William Hill has lost an argument made in its defence during a
case which alleges that the Bookmaker’s gaming system infringed
another company’s patent. William Hill tried to argue before the
English Patents Court that, because the servers which hosted its
system were based outside the UK, it could not be infringing a UK
patent.
William Hill’s UK punters connected to the offshore server using
software supplied by the bookmaker. The owner of the patent which
brought the action, a company called Menashe Business Mercantile
Ltd., argued that once a punter within the UK connected to the
offshore server via the internet then the system fell within its
patent and was an infringement.
William Hill argued that it could not infringe the patent as the
host computer was outside the UK and, accordingly, beyond the scope
of a UK. It did accept that its supply of software was within the
UK and that it was an essential element of the invention, but it
denied that it was a supply for putting into effect the invention
within the UK as that would require the combination of the server
and end-users’ computers to be wholly within the UK.
Menashe convinced the court that if the bookmaker’s argument was
valid, “there would be a serious gap in the international
protection of patents”. The key question, said Menashe, was
“whether the effect of the invention could be implemented in the
UK.”
The court found that the invention was “the system as a whole,
the combination of elements” and “common sense dictated that
infringement could not be avoided by siting part of the system
outside the UK.”
