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Where the defendant has used and sold articles alleged to have been made by the patented process, the onus of proving that they were in fact made by that process is on the plaintiff, but where such articles were made abroad, and the plaintiffs, in consequence, could not be afforded full opportunity of inspecting the machinery by which they were made, it has been held that it lies with the defendants to rebut a primâ facie case made out by the plaintiffs (e).
In The Cartsburn Sugar Refining Co. v. Sharp (f) the alleged infringement consisted in the sale in England of cube sugar manufactured in America by a machine made in accordance with the specification of the plaintiffs' patent, Lord Kinnear, in his judgment, said: “No witness has been examined of sufficient skill as a mechanic to give a detailed description of the machine in question. All that is proved is that it does not correspond in all respects, though in some respects it does correspond, to the description in Hersey's patent. It is said that as the manufacture complained of had taken place in America, it was incumbent on the respondents, upon the principle which received effect, in the case of Neilson v. Betts (supra), to prove by negative evidence that it was not manufactured according to the specified process. I I think no such onus lies upon the respondents in the present case, because there can be no question on the evidence that such articles as were sold by the respondents may have been produced by machinery which involved no infringement of the complainer's patent. That being so, it lay upon the complainers to prove their case, and as they took a commission to America for the purpose of proving it, there could have been no difficulty in their obtaining a sufficient description of the machine to which it is alleged they have traced the cubes of sugar sold by the respondents, to enable them to establish the infringement, if infringement there was.”
Selling known chemical substances with knowledge of and with a view to their being used for the purpose of infringing a patent is no offence, provided the vendor takes no actual personal part in the infringement (9).
(e) Neilson v. Betts, L. R., 5 H. L. 12 Ch. D. 831 ; Sykes v. Howarlh, L. 1, 11.
R., 12 Ch. D. 826 ; but note United (f) i P. O. R., 181, 186.
Telephone Co. v. Dale, L. R., 25 Ch. (9) Townsend v. Haworth, L. R.,
A patentee selling the patented article sells with it the right of free disposition as to that article, and if he sells the article in France, the purchaser may import and sell it in England. Lord Hatherley, in Betts v. Willmott (1), said :-“ Inasmuch as he has the right of vending the goods in France, or Belgium, or England, or in any other quarter of the glob, he transfers with the goods necessarily the licence to use them wherever the purchaser pleases. When a man has purchased an article he expects to have the control of it, and there must be some clear and explicit agreement to the contrary to justify the vendor in saying that he has not given the purchaser his licence to sell the article, or to use it wherever he pleases as against himself.”
Where the defendants, being owners of patents in Belgium and England for an invention for making glass lamp globes, by a deed executed in Belgium, granted a licence to the plaintiffs to manufacture under their invention in Belgium but not elsewhere, and the plaintiffs under this licence manufactured articles in Belgium and sold them in England, it was held by the Court of Appeal, affirming Pearson, J., that the grant of the licence to use the patent in Belgium did not imply permission to sell the manufactured article in England in violation of the defendants' English patent (i).
And when the patentee has assigned his patent in France and kept it to himself in England, the French assignee may not, nor may a purchaser from him import and vend or use the goods made in France in England (k). In this case the sale of the article can only imply such licence as the vendor himself has, and the vendor has no right to sell in England.
Conversely, if the patentee had assigned his patent rights in England, he could not manufacture in France and sell in England, and the sale of an article in France would carry with it no implied right to import into or sell in England. But if the rights under the patent are vested in one and the same person for both France and England, or if there are no monopoly rights in France, but only in England, the patentee could not make and
(h) L. R., 6 Ch. at p. 245.
() Société Anonyme des Manufactures de Glaces v. Tilghman's Patent
Sand Blast Co., L. R., 25 Ch. D. 1.
(k) See the rule laid down in Cald. well v. Vanvlissengen, 9 Hare, 415.
sell in France and restrain the purchaser from selling or using the article in England, unless, indeed, there was a special agreement for that purpose ; and then such agreement could not be held to attach to the article so as to prevent any person in whose hands it might come from importing it (1).
A vendee of a licensee, without an agreement to the contrary, has the same right of disposition with regard to things purchased as was vested in the licensee before (m), and where the licensee is restricted in his use of the patented article (mm), a purchaser from such licensee will not be affected by the restrictive covenant, unless he has due notice of its existence.
