Consolidated Pneumatic Tool Company Ld. v. Clark. a drill or punch; it has to be brought to the work, the maximum of power has to be obtained in a small space, and the tool needs to be light enough to be held in the hand. The piston receives from 1500 to 2000 blows a minute. It is necessary to avoid vibration. The earlier tool of Ross was too large, but in 5 addition it had too much vibration. Brazelle's hammer, in the Respondents' model, which was made of the same size as the Appellants' hammer, was only one-fifth as effective and it had an intolerable jar. In the 1896 Patent Boyer shows a development of the 1895 Patent with a view to getting great power in a small space. A long stroke of a long piston in a short tool of small diameter 10 is desired. The Appellants do not claim all shell valves, but only the combination. In both directions the piston overruns the point at which the exhaust takes place; this overrunning is very important and is absent in Brazelle, which has been held to be an anticipation. It is also said that the difference between the Appellants' device and Brazelle is not subject-matter. Claim 14 15 is a little more specific than 13, bringing in the passages P and Q. [Counsel put in a document entitled "Some characteristic features of Plaintiffs' hammer." It was as follows:-"(1) The piston is a solid cylinder of steel, working in a "piston chamber, having a straight cylindrical bore, the working surfaces being "of uniform diameter throughout. (2) The diameter of the piston is kept as 20 small as possible, the necessary weight being obtained by increasing its "length. (3) The valve is operated by live air coming through a passage (T') "leading directly from the source of supply, which is put into communication "with another passage (T) leading to larger area of valve. (4) The passages T "and T1 open into the piston chamber at about the same point in its length. 25"(5) The communication between T and T' is made by means of a groove near "the rear end of the piston, which serves only as a means of a communication "and not as a live air reservoir. (6) The groove is such that during the greater part of stroke T and T' are both closed by the solid piston. (7) The move"ment of valve due to live air passing through T' and T opens exhaust at rear 30" of piston, before blow is struck. (8) The backward rebound of piston when "blow is struck causes its return. (9) The return of piston is completed by a "small quantity of 'wire-drawn' air admitted through passage R in front of "piston. (10) During return of piston, openings P and Q are uncovered at "about the same time. (11) The uncovering of Q exhausts the pressure which 35" is effecting the return of the piston, and the piston completes its return "only by its momentum. (12) The uncovering of P opens the large area of "valve to exhaust through Q, and thus allows the constant pressure on the "small area to throw valve over and admits full live air pressure to cushion "piston and drive it forward again. (13) The passage R is opened to exhaust 40"by the movement of valve, so that as piston comes forward and closes Q, air pressure in front of piston is prevented."] As to these features, (1) they cover the complete cycle of the piston; (2) they include all the elements of Claims 13 and 14; (3) they are all to be found in the infringing hammers; (4) all of them are independent of the shell valve; and (5) none are to be found 45 in the Brazelle hammer. As to the construction of the 1896 Patent, the opening words show that the Claims ought to receive a narrow construction, on the principle laid down in Curtis v. Platt; the Claims are specific, as required by that authority. The piston chamber and the piston are more specifically claimed than the valve, which may be of any variety of the kind described. It is said 50 that the feature No. 8 is not in the Claim, but the rebound of the piston is fully described in the Specification. The combination is not a mere stringing together of parts, but involves the relation of each of the parts to the other. The Respondents have the valve at the back and so make the tool so much longer; they have not taken the Appellants' shell valve. They have made one little difference; 66 66 * L.R. 3 C.D. 135n. 66 66 66 Consolidated Pneumatic Tool Company Ld. v. Clark. they have taken T into P, but that makes no real difference, because T and P are never open together, and it does not matter if they are in one tube-it serves two purposes at different times. A hammer like Brazelle's would be useless as a hand tool; the arrangement is totally inapplicable to a pneumatic hammer. [Counsel put in a document entitled "Points on Brazelle." It was as 5 follows: (1) A differential piston is incompatible with having maximum 66 power with minimum dimensions of tools. (A) With different working "diameters you necessarily get either leakage, or friction, or diminished length แ of stroke. Either of these incidents involves loss of power. (B) With "differential piston you cannot utilise the whole pressure area of piston, but 10 "have a constant force operating against the piston. (C) With cavity constantly 66 open to live air you necessarily get either leakage, or friction, or diminished "length of stroke. (D) The two sides of Brazelle's piston b are the pressure areas for working the piston; b must therefore be of considerable length or "else a tight fit. In Plaintiffs' the