Nestlé's Nespresso capsules were protected directly under Nestec Europe patent 0512148 that expired in May 2011, which meant the firm had to file an infringement action on the basis of a later patent, which the April 22 UK ruling relates to.
Yet this only protects the dispensing capsule device that includes the coffee capsule, which meant that Nestec had to allege an indirect patent infringement.
Nestlé takes case to Court of Appeal
Diane Duperret, corporate PR manager at Nestle Nespresso, said the company was disappointed with the High Court judgement, where the judge rejected its claim that Dualit's (the firm manufacturers kitchen and catering equipment as well as pods) marketing of its capsules infringed S60(2) of Nestec's patent, under the 1977 Patents Act.
"We believe the decision is inconsistent with the ruling by the European Patent Office in April 2012, confirming the validity of a key patent for the Nespresso system and have appealed the decision to the Court of Appeal," Duperret told BeverageDaily.com.
She added: "The protection of our intellectual property is an important component of our business strategy. However, our success will continue to be driven by our ability to exceed consumer expectations by delivering products and services of exceptional quality."
The 1977 act, S60(2) says a UK patent is infringed by anyone who supplies or offers to supply to a person other than the licensee or other person entitled to work with the invention with any of the means relating to an essential element of it for putting it into effect.
Decision opens copycat door?
Sir Richard David Arnold (Justice Arnold) the High Court judge, said there were insufficient elements to assess such an infringement, adding that Nespresso machine buyers were 'licensees'.
"Nestec have exhausted their rights under the patent to restrict purchasers' freedom to use such machine in accordance with their normal function. Their normal function is to make coffee from capsules," Arnold ruled.
Madrid-based intellectual property lawyer Patricia Revuelta Martos wrote of Arnold's ruling on the website Lexology: "The decision is an open door for all manufacturers and distributors of coffee capsules compatible with the Nespresso machine."
Neil Thomson and William Burrell, trademark and patent attorneys at Boult Wade Tennant, agreed, stating that holders of any UK patent relating to a device and relevant consumables would now find it hard to stop third parties selling alternative consumables under S60(2).
"The reason for this is because such third-party manufacturers will most likely claim that they are supplying their alternative consumable product to licensees of the claimed invention, rendering any attack under S60(2) moot," the London-based lawyers added.
However, it remains to be seen whether the Court of Appeal will agree with the legal precedent said by Arnold's ruling.