Beston v. Watts. "bracket. A is part of the machine frame formed into a cramp to secure the "machine to a table or other support with the thumb screw B. Rods C. D are "screwed into the frame whereon are swivelled respectively the links E F and "the razor bracket G. The links are for the purpose of carrying the rollers or 5" pulleys H. I. which rollers revolve on their respective pin or rod J. K. which "pins secure the two links E. F. together. On the rod D. fixed to the machine "frame is swivelled the razor bracket G. The razor being firmly secured therein "with the set-screw L. On the rod D. is also arranged the flanged roller M. "which while rotating may also be moved laterally along the said rod by which 10 means I can use a narrow band instead of one the full breadth of the razor "blade. In some instances I prefer to thread the said rod D. and also the flanged roller to suit same so that by rotating it, it automatically screws itself "along to produce its lateral motion. The action of the machine is thus, supposing the links E.F. are in a horizontal position or that the centres of the 15 rollers H.I. are in a line with the line 3. 4. which is their normal position 66 66 66 66 "kept there by the springs N. O. The user takes hold of each end of the band "then by pulling the left hand one the links E. F. are placed at an angle as "shewn in illustration Fig. 3. At the same time the razor and razor bracket "are placed at an angle by means of the spring O. which places the razor blade 20"on to the band P. and the band continuing motion rubs against the face of "the razor Q. It will be seen that any further movement of the top links "simply stretches the spring O. and presses the razor harder against the band. "A stop R. is placed to prevent the links from getting too great an angle. In "order to strop the other side or face of the razor the right hand end is pulled which places the links E. F. to the opposite angle and at the same time the razor and razor bracket are also placed at the opposite angle by the action of "the spring N. this places the razor on to the opposite side of the band as shown "in dotted lines. It will easily be understood that by reciprocating the band in "first the one direction and then in the opposite a keen edge may quickly be 30" put on to the razor." There were four Claims. 25 66 66 The action came on for trial on the 20th of February 1907 before Mr. Justice Warrington, who held that the Patent was valid and that the Defendant had infringed. (24 R.P.C. 219.) The Defendant appealed. The appeal was heard on the 26th and 27th of November 1907. 35 T. Terrell K.C. and D. M. Kerly (instructed by Johnson, Wetherall, and Sturt, agents for Broomhead, Wightman and Moore, of Sheffield) appeared for the Appellant; Walter K.C., A. B. Shaw, and L. Maddison (instructed by Truefitt and Francis) appeared for the Respondent. Beston v. Watts. T. Terrell K.C., for the Appellant, described the nature of the invention and read the Specification. The opening paragraph (ante, page 20, lines 17 to 27) contains the description of the invention; the Drawings show a mode of carrying it out. The spring to bring the razor holder back into the central position is not used in practice. The first Claim refers to the wide invention 5 described in the beginning of the Specification. The second is narrower, and includes in the combination the means of working the razor holder by the pulley. The third is the same thing in combination with the means of retiring the razor holder at the end of the movement. The fourth brings the guiding rollers into the combination, and the last claims the precise form of machine 10 shown in the Drawings. The first is the widest, and includes every means of rocking the razor holder by the strop, the means disclosed being only introduced into the subsequent Claims. The first Claim refers to the more general description of the invention, and includes what Stuart has done. [Stuart's invention was then described in detail.] It is merely upside down, therefore 15 the strop actuates the razor holder by means of an intermediate piece which pulls by springs on the other piece. The Defendant has taken that arrangement of Stuart, but reversing the position. The action of the rocking piece is the same, pressed by a different part and side of the strop. If that is within the first Claim, then that Claim also includes Stuart's invention. Fig. 3 of 20 Stuart's Specification shows the same device as the Defendant's rocking saddle. The reversing devices in Stuart's and Beston's are both well known. The latter has a double lever, and the Defendant a cogwheel with only a single tooth, also a known device. Every word of the first Claim applies to Stuart's invention, except the concluding ones, "substantially as above described," and 25 those cannot narrow it down to the fifth Claim. The evidence on both sides supports this view. [Counsel then read the evidence in detail.] The advantages of Beston's over Stuart's enumerated by Mr. Beaumont are only points of detail in the construction. Mr. Swinburne said that those two inventors carried out the same idea, but naturally in a different form. Professor Boys 30 said that the reversing mechanism in both Stuart's and Beston's machines was well known. [The Judgment below was then read.] There are of course differences between Stuart's and Beston's arrangements, but they are not of principles, only of details. The Defendant's will work if the rocking saddle is perfectly smooth, as it operates by pressure of the strap inwards on the side of the rocker; 35 not so Beston's, as it is actuated by friction of the strop on the circumference of a roller centrally pivotted. Different forces act in each case. Counsel for the Respondent were not called on. Lord ALVERSTONE L.C.J.