7. A person cannot use a patented invention for a new purpose without paying for the use. PNEUMATIC TYRE CO., LD. v. EAST LONDON RUBBER CO., p. 77. NOVELTY. See also SUBJECT-MATTER. Alleged invention of an eyelet for boots, etc., made of metal and coated both above and below the flange with celluloid, so as to provide a permanent facing for the eyelet held to be old.-Action for infringement of Patent.-Novelty.-Subject-matter.-Invention.Functions of Appellate Courts when invention is found by Court below.-Certificate as to Particulars of Objections. This was an action. for infringement of a patent for an eyelet for boots, &c., made of metal and coated both above and below the flange with celluloid, so as to provide a permanent facing for the eyelet. The Defendant denied infringement, and alleged that the Plaintiffs' invention was anticipated or that, having regard to the state of knowledge, there was no subjectmatter. Infringement was admitted at the trial. In the anticipations, metal hooks and studs were shown coated with celluloid, and also an eyelet coated on one side; but no such eyelet as the Plaintiffs' had been produced on the market. There was, however, a demand for an eyelet which would stand wear. The Plaintiffs experimented for six years before arriving at their invention. Held, at the trial, that the Plaintiffs' combination was new and useful, and was not anticipated. The Defendants appealed and the appeal was dismissed. The Defendants appealed to the House of Lords. Held, that the Patentees, by their Specification, disclaimed all right to their process, and claimed "any eyelet of any metal if covered with celluloid or any similar "material"; that, while no smallness or simplicity will prevent a patent being valid, mere novelty of manufacture, or usefulness in the application of known materials to analogous uses will not necessarily establish invention within the meaning of the patent law; that metal studs and hooks, and metal studs and hooks covered with celluloid or a similar material, were old; and that though the Plaintiffs had succeeded in producing an improved eyelet, and there was some ingenuity in the mode of manufacture, there was not sufficient invention to form the subject-matter of a patent. There is no presumption that the Court of Appeal or the House of Lords ought not to interfere with what the Judge of first instance has done; but the Appellate Court, on appeal from a Judge, where both fact and law are open to appeal, is bound to pronounce such judgment as, in their view, ought to have been pronounced in the lower Court; and it is not within the Appellate Court's competence to say that they would have pronounced a different judgment if they had been Judges of first instance, but that because the Judge has pronounced a particular judgment they will adhere to his decision. Held by Lord Shand differing, that the invention was novel and formed good subject-matter of a patent, as an adaptation of known materials to a new and useful purpose resulting in the production of a new article of manufacture (the previous articles being imperfect). Per Lord Macnaghten and Lord Davey, the law as to subject-matter in such a case is that laid down in Harwood v. G.N.R. Co., 11 H.L.C. 654, in which it was held that “a mere application of an old contrivance in the ordinary way to an "analogous subject, without any novelty in the mode of applying such "old contrivance to the new purpose, does not make a valid subject"matter of a patent." Both a process and a product may be patentable. The appeal was dismissed, and a certificate was granted by the House that the Particulars of Objections were reasonable and proper. RIEKMANN V. THIERRY, p. 105. PARTICULARS OF OBJECTIONS. See also CERTIFICATE. 1. Discontinuance of Action for infringement of Patent by Plaintiffs after Defence.-Costs of Particulars of Objections.-Certificate that Particulars were reasonable and proper applied for and refused WILCOX AND GIBBS SEWING MACHINE CO. v. JANES BROTHERS, p. 523. 2. Leave given to Defendants to amend towards the close of a trial, on terms. BADISCHE ANILIN UND SODA FABRIK V. LA SOCIÉTÉ CHIMIQUE DES USINES DU RHÔNE AND WILSON, p. 881. 3. Costs of Particulars of Objections allowed as if the same had been certified as reasonable and proper in an action where the Plaintiff asked for and obtained leave to discontinue on terms. BETHELL V. GAGE, p. 700. PATENTS, &c. ACT, 1883. Section 18. ARMSTRONG'S PATENT, p. 747. Section 19. PERKES v. DEELEY, p. 3. ARMSTRONG'S PATENT, p. 747. Section 25. HOPKINSON'S PATENT, p. 5. LINDON'S PATENT, p. 643. Section 29 (6). SUNLIGHT INCANDESCENT GAS LAMP CO., LD. v. THE INCANDESCENT GAS LIGHT CO., LD., AND OTHERS, p. 757. Section 32. BEISSBARTH v. PERRY AND CO., LD. PERRY AND CO., LD. v. BERNSTEIN AND BEISSBARTH. BERNSTEIN AND BEISSBARTH v. PERRY AND CO., LD., pp. 148, 939. DUNLOP PNEUMATIC TYRE CO., LD. V. THE NEW SEDDON PNEUMATIC TYRE AND SELF-CLOSING TUBE CO., LD., p. 332. Section 46. HOPKINSON'S PATENT, p. 5. PATENTS, &c. ACT, 1885. Section 4. PNEUMATIC TYRE CO., LD., AND OTHERS v. THE ENGLISH CYCLE AND TYRE CO., p. 851. PATENT RULES, 1890. Rules 74 and 80. ARMSTRONG'S PATENT, p. 747. PRACTICE. See also PROVISIONAL SPECIFICATION, No. 1, and STAY OF EXECUTION. 