The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic both. But to this combination must be added the great merit of Bartlett's invention, which was to show that the pressure of air in the inner tube could be so utilized as to keep all the loose parts of the tyre in their place without any other fastening whatever. This is his strong point in the Specification, and I fully 5 appreciate it. But, giving him every credit for this discovery, I cannot read his patented invention as not depending on the use of the loose inner tube. The use which he makes of it is, in my opinion, the most essential part of his invention as described and claimed. This was the view taken by this Court when it had to consider the construction of Bartlett's Specification in the North 10 British Rubber Company v. Gormully and Jeffrey (14 R.P.C. 283), and it is the view which I take of the Specification now that our attention has been more pointedly called than it was in that case to the detachable inner tube. If this be the true construction of Bartlett's Specification, it is clear that the Defendants have not infringed the Plaintiffs' patent. The Defendants have very likely 15 been led by Bartlett's Specification to try and avail themselves of an air pressure to keep on an inner rubber tyre of a different construction, and they have succeeded in producing a tyre which will keep on by air pressure without any inner loose air-tube at all. They have one tyre with a thin india-rubber lining, not two tyres, namely, a loose arched cover or tyre over a loose inner air-tube. 20 It is very true that when the Defendants' tyre is on, it forms a tube which is kept on the wheel by air pressure; but unless the Plaintiffs' patent can be construed as a patent for keeping india-rubber tyres on wheels by air pressure, it is impossible to say the Defendants have infringed the Plaintiffs' patent. I will not repeat my reasons for suggesting this construction. It is not, in my 25 judgment, warranted by the language of either of Bartlett's claims; and to say the Defendants' inner lining is substantially the same thing as Bartlett's loose inner tube is to say that which appears to me obviously not to be true. Mr. Roger Wallace referred to what Baron Alderson said in Jupe v. Pratt (1 Webster, 146), namely, that if a Patentee discovers some new principle, and describes 30 some mode of carrying it into effect, he is entitled to protect himself from all other modes of carrying the same principle into effect. But, in the first place, it is necessary to ascertain what the Patentee has claimed as his invention; and, in the next place, if he has claimed the principle, and all modes of applying, his claim will be indistinguishable from a claim to the principle itself, and will be 35 too large, as pointed out by Baron Alderson in Neilson v. Harford (1 Webster, 342 and 255). This subject will be found discussed and put on its proper footing in the Automatic Weighing Machine v. Knight (6 R.P.C. 297, 304, and 308). Colourable imitations, that is, imitations with trivial or immaterial additions, or subtractions, or substitutions of one thing for another known to 40 answer the same purpose, are infringements, and are more frequently met with, and are more vigilantly looked for, when a Patentee has invented some new principle than when his invention involves no such merit. But whether a Patentee has discovered a new principle, or whether he has not, his monopoly is confined to what he has already invented, and what he has claimed as his 45 invention. Bartlett was no doubt well advised to limit his claim to what he had really invented, and not to risk his patent for his great improvement by enlarging the scope of his claim so as to cover all modes of keeping on tyres by air pressure. In my opinion, Mr. Justice Romer's judgment is perfectly correct, and the 50 appeal must be dismissed, with costs. I will only add that I had written that before I had the advantage of seeing the judgment of the House of Lords in the Gormully case. I have read that. It appears to me, I confess, that this is consistent with that view. I do not believe the Lords intended to go so far as to say that this would be an infringe55 ment, but I am bound to say I think Lord Shand's view goes further. RIGBY, L.J.--This case seems to me to raise again the very same point of The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic construction of Bartlett's Specification that was determined by the Court of Appeal in the Gormully case, though it has now to be applied to a different part of the description contained in the Specification. In that case it was urged upon the Court that the inflated tube used as the air-tight tubular chamber by the Defendants did not fall within the claim made by Bartlett, because it was not 5 made of cloth and india-rubber, but of india-rubber which was indefinitely expansible. This was not a matter of small importance, for there could be no doubt that Bartlett introduced the word "cloth" with the distinct object of confining within narrow limits the expansibility of this tube, and it was shown that if an indefinitely expansible tube were substituted for a cloth and rubber 10 tube in tyres formed according to the drawings to Bartlett's Specification, the effect of inflating the tube beyond a very moderate extent would be to blow off the cover instead of holding it on. This was a very formidable contention. Another contention was that Bartlett purposely confined himself to the details of his Specification in order to avoid the risk of making his claim too wide. 15 The argument was renewed here without any additional evidence to support it. Both contentions were dealt with in the manner shown by the following passage in the judgment of the Court of Appeal pronounced by Lord Justice Smith: "It was strongly urged before us that the words 'substantially as described ' "tied the Plaintiff down to the dovetail groove, the horse-shoe arched cover, and 20 "the composite rubber and cloth tube mentioned in this Specification. These "details are mere examples showing how the invention can be applied in "practice. Again, it was urged that the invention was useless for