In the Matter of Chatwood's Patent.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BYRNE.

May 12th, 1899.

IN THE MATTER OF CHATWOOD'S PATENT.

Patent.-Petition for revocation.-Application for leave to apply to amend 5 Specification.-Disclaimer.-Leave granted.-Terms of Order as to costs.Patents, &c. Act, 1883, sections 18 and 19.

Letters Patent having been granted to C. relating to improvements in safes, a Petition was presented for revocation of the same, Claims 6 and 7 being alleged to invalidate the Patent. The Respondents moved that they might be at liberty 10 to apply at the Patent Office for leave to amend their Specification by way of disclaimer, so far as the claiming clauses thereof were concerned. The Petitioners opposed the motion, alleging that the proposed amendments were not really by way of disclaimer, and that therefore there was no jurisdiction to give leave to apply at the Patent Office.

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BYRNE, J., not being satisfied that the proposed amendments were not disclaimer, granted leave; the Applicants were ordered to pay in any event the costs of the application and of the Petition up to and occasioned by the disclaimer, except only so far as the proceedings in the matter might thereafter be utilised for the purpose of the hearing of the Petition, should the same be heard. In the 20 event of the Petitioners electing not to proceed with the Petition, then the Respondents to pay all the costs of the proceedings.

In 1890, Letters Patent (No. 4100 of 1890) were granted to Samuel Chatwood, Samuel Rawsthrone Chatwood, and Arthur Brunel Chatwood for an invention of "Improvements in safes and strong rooms, and in apparatus for manufacturing 25 "the same, parts of which are also applicable to other purposes." The Complete Specification (so far as material for the purpose of this report) was as follows:"This invention has for its object improvements in safes and strong rooms "and in apparatus for manufacturing same, parts of which are also applicable "to other purposes.

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In the Matter of Chatwood's Patent.

"We make the sides of a safe of a ductile plate and along the front and back "edges of the plate or either of them we form flanges to project inwardly from "the face of the plate. . . .

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Figure 19 is a section of a small safe produced from a plate shown in "Figure 19× and shows the way in which the back plate is held.

"The plate which forms the back of the safe rests against the inner face of "the back flange and is secured to it by rivets. The same way of fixing the "back is shown by the Figures 1, 2 and 3 as applied to a larger structure. A “flush outer surface may be obtained if desired in the manner indicated by "Figure 19. Where as is shown by Figures 20 and 20 the side plates are "flanged at front as well as at back the door frame is formed from a bar which "fundamentally is of L form in section. The front face of the door frame "abuts upon the inner side of the front flange and the frame is fixed to the flange by rivets. Upon the inner face of the door frame a rib is rolled and 15 "behind this rib the door bolt shoots. Sometimes as is shown at Figure 21 we provide two parallel ribs upon the frame and then the bolts enter between "these ribs. In some cases the door frame is of such a form that it does not "fit closely to the side plates we then as is shown by Figure 22 fill the space "between the door and the frame with a hard refractory cement. Sometimes 20" within the outer safe we construct a hard steel inner safe."

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Claims 6 and 7 were as follows:

"6. The method of securing the back plate of a safe or strong room by inwardly "flanging the side plates, and fixing the back plate against the inner face of the "flanges substantially as described in respect to Figures 1 and 19.

"7. The method of securing the door frame of a safe or strong room by inwardly 66 flanging the side plates and fixing the door frame against the inner face of the flanges, substantially as described in Figures 20, 21 and 22.”

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In 1898, The Ratner Safe Company, Ld., presented a Petition for revocation of the Patent, to which the Patentees and Chatwood's Patent Safe and Lock 30 Company, Ld., were Respondents, and the presentation of which was authorised by the Attorney-General pursuant to section 26, 4 (b), of the Patents, &c. Act, 1883. The Petition alleged that the Patent was of no force and validity by reason of the matters set forth in the Particulars of Objections delivered therewith, and ought to be revoked, and that the existence of the Patent claiming a 35 monopoly of the invention, for the reasons set forth in the Particulars of Objections delivered therewith, had been and was of great injury to the public, including the Petitioners, by preventing the use and sale of safes in accordance with the invention described and claimed in Claims 6 and 7 of the Patent, which invention was not novel at the date of the Patent but had been in public use for 40 many years. The Particulars of Objections alleged, as regards the alleged invention claimed in Claims 6 and 7 of the Specification, want of novelty; that the Patentees were not, nor were any of them, the true and first inventors; anticipation by the manufacture, sale, or use of certain safes; want of subject-matter; that it was common knowledge previous to the date of the Patent to flange the 45 side plates of safes or boxes for the purpose described and claimed in the Specification; and anticipation of Claims 6 and 7 by certain prior Patents.

