Defining Patent Infringement: Making vs. Repair in United Wire Ltd v. Screen Repair Services

Defining Patent Infringement: Making vs. Repair in United Wire Ltd v. Screen Repair Services

Introduction

The case of United Wire Limited v. Screen Repair Services (Scotland) Limited and Another and Others ([2000] UKHL 42) represents a pivotal moment in UK patent law, particularly concerning the boundaries between repair and making of patented products. United Wire Limited, the patentee, specialized in manufacturing vibratory sifting machine screens used in the offshore oil-drilling industry. Screen Repair Services (Scotland) Limited sought to recondition and resell these screens by refurbishing the patented frames and meshes without the consent of United Wire. The core legal issue revolved around whether such reconditioning constituted patent infringement by making the patented product or was merely an allowable repair.

Summary of the Judgment

The House of Lords upheld the decision of the Court of Appeal, affirming that Screen Repair Services' actions amounted to the making of the patented product, thereby infringing United Wire's patent rights under section 60 of the Patents Act 1977. The Defendants argued that they were only repairing the screens, which should not constitute infringement. However, the Lords clarified that the critical question was whether the Defendants had made the patented product, irrespective of whether their actions were classified as repairs. Consequently, reconditioning the frames and reassembling the screens to function as per the patented design was deemed infringement.

Analysis

Precedents Cited

The judgment extensively referenced several key precedents to substantiate its reasoning:

  • Betts v. Willmott (1871): Established the concept of an implied licence, allowing purchasers to use or resell patented products.
  • Solar Thomson Engineering Co. Ltd v. Barton (1977): Addressed the distinction between repair and making, initially supporting the idea of an implied licence to repair.
  • Sirdar Rubber Co. Ltd. v. Wallington, Weston & Co. (1907): Clarified the boundary between repair and manufacturing.

These cases collectively influenced the Lords to delineate clearly between making and repairing, rejecting the notion that repair actions could implicitly grant rights akin to manufacturing under patent law.

Legal Reasoning

The Lords emphasized that the determination of patent infringement hinges on whether the defendant has "made" the patented product, as defined by section 60(1)(a) of the Patents Act 1977. They reasoned that repairing a product and making a new one are legally distinct actions. While repairs may involve restoring a product to its original state, making a product entails creating a new instance of the patented invention. In this case, the Defendants' process of stripping down the frames and reassembling them with new meshes effectively constituted making the patented screen assembly anew, rather than merely repairing an existing one.

The House of Lords also rejected the reliance on implied licences in this context, deeming them superfluous for actions amounting to making. They clarified that implied licences or exhaustion doctrines do not extend to the manufacture of patented products without consent.

Impact

This judgment has significant implications for patent enforcement and aftermarket services. It delineates a clear boundary that merely repairing a patented product does not grant the right to manufacture similar products. Companies engaging in reconditioning or refurbishing patented items must ensure that their activities do not cross into making as defined by patent law. This decision reinforces the proprietary rights of patentees, ensuring that they retain control over the manufacturing of their inventions even in secondary markets.

Complex Concepts Simplified

Implied Licence

An implied licence occurs when the patentee does not explicitly grant permission but allows certain uses of the patented product through their actions, such as selling the product. However, this does not extend to manufacturing new instances of the patented invention.

Exhaustion Doctrine

Also known as the "first sale doctrine," it holds that once a patented product is sold, the patentee's control over the product is exhausted, allowing the purchaser to use or resell it. This doctrine does not, however, permit the purchaser to manufacture new patented products.

Section 60 of the Patents Act 1977

This section outlines the exclusive rights granted to a patentee, including the rights to make, dispose of, offer to dispose of, use, import, or keep the patented product. Infringement occurs if these rights are exercised without consent.

Conclusion

The House of Lords' decision in United Wire Ltd v. Screen Repair Services underscores the importance of distinguishing between making and repairing in the realm of patent law. By affirming that reconditioning a patented product constitutes making the patented invention, the judgment reinforces the exclusive rights of patentees to control the manufacturing of their inventions. This clarity aids in safeguarding patent rights and provides a definitive stance for future cases involving similar disputes. Overall, the judgment fortifies the legal framework that balances innovation incentives with fair market practices.

