British United Shoe Machinery Company Ld. v. Hugh Claughton Ld. IN THE COURT OF APPEAL. Before LORDS JUSTICES VAUGHAN WILLIAMS, ROMER, and July 17th, 1906. 5 BRITISH United Shoe MACHINERY COMPANY LD. v. Hugh CLAUGHTON LD. Patent.-Action for infringement.- Anticipation.-Invention.-Infringement.-Patent held invalid.—Judgment for Defendants.—Appeal by Plaintiffs dismissed. The owners of a Patent for " Improvements in boot-nailing machines" brought 10 an action for infringement. The Specification described improvements in details, each of which was made the subject of a separate Claim. The Plaintiffs contended that the whole new machine was designed to accomplish certain specified objects which were new, and that each improvement claimed tended to the furtherance of those objects as a whole, and that therefore the Claims should 15 be limited in construction and be held valid. They alleged infringement in respect of the eighth Claim only. It was held at the trial that the Claims must be construed separately, and that each must stand on its merits; that certain of the Claims involved no invention and that others were anticipated; also that on a wide construction the eighth Claim would be invalid, while on a narrow 20 construction there was no infringement. Judgment was given for the Defendants. The Plaintiffs appealed. On the hearing of the appeal the Plaintiffs contended that the eighth Claim, if construed with regard to the whole Specification, was valid, but they admitted that on a wide construction it was invalid. Held, that the eighth Claim was too wide and was invalid. The appeal was 25 dismissed with costs. This was an action by the British United Shoe Machinery Company Ld. to restrain infringement by the Defendants Hugh Claughton Ld. of Letters Patent No. 19,654 of 1898, granted to William Henry Dorman for an invention entitled "Improvements in boot-nailing machines." 30 The Complete Specification of the Patent described a machine consisting of several parts, each of which was made the subject of a Claim. Infringement was alleged in respect of Claim 8 only, which related to the device shown for feeding forward the work. C British United Shoe Machinery Company Ld. v. Hugh Claughton Ld. The Complete Specification (amended the 23rd of July 1904) will be found set out in the report of the trial of the action (23 R.P.C. 321). The following passage in the Specification described the feeding forward of the boot : "Figs. 1, 2, 40 and 41 shew the method of feeding forward the boot. The 5 "foot m acts upon the head of the nail last driven and feeds the boot forward so "that in case no nail is driven no feed takes place. The foot m is adjustable "horizontally upon the feed lever m1 by means of a cramping screw m2, slot m3 "and tongue m'. The feed lever m' swings upon the pivot m5 which is adjust"able vertically in the slots m6 m2 for the purpose of regulating the amount of 10 "the feeding movement. The lever is operated by a cam m3 which is mounted on the shaft b and engages the cam roll mo. 66 "For the purpose of giving a slight upward movement to the foot m in "returning and down again in feeding and also that this movement may be "variable in amount the slotted bush m1 is provided being fitted in a round 15 "hole m11 in the lever m1 and held fast by the screw m1. The pin m13 is secured "in the frame a3 and as the lever m' is rocked by the cam m3 the inclined slot British United Shoe Machinery Company Ld. v. Hugh Claughton Ld. "m1 causes the lever and 66 66 foot to rise slightly as the foot returns and to fall slightly as the foot feeds. This rising and falling movement may be decreased by setting the slot m1 more level and increased by setting the slot more "inclined which may be done by slackening the screw m12 and turning the 5 "bush m10 slightly in the hole m11, afterwards setting up the screw m12 again. "The height of the foot m may be set by turning the pin m13, the larger "portion m15 of which is made eccentric to the smaller portion m16 so that if the "nut m1 be slackened and the pin m13 turned by its head m18 the bush m1o, "lever m1 and foot m are set up or down, after which the nut m17 is set up again 10" so as to hold the pin m13 fast in the frame ɑ3. 15 The eighth and ninth Claims in the amended Specification were as follows:"8. In a nailing machine which leaves the heads of the nails projecting above "the surface of the work, the use of a feeding foot which feeds forward the "work by acting upon the head of the nail last driven, substantially as described. 