p. 28 f.; UPC CoA 182/2024, order of 25.09.2024, para. 244 f. - Mammut v. Ortovox). The corresponding statements also apply mutatis mutandis to the main proceedings. Nor can the defendants invoke possible third-party interests. It remains to be seen whether such interests can be taken into account at all in the context of Art. 63 (1) UPCA. In any case, the contested embodiment is not the only avalanche transceiver with voice support. Rather, such devices are also marketed by the plaintiff, which is why the availability of the attacked embodiments to improve the survival rate of avalanche victims is in any case not absolutely necessary (see also UPC CoA 182/2024, order of 25.09.2024, para. 246 - Mammut v. Ortovox). The defendants have already failed to conclusively demonstrate that the plaintiff is pursuing purely monetary interests with its action, as claimed by the defendants, which could be adequately taken into account by damages. The reference to the license agreement from 2010 submitted as Annex BB 5 does not lead any further at this point because, as explained, it does not cover either the patent in suit or the attacked embodiment. 36 III. Provision of information and accounting The decision to provide the requested information is based on Art. 25 (a), Art. 26 in conjunction with. Art. 67 para. 1 UPCA. The information is necessary to calculate the damages and to assess which method of compensation should be used. The subject of the information is also the disclosure of accounts requested in the request under IV.2 ("to disclose their accounts [...] by providing [...] the following documents"). The Local Chamber of Düsseldorf agrees with the opinion of the Local Chamber of Mannheim (UPC CFI 210/2023, decision of 22.11.2024, para. 179 - Panasonic v. OPPO) that, on a reasonable assessment of the plaintiff's submissions, the request is not aimed at verifying the accuracy of the information and accounts provided within the meaning of R. 141 et seq. VerfO. Rather, in terms of content, the plaintiff is requesting the submission of accounts with supporting documents, which is also based on Art. 68 (3) UPCA, R. 191 RP. This is expressed more clearly in the alternative request submitted by the plaintiff, which is why the operative part - also in contrast to R. 141 RP - is formulated on the basis of this alternative request. The aforementioned rules contain a substantive entitlement to demand information that the injured party needs in order to be able to check the validity of the claims and to obtain indications for their calculation of damages. Efficiency aspects in particular speak in favor of this, as this can save further procedural steps (see UPC CFI 7/2023 (LK Düsseldorf), decision of 03.07.2024, p. 29, F. II. b - Kaldewei v. Bette). In addition, the patent proprietor may, within the scope of this right of transmission, also request documentary evidence for the information under Art. 67(1) UPCA, namely invoices or - if these are not available - alternatively delivery bills. Apart from the interest in the pure information that the patent proprietor receives under Art. 67(1) UPCA, it is also worth recognizing his interest in being able to check the accuracy of this information, at least on a random basis (UPC CFI 7/2023 (LK Düsseldorf), Entscheidung v. 03.07.2024, p. 29, F. II. b - Kaldewei v. Bette; UPC CFI 210/2023, decision of 22.11.2024, para. 179 - Panasonic v. OPPO). The possibility of redaction in the pronouncement takes into any confidential information (R. 191 p. 2, R. 190.1 p. 2 VerfO). The requested auditor's reservation allows for an appropriate balance between the infringed party's interest in accurate information and the infringer's justified confidentiality interests. Since the auditor may only work to the extent specified in the decision and is also obliged to maintain confidentiality towards the infringed party, the selection can also be made by the infringed party (see UPC CFI 210/2023, decision of 22.11.2024, para. 180 - Panasonic v. OPPO). IV. Recall and removal from distribution channels The decision regarding the recall from the distribution channels in respect of the directly infringing products is justified under Art. 25(a) UPCA in conjunction with Art. 64 para. 2 (b), 4 UPCA. Art. 64(2)(b), 4 UPCA. The most recent version of the request is also not objectionable from the point of view of certainty. The same applies with regard to the requested permanent removal from the distribution channels. In this respect, the requested order finds its basis in Art. 25(a) UPCA in conjunction with Art. Art. 64(2)(d), 64(4) UPCA. According to the wording of the UPCA, the final removal from the distribution channels is a 37 independent measure that is separate from the recall. It accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal possibilities to do so. The formulation of concrete and sufficiently specific measures must be based on this (see UPC CFI 7/2024 (Düsseldorf Local Chamber), decision of 03.07.2024 - Kaldewei v. Bette). The wording of the claim takes sufficient account of this. Since products that only give rise to an allegation of contributory patent infringement not "subject-matter of