-This case has been very ably argued by Mr. Terrell, and everything, which could have been said to criticise fairly and 40 properly the judgment of Mr. Justice Warrington, has been said by him. He has used Stuart's Patent in a way which is perfectly legitimate. It has long ago been pointed out, both in the Court of Appeal and in the House of Lords, in many decisions that, although infringement is admitted, or may be said to be proved on the face of the Specification, it is perfectly legitimate to look at the 45 previous knowledge in order to ascertain what is the fair construction of the Specification so that it may be decided whether the Patent is valid or invalid. Mr. Terrell has put the dilemma in his own way, as it has been put many times before; if the Patentee's Specification is to be construed so as to include and so as to make the Defendant's machine an infringement it is bad, because 50 it would then include as an infringement the earlier anticipation, and if that had been established we should have had to give effect to that argument. The prior Specifications are always looked at, or ought to be looked at, not only for the purpose of proving the plaintiff's Patent to be invalid, but also in order to get a fair estimate of what is the existing state of knowledge at the time 55 of the patented invention. Now let us see how far Stuart had widened the field Beston v. Watts. of knowledge, and how far he had limited the field of invention. I will take J. S. 1, as that was admitted to be an absolute description or embodiment of what Stuart did. Stuart had shown that you could, by an oscillating holder, present the right edge of the razor to the retiring strap. I say "retiring strap 5 meaning thereby the side of the strop or strap which is leaving the edge of the razor and not approaching it. Stuart had also shown that you could use either the friction or the pressure-I do not think it matters much which for this purpose of the strap in order to effect the oscillation. Therefore, in so far as the arrangement embodies those essential features, undoubtedly Stuart had 10 enlarged the field of knowledge and had narrowed the field of invention. He did it in an extremely ingenious but somewhat cumbrous method. It was necessary for him that the strop should take two paths-if I may use the expression-one up and one down; and in order to get his rocking he relied upon the pressure of the strop against certain rollers which revolved in order 15 to let the strop go round, and which caused the razor holder to catch. Those features were disclosed by Stuart. He, as I have said already, narrowed the field of invention, and nobody could then claim generally a mechanical apparatus whereby the razor holder was made to change its position as required by the pressure of the moving strop. When I say "pressure I mean the action of 20 the moving strop, not confining it at all narrowly to either friction or pressure. Then comes the Plaintiff's Specification, and I quite agree with Mr. Terrell that if you take the description of the Plaintiff's invention as given at page 2, line 7 down to line 13 (ante, page 20, lines 17 to 27), or as given in the first Claim, and if you leave out the words "substantially as described," it would really 25 describe what Stuart had done. There you have a reciprocating flexible strop led round a pulley, "a razor holder pivotted and adapted to be rocked from side "to side about its pivot by means of the said strop in combination with " means for moving the razor holder so as to retire the razor from the said strop "at the end of the movement of the said strop." That is only a statement of 30 the problem, or operation which had to be completely performed in order to carry it out, and it does not purport to be a description of the way in which Stuart solved the problem. The description of the way in which Stuart solved that problem is stated in his Specification, and it is stated in the Claim in the words" substantially as described." 35 What then was the way in which Beston carried it out. Beston abandoned the serpentine path of the strop, and it is not unimportant to mention that by abandoning the serpentine path of the strop, he was able to get rid of the two pairs of lower rollers which were essential in order to carry out the rocking motion in Stuart. Having abandoned the serpentine motion of 40 the strop, it became necessary to replace the pressure or action of the two lower rollers in Stuart by something which would cause the razor holder to move from side to side by the operation of what I will call the straight forward motion of the strop backwards and forwards; and, accordingly, he arranged a device by which there was, at the top of his apparatus, something which looks like a roller 45 which was mechanically connected with the razor holder and which, by the friction-I think that term is quite right-of the strop, caused the razor holder to come to the right or the left as was required. Therefore I think nobody can dispute that, as a matter of improvement, there were very marked differences between Stuart and Beston-differences which would unquestionably, in my 50 opinion, involve invention and perfectly good subject matter; and it has not really been disputed that, if a construction is put upon Beston which would differentiate it from Stuart, it is a good Patent. Then says Mr. Terrell—" It is not, because in order to deal with that we have to see what the Defendant has "done." I must make an observation which I think is at the root, if I may 55 respectfully say so, of the fallacy which is of necessity involved in Mr. Terrell's argument. He was obliged to say that the cylinder F at the top, or roller at the 66 Beston v. Watts. top was really a roller, and he suggested that therefore Beston had gone very nearly in the direction of Stuart or, at any rate, had only adopted mechanical equivalents to it. I cannot take that view. The roller F at the top is not a roller at all. That can be demonstrated by observing that if you cut off the bottom half of the roller, and merely make it semicircular with a flat bottom it 5 would work perfectly well and probably operate as the frustum of the roller, or that part of the circumference of the roller which is allowed to oscillate between