15" 9. In a nailing machine, the method of feeding forward the work and the "adjustments thereto belonging illustrated in Figs. 1, 2, 40 and 41, substantially 46 as described." 20 The Defendants by their Defence denied infringement, and alleged that the Patent was invalid. The Particulars of Objections (which will be found more fully set out in 23 K.P.C. at page 330) alleged, 1, that the alleged invention was not new at the date thereof, but had been published within this realm by the publication of the following Specifications:-(D) The following were alleged against Claims 8 and 9-(1) The Specification of Patent No. 1999 of 1877, granted to Morgan Brown, 25 the whole was relied on; (2) the Specification of the United States Patent No. 189,835, dated the 24th of April 1877, granted to Blake; (3) the Specification of the United States Patent No. 189,837, dated the 24th of April 1877, granted to Blake; (4) the Specification of the United States Patent No. 189,850, dated the 24th of April 1877, granted to Fairfield; (5) the Specification of l'atent No. 30 9434 of 1888, granted to Boothman; (6) the Specification of Patent No. 22,031 of 1892, granted to Cutter; (7) the Specification of Patent No. 14,487 of 1896, granted to Woodward; 2, that the matters claimed in all the Claims of the Specification of the Patent were not matters of invention, but merely of arrangement of well-known parts, and consequently the Patent was invalid for want of 35 subject-matter. The anticipation which was chiefly relied on against Claim 8 was the Specification of Patent No. 1999 of 1877 granted to Morgan Brown. The action came on for trial on the 22nd of January 1906 before Mr. Justice Farwell, who held that the Claims must be construed separately, and that 40 certain of the Claims involved no invention and that others were anticipated, and in particular that the rising and falling movement was not claimed as part of the invention in Claim 8, and that, if not, that Claim was anticipated by Morgan Brown; also that, if it were part of Claim 8, the Defendants had not infringed that Claim. The action was dismissed with costs (23 R.P.C. 321). 45 The Plaintiffs appealed. 50 Bousfield K.C. and A. J. Walter (instructed by Wilson, Bristows, and Carpmael) appeared for the Appellants; T. Terrell K.C. and J. C. Graham (instructed by Corbyn, Greener, and Cook, agents for Beaumont and Croft of Leeds) appeared for the Respondents. Bousfield K.C. for the Appellants.-I submit that, on the true construction of the Specification, the feeding foot in Claim 8 was intended to have the rising and falling movement described in the body of the Specification. There is not the slightest doubt that what I am now contending would diminish the ambit of the Claim. I am not trying to net something in this Claim which I could 55 not legitimately net. I am trying to limit the ambit of the Claim, and my submission is that as it stands, if you read the whole Specification, it refers to British United Shoe Machinery Company Ld. v. Hugh Claughton Ld. the use of a feeding foot to feed forward, which feeding foot has a rising and falling movement as described, and that I can infer that from the words "substantially as described." There are two possible constructions. One is that the Patentee intends to claim that feeding by the foot whether or not it rises and falls, and you must bolster up that by saying he has got a 5 separate Claim for that. The alternative meaning, for which I am contending, is the more likely construction now that Claim 18 has gone--because a Patentee is entitled by amendment to alter the meaning of his Claims, so long as he narrows them; and he is entitled to the benefit which any alteration gives. Now you have Claim 8 for a nailing machine with the feeding forward by the 10 foot, and you have a considerable amount of description in the body of the Specification, which tells you that the foot is to have a reasonable movement. I submit that when the Patentee says, "I claim the foot acting substantially as "described," it is a legitimate construction to say that that foot was to have a rising and falling movement as described in the body of the Specification. If 15 it has, then I am out of my difficulty altogether. The criticism of Mr. Justice Farwell upon the Claim is this; he says in effect-"You do not confine this to a hob "nailing machine; you claim it for any nailing machine." He says also that there is no rising and falling movement in it. What I am pointing out