United Wire Ltd v Screen Repair Services (Scotland) Ltd and Others
| Jurisdiction | England & Wales |
| Judge | LORD BINGHAM OF CORNHILL,LORD STEYN,LORD HOFFMANN,LORD COOKE OF THORNDON,LORD HUTTON |
| Judgment Date | 20 July 2000 |
| Judgment citation (vLex) | [2000] UKHL J0720-5 |
| Date | 20 July 2000 |
| Court | House of Lords |
[2000] UKHL J0720-5
HOUSE OF LORDS
Lord Bingham of Cornhill
Lord Steyn
Lord Hoffmann
Lord Cooke of Thorndon
Lord Hutton
And Another
And Others
My Lords,
I have had the benefit of reading in draft the opinion of my noble and learned friend Lord Hoffmann, with which I fully agree. I gratefully adopt his account of the facts and of the issue in this case.
The grant of a patent for a product rewards the inventiveness of the patentee by giving him, for the term of the patent, a monopoly right to exploit the patented product which he has invented. The product entitled to protection is that specified in the claim of the patent as interpreted by the description and any drawings contained in the specification: Patents Act 1977, section 125. The protection is against infringement which, in the case of a product, means making, disposing or offering to dispose of, using or importing the protected product, or keeping it for disposal or otherwise, without the consent of the patentee: section 60 of the Act. In any action brought by a patentee alleging infringement the crucial underlying question must always be whether what the defendant is shown to have done has deprived the patentee of the full rights to which his patent entitled him.
I do not think that in a case such as the present this question is best approached by considering whether the defendant has "repaired" the patented product. For repair may involve no more than remedial action to make good the effects of wear and tear, involving perhaps no replacement of parts; or it may involve substantial reconstruction of the patented product, with extensive replacement of parts. Both activities might, without abuse of language, be described as repair, but the latter might infringe the patentee's rights when the former did not. Aldous L.J., as I respectfully think, approached the question in the right way in the present case when he said (at page 14 of the transcript of the Court of Appeal judgment):
"It follows that acts as prohibited by section 60 are infringing acts whether or not they can be categorised as repairs. It is therefore better to consider whether the acts of a defendant amount to manufacture of the product rather than whether they can be called repair, particularly as what could be said to be repair can depend upon the perception of the person answering the question. Even so, when deciding whether there has been manufacture of the product of the invention, it will be necessary to take into account the nature of the invention as claimed and what was done by the defendant."
The judge was "narrowly persuaded" that the defendants' reconditioning operations were to be regarded as no more than repairs, but he did not, like the Court of Appeal, concentrate his attention on whether the defendants had made the patented product. The Court of Appeal concluded on the facts that the defendants had made the screen assembly which was the subject of the first claim in each of the patents. This was a conclusion clearly open to the court. I see no reason to disturb it. By selling their products on the open market the plaintiffs exhausted their rights as patentees, but that does not prevent them complaining of infringement by a party who has made the product without their consent and it cannot be said that they impliedly licensed the defendants to make it.
For the reasons more fully given by my noble and learned friend Lord Hoffmann, and for these reasons, I would dismiss this appeal.
My Lords,
I have had the advantage of reading in draft the opinions of my noble and learned friends Lord Bingham of Cornhill and Lord Hoffmann. For the reasons they give I would also dismiss the appeal.
My Lords,
This is an action for the infringement of two United Kingdom patents for improvements to sifting screens used to recycle drilling fluid in the offshore oil-drilling industry. Although known colloquially as mud, the fluid is quite an expensive mixture of chemicals which is pumped down the shaft for various purposes including the lubrication and cooling of the drilling bit. It is then brought back to the surface together with quantities of foreign solids which must be removed before the fluid can be used again. For this purpose it is filtered by being passed through mesh screens vibrating at high speed in a vibrating sifting machine.
One source of difficulty in the operation of sifting machines is the clogging of the meshes by small particles or viscous liquid. The plaintiff's patents were designed to ameliorate this problem. The nature of the invention appears sufficiently from the first claim in each. U.K. Patent No. 1, 578, 948 ("948") claims:
"a sifting screen assembly for use in a vibratory sifting machine comprising a frame and two screens superimposed one on the other and adhesively secured at marginal edge portions thereof to said frame, the upper screen having a relatively fine mesh, the lower screen having a relatively coarse mesh, both screens being tensioned, and the upper screen being at a lower tension than the lower screen, so that, when the frame is vibrated, the screens strike each other so as to effect or assist in effecting clearing of blockages or to prevent or reduce the possibility of blockage of the screens."
U.K. Patent No. 2, 161, 715 ("715") claims:
"A filtering screen comprises (a) a first filter mesh, (b) a second filter mesh having a different mesh size from the first and overlying the first mesh, and (c) an apertured support member to which both of the meshes are bonded both around the periphery and around the apertures, so as to maintain the two meshes in tension when fitted in use into a sifting machine, the tension in one of the meshes being greater than that in the other, (d) wherein the apertured support member is flexible and is adapted to be flattened on being fitted into said sifting machine so as to restore the desired differential tensions in the meshes on being fitted therein."
Thus both patents are for a screen consisting of a frame or "support member" to which two meshes of different mesh sizes are "bonded" or adhesively secured at the periphery so as to be at different tensions. The differences are the striking screens of the first patent and the flexible apertured support member (to maintain differential tension) of the second. Further detail may be found in the judgments of the courts below.
The meshes of the screens made according to both patents quickly become torn in use. To some extent they can be patched but this reduces their...
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