Mammut Sports Group v Ortovox Sportartikel (CFI, 14 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 14 January 2025 (UPC_CFI_16/2024), given in German, the Düsseldorf Local Division upholds Ortovox Sportartikel’s EP 3 466 498 (avalanche transceiver), dismisses the counterclaim for revocation of Mammut Sports Group AG and Mammut Sports Group GmbH and finds that the Barryvox S2 infringes. The decision is useful on three points: a supplier is answerable for customers activating a function delivered in deactivated form, destruction may be ordered unless a software deactivation reliably ensures a lasting non-infringing state, and publication is a matter for the court’s discretion, refused here for want of a demonstrated need.

Facts and procedure

The patent, granted on 4 December 2019, covers a transceiver whose loudspeaker outputs a voice message relating to the search, the search tone being suppressed or reduced while the message plays. The Barryvox S2 was shown and won an award at ISPO Munich in November 2023. Ortovox obtained provisional measures for Germany and Austria (UPC_CFI_452/2023), upheld on 9 April 2024 and confirmed on appeal on 25 September 2024. The main action was filed on 17 January 2024 and the counterclaim on 2 April 2024. A nullity action against the Swiss part is pending before the Swiss Federal Patent Court.

The applicable law

Absent a timely preliminary objection, jurisdiction is established (Rule 19.7 RoP). Validity is governed by Arts 54, 56, 83 and 138 EPC, construction by Art. 69 EPC. Infringement falls under Arts 25(a) and 26 UPCA, remedies under Arts 63, 64, 67, 68 and 80 UPCA.

Question

Is the patent valid, does the Barryvox S2, delivered with a deactivated voice function that an app can activate, infringe it, and which remedies follow?

Decision

A « sound signal » covers any tone relating to the search, including tone patterns, and a « voice message » requires words. The claim requires the loudspeaker control to suppress or reduce the tone during the message, the division departing on one point from the Swiss technical judges’ opinion. Claims 1 and 13 are novel over EP ‘679, WO ‘721, DE ‘217 and EP ‘011, which discloses only tone patterns. Inventive step is acknowledged from each of these starting points, the division following the Court of Appeal’s analysis in the provisional proceedings, and disclosure is sufficient. The Barryvox S2 literally infringes claim 1 and indirectly infringes claim 13: the voice function, deactivated on delivery and unavailable in Germany and Austria, can be activated abroad and stays active on return, which is attributed to the defendants. The prior right and licence defences fail.

An injunction is granted for Germany and Austria, without deferring to the Swiss proceedings and without giving decisive weight to third-party interests, since other voice-assisted devices exist. Information and supporting documents, subject to an auditor proviso, are ordered. Recall, removal and destruction are confined to directly infringing products. Liability is established from 4 December 2019, but the interim award is limited to EUR 3,000 for want of a damages calculation. Publication is refused. Penalty payments reach EUR 10,000 per product or EUR 30,000 for continuing acts. No security, stay or conditional judgment is ordered. The defendants bear the costs of the provisional proceedings and of the counterclaim. For the infringement action, the operative part puts 80% of the costs on the claimant and 10% on each defendant, whereas the reasons put them entirely on the defendants. The value is EUR 1,000,000 per action, and the ceilings for recoverable costs are EUR 200,000 for the main proceedings and EUR 56,000 for the provisional proceedings.

Key points for practice

• A product delivered without the patented function but which the customer can activate infringes where the supplier encourages activation or knowingly exploits it.
• Destruction is avoided only if a software solution reliably and permanently prevents infringement.
• An interim award under Rule 119 RoP requires a quantified damages claim. Failing that, only the fixed fee for damages proceedings is covered.
• Practical point: the costs allocation in the operative part should be checked against the reasons, and a discrepancy warrants an application for rectification or an appeal.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 26, 32(1)(e), 63, 64, 67, 68, 69, 80 and 82

Rules of Procedure

Rules 19.7, 30.1, 118.2, 118.5, 118.8, 119, 131.2, 171.2, 191, 211.1 and 354.3

European Patent Convention

Art. 54, 56, 69, 83 and 138(1)

Regulation (EU) No 1215/2012

Arts 24(4), 71a(2)(a) and 71b(1)

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, Ortovox v Mammut, Düsseldorf Local Division, 9 April 2024, Mammut v Ortovox, Court of Appeal, 25 September 2024, Sanofi v Amgen, Munich Central Division, 16 July 2024, Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024, Seoul Viosys v expert, Düsseldorf Local Division, 10 October 2024, SodaStream v Aarke, Düsseldorf Local Division, 31 October 2024, Panasonic v OPPO, Mannheim Local Division, 22 November 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.