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Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16

Case Summary  |  Judgment  |  20 March 2013

 

Richard Meade QC and Lindsay Lane recently appeared in the Supreme Court of the United Kingdom for the respondent in Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16. This important decision clarifies the meaning of the word “make” for the purpose of patent infringement under section 60(1)(a) of the Patents Act 1977, and provides guidance on the extent of cost sanctions available under section 68 of the Act.

The appeal concerned European Patent (UK) 0 734 967 which related to intermediate bulk containers (‘IBCs’) consisting of three elements, a cage into which a plastic bottle is fitted and a pallet.

The patent disclosed the use of flexible weld joints on the cage of an IBC. The respondent was the exclusive licensee of the patent. The appellant sold ‘cross-bottled’ IBCs comprising the original cages in which the original used bottles had been replaced by new bottles manufactured by a third party (the appellant – Werit), effectively extending their life expectancy. The respondent argued that this involved “making” the protected invention and thereby infringed the patent.

The Supreme Court held that there was no infringement. Simply replacing one worn or damaged part of the IBCs did not necessarily involve “making” a new product; whether it was making or simply repair depends on various factors: the relative life expectancy of the part; whether the part embodies the inventive concept of the patent; whether the part is freestanding; and what work is done during replacement of the part. On the facts, the Court concluded that cross-bottling was insufficient to constitute “making” the patented product.

On the second issue, the Court accepted in obiter the respondent’s submission that section 68 of the Act must be pleaded by a defendant so as fairly to put the other party on notice of the defence. However, on the facts the appellant had sufficiently pleaded the point. It held that section 68 deprives a claimant of costs insofar as they are attributable to the claim for damages or an account in respect of infringements pre-dating the registration of the licence, but that it can recover costs attributable to such relief in respect of costs post-dating the licence. Where a claim is for pre- and post- registration relief there will need to be an apportionment.