Nestec SA & Ors v Dualit Ltd & Ors

A patent claim is construed according to the skilled person’s understanding of its language and purpose. Priority requires the claimed subject matter to be derivable directly and unambiguously from the priority document; broader alternatives which are not clearly defined do not receive partial priority. Prior use anticipates where it discloses enabling subject matter which would necessarily infringe. For indirect infringement, a purchaser of a patented machine is ordinarily impliedly licensed, or benefits from exhaustion of rights, to obtain compatible consumables. A consumable is a means relating to an essential element only if it contributes to implementing the technical teaching, but supply is exempt where it is a staple commercial product. Replacing or acquiring a subsidiary consumable does not necessarily amount to making a patented system.

Nestec, the owner and licensees of a European patent concerning a capsule extraction system, alleged that Dualit had infringed by supplying compatible coffee capsules for use with Nespresso machines. Dualit denied infringement and counterclaimed for revocation on priority, added matter, novelty, obviousness and insufficiency grounds.

The court considered the patent as granted and subject to a conditional amendment. The principal issues were construction of the claims, entitlement to priority, anticipation by the priority document and prior uses, obviousness over Blanc, indirect infringement under section 60(2) of the Patents Act 1977, and whether consumers made a patented system by purchasing capsules.

1. Construction. “Against” did not require direct contact between the movable and fixed parts. The claims were broad enough to cover intermediate sealing components, including a capsule flange. “Guide means” could comprise separate insertion slides and need not control the capsule throughout its descent. However, the movable part had to receive the capsule and exert a downward force while displacing it into the extraction position. The Pixie and U arrangements therefore fell outside integer 1M.
2. Priority and validity. Under section 5(2)(a) of the Patents Act 1977 and Article 87(1) of the European Patent Convention, the claimed subject matter had to be derivable directly and unambiguously from the priority document. The alternatives concerning a housing in the movable part and in the fixed part were clearly defined, but a housing divided between both parts was not. Nor did the priority document disclose inclined capsules. Claim 1 and the other claims were therefore not entitled to priority. The patent was not invalid for added matter, and claim 5 was not insufficient because its apparently repetitive requirements were tautologous.
3. Novelty and obviousness. Claims 1, 2, 7 and 8 lacked novelty over the priority document under section 2(3). The Field Tests and Venice Convention also made the Essenza mechanism available to the public. Claim 1 remained novel over the 1,2,3 Spresso because occasional faulty operation did not amount to a disclosure teaching the skilled person to produce a system with the claimed features. Applying the structured approach in Pozzoli v BDMO SA [2007] EWCA Civ 588, claim 1 was not obvious over Blanc [US Patent No. 5,766,527].
4. Indirect infringement. Owners of Nespresso machines were impliedly licensed, and had exhausted rights, to obtain compatible capsules. A capsule was a means relating to an essential element because its flange contributed to the technical teaching; the German approach to that requirement was preferred. NX capsules were not staple commercial products. Nevertheless, acquiring a capsule did not make the claimed system: the capsule was subsidiary, consumable, independently marketable, and did not embody the inventive concept. Dualit therefore committed no act under section 60(2), even assuming validity.

First-instance decision in the High Court (Patents Court). The judgment itself records pending appeals from the European Patent Office Opposition Division, but no appellate decision in this litigation.