Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company. Steven and Mr. Edlin, upon these two grounds. It is said, first, that there is disconformity between the Provisional and Complete Specifications, and, secondly, that Welch's patent has been anticipated by a Specification of the 27th November 1871, which was a Specification filed by Messrs. Burton and Shaw. 5 Those were the two points which were before my brother Kennedy. There was a point raised, I agree, with regard to Parfrey, but I will deal with that hereafter because it comes to nothing, and there was a question about the Defendants being entitled, as licensees, to do what they did. That also comes to nothing when the licence has been put in and has been read. My brother 10 Kennedy gave judgment for the Plaintiffs. The Defendants appeal, and they appeal in person. The Defendant, Mr. Steven, has argued his case on behalf of himself and Mr. Edlin well, and at considerable length. He has also travelled, if I may say so without disrespect, over a lot of ground which is somewhat immaterial to the points which we have to decide, but we have heard him. 15 I come to the first point of the defence, namely, disconformity. Speaking for myself, I should say that Welch's patent has been freely attacked, and indeed Mr. Steven, in his last sentence, said he never knew a patent so attacked as this one has been. It has been before courts of law on many occasions. It has been through the Courts of Judges of first instance, and it has been into this 20 Court in what is called "The East London case," and for many days the Master of the Rolls, my brother Rigby, and myself, sat and heard the voluminous and lengthy arguments of counsel as to the validity or non-validity of Welch's patent, and upon one of the Defendant's points, maintained on the one side and disputed on the other, namely, as to whether there was disconformity between 25 the Provisional Specification and Complete in Welch's patent. Now, Welch having succeeded (or rather the Dunlop Pneumatic Tyre Company, though I will say Welch, having succeeded) in maintaining his patent as being good, and there being no disconformity between the Complete and the Provisional Specification, finds an infringer. I do not call the Defendant an infringer with any 30 disrespect, but Welch finds an infringer, whereupon he brings proceedings to maintain his patent and stop the infringement. Then the infringer comes in person to the Court of first instance before my brother Kennedy and says:— "I say Welch's patent is bad because there is disconformity between the "Provisional and Complete Specifications." Now let me put this case. 35 Assuming that Welch's patent had gone, as it has done, through the Courts of first instance on two or three occasions on the question of disconformity and has held water, and had gone through the Court of Appeal and also held water, and had gone to the House of Lords and also held water, and the House of Lords had said, in the same way as this Court has said, that there is no discon40 formity between the Provisional and Complete Specification, I ask this: An infringer is found, an action is brought by Welch against the infringer; is it to be tolerated that the infringer is to begin again in the Court of first instance and say, "I say Welch's patent is bad because there is disconformity between "the Complete and the Provisional." Of course there is no estoppel because the 45 parties are different, but the question of disconformity between the Provisional and the Complete is a question of law. It is a question of the construction of two documents. It is a question of construction of the Provisional document and a question of construction of the Complete document, and a comparison of the one with the other. Of course, when making that comparison the sur50 rounding circumstances, the subject-matter and so on, are to be taken into consideration by the Court, and the Court must be instructed; but I do say this that in the second action, the action which I have mentioned after the House of Lords' decision, where an infringer is sued upon a patent and he chooses to set up disconformity, he ought not to be permitted to go into that question of discon55 formity unless he can shew new facts which would lead the Court to come to Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company. the conclusion that the construction which theretofore had been put upon the two Specifications, the Provisional and the Complete, was not the true construction to be put upon them. He must bring before the Court new facts beyond all doubt in order to be able to re-open the litigation on the question of law between the Provisional and the Complete Specification. He 5 Now what is there that the Defendant, Mr. Steven, has done in this case? He has produced arguments, I will not say they are arguments which have not been before us before, but he has produced arguments in his own way, and in a forcible way, to shew and to lead if he could to the conclusion that what was held in Welch's patent in the Court of Appeal was wrong, and that, as a matter 10 of fact, the Court ought to have held that there was disconformity between the Provisional and the