a highly elastic "inflated tube, and that, instead of showing how to use such a tube, the direc"tions in the Specification exclude its use, and are misleading if applied to it. 25 "But this, again, is only true if the patent is construed so narrowly as to miss the "true invention, and to confine the Patentee to the particular mode of applying "it which he has described. It was also urged that unless the Specification and "claim were thus construed the patent would be void for want of novelty; but the evidence does not bear this out, for no one had realised the importance of 30 making a tyre of a loose cover kept in its place by the pressure of an inflated "tube beneath it. Bartlett realised this, and showed how to do it. 66 In this case there is no question as to an indefinitely expansible tube, for by fastening that which is, in working, to form an inner tube (or air-tight tubular chamber, to use the expression in Bartlett's Specification) to the cover, the 35 indefinite expansibility is controlled. The question here is, whether the fact of the substitution of a fixed lining to the cover, in place of a separate tube, departs so much from Bartlett's Specification as to render the Defendants free from the charge of infringement. Once more the question arises, how "substantially as described " is to be con- 40 strued in this particular Specification, having regard to the nature of the invention disclosed. To me it seems that the whole of the reasoning contained in the passage above quoted applies with at least equal force to the case of an undetached tube; and there are additional reasons which lead me to hold that the present is a stronger case for the Plaintiffs than the Gormully case. I 45 will, first of all, clear away the question of the difference between horse-shoe shape, the Plaintiffs cover, and the ultimately circular shape of that of the Defendants, by pointing out that the flaps in the Gormully case, which turned the horse-shoe cover into one which became in action a tube, were, in the Gormully case, when once it was shown that they had no real effect in holding 50 the cover, held to be unimportant. Then I say, that assuming a separate tube to be sufficiently indicated in Bartlett's Specification, which is by no means free from doubt, yet when the tube has once been inflated it is not only similar to but identical with that of the undetached tube in the Defendants. Each then forms an air-tight tubular chamber, transmitting the pressure of the air so as to 55. clamp the cover against the inturned rims, and, by the air pressure, hold it in The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic its place. The detached tube in Bartlett's Specification, still assuming that to be shown, cannot move any more than the tube formed by the lining in the other. It is not a case of a mechanical equivalent, but of the same effect produced exactly the same way. Unless, therefore, it can be stated with truth 5 that Bartlett was absolutely, and in all cases, tied down by his Specification to a detached tube, I see no possible way in which, consistently with the reasoning in the Gormully case, it can be held that there is no infringement. If it was there held, the Patentee was not tied down to a complete tube of cloth and india-rubber. I am unable to see how he can be tied to a separate and detached 10 tube. I am aware that the judgment of the Court of Appeal refers, in many passages, to a separate detached tube in a manner, which, at first sight, might appear to conflict with the conclusion at which I have arrived. But all those passages seem to me to bear a meaning quite different from that attributed to them by the Defendants here. Bartlett's Specification pointed, I still assume, 15 to a detached tube, but the alleged infringement also contained a detached tube. As to the separateness of the tube, no difference arose or could arise. The Court had nothing to decide with regard to the separateness of the tube, and the words seem to me to have been used as descriptive only, and for the purpose of identifying clearly the thing spoken of. The separateness of the tube is only 20 one part of its description inferred from the advantage attributed to it. The material of which it is to be made is another part expressly mentioned in the Specification. I cannot understand how one part of the description can be treated as not being of the substance whilst the other is. There is no part of the judgment which says that the separateness is essential. Suppose that an alleged infringer produced a tyre corresponding exactly in every detail with the description given by Bartlett in the letterpress and drawings of his Specification, and then, by a proper solution, joined the cover and tube together, could he be said not to have taken substantially what was covered by the patent? It seems to me that he could not, and on this 30 point I agree with Mr. Justice Romer. It is true that he would have been throwing away part of the collateral advantage indicated by the Patentee, namely, the easier repairability of the tyre. A man, however, may infringe if he takes a substantial part of an invention, though he does not take the whole. Here the Defendants may have shown invention, and may be entitled 35 to a patent, as for improvement upon Bartlett; but, upon the construction already given to the Specification, I think that they have taken in substance a material part of the invention, and that makes them infringers. 25 Since the writing of the above judgment, the decision of the Court of Appeal, in the Gormully case, has been affirmed, on appeal in the House of Lords, on 40 grounds which appear to me applicable to the present case. The construction there placed on the Specification, in my judgment, shows that the scope of the patent is not, by reason of the words of reference, "substantially as described," contained in the claim, to be limited to the very words of the descriptive letterpress, exclusive of the description of the drawings, 45 so as to be incapable of comprising anything not answering in every respect to those words. That being so, we find, as shown by description of drawings (a), an outer tyre of india-rubber or other elastic material; (b) a metal tyre or rim; (c) an air-tight tubular chamber; and (d) the filling tube. In this part of the description there is nothing from which the separateness of the internal 50 tube can be inferred. Every one of these elements (a) to (d) is found in the alleged infringement when the inner tube is inflated. Regard being had to the construction put upon the words of the reference, "substantially as "described," the Defendants have, in my judgment, taken the very combination described in the first claim, and so infringed the patent. 