In the Matter of Miller's Patent.

for the Petitioner were Mr. Bertram Blount, Analytical Chemist; Mr. Edward Riley, Consulting Chemist; and Mr. James Hugh Paul, Analytical Chemist. With the exception of Mr. Miller, all these witnesses were called to give evidence as to the ascertaining of the presence of bismuth on analysis of an alloy 5 such as "Magnolia Metal" prior to 1890. The following cases were cited: Dollond's Case, 1 Webster, 43; Hancock v. Somervell, 29 Newton's L.J., 158; Germ Milling Company v. Robinson, 3 R.P.C. 253; and Wood v. Zimmer, 1 Holt N.P., 59.

ROMER, J.—I wish to state, in the first place, how it is that this case comes 10 before me again after this long delay, because I desire to show that the American Company in this case, who are the real owners of the patent, and are the Respondents to this application, are not entitled to the slightest indulgence now from this Court. When the petition first came before me for hearing, it was contended that the American Company had never sold or 15 used the patented alloy in this country before the date of the patent. It was upon that issue that the case was then fought. The evidence clearly proved that that was not true, and that the patented alloy had been sold in this country before the date of the patent. The Respondents' Counsel said they were taken by surprise, and they asked that the matter might stand over to consider their 20 position. Accordingly the matter stood over. When it came back again before me they then took up another position, and said: "True, this alloy has been sold by the American Company before the date of the patent, but it was not a "metal made according to the proportions given in the Specification of the "patent; it may have had bismuth in it, but not in the proportions specified in "the Specification." That is the question that was then tried. They failed upon that, and it was proved, after considerable expense had been gone into, and great trouble and delay, that that contention was untrue, and that the "Magnolia Metal" which they sold here before the date of the patent was made in every respect in accordance with the so-called patented invention. That practically ended the 30 matter, and I am not surprised to find that the leading Counsel who then appeared for the American Company has not appeared since to support their

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case.

After all this expense had been incurred—at the last moment-the American Company make a final application, and they ask leave to raise one point, and 35 one point only, which I granted on terms as to costs. That further point is this. I will read it: "That the sales of anti-friction metal or the use of anti"friction metal prior to the date of the patent, which have been proved, do not "amount to prior publication of the invention, even though they did contain "certain percentages of bismuth, because at the time when such sales were 40" made a competent chemist, analysing the alloy, could not have discovered the 66 presence of bismuth." That is the point which, on terms as to costs, I allowed the Respondents to raise before me, and it has been raised. I now have to deal with that issue, and that issue only, as it appears to me under the circumstances.

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Now I start with this, because it was clear that there was, in this country, a public sale before the date of the patent of " Magnolia Metal" made according to the provisions of the Specification. That was not a secret sale in any way, nor, as far as I can see, was it a sale of a metal made in any way according to a secret process. It was a public sale in the ordinary commercial way 50 of "Magnolia Metal." But it was said, and, as I have stated, that is the point now before me, that at the time the metal was so sold chemists analysing it would not have been able to find out the constituents-at any rate, so far as concerned the bismuth. That is the point I have to try. Now, I am satisfied that the Respondents have failed on that. The bismuth 55 could have been detected, and I am satisfied that, if reasonable care and reasonable skill were used by analysts before the date of this patent, when this "Magnolia Metal" was sold, its constituents and the proper

In the Matter of Miller's Patent.

proportions of those constituents could have been ascertained, so that, the metal being sold, its constituents and their proportions could have been known, and it could have been made. There was no difficulty, I wish to point out, and no secret or invention in making the alloy, when you once knew the constituents and the proportions of those constituents. Now, it is quite true that if only a 5 rough analysis was wanted of a metal, like this "Magnolia Metal," or if the analyst employed was allowed to suppose that only a rough analysis was wanted, on such an analysis bismuth might not have been detected; and I quite agree that it would not have been detected on an analysis if reasonable care was not taken and reasonable skill. But, as I have said, I am satisfied that if 10 reasonable care had been used and reasonable skill, analysts would have been able to find out, and would have reported, and it would have been usual to report the exact constituents of this metal and the proper proportions; and it would have been seen by any person who analysed it that bismuth was there. The rest of the composition, apart from the bismuth, was admittedly 15 quite a common preparation; and, assuming that anyone was told that this "Magnolia Metal' had any special property at all, the attention of the analyst, if asked to state anything he could find to distinguish it in any way from a common metal, must have been directed to, and I think he would have referred to the bismuth. In any case, as I have said already, an analyst 20 wishing to make a complete analysis of this metal, and using reasonable skill in doing it, would have detected the bismuth and its proportions, and would have returned that analysis to any person asking to have the metal analysed. It is said, that, before the date of this patent, if the analysis was before a person who had been asked for it, he might not have known 25 the importance of the bismuth, though he saw it there. It appears to me to be immaterial. Skilled persons might doubt then, as they doubt now, whether bismuth was of any importance whatever; but if it be of importance, and if the "Magnolia Metal" has any special qualities by reason of the existence of that bismuth, the existence of that bismuth and the constituents 30 of the metal became fully known, and would become fully known when an analysis was made. So that you have a public sale of a metal, as I am pointing out, not of a metal made by any secret process at all, but a public sale of a metal which if anyone wanted to find out what it was made of, and how it was made, he could have done so without difficulty by analysis. 35 I further wish to point out that, on the wording of the only question which I have now to try, it does not appear to me to be open to the Respondents to take this further point as to not being able to see the importance of bismuth, and certainly, as I have already pointed out, the circumstances are not such as would justify the Respondents in asking for any further indulgence from this 40 Court.

