Grimme Landmaschinenfabrik GmbH & Co KG v Derek Scott (trading as Scotts Potato Machinery  EWCA Civ 1110, 15 October 2010
Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr009, first published online 9 February 2011
The Court of Appeal has delivered a strongly pro-patentee judgment that, in addition to allowing the patentee's appeal regarding validity, has clarified the approach under English law to indirect or contributory patent infringement and the interpretation of section 60(2) Patents Act 1977.
The statutory tort of ‘indirect’ or ‘contributory’ patent infringement in the United Kingdom is set out in section 60(2) Patents Act 1977:
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.This section closely follows the wording of Article 26 Community Patent Convention and, by section 130 Patents Act 1977, has the same meaning. That Convention never came into force but it has nevertheless had a harmonizing effect, in that the laws of key European countries regarding contributory patent infringement, most notably Germany (discussed below), also follow Article 26.
In this case the legal questions before the Court were: (i) can the ‘means’ consist of a complete machine, or must they be something less, such as a component part, and (ii) what is required to satisfy the knowledge requirement of section 60(2), in particular, that the supplier ‘knows … that those means … are intended to put the invention into effect’?
European Patent (UK) No. 730 399, as amended, related to potato separators—machines for separating potatoes from unwanted materials such as weeds, earth, clods, stones and plant stalks. The patent described a potato-separating apparatus comprising a number of pairs of counter-rotating rollers. Important features of the apparatus, reflected in the wording of claim 1 of the patent, were that the first roller in each group had a cross-sectional form which exerted ‘amplified forward feed’ at least once in each rotation and had on its periphery ‘at least one conveyor lip, rib or like extension part projecting beyond the contours of the cylindrical shell part’ of the roller. The rollers were also required to comprise ‘an elastically deformable shell part’.
At first instance Floyd J held that claim 1 of the patent to be invalid, due to obviousness over a prior art machine known as the ‘Rollastar’. This hinged on certain findings by the judge regarding construction, in particular that the ‘conveyor lip, rib or like extension part’ could include a series of rotating star wheels with protruding ‘fingers’ and that these fingers protruded ‘beyond the contours of the cylindrical shell part’ of the roller. However, Floyd J held that a dependent claim was both valid and infringed. A further construction finding—that all of the rollers in each group had to have an elastically deformable shell part—meant that contributory infringement by machines with steel clod rollers remained a live issue. The judge dealt with it very shortly, holding that there was infringement under section 60(2) in that Scott knew, and it was obvious to a reasonable person in the circumstances, that the steel-rollered machines were both suitable for running with at least two pairs of rubber rollers, and so intended.
Both parties appealed: Grimme on the validity of claim 1 and Scott on both the validity of the dependent claims that had been held valid and on the question of contributory infringement.
The Court of Appeal allowed Grimme's appeal and dismissed Scott's cross-appeal. The Court agreed with Grimme's submissions regarding the construction of claim 1 and held that Floyd J had read the claim too widely. In doing so the Court noted that neither of the parties' experts had thought that the Rollastar machine had a ‘lip, rib or like extension’ that extended ‘beyond the contours of the cylindrical shell part’ of the roller. While the court was not bound by the views of experts, it was a ‘strong thing’ for the court to depart from a view which they shared.
The result was that the Rollastar ‘fingers’ no longer fell within the scope of claim 1. Having come to a different view to the trial judge on construction, the Court of Appeal reconsidered the obviousness of claim 1 over the Rollastar, concluding that it was not obvious. Neither was claim 1 obvious over any of the other prior art relied upon by Scott. Thus the patent was wholly valid and claim 1 directly infringed by Scott's (rubber-rollered) Evolution machine.
This still left the question whether the patent was indirectly infringed by Scott's steel-rollered machines. The Court of Appeal conducted a thorough review of the development of the Convention and of section 60(2). However, the common law, US law and the travaux préparatoires for Art. 26 provided no assistance as to the meaning of the provisions of Art. 26/section 60(2). The Court therefore had to rely simply on the wording of Art. 26 and such case-law as there was.
