Schenck Rotec GmbH v. Universal Balancing Limited, Patents Court, High Court of Justice, HH Judge Birss QC (sitting as a judge of the High Court) London, UK, 12 July 2012, Case No.  EWHC 1920 (Pat)
This case concerned Schenck’s patent EP 1 520 161, relating to a device and method for fastening weights to the outside of a rotor as a counterbalance, and its alleged infringement by Universal Balancing. Universal Balancing counterclaimed for revocation of EP ’161, as well as contending that it had the benefit of a prior use defence under section 64 of the Patents Act 1977 (i.e. the right to do or continue to do an act that it had done or made effective and serious preparations to do, in good faith, before the priority date of the invention) or, if found to infringe, a defence of innocent infringement to any damages claim under section 62(1) of the 1977 Act.
In a decision handed down on 12 July 2012, the High Court has held that EP ’161 is novel and inventive over the pleaded prior art, and infringed by Universal Balancing’s KISS-234 balancing machine. In particular, in construing the claims, the Court found that a patent claim requiring a gripper-like device to be "constructed to receive" a plurality of balancing weights did not mean that the device had to be designed, in the sense of intended, to receive a plurality of weights, but that it had to be constructed in such a way that it was capable of receiving a plurality of weights.
The Court held that Universal Balancing’s section 64 defence failed, but that its defence to damages under section 62 applied until the date on which the patent was raised at a meeting between the parties.