The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench Company v. De Mare Incandescent Gas Light System, 13 R.P.C. 301, and Moore v. Thomson, 7 R.P.C. 327. The Defendants have the initial air-seal produced by the contact of two pieces of rubber in tension. Moulton, Q.C., opened the Defendants' case.-This is a paper Patent. The natural way for this case to have come up would have been if Smallman had 5 been trying to stop Fleuss, and then Fleuss would have shewn that Smallman's Patent lay unused for four years, until Fleuss, by his experiments, made his tyre; that Fleuss immediately was largely used; and that the tyres of this type, which have been made, have had the features of Fleuss. But as it is the owners of Fleuss have bought Smallman. The scope of Smallman's Patent should not 10 differ whether the action be against owners of Fleuss or the present Defendants. The case raises seriously anticipation, disconformity, non-utility, insufficiency of Specification, and non-infringement. First of all, one has to consider what is the invention, and preparatory to the question of construction one has to put oneself in the position of people with the knowledge of the time. The first 15 pneumatic tyre was the Dunlop, which was bound by solutioning canvas wrapped round the rim, or between the tube and the rim, in a way difficult to detach. The difficulty was to repair the tyre, and there was several attempts to get over it. The Welch, or wired-on tyre, and the Clincher, which was held by the airlock, were both patented in 1890. Then there were suggestions of covers which 20 were hooked or laced, or had interlocking fastenings. All these were known at the date of Smallman. I now come to the Boothroyd letter, which will be of great importance, not only for the purposes of public knowledge and anticipation, but also on the question of the interpretation of Smallman's Specification. It puts the Plaintiffs in a dilemma, and, if one interpretation 25 is adopted, the Patent will be invalid. The Boothroyd tyre, which is a single tube tyre, is well-known. The letter shews the stage of developments at the date at which it was written. [The letter was then read.] The Dunlop tyre consisted of three parts, the inner tube and the canvas cover with the thick tread of indiarubber outside it. Boothroyd suggested that these could be reduced to two, 30 that you might have a cover all in one put over the inner tube and fastened by lacing. This comes before the lacing patents, and was the first publication of the idea of the loose cover. It might be laced or cemented. He goes on to the suggestion of a single-tube tyre. If you have a way of repairing it, it is the simplest of tyres. He proposes to cut the tube all round on the under-side and 35 provide it with a non-return valve, which would be a flap throughout the whole length. This gave the air-tightness, and by solutioning a strip of canvas to the edges he got the strength. It was a step which shewed great ingenuity, and the advantage was that the measure of the difficulty of repairing was simply the re-solutioning on of the canvas. Anyone would see that you could substitute 40 lacing or hooking for the solutioning. What is described would be understood to be a slit tube rendered air-tight by the longitudinal valve, and rendered capable of bearing the pressure by the edges being united by something capable of resisting tension. It would require no invention to tie the edges by other means than the piece of canvas. In the period between Boothroyd and Smallman 45 there were Wedderman and Mackintosh. Wedderman had an inner tube and a cover with heels hooking into recesses at the side of the rim. Then Smallman filed his Provisional Specification, and one must consider what it was. [The Provisional Specification was then read.] The Patentee says that he prefers an endless band of caoutchouc and cloth moulded in the form of a tubular ring, 50 one margin of the band lying over the other. That is as in Boothroyd. He gets air-tightness by one margin lying over the other as in Boothroyd; he gets strength by holding together the margins, by letting them engage in the shoulders of the rim. He uses Boothroyd's tube and the Wedderman or the Clincher method of holding the edges together. I do not say that Smallman's was not 55 an improvement on Boothroyd in the way of holding together; but it was only The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench using two pieces of common knowledge and putting them together. Then he goes to the one he does not prefer. In the former, one edge only was enlarged; now there are enlargements at each edge. The valve is not a flap cemented to one side, but it is in the shape of a T, with flaps over both edges, and with the 5 thickened part of the inner band lying between the two margins. He has the Boothroyd longitudinal non-return valve, but in a less simple form. What he invented was the combination of the Boothroyd tube with the Wedderman fastening. I now come to the Complete Specification. Fair development is allowed, but it must not go beyond carrying out the invention. It is arguable 10 that Fig. 3 is a fair development. But in Figs. 6 and 7 he has a completely different construction. In substance he only puts an india-rubber bottom to the rim, leaving out the central band. He has no longitudinal valve at all. What he described in his Provisional Specification is satisfied by Fig. 1 and