1. Leave given to Plaintiff to discontinue action at trial on terms.Action for infringement of Patent.-Discontinuance by leave.-Terms of leave.-Costs of particulars.-Threats.-The Plaintiff, in an action for infringement of Letters Patent, applied at the trial of the action for leave to discontinue. Leave was granted on the Plaintiff undertaking not to bring any action against the Defendant in respect of any infringement prior to the date of the writ, or to bring any action or use threats against any purchaser from the Defendant prior to such date, and on terms that the Plaintiff should pay the Defendant's costs of the action, including the costs of the Defendant's Particulars of Objections, as if the same had been certified as reasonable and proper. 2. Ex parte motion for injunction in a threats action refused. COMMERCIAL DEVELOPMENT CORPORATION v. CASTNER KELLNER ALKALI CO., p. 939. 3. Leave given to Defendants on terms towards the close of a trial to amend their Particulars of Objections. BADISCHE ANILIN UND SODA FABRIK v. LA SOCIÉTÉ CHIMIQUE DES USINES DU RHÔNE AND WILSON, p. 881. 4. Action for Declaration of License.-Admission made by Defendant's Counsel.-Motion to vary admission.-Action for declaration of license.-Motion for injunction to restrain Defendants representing that Plaintiffs were not licensees, and from threatening customers of the Defendants with legal proceedings.-Subsequent motion to strike out paragraph in Defence denying that Plaintiffs were licensees.-Paragraph struck out.-Motion to vary order.-It was admitted in Court by the Defendants' counsel that a license was granted and that the Plaintiffs were entitled to such license; and the Defendants undertaking not to represent that the Plaintiffs were not entitled to make and vend the patented articles, and not to threaten with legal proceedings anyone in respect of tyres manufactured by the Plaintiffs under the Defendants' inventions, and the Plaintiffs undertaking in the usual way, the motion was ordered to stand to the trial. The Defendants subsequently, in their defence (par. 3), contended that the Plaintiffs were not entitled to the license, and that their tyres were not of the class of tyres authorized to be made by the license. The Plaintiffs moved to strike out this paragraph, and, on the motion being heard, it was arranged that the Defendants should make a motion to discharge their admission. The Defendants failed to make such motion, and, on the Plaintiffs' motion, an order was made striking out the paragraph of the Defence, and the Defendants were ordered to pay the costs. The Defendants subsequently moved to vary their admission. This motion was dismissed by Kekewich, J., and the Court of Appeal affirmed his order. THE TURNER PNEUMATIC TYRE CO., LD. v. THE DUNLOP PNEUMATIC TYRE CO., LD., p. 429. PRIOR USER. See also ANTICIPATION. 1. Prior user held to be established.-Action for infringement of two patents. Prior user.-Particulars of objections.—Appeal.—Application for new trial and to adduce further evidence. This was an action for infringement of two patents for improvements in sifting machines. The Defendants alleged the invalidity of the patents on various grounds, including want of subject-matter and prior user. This last objection was, at the trial, supported by evidence. Held, that the prior user was proved at two places, and the action was dismissed, with costs. The Plaintiff appealed, and asked for judgment or for a new trial, on the ground of surprise, improper rejection of evidence, and refusal by the Judge to adjourn the hearing. He also moved for leave to adduce further evidence at the hearing of the appeal. The appeal and the motion were dismissed, with costs. HAGGENMACHER v. WATSON, TODD, AND CO., pp. 349, 631. 2. Prior user held not to be established.-Action for infringement.Alleged prior user.-Injunction granted.-The action was to restrain infringement of a patent for improvements in rubber tyres and metal rims of wheels for cycles, &c. The Defendants at first raised all the usual defences in a patent action, but after the decision in The Pneumatic Tyre Company v. East London Rubber Company, 14 R.P.C. 77, almost all the issues were struck out, and at the trial the case was practically reduced to a single case of prior user. The learned Judge held that the Defendants' case was not proved to his satisfaction, and granted an injunction, with solicitor and client costs. PNEUMATIC TYRE CO., LD. v. MARWOOD AND CROSS, p. 240. 3. Prior user held to be established.-Action for infringement of patent.-On the 30th of May 1893, a patent was granted to S. for an invention of adapting electric lamps to ordinary candle fittings and the like. S. brought an action for infringement against P., who pleaded, among other things, prior user of the alleged invention by R. a few days before the date of the patent. At the trial, two witnesses were called to prove this prior user. Held, that the prior user was proved, and judgment was given for the Defendant. SLUCE v. POOLE, p. 260. PROFITS. See ACCOUNT OF PROFITS. PROLONGATION. 1. Petition for prolongation by Company as Assignees. Remuneration of inventor adequate.