66 66 The Gormully and Jeffery Manufacturing Company v. The North The Complete Specification was as follows:-"This invention relates to tyres "which consist of a flat endless band of india-rubber wider than the dovetailed groove into which it is inserted so that it assumes an arched form when in "place. I introduce between the arched outside tyre and the circular bottom "of the metal rim a tube constructed of cloth and india-rubber provided with a 5 "branch for filling it with compressed air. By this arrangement the outer band "tyre may be reduced in thickness, and while assisting in sustaining the pressure (from weight) on the outer band the lateral pressure of the inside air"tube will press its edges tightly against the dovetailed flanges of the metal rim "and thus be effective in holding it more firmly against the flanges of the metal 10 "rim at the momentarily bearing part of the tyre. It will be obvious that one "advantage of this arrangement is that successive outside bands or tyres can be "renewed from time to time without the necessity of wasting the tubular air "chamber between it and the metal rim, and thus greater economy will be "attainable. It will be generally most convenient to have the filling tube of 15 "the tubular air chamber projecting from the surface of the tubular air chamber "resting on the metal rim, in which a hole is bored through which to pass the "filling tube. "Where thin outer tyres are used I slightly thicken their edges where they "lie inside the trough. 66 "DESCRIPTION OF THE DRAWINGS. 20 Figures 1 and 2 are transverse sections of wheels made according to my "invention. a is the outer tyre of india-rubber or other elastic material. b is a "metal tyre or rim. c is an air-tight tubular chamber and d is the filling tube. "Having now particularly described and ascertained the nature of my said 25 "invention and in what manner the same is to be performed I declare that "what I claim is -1. 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 "the sides of the groove substantially as described. 2. Tyres or rims for 30 "cycles and other vehicles consisting of the parts a b c combined and arranged, "substantially as described and shown in the drawings." : Figure 1 of the drawings is subjoined, on a reduced scale. C FIG.I. In a previous action brought by the same Plaintiffs against Charles Macintosh and Co., Ld., Mr. Justice Romer, on the 12th of June 1894, granted a certificate 35 that the validity of the patent came in question in that action.* By their Statement of Claim, the Plaintiffs, after alleging the assignment of the Letters Patent to the Plaintiff Company, and the infringement of the Letters Patent by the Defendants, claimed an injunction, an inquiry as to damages, delivery up of infringing tyres, and costs as between solicitor and client. * 11 R.P.C. 489. 40 5 66 66 The Gormully and Jeffery Manufacturing Company v. The North The Defendants, by their Defence, denied infringement and the validity of the patent, and stated that (2) "the Defendants contend that the invention, "which is described and claimed in Bartlett's Specification, is one in which "an arched tyre of india-rubber is held in position by having its edges put into a state of compression by the air pressure in the inner tube pressing them against the inclined faces formed on the metal rim, and that is held in position "in this manner both when the edges of the outer tyre are thickened and "when they are not thickened, and that the thickening of the edges of the "outer tyre, as described in Bartlett's Complete Specification, is not claimed, 10 except when in combination with the invention as herein before described and "limited. (3) The Defendants sell and export considerable numbers of rims, "inner tubes, and outer tyres, separately, and not in the form of complete or "assembled tyres, and they contend that such acts are not infringements of "the said Letters Patent." 15 66 66 66 The Particulars of Objections, as amended, were as follows:-"(1) That the said "alleged invention was not new at the date of the said Letters Patent, but had "been published in this country, prior to the said date, in and by the publication "of the following Specifications and documents :-(a) Jeffery's United States patent, No. 383,129 of 1888, the whole is relied on; (b) Thomas' United States 20" patent, No. 399,356 of 1889, the whole is relied on; (c) Bartlett, No. 11,800 of "1889, the whole is relied on; (d) an article in 'The Scottish Cyclist,' dated the "15th of October 1890, beginning with the words 'The Clincher rim people "have introduced an exceedingly simple cushion tyre.' (2) The Plaintiffs, The "North British Rubber Company, are not, in law, the proprietors of the right 25" to make and sell tyres such as those complaired of in this action, by reason "that the exclusive right to make such tyres was granted, or purports to have "been granted, to the persons following, viz :-(a) Henry Kesterton, No. 15,311 "of 1890, the whole of this Specification is relied on; (b) John Harrington, "No. 15,448 of 1890, the whole of this Specification is relied on. (3) That, having 30" regard to the information disclosed in and by the following Specifications and "documents, and to the general state of knowledge at the date of Bartlett's "Letters Patent (No. 16,783 of 1890), the said Letters Patent must be so construed as not to claim the tyres complained of in this action, and are invalid by "reason that there was no invention required to place an india-rubber tube, "filled with compressed air, in the interior of any tyre, however constructed, "or in altering the shape of the rim to the particular form shown by Bartlett, viz., by (a) Dunlop, No. 10,607 of 1888, the whole is relied on; (b) Dunlop, "No. 4116 of 1889, the whole is relied on; (c) the common user of tyres made according to the two last-mentioned Specifications; (d) Thomas' United States patent, No. 399,356 of 1889, the whole is relied on; (e) Thomas, No. 4350 of 1889, the whole is relied on; (f) the said article in The Scottish Cyclist'; "(g) Faulkner, No. 13,612 of 1890, the whole is relied on; (h) Smith, No. 14,203 "of 1890, the whole is relied on; (i) Bartlett, No. 16,348 of 1890, the whole is "relied on. (4) That the invention claimed in the Complete Specification. 45 (Bartlett, No. 16,783 of 1890) is an invention differing from and larger than that "described in the Provisional Specification, in so far as the thickening of the "edges of the cover is constructed to be claimed as part of the invention; and "having regard to the publication by the Plaintiffs, in November and December "1890, of large numbers of circulars showing tyres made substantially according 50" to Figure 1 of No. 16,783 of 1890, and to the documents mentioned above, there was no invention required to thicken the edges, and the same could not 66 validly be claimed." 35 40 66 66 66 66 66 66 The Reply of the Plaintiffs was as follows:-"(1) They join issue thereon, save in so far as the same consists of admissions. (2) As to the matters in 55" paragraph 2 of the Defence alleged, the construction therein placed upon the "said Specification is not the true construction. Such Specification has already 66 66 66 The Gormully and Jeffery Manufacturing Company v. The North British Rubber Company, Ld., and Another. "been construed in an action of which the index and reference number are "1893 N., No. 569, and the Defendants are bound by the construction then placed upon the said Specification. (3) As to paragraph 3 of the Defence, the "Defendants have sold and are still selling assembled tyres. Such sales, as "well as the sale of parts, set out in paragraph 3 of the Defence, are in infringe- 5 "ment of the Plaintiffs' said patent. (4) As to the matters set out in the "Particulars of Objections, in paragraph 1 (c) and (d), paragraph 2 (a), and paragraph 3 (e), (f), (i), the validity of the Plaintiffs' patent was attacked on "all the said Particulars of Objections in an action of which the reference and "index number are 1893 N., No. 569. A certificate that the validity of the said 10 patent had come in question was given in the said action. The Defendants are bound by such certificate, and cannot raise any question as to the validity "of the said patent on any of the said grounds. (5) As to the matters set out "in paragraph 2 (a) and (b), (1) no such exclusive right was granted, either "to the said Henry Kesterton or to the said John Harrington, as alleged, or at 15 "all; (2) if such exclusive right was granted, which is wholly denied, the "matters in paragraph 2 of the Particulars of Objections alleged afford no "defence in law to this action; (3) as to the alleged grant to the said Henry "Kesterton, if such exclusive grant was made, which is wholly denied, the "invention described in the final Specification of the said patent was an 20 "invention larger than and different from that described in the Provisional "Specification of the said patent, and the grant of the said patent was wholly "void and of no effect." The tyres of the Defendants complained of in this action were described by North, J., in his judgment (13 R.P.C. 699, 700) as follows:-"The Defendants 25 "admit that they have made and sold tyres in various forms, two of which, "called respectively the 