Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others, High Court of Justice, Patents Court, Justice Arnold, London, UK, 22 April 2013, Case No.  EWHC 923 (Pat)
Nestec alleged that Dualit had infringed European Patent (UK) No. 2 103 236 (“the Patent”) by supplying coffee capsules compatible with Nestec’s Nespresso coffee machines. Dualit denied infringement and counterclaimed for revocation of the Patent.
On validity, Mr Justice Arnold held that none of the Patent's claims were entitled to priority from the Priority Document and that claims 1, 2, 7 and 8 lacked novelty over the Priority Document. The Priority Document disclosed arrangements having all the features of the relevant claims. As the claims of the Patent were broader than the disclosure of the Priority Document, the claims lacked novelty over the Priority Document even though they are not entitled to priority from it. Dulalit also contended the Patent lacked novelty over the use of "Essenza" machines during the priority interval. On the basis that (a) none of the claims were entitled to priority and (b) the Essenza machine fell within the Patent's claims, Mr Justice Arnold concluded that all the claims lacked novelty in the light of the information made available to the public by the prior uses. Dualit did not succeed on the other grounds of invalidity it relied upon.
On infringement, Mr Justice Arnold held that Dulait's NX capsules in combination with eight of the ten Nespresso machines in the case fell within claim 1. The Judge then considered whether Dualit was liable for contributory infringement under section 60(2) of the UK Patents Act based on Article 26 of the Community Patent Convention ("CPC"). Of particular interest, Mr Justice Arnold considered whether Dulait's NX capsules constituted “means relating to an essential element of the invention”. There appeared to be no English authority as to the correct approach to this requirement which is directly on point although, it has been considered by the courts of a number of other countries which have implemented Article 26 CPC, notably the Netherlands and Germany. Mr Justice Arnold favoured the German Court's approach: the fact the element was known in the prior art did not prevent it being an essential element of the claim, but if a feature was of completely subordinate importance for the technical teaching of the invention it could be regarded as a non-essential element. The NX capsule was held to constitute means relating to an essential element. Although claim 1 only requires the capsule to have a guide edge in the form of a flange, the flange played a significant role in the way the claimed invention worked.
The next issue was whether, NX capsules are “staple commercial products”, meaning their supply is not contributory infringement. Mr Justice Arnold found it clear from Article 26(2) CPC that this exception only applies where the means supplied by the defendant are a staple commercial product. This refers to the actual product supplied by the defendant, not the feature of the claim which the product satisfies. Second, whether the means constituted a staple commercial product was judged at the date of the alleged infringement not the date of the patent. A product that became widely available as a result of the invention would not qualify. In this case, the NX capsule was not a product supplied commercially for a variety of uses and was specifically designed for use with Nespresso machines.
Having gone through the elements of contributory infringement Mr Justice Arnold found that even if the Patent were valid, Dualit had not committed any act of infringement within section 60(2) because owners of Nespresso machines do not 'make' the claimed system when they buy NX capsules and therefore, the NX capsules are not "means suitable for putting the invention into effect".
Read the decision (in English) here.
Head note: Mark Marfé (Hogan Lovells)