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REPORTS

OF

PATENT, DESIGN, AND TRADE MARK CASES.

EDITED BY JOHN CUTLER, ONE OF HER MAJESTY'S COUNSEL.

Vol. XVIII.] WEDNESDAY, JANUARY 16, 1901.

[No. 1.

5

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BYRNE.

August 8th, 1900.

: WAITE & SAVILLE, LD. v. JOHNSON DIE PRESS COMPANY, LD.

Action for threats by Patentee.-Motion for interim injunction.—Action by Patentees before threat dismissed on Plaintiffs' default.-Action by Patentees commenced directly after threat.-Motion on threats action a fortnight afterwards.-Motion refused.-Costs reserved.

The J. Co. commenced an action against W. & S. for infringement of Patent, 10 and also actions against four of their customers, which were to abide the result of the principal action. The action against W. & S. was dismissed on account of the default of the J. Co. The J. Co. then, on the 26th of July 1900, issued a threatening circular. On the 31st of July W. & S. commenced an action to restrain the J. Co. from threatening, and on the same day gave notice of motion 15 for an interlocutory injunction, which came on for hearing on August 8th. In the meantime the J. Co. issued and served a writ in an infringement action against a customer of W. & S.

Held, that, there being no evidence that the last-mentioned action was not being prosecuted with due diligence, no Order would be made on the motion, 20 except that the costs be reserved. Patents, &c., Act, 1883, section 32.

A

Waite & Saville, Ld. v. Johnson Die Press Company, Ld.

On the 31st July 1900 Waite & Saville, Ld., commenced an action against the Johnson Die Press Company, Ld., for an injunction to restrain the Defendant Company, and its servants and agents, from alleging by circular or otherwise that the Waite-Saville press was an infringement of the Johnson Die press and from threatening proceedings against any persons using the Waite-Saville 5 press and for damages, and on the same day gave notice of motion for an interim injunction.

It appeared that on the 28th of November 1899 the Defendant Company brought an action against the Plaintiffs for an injunction to restrain them from infringing Letters Patent No. 16,704 of 1883, of which they were the owners. 10 They also brought actions against four of the Defendants' customers, which stood over to abide the result of the principal action.

After certain preliminary proceedings, the Johnson Company on the 11th of July 1900 applied for the case to stand over the Long Vacation. This application was refused. A few days afterwards they applied for leave to discontinue 15 the action. On this application coming before Mr. Justice Farwell he refused to give leave to discontinue the action, but ordered that it should stand over for a week, by which time he thought Plaintiffs ought to be ready for trial. On the 26th of July the action was in the paper for trial, and, the Plaintiffs' Counsel not being ready to go on with the case, the learned Judge dismissed 20 the action with costs.

On the same 26th of July 1900 the assistant secretary of the Johnson Company sent a circular to various actual or intending purchasers of the Waite-Saville press, which circular terminated as follows:-"I have only to add that my "directors still emphatically consider the Waite-Saville press an infringement 25 "of the Johnson Company Die press, and to warn you that in due course my "directors will take proceedings against all persons using the White-Saville press to restrain such user and recover damages."

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It appeared that subsequent to the 26th of July the Johnson Company issued and served a writ against the purchaser of a Waite & Saville press for 30 infringement of the Patent.

On the hearing of the motion before Mr. Justice BYRNE, Bousfield, Q.C., and J. C. Graham (instructed by Clarke and Blundell, agents for Gordon, Hunter, and Mannaster, of Bradford) appeared for the Plaintiffs; and A. J. Walter (instructed by G. R. Pakeman) appeared for the Defendants.

Bousfield, Q.C.-After the action against us had been dismissed, the Defendants issued the circular of the 26th of July 1900. Can it be said that, having regard to the circumstances under which that action was dismissed, the Defendants were justified in going on threatening? They disabled themselves from making any more threats in the matter by letting the judgment go by default. The affidavits were then read.

Walter.-We rely upon our having brought an action against a customer, which we intend to prosecute with due diligence.

35

40

Graham. This is no justification at all. They have really increased their old offence by issuing a new threat. We still complain of the threats originally 45 issued against our customers.

Walter. The only threat of which there is any evidence on this motion is the circular of the 26th of July 1900. Whether or not we prosecuted the first action with due diligence has nothing to do with this circular; the first action had been disposed of before that was issued. These are the dates: The threat 50 26th of July; writ subsequently issued; and now it is the 8th of August-that is to say, only a fortnight has elapsed since the date of the threat, and the threat has been followed up by an action.

BYRNE, J.-Is there any authority on the proviso at the end of the 32nd section whether, when a person is making threats, and he has brought an action and 55 the action has been determined between him and the Patentee, the Court has jurisdiction to stop him threatening afterwards.

10

Waite & Saville, Ld. v. Johnson Die Press Company, Ld.