Fig. 4. He tries to sweep in every attempt to use no inner tube. Figs. 8 and 9 15 have nothing to do with the Provisional Specification. In Figs. 6 and 7 the use of the band was a sham. In Figs. 8 and 9 he throws off the mask of the second band. There is in these Figures no distinction between the means of getting air-tightness and resistance to expansion. He has no valve, he trusts to the Clincher action for resistance to pressure and to the jam being sufficient to 20 make it air-tight. He also says that the tyre may be wired on, whereas his sole invention was that he had chosen a particular method of holding on. He claims wiring the cover on. If he claims every method of fixing Boothroyd's tyre his Patent is bad. The method of space fastenings, or that of interlocking, is contrary to the Clincher method of holding on, which he had in his Provisional 25 Specification. If he claims the dispensing with the inner tube, he goes beyond the Provisional Specification, and he is anticipated by Boothroyd. Nuttall v. Hargreaves, 8 R.P.C., at p. 454, is an illustration of my argument, see especially the judgment of Bowen, L.J. The application of laced edges to the Boothroyd tube is not within the Provisional Specification, there the margins were free. 30 In that form the only novelty would be the lacing, and that was not in the Provisional Specification. The latter only claimed the combination of the Clincher mode of fastening with the split tube. Where a man first invents a device like Boothroyd's tube he is allowed to claim very broadly, but it is different where the state of knowledge is such as it was at the date of Smallman. 35 It is doubtful whether Fig. 3 is described in the Provisional Specification. But at all events, in Figs. 6 and 8, and in mentioning the wiring on, the interlocking, the lacing and the space fastening, he has departed from the combination which was his invention. On the question of infringement, the Trench tyre is not in its nature the same as Smallman. Trench gets the air-tightness and the strength 40 by one device; there is not the separation of function which was the essence of Boothroyd and of Smallman. There was no transverse pressing of the margins together in either of them. Trench depends wholly on it, and his is an independent invention; he has a mechanical air seal. In Trench the margins do not lie one over the other. Smallman gets his initial seal by circumferential 45 air-tightness. Trench has a joint, whereas Smallman has a valve. As to anticipation by Lighton, he dispensed with a tube, having a cover which was wired on the rim. If Smallman be interpreted as covering cases where a wired on tyre is used without a tube, Lighton would be an infringement of it; but Lighton is prior. With regard to non utility and insufficiency of description, 50 I submit that Smallman has not given such directions as would enable the public to make a useful tyre without further experiment. The public must be able to use every form that he has claimed. According to Mr. Dugald Clerk's report, the things that Fleuss invented were necessary to make it a practical tyre. It is admitted that until the Fleuss tyre came out, that is from 1892 to 55 1896, not a single tyre was made according to Smallman, and all the tyres since 1896 have got the peculiarities which Fleuss introduced. I am not in a The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench In 10 position to shew what Fleuss claimed, but the inference from the evidence is that he claimed the flat ring put on separately and the lubrication, and these are not found in Smallman. They are the features that made the tyre practicable. Coming now to Smallman's Complete Specification it says that the band may be moulded in the form of a tubular ring; he never met the 5 difficulties of doing it with a flat band. The reference to unvulcanised or spongy caoutchouc shews that careful attention was Lot given to practical details, spongy caoutchouc would be unsuitable, and unvulcanised rubber would stick together and make a joint. Although the expression "stretched on the rim " is used, Smallman does not give any specific directions as to the initial seal. Figs. 6 and 7 he only uses the second band on the bottom of the rim, and he afterwards discards it. Nobody has ever made a practical tyre from Figs. 6 and 7. If the tyre is to be stretched on and to be air-tight when it is on, directions for doing this are not given. It is not practicable. There is insufficiency of directions unless they lead to normal success in getting a 15 practicable article. It is true that Lord Herschell, in the Badische Anilin case, said that commercial success is not essential; but although patentable utility is not tested by commercial utility, you must not have uncertainty of result. There are no directions, even as to stretching, in reference to Figs. 6, 7, 8 and 9. Wedderman without an inner tube would not 20 work, and Smallman gives no directions to make it work. No tyre like Fig. 8 or 9 has been produced in a rim with the spokes going through. Smallman relies on the tyres shewn in these figures being air-tight in spite of the spokes ; but they would not work. I submit that no sufficient directions are given as to Figs. 6, 7, 8 and 9. Then it is said that we do not get success because we do not 25 lubricate, but lubrication was never used for tyres, and, if necessary, Smallman ought to have said that it was. No one