55 In my opinion the appeal ought to succeed. VAUGHAN WILLIAMS, L.J.-I agree in the view arrived at by the MASTER The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic OF THE ROLLS. There can, in my judgment, be no doubt but that the merit in fact of the Bartlett invention consists in the attachment of the tyre to the metal rim by the pressure of a column of air; but the question is whether the claim in the Specification is so framed as to claim this principle of attachment as the invention, and to merely detail the internal separate inflatable 5 chamber or tube as a convenient mode of applying this principle of attachment, or whether the claim in the Specification is for the principle of the attachment of the arched tyre by the pressure of the inflation of an internal separate inflatable chamber or tube, so that the invention of this chamber or tube in the Specification would be, not as a mere instance of a convenient mode of 10 applying the principle of the attachment of the arched tyre to the metal rim by the pressure of a column of air, but as the essential feature of the invention. In both the Bartlett and the Fleuss tyre, the force creating the attachment is the pressure of a column of air; but in the former case the column comes into existence by the inflation of a separate inflatable tube, while in the latter case 15 it comes into existence by the impermeability to air of the lined arched tube; and I think it is quite possible, looking at the wording of the claim, that Mr. Bartlett intended thereby to claim the mode of application of the column of air as part of the principle of attachment, in respect of which he was claiming the Letters Patent. This being a possible view of his meaning, we may 20 and, in my opinion, ought to turn to the other parts of the Specification to construe the claim; and if one looks at the passage commencing "It will be "obvious that one advantage," or, indeed, at the preceding passage, it is difficult to avoid the conclusion that the Patentee regarded the separate inflatable tube as of the essence of his claim and invention. Then they say, I think, 25 that where the claim is equivocal, the construction to be adopted may be that indicated by the words of the Specification taken as a whole. I have had the advantage of reading the opinions of Lords Watson and Shand in the Gormully case, and I find nothing in their opinions, or in the judgment of Lord Justice Smith in the same case, to lead me to the conclusion 30 that the separate tube, or the application of the air pressure by means of a column, created in and applied by means of the separate tube, was not of the essence of the claim of the Patentee. The fact that the position of the material forming the tube has been held not to be of the essence of the claim, or held to be outside the pith and marrow of it, does not seem to me to justify the 35 inference that the presence of a separate inflatable tube cannot be of the essence of the claim. I think that the Defendants have done more than take the principle of the Bartlett invention. I think that the Defendants' tyre is distinct in principle from that involved in the Bartlett Patent. LINDLEY, M.R.-The appeal will be dismissed, with costs, in the usual way. 40 The Gormully and Jeffery Manufacturing Company v. The North 5 10 IN THE HOUSE OF LORDS. Present: THE LORD CHANCELLOR (LORD HALSBURY), LORD WATSON, December 6th, 7th, 13th, and 14th, 1897; and February 10th and April 1st, 1898. THE GORMULLY AND JEFFERY MANUFACTURING COMPANY v. THE NORTH BRITISH RUBBER COMPANY, LD., AND ANOTHER. Patent. Action for infringement.—Validity. — Anticipation. — Infringement.-Appeal to House of Lords dismissed. A company, the owners of a patent for "Improvements in tyres or rims for "cycles and other vehicles," brought an action for infringement. The Complete Specification claimed, first, the combination of a grooved rim or metal tyre and an arched tyre of india-rubber or other flexible material held in the groove by the pressure of an inflated tube within the arch which forces its edges against 15 the sides of the groove substantially as described. In the body of the Specification the tube was described as of cloth and india-rubber. The Defendants denied infringement, and alleged the invalidity of the Plaintiffs' patent on grounds of anticipation and prior grant. The alleged infringement had the inner tube of pure india-rubber, and differed also from the tyre shown in the Specification 20 in the bending and adjustment of the edges of the metal rim, these presenting approximately the formation of a hook. It was held, at the trial, that the patent was valid and had been infringed, and an injunction and an inquiry as to damages were granted, and this decision was upheld by the Court of Appeal. The Defendants appealed to the House of Lords. 25 30 Held, that the first claim was for the method shown in the Specification, and any method substantially the same of connecting the outer cover with the rim so that the ends of the cover are gripped; that an inner tube of cloth and india-rubber was not of the essence of the invention; and that the patent was valid and had been infringed. Appeal dismissed, with costs. This was an action by The North British Rubber Company and the Patentee to restrain the infringement of Letters Patent (No. 16,783 of 1890) granted to William Erskine Bartlett for an invention of "Improvements in tyres or rims "for cycles and other vehicles," and dated the 21st day of October 1890. The 35 Complete Specification was left on the 20th of July 1891, and was accepted on the 19th of September 1891. |