The Court of Appeal recently gave a judgement in Grimme Landmaschinenfabrik GmbH & co KG v Derek Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 110, a case which centred on a potato harvesting machine, which provides much awaited guidance on the interpretation of contributory infringement under s60(2) of the Patents Act 1977.

Section 60(2) of the Patents Act 1977

S60(2) provides that a person infringes a patent if he supplies or offers to supply a person with any of the means relating to an essential element of the invention when he knows or it would be obvious to a reasonable person that those means are suitable for putting and are intended to put the patented invention into effect. Essentially the test has two requirements. Firstly that there has to be supply of the means relating to an essential element of a patented invention and secondly there has to be knowledge and intention to supply the means to put the patented invention into effect.

Means relating to an essential element of the invention

The case concerned Grimme’s patent for a machine for sorting potatoes from soil, stones and stalks, etc - a potato harvester aptly named ‘Evolution’. The machines were sold by the defendant with steel rollers but they were also sold together with rubber rollers. Indeed the machines were designed and marketed in such a way so as to illustrate the interchangeability of the two different types of rollers. The defendant argues that the machine fitted with steel rollers was not ‘means essential’ since the potato-harvesting machine was a complete and non-infringing machine capable of being used as supplied, with the steel rollers. The Court of Appeal, however, dismissed this argument. The Court of Appeal held the fact that the machine was non-infringing as sold with the steel rollers and was not relevant to the test under s60(2) since, in their opinion, Parliament had clearly intended the section to apply to products which were capable of non-infringing use and ultimately the machines supplied with steel rollers could be changed by the ultimate user to rubber rollers and that was how the product was marketed.

Knowledge and intention

The Court confirmed that the relevant intention was that of the person supplied and the question was whether the supplier knew, or ought to have known, about the intention of the person who was in a position to put the invention into effect, this person being the ultimate user of the product. In essence the Court held that test of knowledge and intention was whether at the time of supply, or offer of supply, the supplier knew, or it was obvious in the circumstances, that the ultimate user would intend to put the invention into effect. Furthermore the Court held that the person whose intention is referred to need not be the person directly supplied, as on that basis a party who only supplied essential means to middlemen would never fall within the provision. That, in the Court's view, was not the intention of Parliament. The Court added that it was enough if the supplier knew (or it was obvious in the circumstances) that some ultimate users would intend to use, adapt or alter the “means essential” so as to infringe and that a future intention of a future buyer is enough if that is what one would expect in all the circumstances, thus broadening the scope of contributory infringement.

Scope of contributory infringement

The ruling in Grimme has far reaching business implications and, whilst the subject matter of the case may seem removed from other areas of business, the effects of the decision by the Court of Appeal apply equally to other industries. The decision broadens the scope of contributory negligence to the extent that, potentially, it could be applied to cases where infringing use has not occurred and furthermore the intention of infringing use has not even been formed by any specific user. All that will be required is that on the "balance of probabilities" some users will intend to use the "means for putting the invention into effect". Furthermore, this ruling makes it clear that liability can be applied against an entity that supplies the "means" to an intermediary rather than directly to a primary infringer. There are ways to avoid committing indirect infringement of this nature and in cases where there is doubt it is advisable to consult your legal advisors.