pressure areas are far apart, so that a loose 15 "fit is possible. (2) The Brazelle arrangement of ports necessarily increases "length of piston and therefore decreases length of stroke for the following reasons:-(A) The cavity in the piston necessarily occupies a length equal to "the length of the stroke, owing to the position of the ports c2 and c (supposed "to correspond to T and T). In Plaintiffs', since T and T1 are at same point 20 "in length of cylinder, the groove may be as short as you please. (B) The air σε passage c2 (said to correspond to T) is designedly placed so that it may serve "for the exhaust as well as the live air. This necessarily involves a swelling b "of length equal to the stroke, and causes c2 to be necessarily in a different "position from the Plaintiffs' T. (C) You cannot bring c2 and c to the same 25 66 point in Brazelle, since the swelling b would then open to exhaust at the same time as c2. (3) Great jar is involved in the Brazelle arrangement. "There is little or no rebound of piston in Brazelle because: (A) The arrange"ments involve friction; (B) The valve is only shifted at end of out stroke, "and therefore there is a dead blow; (C) At end of return stroke there is full 30 "steam pressure which is never exhausted. Compare with Plaintiffs' arrangement, page 9, lines 3 to 27. (4) Brazelle's passage c' serves two purposes, "viz. :-(1) The purpose of Plaintiffs' T', to supply live air to valve; (2) the purpose of Plaintiffs' R, to supply live air to return piston. Brazelle's passage "c2 serves two purposes, viz. :-(1) The purpose of Plaintiffs' T, to conduct live 35 "air to the valve; (2) the purpose of Plaintiffs' P, to exhaust air from the "valve. This mixture of the pairs of functions necessitates c2 and being "separated by a length equal to the length of stroke, with a cavity equal to the "length of the stroke. It is by bringing T and T to one point that Plaintiffs are enabled to relegate P and R to the front end of the piston chamber and 40 "therefore to shorten his piston and to lengthen his stroke."] Where there is a long unbroken piston there can be a looser fit than if the piston is broken up; if there are different diameters there is either friction, leakage, or a reduced stroke through having to provide an enlargement, as in Brazelle. It is said that in the Appellants' hammer there is a short groove, but that is not claimed. It 45 is true, in a sense, that the short groove sums up the whole matter. Starting from Brazelle, great modification would be required to arrive at the Appellants' hammer; the whole mechanism would require to be re-designed; c2 and c1 cannot be brought together, because in Brazelle's mechanism the functions are confused. If, as the Respondents wish, Claim 13 is read so as to include 50 Brazelle, it will include the 1895 Patent, on which the 1896 Patent is stated to be an improvement. The question as to the infringement of a combination always is as to whether or not the defendant has substantially the same combination. Brazelle is not substantially the Appellants' combination. A Patentee is always entitled to have a narrow construction put upon his claim if 55 he requires it, on the principle of ut res magis valeat. What Mr. Justice Warrington said about combination Claims is contrary to Harrison v. Anderston 66 66 Consolidated Pneumatic Tool Company Ld. v. Clark. Foundry Company. The fact that the passages T and T are close together involves a short groove. On the Appellants' construction undoubtedly there is infringement. Betts Brown's mechanism will not work; the combination in it is entirely different from that in Claim 7, and to pass from that to the Appellants' 5 would require great ingenuity. In the Appellants' hammer the passage X is connected directly with the live air passage, and is so proportioned that a stream of live air flows through X after it is opened, and during the whole time the exhaust is open. There is no proportioning in Betts Brown. If one knew that Betts Brown did forth of a second provide a leak, to take that idea and adapt 10 it to a pneumatic hammer would be invention. Claims 13 and 14 are not for the Boyer hammer, but for a very important part of it. They are not merely a claim to a valve mechanism, but to a portion of the Appellants' hammer. The Appellants are not bound to distinguish their hammer from Brazelle, Doering, and others that have gone before; their duty is discharged when they have 15 made a claim to a specific mechanism (Harrison v. Anderston Foundry Company, L.R. 1 App. Cas. 574, 577, 579, 591). The substance of Claim 13 is not in Brazelle. As to the 1895 Patent, none of the separate features were new, but the combination was. Claim 43 is the same as 42 except that the spring is added. In Claim 42 the expression used is "a throttle valve "-the choice of 20 the article is significant here as in the 1896 Patent. Ross, alleged as an anticipation, and the only pneumatic hammer that was tried, had to be given up because of its intolerable jar. In it the air goes in at the middle of the tool with the result that there is a lack of balance, and the up-and-down thumb action is inconvenient. The valve opens the exhaust and enables the hammer 25 to work. It is not the Appellants' arrangement. Chouteau has a kind of tap to be turned by the hand; the point relied upon by the Respondents is that the air goes through the handle. Neither Ross nor Chouteau