Complete. But that cannot be done. Producing new arguments is not producing new facts. To say that the bulk of the arguments were not before this Court as a matter of fact when the case of Welch's patent was argued for many days in this Court of Appeal before the Master of the 15 Rolls, my brother Rigby, and myself, is to say what is not the fact. The whole of the two Specifications were before us, and if they were read once, I have no doubt they were read a dozen times before this Court, and the claims and everything, every point which the ingenuity of Counsel could adduce, was adduced before the Court on the question of disconformity, and what did the Court hold? 20 Having heard and weighed the arguments on the one side and the other, we took some time to consider our judgment, and then written judgments were delivered, one by the Master of the Rolls, with which I agreed, and one by my brother Rigby, with which I did not disagree. He gave substantially the same reasons, but reasons in a different way, and I said I agreed with the Master 25 of the Rolls' judgment, not that I disagreed from my brother Rigby's, because they were both to the same effect, namely, that there was no disconformity. I cannot find in this case any new facts adduced by Mr. Steven. says he gave evidence. So he did. What he did was this: he gave evidence and he put in four sheets of paper for the purpose of shewing that there was 30 disconformity between the Provisional and the Complete. I will read two passages out of this piece of paper to emphasize what I am saying and to shew that there are no new facts. I will take the third, which is a very good type. He says: "In the Provisional the wires create the tension which binds the "tyre on to the felloe." That was told us in the previous case beyond all 35 doubt. He says now: "In the Complete the underlying body is enlarged by "means of air pressure, and it is this enlargement, or the force by which it is 66 enlarged, which sets up the tension in the cover." What new fact is that? It is his statement of what is in the Provisional, and his statement of what is in the Complete. That was all before this Court before, and the two had to be put 40 together, with the result that the decision was that there was no disconformity between the one and the other. I wish to say this. If we were wrong in that case—and I am no blind believer in what I have done myself; it may be we were wrong, and it may be we were right, I do not put it higher than that, but all I can say is that if the question of disconformity has to be 45 determined anywhere, it must be determined in the House of Lords who must say whether this Court was right or wrong. My brother Kennedy, in my judgment, was quite right when he said upon this patent in this suit against Steven and Edlin-there being no new facts but new arguments, the whole matter being before the Court of Appeal when Welch's case was here that he found there 50 was no disconformity. He found also, as a matter of fact, as I understand his judgment, apart from the judgment of the Court of Appeal, that there was no disconformity. Therefore, as I have said, my brother Kennedy's judgment was right. Now we come to another point. It is said that Welch's patent is bad because 55 Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company. of anticipation. When Welch's patent was here before there were three or four anticipations relied on, especially one of Latta. Here there was in the pleadings an anticipation by Parfrey, and also I believe an anticipation by Salamon. There may have been others, but there was not in the pleadings 5 or parti ulars an anticipation by Burton and Shaw. That is remarkable, considering that Burton and Shaw is the mainstay now for this argument of anticipation. The case comes on for trial, and although Welch's patent had been, as Mr. Steven told us, attacked more than any patent he knew in his time, it is a most remarkable thing that from the year 1871, which was the 10 date of Burton and Shaw's Specification, down to the year 1890, or after 1890, because Welch's Provisional Specification was on the 11th September 1890, none of the attackers even thought fit to attack it on the ground of this paper anticipation, namely, the Specification of Burton and Shaw of the 27th November 1871, and so late was this thought of that it was only 15 introduced into this action as a defence to this action by way of amendment, when it was admitted by my brother Kennedy. Now we have to decide the point, is Burton and Shaw an anticipation of Welch's patent of 1890 ? As regards the law applicable to a paper specification I will simply read, by way of saving time, what I said in the 20 case of Gadd and Mason v. The Mayor &c. of Manchester, which is reported in 9th Patent Reports. What I am going to read will be found at page 532. It is the shortest way of describing what I then said and believed to be the law, and what I wish to repeat to-day. I said: "I now come to the two alleged "anticipations by descriptions contained in the prior Specifications of Wild 25" and Stanfield. In neither of these has there been prior user." I had already dealt with an anticipation in which there had been prior