Hoe and Co. v. Foster and Sons.

of such public knowledge; (4) want of utility; (5) that the said alleged invention was not new at the date of the said Letters Patent, but was previously published within this realm in the following Specifications :-(a) William Conquest, No. 4715 of 1880, the whole; (b) John McAdams' U.S. patent, 1871, 5 No. 112,264, the whole; (c) Luther C. Crowell's U.S. patent, 1883, No. 281,619, the whole; (d) Henry Bridson and John Alcock, No. 2764 of 1862, page 4, lines 9 to 32, and sheet 1 of the drawings; (e) Archibald Sandeman, No. 3319 of 1870, page 15, line 1, to page 16, line 4, and Figures 11, 12, and 13; (f) by two drawings or engravings of two web printing and folding machines, 10 each containing the mechanism the subject of the sixth, seventh, eighth, ninth, tenth, and twelfth claims, which were seen by divers persons in this country in the mouths of October, November, and December 1885, before the date of the said patent. The above Specifications were relied on as anticipating the sixth, seventh, eighth, ninth, tenth, and twelfth claims; (6) the said alleged invention 15 was further published within this realm previously to the date of the said Letters Patent by the importation into this country by the Plaintiffs from America in the month of October 1885 of a web printing and folding machine containing the mechanism the subject of the sixth, seventh, eighth, ninth, tenth, and twelfth claims, which machine was seen by divers persons and was 20 used at the offices of the "Liverpool Mercury" in Liverpool in the months of November and December 1885, before the date of the said Letters Patent.

The Plaintiffs by their amended reply, after joining issue save as to admissions and after allegations to the effect that the drawings referred to in paragraph 5 of the Particulars of Objections were confidential documents, alleged that the 25 machine referred to in paragraph 6 of the Particulars of Objection, if imported into this country prior to the date of the Plaintiffs' patent, which was denied, was in the possession of the Plaintiffs on trial pending their application for the patent sued upon, and if seen by any persons was seen under pledge of confidence, and there was no publication of the Plaintiffs' said invention in 30 law.

66

66

66

6

The Plaintiffs, replying to interrogatories 1, 2, and 3, deposed as follows:"The Plaintiffs did send to England in the month of October 1885, two printing and folding machines containing the mechanism the subject-matter of the claiming clauses referred to (6, 7, 8, 9, 10 and 12). Such machinery was sent 35"by the s.s. 'Germanic' and Britannic.' Such machinery was consigned to "the Liverpool Mercury,' Liverpool, England, where it was taken charge of "by one of the Plaintiffs' servants sent over from America for that purpose. "Such machinery was sent over in a dismantled condition, and such machinery was erected by the Plaintiffs' said servant in the office of the 'Liverpool 40 Mercury' in Liverpool. On the arrival of the said machinery the Plaintiffs' "said agent informed one Lovell, the manager of the 'Liverpool Mercury,' "that the machines so sent over and being erected contained appliances which "it was intended to patent in the United Kingdom, but which had not "then been patented, and requested the said Lovell to treat any disclosure 45" made of the said machines as confidential, and to allow no person to see the "said machines except confidentially as aforesaid. We are informed by our agent that Mr. Lovell assented to these terms and that no one except "under such terms of confidence was allowed to see the said machines. We

66

66

66

are also informed by our said agent that adjustments and alterations in the 50" folding mechanism had to be made from time to time, and that our said agent remained in charge of the said machines and did not hand the same "over to the proprietors of the 'Liverpool Mercury' until after the Specification "had been filed on the 5th of December 1885. We are also informed by our "said agent that the said machines were tested in the production and folding 55" of newspapers under a similar pledge of confidence, and that in order to complete the erection and adjustment of the said machines it was necessary “that the same should be tested under working conditions."

Hoe and Co. v. Foster and Sons.

The action came on for trial before KEKEWICH, J. on June 16th and 17th 1898, who held that the Letters Patent were invalid for want of novelty, machines embodying the invention having been sold and used in the United Kingdom before the date of the application for the Patent.*

The Plaintiffs appealed.

