Lister and Company, Ld., and Others v. Dix Brothers.

Mr. Dugald Clerk was then recalled and further examined. Edmunds, Q.C., for the Defendants.-The word "floating" is a technical term, and indicates a running for some length along the structure. We have no floating warps. Further, the Specification refers to additional warps as the 5 feature of the invention; ours are not additional but part of the structure. The idea of fastening in by backing warps was applied in Southwell's Specification to an analogous structure. If a wide interpretation is put on the patent it is bad; if a narrow interpretation is given the Defendants do not infringe.

Moulton, Q.C., in reply.-This case depends on construction of the Specifica10 tion. The meaning of the word "floating" in the Specification is clear. [WRIGHT, J.—Has the patentee limited himself to backing warps which float over more than one weft?] The patentee in the Specification uses floating as meaning riding over the back of the pile warp. [WRIGHT, J., referred to page 2, lines 33 and 34 of the Specification, being the sentence "As will be 15 seen ... after this weft."*] These lines refer to the diagram; he is there thinking of the wefts. The passage does not limit the rest, but refers to an application to a particular cloth. The invention is applicable to other cloths. Southwell's Specification relates to carpets.

.

Edmunds, Q.C.-I submit lines 33 and 34 on page 2 apply to the whole 20 Specification. A floating warp is one that goes over more than one weft. Judgment was reserved and delivered on December 21st, 1898.

WRIGHT, J.-The case now stands for decision upon the alleged infringement of the Plaintiffs' second patent of 1889, as formulated in the first claim in that patent. As so formulated, the invention is a combination, the first element 25 in which is a previously known mode of making. in power looms, double pile woven fabrics, such as velvet, with loose V-shaped tufts held in place laterally by supporting warps, and the second is the introduction of two or more additional backing warps carried under the backs or bends of the tufts, and giving a vertical support which prevents the tufts from being forced out back30 wards when pressure is applied to the face of the fabric. The utility of the combination is not challenged, nor is the novelty of it as a combination seriously challenged in its application to the manufacture of fabrics such as the subject. of the patent. It was, indeed, suggested that the use of a backing for a similar purpose was so much a matter of common knowledge that it could not be 35 regarded as a matter of invention at all, and two instances of the use of a backing in the manufacture of somewhat similar substances are in evidence, but these two instances were not in a similar combination, and, considering that previous patents had failed for want of a similar provision for backing, it cannot, I think, be properly regarded as a matter of common knowledge, at any rate in 40 relation to the particular subject-matter. The best proof of this is, that the Plaintiffs' own previous patent of December 1888, had remained practically unworkable for want of a backing of this kind, and that for the same reason an anticipation of that patent by Peltzer Brothers, of Crefeld, in July 1888, had proved and continued to be useless. Considering the great importance of the 45 subject and the number of inventive minds engaged upon it, a device which so long escaped attention cannot be regarded as a matter of common knowledge in relation to it.

The real question seems to me to be whether the patentee has not confined himself to a particular arrangement which the Defendants have not adopted, 50 and if that is answered in the negative, then, secondly, whether an infringement is shown. On the first point the case is this: In the Plaintiffs' actual manufacture, the backing warps are not (as in the Defendants' fabric they are) carried alternately under and over consecutive wefts, but after being carried over one weft they

* Ante p. 91, 1. 11

Lister and Company, Ld., and Others v. Dix Brothers.

are carried under the backs of the three following wefts. This in technical language is called a "floating" of the warp on the backs of the wefts. The patentee in his Specification has several times used the words "float" or "floated," and in one of his figures he shows such an arrangement of the backing warps, and if he has so described his invention as to limit it to backing 5 warps which are floated in this technical sense over the wefts, he must fail, because the Defendants' backing warps are not so floated. But Mr. Moulton has satisfied me that this is not the proper construction of the Plaintiffs' Specification. When that is closely examined, it is seen that only in one passage-namely, lines 33 and 34 on page 2-the patentee speaks of the backing 10 warps floating over wefts. In every other place, he speaks of them as floating or riding over the backs, not of the wefts, but of the cloth or of the pile warps. I think that he does not use the word "float" in a technical sense in relation to the wefts, but as a convenient word descriptive of the position of the backing warps in relation to pile warps. The whole passage from line 9 to 15 line 34 (inclusive) on page 2, seems to me to be, not a general description limiting the invention, but an illustration of it as applicable to the particular fabric covered by the previous patent of 1888, and in lines 33 and 34, the patentee points out that in the particular arrangement of wefts as adopted in the fabric of 1888, which is the subject of the illustrative diagrams, and in 20 which there is an "idle" weft, the backing warps float over three wefts. But the invention does not purport to be confined to fabrics, the wefts of which are arranged as in the patent of 1888, and I cannot see any reason why it should be so confined. The "idle" weft does not affect the substance of the arrangement.

