Dick v. Ellam's Duplicator Company. proportion of severed threads is immaterial. The substance is old, the method of waxing is old, and the method of typing is old, and the whole thing is anticipated. Bousfield, Q.C., in reply.-There is one thing that is unquestioned in the whole case, though questioned in the pleadings, and that is the utility of 5 Allison's process. [COZENS-HARDY, J.-You need not trouble about that.] I want to call it in aid as part of my argument. There is no evidence that this process or anything like it was in use at the time of Allison's Specification. There was, in fact, no prior user at all; it was a new discovery, useful, and well described in the Specification. You have all the practical details described. 10 [COZENS-HARDY, J.-That is not challenged.] That is an essential to a Patent ; it must give complete instructions to put the invention into practical working. This is especially required when you come to deal with anticipations. Now, Allison's is a highly successful process. Is it conceivable that if it had been disclosed it was not in use? This is not conclusive, but is a very strong 15 argument that these Specifications did not disclose the process. I rely on Hills v. Evans (4 D.G. F. & J. 438). Prior knowledge must be enough to enable the public to carry the invention into practical use. Let us look at the anticipations in the light of this. You must not leave a man to find out the details for the practical working of an invention. This also applies to anticipa- 20 tions. Now, in this case nobody conceived the idea of doing this before; but you find in some old Specification what is said to be a description of our process. [COZENS-HARDY, J.-Johnson does not go to your first claim.] No; he describes the user in a type-writer. [COZENS-HARDY, J.-Will you explain Mr. Swinburne's views as to this?] He said: "This man's object was not to 25 "give two alternative methods, but to say that, if ordinary types would do it, "it would be absurd to give an alternative method." He had reversible type for this reason, ordinary type for ordinary use, and sharp type for stencil making. [COZENS-HARDY, J.-It is simply necessary to turn the types in order to form either description of characters; both apply to stencils.] Is it 30 conceivable that a man should provide two alternative methods of stencilling in the same machine? He means to use one for typing and one for stencils. He does not describe what is described in our invention. [COZENS-HARDY, J.— "Impervious to ink." That implies that the paper is pervious to ink; he means to make two stencils-one perforated and the other not.] He removes 35 a bit of a thin layer; we do not-we force it all out. We use Yoshino or a paper like Yoshino, highly porous, an open network, and then fill it up. [COZENSHARDY, J.-There is nothing to show that you cannot merely coat Yoshino; look at Claim 5.] The result is that you have a network glazed as it werethat is the principle; when you use the type-writer you unstop the holes in the 40 network. Johnson's language will fit Allison's, but you have no practical details. Why should it occur to anyone that Johnson should use thin paper? The paper for our process must be thin, tough, and highly porous. There is nothing of this in Johnson. The Defendants' witnesses say that success must depend on many things; but it cannot be shown that we have omitted to 45 describe any one thing essential to success. Johnson has none of these things; the very notion of using thin paper would have puzzled him. Then take Jeyes' paper; he uses a compound. [COZENS-HARDY, J.-You use a compound now.] He uses gum as an essential. [COZENS-HARDY, J.-No; he says preferably.] His paper is tough stuff like oiled silk, made with strong gum 50 chiefly. My point is this-here is a Specification for a certain product, nonporous paper, when treated; this paper is to be punctured, and therefore there is no point in porosity. Now, after Allison, you can prepare paper under Jeyes' Specification, with the knowledge given by Allison, that will work successfully. Jeyes had no idea of the result Allison produces; there are no practical specific 55 details there. [COZENS-HARDY, J.-Tell me what are your practical details.] They may be summed up thus :-First, you are told the purpose of the paper; this is an important guide, and will prevent any person from producing a paper Dick v. Ellam's Duplicator Company. like Gestetner's. You must produce a paper absolutely porous. Then you are told to take Yoshino. This is a type of the paper, and paraffine is the type of substance for coating it. The Defendants can take any paper but Yoshino, and any wax but paraffine. [CoZENS-HARDY, J.-They may take any paper but 5 Yoshino and papers like Yoshino ?], Yes; but Yoshino is the only one that will work. Claim 5 is just the claim for Yoshino. The words "substantially "as described" import the description, and show that you don't want a paper like Gestetner's. If it said "as Japanese copying paper," then I admit I should have nothing to say. [COZENS-HARDY, J.