Patents: Schütz (UK) Ltd v Werit (UK) Ltd

The main point of Schütz (UK) Ltd v Werit (UK) Ltd [2011] EWCA Civ 303 (29 March 2011) was whether a patent for an intermediate bulk carrier - essentially a large plastic bottle tightly encased in a tight metal cage constructed from tubes flattened at each join - could be infringed by inserting the bottle into a cage constructed from differently connected members.

The relevant claim was as follows:

"Pallet container for the transporting and storing of liquids, having a flat pallet, an exchangeable inner container made of plastic material with an upper, closable filler opening and a lower emptying device and also, surrounding the inner container, one outer sleeve which consists of vertical and horizontal lattice bars made of metal which support the plastic inner container filled with liquid ..."

There was nothing special about the pallet or the bottle. The photo shown above is not a picture of the patented invention but of the prior art. Lord Justice Jacob inserted that picture into his judgment to give readers some idea of how the invention worked and the issue that the Court had to decide. The reason for the litigation was that the frames wore out or otherwise needed to be replaced much sooner than the bottles and there was demand for reconditioned frames.

The question boiled down to whether the substitution of the defendant's frame for the claimant's constituted making the invention within the meaning of s.60 (1) of the Patents Act 1977 and thus an infringement or a repair which is impliedly licensed. Both sides relied on United Wire Limited v. Screen Repair Services (Scotland) Limited and Others [2000] UKHL 42, [2000] 4 All ER 353, [2001], RPC 24 (20th July, 2000). At first instance, the judge had interpreted that case as requiring the court to identify the inventive concept of the invention - a term that is used in determining obviousness (see Pozzoli SpA v BDMA SA and Another [2007] EWCA Civ 588, [2007] FSR 37). He identified the cage as the inventive concept which led him inevitably to the conclusion that there was no infringement since the defendant's cage fell outside the patent. After analyzing thoroughly the speeches in the United Wire appeal and other cases the Court of Appeal rejected that test. Lord Justice Jacob concluded at paragraph [90]:

"It suffices to say that [the intermediary], when it fits [the claimant's] bottles into [the defendant's] cages, is making [the patented product] which fall within the Patent and are doing so without the licence of [the claimant]. That they themselves on their own website say they are "re-manufacturing" says it all."

That seems to suggest that there is no general approach and that each case is to be determined according to its own circumstances. The tribunal looks at what the claim says and then considers whether the defendant's product falls into it. It is not too far removed from the old rule that one should construe the patent as though the defendant had never been born.