THREATS (ACTION TO RESTRAIN)—continued.

construction of chains for velocipedes, mainly consisting of making rivets by a particular process. În 1898 they published in various newspapers a letter alleging in effect that the A. Company were infringing their Patent, and that they intended to take steps against this infringement. After some correspondence, the A. Company commenced an action against the E. Company for an injunction and 2,5007. damages, raising a case under the 32nd section of the Patents, &c. Act, 1883, and also alleging that the letter was a libel on them in their trade or business. The Defendants delivered a defence and counterclaim, the counterclaim being for an injunction and other relief in respect of infringement of the said Patent. The action was tried before a Judge and a Special Jury, and, in answer to the questions put to them by the Judge, the Jury found (1) that the Plaintiffs, the A. Company, were not infringing the Defendants' Patent; (2) that the Defendants did not begin an action to enforce their claim with due diligence; (3) that the Defendants' threats were made with a view to injure the Plaintiffs; (4) that the Plaintiffs were entitled to 5007. damages for the threats and 51. damages for the libel. ALFRED APPLEBY'S TWIN ROLLER CHAIN, LD. v. ALBERT EADIE CHAIN, LD., p. 318.

3. Motion for interlocutory injunction refused on the ground that an action had been commenced within the meaning of section 32 of the Patents, &c. Act, 1883.-Action to restrain threats.-Motion for interlocutory injunction. -- Infringement action pending.-Motion dismissed. Patents, &c. Act, 1883, section 32. In June 1898, the owners of certain Patents threatened proceedings for infringement of the same by the manufacture and sale of instruments known as gramophones. The Gramophone Company, the manufacturers of these instruments, subsequently complained of threats by the Patentees, but no proceedings were then taken by either party, and no further threats were issued until after the commencement, in January 1899, of an infringement action. The Gramophone Company then commenced a threats action, and moved for an interlocutory injunction, alleging that it was clear they had not infringed and that the Patent action was not bona fide, and was not within the proviso to section 32 of the Patents, &c. Act, 1883.-Held, that the first question was one for the trial, and that the proviso to Section 32 applied. The motion was refused. BERLINER AND OTHERS v. THE EDISON BELL CONSOLIDATED PHONOGRAPH Co., LD., p. 336.

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4. "It has been decided (and I think I decided it myself) that it is not necessary that an action within those words should be an action actually commenced for the first time after the threats have been “issued, and if, in point of fact, there being threats now and an "action commenced after, that would be an action within this proviso, I think an action commenced immediately before threats "is equally within it. Such an action is pending. I think, therefore, "the proviso to the section applies." Per NORTH, J. BERLINER AND OTHERS V. THE EDISON BELL CONSOLIDATED PHONOGRAPH Co., LD., p. 338.

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5. Injunction granted to restrain threats. Inquiry as to damages. Threatening customers.-Defence infringement.-Aggrieved person. -Patent amended after writ.-Amended Patent held void.

THREATS (ACTION TO RESTRAIN)-continued.

Injunction.-Inquiry as to damages. The Defendant, the registered proprietor of a Patent, threatened certain customers of the Plaintiffs, and they in consequence repudiated a contract with the Plaintiffs, who commenced an action to restrain the threats. Subsequently to the commencement of this action the Defendant amended his Specification and pleaded infringement. It was contended for the Defence that the Court could not look at the unamended Specification to decide whether the threa's were justifiable or not. It was also contended that, inasmuch as the Plaintiff's had a binding contract with their customers, which they could have enforced but did not enforce, they were not aggrieved persons within the meaning of the 32nd section of the Patents, Designs, and Trade Marks Act, 1883.-Held, that the Plaintiffs were aggrieved persons within the meaning of the section, and that the Defendant's Patent as amended was invalid, and that the Plaintiffs were entitled to an injunction and an inquiry as to damages. No decision was given on the point as to whether it was necessary to consider the Specification as if it had been amended at the date of the threats. HOFFNUNG v. SALSBURY, p. 375.

UTILITY.

