Menashe v. William Hill
Encyclopedia
Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd. was a patent
case that was particularly important regarding Internet
usage. The case addressed a European patent
covering the United Kingdom
for an invention
referred to as "Interactive, computerized gaming system with remote control". Menashe sued William Hill
, claiming that William Hill
was infringing the patent
by operating an online gaming system. William Hill's defence argued that it did not infringe the patent because the server on which it operated the system was located outside of the UK, in Antigua
or Curaçao
. Although accepting that their supply of software was in the UK and that this was an essential part of the invention, they further argued that the patent was for the parts of the system, and as one essential part of the system was not located in the UK, there could be no infringement.
This aspect of William Hill
's case was tried at a preliminary issue before Mr. Justice Jacob in the High Court
in 2002. Mr. Justice Jacob found against William Hill
holding that the patent related to the entire system, being the sum of all its elements. Simply locating one part of the system abroad did not prevent infringement when the result was still providing UK punters with the system's benefits.
The Court's ruling took a broad interpretation, concentrating on the spirit and intention of patent protection and not confining itself to the linguistic construction of the law which developed before the advent of the Internet.
Lord Justice Aldous heard the appeal and while he maintained the result of the judgment of the Patents Court
, the reasoning was very different and was based upon where the invention was being "used". The claim
ed invention required there to be a host or server computer. According to the judgment, it did not matter where the host computer was situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries. Its location was not important to the user of the invention nor to the claimed gaming system. In that respect, there was a real difference between the claimed gaming system and an ordinary machine. The judge therefore believed that it would be wrong to apply the old ideas of location to inventions of the type under consideration. A person who is situated in the United Kingdom who obtains in the United Kingdom a CD and then uses his terminal to address a host computer is not bothered where the host computer is located. It is of no relevance to him, the user, nor the patentee as to whether or not it is situated in the United Kingdom.
If the host computer is situated in Antigua and the terminal computer is in the United Kingdom, it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua. In those circumstances it is not straining the word "use" to conclude that the United Kingdom punter will use the claimed gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply of the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect in the United Kingdom.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
case that was particularly important regarding Internet
Internet
The Internet is a global system of interconnected computer networks that use the standard Internet protocol suite to serve billions of users worldwide...
usage. The case addressed a European patent
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
covering the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
for an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
referred to as "Interactive, computerized gaming system with remote control". Menashe sued William Hill
William Hill (bookmaker)
William Hill plc is one of the largest bookmakers in the United Kingdom. Its headquarters is in the north London suburb of Wood Green and in Leeds, West Yorkshire. It is listed on the London Stock Exchange and is a constituent of the FTSE 250 Index.-History:...
, claiming that William Hill
William Hill (bookmaker)
William Hill plc is one of the largest bookmakers in the United Kingdom. Its headquarters is in the north London suburb of Wood Green and in Leeds, West Yorkshire. It is listed on the London Stock Exchange and is a constituent of the FTSE 250 Index.-History:...
was infringing the patent
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
by operating an online gaming system. William Hill's defence argued that it did not infringe the patent because the server on which it operated the system was located outside of the UK, in Antigua
Antigua
Antigua , also known as Waladli, is an island in the West Indies, in the Leeward Islands in the Caribbean region, the main island of the country of Antigua and Barbuda. Antigua means "ancient" in Spanish and was named by Christopher Columbus after an icon in Seville Cathedral, Santa Maria de la...
or Curaçao
Curaçao
Curaçao is an island in the southern Caribbean Sea, off the Venezuelan coast. The Country of Curaçao , which includes the main island plus the small, uninhabited island of Klein Curaçao , is a constituent country of the Kingdom of the Netherlands...
. Although accepting that their supply of software was in the UK and that this was an essential part of the invention, they further argued that the patent was for the parts of the system, and as one essential part of the system was not located in the UK, there could be no infringement.
This aspect of William Hill
William Hill (bookmaker)
William Hill plc is one of the largest bookmakers in the United Kingdom. Its headquarters is in the north London suburb of Wood Green and in Leeds, West Yorkshire. It is listed on the London Stock Exchange and is a constituent of the FTSE 250 Index.-History:...
's case was tried at a preliminary issue before Mr. Justice Jacob in the High Court
High Court of Justice
The High Court of Justice is, together with the Court of Appeal and the Crown Court, one of the Senior Courts of England and Wales...
in 2002. Mr. Justice Jacob found against William Hill
William Hill (bookmaker)
William Hill plc is one of the largest bookmakers in the United Kingdom. Its headquarters is in the north London suburb of Wood Green and in Leeds, West Yorkshire. It is listed on the London Stock Exchange and is a constituent of the FTSE 250 Index.-History:...
holding that the patent related to the entire system, being the sum of all its elements. Simply locating one part of the system abroad did not prevent infringement when the result was still providing UK punters with the system's benefits.
The Court's ruling took a broad interpretation, concentrating on the spirit and intention of patent protection and not confining itself to the linguistic construction of the law which developed before the advent of the Internet.
Lord Justice Aldous heard the appeal and while he maintained the result of the judgment of the Patents Court
Patents Court
The Patents Court is a specialist court within the Chancery Division of the High Court of Justice of England and Wales. It deals with disputes relating to intellectual property.-References:...
, the reasoning was very different and was based upon where the invention was being "used". The claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention required there to be a host or server computer. According to the judgment, it did not matter where the host computer was situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries. Its location was not important to the user of the invention nor to the claimed gaming system. In that respect, there was a real difference between the claimed gaming system and an ordinary machine. The judge therefore believed that it would be wrong to apply the old ideas of location to inventions of the type under consideration. A person who is situated in the United Kingdom who obtains in the United Kingdom a CD and then uses his terminal to address a host computer is not bothered where the host computer is located. It is of no relevance to him, the user, nor the patentee as to whether or not it is situated in the United Kingdom.
If the host computer is situated in Antigua and the terminal computer is in the United Kingdom, it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua. In those circumstances it is not straining the word "use" to conclude that the United Kingdom punter will use the claimed gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply of the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect in the United Kingdom.
External links
- Full Text of Judgements on BAILII:
- First Instance:
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- Appeal:
- Opening a Can of Worms? An article summarising the case
- Appeal:
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- First Instance: