Van Berkel and Others v. R. D. Simpson Ld.

The Respondents reclaimed to the First Division of the Inner House. On the 23rd of January the case was sent to the Short Roll. Counsel were heard on July the 3rd, 4th, 5th, and 6th.

Counsel for the Reclaimers and Respondents were the Solicitor-General 5 (Ure K.C.), Sandeman, and Ballingal (instructed by Paterson and Gardiner S.S.C.). The Counsel for the Respondents and Complainers were the Dean of Faculty (Campbell K.C.), Clyde K.C., and Graham Stewart (instructed by Hutton and Jack, Solicitors).

Counsel for the Reclaimers and Respondents contended.-The Patent of the 10 Complainers is for a slicing machine combining (a) a cutting movement; (b) a feed movement as described in Claim 4; and (c) a to-and-fro movement as described in Claim 3. In the first place, we say that the Patent was anticipated. We refer to the Specifications of Turner, Flockhart, and Kolbe, and particularly the last. The description there is clear enough to make this a good anticipation. It is not 15 necessary that a Specification should be so clear that the machine can be constructed entirely without independent thought (Edison v. Holland 6 R.P.C. 243 at 277). For anticipation it is not even necessary that an ordinary workman should find it possible to make the machine; it is enough that the most skilled man can understand it, and that makes it part of the world's knowledge and leaves 20 no subject-matter for further invention (Anglo-American Brush Electric Light Corporation v. King, Brown & Co. 17 R. 1266; 19 R. (H.L.) 20; 9 R.P.C. 313). Now Kolbe's Specification is badly expressed, but it discloses clearly the same three elements as are combined in the Complainers' Patent. The latter is only an improvement on Kolbe made by putting in the dished knife and the 25 "Whitworth " movement (details which did not appear in the general ClaimClaim 1-till amendment). Secondly, the Patent of the Complainers is void for want of ingenuity. Again, we cite Kolbe's, Turner's, and Flockhart's Specifications to show the state of the art at the time. When these were known there was no ingenuity in fitting the dish-shaped knife, admittedly old, on to the old 30 but formerly unsatisfactory cutting machine. A combination must be something more than a mere juxtaposition; it must be an adaptation. To use an old instrument for a new purpose is not to make a patentable invention (Harwood v. Great Northern Railway Company 11 H.L.C. 654; Tatham v. Dania, Griff. 213; Patent Bottle Envelope Company v. Seymer 5 C.B. N.S. 164; Gadd 35 v. Mayor of Manchester 9 R.P.C. 516; Acetylene Company v. United Alkaline Company 22 R.P.C. 145 at 155; Kynochs Ld. v. Webb 17 R.P.C. at 116; Ralston v. Smith 20 C.B. N.S. 28; 11 H.L.C. 223; Bailey v. Roberton L.R. 3 App. Cas. 1055; 5 R. (H.L.) at 190; and Betts Brown v. Hastie 22 R.P.C. 85; 7 F. 97; 23 R.P.C. 361; 8 F. (H.L.) 6). Every useful discovery 40 is not a patentable invention. Even if the combination can be supported as patentable, the separate Claims which follow for the dished knife and the "Whitworth" and screw movements cannot. These are admittedly Claims for things old and well known, and are therefore invalid Claims. All these are clear Claims for subordinate parts of the invention taken by themselves, 45 and are binding on the Patentee unless and until disclaimed. They invalidate the Patent. The consideration for a Patent is entire, and each part of it must either be upheld or disclaimed under Section 19 of the Patents &c. Act, 1883 (Murchland v. Nicolson 10 R.P.C. 417; 20 R. 1006; United Horseshoe and Nail Company v. Swedish Horsenail Company 6 R.P.C. 1). We do not admit 50 the distinction of subsidiary Claims into two classes called subordinate integers and appendant Claims, the former of which if bad invalidate the Patent while the latter do not. Any invalid Claim renders the Patent void. We admit, however, that there may be Claims which merely repeat another Claim, or part of it, without extending it, and that these being mere surplusage may be read 55 out. The cases cited against us on this head are examples of such surplusage (Betts v. Neilson L.R. 5 H.L. at page 21; Plimpton v. Spiller L.R. 6 C.D. 412 at 427; and Parker and Smith v. Satchwell & Co. Ld. 18 R.P.C.

K

Van Berkel and Others v. R. D. Simpson Ld.

299). In the British Dynamite Company v. Krebs (13 R.P.C. 199), the two Claims were read as one, formally split into two parts. But this is not so here; for the Complainers have claimed the dished knife, &c., individually one by one. The Claims 2 to 5 are not mere repetitions of Claim 1; they enlarge it. If good they would enable the Complainers to interdict the use of the dished 5 knife, &c., in any cutting machine and not merely in the combination described. Therefore they cannot be read out as surplusage. Taken individually they are plainly bad. There is here no room for such a beneficial construction as saved the Patents in the cases above mentioned. The law is clear. A bad subsidiary Claim invalidates the Patent (Electric Construction Company Ld. v. Imperial 10 Tramways Company Ld. 17 R.P.C. 537 at 548; Cassel Gold Extracting Company Ld. v. Cyanide Gold Recovering Syndicate 12 R.P.C. 232 and at 237; and Clark v. Adie L.R. 2 App. Cas. 315; 10 Ch. App. 667). A Patentee must not claim more than his real invention (Foxwell v. Bostock 4 De G. J. & S. 298). If, on the other hand, these Claims should be held to be mere surplusage they would fall 15 to be read out, and the Patent would stand or fall by the first Claim alone. That is, it would be a combination Patent, every feature of which has been anticipated. Even if the Complainers' Patent be supported, the Respondents contend that they have not infringed it (Miller v. Clyde Bridge Steel Company 9 R.P.C. 470). The Respondents omit an essential part of the 20 Complainers' combination-viz., the "Whitworth" reciprocating movement described in Claim 3. Their method of moving the meat to and fro is not a colourable imitation of that movement, but a distinct and well-known mechanism not effecting the quick return characteristic of the "Whitworth" movement. Whether this distinction is sufficient is a question of fact, and in considering it 25 the state of prior knowledge at the time of the Complainers' invention is to be considered, but we do not admit that there are certain Patents called "master "Patents", which are to be construed more broadly than others and which can be more easily infringed. In all cases the question is the same-has the invention been taken? The Complainers' Patent has not in any case the 30 characteristics of a so-called 66 master Patent (Curtis v. Platt L.R. 3 C.D. 136n; Gwynne v. Drysdale 3 R.P.C. 65; 13 R. 684; Betts Brown v. Hastie, ubi supra; Stewart and Briggs v. Bell's Trustee 11 R. 236; and Dudgeon v. Thompson L.R 3 App. Cas. 34; 4 R. (H.L.) 88).

Counsel for the Complainers and Respondents contended.-The Respondents 35 have attacked the Patent on the grounds of anticipation and of want of subjectmatter. None of the Specifications brought forward by them can reasonably be said to be an anticipation of the Patent as a combination. The machines they have produced are mincing machines and the like. Kolbe's Patent, which comes nearest to that of the Complainers', is for cutting bread by the aid of a 40 corrugated circular knife. It had neither the dished knife, the reciprocating motion, nor the feed of the Complainers'. It could not have been applied to slicing meat. A combination which is novel, and achieves a new and useful result, is the proper subject-matter of an invention, though all the parts are old, as we admit they are here. There is sufficient ingenuity to support the Patent. 45 Where there is a desideratum, as there was here, little invention is necessary to sustain the first Patent, by which in fact the desideratum is attained (Taylor and Scott v. Annand and the Northern Press and Engineering Company Ld. 17 R.P.C. at 126 and 137; 18 R.P.C. at 53 and 63). There may be a valid Patent though well-known mechanical contrivances are used, if they are 50 applied in a manner or for a purpose in which they have not hitherto been applied, and the new application results in a new and useful article not hitherto attained (Brooks v. Lamplugh 15 R.P.C. at 48). It is a question of construction whether the subsidiary Claims are subordinate integers, standing each by itself, or limited to the use of the mechanism claimed in connection 55 with the rest of the machine. The Claims are to be read in the light of the Specification as a whole, and in a case like this the Court will be apt to take

Van Berkel and Others v. R. D. Simpson Ld.

the construction which saves the Patent. It is simply a question of finding the true meaning of the Claims. This is the principle which explains all the cases (Edison and Swan United Electric Light Company v. Woodhouse and Rawson 4 R.P.C. at 107; British Dynamite Company v. Krebs, ubi supra; Plimpton v. 5 Spiller, ubi supra; Parker v. Satchwell, ubi supra; Neilson v. Betts L.R. 5 H.L. 1; Clark v. Adie, ubi supra; Webb v. Kynochs Ld. 17 R.P.C. 100; and Fawcett v. Homan 13 R.P.C. 398). The phrases "In a machine for slicing "German sausages or polonies and the like meat goods" and "substantially as "and for the purposes herein set forth" in the second Claim and similar 10 phrases in the other Claims must not be overlooked. They make it clear that the Patentees did not mean to claim the dished knife, &c, generally, but only as used. In a meat slicing machine the use of the dished knife, &c., was quite new and eminently patentable. Nor are these Claims to be read out as mere superfluities. They protect the outstanding features of this method of meat15 slicing so as to restrain an infringer from taking all the meritorious parts of the machine while leaving out some less essential portions of the combination. Again, the Respondents have infringed the Patent. They say they have left out the "Whitworth" movement. This is no defence. The Respondents will not escape by sacrificing one of the advantageous features of a combination while appro20 priating the rest of it. Such conduct will be merely a colourable departure from the instrument patented (Clark v. Adie L.R. 2 App. Cas. 315 at 320). The Complainers' Patent having been the first in which the object desiderated-viz., slicing meat-was attained, they are entitled to protection, not only for their machine, but for such combinations as may attain the same object in substantially the same 25 way. We do not contend for a principle of construction applicable to "master "Patents" different from that which applies to others, but what we say is, that the object in construing a Specification is always to find what the invention was. In some cases the invention may be merely the particular combination used. In others it is inuch wider (Proctor v. Bennis 4 R.P.C. 333; Moore v. 30 Thomson 7 R.P.C. 325; and Betts Brown v. Hastie, ubi supra). In this case the invention was the slicing of meat substantially as described. The Respondents slice it substantially as described, and therefore infringe. The changes in their machine are merely evasions.

The Court made avizandum, and on the 24th of November gave judgment 35 affirming the interlocutor of the Lord Ordinary.

LORD M'LAREN.-This is an action of suspension and interdict at the instance of a Patentee to restrain the Respondents from infringing his Patent for a meatslicing machine of his invention. The case was heard and decided by Lord Dundas, and is now before us on a reclaiming note against his Lordship's 40 interlocutor. Three questions are raised: 1st, the merit and originality of the invention; 2nd, the validity of the invention; 3rd, infringement. I shall consider these in their order.

The working of the Complainers' machine may be described in general terms as follows:-(1) The piece of meat to be cut into slices of any required thickness 45 is attached to a travelling frame, and is slowly pressed against a circular knife which rotates on its axis, and cuts off a slice. (2) When the travel of the frame carrying the meat is completed, and the slice is completely severed, the frame is quickly returned to its first position by automatic mechanism. (3) By means of a rack and screw, properly adjusted, the travelling frame is moved forward to 50 the extent of the thickness of a slice, and the cutting process is then ready to be repeated. This last movement is, of course, at right angles to the direction in which the frame travels during the cutting operation, and its effect is to expose a new section of the meat to the action of the circular knife. The elements of the mechanism by which these movements are effected are not new; but this is 55 an observation which may be made with reference to every machine, however complicated and however ingenious, and, therefore, I am not disposed to give much weight to the argument against the novelty of the invention in so far as

Van Berkel and Others v. R. D. Simpson Ld.

founded on the fact that the Patentee has made use of known mechanical elements in building up his machine. I think it might just as well be urged against the originality of a book, that all the words and a large proportion of the phrases contained in it are to be found in works of earlier date. I think it is generally understood and acknowledged that a mechanical invention may 5 be new in the sense of the Patent Laws if it is directed to the attainment of a result which has not hitherto been accomplished, or not so well accomplished; and if in designing the machine the patentee has made use of inventive talent and skill in the selection, combination, and arrangement of known elements to produce a convenient and efficient machine adapted to the purpose in view. · 10 I proceed to consider, as far as necessary to our decision, the mechanism by which the slicing operation, which is the subject of this Patent, is effected. The most important feature is the "dish-shaped" rotating knife. This knife is geometrically a section of a spherical surface, or, to speak strictly, a section of a thin hollow sphere having a circular boundary. But as the portion of the 15 sphere used is relatively small, and the concavity is slight, the name "dish"shaped" will sufficiently indicate its form. The concave side of the knifeplate is towards the meat, and the cutting edge only comes in contact with the meat, and thus a clean cut is effected. Without quoting from the evidence, I may say that it is established, and indeed is no longer in dispute, that a flat disk 20 like an ordinary circular saw would be useless for the purpose, because the flat rotating disk, being in contact with the surface of the meat, would tear the fibre and crush the material instead of slicing it. Mr. Van Berkel, it seems, had thought out the matter by himself, and supposed that he was the inventor of the dish-shaped or concave knife. But there is evidence that concave circular knives were pre- 25 viously known and used, and, therefore, he can only claim priority as for the application of such knives to the cutting of soft substances like meat, and to this extent I am of opinion that his machine has the merit of novelty. The next feature of the invention is the mechanism for delivering the piece of meat to the cutting-edge by a slow uniform motion, with a quick return to the first position 30 after the severance of the slice. This is effected by a form of link-work known as the "Whitworth" mechanism, which was first successfully applied by Mr. Whitworth to machines in the iron and steel industry in which alternate slow and fast movement was desired. I do not understand that the Patentee makes any claim to originality in respect of this mechanism except as to the use of 35 skill and intelligence in selecting the best known and available method of obtaining an alternate slow and rapid motion, and adapting it to the uses of his machine. Perhaps I may add, but only for the purposes of illustration, that it is a known fact in science that the most complicated movements may be effected by means of link-work, but only the simpler forms would stand the strain of 40 being used in a machine, and I am disposed to think in the present state of mechanical knowledge link-work may be regarded as an element of mechanism which could not be claimed by itself, but which might properly enter into the construction of an original and patentable machine. As to the third movement, whereby the travelling frame is automatically adjusted to the position for cutting 45 off slices of meat in succession, I find from the evidence that this is effected by known mechanism, but, in regard to this also, there is room for a certain amount of inventive skill in arranging the gear and connecting it with the motor axis to produce a compact and serviceable machine, working smoothly, and not liable to get out of order. In the course of the discussion, one of the Complainer's 50 machines was shown to us in action, and, if we are entitled to take notice of what was shown, I am bound to say that the working of the machine was to all appearance most satisfactory. But, indeed, there is abundant evidence that the meat-slicing machine has been a commercial success, and that it is in large demand both in this country and in Holland, where it was designed by Mr. Van Berkel. 55 It may also be taken as proved that Mr. Van Berkel's machine, when designed and patented, was the only known and workable meat-slicing machine. Other

