In a recent case, the Court of Appeal has considered what constitutes contributory infringement. It has concluded that where the supplier knows that his product can, and probably will be modifed, to infringe, the supplier commits an offence.
Grimme, the patentee of European patent (UK) No. 730399, sued Derek Scott for infringement. The patent claim referred to potato separating machines having elastomeric rollers. The machines of Mr. Scott could be supplied with steel rollers . In Grimme v Scott [2010] EWCA Civ 1110, the Court of Appeal agreed with the court of first instance that the Scott machine did not directly infringe the patent under Section 60(1) of the Patents Act 1977.
"But the machines were designed so that the rollers are interchangeable. Thus those supplied with steel clod rollers can be changed by the ultimate user (or indeed a middleman) over to rubber rollers. Moreover they were marketed on that basis."
The Court of Appeal held that the supply by Mr. Scott of steel-rollered Evolution machines was a contributory infringement contrary to Section 60(2) of the Patents Act 1977.
Section 60(2), in part, states:
a person... 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... 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.
Giving the judgement of the Court of Appeal, Jacob LJ reported that the court had undertaken legal research itself and had asked judicial colleagues in Germany and Holland as to whether they had any relevant case law.
Per Jacob LJ:
"Section 60(2) creates a statutory tort, but it does not spring from any previous notional or common law tort. Its distinctive features, by way of contrast with common law tortious claims, are that the tort is actionable (1) even though what is supplied is capable of perfectly lawful, non-infringing use, (2) even though what is supplied never has been and may never in fact be used in a way directly infringing the patent in suit, (3) without any damage being suffered by the patentee, and (4) at the moment of supply, irrespective of anything that may or may not occur afterwards."
Having considered the origins of Article 60(2). Jacob LJ went on to reject a suggestion that the complete machine could not be a "means, relating to an essential element" because it was a complete unit.
"On the facts of the present case, there is no obscurity in the meaning and application of the expression "means, relating to an essential element of the invention, for putting the invention into effect". Grimme's invention is "put into effect" when the Evolution machine is fitted with rubber rollers. The supply of a steel-rollered machine, which is designed and indeed promoted to enable the steel rollers to be changed for rubber rollers, is plainly the supply of the means by which that can be achieved, and is the supply of a means essential for that purpose. The fact that a steel-rollered Evolution machine, so long as it remains steel-rollered, does not infringe and is capable of lawful use as a complete machine in that state is irrelevant. The section is clearly intended to apply to, among other things, products which are perfectly capable of being used in a manner which will not constitute a direct infringement within s.60(1). The requirements as to suitability and knowledge of intended use limit the scope of the statutory tort in relation to such products, not whether the product itself is capable of lawful use without alteration, addition or adaptation."
As set out above, the section has a requirement of knowledge, and the court considered:
- Whose intention is referred to? Supplier, his direct customer, or the ultimate user?
- How specific must the intention be?
- When must the intention be formed?
It was thought clear that, as per Lewison J in Cranway v Playtech [2009] EWHC 1588 (Pat); [2010] FSR 2, the relevant intention must be that of the person supplied.
However, the court rejected the view, also expressed in Cranway, that the required intention must be that of the person directly supplied by the alleged infringer. Rather, it is enough if the supplier knew that some ultimate users would intend to use the essential means to infringe.
"In short, the knowledge and intention requirements of section 60(2) are satisfied if, at the time of supply or offer of supply, the supplier knows, or it is obvious in the circumstances, that ultimate users will intend to put the invention into effect. That is to be proved on the usual standard of balance of probabilities. It is not enough merely that the means are suitable for putting the intention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.