anticipates Boyer's device. He has a definite claim for the elements mentioned in Claim 42; some of those are in Ross and Chouteau. He uses a different form of throttle valve, 30 which is dealt with in Claims 44 to 46. As to subject-matter, many attempts to devise a practicable arrangement have been made. The nearest are Ross and Chouteau. The objection of want of subject-matter means that the alleged invention was an obvious thing. As to infringement, the Keller and the Tierney hammers have the same handle. The only difference is that the 35 Respondents take the air in through the lower part instead of round. It is a merely colourable difference. The judgment appealed from was wrong in treating the question as one of verbal distinctions not of substance, both as to infringement and anticipation. It is said that the Respondents have improved the handle by taking the pressure supply more to the rear; but an improved 40 form may be an infringement. Their form is like the 1896 Patent rather than the 1895. Walter K.C. followed.-It is necessary, in the first place, to ascertain from the Specification what is the ambit of the monopoly that is claimed. In 1883 Boyer made a pneumatic hammer that, as a mechanical structure, was out of 45 the question; the 1895 hammer was a great advance, but the 1896 hammer was the first practicable hammer. The invention relates only to hand hammers. The desiderata are (1) increase of weight without increase of diameter-as much jar has been caused by the coming back of the piston as by its going forward; (2) not a dead blow, but a sharp one. In the Appellants' hammer a 50 long stroke of the piston is attained, and all difficulties as to the registration of the ports are obviated. Provision is made for sending the piston back by means of a wire-drawn supply of air through a constricted passage. There is no gain in length by using a shell valve, and the exact position of the valve is not essential. In Claim 13, the words "independently of the piston " mean that * L.R. 1 App. Cas. 574. Consolidated Pneumatic Tool Company Ld. v. Clark. one must not depend for the air supply upon a constant supply in the piston. That is a matter of substance; the passage round the piston must be merely a passage. In Brazelle the live air passage is not independent of the piston. Neither Brazelle nor Doering would be an infringement, even though the cycle of operations is the same as in the Appellants' hammer; a portion of the cycle is 5 so used in the Appellants' mechanism as to get a long stroke. It is difficult to know what is the attitude of the Respondents as to infringement. The words "sub"stantially as described " are implied by law in the Claim (Young v. Rosenthal 1 R.P.C. 33; Westinghouse v. Lancashire and Yorkshire Railway Company 1 R.P.C. 240-1). The length of the forward stroke is rendered possible by having 10 no part of the live air passage in the piston. In Brazelle there is a dead blow right up to the end of the piston stroke. The Appellants' arrangement gives the maximum length of stroke in a given length of cylinder. The words "independently "of the piston" cut out anything that, as in Brazelle, is dependent on the piston. The live air passage must end at the wall of the cylinder. The question is 15 whether Brazelle's device is independent of the piston; if it is not it is immaterial whether or not the cycle is the same as in the Appellants' device. In Brazelle there is a differential piston. The reduction of the functions of the live air passage from two to one constitutes invention if a very different result is obtained. The position of the ports is of vital importance. The auxiliary 20 passage is not essential. Betts Brown's apparatus is a fixed steam engine; it is unworkable, and so cannot be an anticipation. As to the 1895 Patent, there is no substance in the alterations made in the Keller hammer, in taking the air by a different course, although it is said that it is not taken through the grasping portion. Ross and Chouteau have nothing to do with anticipation. 25 Cripps K.C. for the Respondents in all three actions.-The construction put by the Respondents on Claim 13 excludes most of the contentions raised by the Appellants. The Claim is for any hammer, not for the Boyer hammer. The novelty is a live air passage leading directly from the source of supply. It is said that in Brazelle the live air is always connected to the circumferential 30 groove and that it is not so in the Appellants' hammer, but exactly the same thing is found in the two forms of mechanism. The words "independently of "the piston" mean that there is no hole through the piston. There is the difference in the nature of the blow, but that is not found in Claim 13. The claim for the valve mechanism has a specific meaning, and a much narrower 35 one than the Appellants say. In none of the alleged infringements does the piston go through the valve. The cushioning action at the end of the forward stroke does not exist in the Respondents' hammers, because their R comes in at the end. They do not use the cylindrical shell valve. If the piston was out altogether one would still have the live air passage. In Betts Brown there is 40 an auxiliary puff or leak obtained by means of a passage, as in the Appellants' mechanism. "Independently of the piston" merely means that the live air passage is brought through the wall of the cylinder-that it is outside the piston. The reason why Boyer did not put in a claim for the whole hammer is that it is not allowed by American law, under which the parts have to be 45 claimed specifically. The cycle of operations in Boyer and Brazelle is the same; the fact that Brazelle is for steam makes no difference. The Appellants have admitted that if Brazelle would work as a hammer they would be in a difficult position; the Respondents have shown that it will so work. If in Claim 13 one has to read in the Boyer hammer one would have repetition. 