Walter.-I know of no such authority. We commenced an action after the date of the threat complained of, and the proviso to the thirty-second section cannot apply to anything but an action after the threat. It says, "With due "diligence commence and prosecute an action for infringement of his Patent "; 5 this can only mean due diligence after the threat. The Plaintiffs are in too great a hurry in coming to the Court. If we had displayed any reluctance to proceed with our action, that would have been an answer.

Graham. My friend keeps on trying to get your Lordship to think that we are complaining solely of the last circular.

BYRNE, J.-Where is your evidence about other threats?

Graham.-The Defendants, when they commenced the first action, began four actions against our customers, and these are threats of the most pointed description.

BYRNE, J.-These actions are not threats within the meaning of the 15 section.

Graham.-If your Lordship thinks so there is an end of that part of the matter. The Defendants desire to have this motion dismissed because they have duly commenced an action, but six weeks hence they may fail to prosecute with due diligence. I should like to have the matter hanging in 20 terrorem over their heads..

Walter.-I intend to take out a summons to stay this action for threats on the ground that it is misconceived.

BYRNE, J.—I do not see my way to interfere in this case.

I agree that this is a case in which, in the action that was brought, 25 there was not due diligence shown, and judgment in that has been given for the Defendants with costs.

Now, a circular is issued in which the Plaintiffs in that action are making threats against persons using the identical machine which, as between the Plaintiffs and the Defendants, in the action which has already been determined, 30 was held not to be an infringement of the Defendants' Patent. But when I come to look at the section I have no evidence of any threats made prior to the determination of the action between the Plaintiffs and Defendants. I can deal, therefore, only with the one that is before me.

Section 32 says, "Where any person claiming to be the Patentee of an 35"invention, by circulars, advertisements, or otherwise, threatens any other "person," &c., " any person aggrieved thereby" (that would be the Plaintiffs in the present action), " may bring an action against him, and may obtain an "injunction against the continuance of such threats, and may recover such "damage," &c. "Provided that this section shall not apply if the person 40" making such threats with due diligence commences and prosecutes an action "for infringement of his Patent."

45

I think that must apply to the case where an action has been brought with due diligence, as in the present case, and there is no evidence before me to show that it has not been prosecuted up to the present with due diligence.

As an ordinary rule I should simply say, no Order except an Order to pay the costs of this motion; but I am not quite satisfied in reference to this transaction, and I think I shall be justified in the present case in making no Order on the motion except reserving the costs to be dealt with at the trial. shall know then whether there is bona fides about the matter, and if there is not 50 bona fides I shall not give the Defendants costs.

I

This will not prevent you, Mr. Graham, at any time renewing the motion if you find there is not prosecution with due dilgence.

Edison-Bell Consolidated Phonograph Company, Ld. v. Columbia
Phonograph Company.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BUCKLEY.

November 17th, 1900.

EDISON-BELL CONSOLIDATED PHONOGRAPH COMPANY, LD. v. COLUMBIA

PHONOGRAPH COMPANY.

5

Patent.-Action for infringement.-Particulars of Objections.-Application for further and better Particulars refused.

Defendants, who in their Particulars of Objections alleged prior publication in several Specifications, alleging as to some that all parts were relied on against all the claims of the Plaintiffs' Specification, were not ordered to give 10 further Particulars.

On the 7th of May 1900, the Edison-Bell Consolidated Phonograph Company, Ld., commenced an action against the Columbia Phonograph Company for infringement of Letters Patent No. 17,175 of 1887 for "Improvements in phonographs and phonograms," and No. 5307 of 1888 for "Improvements in 15 "the manufacture of phonogram blanks and phonograms and apparatus "therefor," both granted to George Edward Gouraud.

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The Statement of Claim was in the usual form.

The Defendants, by their Defence, alleged the invalidity of both Patents by reason of the matters in the Particulars of Objections appearing.

20

The Particulars of Objections as to the Patent No. 17,175 of 1887 alleged (inter alia), (paragraph 5), that the invention was not new, but had been published in this realm prior to the date of the Patent by the deposit in the Patent Office Library of the Specifications of the Letters Patent thereinafter referred to, and by the public general knowledge of the matters thereinafter referred to. 25 The following Specifications were then mentioned, viz. :-Johnson (No. 6027* of 1886), Bell and Tainter (U.S.A., No. 341,214 of 1886), Tainter (U.S.A., No. 341,288 of 1886), and it was stated with reference to each of these that all parts of the Specifications were relied on, and all claims of Gouraud's Patent were attacked. A considerable number of other Specifications were also referred to, 30 all parts thereof being relied on, but the particular claim attacked was specified. As to the Patent No. 5307 of 1888, want of novelty was also alleged (paragraph 11), by the prior publication of certain Specifications and by public general knowledge, and as to five of the Specifications all parts were relied upon against all the claims of the Patent, and also, as against all the claims, certain common 35 general knowledge.