Software patents can be useful tools to protect innovation across a whole host of technologies, from healthcare to energy storage, from manufacturing to aerospace. However, enforcing software patents can often present challenges. The behind-the-scenes nature of software development, the abstractness of software patent claims, and the global reach of distributed computer networks are just a few factors that can complicate enforcement. This briefing note focuses on one of the complexities: how can a software patent holder evidence infringement sufficiently in Europe.
One challenge with enforcement in this field lies in the intangible nature of the software itself, which may operate remotely from a user (such as on a server located in a different country) or may be embedded within the inner workings of a device. Even when software is accessible to the public, it is typically available only in the form of compiled machine-readable code. Naturally this poses an obstacle to patent holders, who often may need access to the source code to determine infringement.
Establishing infringement of software patents can therefore be problematic. In some jurisdictions, such as Germany, a patent holder must credibly establish infringement at the outset of proceedings, and typically, without knowledge of the inner workings of the alleged infringement. Elsewhere, such as in the UK and US, a patent holder may be able to file suit without having all the technical detail of the infringement to hand, anticipating those details to be revealed during discovery or disclosure (for example, via a product process description in the UK). However, commencing litigation without detailed knowledge of the possible infringement can be a risky step to undertake bearing in mind the potential costs involved and consequences.
Existing Approaches to Identify Software Infringement
One avenue to investigate infringement without resorting to legal intervention is for a patent holder to examine the behaviour of the potentially infringing software. For example, if a software claim relates to a unique way of compressing data, and a third-party software compresses data at a similar speed, efficiency and compression ratio, this might indicate infringement.
Despite this, spotting infringement by comparison is both time-consuming and difficult, and in any event may be insufficient to justify starting an enforcement action. To help, a patent holder might turn to a specialist software forensics company. Software forensics companies have advanced tools to reverse engineer programs, and software forensics forms a substantial portion of the burgeoning digital forensics market. In addition, the rapid pace of advancement in software forensics means that techniques for detecting infringement may become more sophisticated during the 20-year lifetime of a software patent. Thus, even if infringement is difficult to show now, there is no guarantee that it will go undetected in the future. On this basis, it may be assumed that the usefulness of software patents will increase in future as the software forensics industry becomes more widely established.
A New Mechanism for Identifying Software Infringement
Whilst an investigation by a patent holder or a software forensics company might yield the evidence upon which a case might be built, there is a further option that may be particularly helpful to software patent holders. Since the inception of the Unified Patent Court (UPC) last year, significant new evidence gathering and preservation methods have been made available to patent holders who convince the Court that infringement has occurred or will shortly occur. The methods include the ability to order the inspection of premises, the securing of physical samples and the seizure of potentially infringing items. In parallel, an order compelling an alleged infringer to provide a detailed description of its product might be sought, and a disclosure of the digital media and data on the premises may also be required[1]. The geographical reach of such orders is large: the UPC may order the measures anywhere throughout the EU.
To justify such an order, the patent holder must present “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed”[2]. The application of this provision remains untested in the software space, but a decision by the Paris Local Division of the UPC (C-Kore Systems Limited v Novawell, November 2023) gives an indication of the threshold: in that case, the combination of a commercial brochure, an extract from Novawell’s public website, a warning letter sent by C-Kore to Novawell, and the fact that Novawell had not contested the content of the brochure or its origin was deemed enough for the Court to make an order. Similar documents relating to an unauthorised party’s software may well be persuasive in the software space.
In addition, however, the UPC has shown a willingness to consider the circumstances of each case in a generally patent holder-friendly manner. Hence, for a software patent: any evidence presented might be reinforced by arguments focussing on the limited “reasonably available evidence” due to the technical difficulty of interrogating remote or embedded software. The Court may be receptive to an order for the purpose of demonstrating infringement, recognising that using evidence gathering provisions in such circumstances is necessary and proportionate, even when it has been presented with no more than limited preliminary evidence.
Coupled with the above, a crucial factor is that the UPC may, if it deems it to be justified, order these provisional measures ex parte, without the target of the order being made aware before the order is carried out. One reason for an ex parte order is a “demonstrable risk of evidence being destroyed or otherwise ceasing to be available“[3] and such justification has already been used outside the software field by both the Paris Local Division (C-Kore Systems Limited v Novawell, November 2023) and the Milan Local Division (Oerlikon Textile GmbH & Co. KG v Bhagat Group, June 2023). With software patent infringement, the destruction of evidence presents a serious risk factor because intangible evidence may be deleted or relocated beyond the Court’s reach very quickly, and thus a compelling case for ex parte measures could be made; indeed, it is hard to see a scenario for a software patent where this justification would not apply. Moreover, in a further decision of the Milan Local Division (Progress Maschinen & Automation AG v AWM SRL and Schnell SPA, September 2023, again not directly concerning a software patent), data capture relating to infringement was acknowledged to be one of PMA’s main targets. In an application of the above criterion, an ex parte order was granted, in part because it was generally accepted that digital data can be easily hidden or erased if targets are given previous notice of the order.
Hence, the UPC seems to offer a formidable combination of evidence gathering provisions for software patent holders that have a broad geographic reach. For example, an ex parte search and seizure might be ordered on the back of quite limited evidence of infringement if a court can be persuaded that the circumstances warrant it. Whilst there remain procedural matters with which the software patent holder must comply (for example, there must be no obvious validity concerns and in some instances, the patent holder must place a security with the Court to compensate the target of the order), the availability of these provisions contrasts with the higher burden placed on patent holders seeking preliminary measures in some other European jurisdictions (e.g. Germany, where the validity of the patent-in-suit must generally have been sufficiently confirmed already in opposition or nullity proceedings) or in the UK, where a patentee must initiate proceedings and rely on obtaining a product-process description from the alleged infringer, later down the line.
As a result, since mid-2023, patent holders have had further tools in their armoury to provide and preserve evidence of infringement that may be particularly useful in a software context. Through their own investigations or those of a software forensics company a software patent holder might find reasonable evidence of infringement. Yet, even if those routes yield little, the UPC empowers patent holders with robust mechanisms to protect their rights via search and seizure measures. The UPC may well present opportunities that are contrary to the established view that providing evidence of infringement can make software patents difficult to enforce. We may now see that software patent holders can more confidently invest in and develop innovative software, knowing that the legal environment has evolved to protect their valuable creations.
While the evidence gathering mechanisms of Article 60 UPCA have not yet been deployed to uncover the source code in the context of software patent infringement, we expect it is only a matter of time, given the patent holder-friendly nature of the UPC Divisions, alongside the wide remit that the statute seemingly provides, that the relevant UPC measures are deployed based on software patents.
Carpmaels & Ransford’s specialist teams of IP lawyers have a wealth of experience in this field, working with innovators to create effective and comprehensive IP strategies that will protect innovations in the long term. If you have any questions, please do get in touch with the team.
Footnotes
[1] Articles 60(1) and 60(2) UPCA, Rule 196 RoP
[2] Article 60(1) UPCA
[3] Article 60(5) and Rule 197 UPC RoP