EPLAW Patent Blog

UK - Schütz v Werit

Schütz (UK) Limited v Werit (UK) Limted, UK Supreme Court, 13 March 2013, [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.

 

UK - Shütz v. Werit / Appeal

Shütz (UK) Ltd v. Werit (UK) Ltd, Court of Appeal, London, UK, 29 March 2011, Case No. Case No: [2011] EWCA Civ 303

The facts of Shutz (UK) Ltd v Werit (UK) Ltd concern intermediate bulk containers (IBCs). These consist of an outer protective cage and a removable plastic inner bottle capable of holding 1000 litres of material. Schütz claimed to have patents protecting the IBCs at issue.

Werit’s infringement was alleged to be the supply of its own plastic bottles to be fitted (by a third party) into second hand Schütz cages. This gave rise to a number of disputed issues, including whether the IBCs were covered by the Schutz patents, whether those patents were valid and what effect the terms of supply contracts had on the alleged infringement. However, given that one of the patents did cover the IPCs and was valid, the stand-out questions was:

Was the placing of the Werit bottles in the Schütz cages by the third party “making” the patented IBC product, further to Section 60(1)(a) of the Patents Act 1977, and therefore an infringement?

UK - Schütz (UK) Limited v. Werit UK Limited and Protechna SA

Schütz (UK) Limited v. Werit UK Limited and Protechna SA, High Court of Justice, Chancery Division, Patents Court, London, UK, 31 March 2010, Case No. [2010] EWHC 660 (Pat), with thanks to Stephen Bennett, Lovells

Today, the approved judgment in of Mr Justice Floyd has been published in relation to three patents held by Schütz, relating to intermediate bulk containers (IBCs) for transporting liquids and powders.  There are three remarkable features of the action.  Werit's infringement is alleged to consist of supplying its own plastic bottles to be retrofitted by a third party, Delta Containers Limited, into second hand Schütz cages. This is alleged to amount to contributory infringement within section 60(2) of the Act. The issues of whether the alleged infringements fall within the scope of the claims thus turn on whether Schütz's cage falls within its own patents. Secondly, Werit maintain that Delta's acts of primary infringement relied on are not infringements because they do not amount to 'making' the patented product. Thirdly there is a special, partial defence to damages which arises out of an agreement made between Protechna and Schütz, which is said to contravene section 44 of the Act.

Schütz abandoned one of the three patents in suit shortly before trial.  In relation to the remaining two, Floyd J held that neither patent was infringed as Delta's activities do not amount to making the patented product.  He found both patents valid.  One was not infringed for the further reason that the Schütz IBCs do not fall within the claim.  The section 44 defence failed.

Read the judgment (in English) here.