The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench The Trench Tubeless Tyre Company, Ld., and Lord Robert Montagu, Sidney Pattisson, Frederick Hill, James D. Crosbie, John R. Eyre, and John Townsend Trench for infringement of the Patent, and also of Letters Patent No. 4889* of 1891, granted to George Henry Wedderman, claiming the usual relief. By 5 amendments at a later stage the parts of the pleadings relating to Wedderman's Patent were struck out. The Plaintiffs by their amended Statement of Claim alleged that they were the assignees and registered legal owners of the Patent for an invention of "Improvements in pneumatic tyres for velocipedes and other vehicles," whereof 10 J. W. Smallman was the true and first inventor, and that the Defendant Company and the other Defendants (who were directors of the Defendant Company) had infringed, and, unless restrained by injunction, intended to infringe the same. By their amended Particulars of Breaches they alleged (1) that the Defendant Company was formed for the purpose of manufacturing and selling 15 a tyre for cycles called the "Trench Tubeless Tyre," drawings of which were contained in the Defendant Company's prospectus dated the 22nd March 1897; that tyres constructed according to the said drawings would infringe the Patent, and the Defendant Company threatened and intended to make and sell tyres so constructed; that the other Defendants were directors of the Defendant 20 Company, and as such threatened and intended to commit or take part in the infringement by the Defendant Company; that the "Trench Tubeless Tyre" infringed, or would infringe, all the claiming clauses of the Specification of the Patent; (2) that the Defendant Company and the other Defendants, as directors thereof, had made and sold, or otherwise for profit dealt in, "Trench "Tubeless Tyres" constructed according to the drawings aforesaid, and had thereby infringed the Patent; but until the Plaintiff Company had obtained discovery in this action it was, and would be, unable to give particulars of such manufacture, sales, or dealings. The Plaintiff Company claimed to recover from the Defendants full compensation in respect of all their infringements 30 aforesaid. 25 The Defendant Company and the Defendants Lord Robert Montagu, F. Hill, and J. D. Crosbie by their Amended Defence (1) denied infringement; (2) alleged that the Patent was invalid for the reasons in the Particulars of Objections delivered therewith appearing. The Defendant Sidney Pattisson by 35 his Defence, in addition to the above Defences, alleged that he retired from the directorate of the Defendant Company on the 29th April 1897, before the Company began to do any work. The Defendants Eyre and Trench were not served with the writ in the action. 66 The amended Particulars of Objections delivered by the Defendant Company 40 and the Defendants joined in the same Defence alleged (1) that the alleged invention was not new-this objection applied to all the claims; the prior publications, the whole of which were relied upon as anticipating the novelty of all the claims in the Specification of the Patent, were (a) Thomas, No. 4350 of 1889; (b) Bartlett, No. 16,783 of 1890; (c) Golding, No. 19,990 of 1890; 45 (d) Scott, No. 4108 of 1891; (e) a letter by Mr. J. Boothroyd, published in the "Cyclist" of the 3rd December 1890, Vol. 11, No. 581; (2) that the said alleged invention had, prior to the date of the grant to the said James W. Smallman, formed the subject of prior grants by the Crown to one James William Galley, Frank Thomas Lighton, and Cornelius Mundy in Letters Patent No. 15,344 of 50 1891, 20,730 of 1891, and 2386 of 1892 respectively, and by reason of such prior grants the Crown was unable to make any valid grant of a Patent in respect of the invention forming the subject-matter of each and every of the claims in the Patent, and the Patent was by reason thereof invalid; (3) that the alleged invention was not the proper subject-matter of valid Letters Patent-this 55 objection applied to all the claims; (4) that the alleged invention was not useful-this objection applied to all the claims; (5) that the final Specification The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench did not sufficiently describe or ascertain the nature of the alleged invention, nor the manner in which the same was to be performed; the Defendants proposed to allege thereunder that no practical directions were contained in the Specification enabling the invention to be put into practice, and that the Patent was therefore invalid; (6) that the final Specification of the Patent 5 described and claimed an invention larger than, and different to, the invention the nature of which was described in the Provisional Specification. The Defendants raised this defence against Fig. 3, and the claims relating thereto, and against all claims and figures relating to the parts in the Complete Specification from page 2, line 18, to page 2, line 44.* The Particulars of Objections delivered by the Defendant Pattisson were identical with the above. The most important parts of Boothroyd's letter referred to in the Particulars of Objections will be found quoted in the judgment. 