Schutz v Werit [2013] Judgment of the Supreme Court 13 March 2013
This short note confirms that the Supreme Court allowed Werit’s appeal, in holding
unanimously that Werit was not infringing Schutz’s patents (in the Intermediate Bulk
Container including cage – the IBC) by supplying and replacing parts – in this case the
replacement parts being the plastic bottles inserted into the cage.
It will be recalled that the issue in the appeal to the Supreme Court was as to the meaning of
the word ‘makes’ within section 60(1)(a) of the Patents Act 1977, which provides that a
person infringes a patent for a product if he ‘makes’ the product without the consent of the
patentee. It will also be recalled that the inventiveness of the patent (registered to Protechna,
and exclusively licensed to Schutz), lies in the idea of flexible weld joints to the cage, which
increases strength and durability, and in the (inventive) idea of introducing a dimple on either
side of the weld and central raised portion. The first issue in the appeal was whether Delta
(reconditioner for and on behalf of Werit) infringed the patent by ‘making’ the article claimed
by Protechna’s Claim, contrary to section 60(1)(a) of the Patents Act 1977.
As has been set out in a previous blog, the claim involved replacement of the parts consisting
of the plastic bottles held within the metal cage of the IBC. Other commentators (and there
have not been many – but please note the IPKat commentaries which have been quick off the
mark) have emphasised that the principle applies equally to consumable and replaceable parts
for items as various as motor vehicles, printer cartridges and other replacement items in
consumer technology.
The Supreme Court held that when replacing parts, manufacturers should take into account a
list of factors including whether the part in in question is expected to be replaced in the
normal life of the large item it is annexed to, and also whether it forms part of the invention.
At the trial, before Mr Justice Floyd, the learned judge held that Schutz’s patent was not
infringed by Werit’s (and their ‘cross-bottling’ reconditioner Delta) sale of the reconditioned
IBCs, whereby a new plastic bottle was into inserted into the IBCs durable metal cage.
Justice Floyd found that the inventive concept was wholly embodied in the Schutz’ cage.
In the Court of Appeal, Lord Justice Jacob was of the view that by putting a new bottle into
the cage, Werit’s reconditioners (Delta) were effectively completing (manufacturing) the
patented product, and in doing so in the absence of a licence from Schutz, were infringing
their patent. The Supreme Court commented that Lord Justice Jacob’s finding appeared to be
on the basis that the inventive concept ceased to exist when the Schutz’ bottles were removed
from the cage, and that the remainder, after taking out the bottles, was merely an important
component, from which a new IBC could be made.
The Supreme Court’s finding, that replacing a part is not necessarily an act of making, the
recent commentary has emphasised that this will be of assistance to businesses engaging in
replacements and manufacture ‘down the line’ of the original manufacturer.
The Judgment in the Supreme Court
In the Press Summary (issued with the full Judgment) the Supreme Court stated the
following:
‘There is a need for clarity and certainty for patentees and others, and for those advising
them. It should also be borne in mind that the word “makes” applies to patents for all sorts of
product. Moreover, there is a need to protect the patentee’s monopoly while not stifling
reasonable competition’.
‘The mere fact that an activity involves replacing a constituent part of an article does not
mean that the activity involves the making of a new article, rather than constituting a repair of
the original article. One must, however, avoid simply contrasting making and repairing, not
least because these concepts may well overlap. That said, it may sometimes be useful to
consider whether the alleged infringer is repairing rather than making the article, because
repair of an item frequently involves replacement of one or some of its constituent.’
It is both legitimate and helpful to consider the question whether the bottle is such a
subsidiary part of the patented article that its replacement, when required, does not involve
making a new article.
While undoubtedly an essential and physically large part of the patented article, four factors
indicate that the bottle can fairly be said to be a relatively subsidiary part of the IBC, when
that article is viewed as a whole
(i)
The bottle has a significantly lower life expectancy than the cage
(ii)
The bottle does not include any aspect of the inventive concept of the Patent
(iii)
The bottle is a free-standing item of property
(iv)
The damaged free-standing bottle is simply replaced within the metal cage, which
contains the inventive concept, and the metal cage is repaired if necessary.
This case represents a classic example of identifying the various factors which apply on the
particular facts, and, after weighing them all up, reaching a conclusion on infringement.
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,
(v)
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, Delta does not “make” the patented article.’
This appears to be encouraging indeed to manufacturers down the supply line, and further
commentaries should be looked out for.
The full judgment of Schutz v Werit can be found at:
http://www.supremecourt.gov.uk/decided-cases/docs/UKSC_2009_0154_Judgment.pdf