So, in Heap v. Hartley (n), the patentee granted to the plaintiff an exclusive licence for a district; subsequently he sold a machine made in accordance with the patent to the defendant, who brought this machine within the prohibited area. held by Bristowe, V.-C., and his decision was affirmed in the Court of Appeal, that the defendants were not affected by the exclusive licence for that district, since they had no notice of its existence.
In the course of his judgment Bristowe, V.-C., said (0) :“Where a patentee sells that which he has a perfect right to do abroad to a person who has a perfect right to buy a machine abroad, and to use in England the thing so sold, you must, before you can attach the conscience of any sub-purchaser from that man, have something in the form of notice to that man that there is a restrictive user attachable to the particular machine so bought.”
But ignorance in the absence of an implied licence, as in the case we have been discussing, is no excuse, since, as has been pointed out above, infringement does not depend upon what a man intends, but upon what he does.
(1) Betts v. Wilmott, L. R., 6 Ch. 239.
(m) Thomas v. Hunt, 17 C. B., S. 183.
(mm) For an instance of a limited
licence accompanying the sale of a patented article, see The Incandescent Co. v. Cantelo, 12 P. O. R. 262.
(n) 5 P. O. R. 603 ; 6 P. O. R. 495. (0) 5 P. O. R. 610.
The remedy sought or granted in an action for infringement may consist of an injunction, together with an account of sales and profits, or damages.
The Judicature Acts and the Rules which have been made for the governing of the practice of the courts have introduced great changes in the method of procedure. The old practice of moving for an injunction by a suit in the Court of Chancery, and of trying the validity of the patent at common law, has disappeared ; and in its place the patentee seeking to enforce his rights commences but one action in which he claims, and if entitled to, obtains every remedy which was formerly granted to him by the
Every patentee proceeding against an infringer must prove the validity of his patent and his title to an injunction; that being so, and the right to the injunction hanging so completely upon the question of validity, it is obvious that the new procedure and the new power of both divisions of the High Court of Justice to grant complete and sufficient remedies and to try every question is of great advantage to persons in possession of patent rights.
The basis of an injunction is the threat actual or implied on the part of the defendant, that he is about to do an act which is in violation of the plaintiff's rights ; so that not only must it be clear that the plaintiff has rights, but also that the defendant has done something which induces the Court to believe that he is about to infringe those rights.
The fact that he has been guilty of an infringement of the patent rights will, under circumstances, be evidence that he intends to continue his infringement, but whether he has actually infringed the patent or not, it will be sufficient if he has threatened to infringe it. Actual infringement is merely evidence upon which the Court implies an intention to continue in the same
In Frearson v. Loe (a), Jessel, M.R., said :-"I am not aware of any suit or action in the Court of Chancery which has been successful on the part of a patentee, without infringement having been proved; but, in my opinion, on principle there is no reason why a patentee should not succeed in obtaining an injunction without proving actual infringement. I think for this reason : where the defendant alleges an intention to infringe, and claims the right to infringe, the mischief done by the threatened infringement of the patent is very great, and I see no reason why a patentee should not be entitled to the same protection as every other person
is entitled to claim from the Court from threatened injury, where that threatened injury will be very serious. No part of the jurisdiction of the old Court of Chancery was considered more valuable than that exercise of jurisdiction which prevented material injury being inflicted, and no subject was more frequently the cause of bills for injunction than the class of cases which were brought to restrain threatened injury, as distinguished from injury which was already accomplished. It seems to me, when you consider the nature of a patent right, that where there is a deliberate intention expressed, and about to be carried into execution, to infringe certain letters patent under the claim of a right to use the invention patented, the plaintiff is entitled to come to this Court to restrain that threatened injury. Of course it must be plain that what is threatened to be done is an infringement."
So in Dowling v. Billington (6), two acts of infringement of the plaintiff's patent were proved, the first of which took place prior to the acceptance of the complete specification by the Comptroller, while the second was committed a few days after the commencement of the action, it was held by Chatterton, V.-C., whose decision was affirmed by the Court of Appeal, that neither of these acts constituted an actionable infringement; but inasmuch (a) L. R., 9 Ch. D. at p. 65.
(6) 7 P. O. R. 191.