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.”