5

Moulton, Q.C., Bousfield, Q.C., and A. J. Walter (instructed by Bower, Cotton and Bower) appeared for the Appellants; Roger Wallace, Q.C., and J. H. Gray (instructed by Faithfull and Owen) appeared for the Respondents. Moulton, Q.C., and Bousfield, Q.C., for the Appellants.-The case was decided below on the point as to prior user or prior publication. It was put in each way 10 against us. One question which arises is as to what constitutes publication by the Patentee himself. [The Specification was read and explained and the facts. stated.] The machines were not to be delivered until they were in running order. There was not a run satisfactory for both machines until December 3rd 1-85. The manager of the "Liverpool Mercury" was told that a patent 15 was going to be taken out. The machines were put up by the Plaintiffs' men and were in their charge, and the room in which they were was not a public room. It is said first that there was a prior profitable user, and secondly a prior publication because persons had seen the machines in the course of erection and whilst working. There was no intention here to give the 20 invention to the public, but an actual intention to patent, and we submit that the patent was applied for before the delivery of the machines. The questions depend on the 6th section of the Statute of Monopolies and particularly on the words "New manufacture which others at the time of making such letters "patent and grants shall not use." The doctrine of prior publication rests on 25 the word "new," that of prior user rests partly on the same word and partly on the words "which others at the time of making such letters patent and grants "shall not use." The questions are intended to be questions of substance, we submit that here nothing was done to destroy the novelty of the invention. [VAUGHAN WILLIAMS, L.J.-Was there an opportunity for another person to know 30 of it? If so, could he be restrained?] That test would be too severe. It must be admitted that if another invented the same thing, but did not publish it, that would be no objection to the patent, therefore knowledge in another person without publication does not invalidate a patent. [VAUGHAN WILLIAMS, L.J.In the one case it is imparted knowledge.] As to user, the contract was to make 35 and put up the machines, the price to be payable when they were handed over. User necessary to ascertain the competency of the machine to do the work is permissible. In Newall v. Elliott, 4 C.B.N.S., 293, there was profitable user. It has been held here that there was sale and delivery of the machines before the date of the patent, but we submit that they remained in our possession 40 until December 9th 1885. As to publication, there was an intimation of secrecy. The machines were in a room to which the public were not admitted, and there is no evidence that anyone capable of understanding them saw them before the patent was applied for except the manager and a person in the employ of the firm which was told of the secrecy. Neither of these persons 45 did actually disclose the invention. Humpherson v. Syer, 4 R.P.C., 407, went to the extreme limit, and the judgment of Fry, L.J. in that case went too far. The true test is whether the invention is in the possession of the public. [CHITTY, L.J.-If one man knows it and has a right to disclose it, is not that sufficient?] No, Dollond's Case, 1 Webster's P.C., 43, negatives that. [Bentley v. 50 Fleming, 1 C. & K., 587, and Plimpton v. Spiller, L.R., 6 Ch. D., 412, were referred to as to prior user.] Newall v. Elliott shows that the fact that there has been profitable user is not fatal, if it was for the purpose of getting the machine into working order. The mere erection would not invalidate the patent, and the trial runs were part of the erection. There was no profitable user by us.

* 15 R.P.C., 573.

55

Hoe and Co. v. Foster and Sons.

Roger Wallace, Q.C., and Gray for the Respondents.-There was user by the "Liverpool Mercury " prior to the patent. One of their workmen had control of the machine-he controlled the power. The editions printed were actually sold. If it was used for profit and not with a view to try the invention, 5 secrecy will not prevent the patent being invalid. If an inventor were before patenting it to allow another person to use the invention, without the object of perfecting it, the patent would be bad. In Newall v. Elliott the user was by way of experiment. If a patentee himself makes a profitable user, it must only be what is necessary as an actual test. If there 10 has been an actual user for profit by anyone secrecy makes no difference. Here the trial was only necessary for testing the particular machine. There was no obligation to secrecy and no secrecy in fact. No one in the works was cautioned. Strangers could go into the room on business or by a special permit. Newall v. Elliott was an exception from the general rule, because in that instance 15 there was no means of testing the invention except by a user for profit. Adamson's Case, 6 D. M. & G., 420, and Saxby v. Gloucester Wagon Company, L.R. 7, Q.B.D. 305, are in our favour. Carpenter v. Smith, 1 Web., P.C. 530, shows that knowledge on the part of the public is not necessary, the opportunity of utilising the invention in the public is sufficient to invalidate a patent. Here 20 there was a sale to a member of the public with liberty to use the invention. Germ Milling Company v. Robinson, 3 R.P.C., 399, was also referred to on the question of prior user.

