Contributory infringement of patent rights
The UK High Court judgement in the case of Boegli-Gravures SA v Darsail-ASP Ltd has given further guidance as to what constitutes contributory infringement. Under the UK Patents Act a patent is infringed if a person “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 fairly specific to the case under consideration, rather than a set of definitive rules for all cases. However, in the reasoning behind the decision some useful pointers have still circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK”.
In this case, the claimed product was a device for sanitizing and simultaneously embossing packaging foils “…comprising at least two embossing rolls that are connected to a driving system”. The defendants supplied rolls into the UK, but no other part of the claimed device. As such, they did not infringe the claim on a primary basis but had provided an essential element of the claim.
However, the defendants had only been shown to have supplied rolls into the UK after an order had been placed by an undercover agent acting for the patentee. The patentee was not able to prove that the rollers had been supplied to anyone who was a person“other than a licensee or other person entitled to work the invention”; therefore this supply could not infringe.
The patentee’s fall back was to argue that the supply was evidence of a threat and intention to infringe. In this regard, it was noted that the defendants made no enquiries as to whether the person whom they were supplying was authorised to work the patent. Therefore the defendants would, apparently, have supplied the rollers regardless of whether the agent was acting on behalf of the patentee or an unauthorised party. This was sufficient for the court to find evidence of a threat to carry out contributory infringement.
The issue of whether Darsail’s web site could be held to be an offer to sell within the UK was also considered. It was decided that the website was an offer to supply the disputed rollers, despite the fact that the website did not provide an option to click and purchase. However, the website was directed to the world at large and it was found that the average customer within the UK of the relevant goods would not regard the site as being aimed and directed at him. At most it was an offer to supply customers who included customers in the UK and thus it did not constitute an offer to supply in the UK.
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