the patent", there is generally no scope for ordering recall and removal from the distribution channels (UPC CFI 140/2023 (LK Mannheim), Entscheidung v. 22.11.2024, para. 184 - Panasonic v. OPPO; on German law: Benkard/Grabinski/Zülch/Toch- termann, § 140a PatG, para. 14). V. Destruction The destruction order is based on Art. 25(a) UPCA in conjunction with Art. Art. 64(2)(e), Art. 64(4) UPCA. Destruction is intended to reliably prevent the products from entering or re-entering the market (Tilmann/von Falck/Tilmann, Unitary Patent, Unified Patent Court, Art. 64 UPCA, para. 33). On this basis, the abstract possibility that the challenged embodiment may be transferred to a patent-free foreign country does not constitute a reason to refrain from destruction with regard to direct patent infringement, because such a direct patent infringement also a direct patent infringement within the meaning of Art. 25(a) UPCA. With regard to indirect patent infringement, on the other hand, such a possibility of transfer abroad generally precludes an order for destruction (cf: Kühnen, Handbuch der Patentverlet- zung, 16th ed., Section D, para. 1015), which is why the destruction order in the present case had to be limited to direct infringement. A software-based deactivation of the voice control could only speak against destruction if it were ensured that the devices at issue could not be put into a patent-infringing state again when using such a solution and could then be placed on the market. However, the defendants were not able to present such a solution. On the contrary, they themselves conceded at the hearing that the initially deactivated voice function can be activated on devices sold in Germany and Austria in patent-free foreign countries. Such an activated voice function indisputably remains active, at least temporarily, even if the device subsequently returned to Germany or Austria. Such a software solution is therefore not suitable to permanently and safely put the challenged embodiments into a patent-free state. On the basis of the facts and the state of the dispute at the end of the oral hearing, the local chamber is not able to determine that such reactivation of the voice function can be prevented with a different software solution tailored to Germany and Austria. VI. Determination of liability for damages on the merits The award of damages on the merits is possible on the basis of Art. 68 (1) UPCA. With due care, the defendants should have recognized that they were infringing the patent in suit by their actions. After the attacked devices were at least offered in the past, it is 38 the resulting preliminary injunction is no reason to refrain from establishing liability for damages on the merits. Even if the defendants have fully complied with the preliminary injunction, which can be assumed in their favor at this point, they are liable to the plaintiff for damages with regard to previous acts of infringement. VII. Provisional damages Pursuant to R. 119 VerfO, the court may award provisional damages to the successful party under conditions it determines, which should at least cover the provisional costs of the damages and compensation proceedings on the part of the successful party. In this context, it must be taken into account that the value in dispute of the damages proceedings does not necessarily to that of the infringement proceedings. Rather, the value in dispute is based on the calculation of the damages to which the plaintiff is entitled in accordance with R. 131.2 lit. e) VerfO. Since there is no corresponding calculation on the part of the plaintiff, the fixed fee of EUR 3,000, which is always incurred, can only be taken into account in favor of the plaintiff (see R. 132 VerfO in conjunction with Section I. of the court fee table). Insofar as the plaintiff refers to the lawyer's and patent attorney's fees incurred for the damages assessment proceedings to justify the provisional damages claimed by it, there is no corresponding submission in this regard. A reference to RVG fees is unhelpful at this point. These are also dependent on the amount in dispute. However, it is not yet possible to estimate how high the value in dispute of the damages proceedings will be. With regard to the damage caused by possible sales of the challenged embodiment, which the plaintiff continues to use to justify the preliminary damages, it must be taken into account the plaintiff obtained a preliminary injunction before the start of sales. The plaintiff has not been able to demonstrate that it has nevertheless suffered damages at least in the amount claimed as provisional damages. VIII. No publication of the decision Exercising the discretion granted to it, the local chamber sees no reason to permit publication in the present case. Art. 80 UPCA leaves it to the discretion of the court whether or not to allow such publication. It must be taken into account that publication also contains an additional element of sanction. For such an order to be issued, the plaintiff's interest in publication must outweigh the negative consequences of such publication for the defendant. In the rule case, permission for publication can only be considered if the protection of the plaintiff is not already guaranteed by other measures (UPC CFI 373/2023 (LK Düsseldorf), decision of 31.10.2024 - SodaStream v. Aarke). On the basis of these principles, no reasons have been presented or are apparent that would justify allowing publication in the present case. Insofar as the plaintiff attempts to justify its request for publication of the judgment with various offers of the challenged form of execution, there is nothing to suggest that this would, as the plaintiff claims, justify publication of the judgment. 