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Kane v. Guest & Co.

removed from the pan and treated in the ordinary manner. In practice it is “ found that the addition of glucose to the cane sugar is a matter of great advan

tage, as it permits the compound to be brought in the vacuum pan to a condition “not otherwise attainable, and also for the reason that the resulting product “ possesses greater strength, durability, and brilliancy than it would otherwise 5 “ have.” Then, after some further passages which I will not refer to at present – he claims :-“(1) The improved method of manufacturing candy, “ consisting in cooking a compound of cane sugar or beet sugar and glucose " in vacuo until it acquires a consistency appropriate for the production of the

candy demanded. (2) The improved method of manufacturing candy, 10 “consisting in cooking cane sugar and glucose in vacuo, until it arrives at a “ hard crack' or stick consistency. (3) The new product, the candy produced “ by boiling cane sugar and glucose together in vacuo.

Before commenting on this Specification I will advert to the case of prior publication. It appears that in 1884 Messrs. Kirchhoff, on whose premises Mr. Joffat 15 carried on his experiments, took out a Patent in the United States of America for improvements in process of and apparatus for the manufacture of confectionery, including candies. This Patent has been revoked in America at the instance of Mr. Joffat, but a copy of the Specification found its way to the Patent Office in this country, and was there published in August, 1885, before the date of the 20 Plaintiff's Patent, and this publication was relied on as a prior publication. Messrs. Kirchhoff state :—“Our invention relates to processes for manufacturing candies, jellies, preserves, and confectionery generally, and it consists of a

process embracing the following steps.” Then they enumerate three :" Dissolving the cane sugars and grape sugar separately or together in a vessel 25 “ having a steam jacket, a steam coil, and a stirrer for mixing the contents; “ second, boiling the dissolved cane sugars or syrup and grape sugar or glucose “ into candy by means of a vacuum pan or other vessel from which the air and “ vapours are extracted, either by air-pump, by condensation, by water spray, “ surface condenser, or any other combination of either two or three methods 30 " combined ; third, cooling or heating the boiled product in a vessel constructed “ with a double bottom and jacket, by which either water or steam can be “ circulated so as to cool or heat the contents to a desired temperature by * regulating the steam or water supply. By using the above-described process

we will be enabled to use sugars and molasses or syrups of lower grades than 35

are used by the present process of manufacturing candies and other con. “ fectioneries. Candies and other confectioneries can be manufactured at a “ saving of time and labour, thus reducing the first cost of same. The sugars “and syrups used in the manufacture of candies are not discolored by long “ boiling and exposed to high temperatures. The syrups and sugars used in 40 “ the manufacture of candies and other confectioneries are not converted into

grape sugar, thus enabling the manufacturer to use a much larger percentage " of grape sugar or glucose in making candies and other confectioneries. A "great saving in fuel is accomplished throughout the entire process”-and then they describe the mode in which it is carried out.

45 Now, it is to be observed that it was here pointed out that by the use of this apparatus discoloration is avoided, and also that the syrups and sugars used in the manufacture of candies are not converted into grape sugar, thus enabling the manufacturer to use a much larger percentage of grape sugar or glucose in making candies and other confectioneries. So that clearly this is a Patent 50 which extends to confectioneries generally, and is not limited to stick candy. The first two steps in the Kirchhoff process are identical with those of the Plaintiff, but the third step forms no part of the process described in the Plaintiff's Patent, and according to the evidence the use of it would be detrimental in the manufacture of stick candy.

55 It is contended that the Patent of the Plaintiff is bad for want of subject matter, there being as it is said no invention in applying a vacuum pan to

Kane v. Guest & Co.

boiling candy, inasmuch as it had already been applied to get rid of discoloration in making sugar. It appears, however, that difficulty was found in the use of the vacuum pan in making stick candy, and it was only after the

Plaintiff made his expensive experiments that this difficulty was overcome by 5 the use in the manufacture of a percentage of glucose not less than 25 per cent.

