The Dunlop Pneumatic Tyre Company, Ld., and Others v. The New Ixion Tyre and Cycle Company, Ld.

Judgment was reserved and delivered on the 25th of November 1898. LINDLEY, M.R.-These three appeals relate to two patents and to their alleged infringements. Welch's patent is said to be infringed by the Defendants' tyre J.H., and Bartlett's patent by their tyre J.H.. Mr. Justice Kekewich has

5 decided against the Plaintiffs as to J.H., and in their favour as to J.H.1, but as to that he has given them a more limited injunction than they desire to obtain. The essential feature of Welch's patent (No. 14,563 of 1890) so far as we have now to consider it, consists of a combination of rubber, canvas, and wires, making one endless tyre with two circular endless unstretchable wires, one 10 running through each edge of the rubber. This tyre with these wires is placed saddle-wise over, and is supported by the wheel or what is put over it to carry the tyre. Welch gives various forms and sections of his tyre, and these forms and sections vary according to what the tyre is intended to cover. It must be put over a convex surface of some sort or the wires will not keep the tyre on. 15 But the wires themselves do not require to be supported by, or to be tucked under, or to be pressed upon by any other part of the bicycle wheel or anything whatever. This is plain from Figures 1 to 14 in Welch's drawings. In Figure 15, where the tyre is shown applied over an inflated air tube put into the grooved circumference of the bicycle wheel, Welch's tyre is not kept in 20 its place by the sides of the metallic groove of the wheel, although it is protected by them from injury by stones and dirt. This was clearly proved in a former action against the Pneumatic Tyre Company, and was not disputed on the present occasion. The wires themselves grip nothing. They are endless and unstretchable, and when on they form circles of smaller diameter than the 25 circle formed by what the tyre covers. Although the wires grip nothing they make the rubber between them and whatever is between that and the metal rim grip that rim very securely. Whether the tyre be thick, as in Figures 1 to 14, or thin, as in Figure 15, the tyre holds itself on if placed over a convex support having a greater diameter than its own wired edges. But if the wires 30 are cut the tyre comes off. The invention of this novel form of tyre was Welch's discovery, and its essential feature is what I have above described. The Defendants are said to have infringed this invention by the tyre referred to as J.H.. At first sight it is difficult to see any resemblance between J.H., and Welch's tyre, except that both are intended to be put over inflated tubes 35 placed in the metal grooves of bicycle wheels. J.H., is a band of rubber with two ends. The band is not endless; it can be laid out straight on a flat surface like an ordinary straight, flat piece of cloth. There are no endless wires in its edges, but two flat, straight strips of metal are enclosed in canvas bags at the edges of the rubber band. Such a tyre as this is absolutely useless for any such 40 bicycle wheels as are shown in Figures 1 to 14 in Welch's patent. But it is applicable to such as are shown in Figure 15, i.e., to what are called pneumatic tyre bicycles. The Defendants' tyre is put over the pneumatic air tube, the metal edges are tucked under it, and the tyre is made so long that when in its place its ends overlap. Then when the tube is inflated, these strips of metal 45 are pressed into the grooves of the wheel and the overlapping ends are drawn a little more apart longitudinally, still leaving an overlap of some inches, and, the ends being pressed tight one on the other, the whole tyre is kept securely in its place.

The experiments made by cutting the metallic portions of the two tyres are, 50 in my opinion, more important than any other part of the evidence in the case. If Welch's continuous wire is cut his tyre is useless in all its applications. But if the strips of metal in the Defendant's tyre J.H., are cut, although the tyre is not so good as when they are uncut, the tyre does not come off. The exhibits J.H., and D.C.. and the evidence relating to these, and Boult's experiment,

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The Dunlop Pneumatic Tyre Company, Ld., and Others v. The New Ixion Tyre and Cycle Company, Ld.