39 would have led to market confusion, which would make the requested publication of the judgment necessary. Rather, from the point of view of proportionality, the pronouncement pursuant to Art. 64 (2) UPCA is sufficient in this respect. IX. Threat of coercive measures The threat of a penalty payment for failure to act (Art. 63 para. 2 UPCA) does not raise any objections. This also applies from the point of view of proportionality. The threat for the measures of disclosure, information, recall, removal and destruction based on Art. 82 (1) and (4) UPCA, R. 354.3 VerfO (UPC CFI 7/2023 (LK Düsseldorf), decision of 03.07.2024, p. 31, F. 5. - Kaldewei v. Bette). The threat of a penalty payment gives the local division the necessary flexibility to take into account the circumstances of the individual case, including the infringer's conduct, in the event of an infringement and, based on this, to be able to impose an appropriate penalty payment in accordance with Art. 82 para. 4 sentence 2 UPCA in conjunction with R. 354.4 RP. R. 354.4 VerfO to be able to impose an appropriate penalty payment. F. Basic cost decision Pursuant to Art. 69 para. 2 UPCA in conjunction with R. 118.5 of the Rules of Procedure, a basic decision on costs had to be made. Since the defendants have lost the action in its entirety, it is justified to order them to pay the costs in their entirety and to pay half of the costs in each case. The same applies to the unsuccessful action for annulment. The defendants must also each bear half of the costs. In addition, the defendants are also obliged to reimburse the plaintiff half of the costs of the preceding summary proceedings. G. Reimbursement cap The determination of the upper limits for reimbursable representative costs is based on the decision of the Administrative Committee on the upper limits of reimbursable costs of April 24, 2023 (D - AC/10/24042023 D). Contrary to the opinion of the defendant, a corresponding upper limit must be set for the procedure for ordering interim measures and for the main proceedings. Even if, in the opinion of the Düsseldorf Local Chamber, no basic decision on costs is usually required in summary proceedings (see most recently: UPC CFI 347/2024, order of 31.10.2024, p. 41 f. - Valeo v. Magna), this does not mean that the representation costs incurred in summary proceedings are not separately recoverable. Rather, only the settlement of these costs is reserved for a uniform cost determination procedure following the main proceedings, taking into account any amounts already paid by way of provisional cost reimbursement (see R. 211.1 (d) VerfO). If these costs are separately recoverable, this also requires the determination of a corresponding upper reimbursement limit for the summary proceedings. H. No security deposit Pursuant to Art. 82 para. 2 UPCA, R. 118.8 p.2 of the Rules of Procedure, the court may take any order or measure 40 from a security deposit, which it must set. However, the local chamber sees neither a reason nor a need for such an order in the present case. I. As the wording of the aforementioned standard already makes clear, the local division has discretion when ordering the provision of security, whereby the plaintiff's interest in the effective enforcement of its property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event that the judgment is subsequently set aside. A case-by-case assessment is therefore always required. The factors to be taken into account when considering whether to order security include the financial situation of the plaintiff, which may give rise to justified and real concerns that a possible claim for damages cannot enforced and/or enforced at all or only at disproportionate expense if the decision at first instance is set aside or amended. Whether and to what extent such factors exist is to be determined on the basis of the facts and arguments presented by the parties, no differently than in the case of an application for security pursuant to R. 158 VerfO. If the local division makes an order or measure dependent on the provision of security, this serves to protect the position and potential rights of the defendant. Its protection must weighed against the burden placed on the plaintiff by the order to provide security. Against this background, it is up to the defendant to present facts and arguments as to why it appears appropriate in the specific case to make the order or measure dependent on a security deposit to be determined by the court in accordance with R. 118.8 of the Rules of Procedure. If the defendant has complied with this, it is the plaintiff's responsibility to substantiate these facts and reasons, especially as he usually has knowledge and evidence of his financial situation. It is also the plaintiff's task to explain, if necessary, why, despite the reasons put forward by the defendant, his interest in enforcing his property right without the provision of security prevails (see UPC CFI 363/2024 (LK Düsseldorf), decision of October 10, 2024, ORD 598458/2023 - Seoul Viosys v. expert), on the application for provision of security pursuant to R. 158 RP: UPC COA 328/2024, order of 26.08.2024 - Ballinno v. Kinexon Sports; UPC CFI 373/2024 (LK Düsseldorf), order of 05.08.2024 - SodaStream v. Aarke; UPC CFI 514/2023 (LK Munich), order of 23.04.2024 - Volkswagen v. NST m.w.N.). On the basis of these principles, the defendants have not put forward any reasons for making enforcement in the present case dependent on the provision of security. The exclusion of the challenged embodiment from the German and Austrian markets referred to by the defendants in this context, as well as the associated possible loss of market share, is the regular consequence of an injunction and is not in itself capable justifying the ordering of a security deposit, even if the lost market share (possibly) cannot be regained over a longer period of time. The Local Court therefore refrained from ordering such a security. Pursuant to R. 118.8 of the Rules of Procedure, the orders referred to in R. 118.1 and 2 of the Rules of Procedure are only enforceable after the plaintiff has notified the court which part of the orders he intends to enforce, he has submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is to take place in accordance with R. 7.2 and after the notification and, if applicable, the certified translation have been served on the defendant by the Registry. This also applies to the injunction. There is no reason for the differentiation between injunction (directly enforceable) and destruction, recall, removal and information (enforceable after service of a corresponding notice) sought by the plaintiff in her applications. 41 I. No suspension or conditional sentence Since the Local Division Düsseldorf decides on both the infringement action and the nullity counterclaim, there is neither reason nor scope for a stay, at least in the first instance. Either the local division does not consider the patent in suit to be protectable both in the granted version and on the basis of the auxiliary requests. In this case, the patent in suit is destroyed and the infringement action has no basis. Or the patent is (as here) maintained without restriction or restricted. In this case, the local division has decided - in the main proceedings - on the legal validity of the patent in suit and considered it to be legally valid in the maintained version. In this case, there is no reason for the local division to question this decision itself by suspending the proceedings until the final conclusion of the nullity proceedings. A conditional condemnation, as the defendants are seeking in the alternative, is only provided for in R. 118.2 RP in the event that nullity proceedings between the same parties are pending before the central division or, alternatively, an opposition is pending before the EPO. Neither is the case here. For the reasons just mentioned, there is neither an unintended regulatory gap nor the same interests for an analogy. 42 DECISION: A. I. It is established that the defendants have infringed European patent 3 466 498. II. The defendants are prohibited from doing so, 1. Avalanche transceivers to offer, place on the market or use in the Federal Republic of Germany and/or the Republic of Austria, or to import or possess for these purposes, with at least a transmitter unit for transmitting at least one transmission signal, a receiver unit for receiving at least one transmission signal from at least one further avalanche transceiver, and with a control device for controlling at least one loudspeaker, wherein the control device is designed to control the at least one loudspeaker to output at least one voice message depending on at least one event, wherein the at least one event is associated with a search for the at least one further avalanche transceiver, wherein the avalanche transceiver has the at least one loudspeaker and the at least one loudspeaker is designed to emit at least one sound signal, characterized in that the at least one audio signal is associated with the search for the at least one other avalanche transceiver, wherein the control device is designed to control the at least one loudspeaker in such a way that the at least one sound signal is suppressed during the output of the at least one voice message or is output at a reduced volume; 2. Devices suitable for carrying out a method for operating a la- wine burial detector in the Federal Republic of Germany and/or the Republic of Austria for use in the Federal Republic of Germany and/or the Republic of Austria to offer and/or deliver, 43 wherein the method comprises at least the following: a transmission unit for transmitting at least one transmission signal, a receiver unit for receiving at least one transmission signal which is emitted