UK Supreme Court defines “makes” in Schütz v Werit

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UK Supreme Court defines “makes” in Schütz v Werit

supctuk-45.jpg

After three judgments over nearly five years in the Schütz v Werit dispute, we now finally know what is meant by the word “makes” in the UK Patents Act 1977

In a decision today, the UK Supreme Court reversed the Court of Appeal, finding that providing replacement bottles for crates did not amount to patent infringement. The ruling could have implications in cases involving other consumable goods, such as ink cartridges and coffee capsules.

lord-neuberger.jpg

The Schütz case concerned intermediate bulk containers, which consist of a replaceable bottle or container to store liquids, housed in a steel cage. The patent covered the cage and Schütz argued that Werit was infringing by supplying replacement bottles.

Lord Justice Neuberger (right), who wrote the opinion for a unanimous Court, rejected the approaches taken by both the first instance and appeal courts, saying: “The first question to consider is whether either of the Courts below adopted the right approach to the question which they had to decide. In my view, they did not.”

However, he reached the same conclusion as the High Court Judge, Mr Justice Floyd, namely that Werit did not infringe.

Neuberger adopted a more nuanced approach than the Court of Appeal, saying that “the question of whether replacing a part of a patented article constitutes ‘making’ is a matter of fact and degree”. He set out numerous factors to be considered in this evaluation.

In this case, he said, the bottle was a freestanding, replaceable component, had no connection with the claimed inventive concept, has a shorter life expectancy and could not be described as the main component of the article.

The judge discussed the previous UK cases, notably United Wire, as well as German case law, in some depth, and argued that his approach was consistent with both.

However, some patent owners may feel that their rights are more limited following this decision than they were before.

Stephen Bennett of Hogan Lovells, who acted for Werit, conceded that might be the case, but only for certain inventions. “In some cases, the invention will be in the replacement part,” he told Managing IP. He added that patent drafters in these types of cases should pay attention to “how they characterise the invention and where it resides”.

Patent owners may also look to other rights, including designs and branding, to protect their market share. Indeed, there was a trade mark aspect to this case in the UK.

The case may have an impact on pending litigation relating to the Nespresso coffee machines, which was due to start in the High Court this week.

Werit was represented by barristers Simon Thorley QC and Thomas Mitcheson and Hogan Lovells. Schütz was represented by Richard Meade QC and Lindsay Lane and SNR Denton.

Managing IP understands that patent litigation between the parties is continuing in Germany and Australia.

more from across site and SHARED ros bottom lb

More from across our site

The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Andrew Blattman reflects on how IP practices have changed and shares his hopes for increased AI use and better performance on the stock market
The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
Gift this article