Hand Held Products v Scandit (CFI, 27 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 27 August 2024 (UPC_CFI_74/2024, ACT_9216/2024), the Munich Local Division (Zigann, Kupecz, Pichlmaier) ruled on the application for provisional measures by Hand Held Products, proprietor of the unitary patent EP 3 866 051 on barcode readers, against Scandit AG, publisher of a software development kit. It held the application partly well founded: indirect infringement of claims 1 and 10 is found with sufficient certainty, but direct infringement of claim 1 is not. It prohibited Scandit, in seventeen States, from offering and supplying its kit by way of an absolute prohibition, with a penalty of up to EUR 100,000 per day, enforcement being conditional on a security of EUR 500,000 deposited by the applicant.

Facts and procedure

The patent, filed on 8 November 2013, was granted on 21 February 2024, the day the application was filed. Unitary effect was registered on 27 March 2024. It protects a device (claim 1) and a method (claim 10) displaying a product image at the location of a decoded indicia, using a lookup table taken from a database. The target is Scandit’s Data Capture SDK, in particular its BarcodeTrackingAdvancedOverlay function, shown in two promotional videos. The applicant sought an absolute prohibition with penalties, primarily for direct and indirect infringement and in the alternative on narrowed claims. Scandit disputed infringement, validity (two prior applications and a Japanese patent), urgency, necessity and proportionality. The hearing took place on 19 June 2024. A counterclaim for revocation is pending in the main action.

The applicable law

Entitlement follows from Art. 47(1) UPCA and Rule 8.5 RoP. The division applies Rules 206 and 211 RoP and Arts. 25, 26 and 62 UPCA, and construes the claims under Art. 69 EPC and its Protocol, from the standpoint of a team of an electrical engineer and a software engineer.

Question

Does the publisher of a software development kit directly infringe a device claim, or only indirectly, where its customers programme and assemble the patented device?

Decision

The database is not part of the protected device, so its location is irrelevant, and the product image may be displayed over or beside the indicia. Feature 1.8 is met, including for several decoded indicia. According to the headnotes, direct infringement of a device claim may be found where the defendant adopts its customer’s acts as its own, but only if completion of the whole device can be expected with certainty. That is not so here, given the variety of programming and hardware options. Indirect infringement of claims 1 and 10 is, by contrast, sufficiently likely in view of the SDK documentation and the videos. The headnotes add that, for indirect infringement, the division must choose between a relative and an absolute prohibition, that validity attacks are limited to the best three in summary proceedings, and that the division keeps its two-month urgency period, unlike the one-month approach of the Düsseldorf Local Division. No prior use right was accepted, none having been pleaded, and the division was under no duty to invite the defendant to plead one (Art. 43 UPCA).

Validity is sufficiently certain: neither the Flow app nor the Barinsa app displays the product image at the location of the decoded indicia, and the Japanese patent, designed for a shop checkout, gives no incentive to add an image or a user input. Urgency was established, the application having been filed on the very day the unitary effect was registered, and the measures are necessary: direct competition, customers reluctant to switch solutions and the running patent term cause harm hard to compensate in money. The balance of interests favours the applicant, Scandit having been warned in May 2019 under the parallel US patent and being able to remove the function by an update. An absolute prohibition was preferred to a relative one, since the kit can be modified and customers are hard to monitor. Security of EUR 500,000 by deposit was imposed, the unrecoverable costs of enforcement in the United States having been alleged without challenge (Rule 171.2). No costs decision was made, proceedings on the merits being due to follow.

Key points for practice

• A software kit publisher is in principle liable for indirect infringement. Direct infringement requires that assembly of the whole device by the customer be certain.
• A device claim covering the display of information may be met without the consulted database forming part of the device.
• Practical point: against a software supplier, the proprietor should build its case on indirect infringement and prepare the argument on a relative or absolute prohibition.

Provisions applied

Agreement on a Unified Patent Court

Arts. 25, 26, 28, 43, 47(1), 62, 69 and 73

Rules of Procedure

Rules 8.5, 171.2, 206, 209, 211, 213, 352 and 354

European Patent Convention

Arts 54, 56 and 69 and Protocol on its interpretation

Regulation (EU) No 1257/2012

Art. 4(1)

Case law cited

NanoString Technologies v 10x Genomics, Court of Appeal, 26 February 2024, Mammut Sports Group v Ortovox Sportartikel, Düsseldorf Local Division, 9 April 2024, Munich Local Division, 21 May 2024 (UPC_CFI_443/2023), 10x Genomics v NanoString, Munich Local Division, 19 September 2023, Court of Appeal (UPC_CoA_433/2023 et seq.), CJEU, Generics (UK), 2020, and Phoenix Contact v Harting, 28 April 2022

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.