The Palmer Tyre, Ld. v. The Pneumatic Tyre Company, Ld. and Others. In 1893 Letters Patent (No. 4926* of 1893) were granted under the International Convention to John Fullerton Palmer for an invention of "Improvements in "or relating to Rubber Fabrics," the date claimed under Section 103 of the Patents, &c. Act, 1883, being the 9th of August 1892, and the date of application in the United Kingdom being the 7th of March 1893. This Patent (in 5 this report referred to as Palmer's Patent) was amended on the 24th of May 1898. The Complete Specification, as amended, was as follows: "My invention relates to the manufacture of that class of fabric which "is used in pneumatic tyres. The purpose of the invention is to produce "with rubber a fabric which, while having the necessary strength and 10 "flexibility shall not involve in its structure an arrangement of fibers to "permit or cause the cutting thereof in the folding, bending or twisting of "the fabric. 66 66 66 66 "As rubber fabric is now produced it is made in one of two ways; that is to say a woven fabric such as canvas is saturated with rubber and then vul- 15 canized, or upon an unvulcanized sheet of rubber a woven sheet of fabric is "placed and then vulcanized thereto. In any fabric where the threads cross “each other in immediate contact, the bending, folding, twisting or other manipulation, and particularly when this occurs repeatedly and rapidly, causes one of the fibers to exert a species of sawing action upon the other 20 "with ultimate severance thereof. Hence, in pneumatic tyres, which are "usually provided with a tubing of canvas and subjected to repeated and "continuous vibration, it is found that after a comparatively short period the "fibers are cut, necessitating the removal of the tube. This is mentioned as a mere instance of one of the defects always occurring where a woven fabric 25 "is applied to such usage. The principal purpose of my invention is, there"fore, to produce a fabric which shall have all necessary and obtainable "strength, and which shall be free from any danger of the sawing action "described. 66 66 "Primarily my fabric comprises a sheet of rubber having embedded therein, 30 "before vulcanizing, parallel fibrous threads, or threads of any character capable of retaining their continuity, these threads being so applied to the "sheet as to be out of contact with each other. When vulcanized, or partly "vulcanized, the fabric thus produced can be stretched very little, if at all, "longitudinally, but can be stretched very much transversely. Two plies of 35 "such fabric are then arranged one upon the other with the threads in one 66 separated from the threads in the other by the rubber part of the fabric, and so arranged that the threads of one are at right angles to the threads of the "other, this arrangement taking place preferably before vulcanizing so as to produce a single sheet having a double set of parallel fibrous threads, one set 40 "at right angles to the other. Instead of being at right angles the threads may cross each other at any other angle. A single sheet of rubber of proper "thickness may have on its opposite faces embedded threads, the threads on 66 one face presenting an angle to those on the other and such a fabric would "take the place of one made of two plies placed together. More than two 45 "plies may be vulcanized together. Instead of vulcanizing them together they 66 66 66 may be secured in any other satisfactory way, the point of the invention "being the fabric made by embedding in a sheet of rubber and vulcanizing "therein two or more sets of threads parallel to each other and out of contact "with each other. 66 50 "It is necessary that the threads shall be embedded in the rubber, as it is "not safe to rely upon the uniformity of their parallel relation if merely placed against the surface of the sheet. I therefore usually feed the threads "to the sheet while the latter is being calendered, the pressure exerted being "sufficient to cause the threads to be thoroughly embedded in the soft and 55 The Palmer Tyre, Ld. v. The Pneumatic Tyre Company, Ld. "heated rubber. Any ordinary method of calendering can be employed with "this operation. "I am aware that fabrics have been made of various materials in conjunction "with parallel or various plies of parallel threads for the purpose of thickening 5" and strengthening the same, and for the purpose of resisting longitudinal "strains and stretching as in driving belts and hose pipes and also in different "makes of paper and I would have it understood that I make no general claim "to fabric so constructed; but that 66 66 "Having now particularly described and ascertained the nature of the said 10" invention and in what manner the same is