It appears to me, therefore, that under those circumstances, and having regard to the nature of this patent, there was a public user and a prior publication of this invention in this country before the date of the patent. Certainly, in any case, I hold that the Respondents have failed in the further point which now is 45 alone before me. Under those circumstances it follows that the Respondents have wholly failed in the point raised before me, and the Petitioner is, in my opinion, entitled to the relief he asks, namely, to revocation of the patent, and to payment to him of the costs incurred so far as already not taxed and paid.

I desire to say this:-the findings I have made render it unnecessary for me to 50 decide the point of law which would otherwise have arisen, which I think is one of considerable importance, and one upon which I should have desired further consideration but for the findings of the fact I have made. Even assuming that the "Magnolia Metal" sold could be said to have been a metal made according to a secret process which could not have been detected 55 in the metal, by analysis, it would be still a question whether the true owners of this patent could, under the circumstances, have said that that

In the Matter of Miller's Patent.

sale would not invalidate the patent. It is a point which one day will have to be determined, and a point upon which I need at present express no final opinion, because, although it has to be considered, I think it might be said to be still open in some respects for further consideration by the Court whether 5 a person who discovers a secret process and uses the benefit of that secret process to manufacture an article which he sells publicly and commercially, and obtains considerable benefit from it, and then seeks to obtain a patent for that very same process, is entitled to hold that patent under those circumstances. That is a question which I think will require one of these 10 days to be carefully considered. I do not mean to say that it has not been considered before; but, as I have already remarked, I think it remains open, perhaps, for still further consideration; and if that be the question open in the ordinary case of a patentee, I myself see no substantial difference between that and the present case, for the real Patentee here was the American 15 Company, because the Patentee who took out the patent in this country, and is said to have communicated the process from abroad, was their secretary and agent, who simply acted as agent and trustee for them without being the real owner of the patent, so that the real owners of the patent in this case were the American Company who had themselves, according to their own account before 20 the date of the patent, sold for profit here the patented article. As I have said, it does not appear to me to be necessary, having regard to the findings of fact which I have made, to decide that point.

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Terrell, Q.C., asked for and obtained a stay of the registration of the order revoking the patent for 10 days in view of an appeal.

On the 26th of January, the stay of the registration of the order was extended over the hearing of the appeal, provided the Respondents within 15 days paid. 3007. into Court as security for the costs which they had been ordered to pay. The Respondents appealed, but subsequently gave notice of an application to the Court of Appeal for leave to withdraw the appeal.

On the 28th of March 1898, Newton Crane (instructed by Indermaur and Brown) applied for leave to withdraw the appeal. John Cutler,Q.C.(instructed by Marcus and Barraclough), asked that the appeal might be dismissed with costs. The Court of Appeal made an order dismissing the appeal, with costs.

Dowler v. Keeling.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE KEKEWICH.

November 24th, 25th, and 30th, and December 1st, 1897.

IN THE COURT OF APPEAL.

Before THE MASTER OF THE ROLLS, and LORDS JUSTICES RIGBY and 5 VAUGHAN WILLIAMS.

February 8th, 10th, 11th, 14th, 15th, and 17th, and March 1st, 1898.

DOWLER v. Keeling.

Patent.-Action for infringement.-Construction.-Invention.-Anticipation. -Patent held invalid.-Action and appeal both dismissed.

