In Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110, Grimme’s patent related to a machine for sorting potatoes from the by-products of the harvesting process, such as earth, stones and stalks. The significant part of Claim 1, for the purpose of this dispute, was to a machine with a number of rollers arranged in pairs on parallel that which rotated in opposite directions “characterised in that the roller bodies comprise an elastically deformable shell part”.

Mr Scott sold a competing potato-separator called the “Evolution” which had steel rollers. He separately sold rubber “spiral” rollers, which could be substituted for the metal rollers on the Evolution machine.

Jacob LJ rejected Mr Scott’s submission that the supply of a complete machine with steel rollers could not be the supply of a “means, relating to an essential element of the invention, for putting the invention into effect”, because it was an entire unit capable of being used as supplied. The fact that a steel-rollered machine, so long as it remained steel-rollered, did not infringe and was capable of lawful use as a complete machine in that state was, in Jacob LJ’s view, irrelevant. The requirements as to suitability and knowledge of intended use limited the scope of the statutory tort in relation to such products and it was not a question of whether the product itself was capable of lawful use without alteration, addition or adaptation. Furthermore, Jacob LJ held that there was no reason why a device to which a part could be readily added to make it fall within a claim should be a “means essential”, but a device from which a part could readily be removed or replaced to make it fall within the claim should not be such a means.

As to what was needed to satisfy the requirements of knowledge and intention for contributory infringement under Section 60(2), following KCI Licensing v Smith & Nephew [2010] FSR 740, Jacob LJ held that it was clearly the intention of the person supplied and not of the supplier himself that was key.

Accordingly, the Lords Justices upheld Floyd J’s decision that the machine and its rollers were designed in order to enable the steel rollers to be replaced with rubber rollers and that, on the evidence, Mr Scott knew (and it was obvious to a reasonable person in the circumstances) that the machines were both suitable for running with at least two pairs of rubber rollers.