would at that time have thought of lubricating; most lubricants would rot the rubber. The success of the Fleuss was due to the idea of using soft soap. The public ought not to have to experiment as to the causes of failure. Even with a lubricant Wedderman without an inner tube 30 would not succeed. Gandy v. Reddaway, 2 R.P.C. 49 shews that if a special lubricant was necessary, the Patentee ought to give a practical one. Then if the tyre is wired on the rim, there are no directions to enable one to get an initial seal. I submit that in this case there is substantial insufficiency. The Patentee says that the canvas may be on the bias, this implies that it may be on 35 the straight, but if so it would not work. As to Hill v. Evans, Lord Watson has pointed out that the issue whether knowledge is sufficiently published so as to put the public in possession of an invention and prevent it being patented is different from the issue whether a Patentee has sufficiently discharged the burden of giving to the world sufficient directions. What may be sufficient in 40 the former case may not be in the latter. The Patentee has told it sufficiently if he has told it to the class of people to whom it is addressed. It must be an effective publication. The following witnesses were called for the Defendants:-Messrs. W. W. Beaumont, K. E. Phillips, C. H. Gray, B. Hopkinson, F. H. Sprang, and 45 T. W. Cox. Moulton, Q.C., summed up the Defendants' case.-Dealing with the points as to which there is no substantial contest, I submit they afford a perfect defence. There is practical agreement as to the meaning of the publication by Boothroyd. [The letter was then quoted.] The object was to provide for easy 50 repair of a puncture. The tube is slit on the under side all round, he puts a non-return valve, which all the witnesses agree must be a long slit valve, and the cut edges are made up with canvas, giving the strength, whilst the valve gives the air-seal. [The evidence of Sir Frederick Bramwell and Messrs. Swinburne and Beaumont was referred to.] The exhibits F.J.B. 11 and W.W.B. 1 55 are fair representations of Boothroyd. It would require no invention to take The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench the alternative of lacing with eye-holes instead of the canvas solutioned on. Any method of attaching the edges together would not be subject-matter for Letters Patent, unless there was some ingenuity in the way itself. Boothroyd published a construction, he may not have actually faced the difficulty of the 5 initial seal, but neither did Smallman. Boothroyd would be a little better as to practicability than Smallman. Boothroyd published the construction of tyre now called the tubeless. Vorwerk v. Evans, 7 R.P.C. 265, enunciated the doctrine that even if a man publishes a thing so that the world cannot use it, but publishes it clearly without the further explanation. 10 necessary to enable it to be used, he may have increased the knowledge of the world so as to leave nothing to be done which is patentable, or so as very much to restrict a subsequent Patent. In considering the scope of Smallman, it is to be remembered that both his devices had been published. Then Smallman's Provisional Specification was for the use of the Clincher fastening with Booth15 royd's tube, and there was a second less simple form where there was a second piece not fastened to either margin. The special combination may have been patentable, but after Boothroyd the particular combination only could be claimed. Coming to the Complete Specification, the meaning of the passage commencing "for instance a tubular band A.P.Q.," is clear, and all these 20 constructions are explicitly claimed, for Claim 1 would cover them. Figs. 6, 7, 8 and 9 are specifically claimed. Claim 16 puts forward a thing having an airseal between the margins and the rim. It is practically uncontroverted that Figs. 8 and 9 were impracticable without further invention. Smallman did not realize the difficulty as to the spoke-holes. The danger in the Clincher is that the 25 pull turns up the toes or lips and then the trye comes off. Smallman did not know that and hence made a blunder. The Plaintiffs' model of these figures has a special variation. With spoke-holes in the rim this always fails; in fact it fails whether there are spoke-holes or not. Figs. 8 and 9 are clearly stated by Smallman to work with spoke-holes. It is not oper to say that they could be 30 brazed up. What Smallman relied on was the seal. It cannot be said that what are indicated as the best methods must be taken; it must be shewn that all will do. As to infringement the seal in Trench is a mechanical seal, initially, and none of the witnesses say that it alters its character. It is produced by the nip of the rim. If there is a mechanical seal in Smallman it is produced by 35 circumferential tension. The four uncontested points are, I submit, that Boothroyd was a publication of this tubeless tyre, the meaning of Smallman's Provisional Specification, that Figs. 8 and 9 will not work, for we have shewn that they will not, and the Defendants have not made a tyre in accordance with them that will work, and, fourthly, that in our tyre there is a mechanical seal. 40 Also I submit that Boothroyd is an anticipation, for Smallman says the edges may be laced together and that difference between Smallman and Boothroyd was a piece of common knowledge. But if