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The meshes quickly become torn in use. PRE |
The plaintiffs therefore enjoy [the] aftermarket in selling replacement screens made in accordance with their inventions. PRE |
64. PRE |
The defendants [sell] reconditioned screens made from the plaintiffs own frames. PRE |
The [metal] frames weigh about 10 kilos [and look] more like a drain cover than a picture frame. PRE |
They are durable in relation to the rest of the materials of the screen. PRE |
The defendants acquire the frames from the plaintiffs customers and strip them down to the bare metal by sandblasting. PRE |
They recoat them with adhesive polyethylene and attach the two layers of mesh, coarse below and fine above. PRE |
The differences in the sizes of the mesh produces the necessary differential tensions when both are tensioned together. PRE |
Heat is then used to bond the meshes to the polyethylene coating of the frame, the selvage of mesh around the frame is cut off and the edges trimmed and taped. PRE |
At first instance in United Wire, the judge had been narrowly persuaded that the defendants activities amounted to repair, and therefore that the defendant did not make the article claimed under either of the two patents. PRE |
The Court of Appeal took a different view. PRE |
In a judgment which was expressly approved by the House of Lords, Aldous LJ held that in cases where it is claimed that the alleged infringer makes a product contrary to section 60(1)(a) the question must be whether his acts amount to manufacture of the product, namely the product of the invention see para 25. PRE |
In para 27, he briefly summarised the patentees case, which he accepted, and which included the contention that the defendants activities should be contrasted with on-site repair. PRE |
He then described the defendants activity as equivalent to the purchase on the open market of frames and then using them to produce an assembly para 28. PRE |
In the House of Lords, Lord Bingham and Lord Hoffmann gave reasoned speeches, with which the other Law Lords agreed. PRE |
Lord Bingham, at para 56, thought the issue was simply whether the defendant made the patented article, to which the answer was a question of judgment; that it was better not to ask whether the defendants work involved repair; and that the Court of Appeal had identified the right question and reached a conclusion open ... |
Lord Hoffmann described the point as a very short one, and (discussing an earlier case) he said that the real issue was whether the defendants had made the patented product paras 68 and 72. PRE |
He quoted (para 70) with approval a statement made by Lord Halsbury LC that you may prolong the life of a licensed article but you must not make a new one under the cover of repair, and he warned (para 71) of the dangers of asking whether the work constituted repair. PRE |
Lord Hoffmann described the question raised as one of fact and degree in para 72, and, at the end of his final paragraph, para 73, he said that: [The patented] product ceased to exist when the meshes were removed and the frame stripped down to the bare metal. PRE |
What remained at that stage was merely an important component, a skeleton or chassis, from which a new screen could be made. PRE |
Neither Lord Bingham nor Lord Hoffman said, at least in terms, that the decision of the trial judge to the contrary effect was one which he could not have reached. PRE |
What Lord Hoffmann said at para 73 was that the Court of Appeal was entitled to substitute its own evaluation because the judge did not correctly identify the patented product. PRE |
Lord Bingham seems also to have justified the Court of Appeal having substituted its own decision on this ground, saying in para 56 that the judge did not concentrate his attention on whether the defendants had made the patented product. PRE |
Decisions of German courts PRE |
The fact that the word makes is in a section of the 1977 Act which is intended to conform with the provisions of an international convention is particularly significant where, as is the case with the EPC and the CPC, the convention contains a set of principles which are intended to apply consistently across signatory s... |
(The EPC is not an EU convention, whereas the CPC is; however, the CPC is not yet in force.) Ratio |
The House of Lords and this court have emphasised on a number of occasions the desirability of national courts following the established approach to validity of the Technical Board of Appeal of the European Patent Office (the EPO), and the German Bundesgerichtshof (the BGH) have taken the same view see, most recently, ... |
The parties in this case have not referred to any relevant decision of the EPO, as we are here concerned with infringement. Ratio |
However, it is worth addressing four decisions of the BGH which consider what activities constitute making a patented article. Ratio |
The most recent such decision related to the German equivalent of the Patent Paletenbehlter II, Schtz v Mauser (Pallet Container II) Case X ZR 97/11, in July 2012. Ratio |
These are not only decisions of a highly expert, experienced and respected court on the very point which is raised in this case, but they are decisions of a court of another signatory state to the EPC (and the CPC) on a point of some significance arising under those Conventions. Ratio |
We should therefore accord them considerable respect, and sympathetically consider the extent to which we should adopt any points of principle or practice which they raise. Ratio |
However, there can be no question of the courts in this jurisdiction feeling obliged to follow the approach of the German courts, any more than the German courts could be expected to feel obliged to follow the approach of the English and Welsh courts. Ratio |
Unlike the EPO, both this court and the BGH are national courts. Ratio |
As such, while they have a great deal, including many principles, in common, they have inevitably developed somewhat different techniques and approaches in relation to many issues, including many which arise in the field of patents. Ratio |
