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23 April 2013

Nespresso’s European Patent Runs Into Trouble In The UK Courts

Nestlé and its research arm, Nestec, were dealt a blow by the Patent Courts earlier this week. In a judgement handed down on 22 April 2013, Mr Justice Arnold found not only that the UK part of Nestec’s European Patent no. 2 103 236 was invalid, but also that, even had the patent been valid, then the defendant, Dualit, still would not have infringed the patent.

The judge held that the patent was not entitled to claim priority from an earlier European patent application filed in 2003.  This is meant that prior use of Nestec’s Essenza coffee machines at the Venice Convention and in field tests after the filing date of the priority application in 2004 anticipated claim 1 of the patent.  Furthermore, because claim 1 of the patent was broader than the disclosure found in the earlier published European priority application, claim 1 of the patent was found also to lack novelty in view of the earlier application.

The judge also considered whether Dualit would have indirectly infringed the patent had it been found to be valid.  He considered several aspects of indirect infringement including whether owners of the Nespresso machines were licensees, whether the capsules were “means relating to an essential element of the invention”, whether they were a staple commercial product and whether they were “means suitable for putting the invention into effect”.  Justice Arnold found that owners of Nespresso machines were implicitly licensed to acquire and use compatible capsules, and moreover that they did not “make” the system claimed in claim 1 when they purchased Dualit’s NX Café Caps and, thus, they did not put the invention into effect.  Consequently, there was no indirect infringement.

The judgement can be appealed and, given the potential value of the patent, it would be surprising if Nestec did not at least consider appealing.  So it is unlikely this will be the end of the matter.  Regardless, it will be interesting to see whether the judgement influences the ongoing appeal at the European Patent Office and the litigation taking place elsewhere in Europe.

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