The Gormully and Jeffery Manufacturing Company v. The North British Rubber Company, Ld., and Another. I have come to the conclusion, with both Courts below, that the Appellant Company have, in point of fact, appropriated and used the pith and marrow of the patented invention. The alterations which they have made upon the shape of the bent edges of the metal rim, which aid in holding the ends of the outer cover, are, in my opinion, mere modifications of the device for accomplishing 5 the same purpose which is shown in the Specification. Having regard to the evidence bearing upon the liability of the edges of the cover to blow out when the patented device is used in combination with an inner tube of pure india-rubber, I am disposed to think that the Appellants device holds these ends inore firmly, and is in that sense, and to that extent, an 10 improvement on the device shown in the patent. But that circumstance cannot avail the Appellants if they have taken the essence of the patent as the basis of their improvements. Such improvements may involve so much inventive ingenuity as to entitle them to the protection of a patent; but whether they do so or not, and whether they are patented or not, their author cannot use them 15 without the licence of the original Patentee or his assigns during the currency of their Letters Patent. I have only to add that, in this case, the patented invention, although it is explained and illustrated in the body of the Specification, in its application to tyres which have an inner tube of cloth and india-rubber, is not, by the terms of the Patentee's claim, limited to tyres of 20 that class. I am, for these reasons, of opinion that the Order appealed from ought to be affirmed, with costs. Lord MORRIS.-My Lords, I am of the same opinion. Lord WATSON.-My Lords, I am requested by my noble and learned friend, 25 Lord SHAND, to read the judgment which he has prepared in this case. Lord SHAND (as read by Lord WATSON).-My Lords, I have had an opportunity of reading and considering the judgment of my noble and learned friend, Lord WATSON, and I entirely concur in the views he has expressed as to the nature and substance of the Respondents' patent, and in thinking that 30 the appeal should be dismissed, and the judgment of the Court of Appeal affirmed, for the reasons which have been shortly but very clearly stated by his Lordship. 66 I confess that, while strongly impressed from the first with the utility and value of the Respondents' invention, I feared that in describing the inner tube, 35 to be inflated with air for the purpose of pressing the edges of the outside tyre against the flanges of the metal rim, as being "constructed of cloth and indiarubber," the Patentee had left it open to others, by the use of a more expansible tube of india-rubber only, to avoid infringement of the patent. This view would, as it appears to me, have been sound and irresistible if, on a 40 true construction of the patent, the inner tube in its form and material and mode of action had been the point or essence and substance of the invention, or if the invention claimed had been merely the combination of outer tyre, inner tube, and metal rim—a claim which it appears, however, would have been clearly open to the objection of want of novelty. But I am satisfied that the 45 Patentee's claim is not for any such combination, nor for any speciality in the form, material, or application of the inflated inner tube to the outer indiarubber tyre so described as to make the degree of expansion of which the inner tube is capable, and the material of which it is composed, essential features of the invention. The essential feature, which was clearly novel, 50 appears to me, as it does to my noble and learned friend, to be in the arrangement and construction of the flanges of the metal rim and the edges or ends of the outer india-rubber or gutta-percha tyre, which, when acted on by the inner inflated tube (whether capable of more or less expansion), produces a grip which keeps the outer tyre in its place when the wheel is in 55 use on the road. The Gormully and Jeffery Manufacturing Company v. The North This grip is the value of the invention. It depends on the combined effect of the flanges, and the ends of the outer tyre constructed as shown in the sketches annexed to the Specification; and though the pressure of the inflated tube is a factor in producing the result, the existence and application of an 5 inflated tube, more or less expansible, which had been known and used in practice before, is not of the essence of the invention. This view being taken of the invention, it follows, I think, that the Appellants have infringed the patent. The metal hooks they use to catch or grip the ends of the outer tyre serve the purpose of the turned-in flanges in 10 the Respondents' patent. There is, I think, substantially what has been called dovetailing action in both cases; and the Respondents' design has been appropriated, whether the Appellants' combination is to be regarded as, strictly speaking, a mechanical equivalent for the Respondents' tyre ends, and flanges enclosing them, or not. 15 It appears, I think, that in some respects the Appellants' combination is an improvement on that of the Respondents', for even if a pure india-rubber inner tube is used with its greater power of expansion, the outer tyre is not liable to be blown off in the use of the wheel at times when the Respondents' tyre would or might be. But I agree in thinking that the Respondents' 20 invention is used, though the Appellants may have improved on it. The Order appealed from was affirmed, and the appeal dismissed, with costs. Before THE SOLICITOR-GENERAL.