A recent UPC case, Brita v. AquaShield (UPC_CFI_248/2024), held at the Munich Local Division, has sparked interest for its approach to claim interpretation, exhaustion of rights, and perhaps most notably — indirect infringement with contextual calculation of remedies. This decision highlights the UPC’s pragmatic approach rooted in commercial awareness, which undoubtedly helps support its continued popularity.
Brita, the water filtration systems giant, asserted its patent EP2387547B1 (covering a valve actuating device for filtration jugs) against AquaShield for distributing third-party cartridges marketed as compatible with Brita products.
Claim Interpretation
Claim 1 recited "a valve actuating device of a valve". Whilst Brita argued that claim 1 protects only the valve actuating device, AquaShield argued for protection of both the valve actuating device and the valve. The Court agreed with Brita in finding that the “purpose features” limited the claim only to objective suitability, and not to the functional language.
The decision is a cautionary note to patent attorneys. Despite the UPC NanoString and EPO G1/24 cases stressing recourse to the description for claim interpretation, the Brita decision stresses the continued importance of claim clarity and the impact of the knock-on effect of dependent claims.
Exhaustion of rights defence
The decision gave some depth to the UPC’s interpretation on exhaustion covering the intended use of a patented product, including normal maintenance and restoring use. The defence was rejected, with the court finding expert opinions on national approaches non-persuasive. The case confirms that exhaustion covers maintenance/replacement but not remaking, and that whether the product’s identity is preserved is key.
Indirect Infringement and contextual remedies
The decision is one of the few at the UPC to date to have found no direct infringement, but indirect infringement.
Having found substantial non-infringing uses, the Court was cautious in shaping remedies, and did not order uncaveated prohibitions. The remedies included:
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For commercial customers: AquaShield must include warning notices stating cartridges cannot be used without Brita's consent in patent-protected systems.
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For private end consumers: AquaShield must include clear warnings that cartridges are not suitable for use in liquid containers of certain Brita products.
Key takeaways
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Case law is still developing on claim interpretation at the UPC, and for now at least, there is no complete harmonization with the EPO.
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Use of an exhaustion of rights defence is something patent attorneys will see increasingly at the UPC, and an area in which in complex cases, multidisciplinary teams can offer an advantage.
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Remedies for indirect infringement at the UPC are likely to be carefully tailored to business context, highlighting the UPC's commercial lens.
In summary, the decision highlights the UPC's pragmatic and commercially focused approach, whilst signalling differences between UPC and EPO practice that are open for users to leverage.