50 That would not be a case of a subordinate integer, which must be patentable per se. The "characteristic features" have to be put on one side; infringement is admittedly out of the question, if the Boyer hammer is brought in. But, if the Boyer hammer is eliminated, it is quite clear. It is necessary to avoid introducing, under cover of the expression "substantially as described," 55 any other elements of the Boyer hammer. Then one finds three very simple elements, in substance the same as Brazelle. In one sense, if the holes T and Consolidated Pneumatic Tool Company Ld. v. Clark. T'were close together one could not get a long stroke. [Clark v. Adie (L.R. 2 App. Cas. 324) was cited.] If one put the holes close in Brazelle one would get an effective mechanism, apart from the secondary purpose, the shifting of the valve. In Doering the holes may be close together. If the 5 other of the two objects is not claimed it is disclaimed. If a person placed the holes together it would be said that he did it to move the valve; he could not be taken to have done it to obtain a short stroke. The breadth of Boyer's Claim is such that Betts Brown comes within it. As to the 1895 Patent, it is covered by Ross. It is not material which way round the air passes through 10 the handle. There is no mention of the thumb action in the Claim or the Specification. The difference between Ross's mechanism and the Respondents' is that the latter introduce the lever action. The Claim only covers the specific mechanical contrivance; the Respondents have not taken that, although, after the disclosure by Ross, they would be entitled to take it. There may be dis15 covery, without invention (Lane Fox v. Kensington, &c. Electric Lighting Company 9 R.P.C. 413, at page 416). There is no subject-matter, or if there is the Respondents have not infringed. Upjohn K.C. followed for the Respondents in the first and second actions.— As to the 1896 Patent, the questions of construction are very important. To 20 construe the Claims as proposed by the Appellants would be contrary to the principle laid down by Lord Cairns in Clark v. Adie (L.R. 2 App. Cas. 315) and followed by Mr. Justice Swinfen Eady in Dunlop &c. Company Ld. v. Moseley (21 R.P.C. 60). To construe Claim 13 one has to look at the Specification and the other Claims, but when one has all the light one can have from those, 25 one has to treat Claim 13 as a separate Claim for what is specified in it. The Respondents say it is not a subordinate integer, but, if it is, the Appellants have not given a definite description of the piston and piston chamber having the specified characteristics of the Appellants' hammer. One has to find that parts that may be either new or old are brought together for the first time in the 30 particular combination. The Claim is for any piston and piston chamber that can be found in any pneumatic hammer. The other construction, which would be sufficiently definite, is that the Claim is for the parts shown in a pneumatic hammer, such as that described and shown. The Claims are very complex. This is an attempt to evade the law that there must be a plain statement of 35 what the combination is. If the piston chamber and piston in Claim 13 do not mean the particular piston chamber and piston, why are they to have a different meaning from that which they have in the other Claims? Why, unless the Respondents' construction is correct, is the piston chamber in 13 different from that mentioned in the first six Claims-which has a cylindrical 40 shell valve located in it. Mr. D. Clerk says that if "a pneumatic hammer" means the hammer described-the Boyer hammer-the Respondents do not infringe. Possibly the expression means a hand pneumatic hammer. It is immaterial whether "a" or "the" is used. If it means any hand pneumatic hammer as to which any question of infringement arises, there is no subject-matter. 45 The introduction of the length of stroke into Claim 13 is not supported by evidence. The utility of the Boyer hammer is irrelevant, unless the expression "in a pneumatic hammer" in Claim 13 means in a Boyer hammer. It is difficult to formulate in terms the elements of the combination claimed in 13. R has more to do with it than T and T'. The Appellants apparently say that 50 they have a kaleidoscopic series of combinations of the Claims, but they ought to be held to the combination they have specified-a combination that effects the sending over of the valve and preparing for the return; it is the piston chamber and piston referred to in Claim 13. As the Respondents have not the valve surrounding the piston, there is no infringement. If the Claim is for 55 the Boyer hammer, the Appellants fail on the issue of infringement; if it is for any pneumatic hammer, they fail on validity. They give a list, not of the features characteristic of the combination in Claim 13, but of the Appellants' |