I am not persuaded that if the Patent had been confined to the manufacture of stick candy by boiling or cooking in a vacuum pan a mixture of cane sugar with not less than 25 per cent. of glucose there would not have been sufficient

subject matter to support it; but it appears to me the Specification is not 10 confined to stick candy nor to such mixture. At the very beginning of the

Specification the inventor states that the object of the invention is to produce candy, more particularly stick candy, showing that it is not limited to stick candy alone. At page 2, line 15, the essence of the invention is described to

consist in subjecting a compound of cane sugar and glucose or grape sugar to a 15 cooking or boiling action in vacuo, and he points out that the apparatus and

process are to be varied according to the nature of the sugar employed and the character of the candy required, showing, therefore, that he contemplated its application to candies of different characters. Then he goes on to say, no

doubt, that the process is directed chiefly to the manufacture of stick candy, as 20 it seems to meimplying that it is applicable also to the manufacture of other candy.

Then, when we come to the claiming part, his first and second claims are contrasted. The first claim is :-“The improved method of manufacturing

candy, consisting in cooking a compound of cane sugar or beet sugar, and

glucose in vacuo, until it acquires a consistency appropriate for the production 25 “ of the candy demanded"; and the second is :-“The improved method of

“ manufacturing candy, consisting in cooking cane sugar and glucose in vacuo “ until it arrives at a hard crack' or stick candy consistency.” It is no doubt to be observed that at line 42, page 2, the inventor says this, that he is aware that

compounds of glucose and grape sugar”—that ought to be read cane sugar, 30 and is obviously a mistake--" have been cooked in open pans for the production

“ of candy, but believes himself to be the first to cook a compound of grape

sugar and glucose in vacuo for the purpose of bringing the same to the proper

consistency for the production of stick candy or analogous candy. The essence

of this invention in this regard resides not merely in the substitution of one 35 “ means of evaporation in place of another, but in the fact that the particular

“ compound treated—that is to say, a compound of glucose and cane sugar“ will, when cooked in vacuo, form a product differing in its nature from any

candy heretofore known in the art and unobtainable by the use of the open

pan. It was said that the Patentee limited the operation of his Patent to 40 stick candy or analogous candy. This, however, seems to have the effect of

reducing Claim 1 of the Patent to mere surplusage. Again, it is certainly nowhere stated in express terms that the Patent is confined to a mixture of glucose and cane sugar containing not less than 25 per cent. of glucose. The

use of a larger percentage of glucose is pointed out as an advantage in more 45 ways than one; but it seems to me the Specification carefully avoids any

limitation in respect of the percentage of glucose used, and the importance of this limitation is shown by the evidence to which I have referred of the Defendants' witness, Alexander Hall. If it was meant to limit the operation of

the Patent to stick candy, in the manufacture of which a large proportion of 50 glucose was employed, I do not understand why that first claim was inserted.

On the whole, I come to the conclusion that the Patent extends to subjecting

any compound of cane sugar and glucose to a cooking or boiling action “ in vacuo.” This being so, I think that the Patent as it stands is bad by

reason both of the want of subject-matter and hy reason of Kirchhoff's Specifi55 cation having disclosed the invention as applied to candies other than stick

candy, for the manufacture of which the use of the third vessel could not be inappropriate.

Kane v. Guest & Co.