1893 tyre and 1894 tyre (F.J.B. 2 and 3), are alleged in "this action to be infringements of the Plaintiffs' patent, and are sought to be "restrained. In their 1893 tyre, the Defendants have an inner elastic tube, "which supports an outer case adapted for contact with the road at its bearing 30 "surface. This outer annular case, however, is not merely a semicircle or arch, "but is continued downwards until the two sides meet at the centre line of the "metal rim, round the circumference of which the tyre is carried, and upon "which the tyre is supported, so that this outer case is in the form of a tube "longitudinally throughout along its inner surface. The side portions of the 35 "metal rim, corresponding with the Plaintiffs' dovetail, are not merely inclined "towards one another, as in the Plaintiffs', but are curved further round and "inwards towards one another, so as, in a section of the rim, to take the form "of hooks. The portions of the outer case on each side of the split which come "in contact with the metal rim are considerably thickened, and are so arranged 40 as to occupy the space between the metal rim and the incurved hooks above "described; and the breadth of these thickened portions or flaps, when in "position, is considerably greater than the distance between the points of the "two hooks. The outer end of each flap farthest from the split is also made to project so as to form a flange or lug, and it is into the angle or recess behind 45 "these flanges that the points of the hooks fit. This outer tube is compounded "of rubber and cloth, cut on the bias; that is to say, that the threads of the warp and weft are not in a line with, or at right angles to, the longitudinal "axis of the tube, but are diagonal to it, so that any extension by inflation of "the tube in one direction would cause, by what is called contractile action or 50 lazy-tongs action, a contraction of the tube in a line at right angles to its "extension. When the Defendants' inner tube is inflated, its pressure forces every part of the outer case which is in contact with the metal rim against "that rim, and, amongst others, it forces that part of the outer case which, with "the flange, forms a recess against the hook within that recess, and at the same 55 "time prevents the flaps from rising through the narrower opening between the 66 66 66 66 The Gormully and Jeffery Manufacturing Company v. The North "two hooks. The Defendants' 1894 pattern only differs from that of 1893 in this, "that the flaps are somewhat longer and overlap one another, instead of merely 66 meeting at the split, so that the pressure of the inner tube upon the flaps "does not press them both directly against the metal rim, but presses the inner 5" flap against the outer flap, and the outer flap only against the rim." The following diagrams of the Defendants' 1893 and 1894 tyres are taken from the Appellants' Case on the appeal to the House of Lords : f 1893. e d 1894. 66 As to these diagrams, the Case stated as follows::- a represents the outer tyre, "b the metal rim, and c the inner tube, which is made of india-rubber alone, 10" and is not made of a combination of cloth and india-rubber. These two tyres "are, practically speaking, identical in all respects, except that the portions "marked d overlap each other in one case, and do not do so in the other. The parts marked d are frequently referred to in the evidence as the 'flaps,' the "parts e as the 'lugs', and the parts ƒ as the 'hooks.'" 15 20 66 The trial of the action took place before North, J., in November 1895. Judgment was reserved, and delivered on the 12th of August 1896, when the learned Judge held that the patent was valid, and had been infringed. The Defendants appealed, and the appeal was, on the 18th of February 1897, dismissed by the Court of Appeal, with costs (14 R.P.C. 283). The Defendants appealed to the House of Lords, and the appeal now came on for hearing. Cripps, Q.C., Swinfen Eady, Q.C., and J. C. Graham (instructed by J. Nicholls and Son) appeared for the Appellants; Moulton, Q.C., Bousfield, Q.C., Roger Wallace, Q.C., and A. J. Walter (instructed by Bischoff, Bompas, and 25 Co.) appeared for the Respondents. Cripps, Q.C., and Swinfen Eady, Q.C., for the Appellants, after stating the nature of the action, and reading the Complete Specification, continued.-The patent does not cover the use of a pure rubber tube. But we do not admit infringement, even on the wider view of the patent. The Patentee's tube is 30 cloth and india-rubber, and therefore inextensible beyond a certain point. If the extensibility were not so limited, the arch would be blown off. There is no difference of opinion between the experts as to this. The reduction in thickness referred to in the Plaintiffs' Specification can be made, because you have a new force which withstands the pressure from outside-the road pressure. 