by at least one further avalanche transceiver, in which a control device of the avalanche transceiver controls at least one loudspeaker, wherein the control device controls the at least one loudspeaker in such a way that the at least one loudspeaker emits at least one voice message, wherein the at least one loudspeaker is activated by the control device as a function of at least one event which is associated with a search for the at least one further avalanche transceiver, the avalanche transceiver has at least one loudspeaker and the at least one loudspeaker emits at least one sound signal, characterized in that the at least one audio signal is associated with the search for the at least one other avalanche transceiver, wherein the control device controls the at least one loudspeaker in such a way that the at least one sound signal is suppressed during the output of the at least one voice message or is output at a reduced volume. III. In the event of any infringement of the orders under II.1. and II.2., the defendants shall pay a (possibly repeated) penalty payment up to EUR 10,000.00 per product and/or up to EUR 30,000.00 in the case of permanent acts, such as offers on the Internet. IV. The defendants are ordered to pay, at their own expense 1. to destroy at its own expense the products in its direct or indirect possession and/or ownership referred to in II.1. above or, at its discretion, to hand them over to an executor to be appointed by the plaintiff for the purpose of destruction; 2. the products named under Section II.1. and placed on the market since December 4, 2019, in writing to commercial customers with reference to the patentability determined by the Unified Patent Court. 44 The plaintiff must be provided with a sample of the recall letters and a list of the addressees with their names and postal addresses or - at the defendant's discretion - a copy of all recall letters; 3. to permanently remove the products referred to under II.1. that have been on the market since December 4, 2019 from the distribution channels, in particular by taking the following measures: a) the defendants must take all possible and reasonable measures to identify the locations and owners of the products referred to in section II.1; b) to the extent that the defendants themselves have legal or actual power of disposal over the products referred to in section II.1, the legally permissible and reasonable measures must be taken ensure that these products come into the direct possession of the defendants and remain there; c) Insofar as the defendants have neither legal nor actual power of disposal over the products referred to in section II.1, they must take all legally permissible and reasonable measures to induce the persons who have claims for surrender or destruction against the holders of the power of disposal of the products to assert these claims and/or to support these persons in asserting these claims. V. The defendants are sentenced, 1. to provide the plaintiff, in a list structured for each month of the calendar year and by patented products from December 4, 2019, with information on the products mentioned under II.1. and II.2. on a) the origin and distribution channels of the products mentioned; b) the quantities delivered, received or ordered and the prices paid for the products mentioned under No. II; c) the identity of all third parties involved in the distribution of the products mentioned under II.1. and II.2; 2. to provide the plaintiff with the following documents for each month of a calendar year and for each infringing product in electronic form, which can be analyzed with the aid of a computer, as proof of the information provided in accordance with No. V.1. plus the information on the profit made: 45 a) invoices - or, if these are not available, delivery bills - for the individual deliveries, breaking down the respective deliveries according to quantities offered, offer times, prices of the goods offered and type designations as well as the names and addresses of the commercial recipients of the sales offers for all products sold or otherwise disposed of; b) Evidence of the advertising carried out, including evidence of these advertising activities, breaking down the advertising carried out by advertising medium, its distribution, the distribution period and the distribution area; c) Proof of costs, with breakdown of costs by individual cost factors and the profits made; d) Invoices - or, if these are not available, delivery bills - and corresponding statements of all costs incurred, on which the defendants rely in calculating their profits; the accuracy of which is audited and confirmed by a sworn auditor appointed by the plaintiff at the defendant's expense, whereby the auditor is obliged to maintain confidentiality towards the plaintiff beyond the above-mentioned information. VI. It is established that the defendants are obliged to compensate the plaintiff as joint and several debtors for any damage caused to the plaintiff as a result of actions pursuant to II.1. and II.2. has arisen since December 4, 2019 or arise in the future. VII. The defendants are ordered to pay the plaintiff as joint and several