Van Berkel and Others v. R. D. Simpson Ld.

designs had been described and patented, but were found not to be effective. I should therefore, in the absence of anthority to the contrary, come to the conclusion that, taken as a whole, Mr. Van Berkel's machine is a new invention entitling him to the protection of a patent.

5 I may say that this is not a case which can be decided in all its aspects without reference to previous patent cases. Of these, a large number were brought under our notice, and I have examined all that were cited. But on the point now under consideration, the decisions are only useful in so far as they lay down principles. The nearest case that I can find to the present is Taylor v. Annand, 10 which was concerned with a Patent for a device for printing late news to be inserted in late editions of a newspaper in a blank space left for the purpose. There was nothing new in the mechanical arrangements, but the mechanism was serviceable and useful, and supplied a desideratum of the printing industry. There were two actions, the second of which went to the House of Lords, where 15 the Patent was upheld, perhaps not without difficulty. Lord Halsbury put the difficulty that they had to start with the proposition that all the elements were old (18 R.P.C. 62), but this consideration was outweighed by the fact that the invention accomplished a new and useful result. I may also refer to Cassel Gold Extracting Company (12 R.P.C. 232), on the value of a new application 20 of a known chemical reaction, though in this case the patentee failed on the objections to the Specification, and to British Dynamite Company v. Krebs (13 R.P.C. 190), especially Lord Cairns' opinion, page 193. I consider that the principles laid down in these cases support the conclusion I have come to in favour of the validity of the Complainer's Patent, and I may add that 25 as far as I am able to judge from the report. of the first-mentioned case, there is much more invention in the meat-slicing machine than there is in the "late-news" arrangement which was the subject of decision in Taylor v. Annand.

I pass to the second branch of the case, the objection to the Specification. 30 The substance of the objection is, that while the first Claim is for a machine consisting of the different parts and performing the different movements which I have described, this is followed by other heads of claim under which it is argued that each part or movement is separately claimed. Now if this were the case of a patentee who only professed to be the inventor of a part of the machine 35 which he described, and who nevertheless claimed the whole or did not in his Claim distinguish the new work from the old, I do not think we could support the Specification. This was the ground of decision against the Specification in Kynoch v. Webb (17 R.P.C. 100), or as it was put by Lord Davey, "It is "an elementary principle of Patent Law that a man cannot introduce some 40 "variation or improvement, whether patentable or not, into a known appa"ratus or machine, and then claim as his invention the whole apparatus." But in the present case the invention put forward is the arrangement of parts constituting a new machine to perform what has not been done by machinery before, and therefore I think the patentee rightly claims the 45 machine as described by him. It would be altogether inconsistent with the generality of his claim that he should also claim the several parts which he does not profess to have invented. I think the tendency of the latter decisions, particularly those of the House of Lords, is towards an indulgent reading of the Specification where the process described is a true invention and a proper 50 subject of a Patent.

In this case I think the special Claims, when fairly read, mean only the use of the separate parts in connection with the other parts of the combination. It is as if he said, I claim A in combination with B and C ; I claim B in combination with A and C, and so on. This is mere repetition, because he has already 55 claimed the three things in combination to produce a definite result. But it is not a ground for invalidating a Specification that it claims the same thing over again in different language.