IP, Technology & Data

Who hasn’t enjoyed the experience of their heart thudding irregularly like a broken clock after too many coffees?

I have a Nespresso coffee machine which accepts Nespresso capsules, it is the perfect home espresso machine if you are a person like me, who is always on the go. You simply buy a set of capsules which are different colours and you get a chart telling you what those colours mean (a bit like the chocolates list contained in a chocolate box). Some capsules are “intense” and others are “mild”, etc. The problem is that the colours used are quite hard to tell apart.

I am totally serious about this. Would you always be confident that you were picking a Volluto instead of a Finezzo Lungo? What if you used a Finezzo Lungo a few weeks ago but had forgotten? You could well look at the remaining capsules and pick up the Volluto thinking it’s Finezza Lungo. The decaffeinated capsules are all shades of red and virtually impossible to tell apart under bright lights.  And so on.

I could rant about this all day but let’s discuss new law in this area. The capsules are a hi-tech business (you can read more about The Secrets of the Capsule here) owned by Nestec and very much part of Nestec’s Nespresso “system”.

The problem for Nespresso was that Dualit started manufacturing “NX Capsules” compatible with the Nespresso machines. Nestec claimed that this infringed its European Patent (UK) No 2 103 236 (the “Patent”), and the parties ended up in court, as reported in the case of Nestec v Dualit Limited [2013] EWHC 923.

As usual, if you wish to read and enjoy all the relevant arguments then fully reading the case is essential. However I will relate selected highlights.

Highlights

Claim 1 of the Patent begins:

Extraction system comprising a device for the extraction of a capsule and a capsule that can be extracted in the device.

Under Section 60(1) of the Patents Act 1977, a person infringes a patent for an invention if, without the consent of the proprietor of the patent, they make, disposes of, offer to dispose of, use or import the product.

Justice Arnold concluded that the purchase of NX capsules by owners of Nespresso machines did not “make” the claimed system. He considered the capsule to be an entirely subsidiary part of the system, pointing towards facts such as:

  • the Nespresso machines sell for hundreds of pounds, whereas the capsules sell for 20-30p each;
  • the machines are intended to last for many years, and make thousands of cups of coffee, whereas the capsule is intended to be used once and then discarded;
  • the capsules contain ground coffee which is perishable (Nespresso capsules have a “best before date” of 12 months from the date of manufacture, which is likely to equate to about eight months from the date of purchase);
  • the functioning of the machine is not altered by the presence or absence of the capsule – the machine is as capable of performing the necessary movements to cause a flanged capsule to be moved through its various positions within the machine whether or not the machine’s owner actually has a capsule in his or her possession; and
  • the presence or absence of a capsule does not affect the economic value of the machine, although the machine would be useless without a supply of capsules.

Quoting from Paragraph 203 of the judgement:

The capsule does not embody the inventive concept of the Patent… the invention is all about the way in which the machine operates. The fact the claims require the presence of a capsule is an artefact of clever claim drafting. In my view, it may be inferred that the reason why the granted claims require the presence of the capsule (whereas the claims in the Priority Document did not) is precisely in order to enable Nestec to argue that the mere supply of capsules constitutes an infringement and thus to enable Nestec to continue to control the market in capsules.

This seems to me like a sensible decision and will be of interest not just to manufacturers of compatible coffee capsules and pods, but also those manufacturing compatible “consumables” in other industries.

Making patents more straightforward

A related interesting development was that Justice Arnold criticised the length of Dualit’s submissions (which ran to 382 paragraphs and a separate 11 page schedule), stating at paragraph 4:

This case is a paradigm example of the regrettable tendency of current patent litigation in this country towards proliferation of issues rather than concentration upon the essentials. The result is unnecessary expenditure of both costs and the court’s time.

This is relevant because the Intellectual Property Office’s is proposing to accelerate patent processing with a “superfast” 90-day service, and the move towards a unitary European patent is finally gathering pace (highlighted by the recent intergovernmental agreement on a Unified Patent Court).

Obtaining a patent is likely to become easier, meaning that and it’s likely that litigants are going to expect the resolution of disputes to become more straightforward too.

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Martin Sloan

Partner at Brodies LLP
Martin is a partner in Brodies Technology, Information and Outsourcing group and has wide experience of advising clients on technology procurement and IT and business process outsourcing projects. Martin also advises on data protection (including the GDPR), and general technology and intellectual property law, and has a particular interest in the laws applying to social media and new technology such as mobile apps, contactless/mobile payments, and smart metering.
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