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DAMAGES, MEASURE OF.

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1. Principles on which damages should be assessed discussed.— Patent.-Action for infringement.—Inquiry as to damages.—Measure of damages. An inquiry as to damages having been ordered in a judgment by consent in an action for infringement of a Patent relating to bicycle tyres, and the Master having made his certificate, the Defendants moved to reduce the damages found by the Master. They contended that the evidence showed that the damages ought not to be assessed on the basis that the orders given to them for tyres would have gone to the Plaintiffs, inasmuch as the infringing tyres had been bought for second-grade bicycles, and that the Plaintiffs' tyres would not have been fitted to such machines, but that the Plaintiffs were only entitled to damages on the basis that the orders would have gone to the licensees of the Plaintiffs, from whom the Plaintiffs would have been entitled to royalties. Held by WILLS, J., that the contention of the Defendants was correct, and that the damages must be reduced accordingly. The Plaintiffs appealed.-Held, by the Court of Appeal, that the proper measure of damages was the actual loss caused to the Plaintiffs, and that the sum awarded by WILLS, J., correctly represented this loss. The appeal was dismissed with costs. THE PNEUMATIC TYRE CO., LD. v. THE PUNCTURE PROOF PNEUMATIC TYRE Co., LD., p. 209. 2. "I will first consider what is the true principle upon which in such a case "the damage is to be assessed. No doubt the Defendants are to be "treated as wrongdoers. They have done something which they are "not entitled to do; but before the Plaintiffs are entitled to recover, even as against a wrongdoer, they have to prove damage to them"selves. All that can be said in the case of a man who is a wrongdoer "is that when the damages come to be considered juries, and courts "where they are performing the functions of juries, deal with them, "and commonly and usually deal with them, with a more or less "liberal hand; but still the question that must be proposed to a jury or to a Judge is, what is the damage which in such a case as this "the Plaintiffs have sustained? It seems to me that, applying that principle to the facts of this case, the Plaintiffs are entitled to be compensated for the injury that they have suffered by reason of "what the Defendants have done, and wrongfully done; and in such a case as this, or a case somewhat like this, the damage would be properly divisible under these two heads: What injury has been "done to the Plaintiffs by reason of their article being shoved out of "the market, or, to use the expression, I think, of Lord Watson, "shouldered out of the market'?-to what extent has their trade "been injured?--and if the case were one in which the infringing "articles were put forward under circumstances in which it might "affect the reputation and character of the Plaintiffs' business that "would also, in my opinion, be a proper subject to be considered; "but in the present case no allegation of damage under that head has "been presented or suggested. It has been said that the principle ought to be the principle of what the Defendants would have had to pay for permission to do the thing which unauthorisedly and wrongfully they did. For the purposes of this case it seems to me to be "enough to dispose of that argument by saying that that suggestion can have no place in this inquiry, because, as was stated before the "Master, and repeated by the learned Counsel here, this is not a case "in which the Plaintiffs ever have granted, or, so far as their present "intentions are concerned, now intend to grant, licences at all; and

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DAMAGES. MEASURES OF-cantinued.

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certainly it would be an inquiry impossible to embark upon with any hope of success, even if it were an inquiry justified by the facts, "as to what figure the Plaintiffs might have been disposed to fix in "order to give to the Defendants liberty and license to manufacture "these 1738 tyres. I should like to say in connection with the class "of cases that have been so much referred to, that it is quite con"ceivable that in cases where there is a commercial known standard "of license for the manufacture of a particular article-and particularly "in the case where the Patentee is not himself a manufacturer, but "makes his profit simply by the granting of licenses-the measure of damage may in such cases be the cost of the license. It may be; "but I think, upon an examination of all these cases, it will be found "that underlying the measure of damage there is the assumption that, "if it had not been that the particular Defendant manufactured the "particular things, then that those particular things would have "been manufactured by the Plaintiff or his licensees." Per LORD RUSSELL, C.J. PNEUMATIC TYRE CO., LD. v. PUNCTURE PROOF PNEUMATIC TYRE CO., LD., p. 212.

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DISCONFORMITY. See VARIANCE.

EVIDENCE.

1. Evidence which did not attack the validity of a patent held to be admissible without Particulars of Objections, even though the scope of the Patent was thereby narrowed; and evidence of common knowledge of this character held to be material and admissible. A. APPLEBY'S TWIN ROLLER CHAIN, LD. v. ALBERT EADIE CHAIN, LD., p. 325.

2. In an action for infringement by breach of a limited license, where it was not proved that the Defendants threatened to continue infringing, held, that evidence of acts subsequent to the date of the writ was inadmissible. WELSBACH INCANDESCENT GAS LIGHT CO., LD. v. DOWLE AND THE LONDON AND SUBURBAN MAINTENANCE Co., p. 391.

