Schütz v Werit — replacing parts in patented products

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This recent patent decision of the Supreme Court provides guidance about when replacing a part might be treated as the infringing act of ‘making’ a patented product. This may be relevant when considering repairs, spares and refills, for example. The case related to industrial containers for transporting liquid in a plastic bottle surrounded by a metal cage on a pallet. The relevant claim in Schütz’s patent covered the container as a whole — listing features of the bottle, cage and pallet together — although the inventive aspects were only in the cage. Werit reconditioned containers by removing the used bottles and providing new replacements. Did this amount to ‘making’ the patented container?

The Supreme Court said the patent claim must identify the replacement part as a feature of the patented product and it is also necessary to consider a number of factors, including whether the replaced part: 

  • is a freestanding, easily replaceable component of the patented product (if not, that counts in the patent-owner’s favour);
  • includes, or has connection with, any aspect of the claimed inventive concept of the patented product (if so, that counts in the patent-owner’s favour);
  • is a main or subsidiary part of the patented product (if a main part, that counts in the patentowner’s favour); and
  • has a shorter life expectancy than the product as a whole and its replacement would be anticipated by customers (if not, that counts in the patent-owner’s favour)…

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