user. "The question "is, were persons of competent skill informed of the Plaintiffs' invention "by either of these anticipations. Lord Westbury in Hill v. Evans, 4th De "Gex, Fisher, and Jones, page 299, when dealing with what is called a paper 30 "anticipation, summed up the law upon the subject as follows: 'Upon "principle, therefore, I conclude that the prior knowledge of an invention to "avoid a patent must be knowledge equal to that required to be given by a "Specification, namely, such knowledge as will enable the public to "perceive the very discovery, and to carry the invention into practical use. 35"The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior "publication.' In Otto v. Linford, 46th Law Times, New Series, page 39, the present Master of the Rolls, Lord Esher, stated 'Now what is the rule when "you rely only upon a description in writing as being an anticipation? You 40"must show that a person-I mean a person conversant with such matters"reading the writing, would find in the writing alone a reasonably clear 'description of the Plaintiffs' invention. He (the inventor) has to find a "description of his invention'-that is the whole of his invention; that is, "the combination of Welch's in this case-'on the face of that writing 45 "construing the writing reasonably as describing the invention.' In Erlich "v. Ihlee, 5 Patent Reports, page 457, Lord Justice Cotton said, 'We know what "is necessary if there is said to be an anticipation not by the existence of an "actual thing, but by description either in a specification or otherwise, that "the description must be of such a character, as to enable anyone competent 50 "to make the machine, for which protection is claimed, from the description 'given.' I believe that sums up the law when what we call the question of paper anticipation arises. There is also the case of Betts v. Menzies in the 10th House of Lords cases which is cited by my brother Kennedy, which contains a judgment of Lord Westbury to the same effect. 55 666 66 66 6 66 6 Now, in this paper anticipation of Burton and Shaw with the drawings, E Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company. do we find "a description of such a character as to enable anyone competent "to make a machine," that is, to bring into play the combination patent of Welch, "for which protection is claimed, from the description given?" All I can say is, without delaying longer in this case, that I have read the evidence of Mr. Edlin, where he says, that in his opinion Burton and Shaw was 5 an anticipation. I have read the evidence of Dr. Hopkinson, and now I understand why his evidence was given in reply, because at the time when Dr. Hopkinson gave his evidence I understand Burton and Shaw's anticipation was not part of the defence. It came out during the progress of the case and after Dr. Hopkinson had been examined in chief, and then, of course, he was 10 re-called and re-examined about this. He points out and gives very good reasons, to my mind, and I entirely agree with him why Burton and Shaw was not an anticipation of the combination patent of Welch. I am, therefore, of opinion that my brother Kennedy was right on both points, and this appeal must be dismissed with costs. RIGBY, L.J.-I am of the same opinion. Really, though these cases are very complicated indeed, and it is quite possible that in almost any case of such a nature as this there may be oversights and difficulties, I cannot think there is much difficulty when we get to the facts in this case having regard to what has taken place before. 15 20 First, on the point of disconformity, there are rules for construing Specifications, Provisional or Complete, because they have to deal with a subject matter of which the Courts by themselves cannot know enough to lead them in a right direction. They must be instructed both as to the history and as to the other surrounding circumstances in regard to which the Specification is to be 25 construed, they must take evidence, and it may very well happen that they do not get the right evidence, and therefore, it may very well happen that a Specification, which is considered by the Court to have a certain definite construction on the evidence before it, may turn out to mean something else. I do not say that these cases frequently happen, but in complicated cases they 30 may, and, therefore, the construction put by any Court on a Specification, Provisional or Complete, may turn out to be a wrong construction. That, of course, can be corrected by better, or different, or further, evidence called on a future occasion, and the Court which has that better evidence before it is by no means bound by the construction which has been put by the Court, even 35 of superior jurisdiction, in the prior case. When once the Specification is understood by the Court the duty of determining upon a question of disconformity is no longer a question of evidence, it is a question of law. Here we have two decisions before us and our minds are enlightened by all the evidence there was, and the question is, aye or no, does the Complete Specification disclose 40 an invention, the nature of which is not indicated in the Provisional, that, as I said, being