Schütz (UK) Ltd v Werit (UK) Ltd

For direct infringement by making, the question is whether the defendant has made the patented product identified by the claims. Repair and making are mutually exclusive statutory concepts: repair is the residual right to do what does not amount to making. The court must consider the nature of the claimed product and what the defendant did. It must not add a separate whole inventive concept test. Where a patent claims a combination, removal of one component may cause the claimed product to cease to exist. Reusing the retained component with a replacement component can therefore amount to making a new patented product. A sale alone cannot confer a licence to make another product, although additional facts may establish such a licence.

Schütz, the exclusive licensee of a patent for an intermediate bulk container, appealed Floyd J’s dismissal of its infringement claim against Werit. Werit cross-appealed the finding that the patent was valid. The appeal was from the Patents Court decision reported at [2010] EWHC 660 (Pat).

Delta bought discarded Schütz containers, removed their bottles, repaired the cages where necessary, fitted Werit bottles and sold the resulting containers. The remaining issues were the construction and alleged ambiguity of a claim feature, added subject matter, and whether fitting a replacement bottle into a Schütz cage constituted making the patented product under section 60(1) of the Patents Act 1977 and Article 25 of the Community Patent Convention. The central question was whether the replacement operation made a new patented intermediate bulk container.

Disposition. The appeal was allowed and the cross-appeal was dismissed. Lord Justice Jacob gave the leading judgment, with Lord Justices Patten and Ward agreeing.

1. Construction. The reference in feature C to material accumulation corresponding to quadruple wall thickness described the four tube walls brought together at the weld points. It did not require a weld whose thickness was four times the tube-wall thickness. That construction was neither ambiguous nor meaningless, so the Pinocchio objection did not arise.
2. Added matter. The words requiring the central raised part to extend across the cross-section of the recesses made explicit what was shown in the application as filed. The amendment did not strip the feature from its context and introduced no new matter.
3. Applicable statutory question. Section 60(1)(a) of the Patents Act 1977 was treated as equivalent in substance to Article 25 of the Community Patent Convention. Under section 125(1), read through section 130(7), the extent of protection was governed by Article 69 of the European Patent Convention, namely by the claims as interpreted with the description and drawings. The issue was therefore whether the defendants had made the claimed product.
4. Repair and making. United Wire v Screen Repair Services [2001] RPC 24 established the making approach and excluded any additional whole-inventive-concept test. Repair is the residual right to do what does not amount to making. The nature of the claimed product and the acts performed must be examined; describing work as repair does not determine the statutory question.
5. Application. The patent claimed an intermediate bulk container as a combination of pallet, bottle and cage. Once the bottle was removed, the claimed container ceased to exist. The remaining cage was only a component from which a new container could be made. By fitting a Werit bottle into a Schütz cage, Delta made a new patented container without Schütz’s licence. The German authorities concerned consumer replacement of parts and involved a materially different approach; they did not alter the result.

1. Court of Appeal (Civil Division) allowed Schütz’s appeal and dismissed Werit’s cross-appeal.
2. Chancery Division, Patents Court Floyd J dismissed the infringement claim but held the patent valid: [2010] EWHC 660 (Pat).