10 T. Terrell, Q.C., Astbury, Q.C., and W. Coldridge (instructed by Field, 15 Roscoe & Co., agents for Smith, Pinsent & Co., of Birmingham) appeared for the Plaintiff's; Moulton, Q.C., Bousfield, Q.C., A. J. Walter, and J. A. Buckmill (instructed by Phillips and Boyle) appeared for the Defendants other than the Defendant S. Pattisson; G. E. S. Fryer (instructed by Gardner and Hovenden) appeared for the Defendant S. Pattisson. 20 Terrell, Q.C., opened the Plaintiffs' case.-The subject-matter of the Patent is with reference to pneumatic tyres, which were first brought into practical use by Dunlop in 1888. The pneumatic tyre was in the first place composed of a layer of india-rubber inside, then a layer of canvas, and another layer of indiarubber outside. The canvas was used to resist expansion. Originally the tyre 25 was a complete circle, like a hose pipe. It rested in a concave rim, and was attached to it by strips of canvas. The drawback of this was the difficulty of mending punctures. It was suggested, to cure that evil, that the tyre should consist of an inner tube, formed of india-rubber, and an outer cover, which should resist the expansion of the inner tube. This allowed of the outer cover 30 being taken off for the purpose of mending a puncture. At first the outer cover was fastened to the rim by strips of canvas solutioned round the iron of the rim. This was found to be a clumsy contrivance, and various other devices were brought forward, in all of which there was an inner tube and an outer cover. First, there was Welch's Patent. He retained the inner tube and had 35 an outer cover with a continuous wire in each edge of it. The function of the inner tube was to hold the air; the function of the cover was to prevent the inner tube from bursting by reason of its fragibility or capacity for expansion. Another of the principal schemes was the Clincher, having still the inner tube, but having the cover kept in its place by having thickened edges on it to engage 40 in the inturned edges of the rim. Smallman came to the conclusion that the best way of repairing a pneumatic tyre was to repair, not the inner tube, but the outer cover; then he realised that the inner tube became useless altogether, provided that you could make a tight junction between the outer covering and the rim of the wheel. If you could do that the tyre could be composed of a band and the inner tube could be dispensed with. Smallman made his tyre of a flat band capable of being formed into a semicircle. He had an internal groove in the rim, and the edge of the band engaged with the rim and so nooked the tyre on to the rim. That was not necessarily air-tight, so he introduced a flap of uncurved india-rubber, which rested inside against the other 50 edge, and as the tyre was blown up the air began to press on the flap, and an air-tight connection was made. There is a continuous valve which all round * That is, from the words "insteal of using a single band" to the words "while being inflated," 45 The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench prevents the air from escaping. Dealing with Smallman's Specifications, I will first refer to the Provisional, as the issue of disconformity is raised. [It was then read.] Figs. 1 and 3 are the exact thing described in the Provisional Specification. In Fig. 4 another band is introduced; in the Provisional Specifi5 cation it is said that two bands may be employed. In Figs. 6 and 7 there are still two bands; in the latter the second band is underneath. In Fig. 9 the rim itself is substituted for the inner band, performing its functions as well as those of a rigid rim. I do not say that Figs. 7 and 9 are within the actual words of the Provisional Specification. The Complete 10 Specification may contain an invention not described in the Provisional Specification if it be a natural development of what was in the latter. [The Complete Specification was then read.] The Patentee says you may have wires or hooks or any way of holding on to the rim, but you must have his sealing, and he describes some of the ways in which the sealing may be done. 15 [BYRNE, J.-If in Fig. 9 we have wires at the bottom instead of the projecting pieces of india-rubber, what would be the difference between that and the old outer cover?] That never made a seal. In Fig. 9 there is a seal all round. Nobody until Smallman's Patent realised the possibility of this. It is the pressure of P and Q against the rim which prevents the air from escaping. 20 The invention is the continuous valve maintained by air pressure in the combination which is set out; it is a detachable circumferentially air-sealed tyre. We allege that Claims 1, 3, and 7 are infringed. Claim 1 is a general claim for the principle of operation, and the way in which the Patentee shows how to carry it out. The Defendants have threatened to infringe by issuing a pro25 spectus showing what they intend to do. The Defendants have taken the rim with the hooked on edges, they have dispensed with the inner tube, they have put on their rim an outer band with tongues; as far as air sealing is concerned it is near to Fig. 4. [A specimen of the Defendants' tyre was handed in.] The combination described in Claim 7 is actually taken; also they are within 30 the very words of Claim 3. As to the Objections, one is that the invention was published in Boothroyd's letter, but he himself says that he abandoned the