Intellectual Property Enterprise Court

IP-2024-000057 - [2025] EWHC 1687 (IPEC)

Fecha: 08-Jul-2025

Indirect infringement

Indirect infringement

The law

33.

Section 60(2) of the 1977 Act provides:

‘(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.’

34.

The dispute between the parties under s.60(2) principally concerned the two mental elements: whether the relevant person ‘knows, or it is obvious to a reasonable person in the circumstances’ that the relevant means are suitable for putting, and whether those means ‘are intended to put’, the invention into effect in the United Kingdom.

35.

Jacob LJ addressed the two elements in KCI Licensing Inc v Smith & Nephew plc [2010] EWCA Civ 1260. I will quote the relevant passage (at [53]), including the references to paragraphs from the earlier joint judgment of Jacob and Etherton LJJ in Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110:

‘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].’

36.

A point arose with regard to subparagraph (ii). Taken on its face it is an unqualified statement that provided at least some ultimate users will intend to use or adapt the means so as to infringe, this element of s.60(2) is satisfied. But this is expressly based on what had been said in Grimme. The paragraphs in that earlier judgment cited at the end of subparagraph (ii) do not seem to be the most relevant so far as this point is concerned. However, the Court said:

[112] … [Counsel] submitted that it was enough if the supplier knew (or it was obvious in the circumstances) at the time of his offer to supply or supply that some (disregarding freak use) ultimate users would intend to use, adapt or alter the “means essential” so as to infringe.

37.

The submission related to what was earlier termed the ‘inherently probable’ interpretation or view of the relevant element of s.60(2). The judgment continues:

‘[113] Against this view it can be said that art.26 [CPC] requires that the alleged infringer must know (or it must be obvious etc) that the means are intended to put the invention into affect [sic]. The present tense is used. So it can be said that a future intention—even a probable future intention—is not enough.’

[114] Notwithstanding the force of that linguistic point, we conclude that the “inherently probable” view is indeed the correct construction of the provision. We do so for a number of reasons.’

38.

The Court then gave six reasons, of which this was the second:

‘[116] Secondly, it was essentially the reasoning of Jacob J. in Chapman (Chapman v McAnulty, unreported, February 19, 1996 , BL SRIS C/20/96, Pat Ct). He said:

“It is sufficient if it is shown that the invention will be put into effect by some users. One would only disregard maverick or unlikely uses of the thing.”’

39.

Thus, it is sufficient if the supplier knows or ought to know that some ultimate users will intend to use or adapt the means so as to infringe, provided that they are neither ‘freak’ nor ‘maverick’ users – if there is a difference.

40.

I will not attempt a comprehensive definition of freak and/or maverick users, but in my view it includes irresponsible users. By this I mean that the relevant element of s.60(2) is not satisfied if the supplier knows, or it is obvious to a reasonable person in the circumstances, that although some ultimate users will intend to use or adapt the means so as to infringe, in such instances this is likely to result in the invention being put into effect in a manner which a reasonable person having knowledge of all the relevant facts would regard as irresponsible.

41.

Another point of law was raised. JGL advanced the submission that the ultimate user of the Apex Assist and all hoists of this type is the consumer who uses it on a day-to-day basis to load items into the boot of their car; it is not the fitter who instals the hoist into the boot. This was a surprising submission because there was no direct evidence regarding what car owners do. As Autochair rightly stated, all the evidence on this came from the experts but they spoke only of what fitters would do.

42.

‘Ultimate user’ and ‘person at the end of the supply chain’ are not terms taken from s.60(2). In the present case, it can be inferred from what the experts said that if anyone is going to modify the Apex Assist so that securing of the extension element after Adjustment 3 is done by the compression/friction method, it will be the fitter. Therefore the choice between the fitter and the consumer depends on whether the relevant intention is that of the ultimate user of the product claimed or the person who puts the invention into effect.

43.

As Jacob LJ said in paragraph 53(i) of KCI Licensing (quoted above), the relevant intention in s.60(2) is to put the invention into effect. It would follow that the relevant intention is that of the person who will put the invention into effect. It seems to me clear from subparagraphs 53(i) and (ii) of KCI Licensing, quoted above, that this is what the Court of Appeal had in mind. Further, in Grimme the Court said:

‘[108] First then the person who must have the intention. One can rule out the supplier himself. The required intention is to put the invention into effect. That the supplier himself does not intend to do. 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.’

44.

I think the distinction intended there was between the person who puts the invention into effect and a person merely in the upstream supply chain of the means relating to an essential element.

45.

I discussed s.60(2) in Prevayl Innovations Ltd v Whoop Inc [2025] EWHC 399 (IPEC) at [74] to [87]. Given my comments on the exclusion of irresponsible implementation of the invention (which was not an issue in Prevayl) and the apparent potential for an incorrect understanding of ‘ultimate user’, I would modify my summary in Prevayl of the requirements of s.60(2) as follows:

The supply of, or the offer to supply, a product to a person not entitled to work the invention is an act of infringement under s.60(2) if the following are found on the balance of probabilities:

(1)

The supply or offer to supply takes place in the United Kingdom and the product is a means relating to an essential element of the invention, i.e. a means which contributes to implementing the technical teaching of the invention without being of completely subordinate importance to the implementation; this is irrespective of where the core of the invention lies (Nestec SA v Dualit Ltd [2013] EWHC 923 at [168]-[175] and Prevayl at [76]).

(2)

Those means are suitable for putting the invention into effect, i.e. adaptation of the means or its use together with other means could put the invention into effect (Prevayl at [79]-[86]).

(3)

At the time of the supply or offer to supply, the supplier knows or it would be obvious to a reasonable person in the circumstances that (a) adaptation of the means supplied or its use together with other means could put the invention into effect and (b) at least some parties will intend to put the invention into effect in the United Kingdom in that way (KCI Licensing at [53]).

(4)

Excluded from (3)(b) above are maverick parties, which includes those with an intent to put the invention into effect in a manner which a reasonable person having knowledge of all the relevant facts would regard as irresponsible.