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In 1892, a patent was granted to D. for " Improvements in hollow rivets and "studs, and in the process of riveting, which improvements are applicable to "braces and other like articles." The first claim of D.'s patent was as follows:-" Making hollow rivets and studs of a tubular shank closed at one end and flanged at the open end, the said hollow shank at and near the 15 "closed end being of less diameter than the part at or near the open end, the "parts of the shank of different diameters passing into one another preferably "by a conical shoulder, and the use with hollow rivets and studs of this con"struction of ring-like plates or eyes, either detached or formed in the articles "with which the rivets or studs are to be used substantially as herein before 20 "described and illustrated in Figures 1 to 24, both inclusive of the accompany"ing drawings." In 1896, D. commenced an action for infringement against K., who denied infringement, subject-matter, and novelty, alleging prior user by P., himself, and others, and prior publication by prior patents of himself and others. It appeared that hollow rivets having the closed top but without the 25 shoulder were old, and that hollow eyelets with the shoulder with an open top were old. Held, at the trial, that the first claim was a combination claim for the use, with the rivets described, of the ring-like plates, and that there was, having regard to what had been done before, no novelty or invention, for the Defendant had, prior to the patent, made rivets only differing from D.'s in not having 30 closed ends and giving substantially the same result, and the washer was old. The action was therefore dismissed. D. appealed.

Held, on appeal, that D., by his Specification, claimed the rivet or stud separately as well as in combination with the discs or plates, and that the stud

Dowler v. Keeling.

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was anticipated, the exact thing having been made and used by P. as a button prior to the patent, and (semble per LINDLEY, M.R.) that the separate claim for the stud was also invalid by reason of the prior manufacture by K. of studs similar to D.'s, except that they had open ends instead of closed ones.

On the 17th of March 1892, Letters Patent (No. 5312 of 1892) were granted to Henry Dowler for an invention of "Improvements in hollow rivets and studs, and the process of riveting, which improvements are applicable to "braces, straps, bags, buckles, brace fittings, and other like articles.'

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The Complete Specification was (so far as material for the purposes of this 10 report) as follows:

"My invention consists of the improvements hereinafter described in hollow "rivets and studs and in methods of fixing and upsetting some of the improved "rivets in plates or sheet metal, leather or like substances.

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"In making a rivet according to one part of my invention I employ a flanged 15" tubular or hollow cylinder closed at one end. The said cylinder is reduced in " diameter for a short portion of its length and terminates in a conical shoulder. "The reduced portion is of a size suitable to fit a short open tube raised in a "metal plate or disc which short tube is preferably slightly expanded at the "detached end. The end of the rivet is inserted in the open end of this tube 20 and upset at the other end of the tube by pressure so as to fix it and effect the 66 riveting, at the same time the shoulder on the rivet when the rivet is forced "home in the slightly open end of the tube further expands it within the "leather or other material in process of riveting. Or the portion of the rivet "stem largest in diameter may be inserted as far as the flange in a metal plate 25 and a portion of the stem pressed back towards the rivet flange so as to grip "the plate between the barred portion and the rivet flange. The other part of "the rivet projects from the plate like a stud and can be used to join another plate of metal or piece of leather by upsetting or riveting the end in the manner already described. The open end of the rivet may be covered with a 30 " cap in the well known manner or left open as may be best suited for the "article it is to be used upon. Instead of raising the short tube from the "material of the metal plate a plain circular hole may be pierced in the plate "and an ordinary eyelet clinched therein; this is preferred when it is desired "to fix the rivet in a very thin plate, or in two or more plates placed together. 35" Should however the plate be comparatively thick the tube or eyelet before "mentioned may be dispensed with. In this case the end of the rivet is "inserted in a circular hole in the plate and the riveting effected by pressure. "According to another part of my invention I make a rivet with a collar near "the middle of its length. This collar is formed by inserting the open end of a slightly taper tube within another tube, the open end of which has been enlarged. The edges of the latter are closed around the end of the smaller "tube by dies and pressure so that the two parts cannot be easily separated. "For some purposes the open end of the larger tube may be slit or serrated partly for convenience of manufacture and partly to form notches in the 45 "collar at the junction of the parts. These notches are useful to resist "twisting when the rivet is inserted and upset in the article to which it is "applied.

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"According to another part of my invention I modify the rivet last described "in the following manner. The smaller tube of the rivet is perforated and 50 "slitted lengthwise in two or more places the slits beginning at the open end "and extending nearly as far as the junction with the other part of the rivet. "According to another part of my invention I make a stud by placing the open end of a tubular rivet having a split stem and hemispherical head "within the barrel of an eyelet considerably shorter than the stem of the 55" tubular rivet. The point of the eyelet is turned towards the head of the

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