25

So construed, the patent is clearly infringed. The Defendants have adopted the system of holding the so-called pile warp (that is each row of loose pile tufts) between two sets of ground warps, and (as it is now admitted, though at first denied) they have adopted the two additional warps, so that the Defendants' fabric has the same total number of warps to each row of pile tufts, as the 30 Plaintiffs' has. The only difference is that, as the Defendants dispense with the "idle" weft, their backing warps can float or ride alternately, over and under one weft at a time. In the case of each fabric, the backing warps are a part of the structure, and float in the same sense over the backs of the pile warps. If this is, as I think it is, all that the Plaintiff's have claimed, it is taken by the 35 Defendants. There must, therefore, be judgment on that patent for the Plaintiffs, with costs.

A certificate that the Particulars of Breaches were reasonable and proper was given to the Plaintiffs, and the Defendants were given the costs of the action so far as it was founded on the 1888 patent, ard a certificate that their Particulars 40 of Objections to that patent were reasonable and proper.

The Valveless Gas Engine Syndicate, Ld. v. Day.

5

IN THE COURT OF APPEAL.

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

November 15th and 16th, and December 7th, 1898.

Before MR. JUSTICE BIGHAM.

December 19th and 20th, 1898, and January 16th, 1899.

THE VALVELESS GAS ENGINE SYNDICATE, LD. v. DAY.

Action for royalties.-Conflicting claims to patent.-Construction of agreement.-Improvement.-Claim for rectification of agreement.

In 1893, D. agreed to sell to The Valveless Gas Engine Syndicate, Ld., certain 10 patents and the benefit of all inventions which D. might then have made, or be entitled to, or which he might thereafter make, being for improvements upon the inventions the subject of any of the patents, or applications for the same, thereby agreed to be assigned. The patents comprised two patents of D., of 1891, for "Improvements in gas engines" and "Improvements in gas or vapour engines" 15 respectively, and the benefit of an application by C. in 1892 for a patent for "Improvements in gas engines." In 1895, Letters Patent were granted to D. for "Improvements in oil engines." Actions were brought by D. against the Syndicate and others, and by the Syndicate against D., in both of which the question arose whether the Syndicate was entitled to the patent of 1895. In 20 the course of the trial D. was allowed to raise a claim to have the agreement rectified; but in the view taken by the learned Judge it became unnecessary to decide the question so raised.

Held, by BIGHAM, J., that the invention transferred by the agreement of 1893 was one by which the Patentee dispensed with a number of valves in gas and 25 vapour engines, and that the 1895 patent was for an invention which was a method of working the engine to which the 1891 patent related by petroleum instead of by gus, and that it was not an "improvement" on the patents transferred within the meaning of the agreement.

Held, on appeal, by SMITH and COLLINS, L.J.J., (RIGBY, L.T., dissenting,) that 30 the 1895 patent was for an improvement, but that the case must go down for the trial of the point as to rectification; the costs of the appeal to be the Syndicate's in any event, the costs of the first and second trials to be in the discretion of the Judge.

The Valveless Gas Engine Syndicate, Ld. v. Day.

On the further hearing, BIGHAM, J., allowed the claim for rectification, with the costs of the second trial, but gave the Syndicate the costs of the first trial.

By an agreement of the 14th of June 1893, made between Joseph Day of the one part, and Frederic Edward Wright, for and on behalf of a Syndicate intended to be incorporated under the Companies Acts, 1862 5 to 1890, to be called The Valveless Gas Engine Syndicate, Ld. (hereinafter called the Syndicate), of the other part, it was agreed that Day should sell, and the Syndicate should buy (inter alia), the British Letters Patent following, viz., No. 6410 of 1891, granted to Day for "Improvements in gas engines," and No. 9247 of 1891, granted to Day 10 for "Improvements in gas or vapour engines"; also the benefit of an agreement, made the 1st of May 1893, between Frederick William Caswell Cock of the one part, and Day of the other part, for the benefit of the application, No. 18,513 of 1892, by the said F. W. C. Cock for "An improvement in gas "engines"; and, further, the benefit of all inventions which Day "may 15 "now have made, or be entitled to, or which he may hereafter make, being for "improvements upon the inventions the subject of any of the Letters Patent, or "applications for the same," set out in the Schedule thereto, including those already mentioned. The said agreement was duly adopted by the Syndicate on the 29th of June 1893, after it had been incorporated, and on this date a 20 supplemental agreement made between Day, Wright, and the Syndicate was executed whereby the principal agreement was confirmed and adopted, and made binding on the Syndicate. On the 25th of January 1893, and, therefore, prior to the agreements, Day and Louis Sterne applied for Letters Patent for an invention of "Improvements in petroleum, gas, and vapour engines." 25 Such application was numbered 1702 of 1893; it was not proceeded with. In 1895, Letters Patent (No. 15,514 of 1895) were granted to Day for "Improve"ments in oil engines."