a question of law. It follows from that that when there has been a decision on the question of disconformity there can be no revision of that except by a Court of superior jurisdiction-in this case an appeal to the House of Lords-unless you have got that fresh evidence. Now during the whole 45 course of Mr. Steven's address I have looked in vain for anything that can be called fresh evidence of disconformity. We have had what I may call a very ingenious and a very able re-argument of the question of law. That we are not at liberty even to consider. I find no scrap of new evidence, as I understand the matter, which could induce the Court to put a different 50 construction either on the Provisional Specification or on the Complete Specification from that adopted by the Court before. I have heard what his Lordship has said as to there being no absolute certainty of our being right or wrong in cases of this nature. But if I am right in saying that there was no evidence it does not matter really here whether we were right or whether we 55 5 Pneumatic Tyre Company, Ld., and Another v. Leicester Pneumatic Tyre and Automatic Valve Company. were wrong. If we were wrong we can still be set right by appeal, and that is the only way in which it would be possible for a new litigant to release us from the obligation of following the decision which this Court has already arrived at. As regards the question of anticipation by Burton and Shaw, that possibly has a bearing on the case which requires consideration. That is a novelty so far as regards any question of anticipation that has been considered and dealt with here before. One cannot escape from the reasoning of his Lordship in the case of paper anticipation, or from the authority of the case he has referred 10 to, which is an authority that was referred to by my brother Kennedy in the Court below, and I do not find, having regard to the principles in those authorities, that there is here what can be called a case of anticipation. That is all that is necessary to be said, I think, about the two points that have been raised. I look, I think I may say with as much jealousy as one ought to to do 15 in these cases, upon the rights acquired by patentees. Very often they get a great deal more than they deserve. Very often, by almost an accident, one man will get an advantage over all the rest of the trade which we cannot but deplore, but we have nothing to do but administer the law, and if a man has according to law acquired such an advantage, we must give effect to it, 20 though we may agree with Mr. Steven that in this patent it is very hard upon the trade that a patent like this should interfere so much with what would have been their privilege. I do not think this is one of those cases in which the patentee gave to the world a grand discovery. If he had not taken out that patent someone else would have done so in a very short time. He simply 25 was fortunate enough to come in just at the nick of time. We have to find out the legal rights of the parties as best we can, and having done so, to give effect to them. A. L. SMITH, L.J.-My brother reminds me that I did mention Parfrey, but I did not afterwards refer to it. It is perfectly obvious to my mind that 30 in this case Parfrey was not insisted upon before my brother Kennedy as being an anticipation. You have only to read the notes to find that. My brother said that it was not abandoned, but no argument took place before him upon it, but the Defendants might argue upon it if they liked in the Court of Appeal. For myself, I hardly think that is the way to deal with the Court of 35 Appeal. If a point is taken, and is to be insisted upon, the Judge in the Court of first instance ought to give judgment upon that point, in order that we in the Court of Appeal may say whether he is right or wrong, and when you look to the Specification of Parfrey itself, or look to the course which the Defendants adopted with regard to Parfrey at this trial, in my judgment they cannot rely 40 on Parfrey's Specification to invalidate the patent of Welch. RIGBY, L.J.-I wish to add that in my judgment if they had fought it out to the very utmost in the Court below and here, I should have come to the conclusion that it was not enough to establish a case of anticipation. COLLINS, L.J.-I am of the same opinion, and as I was not a member of the 45 Court when the East London Rubber Company's case was decided, I will add a few words. The points are disconformity and anticipation, and what I have been anxious to see during the course of the argument was whether or not any new element, proper to be considered by us, was introduced into this case on the question of disconformity which was not before the Court of Appeal on the 50 former hearing. When I say new element, I do not mean new argument, I mean new and relevant facts which were not before the Court of Appeal. Having given the most anxious attention to Mr. Steven's argument, I cannot find that a single fact and I will add a single argument-that was addressed by him to us was not before the minds of the Court of Appeal when they gave their decision. 55 Therefore, whatever would have been my own view on the question, whether |