While complete consistency of approach may be achieved one day, it is not a feasible or realistic possibility at the moment. Ratio |
Nonetheless, given the existence of the EPC (and the CPC), it is sensible for national courts at least to learn from each other and to seek to move towards, rather than away from, each others approaches. Ratio |
It appears that the BGH is of the same view. PRE |
In Flgelradzhler (Impeller Flow Meter) Case X ZR 48/03, para 2.a, it made the point that, following the CPC, the case law on the old German patent law cannot be used automatically to interpret section 10 of the German Patent Act (equivalent to section 60 of the 1977 Act). PRE |
In the same case at the end of para 3.b.ii, the BGH cited the reasoning of Lord Hoffmann in United Wire. PRE |
And in Pallet Container II it considered the decision of the Court of Appeal in this case see para 47 below. PRE |
In Impeller Flow Meter, the BGH referred to the distinction between a (permissible) repair and a (prohibited) remaking and observed that this could only be determined in the light of the particular nature of the subject matter of the invention and a balancing of the conflicting interests. PRE |
It then said that When the interests are weighed, increasing importance can be given to whether it would be customary to expect the relevant parts to be replaced during the service life of the device . PRE |
But what is also relevant is the extent to which the technical effects of the invention are reflected by the replaced parts. PRE |
Therefore, the replacement of a part subject to wear and tear that is usually replaced during the expected service life of the machine - sometimes repeatedly - does not usually constitute a new manufacture. PRE |
The situation can be different, however, if this part in fact embodies essential elements of the inventive concept. PRE |
This approach was adopted by the BGH in Laufkranz (Wheel Tread) Case X ZR 45/05, para 17, and it was also followed in Pipettensystem (Pipette System) Case X ZR 38/06. PRE |
In Pallet Container II, the BGH cited these three earlier decisions in support of the proposition that it may also be significant whether the parts [replaced] are such that one normally expects them to be replaced during the useful life of the product and to what extent the technical effects of the invention are reflec... |
It was made clear at paras 43 to 45 that, in the view of the BGH, the technical effects of the invention were not reflected in the bottle, as they were not manifested in the replaced part. PRE |
However, the BGH went on to say that [i]f, according to the prevailing market opinion, the replacement of a part is seen as re-manufacturing the patented product, then as a general rule, a patent infringement cannot be denied, but if it was seen by general market opinion as a repair, the opposite conclusion would proba... |
It then observed that there was insufficient evidence available to reach a concluded view, and suggested that, if used [IBCs] which require the replacement of the inner container are viewed as practically worthless in the prevailing opinion of the purchasers of such containers, then the installation of a new inner cont... |
The BGH remitted the case for a determination as to what proportion of used IBCs were returned to Schtz or reconditioners for no consideration. PRE |
In the light of the argument before us, I should make two further, perhaps connected, points about the decision in Pallet Container II. Ratio |
First, I do not read the BGH as suggesting that the question of whether a new article is made depends on who carries out the work involved. Ratio |
That would be illogical and unprincipled, and indeed contrary to what was said in para 19 of Pallet Container II. Ratio |
When the BGH referred to the market, it was simply looking at the difference in value between a used IBC before and after it is reconditioned. Ratio |
Secondly, the BGH said at para 40 that it disagreed with the Court of Appeal in this case that weight should be given to the fact that Delta described their rebottled IBCs as re-manufactured. Ratio |
I agree with the BGH on this point: the issue we have to determine is not how a party views or markets its products, but how those products should be characterised. Ratio |
Repairing and making Ratio |
The reasoning of Lord Bingham and Lord Hoffmann in United Wire emphasises that one must avoid basing a decision on the point at issue by simply contrasting the two concepts of making and repairing, not least because the notions of making and repair may well overlap para 71 per Lord Hoffmann. Ratio |
However, it was a contrast which Buckley LJ drew, and apparently found helpful, in this context in Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537, 555 (in a passage quoted and approved by Lord Hoffmann in United Wire at para 72), and which Aldous LJ appears to have approved in his judgment in United Wire at p... |
The approach of Buckley LJ supports the notion that, subject to the overriding point that it should not obscure the central issue of whether the alleged infringer makes the patented article, it may sometimes be useful to consider whether the alleged infringer is repairing rather than making the article. Ratio |
I am fortified in that view by the fact that the BGH also plainly considers this distinction to be a useful one in this field. Ratio |
The mere fact that an activity involves replacing a constituent part of an article does not mean that the activity involves making of a new article rather than constituting a repair of the original article. Ratio |
Repair of an item frequently involves replacement of one or some of its constituents. Ratio |
If there are broken tiles on a roof, the replacement of those tiles is properly described as repairing the roof, and such replacements could not be said to involve rebuilding, or making, the roof. Ratio |
Indeed, replacing the whole of a deteriorated roof of a building could be regarded as repairing the building, taken as a whole, rather than reconstructing the building. Ratio |
There are many cases concerned with repairing obligations in leases which illustrate this point - see e.g. the discussion in Woodfall on Landlord and Tenant (October 2008), Vol 1, paras 13.32 to 13.037.12. Ratio |
