Hoffmann Eitle - München, London

04.11.2010 -

Grimme Maschinenfabrik v. Derek Scott: Decision of the English Court of Appeal

For those who follow the development of patent law in Germany, the UK and The Netherlands (and those with an interest in agricultural machinery), this Decision of the English Court of Appeal available at www.bailii.org has much of interest in it. Grimme, the Dutch owner of EP (UK) 0 730 399 for a potato harvester, asserted their patent against an English manufacturer, Derek Scott, and got from the High Court in November 2009, and (on appeal) from the Court of Appeal in October 2010, a decision in their favour that the patent was valid and infringed. Scott’s novelty and obviousness attacks, in the end, all failed and the patent was upheld by the Court of Appeal as granted.

For English readers, the main interest of the case lies in its thorough treatment of the issue of "contributory infringement". The Court found that, with rubber rollers fitted, the Scott machine fell within the claims but that, with stainless steel rollers fitted, the machine did not infringe. Scott’s machine was sold with the metal rollers fitted, and with spare rubber rollers with which a purchaser could replace the metal rollers. Scott testified to the Court that it was "very rare" for users to install the rubber rollers, but the Court’s robust reaction to that testimony was: "... we do not see how Mr. Scott could know this". Further, the Court noted Mr. Scott’s evidence that: "... a selling feature of our machine that you can have rubber and stainless [rollers] and you can [harvest] all these different crops". The Court quite reasonably thought it significant that 60% of the after sales of spare rollers for Scott machines were for rubber rollers.

This witness evidence reminds the writer of a case in which he was involved, before the same English judge, Robin Jacob, nearly 20 years ago. Chapman v. McAnulty and Others was a case in which California company Chapman brought patent infringement proceedings against an Italian company whose camera dolly product looked like a copy of the Chapman dolly and was alleged to infringe the Chapman UK patent. The Italian managing director, Mr. Grottesi, testified that he had complete control of the engineering drawings of his product and that they pre-dated the Chapman priority date. Unfortunately for Mr. Grottesi, the English "discovery" process revealed that the engineering drawings had been tampered with, the all-important date on them having been changed.

Judge Jacob, now Lord Justice Jacob, had forgotten all about the Chapman case, but was reminded of it during the Grimme trial. He uses it in the reasoning in the Grimme decision because it was helpful on the "contributory infringement" issue. One of the claims of the Chapman patent required an open-topped tube. In the infringing dollies from Italy, that open top was capped off. However, purchasers of the Italian dolly would then drill through the cap, to re-open the tube and restore its functionality.

For readers of the Grimme decision outside England, however, there are other interesting aspects of the decision. We would mention:
1. the guidance in paragraphs 21 to 28 to those who draft patent applications about how much to say about the state of the art and whether to mention any particular prior publication;
2. the respective role of the party technical experts and the judge (paragraph 38) in settling the scope of protection of the claim in suit. [NB: The German Supreme Court Decision
Kabeldurchführung II available at juris.bundesgerichtshof.de provides the corresponding position in Germany.];
3. the analysis of the history of the "contributory infringement" provision of European patent law at paragraphs 82 to 99;
4. in para the thorough survey (in English) of the case law of the German courts in contributory infringement cases; and
5. the attitude of the English Courts to decisions of the Courts of other leading jurisdictions within the member States of the European Patent Convention at paragraphs 77 to 87. Here it is indicated that the English Courts should "try to follow the reasoning of an important decision in another country" and depart from it only if "convinced that the reasoning of a Court in another member State is erroneous".

With the UK Courts, and those of other EPC Member States, adopting such an attitude, Lord Justice Jacob, paragraph 81, can say:
"The Judges of the patent courts of the various countries of Europe have thereby been able to create some degree of uniformity even though the European Commission and the politicians continue to struggle on the long, long road which one day will give Europe a common patent court."