is, that, although it is a broad Claim "in a nailing machine," yet if I am right in saying 20 that it is only a Claim for a feeding foot, with a rising and falling movement as described, there is no anticipation; it is not contended that anybody else had the notion of having a feeding foot such as the Patentee has described, with the rising and falling movement. Therefore, if I can limit the Claim to a feeding foot such as is described, with a movement of that sort, if that is the true con- 25 struction of it, or if I amend it in that way, then the Claim will be a good Claim, not broadly for a feeding foot which is going to feed by the heads, but a feeding foot such as described, with a digging movement to it. If your Lordships are against me on that, there is an end of the matter. VAUGHAN WILLIAMS L.J.-That is what I am disposed to say at present. 30 I have not formally asked my Brethren, but my view is that we cannot adopt your construction and that this Claim is, as it stands, too wide, and that you had better amend. Bousfield K.C.-So long as your Lordships have my argument upon this point I am satisfied. My argument is that, taking the whole of this language together, 35 it is legitimately open to either construction, namely, either that it is the broader Claim in which the Patentee claims the use of a feeding foot without reference to rising or falling, or it is the narrower Claim in which he only extends it to the feeding foot substantially as described, with a rising and falling movement. COZENS-HARDY L.J.-I must say that I agree with what the Lord Justice 40 has said. Bousfield K.C.-My whole argument depends upon there being two possible constructions of the Specification. If there is, then I say, according to the old maxim, your Lordships would adopt the narrower construction, which would save the Patent. If that argument is appreciated, and your Lordships are 45 definitely against me on that, I do not think I ought to trouble the Court with any other point. VAUGHAN WILLIAMS L.J.-I am afraid we are. Bousfield K.C.-Of course there is a beneficial proviso in the Patent Act which was intended to give a patentee the possibility of amending in an action, but I 50 have never known it to be done at this stage. ROMER L.J.-It would cause great complication, and I do not think it would be advisable, certainly not in an appeal. Bousfield K.C.-I have never known it done at this stage. VAUGHAN WILLIAMS L.J.-I do not propose to deliver any formal judgment 55 in this case. I entirely agree with the judgment delivered by Mr. Justice British United Shoe Machinery Company Ld. v. Hugh Claughton Ld. Farwell, and from time to time I have made some observations which indicate the reasons why I quite approve of his judgment. I am only dealing with Claim 8 and nothing else; and with the judgment of Mr. Justice Farwell in so far as it is based upon Claim 8 as it stands, I entirely agree. I understand 5 you wish to apply to amend, if we take that view. We have not in any way so spoken of Mr. Justice Farwell's judgment as to embarrass you in amendment. Bousfield K.C.-Then, my Lord, the appeal will be dismissed with the usual consequences. VAUGHAN WILLIAMS L.J.-Yes. 10 15 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE KEKEWICH. November 20th and 21st, 1906. IN THE MATTER OF AN APPLICATION TO REGISTER A TRADE MARK BY LYLE AND KINAHAN LD. Trade Mark.-Application to register a label for whisky with a blank to be filled in according to user.-Previous user with wrongful representation.— Cum bering the Register.—Application allowed.—Appeal to the Court dismissed. An application was made by L. and K., a Belfast firm of whisky distillers, to register a label including a scroll with a blank left in front of the words 20 "V.O. Whisky." It appeared that the label had been actually used for some time with the word "Kinahan's" inserted and with a representation that it was already registered, and that the Applicants had done little business outside the Belfast district. The Opponents, K. & Co. Ld., trading as distillers in both Dublin and London, opposed the registration on the grounds that the term 25 "Kinahan's Whisky" was invariably used for their whisky and meant their whisky, and that the Trade Mark applied for would deceive in use; that the Applicants in view of one of their previous registrations ought not to be allowed to cumber the Register with this mark; and that as they had misrepresented their Mark as registered their application to register it ought to |