Notes.

The doctrine of "benevolent construction," as enunciated in this case, applies only where there is an ambiguity. "You must not manufacture ambiguity, but construe words according to their proper meaning." Lord Davey in Parkinson v. Simon, 12 R. P. C. 411. Compare Nobel v. Anderson, post, p. 366.

No principle of construction of claims was laid down in this case, it merely depended on the special facts and specification; had the claim been really independent the patent would have been invalid: Fry, L.J., in Cropper v. Smith, 1 R. P. C. 91. A subsidiary claim for a new invention combined with what is old does not invalidate, as it does not affect the extent of the monopoly: Edison Bell, &c. v. Smith, 11 R. P. C. 163. This case is no authority for the proposition that a claim, even subordinate, expressed in general terms, is limited by reading into it words that are not there because it would otherwise be invalid: per Lord Alverstone, M.R., and Rigby, L.J., in Electric Const. Corp. v. Imperial Tramways Co., 17 R. P. C. 549.

1877. CLARK V. ADIE (No. 1), 2 App. Ca. 315.

Construction of Specification-Subordinate Integers.

A patent (No. 3076 of 1869) was granted to J. R. Grayson for "improvements in apparatus for clipping or shearing horses and other animals."

A provisional specification was filed giving an outline of the invention. It concluded as follows:

"It may be made of various sizes, from very fine teeth for clipping horses to coarse teeth for shearing sheep or other animals, and it possesses, as stated, the advantage over all other clipping apparatus of being varied and adjusted as to cut just above the hoof, or under the flank, or the neck of the horse without difficulty or danger."1

The complete specification was as follows:

"My invention relates to certain improvements in the construction of apparatus for clipping horses and for shearing or clipping other animals, the advantages consisting chiefly in the facility afforded of clipping the hair or wool at a short distance from the skin instead of shaving the animal close, in the application of the cutting blades in relation to the comb, and es pecially in the means of adjusting the cutter in any desired variety of position in regard to the guiding and clipping handles, whereby all parts of the animal may be operated upon with equal facility.

2

"The apparatus consists of a flat guide-plate (a)2 on which the moving parts are carried; its upper portion is cut with a series of teeth (1), to form 1 Quoted by Lord Cairns, L.C., in his judgment (p. 319), and also alluded to by Lord Hatherley (p. 329) in describing the real nature of the invention.

The references to the diagrams are inserted in this part of the specification instead of reproducing the description verbatim lower down. The same letters denote the same parts throughout. In the original drawings the handles and e were shown as of considerable length.

a comb or guide for the cutting-knives (k) to traverse, but the points of these teeth are so tapered as to be slightly above the under level of the plate, whereby the skin of the animal is protected from injury.

"A holder or guiding-handle (b) for the left hand is attached to the lower portion of the plate by means of a forked or single bar, through the ends of which and through the plate a strong pin or stud (f) is inserted, secured to the under side of the plate by a head or screw-nut. The plate being provided with a series of apertures (c) placed equidistant from the stem, it

follows that the guiding-handle may be set to any angle up to 90 degrees on each side of the centre of the plate, and secured at that angle by means of a set-screw (d) or other equivalent passing through corresponding apertures in the forked bar. The upper surface of the plate contains two fixed stems (m1) in line with the edge of the comb, which serve to support a horizontal bolt of metal by means of two slots (m), enabling the bolt to shoot to and fro by the action of the working-handle of the apparatus, which is operated by the right hand, although whenever required the left hand may be used to cut and the right to guide.

"The clipping-handle (e) takes its fulcrum from the central stud, working loosely thereon, and elevated clear of the sliding-bolt (d) by the intervention of a collar (f), being finally secured by a double-headed thumbscrew or milled-edged button-screw. The handle being terminated by an enlarged flat surface is pierced with a series of holes, any one of which may be made to gear with a stud () on the side of the block (g), so that the motion of

the handle will cause the bolt to move reciprocally in a true line on the upper surface of the guide-plate. As a consequence the working or cuttinghandle can also be set to any desired angle in regard to the plate and guiding-handle as most convenient for the operator. A nut may also be applied to the bolt-stud to steady its handle-bar. A portion of the bolt may be planed or cut away so as to leave a space between it and the plate, within which space the knife-bar may be secured resting in a step along the block, and being fixed to the stud passing through the bolt or by means of two short pins (n). The knives (k) project from the cutter-bar free from the bolt, and take their bearing on the comb; they are made very strong and after the manner of triangular cutters used in mowing or reaping machines, so that there is no possibility of the teeth of the comb becoming clogged or choked by grit or other foreign substance, as is the case with knives which work by pressing or squeezing action against the comb and thus break the teeth.

"A friction-plate or washer and nut is finally placed over each stem of the slots, so that the adjustment of the knife-bolt may be regulated. The knife-bar being thus separate and distinct from the handle, it may easily be removed and another cutter applied to avoid loss of time in sharpening.

"In this apparatus no bearings are made dependent on screws set in plates, and which are so liable to become loose or broken by the undue pressure exerted on them. In place of such bearings the bearings and fulcrum are taken from stems of great strength, which cannot get out of order or be broken by any work to which the apparatus may be subjected." Then follows a detailed description of the drawings, and a paragraph telling the advantages of the instrument, its action being described thus:

"As the reaping-machine divides the stalk, so also this instrument takes away the desired extent of hair by the simple to-and-fro motion of the angular cutters in conjunction with the protecting and guiding comb."