suggestion he made. The letter was written on December 3rd, 1890, before the publication of either Welch's or Bartlett's invention. [The letter was then read.] 35 The following witnesses were called for the Plaintiffs, viz., Sir Fredk. J. Bramwell, and Messrs. Dugald Clerk, M. A. Adam, J. Swinburne, and H. Heaton. During the cross-examination of Sir Fredk. J. Bramwell, Moulton, Q.C., proposed to put questions to the witness on Fleuss' Specification, No. 20,145 of 1895. Terrell, Q.C., objected. Moulton, Q.C., contended that he was 40 entitled to shew that the details of the exhibit F.J.B. 1, which did not appear in Smallman, were details which were published (whether such publication were in a Specification or other document was immaterial) in 1896, and that such publication was known to the Plaintiffs; his case was that Smallman's directions were insufficient, and that the exhibit was made according to the 45 directions of the document published in 1896. Also, he submitted that he was entitled to shew that the Plaintiffs purchased Fleuss' Patent containing those directions for a large sum. He submitted that he was entitled to prove that exhibit F.J.B. 1, put in by the Plaintiffs as an example of the invention patented in Smallman's patent, was made in exact accordance with the directions con50 tained in a document, namely, the Specification of Letters Patent, No. 20,145 of 1895, which was published in May 1896, and, further, that it was made in accordance with the directions in the Specification of Fleuss' Patent, which was purchased by the Plaintiffs. Terrell, Q.C., admitted that the Defendants had sold tyres like F.J.B. 1 from 1896 onwards. BYRNE, J., held that the evidence 55 was not admissible. In the course of the cross-examination of Mr. H. Heaton, Moulton, Q.C., The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench submitted that having shewn that the witness had been representing to the public that Fleuss was the real inventor, he was entitled to shew what Fleuss disclosed in his Specification. BYRNE, J., held that the evidence was inadmissible, and he mentioned Hinks v. The Safety Lighting Company, L.R. 4 C.D. 607. Astbury, Q.C., summed up the Plaintiffs' case.-There are the two issues of 5 validity and infringement in this case, and under the first head there are six Objections taken raising the points whether Smallman was the first and true inventor, whether there was disconformity, whether there was sufficient description, whether there was utility, and the questions of anticipation and prior grant. The Patent, if good at all, is a pioneer Patent; it is the first of its kind 10 subject to the question of prior grant. The questions of first and true inventor and of novelty are practically the same. I will deal first with sufficiency of description. Questions whether the advertisements of the Company have been accurate are irrelevant; and it is also quite irrelevant to try the question what Fleuss' Specification is. What the reasons were which induced the 15 Syndicate to buy both patents or to call their tyres Fleuss tyres is immaterial. The leading feature of the invention is that it is a detachable circumferentially air-sealed tyre. The Patentee was only bound to shew one mode of doing this. Our evidence is that the directions were sufficient. The question is what was the invention. The Bartlett tyre, as pointed out by Lindley, M.R., was a 20 combination of two old forms of tyre. Romer, J., pointed out in considering in The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic Tyre &c., Ld. whether D.C. 10 was an infringement of Bartlett, there was great invention in a man thinking of the idea of getting rid of the air-tube if he was able to put it into practice. Although it might seem a small thing to take the air-tube 25 out of Bartlett's tyre, it never occurred to anyone to do it. The invention is taking the air-tube out, provided that the necessary alterations are made to keep the air in. There may be many ways of doing it; if the inventor shews the means of doing it that is sufficient. As to whether the canvas is to be cut on the bias, the Specification scows that it must be extensible. The same 30 objection would be applicable to Bartlett. The fact that you have to experiment to get the best result does not invalidate a Patent. Fleuss may have made improvements, one suggested is the separate flat ring and the other the use of soft soap. Smallman says that you have to stretch the tyre, that the two pieces must lie tight together, and you must have the contact with soft rubber. It is 35 suggested that because he did not tell you to lubricate the edges his Patent is bad. Supposing some one had taken out a Patent for lubricating his edges, it would have been absurd. Unless doing that to Smallman's tyre is an invention, it does not affect the Patent. He had only to shew how to put it into operation, and if it will operate at all it is useful. There is sufficient utility if the tyres, 40 blown up dry, will last for an hour. If the invention is an air-seal, the question how long it will seal is irrelevant. Referring now to the cases, Baron Parke, in Neilson v. Harford, i Web. P.C. at p. 317, directed the jury that if experiments were necessary to enable the invention to be used at all, the Patent was void, but if it