the limits on the one side and on the other. So that, although it looks like a roller, when you examine its functions it is really an oscillating segment of a circle, no doubt put in roller shape for facility of putting in and fitting it 10 so that it will not get out of place; but it is, when it works, an oscillating sector of a cylinder that is connected by common mechanical devices with the razor holder. Therefore it seems to me that Beston improved on Stuart by getting rid of the lower brackets and lower rollers and by getting rid of the serpentine motion of the strop and relying upon the simple reciprocating backwards and 15 forwards motion round a sector of a cylinder. What has the Defendant done? Mr. Terrell very frankly admitted that if you look at the Specification alone there is direct infringement. He has taken that round which the strop runs, which is really, if it were completed, in one sense, the sector of a cylinder. He cannot make it of the roller shape because 20 he has only adopted a mechanical equivalent to connect the sector of the cylinder with the razor holder, and that will not allow him to have a complete cylinder in shape. In other words, he has cut off the useless part of Beston's roller and he. has then connected it in a way which makes it oscillate, and which was admitted by Mr. Terrell to be a mere mechanical equivalent. He has therefore 25 followed Beston in the sense of relying solely upon the motion of the strap backwards and forwards. He has followed Beston in making the strop work over the circumference of a cylinder or a portion of a cylinder operating directly upon the razor holder below. Now Mr. Terrell, with great ingenuity, said that one has friction, that is to say 30 that the motion, which is applied or which is transmitted to the oscillating roller and from the oscillating roller to the razor holder in Beston, is friction. I think he is right. I should expect to find that it is also friction in Watts. It may be that, in addition to friction there is something like a pull upon the outside due to the fact of having rather a wider saddle. When it starts I have no doubt it 35 is friction. At any rate nobody can say that there is any departure from Beston by helping that friction, if I may use the expression, by a particular shape of the cylinder. In my judgment, therefore, Mr. Justice Warrington rightly held that Beston's Patent was perfectly good; rightly held that it should be confined to the com- 40 bination substantially as described, and has rightly held that Watts has taken the actual combination, substituting only one common mechanical equivalent for connecting the oscillating cylinder with the razor holder. This appeal must therefore be dismissed. BUCKLEY L.J.-Infringement here cannot be, and, indeed, is not disputed. 45 Beston had, at the top of his machine, an axle capable of rocking to and fro; it was connected by a lever to the oscillating or rocking or alternating razor holder; and was checked in its action by the hold of its clutch on the next lower axle. Briefly there was a frictional axle at the top capable of rocking to and fro which gave, by the action of a lever, a motion in the opposite direction 50 upon the axle which held the razor itself. The Defendant does exactly the same thing. The only difference is this, that his top axle is not cylindrical but is saddle shaped it may get a little something by way of pressure and not all by way of friction, but the rocking motion of the top axle communicates the rocking motion to the second axle, and achieves the desired result in exactly the 55 same way. Beston v. Watts. The real question is whether Beston's Patent is anticipated by what Stuart had done. To my mind the two things are essentially different. What Stuart did was this-his machine was, as compared with Beston's machine, upside down. The rocking axle was controlled by two axles which were above it, and 5 the action of the strop was this, that by way of direct communication of the pressure of the strop pulling down an arm which actuated a lever, at the end of which the rocking axle and the razor was situate, there was communicated to the razor holder, which, again, was subverted compared with Beston, the oscillating motion which has been described. In Stuart's machine there were 10 three rollers, and all three of them were, or could be properly rollers, that is to say, continuously rotating without limit in either direction, according to how the strop was put. They were not rocking axles; they were rotating axles; there were three of them, and the rocking motion of the razor holder was achieved by direct communication of the pressure of the hand upon the strop acting 15 upon the levers which I have described. What Beston did was totally different. His machine, compared with Stuart's machine, was a drawing up, and he described how he achieved what he wanted by a frictional axle at the top which was not capable of rolling, but only of rocking, and conveyed the right action to the razor holder in that way. 20 The only question really in this case is whether that which he described is that which he conveys by his Specification. To my mind it is. He does not claim any arrangement by which the rocking of a razor holder against the strop is arrived at, but a particular way of arriving at that, namely, by such a frictional action of the top axle on an axle immediately below it, which he describes. 25 That is not what Stuart had done. It is a different thing: it is a new thing, and, therefore, a valid thing. 30 Beston's Patent, therefore, I think, is valid; the Defendant's mechanism was an infringement of it, and, consequently, the learned Judge's judgment was, in my opinion, right. KENNEDY L.J.-I agree. 35 IN THE COURT OF APPEAL. Before THE LORD CHIEF JUSTICE and LORDS JUSTICES BUCKLEY and KENNEDY. November 25th, 1907. MARTIN AND JAMES v. CONSETT IRON COMPANY LD. Patent.-Action for infringement.—Construction of Specification.—Infringement not found.-Judgment for Defendants.-Appeal dismissed. |