An action was brought by Day in the Queen's Bench Division for certain sums in respect of royalties under an agreement between him and The Millbay 30 Engineering Company, Ld. (hereinafter called the Company), in which Day claimed a declaration that he was the owner, and entitled to the Letters Patent, No. 15,514 of 1895. In the present action, commenced in the Chancery Division, and subsequently transferred to the Queen's Bench Division, the Syndicate alleged that the Letters Patent (No. 15,514 of 1895) were for an 35 invention of an improvement on the Letters Patent agreed to be sold by Day under the agreement of the 14th of June 1893, or some of them, and claimed that they were entitled to the benefit of the said Letters Patent.

The actions were heard together by Bigham, J., on March 10th and 11th, 1898, who held that the 1895 patent was not for an invention which was an "improve- 40 "ment" on any of the inventions which were the subject of the patents transferred by the agreement of 1893; the action brought by the Syndicate against Day was dismissed with costs. In the other action Day obtained judgment for the royalties against the Company and costs. The Syndicate appealed in the action in which they were Plaintiffs.

T. Terrell, Q.C., and J. G. Wood (instructed by Faithfull and Owen) appeared for the Appellants; Bousfield, Q.C., and H. Tindal Atkinson (instructed by Robbins, Billing and Co., agents for J. P. Capell and Melsome, of Westonsuper-Mare) appeared for the Respondent.

45

T. Terrell, Q.C., for the Appellants, opened the appeal, and read the agree- 50 ment of the 14th of June 1893, and continued :-We claim that the patent (No. 15,514 of 1895) and also a patent (No. 11,037 of 1896) belong to us under

*See 15 R.P.C. 233.

The Valveless Gas Engine Syndicate, Ld. v. Day.

the agreement. [RIGBY, L.J.-What is the definition of an "improvement "?] Any invention which involves in its carrying out infringing the original patent. Here the original invention was for a valveless engine intended to be worked by gas and air. Day has the same engine for an oil engine, using a spray for the 5 oil; it is said that because it is for oil, and not for gas, it is not an improvement on the former. Day's invention was the valveless engine; gas, and a finely divided spray of oil are the same in operation. [The Specifications were referred to.] [Bousfield, Q.C.-I do not contest the claim to the patent of 1836 so far as relates to gas.] The patent of 1895 relates to the introduction into the previous 10 gas engine of a well-known device for spraying oil. There was either nothing to patent, or it is an improvement on the gas engine. It would be an infringement of that patent. [The judgment was read and the evidence referred to.]

As to rectification there was no claim for that.

Bousfield, Q.C., and Atkinson for the Respondent.-As to rectification, it was 15 the intention of the parties that the Respondent should have the oil engine. Gas and oil engines supply different markets commercially. There is nothing in the patent of 1895 to improve a gas engine, except by turning it into something else. The oil engine would not be an infringement of the gas engine patents. The claims of the patents assigned are narrow; the type of 20 engine was old. Even if it were an infringement, it would not follow that it was an improvement. We accept the test that an improvement must be an infringement.

Terrell, Q.C., in reply.-If the oil engine is an infringement of any of the claims of the patents assigned, that is sufficient. A claim for a combination 25 may be infringed although all the parts are not taken. I submit that the oil engine is an infringement.

Judgment was reserved and delivered on the 7th December, 1898.

SMITH, L.J.-The question in this case is whether an agreement dated the 14th June 1893, by which the Defendant Day agreed with the Plaintiffs, the 30 Valveless Gas Engine Syndicate, Ld., to sell to them all inventions which he might have then made or be entitled to, or might thereafter make, being improvements upon the inventions, the subject of Letters Patent the 10th April 1891, 1st January 1831, and 15th October 1892, which I shall call the prior patents, includes patents which Day afterwards took out in the years 35 1895 and 1896, which I shall call the subsequent patents, the point being whether these subsequent patents are improvements upon all or any of the prior inventions so as to come within the agreement. If so, the Plaintiff Syndicate is entitled, subject to a point as to the rectification of the agreement, to a declaration that it is entitled to the subsequent patents of 1895 and 1896. 40 The real contest between the parties is as to the patent of 1895. The prior patents are patents for improvements in gas and vapour engines whereby an explosion is brought about which creates an impulse at every revolution of the wheel, and thus the motive power of the engine is attained. In the view I take of this case, it is not necessary to describe with particularity the mechanism 45 of the gas and vapour engine as described in the prior patents, nor the manner in which the explosion is brought about therein, for it suffices to say that under the prior patents the explosion may be brought about by the conjoint operation of air and gas "or other explosive or suitable vapour." The gas and vapour engines described in the prior patents were, before the taking out of the 50 subsequent patents, driven by means of gas and air introduced therein, by which means the required explosion was attained, and these machines were not in their mechanism adapted to the use of oil and air wherewith to bring about the motive power. As gas was not universally to be obtained, being principally obtainable in towns, the user of the engines when gas was used 55 was greatly restricted, whereas when oil could be used in the place of gas, the