Case Details

Year: 2000
Court: United Kingdom House of Lords

Judge(s)

LORDS DECISIONSLORDS DECISIONS >>LORDSLORD BINGHAM OF CORNHILL LORD STEYN LORD HOFFMANN LORD COOKE OF THORNDON LORD HUTTONLORDS OF APPEAL FOR JUDGMENTLORD BINGHAM OF CORNHILLLORDS,LORD HOFFMANN, WITH WHICH I FULLY AGREE. I GRATEFULLY ADOPT HIS ACCOUNT OF THE FACTS AND OF THE ISSUE IN THIS CASE.LORD HOFFMANN, AND FOR THESE REASONS, I WOULD DISMISS THIS APPEAL.LORD STEYNLORDS,LORD BINGHAM OF CORNHILL AND LORD HOFFMANN. FOR THE REASONS THEY GIVE I WOULD ALSO DISMISS THE APPEAL.LORD HOFFMANNLORDS,LORDS JUSTICES AGREED, SAID THAT IN THIS CASE THE DEFENDANTS HAD MADE THE PRODUCT. THEY HAD REPAIRED OR RECONDITIONED THE FRAME AND THEN USED THAT FRAME TO MAKE A SCREEN IN EXACTLY THE SAME WAY AS IF THEY HAD BOUGHT THE FRAMES AS COMPONENTS FROM A THIRD PARTY.LORDS, THE POINT IS A VERY SHORT ONE AND IN MY OPINION THE COURT OF APPEAL WAS RIGHT. THE CONCEPT OF AN IMPLIED LICENCE TO DO VARIOUS ACTS IN RELATION TO A PATENTED PRODUCT IS WELL ESTABLISHED IN THE AUTHORITIES. ITS PROPER FUNCTION IS TO EXPLAIN WHY, NOTWITHSTANDING THE APPARENT BREADTH OF THE PATENTEE'S RIGHTS, A PERSON WHO HAS ACQUIRED THE PRODUCT WITH THE CONSENT OF THE PATENTEE MAY USE OR DISPOSE OF IT IN ANY WAY HE PLEASES. THE TRADITIONAL ROYAL COMMAND IN THE GRANT OF A PATENT FOREBODE OTHERS NOT ONLY TO "MAKE" BUT ALSO TO "USE, EXERCISE OR VEND" THE INVENTION. SIMILARLY, SECTION 60(1)(A) PROVIDES THAT A PERSON INFRINGES A PATENT FOR A PRODUCT NOT ONLY IF HE "MAKES" IT BUT ALSO IF, WITHOUT THE CONSENT OF THE PROPRIETOR, HE "DISPOSES OF, OFFERS TO DISPOSE OF, USES OR IMPORTS THE PRODUCT OR KEEPS IT WHETHER FOR DISPOSAL OR OTHERWISE." PUT SHORTLY, THE PROBLEM IS TO EXPLAIN WHY, FOR EXAMPLE, A PATENTEE CANNOT NOT COMPLAIN WHEN SOMEONE TO WHOM HE HAD SOLD THE PATENTED PRODUCT THEN, WITHOUT ANY FURTHER CONSENT, USES IT OR DISPOSES OF IT TO SOMEONE ELSE. THE ANSWER GIVEN BY LORD HATHERLEY L.C. IN THE LEADING CASE OF BETTS V. WILLMOTT (1871) L.R. 6 CH. APP. 239, 245 (WHICH CONCERNED THE RESALE OF A PATENTED PRODUCT) WAS THAT HE DID SO BY VIRTUE OF AN IMPLIED LICENCE.LORD HALSBURY L.C. SAID OF THE OLD LAW IN SIRDAR RUBBER CO. LTD. V. WALLINGTON, WESTON & CO. (1907) 24 R.P.C. 539, 543:LORD HALSBURY L.C. WHICH I HAVE ALREADY CITED. HE SAID THAT THE QUESTION WAS ONE OF FACT AND DEGREE AND SAID (AT P. 555) THAT THE "CARDINAL QUESTION" WAS WHETHER "WHAT HAS BEEN DONE CAN FAIRLY BE TERMED A REPAIR, HAVING REGARD TO THE NATURE OF THE PATENTED ARTICLE." THE CONTEXT SHOWS THAT BUCKLEY L.J. SAW NO DIFFERENCE BETWEEN THIS QUESTION AND THE QUESTION OF WHETHER, HAVING REGARD TO THE NATURE OF THE PATENTED ARTICLE, THE DEFENDANT COULD BE SAID TO HAVE MADE IT. SPEAKING FOR MYSELF, I PREFER THE LATTER FORMULATION.LORD COOKE OF THORNDONLORDS,LORD BINGHAM OF CORNHILL AND LORD HOFFMANN. FOR THE REASONS THEY GIVE I WOULD ALSO DISMISS THE APPEAL.LORD HUTTONLORDS,LORD BINGHAM OF CORNHILL AND LORD HOFFMANN AND FOR THE REASONS WHICH THEY HAVE GIVEN I TOO WOULD DISMISS THE APPEAL.

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