A recent decision of the Court of Appeal confirms that a company which manufactured a machine outside of the Untited Kingdom, and sold that machine to a UK manufacturer, could be held liable for infringment of a UK patent even though the patent only protected a manufacturing method which could be carried out on the machine.
In Fabio Perini v LPC and PCMC [2010] EWCA Civ 525, the Master of the Rolls, Lord Neuberger, upheld the court of first instance's judgment that Perini's European patent (UK) No. 0481929 was infringed by some versions of Rotoseal machines from PCMC Italia. The judge, Floyd J, had also decided that the patent was neither anticipated, obvious nor insufficient.
The patents were concerned with the production of toilet rolls from large parent rolls, which were then cut down into logs. The loose end or tails of the logs are sealed before the logs are passed to a log saw to be cut up into toilet rolls.
The Rotoseal machines had been manufactured in Italy by PCMC Italia. The machines were installed into LPC's UK premises by PCMC Italia. The patent related to a method of glueing the tail of a web. PCMC Italia had suggested that only LPC had committed any infringing act, but the judge held that PCMC Italia had built the machine on LPC's premises and caused it to work in accordance with the method claimed in the patent. Therefore, Lord Neuberger held that PCMC Italia's actions were sufficient to render it liable as a joint tortfeasor. Thus, PCMC Italia was held to be jointly liable with LPC UK for infringement.
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