Nespresso loses fight over coffee capsules

Nespresso, part of Nestle, has lost a High Court patent battle with Dualit, a rival producer of capsules for its coffee machines.

Having ruled that Nestle's European patent for the machines was invalid on the grounds of priority, Mr Justice Arnold held that even if it was valid, Dualit had not infringed it.

Among other issues on infringement, he rejected the argument that the owner of a Nespresso machine 'makes' the system described in the patent simply by buying capsules.

Arnold J said the capsule was an "entirely subsidiary part of the system" and though the machines were intended to last for many years and make thousands of cups of coffee, capsule were intended to be used once and discarded.

Delivering judgment in Nestec and others v Dualit and others [2013] EWHC 923 (Pat), Arnold J said both machines and capsules had an "independent commercial existence".

He went on: "This is not merely because they are sold separately by Nestec, although they are. In the case of the machines, there is a market for second-hand machines, for example on Amazon and eBay."

Arnold J said that given that the capsules were consumables, he considered that purchasers of machines would "assume that they were entitled to obtain capsules to use with the machine from whatever source they pleased".

He said the capsule did not "embody the inventive concept of the patent" and the invention "takes the capsule as a given and that the specification explicitly states that the invention can be used with any type of capsule".

Mr Justice Arnold said the owner of the machine is not even doing anything which would ordinarily be described as repairing a product, let alone making one.

"The only reason why Nestec is even able to argue that the owner is 'making' something is that the claim is directed to a 'system' which consists of a collocation of two entirely separate, but conceptually related, products (namely the machine and the capsule).

"Only in the world of patents could it even be suggested that a person 'makes' a 'product' merely by purchasing a consumable for use with a machine (i.e. before they have even used the consumable in the machine, here by making a cup of coffee)."

Arnold J ruled that Nestec's patent was invalid, but even if it was not, Dualit had not committed any act of infringement within Section 60(2) of the Patents Act 1977.