to be performed I declare that "what I claim is -1. A fabric made of two or more plies of rubber each having embedded therein parallel fibrous threads the threads in one ply presenting an angle to the threads in the other, no two threads being in "contact substantially as described and subject to the above disclaiming note. 152. A fabric made of two or more plies of rubber each ply having embedded "and vulcanized therein substantially non-extensible parallel fibrous threads "out of contact with each other the threads in adjacent plies presenting "an angle to each other, substantially as described and subject to the above "disclaiming note." 20 On the 4th of July 1898, The Palmer Tyre, Ld., in whom the three Patents were then alleged to be vested, commenced an action for infringement of the same against The Dunlop Pneumatic Tyre Company, Ld., Harvey du Cros, The Duke of Somerset, The Earl of Albemarle, Earl de la Warr, J. B. Purchase and Arthur du Cros claiming the usual relief. The Plaintiffs by their 25 Amended Statement of Claim alleged that the Defendants had infringed, and by having infringed threatened to infringe the said three Patents of which the Plaintiffs were the registered proprietors; that the Patents were amended as above mentioned, and were valid and of full force and effect. The Particulars of Breaches stated (1) that the Plaintiffs complained of the manufacture and 30 sale or the manufacture or sale by the Defendant Company of a tyre commonly known to the trade and to the public as the "Dunlop Welch tyre; that all forms of the "Dunlop Welch " tyre which the Defendant Company had from time to time put on the market infringed all the claiming clauses of the first and second Patents, and those forms of the "Dunlop Welch tyre in 35 which the cover known as the "Moseley Welch " cover had been used infringed also all the claiming clauses of the third Patent; (2) that the Defendants other than the Defendant Company were and had been for some time past directors of the Defendant Company and had personally directed, caused, or taken part in the infringements of the Defendant Company therein before complained 40 of; and (3) that the Plaintiffs would claim in respect of all infringements when ascertained. The Defendants by their Defence as amended on the 6th of May 1899 (1) denied infringement; (2) alleged that each and every of the Patents was invalid for the reasons in the Particulars of Objections therewith delivered 45 appearing; (3) alleged delivery of Particulars of Objections therewith; and (4) that the Plaintiffs were not the sole owners of the Patents, that the India Rubber and Gutta Percha Company were co-owners of all the Patents and were not parties to the suit, and that the action was not maintainable by the then present parties alone. The Particulars of Objections as re-amended alleged 50 (a) as to Thomas's Patent (1) that the alleged invention was not new, this objection applying to all claims; the anticipating Specifications, the whole of which were relied on, were Thomson, No. 10,990 of 1845, Dunlop, No. 10,607 of 1888, and Dunlop, No. 4116 of 1889; prior user was alleged, viz., tyres manufactured under Thomson and Dunlop's Specifications prior to the date of 55 Thomas's Patent; (2) want of subject-matter, this objection applying to all the The Palmer Tyre, Ld. v. The Pneumatic Tyre Company, Ld. and Others. claims; (3) want of utility, this objection applying to all the claims; (4) that the final Specification did not sufficiently describe the alleged invention nor the manner in which the same was to be performed, this objection applying to all the claims. () As to Trigwell's Patent (5) want of novelty, this objection applying to all the claims, the grounds of want of novelty being the 5 following Specifications, viz., Howell, No. 7794 of 1885, Thomas, No. 4350 of 1889, and Welch, No. 14,563 of 1890, the whole Specification being in each case relied on; (6) that the alleged invention prior to the grant of the Patent therefor had formed the subject-matter of a grant to Charles Kingston Welch under Letters Patent, No. 14,563 of 1890, and to Reginald Coates 10 Wilson under Letters Patent, No. 12,974 of 1890, and Trigwell's Patent was therefore wholly void, and the tyres complained of in the present action were made in accordance with the invention forming the subject-matter of Welch's Patent, this objection applied to all the claims; (7) want of subject-matter, this objection applied to all the claims; (8) that J. R. Trigwell was not the 15 true and first inventor; (8a) that if the claims in the final Specification related to rims other than Y-shaped rims with channelled edges, all the claims in the final Specifications related to inventions larger than and different