On 22 April 2013, Mr Justice Arnold held that Nespresso's patent EP 2 103 236 B1 (the "Patent") for an extraction system comprising a coffee machine and capsule for brewing hot beverages was invalid and if valid would not be infringed by the supply by Dualit of its compatible capsules (Nestec S.A., and others v. Dualit and others  EWHC 923 (Pat)).
Arnold J held the patent invalid on the grounds that the patent could not claim priority to its priority application and was anticipated by the publication of that priority application as well as two intervening prior uses. Had the Patent been valid, Arnold J held that although Dualit's capsules were a "means essential" within the meaning of s.60(2) of the Patents Act 1977 (the "Act"), their use in the Nespresso coffee machines was not an infringement of the Patent.
The defendant, Dualit was a supplier and distributor of coffee capsules that were marketed as being compatible with Nespresso's coffee machines. Following Dualit's launch of a concession in the Harrods department store, Nespresso sued Dualit for contributory infringement of the Patent under section 60(2) of the Act on the basis that Dualit's supply of NX capsules to anyone other than a licensee or other person entitled to work the invention equated to supplying a means essential for putting the invention into effect.
There were a large number of issues raised by Dualit but the decision is interesting in that it was the first decision where the multifactorial test set out by Lord Neuberger in Schütz (UK) Limited v Werit (UK) Limited  UKSC 16 on the meaning of "making" within s.60(1) of the Act, was applied by the English Court. It was also of interest for the Judge's consideration of the meaning of means essential and staple commercial product.
Arnold J held that in the absence of any express restrictions placed on the purchaser, an owner of a Nespresso machine was impliedly licensed to acquire and use compatible capsules with their machine. Arnold J also stated that in his opinion, by consenting to the manufacture and sale of the Nespresso machine, Nespresso had exhausted their right under the Patent to use the machine in accordance with its function – to make coffee from capsules. Accordingly, Nespresso had exhausted their right to rely upon the Patent to control the source from which the owners of Nespresso coffee machines acquire capsules.
Arnold J held that Dualit's capsules constituted supply of a means relating to an essential element of the Patent and that the capsule contributed to the implementation of the teaching of the invention. This was in line with the approach adopted by the German court: that third parties should not be allowed to benefit from the invention by supplying means where the market for those means had been created by the invention. Arnold J noted that he preferred this approach to that taken by the Dutch Court.
One of Dualit's defences to infringement was that Nespresso-style coffee capsules were a staple commercial product within the meaning of section 60(3) of the Act. Arnold J held that such coffee capsules were not staple commercial products. To qualify as a staple commercial product, a product must ordinarily be one which is supplied commercially for a variety of uses; a coffee capsule had a limited use and was not a staple commercial product.
The final issue was whether Dualit's capsules were means suitable for putting the invention into effect, that is, whether a person who uses a Dualit capsule in a relevant Nespresso coffee machine thereby "makes" the system of claim 1 of the Patent. Arnold J went through the multifactorial test set out in Schutz v Werit and held that a consumer was not 'making' the system. Arnold J based his decision on his finding that the capsule was an entirely subsidiary part of the claimed system and that, in his opinion, the presence or absence of the capsule did not affect the functioning or economic value of the machine.
He held that both the capsule and the machine had an independent commercial existence. Furthermore, as the capsules were consumables, the purchaser of a coffee machine would assume there was a freedom of choice when sourcing capsules for use in that machine. Although he had held that the capsule was a means essential, Mr Justice Arnold stated that it did not embody the inventive concept of the Patent, which was about how the machine operated.
Lastly, Arnold J noted that the owner of the machine was not, by using the machine to make a coffee, doing something that would ordinarily be described as repairing or making a product.
On that basis, owners of the Nespresso machines did not make the claimed system when they purchased the Dualit capsules.
This decision is under appeal.