Intellectual Property Enterprise Court

IP-2022-000067 - [2025] EWHC 399 (IPEC)

Fecha: 27-Feb-2025

Knowledge and intention

Knowledge and intention

78.

In KCI Licensing Inc v Smith & Nephew plc [2010] EWCA Civ 1260, Jacob LJ summarised (at [53]) the nature of the requirement of knowledge in s.60(2) taken from his and Etherton LJ’s joint judgment in Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110, with paragraph references from the earlier judgment:

‘i) The required intention is to put the invention into effect. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain, [108].

ii)

It is enough if the supplier knows (or it is obvious to a reasonable person in the circumstances) that some ultimate users will intend to use or adapt the “means” so as to infringe, [107(i)] and [114].

iii)

There is no requirement that the intention of the individual ultimate user must be known to the defendant at the moment of the alleged infringement, [124].

iv)

Whilst it is the intention of the ultimate user which matters, a future intention of a future ultimate user is enough if that is what one would expect in all the circumstances, [125].

The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. This has to be proved on the usual standard of the balance of probabilities. It is not enough merely that the means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material, [131].’