British Ore Concentration Syndicate Ld. v. Minerals

Separation Ld.

the Patent is not valid and with their Defence they have delivered certain Particulars of Objections. I will deal with the second Particular only, because the eighth is in identical language and refers to another Patent; the second Particular is-"The Complete Specification does not, as by law "required, particularly describe and ascertain the nature of the said inven- 5 "tion or in what manner the same is to be performed." That means that the Patentee has not complied with the statutory liability that the Complete Specification must particularly describe and ascertain the nature of the invention and in what manner it is to be performed. Therefore it alleges that this obligation has not been complied with. Then the Defendants have proceeded 10 to give Particulars-"They will rely on the following defects in the Specifica"tion"; (a) is "The Specification does not sufficiently define the extent or "limits of the invention claimed "; that is, does not sufficiently point out its metes and bounds or the exact scope or limits of the invention. Then (b) is "It contains no sufficiently precise description of the nature or consistency of 15 "the thick oil to be used in carrying out the said invention and no particular "statement concerning the volatile constituents which are to be distilled off in "preparing it "—that is, it does not describe the nature of the invention. The present application is for further Particulars of this Particular 2 (a) that the Specification does not sufficiently define the extent or limits of the invention 20 claimed. In my opinion the Plaintiffs are not entitled at this stage to any Particulars of that, and I have great difficulty in seeing what further Particulars can be given. It is merely putting the same thing in other language to say that the Specification does not sufficiently define the exact scope of the invention or point out the exact metes and bounds of the invention. This tells you nothing 25 further. The complaint of the Specification is that it does not define the limits of the invention. I can conceive that if the Defendants were ordered, at this stage, to give further particulars of that Particular it might hamper considerably their conduct of the action at the trial, because the Plaintiffs simply rely on the Specification, and then at the trial they will contend what, according to 30 the Plaintiffs' view, is the true meaning of the Specification; but whatever their contention as to the exact meaning of the Specification is, which is perhaps not yet known to the Plaintiffs, that will be developed at the trial. At present sufficient Particulars have been given as to the case which they have to meet with regard to the objection which is raised to the Specification itself. I 35 do not see how, at this stage, any further Particulars can be ordered to be given by the Defendants which will be of use to the Plaintiffs. I must refuse the application.

Terrell K.C.-What will be the order as to costs?

SWINFEN EADY J.-Of course the rest of the Summons will be dealt with; 40 but the costs of the adjournment to me will be your costs in any event. Colefax.—I ask for leave to appeal. It is a matter requiring leave.

SWINFEN EADY J.-I do not think it is a case in which I can give leave. You are not, in my view, prejudiced by not succeeding on the application.

END OF VOLUME XXIV.