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ISSUE 1 2014 MASCHIO & SOAMES IP LTD
However, the Dutch, German and now also the UK courts have ruled that system and method claims of this type cannot be used to prevent sales of unpatented consumables forming part of a patented machine’s system.
In 2003, the Dutch Supreme Court ruled in the case of Sara Lee v Integro (Case C02/227HR) that Integro’s coffee pads did not infringe the system claim of Sara Lee’s coffee machine patent EP-B-904717, even though the pads were made and marketed to be used on Sara Lee coffee machines. The court held that an “essential element of the invention” must be one which distinguishes the invention from the prior art. The court held that the coffee pads were not such an essential element, and therefore that their supply was not contributory infringement. A similar judgment was delivered in the corresponding litigation in Belgium.
In 2007, the German Federal Supreme Court reversed earlier jurisprudence from the lower German courts and further specified the criteria of indirect infringement and exhaustion in its decision Pipettensystem (judgment dated 27 February 2007, X ZR 38/06). In particular, it held that the “means, relating to an essential element of the invention, for putting the invention into effect” must contribute to implementing the technical teaching of the invention. That is to say, while “the fact that the element was known in
the prior art did not prevent it being an essential element of the claim”, if “a feature was of completely subordinate importance for the technical teaching of the invention it could be regarded as a non-essential element.”
In 2012, the Düsseldorf District Court in Nestec v. Ethical Coffee Company (Suisse) SA and Betron AG applied the reasoning of the Pipettensystem decision to find that there was no indirect patent infringement from sale of unpatented coffee capsules for use in a patented coffee machine system or method.
Finally, in 2013, the English High Court in Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others [2013] EWHC 923 also considered the question of infringement of coffee machine system claims by the supply of non-patented coffee capsules for use in the system. The High Court reached the same conclusions as the Dutch and German courts, but with different reasoning.
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