debtors an amount of EUR 3,000 as provisional damages. VIII. In all other respects, the action for infringement is dismissed. B. The action for annulment is dismissed. C. The defendants shall each bear half of the costs and expenses of the proceedings concerning the order for interim measures. The plaintiff shall bear 80 % of the costs of the infringement proceedings and the defendants shall each bear 10 %. The defendants shall each bear half of the costs of the action for annulment. D. The amount in dispute in the proceedings for interim measures is set at EUR 500,000. The amount in dispute for the action and the action for annulment is set at EUR 1,000,000.00 each. 46 fixed. E. The upper limit of the reimbursable representation costs is set at EUR 56,000 for the proceedings for the ordering of interim measures. The upper limit of the reimbursable representation costs for the action and the counterclaim for annulment is set at a total of EUR 200,000. F. The orders in subparagraphs A.II. to VII. shall be enforceable only after the claimant has notified the court which part of the orders it intends to enforce and has submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is to take place and after the defendants have been served with the notification and the (respective) certified translation. G. Upon expiry of a period of 45 days after service pursuant to letter F., the defendants shall pay to the court a penalty payment of up to EUR 30,000.00 per day of delay to be determined by the court in the event of any infringement of one of the orders referred to under A. IV., V. and VII. DETAILS OF THE ARRANGEMENT: Main file reference ACT 2379/2024 and CC 17292/2024 UPC number: UPC CFI 16/2024 Type of proceedings: Action for infringement and action for annulment Düsseldorf on January 14, 2025 NAMES AND SIGNATURES Presiding Judge Thomas Ronny Digital signed from Ronny Thomas ThomasDate: 2025.01.09 17:53:12 +01'00' Legally qualified judge Dr. Thom Anna Digitally signed by Bérénice Anna Bérénice Dr. THOM Dr. THOM Date: 2025.01.09 18:12:28 +01'00' 47 Legally qualified judge Dr. Schober Walter signed by Digital Walter Schober Schober Date: 2025.01.10 12:53:02 +01'00' Technically qualified judge Dr. Wismeth Erwin Digitally signed by Erwin Hermann Hermann WISMETH WISMETH Date: 2025.01.10 13:47:44 +01'00' For the Deputy Chancellor Boudra-Seddiki Digitally signed Rachida from Rachida Boudra- Seddiki Boudra-Seddiki Date: 2025.01.10 15:33:39 +01'00' APPOINTMENT INFORMATION: An appeal against this decision may be lodged with the Court of Appeal within two months of service of the decision by any party whose petitions have been wholly or partially unsuccessful (Art. 73 para. 1 UPCA, R. 220.1 (a), 224.1 (a) RP). Information on enforcement (Art. 82 UPCA, Art. 37 para. 2 EPGS, R. 118.8, 158.2, 354, 355.4 RP): A certified copy of the enforceable judgment is issued by the Deputy Registrar at the request of the enforcing party, R. 69 RegR. This decision was announced at a public meeting on January 14, 2025. Presiding Judge Thomas Anna Bérénice Dr. THOM Digitally signed by Anna Bérénice Dr. THOM Date: 2025.01.14 09:07:26 +01'00'

Key Holdings

• If a device in its offered or marketed state is not yet capable of making use of all the features of the patent claim because it first requires the activation of certain functions by the customer, the alleged infringer must accept responsibility for the conduct of his customers if he induces them such activation or if he deliberately exploits such activation by the customer in the knowledge that such activation will take place.
• Destruction is intended to reliably prevent the products from entering or re-entering the market. The possibility of a software-based deactivation of a certain function necessary for the realization of the claimed technical teaching can only speak against destruction if it is ensured that the attacked embodiment cannot be put into a patent-infringing state again when using such a solution.
• Art. 80 UPCA leaves it to the discretion of the court whether or not to order such publication. For such an order to be issued, the plaintiff's interest in publication must outweigh the necessary consequences of such publication for the defendant. As a rule, such publication can only be considered if the protection of the plaintiff is not already guaranteed by other measures.

Tags

• Destruction
• Direct Infringement
• Indirect Infringement
• Inventive Step
• Novelty
• Publication of Decision
• Recall

Related Rules

• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 5 – Liability
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 1 – Unified Patent Court
• Art. 2 – Definitions
• Art. 2 – Definitions
• Art. 2 – Definitions
• Art. 3 – Scope of application
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 2 – Definitions
• Art. 7 – The Court of First Instance
• Art. 7 – The Court of First Instance
• Art. 6 – The Court
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry

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• UPC_CFI_115/2024; UPC_CFI_377/2024 – Hartman v Omni-Pac
• UPC_CFI_181/2025_July23 – Qiagen v bioMérieux
• UPC_CFI_315/2024 – Labrador v bioMérieux