-Prolongation refused. - This was a petition for prolongation of a patent by the Patentee and a Company to whom he had sold the whole beneficial interest in the patent. It appeared that the Patentee had received a total amount of 19,7507. in shares and cash for this patent and a German patent for the same invention, but that the Company's expenditure had exceeded their receipts. The petition was opposed by the Crown on the ground that the inventor had been adequately remunerated and had no further interest, and was also resisted by seven sets of Opponents. Held, that though assignees may petition for prolongation, they are not to be placed on the same favourable footing as the Patentee; that in this case the assignees had not assisted the inventor to bring out his invention, but had merely bought it from a prior assignee from him, and as the inventor had been adequately remunerated, the Board were unable to report under Section 25 of the Patents, &c. Act, 1883. The petition was dismissed; the Petitioners were ordered to pay one set of costs to the Opponents, which was fixed by the Board. in the absence of agreement, at 4001. The cases on prolongation to an assignee discussed and explained. HOPKINSON'S PATENT, p. 5. 2. Prolongation.-Relaxation of rules as to preliminary advertisements.-Prolongation of 1883 patent.-Relaxation of rules as to advertisements.-Act of 1883, Section 25, (1) (6).-Judicial Committee Rules II., III., IV.—Where, in the case of a patent granted under the Act of 1883, it appeared that, by an oversight, parties intending to apply for extension had delayed issuing the preliminary advertisements required by the Judicial Committee Rules, and that if these rules were insisted on, it would be impossible to comply with the statutory requirement that the petition should be presented at least six months. before the expiration of the patent, the Judicial Committee allowed the petition to be answered before the insertion of the advertisements, the parties undertaking to insert before a named day all the advertisements required; the order to be served on the Attorney-General, and to be subject to any objection he might make. LINDON'S PATENT, p. 643. 3. Sufficiency of Patentee's remuneration.-Prolongation refused on the ground of sufficient remuneration of Patentee. PATENT, p. 239. CARMONT'S 4. Cases on prolongation to an assignee discussed and explained. Hop. KINSON'S PATENT, p. 5. PROVISIONAL SPECIFICATION. See also VARIANCE. 1. The Court has power to allow the production of the Provisional Specification of an abandoned patent for the purposes of the administration of justice notwithstanding Section 4 of the Patent Act of 1885.-Patent.-Alleged prior user.-Production of Provisional Specification of abandoned patent.-Power of Court to allow production.--Patents, &c. Act, 1885, Sec. 4.-An action for infringement of a patent having being brought, the Defendants set up (inter alia) the defence of prior user. On the Defendant being called and cross-examined, the Plaintiffs' Counsel called an official from the Patent Office to produce the Provisional Specification of an invention, in respect of which the said Defendant had applied for Letters Patent, but had subsequently abandoned the application. The Defendant questioned the jurisdiction of the Court to allow production. Held, that notwithstanding Sec. 4 of the Patents, &c. Act, 1885, the Court could allow production of, and reference to, such Provisional Specification for the purposes of the administration of justice. The Defendant subsequently consented to judgment being entered against him. THE PNEUMATIC TYRE CO., LD., AND OTHERS v. THE ENGLISH CYCLE AND TYRE CO., p. 851. 2. A Patentee is not obliged to detail the advantages of his invention in his Provisional Specification. PNEUMATIC TYRE CO., LD. v. THE EAST LONDON RUBBER CO., p. 99. 3. In a Provisional Specification, you must find the nature of the invention described, though it need not be described otherwise than roughly, so long as it is fairly described. The Provisional Specification need not describe the manner in which the invention is to be carried into effect. PNEUMATIC TYRE CO., LD. v. THE EAST LONDON RUBBER CO., p. 98. REVOCATION OF PATENT. Petition for revocation of patent.-Alleged_anticipation.-Construction of patent in previous action.-Estoppel.-Insufficient prior publication.-Petition dismissed.-A petition was presented to obtain the revocation of a patent for improvements in machines for lasting the uppers of boots and shoes, the validity of which had been upheld in an action for infringement against the Petitioner, on the grounds that the patent was anticipated by a prior Specification, and an abridgment of another Specification, not brought forward in the previous action, and that the claim of the patent in the previous action had been given so wide a construction that it covered parts of those Specifications. Held, that the claim attacked was for the general construction, combination, and arrangement of certain parts of a machine; that there was no estoppel by the former decision to prevent the Patentee contending that his arrangement was not identical with the prior patents, and that the patent was not anticipated by either of the alleged anticipations. Plimpton v. Malcolmson, L.R. 3 Ch. D. 531. followed. LEWIS AND STIRCKLER'S PATENT, p. 24. |