Schütz (UK) Limited v Werit (UK) Limted, UK Supreme Court, 13 March 2013,  UKSC 16, with thanks to Daniel Brook, Stephen Bennett and Mark Marfe, Hogan Lovells, for sending in de judgment and a head note of the decison
The UK Supreme Court today gave its judgment on the meaning of "makes" in section 60(1)(a) of the Patents Act 1977 in relation to when replacing a consumable part may infringe. In doing so, the Supreme Court reversed the decision of the Court of Appeal, reported here.
Lord Neuberger, in a unanimous decision of the Court, concluded:
78. Deciding whether a particular activity involves “making” the patented article involves, as Lord Bingham said, an exercise in judgment, or, in Lord Hoffmann’s words, it is a matter of fact and degree. In some such cases, one can say that the answer is clear; in other cases, one can identify a single clinching factor. However, in this case, it appears to me that it is a classic example of identifying the various factors which apply on the particular facts, and, after weighing them all up, concluding, as a matter of judgment, whether the alleged infringer does or does not “make” the patented article.
"In the present case, given that (a) the bottle (i) is a freestanding, replaceable component of the patented article, (ii) has no connection with the claimed inventive concept, (iii) has a much shorter life expectancy than the other, inventive, component, (iv) cannot be described as the main component of the article, and (b) apart from replacing it, Delta does no additional work to the article beyond routine repairs, I am of the view that, in carrying out this work, Delta does not “make” the patented article."
The judgment also deals with a costs/damages provision of the UK Patent Act, section 68, but as Werit's appeal was successful does not determine those issues.
Read the judgment (in English) here.