DIGEST

OF THE

PATENT, TRADE MARK, AND OTHER

CASES

REPORTED IN

VOL. XXIV. OF THE REPORTS OF PATENT, &c. CASES

COMPILED BY

FRANK G. UNDERHAY, M.A., BARRISTER-AT-LAW, ASSISTANT EDITOR.

DIGEST OF PATENT CASES.

AGREEMENT.

Validity of Patent held to be the basis of an Agreement. Defendant not estopped by reason of having agreed to take licence.Agreement for sole licence.-Actions for royalties.-Guarantee of validity.-Condition of warranty.-Patent admitted at trial to be invalid.-Counterclaim for damages.-Actions dismissed with costs.Judgment for Defendant on counterclaim for royalties paid, without costs. The Plaintiffs entered into an Agreement with the Defendant to procure to him the grant of a sole licence to manufacture and sell under a Patent. By the Agreement the Defendant became bound to accept the licence and to pay monthly in advance royalties calculated on a certain guaranteed minimum number of machines sold by the Defendant; the contract was to be binding for one year from the commencement of the payment of royalties, but the Defendant had an option of renewal yearly. The Plaintiffs agreed to guarantee and uphold the validity of the Patent and to protect the licensee from infringement. The Defendant manufactured machines under the Patent and made three monthly payments of royalties. Then, on the ground that the Patent was invalid, the Defendant refused to pay further royalties and claimed to be indemnified for his expenses incurred in the manufacture, including the royalties paid. The Plaintiffs commenced an action claiming payment of the royalty for the fourth month, and subsequently commenced a second action claiming payment of royalties under the Agreement and an

AGREEMENT-continued.

account of the machines manufactured by the Defendant. The actions were consolidated. The Defendant pleaded that no licence had been granted, and that the Patent was invalid, and he counterclaimed for damages for breach of the guarantee of validity. The Plaintiffs in their Reply alleged that the Defendant was estopped from denying the validity of the Patent and from relying on the fact that no licence had been granted. At the trial it was admitted that the Patent was invalid, and that the Defendant had not manufactured or sold machines in excess of the guaranteed minimum. The Defendant contended that the guarantee of validity was a condition entitling him to rescind the contract, and stated his willingness, if judgment was in his favour, to limit his counterclaim to the sums paid as royalty.-Held, that the Defendant was not estopped from denying the validity of the Patent, and that the validity of the Patent was the basis of the Agreement. The actions were dismissed with costs, and on the counterclaim judgment was given for the Defendant for the sums paid as royalty, but, having regard to the form of the counterclaim, no Order was made as to the costs thereof.-Nadel v. Martin (23 R.P.C. 41) followed. HENDERSON v. SHIELS, p. 109.

AMENDMENT OF SPECIFICATION.

1. Leave given to disclaim by striking out claims founded on errors, but the application being under Section 19, leave to strike out or correct parts of the description refused. A Petition for the revocation of Alsop's Patent, No. 14,006 of 1903, was presented by the Flour Oxidizing Co. Ld., and in the course of the proceedings liberty was granted by the Court of Appeal to the owners of the Patent to apply at the Patent Office under Section 19 of the Patents &c. Act 1883 for leave to amend the Specification by way of disclaimer (23 R.P.C. 65). The Company then applied to the Comptroller-General for leave. The amendments proposed were to excise certain of the Claims and parts of the description relating thereto, such description and Claims purporting to relate to a certain result of the process described in the Specification, which result did not in fact actually occur. The application was opposed. The Comptroller allowed the application so far as the excision of the Claims was concerned, but refused that part of the application which related to the excision of parts of the description. The owners of the Patent appealed. The Solicitor-General upheld the Comptroller's decision, and dismissed the appeal. IN THE MATTER OF ALSOP'S PATENT, p. 684.

2. Liberty to apply for leave to amend refused, where the Judge was satisfied that no effective amendment could be made. IN THE MATTER OF ALSOP'S PATENT, p. 761. See REVOCATION (PETITION FOR), No. 8.

ANTICIPATION. See NOVELTY.

APPENDANT CLAIMS.

Claims held to be appendant and not for subordinate integers. VAN BERKEL v. R. D. SIMPSON LD., p. 117.

APPLICATION. See GRANT OF PATENT (APPLICATION FOR).

CERTIFICATE OF VALIDITY HAVING COME INTO QUESTION.

