In Musion Systems Ltd v Activ8-3D Ltd [2011] EWPCC 12, the judge ruled on a preliminary issue in a patent infringement action regarding the extent to which various acts by four Defendants amounted to offering for disposal, manufacture and supply of certain infringing apparatus under Section 60(1)(a) of the Patents Act 1977 (the Act).

BACKGROUND

The Claimant alleged that the Defendants had infringed its patent by the manufacture, offer to supply and supply of image projection apparatus; the keeping of said apparatus; the subsequent use of that apparatus to demonstrate to potential customers, which the Claimant said also amounted to an offer to supply to those customers; the use of image projection apparatus at a theatre to demonstrate the apparatus to potential customers, which the Claimant also alleged amounted to an offer to supply; the subsequent manufacture and supply of apparatus to customers to whom it had been demonstrated; the manufacture, offer to supply, supply and use of image projection apparatus as demonstrated on a website; and the offer to supply to specific customers.

OFFER FOR DISPOSAL

HHJ Birss QC began by reviewing the law on the proper scope of “offer for disposal” and “make” under Section 60(1)(a). That section provides that, where the invention is a product, a person infringes a patent where, without the owner’s consent, he “makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise”.

On the scope of “offer for disposal”, the Claimant sought to rely on Gerber v Lectra [1995] RPC 383 in which Jacob J said:

A party who approaches potential customers individually or by advertisement saying he is willing to supply a machine, terms to be agreed, is offering it or putting it on the market. If that happens during the life of the patent he infringes. He is disturbing the patentee's monopoly which he ought not to do.

Agreeing with this, HHJ Birss QC said that Jacob J was rejecting a submission that anything short of an offer capable of acceptance in terms of the English law of contract was outside the Act. The judge also observed that the law did not require, for Section 60(1)(a) to be satisfied, that the person to whom the offer was made necessarily knew anything about how the product worked or was configured.

MAKING

On the issue of “making”, the judge commented that some “real contribution” to the finished apparatus would be required. As regards the quality of the work an individual carried out, in the judge’s view, “making” must be focused on the product as defined in the claim. The terms of the claim were therefore decisive.

On the question of “making” the apparatus in question, one of the Defendants clearly helped another to construct the installation but his contribution, inasmuch as it consisted of “stapling and woodwork… as well as the tea making” was “minor and insubstantial” and not sufficient to constitute making under Section 60(1)(a).

OFFER TO SUPPLY

On the issue of “offer to supply”, the judge had to decide whether demonstration of apparatus to “illustrate the technology of image projection apparatus systems generally” constituted an offer to supply customers with an apparatus of that type. In this respect, HHJ Birss QC recalled Lord McNaughton’s words in Montgomery v Thompson “Stone Ales” (1891) 8 RPC 361: “thirsty folk want beer not explanations,” which he used to make the point that customers are likely to be indifferent to detail if they get what they want or something like it. Nevertheless, HHJ Birss QC found, on the facts, that at the demonstrations customers were being told that the system offered would differ and considered that there was insufficient evidence to safely conclude that “in the particular circumstances of this case, merely demonstrating the Musion system to potential customers can be taken as an offer for disposal of a system constructed in that manner”.

COMMENT

There were several factual scenarios that the judge needed to apply the above law to, and for each scenario where making, offering, demonstrating etc. had been shown, the judge also needed to determine which of the Defendants was liable (jointtortfeasorship was an issue). The judgment provides a useful reminder of the law on this topic, and shows how the case law will be applied to the facts; however it is also a reminder that this is a fact specific area of patent law, and will require a detailed review of the actions and activities of a defendant in order to prove infringement, and is thus an area where the documentary disclosure is likely to be key.