was only necessary to experiment in order to get the full benefit 45 of the invention, then it was valid. In Edison and Swan Electric Lighting Company v. Holland, 6 R.P.C. 243, there were no directions given how to carbonise the filament, but the judgments of the Court of Appeal shew that the test is whether a reasonably competent person could perform it. There is also the judgment of Lord Hatherley in The British Dynamite Company v. 50 Krebs, 13 R.P.C. at p. 191 on this point. As to how the Court ought to treat a Specification to which these objections are made, I refer to Otto v. Linford, 46 L.T. 39, and Whitehouse's Patent, 1 Web. P.C. p. 473, and as to the mode of construction of a Patent to Plimpton v. Spiller, L.R. 6 C.D. 412. [BYRNE, J., mentioned Hinks v. The Safety Lighting Company, L.R. 4 C.D. 607.] As to 55 utility, the cases are summed up in Frost on Patents, pp. 143 and 144. Slight utility The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench is sufficient, Badische Anilin and Soda Fabrik v. Levinstein, L.R. 12 App. Cas. 710; 4 R.P.C. 459. The question here is-can an article constructed according to this Specification be made to hold wind as a tyre? Whether it will hold long enough to obtain a large sale is irrelevant. The question whether tyres were 5 lubricated before has no influence, as this is the first tyre of the kind having an air-seal. [BYRNE, J.-If you cannot produce an air-seal within the Patent without the use of a lubricant is not that sufficient to invalidate it?] 1 submit not, but, in fact, it can be done. It was common knowledge to lubricate rubber in order to get an air-seal. Large quantities of tyres have been made, 10 and the fact that they were not made under the Patent for some years is not of much weight, unless the whole circumstances are known. [BYRNE, J., referred to a passage in the judgment in Hinks v. The Safety Lighting Company.] That has been extended since, it need not be a workman who does it, it is sufficient if it can be done by a skilled person conversant with the trade. I do 15 not deny that if you put on separately a soft rubber ring made on the flat, that will give a better and more certain initial seal, but the question is whether that is fairly doing it according to Smallman. We have got tyres made without the rings. Our model of Fig. 4 works perfectly. [Bousfield, Q.C.--That is not made of canvas but of fabric.] The evidence is that thousands of Fleuss tyres had been made 2 of canvas before the new material was known. Then as to disconformity, in the Provisional Specification there is a clear description of the invention of a detachable air-sealed tyre, and of two ways of doing it. The objection is that Figs. 6 and 8 are only elaborated in the Complete Specification. The greatest authority on this point is the case on the Welch tyre. There was no mention in 25 Welch's Provisional Specification of a pneumatic tyre. You may have any legitimate development either in form, mode of working, or mode of carrying out, but it must not be a new invention. The cases are collected in Frost on Patents, p. 168. I quote particularly Gadd v. The Mayor of Manchester, 9 R.P.C., at p. 526. Fig. 9 of Smallman is the same invention, which is not 30 merely putting two pieces of rubber one over the other. It is having the airseal in a detachable tyre. I refer also to Cassel Gold Ertracting Company, Ld. v. The Cyanide Gold Recovery Syndicate, 12 R.P.C. 257. Passing to the question of anticipation, Lighton and Galley are not prior publications at all. They can only be put as prior grants. This objection has never prevailed. 35 Smallman is good, unless the Crown had put it out of its power to give him a monopoly for his claims. Lighton's and Galley's claims are quite different, and Lighton would be unworkable. Thomas is not like ours. Bartlett and Scott have the inner tube. Even if our invention consists in taking the inner tube out of Wedderman, it would be a good invention. A prior document, in 40 order to be an anticipation, and especially if it is a mere paper anticipation, must contain all the specific directions which are necessary to be contained in a Specification itself in order for it to be valid. What Boothroyd wrote of was not detachable. How the tyre is to be fastened on the rim and what the nonreturn valve is to be are not mentioned. The question is what he would be 45 taken to have meant in 189 when the detachability of the tyre had not been thought of. Hills v. Evans, 4 D. F. & J. 288, and Betts v. Menzies, 10 H.L.C. 154, are the leading authorities, but I refer especially to Savage v. Harris, 13 R.P.C. 364. In Lewis and Stirckler's Patent, 14 R.P.C. 24, the actual pictures and words of the claims had been published, but Romer, J., said that he was not satisfied 50 that there had been a sufficient disclosure. The Defendants here are trying to make out anticipation by building up a mosaic contrary to Von Heyden v. Neustadt, 50 L.J.Ch. at p. 128. With regard to infringement, Smallman is a pioneer patent. Romer, J.. in The Dunlop Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic Tyre &c. Ld., 15 R.P.C. 74, considered it was a great 55 step to do without a complete tube. The question is whether the Defendants have taken the underlying principle of the invention, Incandescent Gas Light |