The Court of Appeal of Barcelona (Section 15) recently upheld an appeal filed by a manufacturer of security systems against a judgment that had dismissed a patent infringement action filed against a former distributor who was manufacturing duplicates of the keys used in such system.
Claim 1 of the patent reads as follows:
“Security reversible-key with at least three coding I tumbler pin rows (A1, A2, A3), which are also located on the flat sides of the key (S), with an as signed cylinder (Z) with pin rows of pairs of tumbler pins, consisting of tumbler pins and counter pins at the positions of the tumbler pin rows of a given bore pattern, characterized in that the key has a blocking groove BN, which runs parallel to the key axis (x) from the tip of the key to at least the first position (P1) of a tumbler pin row on the key that the blocking groove has a coded blocking depth (B1, B2, B3), that in the assigned cylinder at least at the rearmost coding position (P1) a pair of tumbler pins corresponding to the blocking groove BN with a blocking tumbler pin 8Z and an extended blocking counter pin 8G is foreseen so that the blocking counter pin impinges on the cylinder housing (1O) if the blocking groove is not deep enough and with this the complete insertion of a key with an insufficiently deep blocking groove is blocked by the pair of blocking tumbler pins and whereby the blocking tumbler pin 8Z with the blocking counter pin 8G following the insertion of the key at the position (P1) is also utilized as a coding tumbler pin with coding steps (C1, C2, C3, C4) with respect to the turning of the cylinder.”
During the first instance proceedings, Commercial Court number 5 of Barcelona dismissed the infringement action on the grounds that, since the defendant was only making duplicates of the key at clients’ request, he was not reproducing all the elements of the claim.
In contrast, the Court of Appeal of Barcelona (Section 15), in a judgment of 14 July 2016, considered that selling duplicates of the key was an act of “direct” patent infringement.
Assuming that the case reaches the Supreme Court and the judgment is confirmed, it will clarify the scope of protection of patents that protect items that interact with a system.