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Hoffnung & Co. v. Salsbury.

an admission of invalidity (Fusee Vesta Company v. Bryant & May, 14 R.P.C. 191).

Terrell, Q.C., opened the Defendant's case. --The Plaintiffs are not aggrieved persons within section 32 of the Patents, Designs, and Trade Marks Act. The Patent in this case is for a small invention which has been a great commercial 5 success. Nearly all the lamps in the market have adopted the Defendant's method, which is strong evidence of utility. As regards the question of the state of the Patent at the time of the threats, section 18 of the Act says that " the amendment shall in all Courts and for all purposes be claimed to form " part of the Specification.” I also rely on Moser v. Marsden, 13 R.P.C. 24. 10 A Patentee has legal rights under an invalid Patent. Although his Patent may be invalid he may amend it, and if section 20 of the Act is complied with he can recover damages. Each of the three claims in the amended Specification is good, and there is sufficient novelty to uphold them. Assuming all the parts of the patented article are old, if the Patentee has done something better, 15 simpler, or cheaper than has been done before, his Patent will be good (Cannington v. Nuttall, 5 H.L. 205).

After witnesses had been called for the Defence,

Graham summed up for Defendant.-On the evidence the Plaintiffs are not aggrieved persons. Granting, for this argument, that the Defendant's threats 20 did cause Bagshawe Brothers & Co. to return the lamps, the Plaintiffs should have refused to take them back, and should have enforced their legal rights against Messrs. Bagshawr. The Plaintiff's say that they wished to live at peace with their customers. Well and good, but they cannot afterwards turn on us. [BYRNE, J.-If a person may be involved in a lawsuit by the act of the Patentee 25 is he not an aggrieved person?] Messrs. Bugshaur might have been aggrieved if the Plaintiffs had held them to their contract. [BYRNE, J.-Are the Plaintiffs bound to go to law and enforce their right against Messrs. Bugshawe?] No ; but they must not make the foregoing of that right the foundation of an action against the Defendant. It was entirely a matter of policy with the Plaintiffs. 30 [BYRNE, J.-If you tell a man's customers that he is selling infringements of your Patent is he not an aggrieved party ?] After the threats the Plaintifs were willing to indemnify Messrs. Bugshawe. It was not owing to the Defendant's threats that they returned the lamps, but for some other reason.

Moulton, Q.C., in reply.-Even as the Patent stands after amendment there is 35 no invention or novelty. There must be some limitation to claiming minute alterations. The Plaintiffs use an ordinary mounting with an ordinary coil spring, which is an ordinary variation which any person is entitled to take (Jorgan v. Windover, 7 R.P.C. 131). Even as the Patent stands there is no infringement. The Patentee specifically claims his spring on the body of the 40 lamp, and has told the Court that his invention was the position in which he put it. The Plaintiffs' spring is not on the body of the lamp but on the socket, therefore the Plaintiffs do not infringe. The Plaintiff's have not infringed any of the Defendant's legal rights. The only rights they could infringe were those he had at the time of the threats; on this the language of the section is clear. 45 If the Patent was not valid at the date of the threats then the Plaintiffs are entitled to win. There are no legal rights under an invalid Patent. It is not necessary to prove damage. I am aggrieved by a person going about saying that I am infringing (Challender v. Royle, 4 R.P.C. 363). On the question of damages, I submit that it is the duty of everyone who is going to make a 50 claim to act reasonably so as to minimise his damages. When the Defendant threatened, the Plaintiffs did what every reasonable and honest business man would do. If they had enforced their strict legal rights against their customers their future loss would have been immense. In Joser v. Marsden Lord Watson was only thinking of infringement subsequent to amendment. I 55 submit it does not apply to a case of threats.

Hoffnung & Co. v. Salsbury.

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BYRNE, J.-This is an action to restrain the Defendant-a Patentee-from threatening Messrs. Bagshawe Brothers & Co. or any other customers of the Plaintiffs in respect of the manufacture, use, sale or purchase of certain cycle

lamps manufactured by the Plaintiffs, and for an inquiry as to damages. The 5 Defences are :-first, that the alleged threats are not threats ; second, that the

Plaintiffs are not persons aggrieved within section 32 of the Statute of 1883 ; third, denial of damages ; and, fourth, that at the date of the alleged threats Messrs. Bagshawe Brothers & Co. were, in fact, infringing.

By their Reply the Plaintiffs deny the infringement by Messrs. Bagshawe 10 Brothers & Co., and dispute the validity of the Letters Patent on various

grounds, the main ground being that the alleged inventions were not, and are not, the proper subject matter of Letters Patent. It is clearly proved that the

Defendant did threaten Messrs. Bagshawe Brothers & Co., who were customers,

and had given an order for 3000 lamps. The Specification of the Defendant's 15 Patent (No.17,160 of 1887) was since the issue of the writ in the action amended

by striking out two of the claims, and the drawings and letterpress referring to such claims. I think there can be no doubt-in fact, it was hardly if at all disputed at the Bar—that the Patent was invalid in its original form.