GRANT OF PATENT.

Construction of Grant to two persons. Held, that the interest of the Patentees was joint and passed by survivorship.-Construction of grant.-Grant to two persons.-Nature of interest. -Construction of agreement. In 1882 Letters Patent were granted to L. G. and J. D. G., their executors, administrators, and assigns, and in 1883 they entered into an agreement under seal with a Company by which they agreed to sell this and other Patents to the Company, and the agreement, after providing for assignments by the vendors to the Company, stipulated that "such assignments respec"tively should contain a covenant by the said vendors" relating to the validity of the Patents, "and also such other covenants or "provisions as may be reasonably required by the said Company "for giving effect to the sale hereby agreed." L. G. having died, the Company brought an action against J. D. G. and the administra

GRANT OF PATENT-continued.

trix of L. G. claiming an assignment of the Patents and damages for the breach of the agreement. The action as against J. D. G. was settled.-Held, that the interest of the Patentees under the Patent was joint, and passed by survivorship to J. D. G.; and that the Company could not require any covenant from the administratrix of L. G., and was not entitled to any relief against her. THE NATIONAL COMPANY FOR THE DISTRIBUTION OF ELECTRICITY BY SECONDARY GENERATORS, LD. . GIBBS, p. 339.

GRANT OF PATENT, OPPOSITION TO.

1. A Specification ought to be so framed by the Applicant in the first instance that a Patent may properly be granted, and when a Specification is so framed that a Patent cannot be granted without amendment, it is not a matter of course that the necessary amendment will be allowed to be made.— Opposition to grant of Patent on the ground that the invention had been already patented on application of prior date.-Patent refused. -Leave to file declarations applied for and refused.-Appeal by Applicants.-Held, on appeal, by the Law Officer, that the Chief Examiner's decision be affirmed. THOMAS AND PREVOST'S APPLICATION FOR A PATENT, p. 69.

2. Opposition to grant.-The Comptroller ordered a reference by name and number to Opponent's Specification.-On appeal, the Solicitor-General affirmed the Comptroller's decision. In an opposition to the grant, extensive amendments are not to be encouraged. GARNETT'S APPLICATION FOR A PATENT, p. 154.

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3. In an opposition to the grant of a Patent extensive amendments are not to be encouraged.-"When an Applicant comes "forward with a Specification, I think it is his duty to frame the "claims in accordance with the substance of the matter described in "the Specification, and it would be very unsatisfactory if it were supposed that an Applicant might cast his net as wide as he pleased "in the claims, and then when he came to have the Patent sealed, saysThis is a case for amendment, and I desire it should be "'amended.' Amendments may be made in these cases in the "discretion of the Comptroller or Law Officer, but they are to be "made somewhat sparingly." Per FINLAY, S.-G., GARNETT'S APPLICATION FOR A PATENT, p. 156.

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4. Persons entitled to be heard before the Comptroller-General in opposition.--Opposition to grant. Application for mandamus. Rule absolute refused. - Appeal dismissed. Patents, &c. Act, 1883, sections 4, 5, 11, 18, 25, 26, 69, 90, and 95.-Patents, &c. Act, 1888, section 4. M. having applied for a Patent, T. gave notice of opposition to the grant on the ground that the alleged invention had been patented in this country on applications of prior date. At the hearing before the Comptroller-General an objection was taken that the Opponent had no interest in the prior Patents, and was therefore not entitled to be heard. After a hearing the

GRANT OF PATENT, OPPOSITION TO-continued.

Comptroller applied to the Law Officer for his direction under section 95 of the Patents, &c. Act, 1883, and the Law Officer gave a direction that, if the Opponent had no interest, he ought not to be heard. T. obtained a rule nisi for a mandamus against the Comptroller-General directing him to hear and determine the matter of T.'s opposition. On a subsequent day, the matter having been argued.-Held, by GRANTHAM, J., and KENNEDY, J., that the question whether T. was entitled to be heard was under the Patents, &c. Act, 1883, sections 11 and 95, a question to be determined by the Law Officer, and that the rule must be refused. T. appealed.-Held, on appeal, that the direction of the Law Officer having been taken by the Comptroller under section 95 of the Patents, &c. Act, 1883, no mandamus could be granted against the Comptroller; that under section 11 of the Act the Law Officer is the final authority to decide whether a person is entitled to be heard, whether before the Comptroller or the Law Officer, in opposition to the grant of a Patent; and that according to the proper construction of that section a member of the public having no interest is not entitled to oppose the grant of a Patent on the ground that the invention has been patented in this country on an application of prior date. Per SMITH, L.J., that under section 18, subsection (4), the Law Officer is also the final authority to decide whether a person is entitled to be heard before the Comptroller or the Law Officer in opposition to a request for leave to amend a Specification. R. v. COMPTROLLERGENERAL OF PATENTS, ex parte TOMLINSON, p. 233.