A Patent for improvements in tyres for velocipedes and other vehicles held to be bad for want of utility because the patented invention would not work except with the aid of subsequent discovery and invention. TUBELESS PNEUMATIC TYRE AND CAPON HEATON, LD. v. THE TRENCH TUBELESS TYRE CO., LD. AND OTHERS, p. 291.

VARIANCE.

DUNLOP

1. Disconformity alleged, but held not to be established. PNEUMATIC TYRE CO., LD. AND OTHERS v. THE NEW IXION TYRE AND CYCLE Co., LD., p. 16.

2. A Patent relating to various methods of opening and closing fanlights, &c., held to be bad on the ground of disconformity where an essential part of the combination claimed by the Complete was not found expressly or impliedly in the Provisional. ADAMS v. STEVENS, p. 225.

3. A Patent for an improved electrolytic apparatus for producing caustic soda held to be invalid on the ground of disconformity where the Provisional pointed to an apparatus for keeping mercury still and the Complete had a claim for an apparatus for keeping mercury moving.-Action for infringement. Validity. Subject-matter.- Disconformity.-Patent upheld at trial and injunction granted.-Appeal.-Patent held invalid.Appeal allowed.-Certificate as to Particulars of Objections.-Costs of copies of shorthand notes. This was an action to restrain infringement and threats of infringement of a Patent for an improved electrolytic apparatus for producing caustic soda or caustic potash from suitable salts by a continuous process. The Defence denied

VARIANCE-continued.

infringement and alleged that the Patent was invalid, for the reasons that the invention was not new, not useful, and not the proper subject-matter for Letters Patent, and also for the reason that the Complete Specification described and claimed inventions not comprised within the Provisional Specification.-Held, at the trial, that there was sufficient invention to form subject-matter for Letters Patent, that there was no disconformity between the Provisional and the Complete Specifications, and that the Defendants had infringed. A perpetual injunction was granted to the Plaintiffs, together with the costs of the action. The Defendants appealed.-Held, on appeal, by THE MASTER OF THE ROLLS and RIGBY, L.J., that the Patent was invalid on the ground of disconformity, and by RIGBY, L.J., for want of subject-matter also.-Held by VAUGHAN WILLIAMS, L.J., that the Patent was valid and had been infringed. The appeal was allowed with costs. CASTNER-KELLNER ALKALI Co., LD. v. THE COMMERCIAL DEVELOPMENT CORPORATION, LD., p. 251.

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4. A Patent for improvements in pneumatic tyres for velocipedes and other vehicles held to be bad on account of disconformity because the Complete Specification included a tyre in which there was no overlapping of rubber on rubber.-Action for infringement.- Disconformity. - Insufficiency of directions. -Utility.- Patent held invalid.-Action dismissed. In 1892 Letters Patent were granted to S. for "Improvements in pneumatic "tyres for velocipedes and other vehicles." In the Provisional Specification the Patentee stated that he preferred to employ an endless band made of caoutchouc and cloth and moulded in the form of a tubular ring; after describing enlargements at the edge of the lower margin and at a convenient distance from the edge of the upper margin and stating that these enlargements lay in a recess at the bottom of the rim, the Specification continued as follows:"When the tyre is inflated, the upper margin is pressed against the "lower margin, an air-tight joint resulting. The enlarged parts engage with the shoulders at the bottom of the rim, and thereby "limit the expansion of the tubular band." It also stated: "Instead, however, of using a single band, two bands may be employed. "The outer band would then have enlarged edges for engaging with "the shoulders at the bottom of the rim, the inner band lying "between the enlarged edges and having lateral flaps projecting over "the margins of the outer band." The Complete Specification included a form of tyre in which the lateral flaps of the second band lay underneath the margins of the first band, and also a form of tyre in which the second band was omitted, but the margins of the one band did not meet; the Specification stated that the band in this form had each of its margins forced by the direct pressure of the compressed air against the bottom of the rim, and that the head of the spokes lay under the margins, and that no air could escape past the holes in the rim. In 1897 the owners of S.'s Patent brought an action for infringement of the same against a company, who set up numerous defences, including disconformity, want of utility, insufficiency of description, and anticipation by the publication of a letter by B. in a cyling paper in 1890. In this letter B. suggested a tyre in one piece consisting alternately of rubber, canvas, and rubber, all vulcanized together, and stated that he had taken out a Patent for a plan whereby the completely moulded tyre, made as above, should