Moulton, Q.C., replied, and, after referring to the judgment of Bowen, L.J., in the last mentioned case, continued :-In Carpenter v. Smith two dozen articles 25 had been made and sold. On the evidence in the present case there was no user by the newspaper owners. As to publication no one who knew anything about machinery was allowed to see the machines except Cupiss, who was in Lovell's employ. User by a patentee is only fatal when it is so substantial as to constitute a dedication to the public. Adamson's Cuse shows that substantial 30 user, not a mere scintilla, is requisite; also Plimpton v. Malcolmson, L.R. 3, Ch. D. 531. The question of publication is not affected by a sale, although sale and delivery would invalidate a patent on the ground of user by the patentee. LINDLEY, M.R.-The question raised in this patent case is one of some nicety, and in its details of some novelty, but I do not think, when the facts are under35 stood, that there is any real difficulty about it. The Plaintiffs, who are the Patentees, obtained their patent on the 5th of December 1885, and the only question which we have to consider is whether on that date the invention was new, and one which others had not then used. The learned Judge has found that the patent is useful and everything that a patentee can desire, but he says, 40 "Your patent is invalid because the invention was not new, and was used "before the date of your patent." That is a mere question of fact, and the facts, as I understand them, are really not in dispute at all. The facts are simply these. The invention was known in America, and it was imported here and the invention was known, before the date of the English patent, to be a perfectly 45 successful invention. No experiment was required to ascertain that, and accordingly on the 26th of June 1885, that is five months before the date of the patent, or thereabouts, the Patentees agreed to supply and set up two of these printing machines, with this ingenious folding mechanism, in Liverpool, for the purposes of the "Liverpool Mercury." They were to be set up upon the terms 50 that the purchasers should pay 6,8007. on completion of the work "in our usual way," which means without explanation that the Patentees are to send their people to superintend the erection of these things, and not to hand them over until they are found to be in good order. These printing machines are very complicated machines; they require a good deal of care and skill, not only in 55 their original construction, but in their being fitted together and put into working shape, and I do not doubt it is perfectly true that nobody would undertake to set up a machine and run it to the satisfaction of either the seller

66

66

Hoe and Co. v. Foster and Sons.

or the purchaser without some trial of the machine in connection with the business. The machines were put up by the Patentees, and under their superintendence, by two persons-Wainman and Kirkon, Wainman being superintendent and Kirkon his assistant, and they were put up and set to work on the 19th November. There was what they called "a run.' They were set to work in 5 this way-the sheets of the "Liverpool Mercury" were put into them and printed. The first run was on the 13th to the 21st of November. That was not very successful, that is to say little defects were ascertained which required to be put right. The machine was run again for the purpose of printing this newspaper from the 26th to the 28th of November. Again, at the early part of that 10 run, there were some defects ascertained and they were put right. The last part of the run was all that could be desired, and at the end of that second run the machine was ascertained to be in good working order. There was a third run on the 3rd to the 5th of December, in which no defects were discovered, and the machine was then used for the purpose of printing the "Liverpool Mercury" 15 as a pure matter of business. That, to my mind, is absolutely fatal to the validity of this patent. The facts are not in dispute, and they are summed up in a short passage by Mr. Justice Kekewich. I have taken the trouble to verify what he says, and I have repeated in substance already what it comes to. Mr. Justice Kekewich says:-"On the first occasion there were difficulties. There were two 20 "machines. One broke down immediately, the other not quite so completely, but "I gather did not run thoroughly well. That was on the 21st November. They "were put straight and used again for the next issue of this halfpenny paper on "the 28th of November. At that time they were not in complete working order, "but with the advantage of experience they were put in complete working order 25 "then, and Mr. Wainman told me himself that the latter part of the second run "was right and the third run was right. The latter part of the second run must "have been completed soon after the 28th of November, if not on that day, and at any rate some days before the 5th of December, which was the date of the third "run." To sum that up, it means that the trial even of the machine-for there 30 was no trial of the invention, as nobody wanted that-it was known to be a perfectly good invention-the trial of the machine to see that it was put up right was over and completed by the end of the second run on the 28th of November. What does that mean? Here was the machine being used in this country, not by way of experiment in any sense but for the purpose of the business, to 35 accomplish which it was erected-for the purpose of printing this "Liverpool Mercury." It was so used for that purpose before the date of the patent. Now something was said about secrecy. The evidence as to secrecy is very slight. I cannot say that I am satisfied that there was any such secrecy as would protect the use of this thing at any time. If there was, it was confined 40 to the purpose, perhaps, of the first day. Certainly there was an end of all secrecy, and of every obligation to keep it secret, when it was found that the machine was all right. There was no secrecy at all afterwards that I can see. The whole evidence of secrecy is so shadowy that I do not attach much importance to it. I do attach importance to the facts which I have mentioned. Now it was said 45 that this was not done by the newspaper people; in other words, that there was no evidence to show that the machine was one, or the invention was one, which others did use at the date of the patent. My own opinion is against the Patentees upon that point. The real truth is-condense it as you like that it was being used by the newspaper people in conjunction with the Patentees 50 who put it up. There was no exclusive user either by the Patentees' men who were putting them up-Wainman and Kirkon-or by the newspaper. They were being used by both. So far as looking after the machinery-the tapes and so on-goes, of course they were being used by the people who were responsible for the machines. So far as the printing was concerned, and so 55 far as using them in that sense was concerned, they were used by Richards and Cupiss. To my mind, therefore, there was user of them by other persons-

