Schütz v Werit: Supreme Court says replacing isn’t making
The UK Supreme Court has delivered its verdict in Schütz v Werit, ruling that replacing a part is not necessarily an act of ‘making’.
The ruling means manufacturers may be able to replace parts of patented products without being liable for infringement.
Schütz is the exclusive licensee of patents for bulk containers used for transporting liquids made up of a bottle in a metal cage on top of a flat pallet.
The company sued Werit in 2008, arguing that by making replacement bottles and selling them to a re-conditioning company, Werit was infringing its patents for the containers.
Schütz’s claims were dismissed by Justice Floyd at England’s High Court in 2010, who ruled that the “activity of replacing the inner container of a Schütz IBC [intermediate bulk container] with a Werit bottle does not amount to ‘making’ the patented product” – the test of infringement under section 60 of the UK’s Patent Act.
This decision was overturned by the UK Court of Appeal in 2011, which found Werit liable for infringement.
But in a ruling published on Wednesday, March 13, the Supreme Court delivered a unanimous verdict that repairing a product frequently involves replacing one or some of its parts and should not be viewed as “making” a new article.
“Works to a ship or a motor car, which involve removal and replacement of defective significant constituent parts, could be substantial in terms of physical extent, structural significance, and financial cost, without amounting to ‘making’ a ship or motor car,” said presiding judge Lord Neuberger.
Neuburger added that whether carrying out repairs constitutes making depends on a number of factors.
In Werit’s case, he concluded that the bottles in Schütz’s containers could be said to be only a subsidiary part of the patented product as they have a lower life expectancy than the cages in which they sit and do not have any connection with the claimed inventive concept.
As re-conditioner Delta carries out no additional work beyond replacing bottles manufactured by Werit, Nueburger said it does not “make” the patented article.
The ruling brings UK case law more in line with German Supreme Court decisions in Impeller Flow Meter, Laufkranz case X ZR 45/05 and Pipettensystem case X ZR 38/06.
Stephen Bennett, a partner at Hogan Lovells who led the team advising Werit, said it “removes an obstacle to reconditioning” and “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.”
Schütz was represented by SNR Denton. The firm did not respond to requests for comment.