1. A Certificate of validity, granted prior to an amendment of the Specification of a Patent, does not entitle the Plaintiffs to costs as between solicitor and client in an action on the Patent in its amended form, but a fresh certificate of validity was granted. J. B. BROOKS & Co. LD. v. RENDALL, UNDERWOOD & CO. LD., p. 17.

2. Certificate granted where the issue of validity was raised on the Defence, but the Defendant did not appear at the trial. SODASTREAM LD. v. DAVEY, p. 763.

CERTIFICATE UNDER SECTION 20 OF THE PATENTS, &c. ACT, 1883.

Certificate granted. J. B. BROOKS & CO. LD. v. RENDALL, UNDERWOOD & Co. LD., p. 17.

CONSTRUCTION OF SPECIFICATION. See SPECIFICATION (CONSTRUCTION OF).

CONTEMPT OF COURT.

1. Placard exhibited by Defendants held to constitute a contempt of Court by reason of its unfairly representing, to the prejudice of the Plaintiffs, what had taken place in Court on an interlocutory application. Limited licence.-Motion by Plaintiffs for interlocutory injunction refused on the ground of delay.-Misrepresentation by Defendants as to the proceedings.-Injunction granted against con· tinuance of misrepresentation. The owners of a Patent for safety razors sold them in boxes, to each of which was affixed a limited licence containing the restriction that the razor therein should not be resold by any retailer or advertised for sale at less than one guinea. The owners of the Patent brought an action to restrain the Defendants from breaking this condition or from otherwise infringing the Patent, and moved for an interlocutory injunction. An injunction was granted by the Vacation Judge until the second motion day in the Michaelmas sittings, when, on the Plaintiffs asking for an injunction until the trial, it appeared that, although they had made complaints to the Defendants in March 1906, they had only commenced their action in October 1906. The Defendants set up the Plaintiffs' delay, and also alleged that they had a defence on the merits.-Held, that under the circumstances an interlocutory injunction ought not to be granted, and, the Defendants undertaking to keep an account, no Order was make, except that the costs should be costs in the action. The Defendants, who previously to the refusal of the interlocutory injunction, had put in their window the solicitors' letter informing them of the temporary injunction granted by the Vacation Judge, after such refusal exhibited a placard as follows:-"Why pay "exorbitant prices? Down with Trusts and all monopolies. In the "High Court of Justice. Gillette Razor Company against Gamages. "Before Mr. Justice Warrington, 26th October, 1906. Motion to "restrain Gamages from selling the Gillette razors below 21s. was "refused. Buy to-day. Gamages' price, 18/6. Advertised, 21/-." The Plaintiffs thereupon moved for an injunction to restrain the Defendants (stating it shortly) from publishing the above or any similar statement, or for sequestration for contempt of Court, alleging that the placard was misleading and prejudicial to the Plaintiffs, and would lead people to the belief that the matter had been concluded

с

- CONTEMPT OF COURT-continued.

and that the Plaintiffs had failed in their action. The Defendants denied that the placard contained any misrepresentation.-Held, that an ordinary customer would think that the attempt to stop the Defendants from selling at 18s. 6d. had failed, and that the placard, being an attempt to the prejudice of the Plaintiffs to misrepresent what had taken place in Court, was a contempt of Court, and an injunction was granted, and the Defendants were ordered to pay the costs of the Motion. GILLETTE SAFETY RAZOR Co. v. A. W. . GAMAGE LD., p. 1.

2. "In order to make out a contempt of Court, if you get a misrepresenta"tion to the prejudice to one of the parties, of the result of proceedings, "it is not necessary to show further that it will tend to prejudice the "future conduct of the proceedings, because such a contempt as that to "which I have referred may well be committed in a case in which the "proceedings have come to an end."- Per WARRINGTON J., in GILLETTE SAFETY RAZOR Co. v. A. W. GAMAGE LD., p. 6.

