BACKGROUND

In Schütz (UK) Ltd v Werit (UK) Ltd [2011] EWCA Civ 303, the Court of Appeal of England and Wales has ruled upon whether “reconditioning” amounts to “making” the product within the meaning of Section 60(1) of the Patents Act 1977. Schütz Ltd, the exclusive licensee of a patent for a product consisting of a bottle fitted inside a cage, appealed against Mr Justice Floyd’s dismissal of its infringement claim against Werit, which manufactured its own bottles, designed to fit Schützs cages. Werit cross-appealed the judge’s finding that the patent was valid.

DECISION

Noting that Section 60(1)(a) was a “pointless re-write” of Article 25 of the Community Patents Convention (CPC), Jacob LJ set about answering the question “did the act of putting a bottle into a Schütz cage, constitute ‘making a product which is the subject-matter of the patent’ within the meaning of Article 25 of the CPC?”

Both sides sought to rely on the House of Lords decision in United Wire v Screen Repair Services [2001] RPC 24. In the view of Floyd J at first instance, that case established that the correct approach was to ask whether, when the part in question was removed, what was left embodied “the whole of the inventive concept of the claim”. The first instance judge went on to hold that in the current case it was the cage that embodied the whole of the inventive concept of the claim. Hence, he reasoned, putting a new bottle into a cage was not “making” the patented article. According to Schütz, however, the first instance judge was wrong. In this respect the dispute focussed on the following passage of Aldous LJ’s ruling.  

It is… better to consider whether the acts of a defendant amount to manufacture of the product rather than whether they can be called repair, particularly as what could be said to be repair can depend upon the perception of the person answering the question. Even so, when deciding whether there has been manufacture of the product of the invention, it will be necessary to take into account the nature of the invention as claimed and what was done by the defendant.

Agreeing with Schütz, Jacob LJ rejected Werit’s submission that the last sentence brought in by implication the “whole of the inventive concept test”. In Jacob LJ’s view, if that were the case, Aldous LJ could not have gone on to conclude as follows:  

To characterise the work done by Screen Repair as repair does not in my view decide the issue of whether they had manufactured the product of the invention. In the present case Screen Repair reconditioned or repaired a frame made by United Wire and re-used it to make an assembly as claimed in claim 1. That in my view amounted to infringement. Jacob LJ held that the same reasoning applied in this case. He held that fitting Werit bottles into Schütz cages was making the product which fell within the patent.

All of Werit’s invalidity attacks against Schütz’s patent failed.