United Wire Limited v. Screen Repair Services (Scotland) Limited and Another and Others

The House of Lords held that reconditioning and refitting replacement meshes to a stripped frame amounted to making the patented sifting screen within the meaning of section 60(1)(a) of the Patents Act 1977, rather than mere repair. The court treated the patented product as the assembled, adhesively bonded, pre-tensioned screen as claimed (see section 125 for claim interpretation).

Accordingly, doctrines of implied licence or exhaustion of rights do not excuse acts which constitute making the patented product: sale of the finished screen did not confer any licence to make new screens from stripped frames, and exhaustion does not apply to subsequent acts of manufacture. Repair remains a residual right that does not extend to acts amounting to manufacture.

This was an appeal from the Court of Appeal concerning two patents for double-mesh sifting screens used in vibratory machines for cleaning drilling fluid. The plaintiffs, United Wire Limited, held patents claiming a screen assembly in which two meshes of differing mesh size are adhesively bonded to a frame/support member so as to be pre-tensioned at different tensions, producing the claimed anti-blocking effect.

Nature of the claim: an action for patent infringement by the plaintiffs against the defendants who sold reconditioned screens made by stripping used United Wire frames, recoating and bonding new double meshes and selling the repaired screens. (Specific relief sought: Not stated in the judgment.)

Issues framed:

• whether the defendants' reconditioning operations amounted to "making" the patented product within section 60(1)(a) of the Patents Act 1977;
• whether the sale of the original screens by the patentee gave rise to an implied licence or exhausted patent rights so as to permit the defendants' activities; and
• the proper legal approach to the overlap between "repair" and "making".

Reasoning: the Lords agreed with the Court of Appeal that the patented product must be identified by reference to the claims and specification (section 125). Stripping a screen to the bare metal frame removed the patented combination (frame plus bonded, pre-tensioned meshes) so that what remained was at most a component. The defendants’ process of bonding new meshes to produce a usable pre-tensioned screen therefore produced the patented product anew and amounted to "making". Consequently, implied licence or exhaustion principles could not be relied on to justify acts which in substance were acts of manufacture. The judgment emphasised that repair is a residual concept that does not permit making a new product under cover of repair. The House of Lords dismissed the appeal and affirmed the Court of Appeal’s finding of infringement.

Appeal dismissed. The House of Lords held that the defendants' reconditioning work constituted making the patented screen within section 60(1)(a) of the Patents Act 1977 because stripping the meshes left only a component (the frame) and the defendants effectively made a new patented product by bonding new meshes; implied licence or exhaustion cannot excuse acts amounting to manufacture; repair is a residual right and does not permit making a new article.

First instance: trial before Robert Walker J (trial judge held there was an implied licence to repair and was narrowly persuaded the defendants' operations were repair). Court of Appeal (Evans, Aldous and Ward L.JJ.) reversed the trial judge, holding that the defendants had "made" the patented product. Appeal to the House of Lords ([2000] UKHL 42) where the appeal was dismissed.