5. A member of the public is not entitled to oppose the grant of a Patent on the ground that the invention has been patented in this country on an application of prior date if such member has no interest in such prior Patent. R. v. COMPTROLLER-GENERAL OF PATENTS, ex parte TOMLINSON, p. 233.

6. An opponent to a grant, who desires his Patent to be construed as being a master Patent and for a pioneer invention, must bring the state of knowledge before the Comptroller by evidence. At the hearing of an opposition to the grant of a Patent on the ground that an invention had been patented on an application of prior date, the Chief Examiner ordered the insertion of a general disclaiming clause. The Opponent appealed.-Held, on appeal, by the Law Officer, that the Chief Examiner's decision be affirmed. An opponent to a grant, who desires his Patent to be construed as being a master Patent and for a pioneer invention, must bring the state of knowledge before the Comptroller by evidence. SOUTHWELL AND HEAD'S APPLICATION, p. 361.

7. Proof that a person who wishes to oppose the grant of a Patent may be damnified by the application entitles such person to oppose the grant, although he may have no interest in the Patents set up in opposition to the grant. -Opposition to grant.-Persons entitled to be heard before the Comptroller-General.-Patents, &c. Act, 1883, section 11. M. applied for a Patent, the grant of which was opposed by T. on the ground that the alleged invention had been patented in this country on two applications of prior date-viz., one in 1879 and the other in

GRANT OF PATENT, OPPOSITION TO-continued.

1897. T. had no legal or beneficial interest in the Patents which were granted upon such applications. The Comptroller required evidence as to the facts, and it appeared that T. began to work under one of the prior Patents, but being unable to continue without a license he stopped working, and under a search discovered the Patent of 1879. He desired in his opposition to set up the contention that the invention, the subject of the present application, was identical with that described in the Patents of 1879 and 1897. The Comptroller decided that the Opponent had no right to be heard in opposition to the grant. On appeal, the Law Officer held that on the evidence the Opponent was entitled to be heard. A bona fide attempt to carry out the invention sought to be protected by a person who desires to oppose a Patent, and proof that he may be damnified by the application which he desires to oppose, entitles such person to oppose the grant. MEYER'S APPLICATION, p. 526.

IMPROVEMENT.

The

A Patent for improvements in oil engines held to be an improvement on a Patent for gas engines within the meaning of a certain agreement.-Action for royalties.Conflicting claims to Patent.-Construction of agreement.-Improvement.-Claim for rectification of agreement. In 1893, D. agreed to sell to The Valveless Gas Engine Syndicate, Ld., certain Patents and the benefit of all inventions which D. might then have made, or be entitled to, or which he might thereafter make, being for improvements upon the inventions the subject of any of the Patents, or applications for the same, thereby agreed to be assigned. Patents comprised two Patents of D., of 1891, for "Improvements "in gas engines and "Improvements in gas or vapour engines" respectively, and the benefit of an application by C. in 1892 for a Patent for "Improvements in gas engines." In 1895, Letters Patent were granted to D. for "Improvements in oil engines." Actions were brought by D. against the Syndicate and others, and by the Syndicate against D., in both of which the question arose whether the Syndicate was entitled to the Patent of 1895. In the course of the trial D. was allowed to raise a claim to have the agreement rectified; but in the view taken by the learned Judge it became unnecessary to decide the question so raised.-Held, by BIGHAM, J., that the invention transferred by the agreement of 1893 was one by which the Patentee dispensed with a number of valves in gas and vapour engines, and that the 1895 Patent was for an invention which was a method of working the engine to which the 1891 Patent related by petroleum instead of by gas, and that it was not an "improvement" on the Patents transferred within the meaning of the agreement.-Held, on appeal, by SMITH and COLLINS, L.J.J., (RIGBY, L.J., dissenting), that the 1895 Patent was for an improvement, but that the case must go down for the trial of the point as to rectification, the costs of the appeal to be the Syndicate's in any event, the costs of the first and second trials to be in the discretion of the Judge. On the further hearing, BIGHAM, J., allowed the claim for rectification, with the costs of the second trial, but gave the Syndicate the costs of the first trial. THE VALVELESS GAS ENGINE SYNDICATE, LD. v. DAY, p. 97.

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