-Assuming the validity of your 10 Patent, I should say a person using Japanese copying paper would infringe.] I submit not; it must be so put together as to effect our objects. There is no description in any prior Specification of a suitable paper and a suitable wax put together in a suitable way to effect Allison's object. You must have specific words indicating the specific method of combining the paper and wax in a 15 suitable way. In the roller-skate case the second claim was for a clamp which was admittedly old; but the claim was held good on the ground that you must look at the whole invention. If you simply, wanted waterproof paper, and claimed Yoshino soaked in paraffine, Johnson would certainly anticipate. Here you have an entirely new process. I submit that the claim is perfectly 20 good, and has been infringed. [COZENS-HARDY, J.-If the first claim is good there is clear infringement.] Now, as to the process, there is also infringement. The disclaimer only goes to distinguish the Patentee's from previous stencils. He does not claim the abrading processes, and by abrasion he means puncturing or removing fibre. All he says is that his discovery depends on the simple 25 pressure of the type-writer to make an effective stencil. The Patent is good and has been infringed. Judgment was reserved, and delivered on the 15th of June. COZENS-HARDY, J.-In this case the Plaintiff, who is the owner of a Patent taken out by Allison in 1887, claims an injunction and consequential relief in 30 respect of the infringement of that Patent. 66 Assuming the validity of the Patent the infringement is clear, and the only question for my decision is whether the Patent is valid. The Defendants allege that it is bad for want of novelty, and they rely upon prior publication in certain Specifications to which I must refer. They also allege that the 35 invention is not the proper subject-matter of Letters Patent, but I do not propose to treat this as distinct from want of novelty. The Patent is for "Improvements in the process of and apparatus for the copying, duplication "and printing of writings, drawings, type-writing, prints and designs." Put shortly it is a Patent for a product and for a process. It is, however, necessary 40 to read the Specification carefully. On page 2 the inventor says:-"The "invention consists in improvements in the process of and apparatus for the "copying, duplication and printing of writings, drawings, type-writing, prints "and designs. To make a stencil, or rather a transmitting duplication sheet, I use a thin, tough, highly porous sheet coated or filled with a material 45" impervious to ink, the sheet being so thin and porous that wherever the filling or coating is removed, the sheet becomes open to the transmission of ink. By preference the sheets should be so highly porous that after being coated with "paraffine and written on with a type-writer the points of impression will be open to transmission of printer's ink. The process is to coat a thin porous 50 "sheet, such as Japanese dental paper or Yoshino, or any other sheet of "adequate thinness, toughness and porosity with a material impervious to ink, "such as paraffine, or any other suitable substance impervious to ink." It is plain that this applies to any kind of paper which is at once thin, tough and highly porous, and to any kind of coating with a suitable substance impervious 55 to ink. Having thus produced the sheet the Patentee describes what is to be done with it. The process is to "make the desired writing, design, type-writing, "or print on it with a writing or imprinting instrument, thus opening the pores to the transmission of ink, without the aid of chemicals or any 66 66 66 66 Dick v. Ellam's Duplicator Company. "puncturing or abrading bearing surface plate, or instrument. In writing with "the stylus there will indeed be a slight incidental abrasion; that this is not "essential to the process, however, is shown by the fact that the simple pressure "of the type-writer is effectual without any abrasion. The duplication of type"writing is one of the chief functions of this sheet." He then says that a 5 backing is desirable, but not essential, and indicates that gum or wax may be used :-"When using a gummy or waxy coating or filling, as paraffine, the "filling is by preference partially transferred by adhesion to the bearing surface "on which the sheet rests in the operation of making characters and designs "with a writing or imprinting instrument; that is, the filling under the writing 10 "or imprinting instrument is pressed against and adheres to the bearing surface, "and is thus pulled out of the pores of the sheet on the removal of the sheet "from the bearing surface. As a bearing surface to which the paraffine will "adhere most perfectly I may use a sheet of silk bolting cloth or of paper "embossed with fine corrugations, but this is not necessary." He then 15 describes one particular mode of preparing the sheet. I need not read this because it has been proved that it will work though it is not the mode actually and ordinarily adopted by the Plaintiff. He then proceeds as follows:-"I do "not claim this process of waxing the sheet, however, but only describe it to "enable it to be made without difficulty. I believe that well known methods 