Defining "Making" in Patent Infringement: Insights from Schutz (UK) Ltd v. Werit (UK) Ltd

Introduction

The case of Schutz (UK) Ltd v. Werit (UK) Ltd (Rev 1) ([2013] Bus LR 565) addresses pivotal questions within patent law, particularly revolving around the interpretation of the term "makes" under the Patents Act 1977. The dispute centers on whether Werit UK Limited ("Werit"), through its reconditioning activities, infringed upon Schutz's patented Intermediate Bulk Containers (IBCs). As a leading manufacturer of rigid composite IBCs in the UK, Schutz sought to protect its innovative two-part IBC design from unauthorized cross-bottling practices that Werit engaged in.

Summary of the Judgment

The United Kingdom Supreme Court reviewed the appellate decisions where Schutz contended that Werit's replacement of its patented Sch tz bottles with Werit bottles constituted patent infringement. Initially, the High Court ruled against infringement, a decision partially overturned by the Court of Appeal, which sided with Schutz. However, upon further appellate review, the Supreme Court ultimately allowed Werit's appeal on the main infringement issue, concluding that Werit's actions did not amount to "making" the patented product as defined by the applicable law. Consequently, Werit was not liable for infringement, although certain aspects related to costs under section 68 of the Patents Act remained unresolved.

Analysis

Precedents Cited

The judgment heavily referenced the seminal case of United Wire Ltd v Screen Repair Services (Scotland) Ltd ([2000] 4 All ER 353), where the House of Lords delineated the boundaries of "making" a patented product. This precedent was instrumental in shaping the Court of Appeal's decision but was re-evaluated by the Supreme Court to account for the nuanced facts of the Schutz case. Additionally, decisions from the German Bundesgerichtshof (BGH) were considered to harmonize interpretations across jurisdictions within the European Patent Convention framework.

Legal Reasoning

Central to the judgment was the interpretation of the verb "makes" in section 60(1)(a) of the Patents Act 1977. The Supreme Court emphasized a contextual and pragmatic approach, considering factors such as the subsidiary nature of the replaced component, its lifespan relative to the overall product, and its connection to the inventive concept of the patent. The Court concluded that Werit's replacement of the Sch tz bottle, a component deemed relatively subsidiary and not embodying the inventive concept, did not constitute "making" the patented IBC.

Furthermore, the Court highlighted the importance of assessing whether the inventive concept remains embodied in the retained parts after the replacement. In Schutz's case, the metal cage, which embodied the inventive elements, remained intact, thereby negating the notion of "making" a new patented product.

Impact

This judgment clarifies the boundaries of patent infringement concerning component replacement in composite products. It underscores the necessity for a nuanced analysis of what constitutes "making" a patented product, particularly in cases involving reconditioning and cross-bottling. The decision aligns UK law more closely with European interpretations, promoting consistency and predictability in patent enforcement.

For industries reliant on reconditioning practices, such as chemical and pharmaceutical sectors utilizing IBCs, this ruling provides greater clarity on permissible modifications without breaching patent rights. It also signals to patentees the importance of defining essential components within their claims to safeguard their innovations effectively.

Complex Concepts Simplified

Understanding "Making" in Patent Law

The term "making" is pivotal in determining patent infringement. It refers to the act of producing or assembling a patented product without authorization. However, its interpretation isn't binary; it involves assessing the degree to which an activity reconstructs or replicates the patented invention.

Section 60(1)(a) and Section 68 of the Patents Act 1977

Section 60(1)(a) defines direct infringement as making, disposing of, offering to dispose of, using, importing, or keeping the patented product without consent. The Supreme Court's analysis centered on whether Werit's actions fell under "making" as per this definition.

Section 68 deals with costs related to patent infringements, particularly when certain transactions or licenses aren't properly registered. The Court examined whether Schutz could recover costs related to infringements that occurred before its license was registered, ultimately allowing Werit's appeal concerning main infringement issues but leaving some aspects of section 68 unresolved.

Conclusion