66

Hoe and Co. v. Foster and Sons.

not exclusively by other persons I agree, but by other persons in conjunction with those who put up the machine. But, turn it about as you like, it appears to me to be absolutely impossible to get out of the fact that this machine was used for the purpose of business, and for the purpose for which it was intended 5 to be used, during the whole of the last run, which was before the date of the patent.

As regards the authorities, I do not propose to say much. It certainly is not, in my mind, exactly covered by any of the authorities. It certainly is not exactly covered by the case most relied upon by the Appellants, namely, 10 Newall v. Elliott, for there the experiment was not to see that the machine was in order, but the experiment was to see whether the invention was a useful one and could be worked satisfactorily. In this case that was known perfectly well all along before this machine was ordered. That is the main difference between this case and the case of Newall v. Elliott. The user here was not so strong15 not so prolonged as the one in the case of Adamson before Lord Cranworth, and differences may be pointed out between the two, but the cardinal fact remains; and in answer to the questions of fact which would have to be left to the jury, I say, first, that the invention was not new; and, secondly, that it was used by others before the date of the patent. The appeal, therefore, must 20 be dismissed, and dismissed with costs.

CHITTY, L.J.-I must be excused from adding much, having regard to the state of my voice, and it is not necessary that I should say much after the judgment of the MASTER OF THE ROLLS with which I agree. The user

in the office of the "Liverpool Mercury" was not I think for the purpose 25 of perfecting the invention itself. The invention had been found to answer well in America, and the inventors proposed to obtain a patent here for an invention which they had perfected abroad and imported into this realm. The object of the erecting of the machines, and the object of all that took place at the beginning, was to ascertain whether the machines which had been contracted 30 for, made in accordance with the invention itself, did or did not answer the description that is contained in the contract. The machines were erected and, having regard to the first trial or so, I have no doubt that Mr. Moulton is right in saying that the trials were part of the erection of the machines themselves, and the erection was to be done by the skilled men whom the Plaintiffs 35 had sent over for that purpose, namely, for the purpose of fitting up the machines, and for the purpose of seeing that they would work. But the success of these particular machines was finally ascertained before the 5th of December. It may not have been long before, but there can be no distinction made between user which is one day before the patent or two days before and 40 a user for a month or a year. The principle must be the same in both cases. Nothing remained to be done by the Plaintiffs to the machines after the machines had been proved, as they were before the 5th of December, to answer the purpose which, according to the contract, they ought to fulfil.

Then I do not agree that the user was by the Patentees themselves, in any 45 such sense as would save the patent. The user on the evidence in my opinion was both by the Patentees themselves, and by the "Liverpool Mercury," and both of them were using for the purpose of profit. The "Liverpool Mercury printed their papers in large numbers from the machines; the Plaintiffs were entitling themselves to receive, in respect of the machines, the large sum of 50 6,8007. which they had contracted should be paid for them. In my opinion it is not a question simply of whether the property passed at law. I think the property had, if that be material, passed before the 5th, because all conditions precedent had been complied with on the part of the manufacturers. It seems to me the case would stand just the same whether the property had or had not 55 passed, because if there had been a letting for the purposes of printing the Liverpool Mercury," the case would have stood practically on the same footing.

66