to the inventions the nature of which was described in the Provisional Specification; (86) want of utility, this objection being alleged against all parts of 20 the Specification; (8c) that the final Specification did not sufficiently describe the nature of the invention nor the manner in which the same was to be performed and did not distinguish between what was new and old, none of the figures would work as described, and if any part of the combinations claimed were alleged to be separately protected, those parts which were 25 new were not pointed out in the Specification; (c) as to Palmer's Patent (9) want of novelty, this objection applying to all the claims, the anticipating Specifications, the whole of which were relied on, being Coles Jaques and Fanshawe, No. 2946 of 1864, ditto, U.S. Patent, No. 83,132 of 1868, Mandleberg, No. 22,382 of 1891, Moseley, No. 11,804 of 1888, Lavater, 30 2256 of 1864, Crane U.S. Patent, No. 127,463 of 1872, Reed U.S. Patent, No. 184,907 of 1876, Jones U.S. Patent, No. 283,893 of 1883, Winslow, No. 3112 of 1857, Moseley (German Patent) No. 49,653 of 1889, Thompson, No. 19,156 of 1892, and Boucley, No. 451 of 1875; the following prior users were alleged, viz.:—(1) Manufacture and sale by Warne & Co. of 35 Tottenham Rubber Mills of fabric and tubes constructed in accordance with Coles Jaques and Fanshawe's Patent for many years prior to the Plaintiffs' Patent; (2) manufacture and sale for many years prior to the said Patent by Moseley & Co. of Manchester of fabric constructed in accordance with Moseley's Patent aforesaid and of fabric similar to that 40 complained of in this action; (3) manufacture in the years 1889 and 1890 by Moseley & Co. of Manchester of rubber sheets into which parallel threads substantially out of contact were embedded; manufacture and sale during the said years by the said Moseley & Co. of rubber cycle tyres from such sheets, user of such tyres during the said years by William 45 Lloyd of 101, High Road, Gorton, Manchester, in and about the city of Manchester and its neighbourhood; (10) that the said alleged invention was not the proper subject matter of valid Letters Patent, this objection applied to all the claims; (11) The Defendants referred to the unamended Specification of Palmer, 4296 of 1893, and alleged that if any invention other 50 than that claimed in the first three clauses of the unamended Specification was claimed by the amended Specification, that the Patent was invalid on the ground that the Specification as amended claimed an invention larger than and different to the invention set out and claimed in the original unamended Specification; (12) that the Patent was invalid and wholly void by 55 The Palmer Tyre, Ld. v. The Pneumatic Tyre Company, Ld. reason that the Crown was deceived by the declaration made on the application for the Patent that the date of the first foreign application for the said invention was on the 9th of August 1892, whereas, in fact, no such foreign application was ever made on such day, nor was any foreign Patent ever granted for the 5 said invention on any application on such date; (13) that the final Specification of the said alleged invention did not sufficiently describe and ascertain the nature of the invention and the manner in which the same was to be performed, and gave no sufficient practical directions as to how the fabric claimed was to be made. 10 Particulars delivered by the Defendants on the 23rd of December 1898, pursuant to an order of the Master, stated as to paragraph (a), that the Defendants were unable to give particulars of the said prior user, and would. not rely on the same unless they gave to the Plaintiffs further and better particulars ordered prior to the trial; as to paragraph (b), that Thomas in his 15 Specification did not sufficiently describe how to put in practice any of the inventions mentioned in his Specification, that no directions were given as to how the edges of his tyre were to be got into the edges of the rims, and that a person of ordinary skill could not put his invention into practice; as to paragraph (d), that Charles Kingston Welch was the first and true inventor; as to 20 paragraph (ƒ), that Palmer's final Specification gave no directions from which a person skilled in the art could put into practice the manufacture of any part of his invention. The Plaintiffs by their Amended Reply joined issue, and in further reference to paragraph 6 of the Particulars of Objections said that if (which was denied) 25 the invention, the subject-matter of Trigwell's Patent, formed the subjectmatter of the grant to C. K. Welch under Letters Patent No. 14,563 of 1890, then such grant and Letters Patent were void because (1) the said C. K. Welch was not the