In the more directly relevant context of chattels rather than buildings, the normal use of making and repairing demonstrates the same point. Ratio |
Works to a ship or a motor car, which involve removal and replacement of defective significant constituent parts, could be substantial in terms of physical extent, structural significance, and financial cost, without amounting to making a ship or motor car, as a matter of ordinary language: in such a case, they would b... |
Thus, in Coleborn & Sons v Blond [1951] 1 KB 43, 49-50, Denning LJ said, in a case concerned with purchase tax, that [s]peaking generally, if you replace an old engine by a new one, or an old body by a new body, you are not making a different vehicle: you are altering and improving an old one . Ratio |
On the facts of that case he held a new thing was made out of two parts - the old chassis and the new body [which] when assembled together make a different thing from either of them separately. Ratio |
The approach of Lord Hoffmann in the remarks at the end of his judgment in United Wire, quoted at the end of para 35 above, appear to me to be consistent with the approach of Denning LJ in Coleborn. Ratio |
On the facts of United Wire, Lord Hoffmann concluded (or said that the Court of Appeal was entitled to conclude) that the totality of the work described in his para 64 amounted to making a new article, because the removal of the meshes and the stripping down and repairing of the frame resulted merely in a component of ... |
Returning to the theme of the normal meaning of a word, observations about the meaning of make in a different legal or factual context from that under consideration should be approached with caution. Ratio |
The examples given above are referred to primarily to emphasise the somewhat slippery nature of the meaning of the word, and the very important role which context plays in determining whether a particular activity involves making an article. Ratio |
In general terms, in a case under section 60(1)(a) the particular contextual features are those identified in paras 26 to 29 above. Ratio |
Infringement: the present case Ratio |
The reasoning in the decisions below Ratio |
The first question to consider is whether either of the Courts below adopted the right approach to the question which they had to decide. Ratio |
In my view, they did not. Ratio |
In para 196 of his judgment, Floyd J said that [t]he difficult question, as it seems to me, is the case where the invention resides, or resides principally, in the part retained. Ratio |
This was not the case in United Wire. Ratio |
Mr Meade QC challenged this statement, contending that, at any rate in the case of the second of the patents in United Wire, the inventive concept in the patented article lay, at least primarily, in the frame which the defendant retained, and not in the wire meshes which it replaced. Ratio |
I accept that contention, although, as explained below, it does not by any means wholly invalidate the approach adopted by Floyd J. Ratio |
Similarly, Floyd J over-simplified the position in the following paragraph of his judgment, when he said that the correct approach is to ask whether, when the part in question is removed, what is left embodies the whole of the inventive concept of the claim. Ratio |
The notion that the issue of infringement in a case such as this is to be determined simply by answering the question which the judge formulated in that passage is attractive and simple to apply. Ratio |
However, it seems to me to conflict with the wording of sections 60(1)(a) and 125(1) as well as with the approach adopted by the Court of Appeal and House of Lords in United Wire. Ratio |
On the other hand, I consider that the Court of Appeal were too ready to accept that the outcome of this case was governed by United Wire. Ratio |
They do not appear to have recognised that the question of whether replacing a part of a patented article constitutes making it is a matter of fact and degree. Ratio |
Indeed, Jacob LJ appears to have thought that replacing any part of a patented article would involve making it. Ratio |
At para 70, he said that if Delta made a frame according to Claim 1 and fitted it with a Schtz bottle that must produce exactly the same outcome as the present position. Ratio |
Similarly, at para 64, he said that the IBC ceased to exist when the bottle is removed and [w]hat remained at that stage was merely an important component [viz the Schtz cage] from which a new IBC could be made. Ratio |
However, as mentioned above, it is a matter of degree, to be assessed in each case, whether replacing a worn or damaged part of a patented article amounts to making the patented article. Ratio |
If, very unusually, an original Schtz IBC was in such a state that the bottle could be reused but the cage could not, it would, I think, be hard to challenge the view that putting the existing bottle in a new Schtz cage would involve making the claimed article. Ratio |
On the other hand, if an original Schtz IBC was entirely reusable save that the detachable lid of the bottle (assuming the bottles design involved a detachable lid) was damaged, it could not be plausibly contended that the replacement of the lid constituted making the claimed article, even though the IBC would be unusa... |
In other words, the replacement of a damaged essential constituent of an IBC can constitute repairing, rather than making, the article. Ratio |
The fact that merely replacing the damaged lid of a Schtz bottle in a Schtz cage would not infringe the Patent, cannot possibly mean that there would be no infringement if one took a lid from an IBC marketed by Schtz and fixed it to a newly made bottle in a newly made cage, which (but for the lid) would infringe the Cl... |
By the same token, Jacob LJ was wrong to say that, because a person who replaced a damaged original Schtz cage, while keeping the original Schtz bottle, would infringe, it must follow that a person who replaced a damaged original Schtz bottle, while keeping the original Schtz cage would infringe. Ratio |
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