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INDIRECT INFRINGEMENT OF PATENTS JURISDICTION REPORT: UK


Sebastian Moore and Daniel Pearce Herbert Smith LLP


Until now, there was little guidance from the UK courts on the scope of indirect (or contributory) patent infringement under section 60(2) of the Patents Act, 1977 (PA77). Tis provision—which originates from article 26 of the Community Patent Convention and therefore should be interpreted consistently across its signatory states—was recently given a broad interpretation by the Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v. Derek Scott (t/a Scotts Potato Machinery).


S60(2) PA77 allows patentees to take action against suppliers of goods that are not themselves infringing, but that are used to infringe a patent, either in modified form or in conjunction with other goods. It says:


“Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.”


Scott, the defendant, sold two variants of a potato-sorting machine: one with elastomeric rollers and one with steel rollers. Te version with elastomeric rollers was held to infringe Grimme’s patent directly; however, the version with steel rollers did not. Nevertheless, because end users of the machine with steel rollers were able to exchange them for elastomeric rollers (the machines were marketed by Scott on this basis), Grimme asserted that Scott’s supply of these machines fitted with steel rollers indirectly infringed the patent; that is, the machines were “means…for putting the invention into effect”.


Having found the patent valid, the Court of Appeal examined the origins of S60(2) PA77 in the light of existing UK and Dutch cases, and in particular a number of German cases. Te court concluded as follows regarding the knowledge and intention requirements of S60(2):


• The relevant intention referred to is that of the person supplied with the ‘means’, not the supplier


• Indirect infringement under S60(2) may occur where the supplier of the means sells to an intermediary, who then sells to the end user, who ultimately infringes the patent


• The intention need not be that of a specific ultimate user: it is sufficient “that some ultimate users will intend to use or adapt the means so as to infringe”


• Because the provision applies to the offer to supply the means, it must apply where there is no current intention of the ultimate user to infringe:


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“ IN CONSIDERING THIS, THE COURT SUGGESTED THAT, IN MOST CASES, A NORMAL INJUNCTION (I.E. SIMPLY RESTRAINING THE DEFENDANT FROM INFRINGING THE PATENT) WOULD BE GRANTED AND THAT IT IS FOR THE DEFENDANT TO WORK OUT HOW TO STOP INFRINGING USE.”


a “future intention of a future buyer is enough if that is what one would expect in all the circumstances”


• The question of the defendant’s knowledge of the ultimate user’s intention to infringe must be determined on the balance of probabilities. Terefore, if the defendant encourages end users to modify or use the means in an infringing manner, this will be relevant evidence in establishing such knowledge


• There appears to be no lower threshold for indirect infringement: it seems that, provided any of the means are/will be intended to be put to an infringing use and the defendant knows (or ought to know) this, a claim under S60(2) can be established. Te extent of the infringing use is a question for the court during the inquiry as to damages.


Applying these principles, the Court of Appeal concluded that Scott’s sale of the machines with steel rollers did indirectly infringe the patent.


Lastly, because in S60(2) PA77 cases, the means could be used in both infringing and non-infringing ways, there is a question as to the form of injunction that the court might grant. In considering this, the court suggested that, in most cases, a normal injunction (i.e. simply restraining the defendant from infringing the patent) would be granted and that it is for the defendant to work out how to stop infringing use. However, the court did note that, where the defendant had made reasonable efforts to stop infringing use but had failed, contempt of court proceedings might not be appropriate, although the defendant would seemingly still be liable for damages resulting from such infringing use.


Sebastian Moore is a partner at Herbert Smith LLP. He can be contacted at: sebastian.moore@herbertsmith.com


Daniel Pearce is a senior associate at Herbert Smith LLP. He can be contacted at: daniel.pearce@herbertsmith.com


World Intellectual Property Review November/December 2010 97


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