line 38, or in a manner only colourably differing therefrom, and by the use of the improved combination of apparatus therein described." Where an action is brought against the vendor of articles alleged to have been made by a process which infringed the plaintiffs' patent, a greater degree of precision is required in the particulars of breaches than if the defendant was the manufacturer himself. In Mandleberg v. Morley (x), Stirling, J., said (y): "Now if a manufacturer is attacked for infringing a patent by a particular process he does not want to be told in the shape of particulars, or otherwise, what the process is he is using. He knows what the process he is using is. But it is a very different thing with respect to a vendor. The vendor does not know with certainty what process is being used by the person from whom he himself buys, and who manufactures the article." In that case the particulars of breaches alleged that: "The plaintiffs complain that each of the said letters patent of the plaintiffs have been infringed by the sale and exposure for sale by the defendants of each of the said garments, known as 'The Champion,' and 'The Distingué,' and by the sale and exposure for sale of other waterproof garments made by the manufacturers of The Champion,' 'The Distingué,' and 'The Tropical Odourless,' but not bearing their distinguishing names, but which unnamed garments are manufactured by similar processes to the three named garments." It was held that the reference to unnamed garments was not sufficiently specific, as it was not clear that the unnamed garments referred to were substantially the same as those which were specifically mentioned. If the particulars delivered are too general, the defendant should apply for further and better particulars. If at the trial evidence is tendered which comes within the literal meaning of the particulars it will be admitted, notwithstanding that the particulars are too general, as the defendant should have objected to the particulars, and not have waited until the trial to take his objection (z). (x) 10 P. O. R. 256. (y) At p. 260. (z) Hull v. Bollard, 25 L. J., Ex. 304. The plaintiff having delivered particulars of breaches specifying certain sales by the defendant of rollers, and in particular to Shaw and Smith, the defendant, in answer to interrogatories, admitted sales to Hirst. Fry, J., in giving judgment, said: "In this case I think I must admit the evidence tendered in respect of Hirst's case. It is said that in respect of those cases which are not mentioned by name in the particulars of breaches, the plaintiff cannot give evidence. It may be that the particulars were not sufficient, or tended to embarrass. But the defendant did not apply for amended particulars, according to the case of Hull v. Bollard. It appears to me I have to inquire what is the meaning of the particulars. I find the case of Hirst is within the literal meaning of the particulars. If I had found that the case of Hirst was likely to create surprise, or likely to introduce any point not raised by Smith's or Shaw's case, I should probably have given an opportunity to the defendant to bring fresh evidence. I have asked whether there is any witness not here whom the defendants would desire to bring in respect of Hirst's case, and have received no satisfactory answer on that point, and must assume there is no such witness" (a). Conversely where the particulars of breaches complained only of infringement by user, the Court refused to enter into the question as to whether there had been infringement by manufacturing the articles complained of (b). Particulars of breaches, as we have seen, may also be ordered in actions which are not strictly actions for the infringement of patents; this is done under the ordinary jurisdiction of the Court (c). In an action charging that the defendant falsely and maliciously wrote and told persons who had bought certain machines of the plaintiffs that the machines were infringements of his, the defendant's patents, the defendant having pleaded not guilty, the court ordered the defendant to deliver particulars, showing in what part the plaintiffs' machines were an infringement of the defendant's patents, and pointing out by reference to the page and line of the defendant's specifications, which part (a) Sykes v. Howarth, L. R., 12 Ch. D. 826. (b) Henser v. Hardie, 11 P. O. R. 421, 427. (c) Perry v. Mitchell, 1 Web. P. C. 269. of the inventions therein described he alleged to have been infringed (d). STATEMENT OF DEFENCE. The statement of defence in patent actions is now, under the rules of the Supreme Court, 1883, a very brief and concise document, giving no particulars or details whatever, and remitting the plaintiff to the particulars of objections and the answers to the interrogatories for information as to the case which is to be made against him. Under Order XIX. rule 5, the form given in Appendix (D.), sect. VI., is rendered obligatory. That form merely gives headings of defence which is all that is to be allowed; for instance" (1) That the defendant did not infringe the patent; (2) The invention was not new; (3) The plaintiff was not the first and true inventor; (4) The invention was not useful; (5) The patent was not assigned to the plaintiff." And to these might be added:-That the title did not disclose the nature of the invention (e); that the title, the provisional specification, and the complete