Brooks v. Lamplugh.

require evidence to show that you could not secure the Defendants' apparatus by means of a single movement. Mr. Terrell endeavoured to get out of this position by saying that when only a very little adjustment was required you could do it by the Defendants' machine; but that is not the point. The point is whether the Patentee has not made an effective junction of these two things,-the 5 clamping them up together by means of a single operation of a screw,-under all circumstances an essential feature of his patent. Now, five Judges in the Court of Appeal have already considered this case, and they have come to the conclusion that the bolt or pin by which he effects that operation is an essential feature of the combination which he has patented, I feel constrained to say 10 that I cannot come to any other conclusion, and, therefore, I think the appeal must be dismissed.

Lord LUDLOW.-My Lords, I concur.

IN THE COURT OF APPEAL.

Before LORDS JUSTICES A. L. SMITH, RIGBY, and COLLINS.

November 11th, 12th, and 15th, 1898.

PNEUMATIC TYRE COMPANY, LD., AND ANOTHER v. LEICESTER PNEUMATIC TYRE AND AUTOMATIC VALVE COMPANY.

Patent.-Action for infringement.-Validity.-Disconformity.-Anticipation.-Patent upheld.-Injunction granted.-Appeal dismissed.

15

20

In 1890, Letters Patent were granted to W. for "Improvements in rubber "tyres and metal rims or felloes of wheels for cycles and other light vehicles." The Pneumatic Tyre Company, in whom this patent had become vested, brought an action for infringement against E. and S., trading as the L. Company. The Defendants, in addition to special defences and counterclaims, denied infringe- 25 ment, novelty, utility, subject-matter, and that W. was the first inventor, and alleged disconformity. They alleged (inter alia) anticipation by a Specification of Burton and Shaw (No. 1412 of 1871) for "Improvements in wheels for "traction engines." Prior to the commencement of the action, W.'s patent had been held valid in an action of The Pneumatic Tyre Company, Ld. v. Casswell, 30 (13 R.P.C. 164), in which the question of disconformity had been decided; and, before trial, the same question had been decided by the Court of Appeal in favour of the patent in The Pneumatic Tyre Company, Ld. v. The East London Rubber Company, Ld. (14 R.P.C. 573).

Held, at the trial, that the evidence not having established different findings 35 to those in the previous actions, the decisions as to disconformity were binding on the Court, and must be followed; also that the patent had not been antici

Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company.

pated, and was good, and had been infringed. Judgment was given for the Plaintiffs upon the claim and counterclaims. A stay, except as to the injunction, was granted on conditions.

The Defendants appealed against the judgment on the claim, and, in addition 5 to the grounds of invalidity argued below, contended also that the patent was anticipated by Parfrey's Specification of 1861.

The appeal was dismissed, with costs.

On the 10th of September 1890, Letters Patent (No. 14,563 of 1890) were granted to Charles Kingston Welch for "Improvements in rubber tyres and 10" metal rims or felloes of wheels for cycles and other light vehicles." The Provisional and Complete Specifications will be found set out in the Report of The Pneumatic Tyre Company, Ld. v. The East London Rubber Company, Ld., 14 R.P.C. 77.

On the 7th of February 1896, The Pneumatic Tyre Company, Ld., who were 15 then the proprietors of the said Letters Patent, commenced an action in the Chancery Division, subsequently transferred to the Queen's Bench Division, against The Leicester Pneumatic Tyre and Automatic Valve Company, for infringement of this patent. The Dunlop Pneumatic Tyre Company, Ld., were, on the 23rd of December 1896, added as co-Plaintiffs, pursuant to an order of 20 the 21st of December 1896.

The Plaintiffs, by their Statement of Claim, in addition to the usual relief, claimed costs as between solicitor and client. The Particulars of Breaches alleged infringement of Claims 4, 5, 9, 10, 11, 12, 13, and 14 of the Specification.

