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

In Nestec SA v Dualit Ltd [2013] EWHC 923 the claimant (Nestec) alleged that the defendant (Dualit) had infringed Nestec’s patent which claimed an extraction system comprising a device for the extraction of a capsule and a capsule that could be extracted from the device. Nestec’s capsules looked like this, notably with a circumferential flange at one end:

Nestec alleged that its patent had been infringed by Dualit’s supply of similar capsules which were compatible with Nestec’s Nespresso coffee machines.

Arnold J reviewed judgments of the German Federal Court of Justice and a judgment of the Dutch Supreme Court which had considered national provisions equivalent to s.60(2). He preferred the approach of the German court which had been that in order to qualify as a means relating to an essential element of the invention, the means in question had to contribute to implementing the technical teaching of the invention. It did not matter where the core of the invention lies. (Updating this in English terms, it probably means that it is irrelevant whether the means contributes to the inventive concept). On the other hand, if a feature is of completely subordinate importance for the technical teaching, it could be regarded as a non-essential element. The fact that the feature was known in the prior art was not of itself a reason for finding that it was non-essential.

Arnold J found that the capsule did constitute means relating to an essential element of the invention: