COSTS-continued.

the Defendant was given the general costs of the action, and a certificate as to the prior user proved, but a set off was ordered so far as the Plaintiff's costs had been increased by the issue of prior grant. ROBERTSON v. PURDEY, p. 273.

5. Licensees. Licensees, on whom a Petition for revocation had been served, and who appeared at the hearing, held to be entitled to their costs. IN THE MATTER OF BROWN'S PATENT, p. 313.

6. Higher Scale. Costs on the higher Scale allowed on an appeal in a Petition for revocation of a Patent. IN THE MATTER of ANDREWS' PATENT, p. 349.

7. Three Counsel. It is not necessary to ask for the costs of three Counsel, it being now the practice of the taxing masters to use their discretion in the matter without an order of the Court. IN THE MATTER OF ANDREWS' PATENT, p. 349.

8. Alleged contempt of Court.

Where a Motion for sequestration for contempt of Court was dismissed on the ground that wilful disobedience to the Order of the Court was not proved, no order was made as to costs, there having been some ground for the motion. METERS LD. v. METROPOLITAN GAS METERS LD., p. 506.

9. On a motion for an interlocutory injunction in an action by a licensee, held to be an exclusive licensee, to restrain the Patentee from using the Patent, an injunction was granted, and as the Patentee had refused to give an undertaking, the Plaintiffs' costs were made costs in the action, no order being made as to the Defendant's costs. RAPID STEEL Co. v. BLANKSTONE, p. 529.

10. Apportionment. Costs on the higher scale. Where the Plaintiffs in an infringement action on appeal succeeded as to the more important Patent sued on, but failed as to the other, the Respondents were ordered to pay three-fourths of the costs of the appeal, the Defendants being ordered to pay the costs below except so far as related to the lastmentioned Patent, and to have their costs so far as they related to that Patent. Costs having been given below on the higher scale, the same were also allowed on appeal. CONSOLIDATED PNEUMATIC TOOL CO. LD. v. CLARK, p. 593.

11. Costs on the higher scale given. IN THE MATTER OF MAX MÜLLER'S PATENT, p. 465.

12. Costs on the higher scale given. IN THE MATTER OF ALSOP'S PATENT, p. 733.

DAMAGES.

The owners of a Patent relating to accessories for motor cars held not entitled as damages to the amount of profit which they would have made on the sale of a car with the accessories, but only to what they had lost as Patentees of the accessories, namely, the difference in the value of a car with the accessories and the value of one without the accessories.-Action for infringement.-Judgment for Plaintiffs.-Inquiry as to damages.—

DAMAGES--continued.

Certificate.-Summons to vary.-Measure of damages.-Certificate discharged and inquiry referred back to the Master. Judgment was given in an action for infringement of Letters Patent for an injunction and an inquiry as to damages. The Patents related to a carburetter and to a control mechanism of motor cars. The Defendants had imported into this country one car containing the patented parts. On the inquiry the Plaintiffs filed evidence that they did not sell or licence the sale of these parts separately, but only sold cars, and they claimed the amount of the profit on a sale by them of a car. The Defendants filed evidence that the price of a similar carburetter and control mechanism would not exceed the sum of 107., and had paid 201. into Court. The Master certified 107. as the amount of the Plaintiffs' damages. The Plaintiffs applied to vary the Certificate. -Held, that the Plaintiffs were not entitled to the amount of profit which they would have made on a sale of a car, but only to the amount which they have lost as Patentees of the accessories, namely, the difference in the value of a car with the accessories and the value of one without the accessories. The Certificate was discharged and the matter sent back for inquiry to the Master, reserving the costs. Penn v. Jack (L.R. 5 Eq. 81) and United Horse Shoe and Nail Co. v. Stewart (5 R.P.C. 260; L.R. 13 App. Cas. 401) followed. CLEMENT TALBOT LD. v. WILSON, p. 511.

DISCLAIMER.

See AMENDMENT OF SPECIFICATION.

DISCLAIMING NOTE.

Construction of. It being objected that a disclaiming note enlarged a Claim by adding a part to the combination claimed, held, that the note reduced the generality of the Claim by limiting it to those combinations of the kind described, in which the part in question was used; and that the Claim, taken with the rest of the Specification, related to those combinations only in which the part was used. IN THE MATTER OF BROWN'S PATENT, p. 313.

DISCONFORMITY. See also PARTICULARS OF OBJECTIONS, No. 1.

Petitioners for revocation of a Patent relating to the bleaching of flour, alleged that it was invalid for disconformity, one objection alleged being that the process described in the Complete Specification resulted in nitration and not in oxidation as stated in the Provisional Specification.-Held, that, even if this were so, yet, as the process described in the Complete Specification conformed to that described in the Provisional Specification, and produced the desired effect, the mistake in chemistry would not invalidate the Patent, and that the allegations of disconformity failed. IN THE MATTER OF ANDREWS' PATENT, p. 349.

DISCOVERY. See PRACTICE, Nos. 1 and 2.

EQUIVALENTS.

The question whether the doctrine of equivalents is applicable to chemistry discussed. IN THE MATTER OF ANDREWS' PATENT, p. 349, at pp. 366, 370 and 375.

ESTOPPEL.

The Plaintiff having agreed to procure the grant to the Defendant of a licence under a Patent, and having agreed to guarantee the validity of the Patent, and the contract being still executory, it was held that the Defendant was not estopped from alleging that the Patent was invalid. HENDERSON V. SHIELS, p. 108.

EVIDENCE. See also PARTICULARS OF OBJECTIONS, No. 2.

1. Licence.-Restraint of Trade. Where a covenant in restraint of trade by a licensee in a licence under Patents does not exceed what is reasonably necessary for the protection of the covenantee, evidence as to the effect of the restraint on the business of the licensee is inadmissible. MOUCHEL v. WILLIAM CUBITT & Co., p. 194. See LICENCE.

2. Text Books. Admissions. Questions as to the reception in evidence of admissions of a Petitioner for revocation, and of text books as regards common knowledge, discussed. THE MATTER OF BROWN'S PATENT, p. 313, at pp. 333 and 338.

IN

FALSE SUGGESTION. See REVOCATION (PETITION FOR), No. 8.

66

"In considering the validity of a Patent for a process, it is therefore "material to ascertain precisely what the patentee claims to be the "result of the process for which the Patent has been granted; the real "consideration which he gives for the grant is the disclosure of a process which produces a result, and not the disclosure of a process "which may or may not produce any result at all. If the patentee "claims protection for a process for producing a result, and that result "cannot be produced by the process, in my opinion the consideration "fails. Similarly if the patentee claims for a process producing two "results combined and only one of these results is in fact produced by the process, there is a partial failure of consideration, just as there "is in the case of a Patent containing one valid and one invalid Claim ; "and such partial failure of consideration is sufficient to avoid the "Patent, If' said Mr. Justice Buller in Turner v. Winter (1 Webst. "P.C. 82) 'the Patentee says that by one process he can produce three "things and he fails in any one, the consideration of his merit, and "for which the Patent was granted, fails, and the Crown has been "deceived in the grant.' An analogous principle applies to Patents "for improvements. Of course the patentee must in such a case state "the nature of the improvement, or in other words, the result which "he claims to have secured by his invention. If no such result is in "fact secured by following the directions given in the Specification "there is a failure of consideration and the Patent is void." Per PARKER J., IN THE MATTER OF ALSOP'S PATENT, p. 752.

FIAT OF ATTORNEY-GENERAL. See REVOCATION (PETITION FOR), No. 7.

FRAUD. See GRANT OF PATENT (APPLICATION FOR), No. 2.

GRANT OF PATENT (APPLICATION FOR).

1. On an application by a foreign patentee under Section 103 of the Patents &c. Act, 1883, a reference was ordered to be inserted to a Specification published before the date of the application, although subsequently to the date of the foreign application. A German Company applied in this country for a Patent on the 4th of August 1905, asking that the Patent might be dated the 13th of August 1904, which was the date of their German application. The Chief Examiner, acting for the ComptrollerGeneral, decided under the Patents Act 1902 to insert in the Applicants' Specification a reference to Specification which was accepted and published on the 11th of May 1905 on an application made on the 12th of May 1904. The Applicants appealed.-Held, by the Law Officer, that the Chief Examiner's decision be affirmed. IN THE MATTER OF THE DEUTSCHE GOLD & SILBER-SCHEIDE ANSTALT VORM. RÖSSLER'S APPLICATION FOR A PATENT, p. 209.

2. Allegations of fraud abroad will not be gone into on opposition to a grant. The question of subject-matter cannot be decided on an application for a Patent. Opposition to grant Letters Patent for Improvements in electric fire alarms and thermo-indicators on the grounds (1) that the Applicants obtained the invention from the Opponent, and (2) prior patenting of the invention. The Chief Examiner (acting for the Comptroller-General) decided to seal a Patent. He held that he had no jurisdiction to enter into allegations of fraud abroad, and that the invention claimed by the Applicants had not been patented on the prior application relied on by the Opponent. The Opponent appealed. The Law Officer affirmed the decision of the Chief Examiner on both grounds, and dismissed the appeal with costs. IN THE MATTER OF AN APPLICATION FOR A PATENT BY A. H. MCNEIL AND THE PEARSON FIRE ALARM LD., p. 680.

3. The words "on an application of prior date" in Section 11 of the Patents &c. Act, 1883, do not include a prior application abroad for a Patent for an invention in respect of which a Patent is subsequently applied for in this country under the International Convention. The Applicants for a Patent under Section 103 of the Patents &c. Act, 1883, sought to oppose, under Section 11 of the Act, on the ground of prior patenting, an application for another Patent made in this country at a date earlier than their application in this country, but later than the date claimed by them for their Patent under Section 103. The Chief Examiner (acting for the ComptrollerGeneral) decided that the Act restricts opposition on the ground of prior patenting to an application in this country of prior date, and, following the decision in Everitl's case (Griffin's Additional Patent Cases 28), held that the Opponents had no locus standi to oppose, and dismissed the opposition. The Opponents appealed.-Held on appeal, by the Law Officer, that the application of prior date on which an opposition can be grounded means an application in this country, and that the appeal must be dismissed. IN THE MATTER OF AN APPLICATION BY JAMES YATE JOHNSON FOR A PATENT, p. 694.

INFRINGEMENT.

See also NOVELTY, Nos. 2 and 11; SUBJECT-MATTER, No. 5; and CONTEMPT OF COURT, No. 3.

1. On the construction of Specification infringement not found.— Judgment for Defendants. The owners of Letters Patent for "Improvements in machinery for breaking pig iron" brought an action for infringement. The Patentees in their Specification described. mechanism for feeding the mass into position, clamping it, breaking off pigs from the sow, and breaking the sow, and for each of these operations they described plungers working in ram cylinders. In their first Claim they claimed the machine comprising the four rams for the four operations, substantially as described. The Specification stated that the plungers instead of being operated by hydraulic power might be actuated by steam or other motive agent. In the Defendants' machine the operations were executed by means of eccentrics, toggle links, levers, and cams, off a mechanically driven shaft, whereas the Plaintiffs' machine had no revolving parts. The question of infringement turned on the point whether the Claims were confined to machines such as described and operated by means of rams, or whether they included machines with similar or analogous working parts operated by means of a power driven shaft.-Held, that the Plaintiffs could only claim the invention specified-that is, the machine with four rams for four definite purposes-and that the Defendants had not infringed. The action was dismissed with costs. MARTIN AND JAMES v. CONSETT IRON CO. LD., p. 7.*

2. Claim which was grammatically defective held to be for the construction and arrangement of the metallic under-framing of cycle saddles substantially as described and to have been infringed.-Action for infringement.-Construction.—Infringement found.-Judgment for Plaintiffs.-Certificate granted under Section 20 of the Patents &c. Act, 1883. A Patent was granted in 1833 for "Improvements in velocipede saddles." The Specification was amended in 1901, and, in 1903, in an action of Brooks v. Lycett (20 R.P.C. 390), a Certificate of the validity of the Patent was granted. In January 1904, in an action of Brooks v. Lycett's Saddle &c. Co. (21 R.P.C. 651), the amendments made in 1901 were declared invalid, and in July 1904 the Specification was again amended. In an action for infringement of the Patent the Defendants alleged (inter alia) that the proceedings resulting in the amendment of 1904 were ultra vires, but at the trial the only contest was as to the construction of the Specification and infringement. In one form of the Plaintiffs' saddle there was an underframing consisting on each side of two wires made to converge at the peak of the saddle, and at the rear of the saddle spread outwardly and rivetted at four points to the cantle plate, or, in a modification, to a cross bar bolted to the cantle plate. The wires were bound together in a girder-like form by means of an attachment boss for the seat pillar. In the alleged infringement the wires were spread at the rear, but were bent round and attached to the cantle plate by bolts at two points. The Defendants contended that some words had been omitted from the Claim, and that in reality it was for the attachment boss.-Held, that the Claim was for the construction and arrangement of the metallic underframing of cycle saddles substantially as described, and that the Defendants had infringed. Judgment was given for the Plaintiffs with costs, but costs as between solicitor and client were not given, it being held that the

*The decision in this case has since been affirmed on appeal.