The claiming paragraph recited that the inventor did not restrict himself to precise details, which might be modified :

"For example, the angles of the cutters, their size, and number may be varied, and also the number of teeth in the comb and the dimensions and strength of the apparatus may be increased or diminished according to the purpose for which it may be required; but what I claim and desire to be secured to me by the herein in part recited Letters Patent is, the general arrangement, construction, and combination of parts whereby I am enabled to construct an apparatus for clipping or shearing horses and other animals in such manner that the apparatus may be adjusted to numerous angles or positions to suit the varying surface of the animal, and whereby the shearing or clipping may be regulated to the exact extent required without shaving the hair or wool too closely and without injuring the animal, leaving a smooth surface without marks, the apparatus being capable of being taken to pieces and adjusted for sharpening or renewing the cutter-bar, or for other purposes, all substantially as herein specified and shown."

The appellant Clark was a manufacturer of horse-clippers. All previous ones made on similar lines failed owing to the studs, screwed into a thin base-plate, working loose. He devised a new clipper, getting rid of that and other difficulties.

The respondent, Adie, was a licensee of Clark under a patent of Clark's. Adie copied Clark's improved machine, which was not made in accordance with Clark's patent. Clark found on inquiry that Grayson's patent was in existence, and thought that some of his improvements were infringements of Grayson's. He thereupon bought Grayson's patent.

Clark then, as assignee of Grayson's patent, filed a bill in Chancery to restrain Adie from infringing it, and prayed other relief.

It was proved at the trial that Clark's clipper was an undoubted improvement and success; also that none made under Grayson's specification had been commercially used.

The alleged infringement consisted in the use or combination of four elements-the fixed stems, the nuts and washers to adjust the friction, the arching of the cutter-plate (as shown in Fig. 2), and the mode of moving the cutter-plate in the true line of cutting.

At the trial it was held by Bacon, V.C., that the patent was valid, and that the respondent had infringed.

On appeal the decree of the Vice-Chancellor was reversed on the grounds that the whole machine consisted of certain improved parts, that the arching of the cutter-bar was no part of the invention, which really consisted in the angular knives and comb combination, the adaptability of the handle, and the improvements making the cutter-bar more easily removed and replaced.1

On appeal to the House of Lords.

Held, that on the true construction of the specification the inventor claimed the horse-clipper as a whole combination, and that there was no claim for any subordinate combination such as the alleged infringement.

Notes.

The judgments of Lord Cairns, L.C., p. 320, and Lord Hatherley, pp. 328, 329, have been referred to as authority for the proposition that a patentee may claim a subordinate combination in addition to the whole combination of which it forms a part, but at the risk of invalidating the patent should the claim for the subordinate combination be invalid: Cropper v. Smith (per Cotton, L.J.), 1 R. P. C. 87; Moore v. Bennett, 1 R. P. C. 137; Webb v. Kynochs (per FitzGibbon, L.J.), 15 R. P. C. 555; Chamberlain v. Bradford, 17 R. P. C. 507.

The judgment of Lord Cairns, L.C., was quoted at length in Rowcliffe v. Morris, 3 R. P. C. 25, to show that there was no claim for a subordinate

1 All the foregoing summary is compiled from the specification and original cases and joint Appendix used in the House of Lords.

combination, and that the facts of the two cases being similar, the above decision applied.

Lord Cairns, L.C., pointed out in his judgment that in dealing with combination claims it is assumed that the parts are old (Wenham Co. v. May, 4 R. P. C. 308), and the difficulty in dealing with inventions of new combinations of old elements (Proctor v. Bennis, 4 R. P. C. 339).

The invention patented was not the clipping, but the particular machine described: Vorwerk v. Evans, 7 R. P. C. 171.

The passage (on p. 320) of Lord Cairns's judgment dealing with the modes in which a combination claim may be infringed has very often been judicially quoted:-Sugg v. Bray, 2 R. P. C. 233; Procter v. Bennis, 4 R. P. C. 345, 361; Ellington v. Clark, 5 R. P. C. 140; Peckover v. Rowland, 10 R. P. C. 239; Muirhead v. Commercial Cable Co., 12 R. P. C. 63 ; Incandescent Gas Light Co. v. De Mare, 13 R. P. C. 331, 571, 579; Presto Gear Case Co. v. Simplex, &c., 15 R. P. C. 643. To the like effect James, L.J., in the Court below, was quoted (10 Ch. Ap. 674) in Thomson v. Moore, 6 R. P. C. 443, 446; Incandescent Gas, &c. v. De Mare, 13 R. P. C. 331.

It has been supposed that the patent in Clark v. Adie was "not supported" (Proctor v. Bennis, 4 R. P. C. 345), and that the specification was "insufficient" (Webb v. Kynochs, 15 R. P. C. 555). Both opinions are erroneous, the sufficiency of specification and validity of the patent were never really in dispute, nor was it suggested that the inventor failed to make a sufficient claim to his invention. What was "not supported" was the argument of counsel that the specification included a claim for the subordinate integer of the combination which the defendants had adopted; and the "insufficiency" was the insufficiency of the claims to include the subordinate integer as a separate invention.

1877. DUDGEON V. THOMSON, 3 App. Ca. 34.

Construction of Amended Specification-Extent of Claim.

A patent (No. 699 of 1866) was granted to G. T. Bousfield for an invention (communicated by the plaintiff, R. Dudgeon, from abroad) for "improvements in apparatus for expanding boiler-tubes." The specification

was amended in 1875 by the inventor, as assignee of the patent.

The specification originally contained a description of methods of expanding the ends of boiler-tubes to make their fittings steam-tight; (1) those in which there was a direct rubbing action of a tapering plug upon the metal of the tube, and (2) those in which the plug had no direct action on the tube, but only rolling contact with the rollers. The first class of these methods, a cutter, ratchet-handle, and screw-feed, were all disclaimed.

The specification commenced with a description of the object of the invention" to expand the tube by rolling the metal by the application of