Nestec vs. Dualit: indirect infringement of “consumables”

In a recent case, Schutz v Werit, the UK Supreme Court decided that replacing the“bottle” in a patented intermediate bulk container (“IBC”) was not an infringement of the patent, as the IBC was not being “made” by replacement of the bottle.

The UK Supreme Court determined that the core inventive concept claimed in the IBC patent was not the container plus bottle, but merely the container itself. The Court decided that the bottle was:

  1. Freestanding and replaceable;
  2. Had no connection with the claimed inventive concept; and
  3. Had a much shorter life expectancy than the inventive component.

Therefore replacement of the bottle does not “make” the patented article.

The Supreme Court in Schutz vs. Werit cautioned that the case was decided on its facts, and that each case involving replaceable parts should be assessed on its own merits.

We have now been handed down another Court decision, this time from the UK High Court, in Nestec vs. Dualit, which again provides a judgement on replaceable “consumable” products in a patented apparatus.

Nestec were the proprietors of a UK patent covering “a coffee extraction system comprising a device for the extraction of a capsule and a capsule that can be extracted in the device”.

Dualit supply coffee capsules that are compatible with the Nestec machines but do not make or sell the machine itself. Nestec alleged that Dualit indirectly infringed its patent by supplying capsules to owners of its own machines. Judge Arnold had to assess the facts of the case in respect of four key criteria, namely:

  1. Is an owner of a machine falling within the claims, who purchases Dualit capsules, licensed or entitled to work the invention?
  2. Are the Dualit capsules, “a means relating to an essential element of the invention?
  3. Are the Dualit capsules “staple commercial products”?
  4. Are the Dualit capsules “means suitable for putting the invention into effect”?

Judge Arnold answered “yes” to question 1, stating that “the purpose of the machine is to make coffee. In order to use the machine for its intended purpose, the purchaser must be impliedly licensed to obtain and use capsules with the machines”.

Judge Arnold answered “yes” to question 2, believing that the capsules were means relating to an essential element of the claims.

Judge Arnold answered “no” to question 3, the capsules were not staple commercial products as they could only be used with a small number of machines.

Crucially, Judge Arnold answered “no” to question 4, the capsules were not means suitable for putting the invention into effect. 

This answer to question 4 is essentially the same answer given in Schutz vs. Werit, and Judge Arnold stated that each capsule was an entirely subsidiary part of the system, had an independent commercial existence to the machine, was a consumable which a purchaser would assume they are entitled to obtain from any source, and does not embody the “inventive concept”.

It was therefore concluded that the supply of Dualit capsules did not lead to “making” of the claimed system, and therefore Dualit did not indirectly infringe Nestec’s Patent.

What does Nestec vs. Dualit (and Schutz vs. Werit) mean for patentees?

It is still slightly too early to tell whether or not this second judgement is beginning to set a “standard”, but if judgements continue along this line, then patentees will have to be wary in demonstrating indirect infringement where the product relates to consumables.

In fact, Judge Arnold commented that “the fact the claims require the presence of a capsule is an artefact of clever drafting. In our view, it may be inferred that the reason why the granted claims require the presence of the capsule is precisely in order to enable Nestec to argue the mere supply of capsules constitute an infringement and thus to enable Nestec to continue to control the market in capsules”.

Whilst this does not indicate a blanket ban on IP protection for consumable products (which are not patentable in their own right), if the consumable product is merely a peripheral and easily replaceable part of a patented “system”, care should be taken. In many cases, filing a patent application for the consumable product itself may avoid the need to demonstrate indirect infringement of a claim in which the consumable is tied in with an inventive apparatus.

© 2018 Wilson Gunn