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

In Nestec the parties were agreed about how to assess the criterion of a ‘means suitable for putting the invention into effect’:

Arnold J reviewed the judgment of the House of Lords in United Wire Ltd v Screen Repair Services (Scotland) Ltd [2001] RPC 24 and that of the Supreme Court in Schütz (UK) Ltd v Werit UK Ltd [2013] UKSC 16 and concluded that an owner of a relevant Nespresso machine who acquired a Dualit capsule did not ‘make’ a system as claimed in Nestec’s patent. This was on five grounds. First, the capsule was an entirely subsidiary part of the system; secondly, the Nespresso machines and the capsules had an independent commercial existence; thirdly, Arnold J thought that purchasers of Nespresso machines would assume that they were entitled to obtain capsules from any source they pleased; fourthly, the capsule did not embody the inventive concept of Nestec’s patent; fifthly, the owner of the coffee machine was not even repairing it, let alone making one.

I have difficulty with the parties’ joint position in Nestec. It is hard to see why the act of purchase of a Dualit capsule could ever be equated with making the invention, which was an extraction system comprising a mechanical device with moving parts and features such as a housing to receive the capsule and a beverage delivery system. Alternatively, if the relevant issue is whether the capsule is a means for putting the invention into effect by using it in a Nespresso machine, it is not self-evident that the framers of art.26(1) of the Community Patent Convention (from which s.60(2) is derived) intended the criteria governing ‘putting the invention into effect’ to be exactly those later explained in Schütz in a different context.

Here it must be assumed that the means in question relates to an essential element of the invention. If on the facts that means, following supply, will be adapted or used together with some other means and this will lead to the invention being put into effect, and the requirements of knowledge and intent are satisfied, I find it hard to see why the act of supply is not an act of infringement as contemplated by those who drafted art.26(1). The same would apply if the invention were a process.

It seems to me that the central dispute in United Wire and Schütz, i.e. whether the defendant was making or only repairing a product, raised factors such as whether the means supplied is merely a subsidiary part of the inventive system or whether it has an independent commercial existence, which are not relevant in the context of this aspect of art.26(1). One or other of such factors may on some facts have a bearing on whether the means relates to an essential element of the invention, but that is by the way.

In Grimme the patent claimed an apparatus for separating potatoes from clods of earth and other materials on them when harvested. The apparatus had rollers with certain features. It was found that an apparatus with rubber rollers fell within the claim whereas an apparatus with steel rollers did not. The machines were sold with steel rollers but were marketed on the basis that these could be replaced with rubber rollers. Sales of the machines with steel rollers were held by the Court of Appeal to infringe under s.60(2). I find it hard to reconcile theadaptation of an agricultural machine by replacing steel rollers with rubber rollers with the concept of ‘making’ a product as explained in Schütz.

In KCI Licensing the patent claimed a disposable canister having various features that is used in apparatus which applies negative pressure to the dressing pad of a wound. The defendant sold canisters without a clamp means on the inlet tube of the canister. It was found at first instance that medical staff sometimes used a clamp. The Court of Appeal found that there had been infringement under s.60(2). Again, I find it difficult to reconcile the addition of a clamp to the inlet tube of the canister with the Schütz concept of ‘making’ a canister.

I can well see that where, as was apparently the case in Nestec, a finding of infringement would give the patentee an unfair monopoly in the supply of the means in question to the public, it would be unsatisfactory to allow such a monopoly. But there are other provisions of the law which may deal with that difficulty.