Schütz (UK) Ltd v Werit UK Ltd (Nos 1 to 3)
| Jurisdiction | England & Wales |
| Judge | Lord Neuberger,Lord Walker,Lady Hale,Lord Mance,Lord Kerr |
| Judgment Date | 13 March 2013 |
| Neutral Citation | [2013] UKSC 16 |
| Date | 13 March 2013 |
| Court | Supreme Court |
[2013] UKSC 16
Lord Neuberger, President
Lord Walker
Lady Hale
Lord Mance
Lord Kerr
Appellant
Simon Thorley QC
Thomas Mitcheson
(Instructed by Hogan
Lovells International LLP)
Respondent
Richard Meade QC
Lindsay Lane
(Instructed by SNR
Denton UK LLP)
Heard on 15 and 16 January 2013
Lord Neuberger (with whom Lord Walker, Lady Hale, Lord ManceandLord Kerragree)
A person infringes a patent for a particular product if "he makes, disposes of, offers to dispose of, uses or imports the product or keeps it …" – see section 60(1)(a) of the Patents Act 1977 ("the 1977 Act"). The principal issue on this appeal concerns the meaning of the word "makes". The other aspect of this appeal raises a number of issues arising out of section 68 of the 1977 Act.
An intermediate bulk container, unsurprisingly known as an "IBC", is a large container, normally around 1000 litres in volume, used for the transport of liquids. Such containers face tough transport conditions. They must be capable of bearing heavy weights (as much as six tonnes, as they are often stacked four-high), of withstanding prolonged or violent vibration, and of resisting the forces caused by the liquid splashing around inside, without buckling, cracking or springing leaks.
IBCs of a two-part construction, resting on a flat pallet (of wood, steel, or plastic) have been well known in the trade for many years. They consist of a metal cage into which a large plastic container (or "bottle") is fitted. The bottle has to fit the cage snugly, as otherwise the cage will not provide full protection, and the walls of the bottle will not be properly supported. The general idea is shown by the prior art IBC which is illustrated in the description of the patent involved in this case:
IBCs are used to transport a wide range of types of liquid. Often, the bottle cannot be reused, because it contains residues of a toxic liquid or because it has been physically damaged. While the cage also has a limited life-span, which depends on a number of factors (such as the means and conditions of transport and climatic conditions), it has a significantly longer life expectancy than a bottle; the evidence suggested that, on average, it is about five or six times as long.
"Reconditioners" engage in "re-bottling" or "cross-bottling" used IBCs. In either case the old bottle is removed, any damage to the cage repaired, and a new bottle is fitted within the cage. Re-bottling involves replacing the bottle with a fresh bottle from the original manufacturer; cross-bottling involves replacing the bottle with a bottle from a different source.
Opinion in the industry is divided about cross-bottling. Because the bottle is not specifically designed for the cage, the "fit" is not always as good as with a bottle from the original manufacturer. For instance, stabilising loops in the top of the bottle may not precisely match up with bars on the cage, or the bottle may not fit so as to drain properly without tipping. However, there appears to be a healthy market for cross-bottled IBCs.
IBCs are normally sold by a manufacturer to a "filler", who then uses the IBC to send its product to an end-user. Fillers typically include large chemical companies, and end-users include fizzy drink wholesalers, cosmetic suppliers and pharmaceutical companies. Manufacturers of new IBCs often also recondition their own original IBCs, but there are many suppliers of IBCs who are solely reconditioners.
Reconditioners (whether or not they are the original manufacturers) normally collect used IBCs from end-users, who have no further use for the used IBCs. The end-users are sometimes, but by no means always, paid for these used IBCs by the reconditioners. After re-bottling or cross-bottling an IBC, the reconditioner offers the reconditioned product to fillers on the market in competition with the products of original manufacturers, and of other reconditioners. Reconditioned IBCs are, predictably, generally cheaper than new IBCs.
European Patent (UK) 0 734 967 ("the Patent") has a priority date of 30 March 1995. Claim 1 of the Patent ("the Claim") is the only relevant claim for present purposes. It is in the following terms (with added sub-paragraphs):
"[A] 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,
[B] the lattice bars which are configured as tubes being indented at the intersection points to form trough-like, double-walled recesses extending in the longitudinal direction of the lattice bars
[C] in such a manner that at each intersection point between the longitudinal edges of the recesses of two lattice bars lying perpendicularly one above the other there arise four contact points with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, and the four contact points of the two lattice bars being welded together at the intersection points,
[D] characterised in that the trough-like recesses of the vertical and horizontal lattice bars have a central raised part extending across the cross-section of the recesses,
[E] two lattice bars respectively lying one above the other at the intersection points are welded together at the four contact points of these raised parts and the incisions of the recesses of the lattice bars adjacent on both sides to the raised part
[F] with the contact and weld points form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part for relieving the weld joints at the intersection points upon application of static and/or dynamic pressure on the lattice sleeve."
Read on its own, the Claim is not immediately accessible, and it would normally be inappropriate to consider its meaning or effect without explaining its factual and technical context, including the description (i.e. the narrative preceding the claims) of the Patent, reasonably fully. However, given the issues which require consideration on this appeal, only the following points need be identified:
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i. Item [A] extends to a complete IBC, i.e. a pallet, a bottle (the "inner container") and a cage (the "outer sleeve");
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ii. The claimed inventiveness lies in items [D], [E], and [F], as is indicated by the introductory words "characterised in that";
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iii. The inventiveness of the Patent lies in the idea of flexible weld joints in the cage, to increase its strength and durability;
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iv. More specifically, the inventiveness lies in the idea of introducing a dimple on either side of the weld and a central raised portion;
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v. The description of the Patent acknowledges that the bottle is "exchangeable"—i.e. replaceable.
The proprietor of the Patent is Protechna S.A. ("Protechna"). The respondent, Schütz (U.K.) Limited ("Schütz") is its exclusive licensee in this country, and is the leading manufacturer of rigid composite IBCs in the United Kingdom. Most of its sales are of new IBCs, but about 25% are rebottled IBCs, whose cages have, after any necessary repairs, been re-bottled with new Schütz bottles.
The appellant, Werit UK Limited ("Werit"), sells bottles ("Werit bottles") for IBCs to a reconditioner, Delta Containers Limited ("Delta"). Delta acquires discarded IBCs originally put on the market by Schütz ("Schütz IBCs"), and replaces the original bottles ("Schütz bottles") with Werit bottles, and then offers these cross-bottled IBCs on the market. These cross-bottled IBCs are therefore in competition with the original Schütz IBCs, marketed by, or with the express authority of, Schütz.
Schütz objects to its cages being used by cross-bottlers. Apart from the competitive consequences, Schütz claims to be concerned that publicity about any accident with a cross-bottled product made with one of its cages might harm its reputation. Accordingly, it objects to Delta's re-bottling activities and contends that they infringe the Patent. It is common ground that, if Delta thereby infringes the Patent, Werit does so.
Section 60(1) of the 1977 Act ("section 60(1)") is concerned with direct infringement, and provides in para (a) that a person infringes a patent if, "where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise", without the consent of the patentee. Section 60(2) of the 1977 Act is concerned with indirect infringement, which includes the knowing "supply" to a primary infringer of "any of the means" which enables him to carry out the infringing act. (Hence the common ground referred to at the end of the preceding paragraph).
Section 125(1) of the 1977 Act ("section 125(1)") provides that "unless the context otherwise requires", "an invention for a patent … for which a patent has been granted" should "be taken to be that specified in a claim of the specification of the … patent …, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent … shall be determined accordingly".
Section 130(7) of the 1977 Act states that certain specified sections of that...
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