The High Court has held that it is no defence to a claim for infringement of a patent relating to a gaming system that a key part of that gaming system is located outside of the United Kingdom. The “wheeze” of putting the host computer abroad would not help the defendant.
Jacob J considered whether it was a defence to a claim under s60(2) of the Patents Act 1977 that the host computer claimed in the patent in suit was not situated in the UK.
Facts
The claimants were the owners of a patent for a gaming
system. The gaming system included a host computer, one or more terminal
computers, a means of communication between the host and terminal(s) and a
program means for operating the terminal computer(s).
The defendant offered an on line gaming system to its UK customers. It supplied a program which had the effect of turning its customers’ computers into terminals. The host and the terminal computers were connected by the Internet although the host computer was located abroad.
The claimants alleged infringement of their patent under s60(2) of the Patents Act 1977, arguing that the defendant was “supplying...within the United Kingdom a person...with means relating to an essential element of the invention, for putting it...into effect within the United Kingdom.”
The Court was asked to decide as a point of law whether (the defendant accepting for these purposes that the supply of the program was in the UK and it was an “essential element”) it was a defence that the host computer was located overseas.
Decision
Jacob J held it was not a defence to the s60(2)
claim that the host computer was not present in the UK. Any other result
would be monstrous, allowing a defendant to use supposed cross-border
problems to avoid infringement of a system anywhere. If the defendant had
a defence at all it was either that the system they were using was not
within the claims of the patent or that the patent was invalid.
Comment
The decision is an interesting one. It appears to be
driven by a wish to avoid a situation in which a potential infringer can
avoid liability by locating a key feature of the claimed invention outside
of the UK. To infringe s60(2) not only must the supply or offer to supply
the essential element take place in the UK but also the person supplying
or offering to supply that essential element must know or it must have
been 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 UK. Whilst the first part of this requirement is made out it is not
yet clear how the judge determined that this second limb was established
in circumstances where a key element of the claimed invention was located
overseas. A detailed judgment is awaited with interest.
© Herbert Smith 2002
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