Schutz (UK) Ltd v Werit UK Ltd & Anor

In determining whether replacing a component of a patented combination amounts to making a new product, the court must ask whether the part left behind embodies the whole inventive concept of the claim. The inquiry is directed to substance, having regard to the nature of the patented article, rather than to the fact that the replaced component is itself a claimed feature. Repair and making are mutually exclusive for the purposes of Patents Act 1977 section 60(1)(a). A patent claim requiring a functional result is satisfied where the skilled person can conclude on a simple mechanical basis that the result is likely. A contractual restriction concerning supply of a patented product in kit form does not offend section 44 merely because the product is supplied as constituent parts.

Schütz, as exclusive licensee, sued Werit for supplying plastic bottles to Delta Containers, which fitted them into used Schütz cages. The action concerned European Patents (UK) 0 370 307 and 0 734 967, relating to tubular cages for intermediate bulk containers. The issues included claim construction, infringement, validity, whether Delta’s cross-bottling amounted to making the patented products, contributory infringement, exhaustion or implied licence, and a statutory defence under section 44 of the Patents Act 1977.

Protechna, the patent proprietor, was joined under section 67(3) but took no active part. The court had to determine whether the replacement bottle left a product embodying the whole inventive concept in the retained cage, and whether the licensing agreement unlawfully tied the supply of other products.

1. Construction and infringement. The terms “double-walled” and “four times the grid rod wall thickness” required the skilled reader to identify two walls and the bringing together of four walls at the weld points. “Common tangential planes” was functional rather than requiring strict geometrical co-planarity. Departures were permitted only while support of the bottle was maintained and the potential for climbing was eliminated. The Schütz cage had a substantial projecting ledge with potential for climbing, so patent 307 was not infringed. Patent 967 was otherwise satisfied, including the functional requirement that the double-dimple geometry relieve weld stress.
2. Validity. Patent 307 was not obvious over Schneider and the ARO brochure. Combining documents is permissible only where it would itself be uninventive in the circumstances. The proposed route depended on several non-self-evident choices and was driven by hindsight. The claim was not insufficient merely because its boundary presented difficulty; the court could construe it. Patent 967 was neither insufficient nor obvious. The added-matter objection failed because the amendment did not strip the raised portion of its disclosed context.
3. Making. For section 60(1)(a), repair and making are mutually exclusive. The correct question is whether, when the relevant part is removed, what remains embodies the whole inventive concept of the claim. The inventive concept of both patents resided wholly in the cage. Replacing the bottle therefore did not make either patented product, even though the resulting combination was a new product for regulatory purposes.
4. Section 44. A restriction requiring assembly from parts supplied by the patentee or its licensees did not concern something other than the patented product. The patented product could be supplied in kit form. The section 44 defence therefore failed.
5. The court expressed only a provisional view that not every claim feature is necessarily an essential element for section 60(2); the issue was better decided in a case where it affected the result.

Accordingly, patent 307 was valid but not infringed, patent 967 was valid but not infringed, and the section 44 defence failed.