Smallman is restricted to what his Provisional Specification covered, then the Defendants do not infringe. Then there is disconformity. Figs. 1 and 4 are what is described in the Provisional 45 Specification, Fig. 3 is doubtful. Then Fig. 6 is the same really as Fig. 8, and in the latter there are neither overlapping edges nor central band. In Figs. 1 and 4 there was no need of air-tight contact between the tyre and the rim. That was effected by the projecting margins or the central band. In the Provisional Specification and in the legitimate part of the Complete Specification there is a 50 complete rubber tube with a non-return valve. In Figs. 8 and 9 there is neither a rubber tube nor a non-return valve, but a tube partly of metal partly of rubber, and the Patentee relies on exceptional fitting. It is a change of nature. His device was one which rendered a perfect fit unnecessary. In the Provisional Specification he kept the air in by the pressure of overlapping lips on to the 55 margins of the tyre. Here he does it by a perfect fit between the edges of the tyre and the rim. There is not a non-return valve in Fig. 6. The words The Tubeless Pneumatic Tyre and Capon Heaton, Ld. v. The Trench non-return valve are not used in the Provisional Specification, but that is what is indicated. In Figs. 8 and 9 the essence is that there should be no play. After Boothroyd the genus characterised by one tubular tyre split up with a non-return valve was known. After that there could only be patented a special combination. The Boothroyd tube held by the Clincher fastening was Smallman's 5 species. He might vary it in the overlap, but there must be identity of invention. He goes even beyond Fig. 8, for he takes the Welch and other modes of fastening on, and if I am right in construing the Provisional Specification, he has gone beyond the invention contained in it. It is said that any tubeless detachable tyre is within Smallman, but the first was Boothroyd, and 10 even if Smallman had been the first, he could not have claimed all tubeless detachable tyres; if it were the first of the class, the whole class could not be claimed. One cannot claim by function, Automatic Weighing Machine Company v. Knight, 6 R.P.C. 297. This is an a fortiori case, because the tubeless construction had been shewn by Boothroyd. He means to claim a Boothroyd 15 tube, however fixed. There is nothing of Claim 16 in the Provisional Specification. Claim 1 is very wide. Also Figs. 8 and 9 are bad for want of subjectmatter. They are only Wedderman with the inner tube left out. The Patentee merely abandons a security and tries to make up by perfect fitting. I now come to insufficiency. There is no reference to initial seal, excepting in the one word 20 "stretched." An exaggerated importance is attempted to be given to that word. It only comes in after the words "I prefer ", and stretching on the rim is not important in reference to what he is there speaking of. It is the stretching of the lip B over the other margin that is important. The Patentee did not tell enough of the necessity of the initial seal, he had not himself appreciated its 25 importance. The duty of the Patentee was to tell the public how to do it without experiment. It is admitted that no tyres were made for four years. Fleuss was put forward by the Company as the great inventor. The success of Fleuss was chiefly due to the joint-making material, although the special form of the lip was also of importance. No one would have thought of using water or 30 oil to lubricate. If lubrication was necessary, Smallman ought to have told the public that it was. The Fleuss tyre need not be stretched on the rim, this would be an insufficient description of it. One margin must be stretched over the other. Also the lip, for practical success, must be of pure rubber. Simpson v. Holliday, L.R. 1, H.L. 315, shews that if a patentee gives two alternatives, he 35 must shew that either will do. Smallman claimed with or without spokeholes, he has not sorted out what will do from what will not do. He tells nothing of lubrication or of this special form of the lip. Smallman uses the word " may" constantly in the Specification, he wanted to make it as wide as possible. As to the Badische Anilin case, Lord Halsbury points out that 40 commercial success may be of importance. A tyre must be a practicable tyre, one holding on for a few minutes is useless. [BYRNE, J.-The subject-matter must be looked at.] Yes, that is supported by Lord Halsbury's dictum. If the invention is said to be doing without the inner tube and yet having a practicable tyre, then if it is not practicable there was no invention. Utility is 45 a question of substance. Gandy v. Reddaway, 2 R.P.C. 49, well illustrates the present invention. In Neilson v. Harford, 1 Web. P.C. 317, puts the question as to sufficiency very clearly. As to the question of infringement, none of the tyres Smallman claimed holds the air in by keeping the margins mechanically pressed together, as we do. I refer to Bailey v. Roberton, L.R. 3 App. Cas. 1055, 50 on the questi n of disconformity. Fryer for the Defendant Pattisson asked for the action to be dismissed with costs. [Terrell, Q.C., referred to Betts v. De Vitre, 3 Ch. 429.] [BYRNE, J., pointed out that this Defendant had, by his defence, put the validity of the patent in issue.] Then I rely on the evidence, and I adopt the arguments of 55 the other Defendants |