make this perfectly plain. I am quite unable to come to the conclusion that the Defendants' tyre J.H., is an infringement of Welch's patent. No pressure on the wires is necessary to keep Welch's tyre on; but without pressure on the metal strips in J.H., the Defendants' tyre is of no use at all. The principle of action is totally different in the two cases. J.H., 5 will not work unless the metal strips are tucked under the inflated tube, and are kept in their places by the pressure of that tube upon them. Welch's tyre required no such pressure; it is based upon a fundamentally different idea. It was contended by counsel for the Plaintiffs that, notwithstanding the above differences, the Defendants' tyre when on, and in a condition to work, and 10 when in actual use, did form a tyre with endless, unstretchable wires, and was, therefore, covered by Welch's Specification. It was contended that the shape of the wires-i.e., whether they were round or flat-was immaterial, and, that whether their ends were kept together by welding, by screws, by hooks, or by being made to overlap, and by being pressed together so that they could not 15 slip after the tube was inflated, was also immaterial. But, supposing that when in use the ends of the Defendants' tyre are kept together, and that the tyre then becomes unstretchable, it does not at all follow that the Defendants make use of Welch's invention. They will produce the same result, but they will do so in a totally different way, and if this is the truth they will not infringe his 20 patent. A great deal of evidence was gone into on both sides to ascertain with precision what forces, tensional or other, really kept the Defendants' tyre on. Much discussion took place with respect to the Defendants' theory that their tyre was kept on by what was called conical action, and by forces different from those brought into play when Welch's tyre is used. The discussion is interesting 25 and instructive, and it is extremely difficult to ascertain exactly what these forces are and how they operate. But, even if the Plaintiffs are right, and if there is some circumferential tension in the Defendants' tyre as well as in Welch's tyre, as the experiment with D.C.16 apparently shows, and as Mr. Swinburne admitted there was, the existence of such a tension is 30 only one circumstance for consideration. We again come back to the main question-Have the Defendants made or used Welch's invention? My answer is, No. As I have already pointed out the two tyres are essentially different, although they both produce the same result when applied in one particular way. Another question was raised by the Defendants, which it 35 is necessary to notice, viz., that Welch's patent was invalid because the application of it to his Figure 20 went beyond anything disclosed by his Provisional Specification. This point was raised and decided in favour of the Plaintiffs by Mr. Justice Wills in the action brought by the Plaintiffs against another company. This Court considered the Provisional Specification of 40 Welch's Patent very carefully with reference to Figure 15 in the action against the East London Rubber Company, and it is unnecessary to repeat what was there decided. Figure 20 was not then under consideration. But having now attended to it, I think Mr. Justice Wills' decision was quite correct, and I cannot usefully add to what he said. To hold that Figure 15 is within the 45 Provisional Specification and Figure 20 outside it would be quite irrational. Both the Plaintiffs' Appeal and the Defendants' Appeal fail, so far as they relate to Welch's Patent. The patent is good, but the Defendants have not infringed it. The suggestion that J.H.2 was an infringement of Bartlett's Patent was definitely abandoned, and nothing more need be said about it. 50

I pass now to Bartlett's Patent No. 16,783 of 1890, and its infringement by the Defendants by the exhibit J.H.1. Notwithstanding the strips of metal in the edges of the tyre J.H.1, which are not found in Bartlett's Patent, this tyre J.H.1 is obviously an infringement of that patent. The Clincher action, which

The Dunlop Pneumatic Tyre Company, Ld., and Others v. The New Ixion Tyre and Cycle Company, Ld.

is the essential feature in Bartlett's patent, is clearly utilized in J.H., in the way described by Bartlett. This so plain that we did not require the assistance of the Plaintiffs' counsel to arrive at the above conclusion. It is sufficient to say that I concur with the learned judge in his decision on this part 5 of the case. But the Plaintiffs complain of the limited form of the injunction which the learned judge has granted them. He has not restrained them from infringing Bartlett's patent generally, but only from infringing it by making tyres like J.H.1. It appears that only 80 tyres like J.H.1 were ever made, J.H.1 being replaced by J.H.2. Under these circumstances I see no reason for altering 10 the form of order which Mr. Justice Kekewich has considered sufficient for the protection of the Plaintiffs. It is sufficient for every purpose except that of advertising their success to the full extent they desire. But this is a matter which it is no part of the duty of the Court to facilitate. The net result of the three appeals is that they must all be dismissed with costs with the usual 15 direction for setting off one set against the others. One order will suffice for all three appeals.

CHITTY, L.J.-I concur in the judgment of the MASTER OF THE ROLLS, which I have had an opportunity of reading and carefully considering. On the main point, whether the Defendants have infringed Welch's Patent, I think that, 20 notwithstanding the able and highly interesting argument of Mr. Moulton, the Plaintiffs have failed to establish their case. The flat steel bands with their slightly raised bead on the margin which the Defendants employ in J.H., do not, when in position, serve the same purpose or perform the same function as the endless unstretchable wire in Welch's Patent. The purposes and functions 25 are fundamentally different.

VAUGHAN WILLIAMS, L.J.-I agree. In the appeal in the infringement action in respect of Welch's Patent, I agree because the Plaintiffs, on whom the onus is to prove the infringement, have not satisfied me that there was an infringement, but I wish to add that the Defendants' evidence does not satisfy 30 me affirmatively as to the forces which keep their cover in position when the tyre is in the condition in which it is ordinarily sold by them.

Ellam v. Martyn & Co.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE ROMER.-November 18th, 1898.

IN THE COURT OF APPEAL.

Before THE MASTER OF THE ROLLS, and LORDS JUSTICES CHITTY and VAUGHAN WILLIAMS.-December 7th, 8th, and 12th, 1898.

ELLAM v. MARTYN & Co.