I think it is quite clear that the Plaintiffs are persons aggrieved within the 20 meaning of section 32 of the Act of 1883, their customers having been threatened.

(See, amongst other cases, Burt v. Morgan, 4 R.P.C. 275 ; and Johnson v. Edge, 1892, 2 Ch. p. 1.) The infringement alleged by the Defendant is of the third claim of the

Letters Patent, and in his Particulars the infringement is described, after 25 referring to the lamp, as follows :-“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 lamp." 30 The Plaintiffs' lamp does contain a coiled spring in the parallel motion

working on one of the joint centres thereof, and although the spring is not fixed or attached to the socket or to the side links of the lamp, if the Defendant's Patent and his third claim are good, I doubt whether this

act would prevent the Plaintiffs' lamp from being an infringement. I propose to take the Specifi35 cation as amended, and to consider whether or not Claim 3 can be sustained.

That Claim 3 is as follows :-" The compensating spring H coiled on one pin “ of the suspension apparatus and connected to one link and to the body of the "cycle lamp as set forth.” In the body of the Specification the subject of this

claim is thus described :—“In addition to the springs before mentioned I employ 40 “ a compensating spring H, preferably of coiled form, having one end secured to

“ the lamp body or back strap at 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 45 “ in the lamp being the result.”

Now, I find in Miller's Patent (No. 16,952 of 1886) the use of a spiral compensating spring used for the same purpose, and fulfilling a similar function as the spring in the Defendant's lamp, the difference being that the

spring in Miller's lamp operates by direct tension without being coiled on a pin 50 of the suspension apparatus. The mechanical operation of the spring in the

one case and the other are perfectly well known as applied to door hinges and other objects. In Lucas' Patent (No. 9674 of 1886) a lamp is described having a spring like Miller's, but not directly attached to the body and socket of the

lamp. Both Lucas' and Miller's are lamps to be used as head lamps for 55 cycles.

In Leeson's Patent (No. 4106 of 1881) I find a spiral spring identical for all

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Hoffnung & Co. v. Salsbury.

practical purposes with that of the Defendant's, fulfilling the same function and coiled round one of the parallel centres. This is a lamp intended for use upon the hub of a cycle ; but apart from this fact, and from some immaterial difference of construction, the arrangement and operation of the spring in this lamp appears to me to be identical with the arrangement and operation of the spring 5 in the Defendant's lamp.

Having regard to the three Patents to which I have referred and to the evidence, I cannot say that I can find any invention in Claim 3 of the Defendant's Specification sufficient to support a Patent. It appears to me to be the application of a known form of spring in a known way to a head lamp 10 instead of to the hanging or hub lamp.

Inasmuch as I ain of opinion that Claim 3 of the amended Specification is invalid, it becomes unnecessary to consider whether or not there is any foundation for the argument addressed to me suggesting that, in considering the title of the Plaintiffs to an injunction, I ought to treat the case as though the Patent 15 had been amended at the date of the threat. I think that the Plaintiffs have clearly made out their right to an injunction.

There remains the question of the right to an inquiry as to damages to be dealt with. Messrs. Bugshawe Brothers & Co. declined to fulfil their contract on being threatened, and, although the Plaintiffs offered to indemnify them, 20 declined to go on with the contract, intimating that the indemnity of the Bank of England would not induce them to run the risk of an action by the Patentee. Instead of insisting on the contract being fulfilled, and taking upon themselves the burden of losing old customers and proving in validity of the threats, the Plaintiffs submitted to their customers' claim to be entitled to cancel their 25 order, and it is said by the Defendant that, because they did do so and did not litigate with their customers, no sufficient evidence of injury has been shewn to establish a right to an inquiry. I am of opinion that this contention cannot prevail. I think there is undoubted evidence of some damage to the Plaintiffs by reason of the threats sufficient to found an inquiry. I say 30 nothing about the amount, but grant the injunction and the inquiry as to damages. The Plaintiffs were put in the position of having to litigate and quarrel with their customers or of submitting to lose their bargain, and I think it is clear they suffered damage. The Defendant must pay the costs up to and including judgment, the costs of the inquiry being reserved.

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Griffiths v. The Birmingham Stopper and Cycle Components Company.

IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.

Before MR. JUSTICE CHANNELL.

August 11th, 1898.

IN THE COURT OF APPEAL.

5 Before LORDS JUSTICES A. L. SMITH, VAUGHAN WILLIAMS and Romer.

May 18th, 1899.

GRIFFITHS v. THE BIRMINGHAM STOPPER AND CYCLE COMPONENTS

COMPANY.

Patent.-Action for infringement.Validity.Infringement.-Judgment for 10 Plaintiff's at trial.- Appeal.- Appeal allowed.

