Further Information on UK Ruling in Schutz v Werit

Further information was given on the Schütz v Werit case by the UK’s Supreme Court. The case concerned the repair of a patented product by replacing a component part. It raises the question of whether this should count as patent infringement.

The product involved was a bulk container, known as an IBC, consisting of two parts—a large plastic bottle to contain liquids and a strong metal cage in which the bottle is held. The patent, awarded to Schütz, relates to a product which includes both the bottle and the metal cage.

Because the metal cage has a much longer life than the bottle, a market for the replacement of the bottles consequently emerged. Werit is a manufacturer of bottles for IBCs and sells them to a second party, Delta, which sold the replacement bottles with Schütz’s used metal cages. Both of these companies were charged with patent infringement by Schütz.

Britain’s High Court held that Delta’s activity did not constitute the making of a patented product. But the decision was reversed in the Court of Appeals, which was then appealed again.

In the second appeal, the UK Supreme Court ruled that it needed to be determined “whether the bottle should be considered a subsidiary part of the whole article, and thus whether the replacement of the bottle was making a new article.” It was noted that as the metal cage had a lifespan “five to six times longer” than the bottle “it would be expected that the bottle needed to be replaced” and that this was “indicative that the bottle was a subsidiary part.”.

In the Patents Act 1977, direct infringement was defined as when a person “makes, disposes of, offers to dispose of, uses or imports the product or keeps it, whether for disposal or otherwise” and indirect infringement as “the knowing “supply” to a primary infringer of “any of the means” which enable him or her to carry out the infringing act”. Therefore, it means that if Delta is found guilty of infringement, so will Werit.

The court cited a passage from another case which suggested that a purchaser should have control over a purchased item. Besides, the court assessed whether the bottle “embodied any aspect of the inventive concept of the patent, or was closely connected with the concept”, with the High Court finding that the fact that the bottle fit into the cage was relevant.

A further consideration by the court was that both the bottle and the cage were “free-standing” items of property and that the cage did not cease to exist when the bottle was replaced. Therefore the court judged that Delta did not infringe the patent involved.