5

Patent.-Threats action.-Injunction granted.-Alleged breach.-Motion for committal.-Threats by other persons published by Defendant as their agent.Defendant ordered to pay costs.-Appeal allowed, but no costs given to Defendant.-Patents, &c. Act, 1883, section 32.

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An injunction having been granted in a threats action restraining the Defendants from publishing statements that, or to the effect that, injunctions had or an injunction had been granted against the Plaintiffs restraining them from infringing certain Letters Patent, or any other Letters Patent, and also from threatening the Plaintiffs or any of the Plaintiffs' customers with any legal 15 proceedings or liability in respect of the manufacture, sale, or purchase of a certain machine, a motion was made by the Plaintiffs to commit the Defendant D. for having broken this injunction. The Defendants had since the injunction circulated a pamphlet, on the back of which was a notice by a firm, for whom the Defendants were special agents, containing threats against infringers.

Held, by ROMER, J., that a breach of the injunction had been committed, and the Defendant D. was ordered to pay the costs of the motion. The Defendant appealed. The appeal was allowed [CHITTY, L.J., dissenting], but no costs were given to the Defendants.

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On the 8th of July 1898, James Ellam and Frederick Ellam (trading as 25 Ellam's Duplicator Co.) commenced an action against H. F. Martyn and Co.

Ellam v. Martyn & Co.

claiming an injunction to restrain the Defendants, their servants and agents, from publishing either verbally or by circular, letter, notice, or otherwise howsoever, any statements that, or to the effect that, injunctions have or an injunction has been granted against the Plaintiffs restraining them from infringing certain 5 Letters Patent, No. 12,013 of the year 1887, granted to one Herbert John Allison, or any other Letters Patent. And also an injunction to restrain them from threatening any of the Plaintiffs' customers with any legal proceedings or liability in respect of the manufacture, sale, or purchase of the duplicating machine known or described by the Defendants as the genuine Edison 10 Mimeograph, and for damages and costs.

15

On the 22nd of July 1898, on a motion by the Plaintiffs, the hearing of which was by consent treated as the trial of the action, an Order was made by Romer, J., perpetually restraining the Defendants, their servants and agents, ir the terms asked by the writ.

On the 2nd of August 1898, notice of motion was given by the Plaintiffs that they might be at liberty to issue a writ or writs of attachment against the Defendant Thomas Henry Denny Cooke (who traded as H. F. Martyn & Co.) or in the alternative that he might stand committed to Holloway Prison for his contempt in having committed a breach of the said injunction, and that he 20 might be ordered to pay the costs of the application.

The acts of the Defendant subsequent to the injunction which were complained of by the Plaintiffs were as follows:-He had circulated amongst the customers of the Plaintiffs and others a pamphlet, which, on the top of the front of the first page, was headed "The Genuine Edison Mimeograph," and 25 bore at the foot of the same page the name H. F. Martyn & Co., with an address and the words "Special Agents for the A. B. Dick Company, exclusive Makers "for the World, under authority of Mr. T. A. Edison.” On the back of the

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pamphlet there was the following notice :-" From the office of the A. B. Dick Company, Chicago, June 24, 1896. To whom it may concern. Public Notice 30" is hereby given that we are the exclusive makers for the world of the Edison "Mimeograph, and all supplies for same, under our authority so to do through "the inventor, Mr. Thomas A. Edison. We further declare it to be our inten"tion to prosecute all infringers of our patents. So-called Edison Mimeographs "and supplies made by other parties we stamp as fraudulent imitations of goods 35" made by us, as such imitation stuff is not made with any authority either "through us or through Mr. Edison. A. B. Dick Company."

The motion was heard by Romer, J., on November 18th, 1898.

T. Terrell, Q.C., and A. J. Walter (instructed by Pritchard, Englefield and Co.), appeared for the Plaintiffs; Moulton, Q.C., and J. C. Graham (instructed 40 by Ingle, Holmes and Sons), appeared for the Defendants.

T. Terrell, Q.C., opened the motion for the Plaintiffs.

Moulton, Q.C., for the Defendant, submitted that the action was under section 32 of the Patents, &c. Act, 1883, being brought to restrain threats issued by the Defendants claiming to be patentees, and that the section was restricted 45 to people claiming as patentees. The Defendants have not since the injunction, claiming as patentees, threatened anybody with any legal proceedings or liability, and that is what the injunction restrained; it is in the usual form under the section. [ROMER, J.-The injunction is general.] Circulating a document containing a threat by another person is not threatening within the 50 meaning of the injunction. [T. Terrell, Q.C.-The action was under the common law right as well; we charge them with bad faith.] Messrs. Dick are not restrained, nor their agents, but the threats are those of Messrs. Dick. [Wren v. Weild, L.R. 4 Q.B. 730 and Halsey v. Brotherhood, L.R. 19 Ch. D. 386 were referred to in the course of the arguments.]

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ROMER, J.-I do not propose to make any Order, except that the Respondent