The result is that the action fails ; but, as the case may go further, I think it right to express my opinion on the question which I have not hitherto dealt with, namely, that as to prior user, on which there was a considerable conflict of evidence. This prior user was that by Mr. George Peter Damiral, who was called as a witness. He stated that he had carried on business as a wholesale 5 confectioner for thirty-two years, during which period he had made stick candy; that when he first made this candy he used cream of tartar, and also used glucose, boiling the material in an open pan ; that a Mr. Hyde, who had been a traveller for a firm in Glasgow, and a practical chemist, conceived the idea of making candy by a vacuum pan ; that in consequence Mr. Hyde and 10 himself had a vacuum pan made and fitted up in the year 1881, originally in a sugar refinery, and afterwards in the same year removed to the witness's own works ; that Mr. Hyde came from time to time to the works and used the pan for the production of candy; that though, as he put it, “every boil was not "perfect," still some were, and that the product was sold in the ordinary way 15 and cash got for it, and this was done off and on whenever Mr. Hyde found it convenient to come to the witness's premises for a period of about two years. The vacuum pan had not remained in the witness's possession, but was sold about eighteen months ago to Messrs. Allen and Hanbury, and a photograph of it was put in evidence. Mr. Damiral's evidence was confirmed by that of 20 Charles Webb and Robert Deure, two workmen in his employment. Mr. Damiral admitted that in 1888 he heard that vacuum pans were being worked, and that he and Mr. Hyde consulted a Patent Agent, but, having no funds, he went no further ; that he was threatened with legal proceedings if he used his pan, and that in consequence of such threats he dropped the use of it. There 25 was a considerable conflict of evidence between Mr. Damiral on the one hand and Mr. Moffat, whom I have already mentioned, and two witnesses named Barrat as to what passed at certain interviews between them. It is not necessary for me to go through all those details. It is sufficient to say, having seen all the witnesses, I see no reason to doubt that Mr. Damiral, Webb, and 30 Deare were credible witnesses, and that what they stated as to the use of the vacuum pan is in substance correct. It is, however, to be observed that Mr. Damiral does not appear to have worked the vacuum pan himself, and he does not state that he ever arrived at the discovery that it was necessary to use not less than 25 per cent. of glucose, or, indeed, any other percentage in the process. 35 His admission, "I do not say that every boil was perfect,” seems to show that no definite rule of this kind was arrived at. Neither of the workmen saw or knew anything of the process adopted by Mr. Hyde. The working evidently continued for a very short period, and did not, according to Mr. Damiral's own evidence, continue after 1883. Though Mr. Hyde was still alive in 1888, and 40 though Mr. Damiral had incurred all the expense of providing the vacuum pan, nothing was done by either for eight years, and in 1888 they consulted a Patent Agent, and neither of them did anything further. Under these circumcumstances I should come to the conclusion that the user of the vacuum pan by Mr. Damiral and Mr. Hyde was in the nature of an experiment, and was 45 abandoned before a uniformly successful mode of using a vacuum pan for the production of stick candy was arrived at, and if the Specification had been limited in the way I have suggested I should not have thought that the Plaintiff's title to the Patent was affected. As it stands, I think that this case of prior user stands on the same footing as that of prior publication, and in the 50 result it appears to me that the action must be dismissed with costs.

Shaw.-As to the costs, will your Lordship give the Plaintiff the costs of the issue of infringement. It was admitted after we had called two witnesses. It is a matter of some substance in regard to the amount of costs. We had to get evidence as to how the pan was being used in the Defendants' works.

That 55 was not an easy thing. Infringement was denied, but it was given up when we got into Court. We had to have all our evidence here as to what really went on.

Kane v. Guest & Co.

STIRLING, J.-Any additional costs which you have incurred on the question of infringement you will have, and they may be set off against the general costs of the action.

Bousfield, Q C.-May I point out that it would be a new departure in this 5 case. With reference to the issue of infringement, the Defendant always

succeeds on that necessarily if a Patent is invalid, because you cannot infringe an invalid Patent.

Shaw.-The Order that I ask for is the Order that was made in Haslan v. Hall (5 R.P.C. 23) : there the judgment was for the Defendant on the point of 10 validity. Then Mr. Justice Stephen gave the plaintiff the costs of infringement.

Bousfield, Q.C.-It had been fought there, and when it is fought it consumes time before the Court.