On the 15th of April 1899, the Respondents gave notice of motion that they might be at liberty to apply at the Patent Office for leave to amend the Specification by way of disclaimer so far as the claiming clauses thereof were concerned, 50 and for other relief. An affidavit by the said S. R. Chatwood was filed in support of the motion. The Petition had been ordered to be put in the witness list, and at the date of the motion the hearing was imminent, briefs having been delivered.

The amendments which the Respondents proposed to make were as follows: 55 They proposed to add at the end of the Specification the words, "In conclusion "we wish it to be understood that we desire to confine the claims relating to

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In the Matter of Chatwood's Patent.

"the improved safe or strong rooms to safes or strong rooms made of a ductile plate, which is flanged by turning up the edge, and afterwards bent transversely to form the four corners, and we disclaim any application of such "claims to safes or strong rooms made otherwise than by this method." They also proposed to alter Claims 6 and 7 to the following:-" (6) In safes the sides 5 "of which are made of a ductile plate bent tranversely to form the corners, "securing the back plate by inwardly flanging the side plates, and fixing the "back plate against the inner face of the flanges, substantially as described and as illustrated in Fig. 19. (7) In safes the sides of which are made of a ductile plate bent transversely to form the corners securing the door frame of a safe 10 or strong room by inwardly flanging the side plates and fixing the door frame against the inner face of the flanges, substantially as described and as illustrated "in Figs. 20, 21, and 22."

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The motion came on for hearing on the 12th of May 1899. Bousfield, Q.C., and C. C. Hutchinson (instructed by Woodcock, Ryland, and Parker, agents for 15 Holden and Holden, of Bolton) appeared for the Respondents to the Petition; Moulton, Q.C., W. N. Lawson and A. J. Walter (instructed by J. H. and J. Y. Johnson) appeared for the Petitioners.

Bousfield, Q.C., in support of the motion.-We ask, under section 19 of the Patents, &c. Act, 1883, for liberty to apply at the Patent Office for leave to 20 amend. It is said that the amendment which we seek to make is not in the nature of a disclaimer. The Court will not revise a proposed amendment, although, if it clearly appears on the face of such amendment that there is no jurisdiction to grant leave owing to its being plainly not disclaimer, it refuses leave. Here it is purely disclaimer that is sought. [The Specification and the 25 proposed amendments were referred to.] It is desired to confine Claims 6 and 7 to safes made by our methods. Re Owen's Patent, 15 R.P.C. 755, was a case in which there was clearly no disclaimer.

Lawson and Walter for the Petitioners.-Though in form this may be disclaimer, it is not really disclaimer; and if it is not, there is no jurisdiction to 30 give leave; Armstrong's Patent, 14 R.P.C. 754. The point there arose after the trial, but it was there said that the Patentee must shew a case for leave. He must satisfy the Court that the amendment is prima facie disclaimer. Here, under colour of disclaimer, a new invention is claimed. Instead of claiming the method pure and simple it is proposed to claim the application of it to a 35 particular safe. The product is to be claimed instead of the method. [BYRNE, J., pointed out that in Re Owen's Patent the amendment was admittedly not a disclaimer, and asked whether there was any case in which, the matter being doubtful, it had been gone into before trial.] The decision that only disclaimer is allowable is recent. Ralston v. Smith, 11 H.L.C. 223, shews what disclaimer 40 is. If the Court is not satisfied that in this case it is disclaimer, we ask that at all events the matter may stand over till the hearing. When an action is pending the duty of saying whether it is disclaimer that is sought is thrown on the Court. There can be no future appeal to the Court; Moser v. Marsden, 13 R.P.C. 24. [Deeley v. Perks, 13 R.P.C. 581, was also mentioned.]

Bousfield, Q.Č., in reply.—It has not been the practice to criticise the proposed

disclaimer.

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BYRNE, J.-Is this sufficient for you, Mr. Bousfield? I am not satisfied yet that what you propose to do, without dealing with specific phrases, is not within the office of a disclaimer. I express no opinion on that whether it is 50 or not. That is my present attitude of mind, and I am prepared to leave it there.

Bousfield, Q.C.-If the efforts of my learned friend and myself cannot induce your Lordship to consider it further than that I will sit down.

BYRNE, J.-No, I cannot now.

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Bousfield, Q.C.-The terms are a matter of course. Of course they have a

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In the Matter of Chatwood's Patent.

certain time within which to elect, and we have to pay the costs up to date if the amendment is allowed.

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Lawson. The terms are settled by the case of Gaulard and Gibbs' Patent. In that case the learned Judge said :-"The applicants can only have that leave on the terms of being ordered to pay the costs up to and including to-day. "I think that any difficulty such as urged by Mr. Aston, that it may be "hereafter discovered he has been improperly ordered to pay costs-that is to say, if he is successful on the amended Specification-could be got over by "the ample power which the Court will have at the trial to direct payment of 10"costs by or to the Petitioner. If the Petitioner eventually fails then he will "be ordered to pay costs, and the Court will be able then to consider what "costs should be included in that direction. I think, besides paying the costs up to and including to-day, the applicants must be under terms to apply "forthwith to the Patent Office, and to prosecute their application with 15 " diligence."* Therefore the applicants must pay all the costs of the petition up to and including to-day, and undertake to lodge the application at the Patent Office with due diligence.

