Nestec S.A. and Others v Dualit Ltd and Others
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 22 April 2013 |
| Neutral Citation | [2013] EWHC 923 (Pat) |
| Docket Number | Case No: HC12D02673 |
| Court | Chancery Division (Patents Court) |
| Date | 22 April 2013 |
[2013] EWHC 923 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HC12D02673
Simon Thorley QC and Benet Brandreth (instructed by Bird & Bird LLP) for the Claimants
Mark Vanhegan QC and Anna Edwards-Stuart (instructed by Jensen & Son) for the Defendants
Hearing dates: 20 22, 25 27 March 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
Topic
Paragraphs
| Introduction | 1–4 |
| The witnesses | 5–12 |
| Expert witnesses | 5–7 |
| Factual witnesses | 8–12 |
| Background | 13–32 |
| Portionised coffee machines | 13–16 |
| The Nespresso System | 17 |
| Nespresso capsules | 18–20 |
| Nespresso machines | 21–24 |
| Nespresso brewing units | 25–31 |
| Compact Brewing Unit ("CBU") | 26–27 |
| Mini Brewing Unit ("MBU") | 28 |
| Tolkien variants | 29 |
| Nano Brewing Unit ("NBU") | 30 |
| Motorised Nano Brewing Unit ("MNBU") | 31 |
| Dualit's NX Café Caps | 32 |
| The Priority Document | 33–50 |
| The Patent | 51–68 |
| The claims as granted | 69–70 |
| Claim 1 as proposed to be amended | 71 |
| The skilled person | 72–73 |
| Common general knowledge | 74–80 |
| Construction | 81–89 |
| Against | 82–83 |
| Guide means being insertion slides | 84–86 |
| Receives and acts to move downwards | 87–89 |
| Priority | 90–104 |
| The law | 90–94 |
| Assessment | 95–104 |
| The housing | 96 |
| Inclined capsules | 97–103 |
| Conclusion | 104 |
| Added matter | 105–109 |
| Lack of novelty | 110–124 |
| The law | 110 |
| Novelty of claims 1, 2, 7 and 8 over the Priority Document | 111 |
| Novelty over the Venice Convention and the Field Tests | 112–120 |
| Field Tests | 113–118 |
| Venice Convention | 119 |
| Conclusion | 120 |
| Novelty of claim 1 over the 1,2,3 Spresso | 121–124 |
| Obviousness | 125–140 |
| The law | 125 |
| Obviousness over Blanc | 126–140 |
| Blanc | 126–134 |
| The differences — claim 1 | 135–136 |
| Was it obvious — claim 1? | 137–139 |
| Obviousness of claims 2, 5, 7 and 8 | 140 |
| Insufficiency | 141–142 |
| Amendment | 143–146 |
| Infringement: do the systems fall within claim 1? | 147–152 |
| Integer 1E | 148–149 |
| Integer 1M | 150–152 |
| Infringement: have Dualit committed infringing acts? | 153–205 |
| Statutory provisions | 154–157 |
| A person other than a licensee | 158–167 |
| Means relating to an essential element of the invention | 168–176 |
| Staple commercial products | 177–182 |
| Means suitable for putting the invention into effect | 183–205 |
| Summary of main conclusions | 206 |
Introduction
The Claimants (collectively "Nestec") are respectively the owner, exclusive licensee and alleged exclusive sub-licensee of European Patent (UK) No 2 103 236 ("the Patent"). Nestec allege that the First and Second Defendants (collectively "Dualit") have infringed European Patent (UK) No 2 103 236 ("the Patent") by supplying coffee capsules which are compatible with Nestec's Nespresso coffee machines. Dualit deny infringement and counterclaim for revocation. Among the grounds of invalidity relied on are that the Patent is not entitled to its priority date, and therefore the claims are anticipated by two "prior uses" by Nestec (actually uses during the priority interval). The Claimants also allege that the Third Defendant, Leslie Gort-Barten, is jointly liable for any infringements by Dualit. Mr Gort-Barten does not contest that allegation.
The Patent was maintained in amended form by the Opposition Division of the European Patent Office for the reasons given in a written decision dated 6 July 201Both Nestec and the opponents appealed against that decision, thereby suspending its effect. I was informed that an expedited hearing of the appeal was requested in view of the fact that infringement proceedings were pending in a number of countries, but unfortunately the appeal has not yet been heard by the Board of Appeal. Nestec have made a conditional application to amend the Patent in accordance with the Opposition Division's decision. Accordingly, I have to consider the Patent both as granted and as proposed to be amended.
