Page images
PDF
EPUB

Hoffnung & Co. v. Salsbury.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BYRNE.

April 29th, and May 2nd and 19th, 1899.

HOFFNUNG & Co. v. SALSBURY.

5

Patent.-Threatening customers.-Defence infringement.-Aggrieved person. -Patent amended after writ.-Amended Patent held void.-Injunction.Inquiry as to damages.

The Defendant, the registered proprietor of a Patent, threatened certain customers of the Plaintiffs, and they in consequence repudiated a contract with 10 the Plaintiffs, who commenced an action to restrain the threats. Subsequently to the commencement of this action the Defendant amended his Specification and pleaded infringement. It was contended for the Defence that the Court could not look at the unamended Specification to decide whether the threats were justifiable or not. It was also contended that, inasmuch as the Plaintiffs had 15 a binding contract with their customers, which they could have enforced but did not enforce, they were not aggrieved persons within the meaning of the 32nd section of the Patents, Designs, and Trade Marks Act, 1883.

Held, that the Plaintiffs were aggrieved persons within the meaning of the section, and that the Defendant's Patent as amended was invalid, and that the 20 Plaintiffs were entitled to an injunction and an inquiry as to damages. No decision was given on the point as to whether it was necessary to consider the Specification as if it had been amended at the date of the threats.

On the 13th of December 1887, Letters Patent (No. 17,160 of 1887) were granted to Henry Salsbury for "Improvements in or relating to lamps and in 25 fittings connected therewith."

The Specification was amended as allowed by the decision of the ComptrollerGeneral of the 10th day of November 1897, and as amended was as follows:

"This invention relates to certain detail improvements in lamps and consists, "In making conical or semispherical joints A (see Figures 1, 2 and 3 of the 30" annexed drawings) with leather lining pieces B to that part of the lamp C "used with cycles by which it is supported or suspended from a stem or other part of the machine, the conical or semispherical joint portion A with leather "lining pieces B being used in conjunction with parallel links D connected by

66

Hoffnung & Co. v. Salsbury.

"pins E in pairs and the joints be held rigidly or in close contact by bow or "other shaped springs F either acting upon the nuts or heads G of the pins E

66

or encircling the pins E to obtain the necessary degree of friction of one part "of the joint to the other with the leather lining between.

"In addition to the springs before mentioned, I employ a compensating 5 "spring H preferably of coiled form, having one end secured to the lamp body "or back strap and the other end to one of the links D, so that any vibration or "tremulous motion of the machine while travelling is absorbed by the compensating spring H instead of being imparted to the lamp C, the lamp being thereby kept free from vibration, oscillation, or jumping, a steady flame in 10 "the lamp being the result.

66

64

66

Having now particularly described and ascertained the nature of this inven"tion and in what manner the same is to be performed I declare that what I "claim is-1. The improvements in lamps described with reference to "Figures 1, 2 and 3 of the annexed drawings, consisting of conical or equiva- 15 lent shaped joints A, intervening leather washers B, used with parallel

66

[merged small][subsumed][subsumed][merged small][graphic][graphic]

"links D in pairs as described. 2. The bow or equivalent shaped tension "spring F connecting the two pins E of each pair of links D on one or on both "sides of the suspension appliance of a cycle lamp as and for the purpose set "forth. 3. The compensating spring H coiled on one pin of the suspension 20 apparatus and connected to one link and to the body of the cycle lamp as set 66 forth,"

66

5

Hoffnung & Co. v. Salsbury.

On the 2nd of December 1896, Salsbury's solicitors wrote the following letter to Bagshawe Brothers & Co., of 159, Queen Victoria Street, E.C., who were selling lamps supplied to them under contract by Hoffnung & Co., who imported them from America :

66

[ocr errors]

66

"Gentlemen,

19, Lincoln's Inn Fields, W.C.,

"2nd December, 1896.

"We are instructed by our client Mr. Henry Salsbury, of 125, Long Acre, to communicate with you as to an infringement of his Patent 10 (No. 17,160 of 1887) relating to coil springs to cycle lamps. Our client has "ascertained that you are manufacturing and offering to the trade lamps containing backs which are an infringement of the above Patent under the name "of The Witch of the Night,' and we must now on our client's behalf call upon you to inform us if you are willing to agree to the following conditions, 15 in default of which we are instructed to commence proceedings against you "forthwith for an injunction and damages.

66

66

6

"(1) To supply our client with an account of all sales effected by you, with "the names and addresses.

“(2) To pay our client the sum of 501. as damages.

66

20 (3) To give an undertaking not to manufacture or sell any more of the “infringing articles.

"We may mention that our client would be willing to grant you a license to "manufacture the article referred to in the form used by him at a royalty to be "agreed upon.