20 "of manufacture are equally efficacious." He then decribes how the sheet with writing or other characters thus upon it may be used to multiply copies :-"The transmitting duplicating sheet having been duly made and had the "desired characters written or imprinted on it, opening the pores in the desired "form as aforesaid, I then stretch it over a bed saturated with ink, and the ink 25 presses through on a sheet of writing or printing paper laid on it in such a manner as to receive a duplication of the writing, design, print, or type"writing, written or impressed on the transmitting sheet according to any of "the well known methods of running off copies from a stencil. This trans"mitting sheet may be used without the bed, however, with the ordinary 30 "roller and with other well known appliances, and even with dry powdered "ink, bronze, or colouring matter." Having thus stated what he claims he proceeds to state what he does not claim, or rather what he disclaims:-"I do "not claim any of the particular bearing surfaces which may be used in making "said transmitting sheet as a feature of my process. I disclaim the methods of 35 "making stencils or transmitting sheets by abrading or perforating or breaking "the texture or fibre of a sheet not sufficiently open to permit the transmission "of ink on the mere removal of the filling or coating, whether such filling or coating be of paraffine, wax, varnish, or other substance; and I also disclaim "the use of chemicals for the purpose of removing a coating and varnish or the 40 like, and at the same time eating into the texture of the transmitting sheet "where the pores of the sheet are not themselves sufficiently open to permit the "transmission of ink without corrosion." He then in the usual manner makes five claims. The first is this:-"A transmitting printing sheet consisting of "a thin porous transmitting sheet, through which ink is readily transmitted, as 45 Japanese dental paper or Yoshino filled or coated with a substance imper"vious to ink, as paraffine, substantially as described." 66 66 66 66 66 On the construction of this Specification I think it is reasonably clear that Claim No. 1 is simply for a product, namely, a sheet of thin porous paper filled or coated with a substance impervious to ink of such a nature as to be capable of 50 being used as a stencil, but without reference to the use which may be actually made of this product. Claim 2 is as follows:-"A transmitting printing sheet "consisting of a thin porous sheet through which ink is readily transmitted, "such as Japanese dental paper or Yoshino, filled or coated with a substance "impervious to ink, as paraffine, and having this filling or coating_removed at 55 "the lines or points of printing, substantially as described." I think this Claim 2 is for the same product used as a stencil. Then Claim 3 is:-"The 66 process of preparing the transmitting, printing, or duplicating sheet, consisting 66 Dick v. Ellam's Duplicator Company. "in coating or filling a thin porous sheet open to the transmission of ink with "a substance impervious to ink, and then removing the coating or filling in the "desired form by the pressure of a writing or printing instrument without the "aid of chemicals or of any puncturing or abrading instrument or plate making 5 "orifices in the sheet, or corroding or breaking the fibre thereof to open a "passage for the ink, substantially as described." I think Claim 3 is for the process by which the product is turned into a stencil, whether by means of a stylus or by any kind of printing instrument. Then Claim 4 is as follows:The process of preparing duplicating sheets for type-writing, consisting in coating or filling a thin porous sheet open to the transmission of ink, such as "Yoshino or Japanese dental paper, with a substance impervious to ink, such "as paraffine, and removing the same by the pressure of the type in a type"writer, substantially as described." I think Claim 4 is for the particular process by which the sheet is turned into a stencil by means of a type-writer. 15 Claim 5 is:-"A transmitting printing sheet consisting of a sheet of Japanese "dental paper or Yoshino coated with paraffine, substantially as described." I think Claim 5 is the same as Claim 1, except that it is limited to the Yoshino coated with paraffine. 10 " In order to ascertain whether the Patent is valid it is necessary not only to 20 construe the Specification as I have endeavoured to do, but also to ascertain what was the existing state of knowledge, and in approaching this consideration I have regard to, and I desire in all respects to follow, the rule laid down by Lord Westbury in Hills v. Evans. 35" Prior to 1887 stencils were made by perforating sheets of paper so as to admit 25 of the transmission of ink through the perforations. Another process was by means of chemicals, which removed a sufficient portion of the sheet to allow the transmission of ink. In 1874 Jeyes had taken out a Patent in which he had indicated that Japanese, Chinese, or other similar paper with a long fibre might be saturated or covered with a compound for the purpose of making water. 