The court’s ruling in a case concerning bulk liquid containers potentially allows production of consumable parts for objects including cartridges without fear of infringing patent rights.
The UK’s Supreme Court
The decision in the case between Schütz and Werit, the former the original manufacturer of bulk containers and the latter a company offering the option to replace damaged bottles with its own, has been “long-awaited” according to the solicitors that worked on Werit’s behalf, Hogan Lovells.
Schültz, which holds the patent for the bulk container, patented the “bottle in a metal cage on top of a pallet”, much like those used to transport inkjet ink. Werit in turn offered customers the option to “replace damage or worn bottles” with bottles it has produced, and customers would then sell those bulk containers, referred to as “reconditioned”.
The High Court had ruled the patent had not been infringed, but the Court of Appeal decided the test undertaken had been incorrect and stated “the patented product should be considered as a whole, of which the cage and bottle were each parts”, thus in turn meaning Werit’s customers, by putting a new bottle in the cage, were “effectively completing the patented product”, and by doing so “without a licence, they had infringed” the patent, as had Werit.
However, the Supreme Court’s ruling stated that “replacing a part is not necessarily an act of ‘making’” and that Werit and their customers “had not been infringing patent rights by supplying replacing parts” for the bottles, and the “unanimous decision”, according to Hogan Lovells, is that “manufacturers are potentially now able to create replacement consumable parts for objects such as cars or ink cartridges for printers without fear of infringing patent rights”.
The Supreme Court’s rationale is that “if replacing parts, manufacturers would have to take into account a range of factors” including whether the part “is expected to be replaced in the normal life of the larger item and whether it forms part of the invention”. In turn, it noted that the decision “brings English law more closely in line with equivalent German Supreme Court case law”.
Hogan Lovells partner Stephen Bennett led the team advising Werit in the case, and stated: “This decision removes an obstacle to reconditioning – it means that manufacturers can now potentially create replacement parts for larger consumable objects without fear of infringing patent rights.
“It also has the potential to open up the market for consumable parts and allow more competition in the manufacture of consumable parts such as filters and cartridges.”