25

"Yours obediently,

(Signed)

"VALPY, CHAPLIN AND PECKHAM."

30

In consequence of this and subsequent letters Messrs. Bagshawe Brothers & Co. returned to the Plaintiffs the lamps they had in stock, and refused to accept the remainder of those to be delivered under the contract.

After considerable correspondence between the parties Hoffnung & Co. commenced an action against Salsbury on the 3rd of August 1897 to restrain the threats complained of. On the 10th of November 1897 the Comptroller-General allowed the Specification of Salsbury's Patent to be amended above.

The Plaintiffs, on the 10th of December 1897, delivered their Statement of 35 Claim, in which they alleged that (1) the Defendant, claiming to be the Patentee of an invention relating to coil springs for cycle lamps, had threatened Messrs. Bagshawe Brothers & Co., of 159, Queen Victoria Street, E.C., who were customers of the Plaintiffs, in respect of the use, sale and purchase of cycle lamps of the Plaintiffs' manufacture; (2) the Plaintiffs were aggrieved by 40 reason of such threats and injured in their business, and in consequence of the said threats the said Messrs. Bagshawe Brothers & Co., who had ordered from the Plaintiffs 3000 lamps, and who had received 1201 lamps, part of such order, returned to the Plaintiffs 800 of the said lamps, and cancelled their order for the remainder of the said lamps. Also that the Plaintiffs had been greatly 45 damaged in their business by reason of the said threats; (3) the manufacture,

Hoffnung & Co. v. Salsbury.

use, sale and purchase of the said lamps was not, in fact, an infringement of any legal rights of the Defendant. The Plaintiffs claimed (1) an injunction restraining the Defendant from threatening the said Messrs. Bagshawe Brothers & Co. or any other customers of the Plaintiffs with any legal proceedings or liability in respect of the manufacture, use, sale or purchase of the 5 cycle lamps manufactured by the Plaintiffs; (2) an inquiry as to the damages sustained by the Plaintiffs by reason of the threats of the Defendant; (3) costs; (4) such further or other relief as the circumstances of the case might require.

By his Defence, delivered the 12th of January 1898, the Defendant (1) denied 10 that he or his agents had threatened Messrs. Bagshawe Brothers & Co. as alleged in the Statement of Claim, and denied that the letters therein referred to were threats; (2) alleged that the Plaintiffs were not persons aggrieved within the meaning of the 32nd section of the Patents, Designs and Trade Marks Act of 1883, or that they had suffered any damage by reason of the alleged threats; 15 (3) alleged that, at the date of the alleged threats, Messrs. Bagshawe Brothers & Co. were in fact infringing the Defendant's Letters Patent (No. 17,160 of 1887) by the use, sale and purchase of cycle lamps.

On the 25th of March 1898, the Defendant delivered the following Particulars pursuant to an Order dated the 8th of February 1898. The Defendant has been 20 unable to obtain any of the lamps sold by Messrs. Bagshawe Brothers & Co., and referred to in paragraph 3 of the Defence; but the drawing in the "Cycle Trader" of the 25th of November 1896 (which the Defendant will produce for the Plaintiffs' inspection) of a lamp called "Witch of the Night" is a drawing of one of the said lamps sold by Messrs. Bagshawe Brothers & 25 Co., and it is in respect of the sale of such lamps that the Defendant will rely on at the trial of this action. The said lamp contains a coiled spring in the parallel motion working on one of the joint centres thereof, the one end of which spring is fixed or attached to the socket of the lamp, and the other end is fixed or attached to the side links or side frame of the parallel motion of the 30 lamp. The sale of such lamp is an infringement of the third claim of the Defendant's Patent (No. 17,160 of 1887).

By their reply, delivered the 3rd of May 1898, the Plaintiffs said that (1) as to paragraphs 1 and 2 of the Defence they joined issue thereon; (2) as to paragraph 3 of the Defence (a) they had not infringed the Defendant's Letters 35 Patent (No. 17,160 of 1887) as alleged or at all; (b) the said Letters Patent were at the date of the threats complained of by the Plaintiffs in this action, and are as amended at the present date, invalid for the reasons set forth in the Particulars of Objections; (c) the alleged inventions contained in the said Letters Patent at the date of the said threats, and in the said Letters 40 Patent as now amended, were not and are not new; (d) the said alleged inventions were not and are not useful; (e) the said alleged inventions were not and are not the proper subject-matter of Letters Patent; (g) the Defendant was not the true and first inventor of the said alleged inventions; (3) at the date of the said threats the Letters Patent in the Statement of Claim referred to were 45 invalid to the knowledge of the Defendant, and since the date of the said threats, and since the issue of the writ in this action, the Defendant has amended his said Letters Patent, and the Plaintiffs will allege that, by reason of the amendment by the Defendant of the said Letters Patent, the Defendant is estopped from alleging that at the date of the said threats the said Letters 50 Patent were valid and subsisting Letters Patent. The following Particulars of Objections were delivered with the Reply :-As to Patent No. 17,160 of 1887 before amendment (1) the said alleged inventions were not new; the inventions contained in the said Letters Patent had been published in this realm prior to the date of the said Letters Patent by the filing in the Great Seal Patent Office 55 Library of the Specifications of the following Patents:-As to Claim 1;

Hoffnung & Co. v. Salsbury.