30 proof paper. In the same year, 1874, Zuccato had shown how to make a porous paper into a stencil by means of the application of chemicals. In 1881 Gestetner had taken out a Patent for an improved process, apparatus, and material for producing copies of writings, drawings, and other delineations, and in this Specification he says:-"The specially prepared paper to be used in the production of the stencil I make as follows:-I take what is known as "Japanese copying paper, and apply to one side thereof a thin even coating of " wax." This was the state of knowledge in 1887 when the Plaintiff took out his Patent. In my opininon Claim 1 of the Plaintiff's Patent is not for the process of printing or using a sheet as a stencil, but simply for the sheet itself. 40 I think there is nothing more in this than Gestetner had indicated, and probably nothing more than Jeyes had indicated. The evidence has satisfied me that the Japanese copying paper, as mentioned by Gestetner, when covered by a thin and even coating of suitable wax, is paper proper for making stencils, and in fact it has the adequate thinness, toughness, and porosity. The first claim, in my 45 opinion, is not novel. This being so it is not necessary for me to consider the rest of this Specification; but I may add that I think Johnson's Patent of 1885 gives to the public adequate information as to the process by which, with ordinary type used in a type-writer, a thin layer of some substance impervious to ink may be removed from paper pervious to ink so as to produce a stencil. 50 This is neither more nor less than what the Patentee told the public. The sheet was old, the type-writer was old, and placing a sheet in a type-writer to produce a stencil was old. On this ground also I think the Patent is invalid. I have not thought it necessary to consider the precise effect of the disclaiming clauses in this Specification. The evidence satisfies me that the success of the 55 Plaintiff's process really depends on the fact, which was not realised by the Patentee, that perforation to a considerable extent does take place when a typewriter is used. The microscope leaves no doubt on this point. I only indicate this as a difficulty in the way of the Plaintiff, but I do not base my decision upon it. I assume, in favour of the Plaintiff, that his disclaimer may Dick v. Ellam's Duplicator Company. be read as applying only to a method in which perforation avowedly takes place, not to a case in which perforation may be regarded as inevitable but none the less as a lucky accident. For these reasons I must dismiss the action with costs. After some discussion a certificate was given as to No. 1 of the Particulars of 5 Objections, but limited to the Specifications mentioned under (a), (b), (c), and (k), and also as to No. 5. An application to stay the taxation of the costs pending an appeal was refused. IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE KEKEWICH. April 21st, 22nd, and 25th, 1899. PAYTON & Co., LD. v. TITUS WARD & Co., LD. Action for passing off goods.-Similarity of Defendants' coffee tins to Plaintiffs' coffee tins.-Injunction granted.-Execution stayed by consent. 10 The Plaintiffs, who sold "Royal" Coffee in tins, some of which bore red, 15 blue, and green labels, while others were enamelled in the same pattern on a red or blue ground, brought an action to restrain the Defendants from selling "Palais Royal" Coffee in tins which were enamelled in a somewhat similar pattern on a green or chocolate ground. The Defendants and their predecessors had for many years, and before the Plaintiffs' "Royal" Coffee was on the 20 market, sold "Palais Royal" Coffee in tins with certain paper labels, which bore no resemblance to the Plaintiffs' labels in pattern or colour, and they subsequently began to use enamelled tins having a green or chocolate ground, the use of which tins the Plaintiffs sought to restrain. Held, that as the similarities between the Plaintiffs' and Defendants' tins were 25 so great, and as the Defendants' tins as a whole so nearly resembled in general appearance the Plaintiffs' tins as to be calculated to deceive, the Plaintiffs were entitled to an injunction and other consequential relief; but, on the application of the Defendants, execution was, with the consent of the Plaintiffs, stayed pending an appeal, the Defendants undertaking to keep an account and to give 30 notice of appeal within a week. Payton & Co., Ld., who were the Plaintiffs in the action of Payton & Co., Ld. v. Snelling, Lampard & Co., Ld. (ante p. 283), in November 1898, commenced an action against Titus Ward & Co., Ld., grocers, of Beer Lane, Great Tower Street, London. 35 By their Statement of Claim the Plaintiffs alleged as follows:"2. In the year 1895 the Plaintiffs designed and adopted an entirely new and "distinctive method of putting up their French coffee and offering for sale and "selling the same, that is to say they put up the same and offered it for sale "and sold it in cylindrical tins in three sizes containing respectively one pound, 40 "half pound, and quarter pound. They also distinguished three qualities of "their said coffee by the colours of the labels, viz. green, blue, and red. One |