The Defendants, by their Defence, as amended, alleged :-(1) That they had 25 not infringed. (a) That the Plaintiffs, on or about the 16th of October 1893, granted to the Defendants' firm a licence to manufacture and sell Dunlop tyres generally, without any restriction as to the mode of attachment. That the kind of tyre now alleged to be an infringement of Welch's Letters Patent was, at the time of the terms of settlement and the exchange of licences between the 30 parties in 1893, manufactured and sold by the Plaintiffs as a Dunlop tyre under the Dunlop patents. That if this was not so, the Defendants' licence ought to have included Welch's patent. (b) The Defendants' firm were, under licence by the Plaintiffs, entitled to manufacture and sell Dunlop tyres which might be attached to the wheel or wheels in the manner found most efficient, which 35 included all kinds of attachment used by the Plaintiffs at the time that they granted the said licence. That the Defendants gave Plaintiffs a licence under Edlin's patent (No. 2457 of 1892). That the terms of settlement were an exchange of licences for the manufacture and sale of all fixed and detachable pneumatic tyres under all the patents owned by each of the parties. (c) That 40 the Plaintiffs, at the time of granting of the licence to the Defendants, claimed that the patents of Dunlop, under which the Defendants were licensed, covered all pneumatic tyres and all methods of attachment and detachment, and obtained an injunction against the Defendants in 1893 on this very claim. That Welch's patent was an infringement of those of John Boyd Dunlop and 45 the Plaintiffs were, therefore, liable to defend the Dunlop patents, as far as the Defendants were concerned, against all other patents, whose claims would be an infringement of the scope of the Dunlop patents, as enforced by the present Plaintiffs against the Defendants' firm of 1893. (d) That Welch's name or patent was never disclosed in connection with the Dunlop detachable tyre till 50 1895, when a registered rubber device was used for the first time. (e), (ƒ), and (g) The Defendants counterclaimed for damages against the Plaintiffs in respect of certain matters not necessary to refer to in this report. (h) and (i) Made certain charges of fraud in connection with the trial of the action of The Pneumatic Tyre Company, Ld. v. Casswell. (k) Defendants claimed that, by

Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company.

reason of the neglect and laches of the Plaintiffs, they were entitled to manufacture and sell the said tyres; and (7) that the action was frivolous and vexatious, and was an improper revival of former litigation between the parties. (2) Alleged want of novelty. (3) Want of subject-matter. (4) That C. K. Welch was not the true and first inventor. (5) No utility. (6) That the Provisional 5 Specification of the said alleged invention did not describe the nature thereof, and the invention claimed in the Complete Specification was different from and larger than that described in the Provisional Specification.

The re-amended Particulars of Objections alleged :-(1) Want of novelty. (a) Prior publications of the alleged inventions forming the subject of the claims 10 thereinafter referred to in the Specification of the Plaintiffs' said patent, by deposit in the Patent Office Library of the following Specifications:

Unless where otherwise stated, the whole of each of the above Specifications 35 was relied on. (2) Want of subject-matter. (a) That the Defendants would refer to the Specifications in the preceding paragraph set out and to the common general knowledge of cyclists and the trade upon the subject of cycle tyre manufacture and the methods of securing the tyres of cycles and other vehicles to the wheels of the same, and the Defendants would allege that, by 40 reason of such information, no invention was required to produce any of the combination of parts, or the methods of use and manufacture, described in

Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company.

the Plaintiffs' Specification and claimed in Claims 1 to 8, both inclusive, 13 to 16, both inclusive, and 18. (b) That the Defendants would also refer to the following Specifications, both of which had been filed in the Patent Office or published in the Public Library thereof prior to the 5 Plaintiffs' said Letters Patent, as evidence that the use of convex rims on cycle wheels in conjunction with rubber tyres of saddle or arch form in cross section was old at the date of the Plaintiffs' said Letters Patent :- Warwick, No. 4317 of 1881; Otto, No. 994 of 1885. (3) That the said C. K. Welch was not the true and first inventor by reason of the prior publication in respect of 10 the inventions set out under paragraph 1 thereof; that the Defendants intended to prove that between the date of Welch's Provisional and Final Specifications the Stanley and National Cycle Shows were held; that numerous covered or pneumatic tyres, including a tyre manufactured under Trigwell's patent (No. 19,411 of 1890), were exhibited at the said shows; that the said C. K. 15 Welch was present at the said shows, and the Defendants intended to allege that the inventions forming the subject-matter of the claims contained in Welch's Final Specification were taken by him from knowledge obtained by him at the said shows subsequent to the date of his Provisional Specification, and from information publicly circulated as to the said patents and tyres. (4) 20 That the said alleged invention was not useful. The Defendants intended to allege that the whole of the tyres claimed, with the exception of those referring to Figures 15, 18, and 20, were useless and impracticable. (5) That the Provisional Specification of the alleged invention did not describe the nature thereof, and the invention claimed in the Complete Specification was an invention 25 different from and larger than that described in the Provisional Specification; that the Defendants intended to allege that the inventions set out and claimed in Claims 1, 4, 6, 9, 10, 11, 12, 13, 14, 17, and 18 of the Specification of the said patent were inventions none of which were disclosed or hinted at in the Provisional Specification of the said patent, and were not legitimate develop. 30 ments of anything disclosed in the Provisional Specification. The Defendants subsequently delivered further particulars in reference to paragraph 1, (a), (b), (d), (e), (f), (g), (h), (i), and (k) of the Defence.