Salsbury (No. 503 of 1882), p. 4, ll. 9-14, and Figs. 1 and 2; Miller and Miller (No. 16,952 of 1886), p. 3, 11. 5-10, 17-22, 27-30, and Figs. 1, 2, 3 and 10 of the unamended drawings, and the letterpress relating thereto. (B) As to Claim 3: Leeson (No. 4106 of 1881), p. 3, 11. 7-21, and Figs. 1, 2 and 3, and the letterpress 5 relating thereto; Lucas (No. 9764 of 1886), the whole. (C) As to Claim 4: Ward (No. 4021 of 1881), the whole. Also by the public general use for many years prior to the date of the Defendant's Patent of a device identical with Fig. 4 of the drawings attached to the Defendant's Specification in workshops as carriers for use in lathes. (D) As to Claim 5: Lucas (No. 9764 of 1886); 10 Salsbury (No. 16,074 of 1886). Also by the public general use for many years prior to the date of the Defendant's Patent of spring fasteners for doors, boxes and the like, constructed as described in the Defendant's Specification, and shewn in Fig. 6 of the drawings attached thereto; (2) the said alleged inventions were not useful; (3) the said alleged inventions were not the proper 15 subject-matter of Letters Patent. The Plaintiffs will say that all the devices described and claimed in all the claiming clauses of the Specification of the said Letters Patent were at the date of the said Letters Patent in public general use for the same and similar purposes, and were matters of common knowledge amongst all persons connected with the trade; (4) the Defendant was not the 20 first and true inventor of the said alleged invention; (5) as to Patent No. 17,160 of 1887 (amended) the Plaintiffs repeat paragraph 1, subsections A and B, and paragraphs 2, 3 and 4 hereof.

By Rejoinder delivered the 14th of May 1898, the Defendant (1) denied that at the date of the alleged threats complained of the Letters Patent (No. 17,160 25 of 1887) were invalid, or that they were at the present time invalid, or that they were at any time known to him to be invalid; (2) joined issue with the Plaintiffs on their Reply.

The action now came on for trial.

Moulton, Q.C., and Walter (instructed by Bird, Moore and Strode) appeared 30 for the Plaintiffs; T. Terrell, Q.C., and Graham (instructed by Valpy, Chaplin and Peckham) appeared for the Defendant.

Moulton, Q.C., opened the Plaintiffs' case.-This is an action to restrain the Defendant from threatening the Plaintiffs in respect of Patent No. 17,160 of 1887, which relates to cycle lamps. [The Specification was read.] The threats 35 complained of were made to Bagshawe Brothers & Co., who were customers of the Plaintiffs. [The alleged threats were then read.] No action for infringement was brought by the Defendant, and the Plaintiffs have been forced to bring this action to protect themselves. The result of the Defendant's threats was that Bagshawe, Brothers & Co., who had ordered 3000 lamps and had 40 received 1201 lamps, returned to the Plaintiffs 800 lamps and cancelled their order for the remainder. In the Defence it is alleged that the Plaintiffs are not aggrieved persons, but in the face of the above facts this contention cannot hold good. Subsequent to the date of the threats the Defendant amended his Specification by striking out two of the claims. By so doing he has admitted 45 that at the time of the threats his Patent was invalid. [Terrell, Q.C.-I shall contend that the Court cannot look at the unamended Specification.] Section 32 of the Patents, Designs, and Trade Marks Act gives a remedy to any person threatened "if the alleged manufacture, use, sale or purchase to which the "threats related was not, in fact, an infringement of any legal rights of the 50" person making such threats." The defence, therefore, must be infringement of legal rights; if the Patent is invalid there can be no infringement of legal rights and no defence. The Plaintiffs are doing an old thing, but are using a coil spring. Coil springs are old, and there is no subject-matter to support Letters Patent. The inventions claimed in the three claims in the amended 55 Specification are all old; the two claims struck out by amendment are too absurd even for the maternal love of a Patentee. Disclaimer acts as

« PreviousContinue »