specification, or any two of them, did not substantially refer to the same invention (ƒ); that the specification was not sufficient (g); that the claim in the specification was not sufficient to distinguish what was new from what was old (h); that the patent was obtained in fraud of the defendant, as, for instance, when a person employed to carry out or assist in experiments, applies for letters patent himself, or where the patentee has obtained the invention from the confidence of the defendant. It will be observed that any one of these defences will be sufficient to constitute a complete defence to an action; and that the greater portion of them are of a nature to require elaborate and costly evidence to prove or disprove them. Too much care cannot, therefore, be taken in preparing a statement of defence to avoid setting up defences which it is not expected will be satisfactorily proved at the trial, regard being had to the provisions of the rules of 1883 as to costs; otherwise, even if the (d) Wren v. Weild, L. R., 4 Q. B. 213. (e) Ante, p. 78, et seq. (f) Ante, p. 84, et seq. defendant succeeds in the action, he may be mulcted in heavy costs to the other side. The defence that the plaintiff was not the first and true inventor should not be set up unless it is intended to prove that somebody else was the inventor, as the issue that the invention was not new, and in consequence that it was not invented by the plaintiff, should be raised under the other headings of defence (i). A statement of defence alleged that if the specification were construed so as to make the defendant an infringer, the claims of invention would be bad for want of novelty, as including matters described in certain specifications (stating them). North, J., refused to strike out par. 2 under Order XIX. rule 27; the Court of appeal dismissed the appeal with costs (k). A statement of defence admitted infringement in ten instances and no more, the plaintiffs elected to move for judgment upon such admissions; held that they were entitled to an enquiry as to damages as to these ten instances of infringement and no more, and that all evidence as to any other instances of infringement alleged to have been committed by the defendant must be excluded (). Where the defendants in an action for infringement have been indemnified by another person or company, such other person or company may be joined as a third party under Order XVI. rule 48, of the rules of the Supreme Court (m). PARTICULARS OF OBJECTIONS. Section 29, sub-sect. (2) of the Act of 1883, provides :-" The defendant must deliver with his statement of defence, or by order of the Court, or a judge at any subsequent time, particulars of any objections on which he relies in support thereof; (3) If the defendant disputes the validity of the patent, the particulars delivered by him must state on what grounds he disputes it; and (i) Morgan v. Windover, 7 P. O. R. 449; Thomson v. Macdonald, 8 P. O. R. 9. (k) Hocking v. Hocking, Griff. P. C. 129; 3 P. O. R. 291. (1) United Telephone Co. v. Donohoe, L. R., 31 Ch. D. 399. (m) Edison v. Holland, L. R., 33 Ch. D. 497. if one of those grounds is want of novelty, must state the time and place of the previous publication or user alleged by him; (4) At the hearing, no evidence shall, except by leave of the Court, or a judge, be admitted in proof of any alleged infringement or objection, of which particulars are not so delivered; (5) Particulars delivered may be from time to time amended, by leave of the Court, or a judge." Order XIX. rule 6, of the Rules of the Supreme Court, 1883, provides: "In all cases in which the party pleading relies on any misrepresentation, fraud, breach of trust, wilful default, or undue influence, and in all other cases in which particulars may be necessary beyond such as are exemplified in the forms aforesaid, particulars (with dates and items if necessary) shall be stated in the pleading: provided that if the particulars be of debt, expenses, or damages, and exceed three folios, the fact must be so stated, and a reference to full particulars already delivered or to be delivered with the pleading." It is not easy to reconcile the practice under this rule with the language of the 29th sect. of the Patent Act, or, indeed, with the form of defence given in the form to the rules quoted above. Order XIX. rule 6, provides that particulars shall be incorporated with the pleading; on the other hand, the form and the Patent Act seem to indicate a separate document. Hitherto the practice has been to deliver a separate document, and it is apprehended that when the balance of convenience is considered the Courts will hold that in respect of a patent action the practice has remained unchanged. Where it was a condition precedent to an agreement to assign letters patent, that the assignee should first satisfy himself as to the validity of the patent, in an action brought for specific performance of this agreement, and resisted by the assignee on the ground of his right under the condition precedent, it was held that the validity of the patent was at issue and that the plaintiff was entitled to particulars of objections (n). It is not necessary for every one of two or more defendants defending in the same interest to deliver particulars of objections (0). (n) Hazlehurst v. Rylands, 9 P. O. R. 1. (0) Smith v. Cropper, L. R., 10 App. Cas. 249, reversing L. R., 26 Ch. D. 700. |