first and true inventor; (2) the invention claimed by the Complete Specification was larger than and different from the invention described in the 30 Provisional Specification, the invention claimed in Claims 1, 3, 4 to 6 inclusive, 9 to 14 inclusive, and 16 to 18 inclusive of the Complete Specification were in no way disclosed by the Provisional Specification; (3) the alleged invention was not new, but was published within this realm prior to the date of the Patent in the following Specifications, the whole of which, and the drawings 35 thereto, were relied on, namely:-Latta, U.S., No. 341,811 of 1886, anticipation of Claims 1 to 7 inclusive, 15 and 18; Parfrey, No. 1294 of 1861, anticipation of Claims 12 and 14; Burton and Shaw, No. 1412 of 1871, anticipation of Claims 1 to 7 inclusive, 8, 9, and 10; Salamon, No. 17,093 of 1884, anticipation of Claims 1, 2, 8, 14, 15, and 18; Starley, No. 13,511 of 40 1884, and No. 6103 of 1887, anticipation of Claims 1, 3, 4, and 18; Lake (Harris), No. 13,382 of 1887, anticipation of Claims 3, 6, 12, 17, and 18; Thomas, No. 4350 of 1889, anticipation of Claims 2, 9, 10, 11, 14, 16, 17, and 18; (3) and in further reference to paragraph 6 of the Particulars of Objections (as amended), that if (which was denied) the invention, the 45 subject-matter of Trigwell's Patent, formed the subject-matter of the grant to R. C. Wilson under Letters Patent, No. 12,974 of 1890, then such grant and last-mentioned Letters Patent were void; the grounds of such alleged invalidity were specified, but are not material for the purposes of this report. 50 The Defendants by a Rejoinder (1) as to paragraph 2 of the Reply joined issue, and (2) as to the same paragraph said that, if, which was denied, Welch's Patent was void by reason of any of the publications alleged in paragraph 2 (3) of the Reply, the Defendants would also allege that Trigwell's Patent as to all the claims in the amended Specification were also void by reason of the 55 matters in the said paragraph alleged. The Palmer Tyre, Ld. v. The Pneumatic Tyre Company, Ld. and Others. A transverse section of the Defendant's tyre is shown by the drawing below; the alleged infringement, so far as regards Palmer's Patent, will be found. described in the judgment. T. Terrell, Q.C., Astbury, Q.C., Jenkins, Q.C., D. M. Kerly, and C. E. Odger s (instructed by Murray, Hutchins, Stirling, and Murray) appeared for the 5 Plaintiffs; Moulton, Q.C., Roger Wallace, QC., J. C. Graham, and A. J. Wolter (instructed by J. B. and F. Purchase) appeared for the Defendants. Terrell, Q.C, opened the Plaintiffs' case.-The Defendant Company and its directors are sued on three Patents. The infringement complained of exists as regards each Patent in one tyre. [The issues were then stated.] The issues of 10 the validity of Welch have already been decided in favour of the Patent by the Court of Appeal, so that this Court is bound as to those by precedent, but this case may go to the House of Lords. It has been agreed that the evidence in The Pneumatic Tyre Company, Ld. v. The East London Rubber Company should be treated as given in this case with liberty to either side to supplement 15 it. Also, subject to the approval of the Court, it has been arranged that the as to each Patent should be, for convenience, taken separately. [Moulton, Q.C.-But it remains one action.] I will therefore take Thomas's Patent first. case As to "Thomas' Patent," 20 The main issues on this are construction of the Specification and infringement. As to the state of knowledge at the date of the Patent, a pneumatic tyre had been invented in 1845 by Thomson. Tyres according to that invention were made and used. There was a separate inner tube of rubber, and a complete outer covering of leather. The tyre was intended for carriages, and 25 had no great commercial success-bicycles, tricycles, &c. not being then in existence. Then in 1888 came Dunlop's Specification. He evidently did not know of Thomson. His tyre was merely a hose-pipe one, and no particular means of attachment was described, except that of cementing to the rim. This was the state of knowledge at the date of Thomas' Specification. The outer 30 tyre was a complete ring in itself, and restrained the pressure of the air without any assistance from the rim ; also it was public knowledge either to have or not to have an inner tube, and to fit a valve for inflation. The principle of pneumatic wheels was old, the principle of two concentric tubes was old, and also the principle of having a tube covered with canvas to restrain inflation. 35 As to the state of knowledge with respect to the modes of attachment, these were applied to solid and hollow tyres, although not to pneumatic tyres. Burton and *14 R.P.C. 77 and 573 |