35 You get an air-strut, which pushes the edges against the flanges of the rim (see The Gormully and Jeffery Manufacturing Company v. The North Figure 1). When the tyre is inflated, blowing off is resisted by two things-(1) the limited extensibility; (2) an air-strut between c and a corresponding point on the other side. There is a difference between us and the Respondents as to how far friction is involved. There are air strains and road strains. In the Respondents' tyre, the former is resisted by the air-strut between the 5 two faces of the dovetail, and also by the capacity of the tube for stretching being very small. Unless the tube is rubber and cloth the lateral pressure will not be sufficient. The forces relied on by the Patentee are absolutely distinct from those on which we rely. In our view, the Patentee has the combination of the inner tube and the dovetail construction. The limited 10 extensibility is an essential factor. Bartlett invented a form of pneumatic tyre, in which the inner tube is of limited extensibility. The combination is the arched tyre, the dovetailed rim, and the inner tube of cloth and india-rubber. The Respondents, when they use a pure rubber tube, introduce inextensible strings to counteract the extensibility. With rubber the 15 counteracting forces are not sufficient. They say that we have taken the essence, although we may have improved. As to the state of knowledge :-The dovetailed rim was not new (see Bartlett's patent, No. 11,800 of 1889); also there was a similar action in Jeffery. Dunlop (No. 10,607 of 1888) had a single pneumatic tube; Dunlop (No. 4116 of 1889) had a double tube, but was not 20 detachable; the inside tube might be pure rubber. There was a double problem (1) where the tube was of pure rubber, and (2) where it was of cloth and rubber. Thomas (No. 399,356, United States, of 1889) was the first to have an inside tube and a cover; it was sprung on. Then there were Thomas (No. 4580 of 1889), Kesterton, and Harrington, the latter of which was very near the 25 invention now in contest. It is a question whether you do not find in Harrington an outside detachable cover. Summarising the state of knowledge: (1) The pneumatic tyre was known; (2) the dovetailing, (3) the principle of a free inside tube, (4) the arched form, and (5) the detachable tyre were all known. The elements of the invention are (1) the arched tyre, (2) the 30 dovetailing, and (3) the composite tube. Then as to what we have done:-We use a pure rubber tube; the lugs are held by the hooks; we have no lateral pressure, but tension or pull. The outer cover, which entirely resists the tendency to blow off, is in a state of tension. There is the pull of hook against hook. [The LORD CHANCELLOR.-The whole thing would collapse if there 35 were no air pressure.] Yes, but the forces keeping the tyre in place are not air-pressures. In a dovetail the power of resistance depends on the difficulty of drawing the larger substance through the smaller opening. We have not application of that principle. [Lord WATSON.-In each case the dovetail action is one way in which the resistance is made effective.] So far as 40 mechanical combination is concerned, Lord Kelvin said ours was different from the Patentee's. The Patentee relies on lateral pressure. The dovetail, or any exaggeration of it, cannot hold on an extensible tube. We have a force which they have not, namely, the contractile force due to the cloth of the cover being cut on the bias. Also there is a pressure towards the centre of the wheel, 45 producing friction between the two flaps. Before you get the full effect of tension, you want something to keep the flaps in place. There is the centrewards pressure that does this. According to Lord Kelvin, our three forces are the pressure of the hooks, contractile force, and the centre wards pressure. The extensibility in the Plaintiffs' is restrained partly by the composite nature of 50 the tube; in ours the tube is restrained by the pull on the hooks; there is always tension in ours. In each the push outwards is the common enemy. We both have the inner tube, but not for the same purpose. If there were tension in the Plaintiffs', it would not be useful. [Lord WATSON.-The pressure in the Plaintiffs' gives stability to the sides.] Yes, and the blowing off is resisted by 55 the canvas in the cover. The road pressure in theirs gives increased lateral |