Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery)

A patent claim must be construed through the skilled person’s understanding of its language and technical purpose. Where a claim requires ribs or like extensions to project from a cylindrical shell, star wheels separated by collars do not satisfy that requirement.

Under Patents Act 1977 section 60(2), contributory infringement may arise from supplying a complete product capable of lawful use. It is sufficient that the product is designed or promoted for an adaptation which will probably be intended by ultimate users to put the invention into effect. Actual direct infringement, a presently identified user, and a settled intention at the time of supply are unnecessary.

Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) concerned a patent for a potato-separating apparatus using counter-rotating rollers. Grimme alleged infringement of the patent and unregistered design right. Mr Scott sought revocation of the patent and relied on claims for unjustified threats.

Floyd J held claim 1 invalid, but upheld claims 17 and 24. He found direct infringement where Scott’s Evolution separator used elastomeric rollers, and contributory infringement where it was supplied with a steel clod roller that could be exchanged for a rubber roller: [2009] EWHC 2691 (Pat).

Grimme appealed the construction and validity of claim 1. Scott cross-appealed on validity, contributory infringement under Patents Act 1977 section 60(2), and unjustified threats. The central questions were the proper construction and obviousness of claim 1, and the meaning of intention under section 60(2).

1. Disposition. The court allowed Grimme’s appeal on claim 1 and dismissed Scott’s respondent’s notice and appeal. Claim 1 was valid. The patent was wholly valid, and sale or offer for sale of the Evolution machine with an elastomeric clod roller directly infringed the patent.
2. Construction and validity. Applying the skilled-person approach to construction, the court held that the claimed lip, rib or like extension had to rise from a recognisable cylindrical part of the roller. It therefore needed axial length. The separated star wheels and collars in the Rollastar and Pearson apparatus were outside the claim. On that narrower construction, the skilled person had no reason, without hindsight, to make the series of conceptual changes needed to turn the Rollastar, Spatz or Dahlmann arrangements into the claimed invention. The obviousness attacks failed.
3. Contributory infringement. The supply of the steel-rollered machine was a supply of means relating to an essential element of the invention. The machine was deliberately designed and promoted so that the steel roller could be replaced with a rubber roller, thereby producing an infringing configuration. Its capability for lawful use while unmodified did not exclude liability under Patents Act 1977 section 60(2).
4. Intention. The relevant intention is that of the person who will ultimately put the invention into effect, not that of the supplier or necessarily of an intermediate purchaser. A settled intention by an identified user at the time of supply or offer is unnecessary. Liability arises where, on the balance of probabilities, the supplier knows, or it is obvious, that ultimate users will probably intend the infringing use. Mere suitability is insufficient, but a supplier’s recommendation or promotion of that use will commonly satisfy the requirement.
5. Threats and remedies. Scott’s appeal on unjustified threats failed. The court also gave provisional obiter guidance that injunctions for contributory infringement would ordinarily restrain infringement in general terms, while any financial remedy should reflect the extent to which supplied products were actually adapted or intended to be adapted to infringe.

• Court of Appeal (Civil Division) — allowed Grimme’s appeal on claim 1 and dismissed Scott’s appeal and respondent’s notice: [2010] EWCA Civ 1110 .
• High Court, Chancery Division, Patents Court — Floyd J held claim 1 invalid, upheld claims 17 and 24, and found contributory infringement and no actionable unjustified threats: [2009] EWHC 2691 (Pat) .