On 22 April Nestec lost its High Court battle with UK manufacturer Dualit after the Court decided that Dualit's capsules for the Nespresso machine did not constitute patent
On 22 April Nestec lost its High Court battle with UK manufacturer Dualit after the Court decided that Dualit's capsules for the Nespresso machine did not constitute patent infringement.
Background
Nestec, owners of Nespresso, have been challenging manufacturers around the globe for producing replacement coffee capsules that are compatible with Nespresso coffee machines. Nestec claim that supplying such products infringe their European patent. Dualit denied any infringement and argued that the Nestec patent should be revoked.
The judgment
Mr Justice Arnold ruled that Dualit's capsules do not infringe Nestec's patent. A replacement capsule was considered to be an "entirely subsidiary part of the system" and machines and capsules had "independent commercial existence". He also added that, because capsules were consumables, purchasers of Nespresso coffee machines would assume that they were free to purchase refill capsules from "whatever source they pleased" and are impliedly licensed to "acquire and use compatible capsules".
Nestec were unable to rely on priority because the claims in the patent were broader than those in the priority application. The priority document was nevertheless published and therefore considered to be part of the 'prior art'. Accordingly, the patent was deemed to lack novelty over the disclosure in the priority document.
Comment
Nestec reportedly sold over $4 billion worth of Nespresso products in 2012. According to Leslie Gort-Barten, Managing Director of Dualit, the ruling is good news for consumers, who will no longer be "subject to a monopoly", as well as for retailers, who can now gain access to the estimated £2.4bn worldwide coffee capsule market. Now that the legitimacy of replacement capsules has been confirmed, Gort-Barten says Dualit will be expanding their offerings in the sector over the coming months.
Previous litigation in Germany and Switzerland also went against Nestec. The Düsseldorf regional court judgment mirrored that of the UK, adding that replacement capsules were "essential to the functioning of the machine".
This case should serve as a warning to all patent applicants and practitioners to ensure that their priority applications are made correctly. Now that courts are prepared to view priority documentation as being 'prior art', the consequences of a failed application can be disastrous.
Read full judgment here: Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others [2013] EWHC 923 (Pat).
Background
Nestec, owners of Nespresso, have been challenging manufacturers around the globe for producing replacement coffee capsules that are compatible with Nespresso coffee machines. Nestec claim that supplying such products infringe their European patent. Dualit denied any infringement and argued that the Nestec patent should be revoked.
The judgment
Mr Justice Arnold ruled that Dualit's capsules do not infringe Nestec's patent. A replacement capsule was considered to be an "entirely subsidiary part of the system" and machines and capsules had "independent commercial existence". He also added that, because capsules were consumables, purchasers of Nespresso coffee machines would assume that they were free to purchase refill capsules from "whatever source they pleased" and are impliedly licensed to "acquire and use compatible capsules".
Nestec were unable to rely on priority because the claims in the patent were broader than those in the priority application. The priority document was nevertheless published and therefore considered to be part of the 'prior art'. Accordingly, the patent was deemed to lack novelty over the disclosure in the priority document.
Comment
Nestec reportedly sold over $4 billion worth of Nespresso products in 2012. According to Leslie Gort-Barten, Managing Director of Dualit, the ruling is good news for consumers, who will no longer be "subject to a monopoly", as well as for retailers, who can now gain access to the estimated £2.4bn worldwide coffee capsule market. Now that the legitimacy of replacement capsules has been confirmed, Gort-Barten says Dualit will be expanding their offerings in the sector over the coming months.
Previous litigation in Germany and Switzerland also went against Nestec. The Düsseldorf regional court judgment mirrored that of the UK, adding that replacement capsules were "essential to the functioning of the machine".
This case should serve as a warning to all patent applicants and practitioners to ensure that their priority applications are made correctly. Now that courts are prepared to view priority documentation as being 'prior art', the consequences of a failed application can be disastrous.
Read full judgment here: Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others [2013] EWHC 923 (Pat).