EPLAW PATENT BLOG

BE – Herstal v. Secubit

Posted: February 8th, 2021

FN Herstal v. Secubit Ltd. and Secubit Inc., French-speaking commercial Court of Brussels (injunction proceedings) December 18, 2020 A/19/02292

Proceedings for infringement of patent EP’292 of FN Herstal concerning a device for detecting and counting shots fired from an automatic or semi-automatic firearm, capable of discriminating the “type” of ammunition used. Counterclaim for (partial) nullity of the patent.

Validity of the patent invoked

The patent invoked by FN Herstal fulfils the requirements of novelty and inventive step. The invention is sufficiently disclosed : the description allows the person skilled in the art to understand and reproduce it. The court observes that the claim seeks to discriminate between types of ammunition and not to isolate one ammunition while excluding innumerable other ammunition. It also notes that given the context of preventive maintenance of weapons, the patent is to be interpreted as seeking to distinguish at least two types of ammunition (live ammunition and blank ammunition).

Infringement by Secubit’s devices

FN Herstal has shown that the device described as “old” by Secubit constitutes an infringement; it reproduces each of the ten characteristics of claim 1 of the patent relied on. The “new device”, which allegedly functions differently from the old one, also infringes the patented technology. It does so in at least one of its forms, i.e. where it contains an “accelerometer (sensitive in the axial direction of the barrel), intended to take measurements used to count fired shots”, that accelerometer being an essential element of the patented invention. Both the old and the new devices were offered for sale on the Belgian territory.

The court noted in this respect that the two successive versions of Secubit’s website contain an offer in Belgium of the disputed device: the most recent one because it mentions “Belgium” among the “Selling locations”, and the earlier version because it targeted all countries without distinction while giving the impression that the products could be ordered from Belgium or be further explained to a potential customer in Belgium (in addition, the court noted an indirect offer because of a commercial documentation delivered to a Belgian weapon retailer and transmitted by the latter to a potential Belgian customer).

Injunction order

The court therefore issued a cease and desist order prohibiting Secubit from manufacturing, offering, putting on the market, using, importing or holding for the above-mentioned purposes on the Belgian territory a device capable of discriminating the “type” of ammunition used and containing an “accelerometer (sensitive in the axial direction of the barrel), intended to take measurements used to count the shots fired”.

The injunction is accompanied by a penalty payment of €5,000 per infringing device manufactured, offered, sold, delivered, used, imported or held by Secubit on Belgian territory and per day during which the violation continues.

A copy of the judgment (in French) can be read here.

Headnote: Emmanuel Cornu, Simont Braun

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