UK: Coffee Wars: Nestec SA v Dualit Ltd [2013] EWHC 923 (Pat)

Last Updated: 10 June 2013
Article by Sarah Mountain

In a recent High Court judgment, it was held not only that the claimant's patent for a coffee machine capsule extraction device was not infringed by the supply of compatible capsules by the defendant, but that the patent itself was invalid as it was anticipated by both public testing of the claimant's coffee machines and a previous patent application from which it sought to claim priority.


Priority: Under s5(2)(a) of the Patents Act 1977 ("Patents Act"), to be entitled to priority from an earlier patent application, a claimed invention must be 'supported by matter disclosed in the earlier relevant application.'

Infringement: The circumstances in which a patent will be infringed are contained in s60 of the Patents Act. Under s60(2):

'a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is 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 United Kingdom.'

However, under s60(3):

'Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.'


The claimant was the owner of a European Patent ("Patent") for a system used to extract spent capsules from certain coffee machines ("Nespresso Machines"). The Patent claimed priority from an earlier European patent application which had been filed in July 2003 ("Priority Document"). Nestec had previously protected its coffee capsules under a separate patent, but this had expired in May 2011. Sometime after this date, Dualit began supplying capsules which were compatible with Nespresso Machines. Nestec commenced proceedings against Dualit for infringement of the Patent. Dualit counterclaimed for revocation of the Patent on the grounds that it was not entitled to the priority it claimed and that, as a result, the Patent had been anticipated.


On review of the facts, Arnold J held that:

1. the Patent was invalid. It was not entitled to claim priority from the Priority Document and had been anticipated by the same and by the subsequent public display and testing of Nespresso Machines; and

2. even if the Patent had been valid, the supply of compatible capsules by Dualit was not an infringing act as users did not 'make' the system in claim 1 of the Patent by combining the capsules with their Nespresso Machines.
In determining whether Dualit had committed an infringing act, Arnold J identified four key questions:

1. Were Nespresso Machine users 'persons other than a licensee' for the purposes of s60(2) of the Patents Act?

Arnold J considered this question from both an implied licence and exhaustion of rights perspective.

Implied Licence: As the purpose of Nespresso Machines was to make coffee, Arnold J concluded that Nestec had granted users an implied licence to use capsules within their Nespresso Machines, since the machines would be redundant if users were not so licensed. Arnold J went on to find that as Nestec had not imposed any restrictions on Nespresso Machine users specifying from where capsules could be sourced, users could procure capsules in any way they pleased.

Exhaustion of rights: Arnold J found the position to be even clearer from this perspective stating that 'by consenting to the manufacture and sale of Nespresso machines, Nestec have exhausted their rights under the Patent to restrict purchasers' freedom to use such machines...'

Again the exhaustion extended to Nestec's 'right to rely upon the patent to control the source from which purchasers acquire such capsules.'

As such, Nespresso Machine users were not persons other than a licensee.

2. Were Dualit's capsules a 'means relating to an essential element of the invention' for the purposes of s60(2) of the Patents Act?

Arnold J found that the capsules were a means relating to an essential element of the invention as they contributed towards and were not of completely subordinate importance to the technical teaching of the Nespresso Machines.

3. Were Dualit's capsules 'staple commercial products' for the purposes of s60(3) of the Patents Act?

Arnold J held that for products to fall within this definition, they would need to be 'supplied commercially for a variety of uses.' As the sole purpose of the Dualit capsules was to produce coffee in conjunction with a specific range of coffee machines, the capsules were not a staple commercial product.

4. Were Dualit's capsules 'means suitable for putting the invention into effect' for the purposes of s60(2) of the Patents Act?

Specifically, the question was whether users made a system which fell within claim 1 of the Patent when they used Dualit's capsules in their Nespresso Machines. Arnold J held that Nespresso Machine users made no such system for the following reasons:

i. the capsules were an entirely subsidiary part of the system;

ii. the Nespresso Machines and capsules had independent commercial existences;

iii. the capsules were consumables and as such, Nespresso Machine users would assume that these could be sourced in any manner they pleased;

iv. the capsules did not embody the inventive concept of the Patent; and

v. in using the capsules, Nespresso Machine users were not even doing something which would be regarded as repairing a product, let alone 'making' one.

Click here for a full transcript of the judgement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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