STIRLING, J.--That is a matter for the Taxing Master. I shall follow the Order in Haslam v. Hall. It may be very little Mr. Shaw will get hy it, but 15 it seems to me he is entitled to have it.

Bousfield, Q.C., asked for and obtained a certificate as to the Particulars of Objections being reasonable and proper, except as regards the prior user by Batger & Co., which was not gone into.

Shaw asked for a certificate as to the Particulars of Breaches, on the ground 20 that the Plaintiff would not get any costs unless he got a certificate that the Particulars of Breaches were correct.

Bousfield, Q.C.—There has never been to my knowledge—nor do I think my friend will find-a case where the section with reference to being reasonable

and proper has ever been applied to Particulars of Breaches. The words of the 25 section were never meant to be applied to Particulars of Breaches.

STIRLING, J.—The section says in an action for infringement the Plaintiff must deliver Particulars of Breaches, and the Defendant must deliver with his Defence Particulars of Objections. Then : “At the hearing no evidence shall,

“except by leave of the Court or a Judge, be admitted in proof of any alleged 30“ infringement or objection of which Particulars are not so delivered." Then,

Particulars may be from time to time amended. Then : “On taxation of costs “ regard shall be had to the Particulars delivered by the Plaintiff and by the “ Defendant; and they respectively shall not be allowed any costs in respect

“ of any Particular delivered by them unless the same is certified by the Court 35" or a Judge to have been proven, or to have been reasonable and proper.”

Particulars there must extend to Particulars delivered by the Plaintiff as well as by the Defendant.

Bousfield, Q.C.-In terms it does; but to so apply those words is a thing that has not been done since the Statute was passed in 1883. 40 STIRLING, J.-It is within the Act, and, in the exercise of my discretion, I

give the Certificate.

The Montreal Lithographing Company Ld. v. Sabiston.

IN THE PRIVY COUNCIL.

Present : THE LORD CHANCELLOR, LORDS WATSON, MACNAGHTEN, MORRIS

and DAVEY.

June 6th and July 8th, 1899.

THE MONTREAL LITHOGRAPHING COMPANY, LD. v. SABISTON.

5

Company wound up.--Goodwill sold by liquidator to another Company with different name.-Defendant trading under name similar to dissolved Company. -Injunction refused.

In 1896 The Sabiston Lithographic and Publishing Company, incorporated under Letters Patent in Quebec, was wound up, and the goodwill and assets sold 10 by the liquidator. Subsequently the Appellant Company was formed to take over the assels of the dissolved Company. In 1896 the Respondent registered a declaration of his intention to trade under the name of Sabiston Lithographing and Publishing Company. The Appellants sought to restrain the Respondent from so doing.

15 Held, by Mr. Justice de Lorimier, that the Appellants were entitled to an injunction and damages.

Held, by the Court of Queen's Bench in Quebec, that the Appellants were not entitled to an injunction.

Held, by the Judicial Committee of the Privy Council, that the Appellants had 20 no right to the name of the old Company, and, as there was no evidence of the Respondent having held himself out as successor to the old Company, the Appellants were not entitled to an injunction.

This was an appeal from a judgment of the Court of Queen's Bench, Province o: Quebec (Appeal side), delivered on the 28th of October 1897, reversing a 25 judgment of the Honourable Mr. Justice de Lorimier, in Chambers, delivered on the 5th of March 1897, in the matter of a Petition for an injunction presented by the Appellants against the Respondent.

The facts were shortly as follows -In 1889 a Company was incorporated under Letters Patent of the Province of Quebec under the name of The Sabiston 30 Lithographic and Publishing Company, which carried on business in Montreal as printers and lithographers until the 13th of April 1896, when a winding-up order was granted against it, and its affairs were liquidated under the provisions of the Winding-up Act, R.S.C. cap. 129, by a liquidator. Pursuant to an Order of the Superior Court made on the 21st of April 1896, the liquidator, on the 35 28th of April 1896, sold “the assets of the insolvent estate ” to one George

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