Letters Patent having been granted in 1895 for Improvements in stoppers for jars and other like receptacles,the Patentees brought an action for infringement of the same. The Defendants denied infringement, and alleged

that the Patent was anticipated by a Patent of 1865 granted to T. The stopper 15 patented by the Plaintiffs belonged to the class in which the upper and lower

parts can be approximated, thus compressing elastic material placed between them causing it to extend laterally, and when the stopper is in place to make an air-tight joint. In the Plaintiffs' stopper the pressure was applied through the

intervention of a pressure plate, which did not exist in T.'s stopper or in the 20 alleged infringement. Held, at the trial, that the Patent was valid and had been infringed. The Defendants appealed.

Held, by the Court of Appeal, that the appeal must be allowed and judgment must be entered for the Defendants, since, unless the essential feature of the

Plaintiffs' Patent was the introduction of the pressure plate, it was anticipated 25 by T.'s Patent, and, if the essential feature was the introduction of such plate,

the Defendants did not infringe.

On the 30th of November 1895, Letters Patent (No. 22,918 of 1895) were granted to Harry Albert Griffiths and Richard Hanson Griffiths for an invention of Griffiths v. The Birmingham Stopper and Cycle Components Company.

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66

ears

“ Improvements in stoppers for jars and other like receptacles." The Complete Specification, as amended, was as follows :

“ This invention consists of improvements in lever or similar stoppers for “ jars and like receptacles, our object being to provide more efficient and “ durable means whereby the stopper is secured within the mouth of the jar 5 or other receptacle than exists with the stoppers at present in use.

“ In the accompanying sheet of explanatory drawings to be hereinafter “ referred to-Figure 1 is a front elevation of our stopper when open, and “ Figure 2 is a similar view when closed. Figure 3 is a plan of the complete

3 a “ stopper, and Figure 4 a plan with the top plate or cap removed. Figure 5 is 10

a sectional elevation of the complete stopper when open, and Figure 6 a “ similar view when closed. Figure 7 is a sectional elevation of the base or “ lower part of the stopper, and Figure 8 a front elevation of the same.

Figure 9 is a plan, and Figure 10 a sectional elevation of the pressure plate.

Figure 11 is a plan, and Figure 12 a sectional elevation of the body of the 15 “ stopper. The same reference lettersin the different viewsindicate the same parts.

“ In the application of our invention to the construction of a lever type “metallic stopper for a jar or bottle containing pickles, preserves, or the like,

we form the head or upper part with a projecting ring or body such as A

serving as a socket for the reception of the base or lower part B of the stopper. 20 “ Within the interior space between the head and the base of the stopper we "insert a pressure plate C preferably of steel, having its central portion dished

or recessed to form a seating for the closing lever D hereinafter described, “and having projections preferably of four in number from its under side for

seating upon the internal flange or shoulder of the stopper head. The stopper 25 “ base B is formed to a cup or other suitable shape, and has a pair of lugs or

B' projecting within the space between the head and the base of the stopper, through which we pierce slots or apertures B’ to admit the head or cross piece of the closing lever D or its equivalent. The ends of the cross piece of the lever are recessed to fit within the slotted projecting lugs or 30

ears B', and thus a hinge or pivot connection is formed between the lever "and the base of the stopper. When the stopper is opened, or before its "insertion within the mouth of the jar or bottle, the flat part of the lever

cross piece rests upon the dished surface of the pressure plate hereinbefore "described, and its stem or long arm projects vertically through a slot or 35

aperture in the head of the stopper, as illustrated at Figures 1 and 5. An “external flange or shoulder A' is provided upon the stopper head, which, on "insertion of the stopper within the jar or bottle, rests upon the upper extremity " of the neck. When thus inserted within the jar the stopper is secured, and " an air-tight joint is formed by depressing the projecting stem of the lever to 40 “ its horizontal position, as at Figures 2 and 6, and so causing the short end or

cross piece of the lever D to raise the base whilst firmly pressing the head

upon the neck end. In this manner the ring of india rubber E or other “ suitable material placed between the bead and base of the stopper is expanded “ tightly against the interior surface of the jar mouth, thus forming an air. 45

tight joint in the ordinary manner. A depression or seating is provided on “ the outer surface of the head to receive the lever stem when in its horizontal

or closed position, and thus to bring it flush or level with the top of the head. “ The outer end of the stem is formed suitably for convenient manipulation by

the fingers. The complete head or upper part of the stopper is preferably 50 “ formed from a flanged ring or body A as herein before described with a top

plate or cap A’ secured to the same in any ordinary manner. To prevent

independent movement or rotation of the base and the pressure plate " and lever relatively to the headl, we form indents or projections such as A' “ from the inner surface of the flanged ring or body A engaging with or acting 55 " as stops against the pressure plate.

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