The Court had no hesitation in holding that there was nothing in Scott's argument that the ‘means’ in section 60(2) had to relate to something less than a complete machine. The fact that a steel-rollered Evolution machine was capable of lawful use and did not itself directly infringe was irrelevant to the question. On the contrary, the supply of a steel-rollered machine, which was designed and indeed promoted to enable the steel rollers to be changed for rubber rollers, was plainly the supply of means essential for the purpose of putting the claimed invention into effect.
More tricky was the interpretation of the knowledge requirement of section 60(2). Specific questions be addressed were: (i) Whose intention was relevant? That of the supplier, the immediate customer or the ultimate user? (ii) How specific must the intention be? Must a person have formed a definite intention to put the claimed invention into effect or is it sufficient that the person knows that he can do so and might at some point wish to do so? (iii) Must the intention exist at a specific time, eg the time of the actual supply or offer to supply the means?
The Court reviewed existing UK case law in KCI Licensing v Smith & Nephew  EWHC 1487 (Pat), Cranway v Playtech  EWHC 1588 (Pat), Chapman v McAnulty (Unreported, 19 February 1996, British Library SRIS C/20/96) and numerous German authorities on indirect patent infringement, of which the leading case was Deckenheizung, a decision of the Supreme Court (BGH X ZR 153/03, 13 June 2006).
The Court felt that the intention of the supplier could be ruled out: the necessary intention was to put the invention into effect, which was something the supplier himself did not intend to do. The question was what the supplier knew or ought to know about the intention of the person who is in a position to put the invention into effect. However, it was clear that the tort created by section 60(2) could apply where there had only been an offer to supply the relevant ‘means’. At such a time there may be no settled intention by any specific person to directly infringe. The Court concluded that (as Grimme argued) what was required was a finding, made in the light of all the circumstances and on the balance of probabilities, that either the supplier knew, or it was obvious in the circumstances, that some ultimate users would intend to use or modify the ‘means’ so as to directly infringe.
The BGH in Deckenheizung expressly considered the case where the supplier had himself proposed the infringing use, concluding that this would usually lead to a finding that the supplier knew, or it was obvious to him, that the means would be intended to put the invention into effect. This was apposite to the present case, in that Scott had made a selling point of the fact that his steel clod rollers could be substituted with rubber ones.
This case now forms the leading authority on the proper interpretation of section 60(2) Patents Act 1977 and was almost immediately relied upon by the Court of Appeal in the subsequent case of KCI Licensing v Smith & Nephew  EWCA Civ 1260 and this later judgment (see paragraph 53) contains a useful summary of the Court of Appeal's conclusions as to the scope of section 60(2).
In short, the question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect, ie the end-user. If, at the time of the supply or offer, the supplier knows, or it is obvious in the circumstances, that some ultimate users will intend to put the invention into effect (assessed on the balance of probabilities and disregarding maverick or unlikely uses), there will be contributory infringement.
This decision will be welcomed by patentees, since it dispels any requirement that the patentee must prove a settled intention to directly infringe at the time of any supply or offer. Conversely, parties concerned about the possibility of being sued for contributory infringement will need to consider carefully whether they have taken appropriate steps to ensure that the circumstances in which they supply or offer their products are such that it is not obvious that any end-users will intend to infringe.
Finally, legal practitioners should note the strong direction given by the Court of Appeal (see paragraphs 79–80 of its judgment) that it should have its attention drawn to decisions of the courts of other members states of the EPC or CPC on points of patent law of general importance, and that the UK courts should in general seek to follow the reasoning of an important and authoritative decision given in another country, only departing from it if the UK court is convinced that the reasoning is erroneous. The desire of the Court of Appeal to seek harmonization as far as possible on points of patent law is clear.