3. Motion for sequestration for breach of injunction in an infringement action dismissed, the Plaintiffs not having proved any wilful disobedience of the Order of the Court.-Action for infringement.-Order for injunction by consent.-Motion for sequestration for breach of injunction.-Procedure.-Motion dismissed. In an action for infringement of a Patent an Order was made by consent for an injunction restraining the Defendant Company from infringing the Plaintiff Company's Patents relating to the construction of prepayment gas meters. The Defendant Company subsequently sold certain prepayment gas meters, the construction of which had been altered in certain particulars in order to avoid the infringement complained of. A certain mechanical device, however, which was a feature of one of the Plaintiffs' Patents was retained in these meters. This mechanical device was no longer directly used by the Defendants in their meters, but it was admitted that it would come into use if the alternative device which the Defendants had installed broke down. Notice of Motion for sequestration for breach of the injunction was served on the Defendants, who subsequently altered the construction of their prepaid gas meters so as to preclude the possibility of infringement. The Motion came on for hearing.-Held, that no wilful disobedience by the Defendants of the Order of the Court had been proved by the Plaintiffs, and therefore the Motion was refused, but, as there was some slight ground for it, without costs. METERS LD. v. METROPOLITAN GAS METERS LD., p. 507.

CONTRACT. See AGREEMENT.

CONVENTION APPLICATION. See GRANT OF PATENT (APPLICATION FOR), Nos. 1 and 3.

COSTS.

1. Certificate of validity having come in question. A Certificate of validity, granted prior to an amendment of the Specification of a Patent, does not entitle the Plaintiffs to costs as between solicitor and client in an action on the amended Specification. J. B. BROOKS & Co. LD,

v. RENDALL, UNDERWOOD & Co. LD., p. 17,

COSTS-continued.

2 Where a counterclaim was wrong in form, but was treated at the trial as amended, the Defendant in the action, although succeeding on the counterclaim, was not given the costs thereof. HENDERSON v. SHIELS, p. 108.

66

3. Scotch Practice. Section 29 of the Patents, &c. Act, 1883, must be read with Section 107 which saves Scotch procedure, and a Certificate of expenses under the Judge's hand is unnecessary. Expenses of Precognitions allowed under the circumstances, although there was no interlocutor allowing a proof.-Abandonment of action.-Precognitions.-Preliminary investigations.-Act of Sederunt of the 15th of July 1876. Section 29 (6) of the Patents &c. Act 1883 provides that: "On taxation of costs, regard shall be had to "the Particulars delivered by the Plaintiff and by the Defendant; and "they respectively shall not be allowed any costs in respect of any "Particular delivered by them unless the same is certified by the "Court or a Judge to have been proven or to have been reasonable and proper, without regard to the general costs of the case." Section 107 "saves the forms of process of the Courts in Scotland." The Act of Sederunt of the 15th of July 1876, Regulation 3, provides that: "The 66 expenses to be charged against an opposite party shall be limited to "proper Expenses of Process' without any allowance (beyond that "indicated in the table) for preliminary investigations, subject to this "proviso, that precognitions (so far as relevant and necessary for proof "of the matters in the record between the parties), although taken "before the raising of an action or the preparation of defences, and "although the case may not proceed to trial or proof, may be allowed "where eventually an an interlocutor shall be pronounced either "approving of issues or allowing a proof." In an action for infringement of Patents the Defenders pleaded that the Pursuers' averments of infringement were irrelevant for want of specification and that the Patents were invalid; the Lord Ordinary allowed a Proof. The Defenders reclaimed. The First Division recalled the Lord Ordinary's interlocutor, held the case irrelevant as stated, and allowed the Pursuers to amend. Thereafter they of new closed the Record and remitted to the Lord Ordinary to proceed as accords. The Pursuers abandoned the action. On taxation of accounts the question arose whether the Defenders should be allowed the expense of precognitions and preliminary investigations. The Lord Ordinary reported the point to the First Division.-Held, that while Section 29 applied to Scotland, it had not the effect (when read with Section 107) of rendering a Certificate of expenses under the Judge's hand necessary there; that Subsection 6 merely declared what was already the ordinary practice in Scotland; that the Act of Sederunt of the 15th of July 1876 applied to Patent cases, but was not to receive a narrow interpretation; that since the present case had been remitted to the Lord Ordinary for further precedure, and this could only be a Proof, expenses should be allowed as if that interlocutor had contained an order for Proof; and that such expenses included the expense of precognitions but not of all preliminary investigations; beyond this no distinction could be made, in respect that it was a Patent case, between the present case and any other. MICA INSULATOR CO. LD. 2. BRUCE, PEEBLES & Co. LD., p. 393.

4. Where in an action for infringement of a Patent, the Defendant succeeded on the ground that the Patent had been anticipated by prior user, but a defence of prior grant failed by reason of the prior grant being invalid,