VARIANCE-continued.

be cut longitudinally on the under side and provided with a nonreturn valve throughout the whole length and then the edges made up with canvas, and in that way he would be able to get at the inside and patch the hole in case of puncture. The application for this Patent was not proceeded with. The Plaintiff's contended that S. was the first inventor of a detachable circumferentially air-sealed tyre. No tyres had been made under S.'s Patent until 1896, and the tyres that had been made by the Plaintiffs during and since that year were alleged by the Defendants to have certain features not disclosed by S.'s Patent, and to owe their practicability to those features and to the employment of soft soap to produce an initial seal, soft soap not being at the date of the invention known for that purpose in connection with tyres.-Held, that the Patent was bad on account of disconformity and want of utility; on account of disconformity, because the Complete Specification included the form of tyre in which there was no overlapping of rubber on rubber, but a seal was stated to be obtained by the pressure of each of the margins of the tyre against the metal rim; and on account of want of utility, because the patented invention would not work except with the aid of subsequent discovery and invention. TUBELESS PNEUMATIC TYRE AND CAPON HEATON, LD. v. THE TRENCH TUBELESS TYRE Co., LD., AND OTHERS, p. 291.

5. Defence of invalidity of Patent on the grounds of disconformity and anticipation held to have failed.-Action for infringement.- Validity.-Disconformity. - Anticipation.-Patent upheld. -Injunction granted.-Appeals dismissed. In 1890 Letters Patent were granted to W. for "Improvements in rubber tyres and metal "rims or felloes of wheels for cycles and other light vehicles." The Pneumatic Tyre Company, in whom this Patent had become vested, brought an action for infringement against E. and S., trading as the L. Company. The Defendants, in addition to special defences and counterclaims, denied infringement, novelty, utility, subjectmatter, and that W. was the first inventor, and alleged disconformity. They alleged (inter alia) anticipation by a Specification of Burton and Shaw (No. 1412 of 1871) for "Improvements in "wheels for traction engines." Prior to the commencement of the action, W.'s Patent had been held valid in an action of The Pneumatic Tyre Company, Ld. v. Casswell (13 R.P.C. 164), in which the question of disconformity had been decided; and, before trial, the same question had been decided by the Court of Appeal in favour of the Patent in The Pneumatic Tyre Company, Ld. v. The East London Rubber Company, Ld. (14 R.P.C. 573).-Held, at the trial, that the evidence not having established different findings to those in the previous actions, the decisions as to disconformity were binding on the Court, and must be followed; also that the Patent had not been anticipated, and was good, and had been infringed. Judgment was given for the Plaintiffs upon the claim and counterclaims. A stay, except as to the injunction, was granted on conditions. The Defendants appealed against the judgment on the claim, and, in addition to the grounds of invalidity argued belów, contended also that the Patent was anticipated by Parfrey's Specification of 1861. The appeal was dismissed with costs. The Defendants appealed to the House of Lords. The appeal was dismissed with costs. PNEUMATIC TYRE COMPANY, LD., AND

VARIANCE-continued.

ANOTHER V. LEICESTER PNEUMATIC TYRE AND AUTOMATIC VALVE
COMPANY, pp. 50, 531.

6. "When once the Specification is understood by the Court, a question of "disconformity is no longer a question of evidence; it is a question of "law." Per RIGBY, L.J. PNEUMATIC TYRE COMPANY v. LEICESTER PNEUMATIC TYRE COMPANY, p. 58.

7. Where the Provisional Specification only referred to the main method of carrying out an invention, and the Complete referred also to subsidiary methods, held, that as the subsidiary methods fairly arose out of the invention referred to in the Provisional there was no disconformity. BRITISH MOTOR SYNDICATE, LD., AND OTHERS v. J. E. H. ANDREWS & Co., LD., p. 592.