During the trial, on the 30th of November 1897, the Defendants asked for leave to amend the Particulars of Objecti ns, by alleging the Specification of 35 Burton and Shaw (No. 1412 of 1871) as an anticipation, and reference to such Specification, for the purpose of showing it to be an anticipation, was allowed. The action was tried before Kennedy, J., judgment being delivered on the 5th of March 1898, for the Plaintiffs on the claim and counterclaims.* The Defendants appealed against the judgment on the claim. 40 The Appellants appeared in person; Moulton, Q.C., and J. C. Graham (instructed by J. B. and F. Purchase) appeared for the Respondents. The Appellant Steven argued for the Appellants, and contended that Welch's patent was invalid. It was bad for disconformity; comparing what is described in the Provisional Specification with Fig. 15 in the Complete, we say that in the Provisional 45 Specification-(1) it is the contractile force of the wire that holds the tyre in place by reducing the circle of the wire, whereas in the Complete Specification the wires are of constant shape and magnitude, and the force is set up in the air chamber and acts against the wires which are passive; (2) the tension is set up in the wire itself by drawing the ends together, which is an active use of the wires, whereas in the Complete Specification the underlying body is enlarged, and there is no force introduced by means of any alteration of the wires; (3) the wires create the tension which binds the tyre on to the felloe, whereas in the Complete Specification the underlying body is enlarged by means of air pressure, and this enlargement or the force by which it is enlarged is the force

50

* See 15 R.P.C. 159.

Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company.

which sets up the tension in the cover; (4) the wires give or transmit the force for holding on, whereas in the Complete Specification the wires resist the force which expands the central body; (5) the force is applied by means of a wrench to contract the wires, whereas in the Complete Specification the force is supplied by means of an air pump; (6) the application of the force alters the magnitude 5 and shape of the wires, they are inconstant and the circle of the wires has to be diminished in order to give attachment, whereas in the Complete Specification the application of the force does not diminish the wires or alter their circumference or diameter-they are constant; (7) the wires are contractable, the force being applied by means of a wrench, whereas in the Complete 10 Specification the wires are not contractable, and the force is applied by an air pump; (8) the wires are always outside the rim, whereas in the Complete Specification the wires are inside the rim; (9) the wires are drawn in laterally, whereas in the Complete Specification the wires are forced out laterally. Also there are the following differences in the central body. In the Provisional 15 Specification (1) The underlying body is either wholly or almost wholly constant in magnitude and shape, whereas in the Complete Specification the underlying or central body is inconstant and alterable both in shape and magnitude; (2) the tyre is to give the resiliency and absorb the vibration and not the central body, whereas in the Complete Specification the covering or 20 tyre is a mere protection to the central body, and the central body gives the resiliency and absorbs the vibration; (3) the tyre is applied to a central body already formed, whereas in the Complete Specification the tyre is applied over a concavity, the central body is afterwards created and formed; (4) the central body is only partly covered and is mainly external, whereas in the Complete 25 Specification the central body is wholly covered and is wholly internal; (5) the central body does not exert any force, it is passive, neither is it the medium of conveying or exerting the force, whereas in the Complete Specification the central body exerts and conveys all the force, it is active through the medium of an air pump, and the air pressure enlarges the underlying body and is the 30 mechanical contrivance for conveying the force; (6) the tyre is applied to a passive and inert central body, whereas in the Complete Specification the tyre or cover is applied to a flat body which afterwards is made round and active, and exerts force; (7) the function of the central body is to resist the force, whereas in the Complete Specification the function of the central body is to 35 convey force and to exert it; (8) the tyre is hugging or clinging to the central body, whereas in the Complete Specification the central body is forcing the tyre or cover on each side of a concavity; (9) the felloes form the central body, whereas in the Complete Specification this is not so; (10) there is no mention of creating a central body or destroying a central body, whereas in the Complete 40 Specification the central body is formed or created to attach the tyre, and the central body is destroyed to detach the tyre. Also Welch's patent is bad by reason of its having been anticipated by Burton and Shaw's Specification and by Parfrey's Specification. (Nobel v. Anderson, 12 R.P.C. 164, was referred to in the course of the argument.)

Counsel for the Respondents were not called on.

45

SMITH, L.J.-This is an appeal by the Defendants in this case, who trade under the name of The Leicester Pneumatic Tyre Company. The shares are held by two gentlemen, Mr. Steven and Mr. Edlin. It is an appeal from my brother Kennedy, who tried the patent case in which the Leicester Company 50 were sued as being infringers of Welch's patent, the Provisional Specification of which is dated the 16th September 1890.

My brother Kennedy found against the Defendants, and there can be no possible doubt that if Welch's patent be a good patent they were infringers of that patent. There cannot be a doubt about that on the evidence which is 55 before the Court. But Welch's patent is attacked by the Defendants, Mr.