The authentic text of the Patent is in French. Since the Patent is subject to the London Agreement, Nestec were not required to lodge an English translation of the specification with the United Kingdom Intellectual Property Office. Nestec obtained a certified translation for use in these proceedings which was eventually agreed. Nestec also obtained certified translations of the priority document and application which were agreed. I shall refer exclusively to the certified translations.
Between them the parties have raised a large number of issues for decision. Because of the number of issues, Dualit's written closing submissions ran to 382 paragraphs (not including a separate 11 paragraph schedule) despite the fact that the technology is relatively simple (Nestec's written submissions were shorter, but still lengthy). This case is a paradigm example of the regrettable tendency of current patent litigation in this country towards proliferation of issues rather than concentration upon the essentials. The result is unnecessary expenditure of both costs and the court's time. Accordingly, I shall give my reasons more briefly in relation to some of the more minor issues than in relation to the main issues.
The witnesses
Expert witnesses
Nestec's expert witness was Quintijn Innikel. He received a master's degree in Industrial Design and Engineering from Delft Technical University in 1991. From 1994 to 1999 he was employed in product development by Well Design, a design agency. During this period he worked on coffee machines, including Sara Lee's Senseo machine. From 1999 to 2005 he was employed by Heineken Beer. Since 2005 he has been a partner in Beacon Partners, and in that capacity he has again worked on coffee machines. Thus he was not working in the field of coffee machines in 2003–2004, although he said that he maintained an interest in the subject during that period.
Dualit's principal expert witness was Martin Nicholson. He had a degree in mechanical engineering with business. He was employed as a project engineer by Kenwood from 1993 to 2000. Since then he has run his own product design consultancy. He has worked on coffee machines in both capacities.
Both sides made minor criticisms of the other's expert in closing submissions. I consider that both experts did their best to assist the court.
Factual witnesses
Brigid Drohan is the Managing Director of the Third Claimant. She gave evidence about the Nespresso System, sales of Nespresso machines to the public and an alleged prior use of Nestec's Essenza coffee machines at a convention in Venice in June 2004 ("the Venice Convention"). Counsel for Dualit submitted in his closing submissions that Ms Drohan had been untruthful in her evidence. I am bound to say that I did not have confidence in the reliability of some of Ms Drohan's evidence, but I see no reason for concluding that she was being untruthful.
Rosa Bonet Pocino is currently employed by the First Claimant and was formerly employed by the Second Claimant. She gave evidence about field testing of the Essenza machines in June 2004 which is also alleged to constitute a prior use. Counsel for Dualit did not criticise her evidence, but he submitted that she was not the right person to give evidence about this subject, and that both in relation to the Venice Convention and the field testing there were other witnesses whom Nestec could have called who would have been in a better position to give evidence than the witnesses they did call. I agree with this. Accordingly, were it necessary to do so, I would be prepared to draw an inference from Nestec's failure to call the appropriate witnesses. In the event, however, I do not consider this necessary.
Don Smith formerly of Magimix also gave evidence about the Venice Convention. Unsurprisingly his memory of the event was not very good, but otherwise he was a reliable witness.
Mr Gort-Barten is a director of and minority shareholder in Dualit. Mr Gort-Barten gave evidence about a variety of topics, including the sale of Nespresso machines, Nespresso capsules, the market for Nespresso compatible capsules. Although primarily put forward as a witness of fact, he was also designated as an expert. Little criticism was made of his evidence.
Dualit also relied upon witnesses statements from Georges Feierabend of Eldom Rothcrist (about the 1,2,3 Spresso, as to which see below) and Tom Brown (who attended the Venice Convention) which were tendered under hearsay notices and thus were not tested in cross-examination.
Background
Portionised coffee machines
There are a number of ways to make a cup of coffee. At its simplest, one can pour boiling water over instant coffee granules. At the other end of the scale, a cup of coffee can be produced by a trained barista using a professional espresso machine. In between lie many options from the filter machine to the Cafetière. One approach involves coffee machines that use pre-packaged portions of ground coffee, which are variously referred to as "pods", "pads" and "capsules". The intention behind such systems is to offer consumers a way to make a good quality cup of coffee simply and reliably. Thus the major advantage of these systems is convenience.
An espresso is brewed by forcing near boiling water under high pressure through finely ground and compacted coffee. This brewing...
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