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BYRNE, J.-That seems to be right.

Bousfield, Q.C.-That particular case is not in agreement with the run of the 20 cases. It has not been adopted as a general rule.

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BYRNE, J., referred to Fusee Vesta Company v. Bryant & May, 4 R. P.C. 71, L.R. 34 C.D. 458; and Haslam Foundry Company v. Goodfellow, L.R. 37, C.D. 118, 5 R.P.C. 28.

Bousfield, Q.C., pointed out that these were infringement actions.

Lawson.-As far as I know there is no reported case of the kind except Gaulard and Gibbs' Patent in which there was a Petition for revocation.

Bousfield, Q.C.-It is not settled by authority what is the usual rule in these cases, but it is left open to your Lordship's discretion. It is settled in the corresponding case of an action for infringement, but not in the case of a 30 petition. I say that if an amendment is made which in the view of the Petitioners makes the Patent good, then they are entitled to drop their Petition if they please, and we have to pay all their costs. But if they go on and fight, utilising, therefore, the Petition, the briefs, and all the prior proceedings, and then lose their case on that, is it fair that they should fight 35 the battle, because we were wrong up to a certain point, at our expense?

BRYNE, J.-Ought they not, as far as costs are concerned, to be put in the same position with regard to this matter as if you now said, "I was wrong so far." Bonsfield, Q.C.-Yes, if we could be put in the same position by having the proceedings dropped and leaving them to begin afresh. But they want to be paid, 40 and yet want to have the benefit of these proceedings for the purpose of going on. BYRNE, J.-I do not think, Mr. Bousfield, that you could object to the Haslam Foundry form of Order. In that case, after all the pleadings had been delivered, so that nothing remained to be done but prepare the evidence for trial, the Plaintiffs asked, under section 19, for liberty to apply for 45 leave to disclaim one of the claims. The application was granted on the following terms :-" The Plaintiffs to pay, in any event, the costs of the application, and the costs of the action up to and occasioned by the disclaimer, except only so far as the proceedings in the action might be utilised for the purpose of the trial. The Plaintiffs and Defendants to be allowed to make 50" the necessary amendments in their pleadings after disclaimer." That was not a case of a Petition. Then: "The Plaintiffs to undertake forthwith to amend "their pleadings," &c., "or to consent to the action being dismissed with costs." Bousfield, Q.C.-If the Petitioners decide to give us notice that they drop their

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* 5 R.P.C. 191.

In the Matter of Chatwood's Patent.

Petition I am quite willing to pay all their costs; but, if they decide to go on, I am willing that the amendment should be made at our expense.

BYRNE, J.-And pay all the costs of the Petition up to and occasioned by the disclaimer, except so far as the proceedings in the Petition may be utilised for the purposes of the hearing of the Petition?

Bousfield, Q.C.-Yes, my Lord.

BYRNE, J.-That looks to me to be right, so far as I can see.

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Lawson.-I submit not. This Petition is quite different from an action. My friend is in this position. If this was the trial of the Petition our Petition would be allowed with costs. Then he would amend his Patent. Then we 10 might petition again with a fresh Petition, which would be quite different. We have got our witnesses up, and their evidence is all addressed to the present state of facts. All our Objections apply to Claims 6 and 7, and the Patentee admits his Patent is bad on account of those two claims. Now he is going to alter it, and that would make an entirely different case. I submit 15 it would be impossible to utilise these proceedings, and that the Order as made by Mr. Justice Kekewich in Gaulard and Gibbs' case is the only one that can be made on a Petition for revocation. I submit that the Patentee is in the wrong at the present moment. He must put us in exactly the same position as we should have been in if his Patent had been brought forward at 20 this time.

BYRNE, J.-I can only proceed by analogy when there is apparently only one reported case, and from that case I think the right Order to be made in this case will be that Mr. Bousfield's clients do pay, in any event, the costs of this application and the costs of the Petition up to and occasioned by the disclaimer, 25 except only so far as the proceedings in the matter may hereafter be utilised for the purpose of the hearing of the Petition should the same come to be heard. In the event of the Petitioners electing not to proceed with the Petition, then the Respondent is to pay all the costs of the proceedings. That is as near as I can get to the Haslam Foundry Order, and I do not think I shall do 30 anybody an injustice in making that Order.

Walter. We must elect within fourteen days after the amendment has been allowed whether we go on or not?

BYRNE, J.-Yes.

Walter.-Will your Lordship, if we elect to go on, give us liberty to amend 35 our Petition and our Particulars of Objections?

BYRNE, J.-Certainly.