-April 25th, 1898. IN THE MATTER OF THOMAS AND PREVOST'S APPLICATION FOR A Patent. Opposition to grant on the ground that the invention had been patented on 25 application of prior date.--Application to re-open the case after it had been decided on appeal, on the ground that the Opponent had subsequently withdrawn his opposition, refused.-Grounds on which a case will be ordered to be re-heard. On the 26th of September 1895, Richard Thomas and Emmanuel Prevost applied for a patent for "Improvements in or relating to treating vegetable 30 "fibres or fabrics for dyeing purposes"; the application was numbered 18.040. The invention described consisted in treating vegetable fibres or fabrics with alkaline lyes, or with acids, under certain conditions adapted to prevent shrinkage. The application was opposed by Horace Arthur Lowe, on the ground that 35 the invention had been already patented on Lowe's two applications (No. 20,314 of 1889, and No. 4452 of 1890), and on Lightoller and Longshaw's application (No. 5713 of 1881). In the Matter of Thomas and Prevost's Application for a Patent. The Comptroller decided that all reference to the use of alkaline lye should be removed from the Applicants' Specification, and this decision was supported by the Law Officer on appeal. Subsequently the Applicants submitted a statement, signed by the Opponent, unconditionally withdrawing his opposition, and applied to the Comptroller for 5 leave to file evidence and have the whole case re-opened, it being alleged that the respective inventions had not been properly understood, and that a miscarriage of justice had taken place. The matter, after coming before the Comptroller, ultimately came before the SOLICITOR-GENERAL. Moulton, Q.C. (instructed by Tongue and Birkbeck, patent agents), appeared 10 for the Applicants, and applied ex parte for a re-hearing by the SOLICITORGENERAL. He argued for an opportunity of showing, by the evidence of the Opponent and other evidence, that the inventions of the two parties were really distinct. Sir ROBERT FINLAY, S.G.-I am afraid I cannot re-open this matter. That 15 there is power to re-open under special circumstances I have no doubt. If there were fraud, a serious mistake, or miscarriage, I think that there would be power to direct a re-hearing, in order to see whether justice demanded that another conclusion should be arrived at; but the only ground put before me in the present case is that the Opponent has withdrawn his opposition, and is willing 20 to come forward and say that he now desires that the patent should go. I think it would be a very dangerous thing to allow that that should be treated as a sufficient ground. The contest which takes place between the Applicant and any Opponent is a contest in the result of which the public have an interest. It is perfectly true that the Opponent comes forward having 25 regard in almost all cases to the protection of his own interests, but it does not from that in the least follow, when the case has once been decided, that on his coming forward and saying that he desires another conclusion to be arrived at from that which he was instrumental in obtaining, the case should be allowed to be re-opened. When the decision has been arrived at, it is one 30 which ought, in the public interest, to stand, unless some such ground for re-opening it were shown, as I have already indicated. In the present case, I do not think that any such grounds are shown, and therefore I am unable to allow a re-hearing. Graham v. Eli. Graham v. Barlow. 5 IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION. Before MR. JUSTICE WILLS and MR. JUSTICE KENNEDY.-April 28th, 1898. GRAHAM V. ELI. GRAHAM . HUGHES. GRAHAM v. BARLOW. Fatent Agent.-Person not registered as Patent Agent knowingly describing himself as a Patent Agent.-No express description by such person.-" Patent Expert."-Patents, &c. Act, 1888, Section 1, and Rule 5, Register of Patent Agents Rules, 1889. 10 These were cases stated by Sir John Bridge and Mr. Lushington upon the dismissal of informations made by Henry Howgrave Graham, the Registrar of the Institute of Patent Agents, against the respective Defendants, for having knowingly described themselves as patent agents, they not being registered as such, in contravention of the first section of the Patents, &c. Act, 1888.* It 15 was proposed to take the cases together, but the Counsel for Barlow objected that the facts and points of law in that case differed from the others; after, however, the facts in Hughes' case had been stated, the objection was withdrawn, although there were some different points in Barlow's case, which are set out below. The cases were then separately stated, but one argument was 20 applied to them all. The case stated in the information against Eli was as follows: "(1) It was proved, at the hearing of the said information, that on the 2nd "day of December 1897, the Respondent was in occupation of the first floor of "No. 76, Chancery Lane; that on the outside were the words 'Designs,' 'Trade 25"Marks,' and 'Patent Office'; that on a plate at the entrance were the words Patent, Designs, and Trade Marks Office'; and that on the street door of the "said premises there were the words 'Office for Patents, Designs, and Trade "Marks-Foreign and Colonial'; inside the entrance the words 'Patent "Office'; and on a glass case the words 'Inventors' Medium.' Photographs 66.6 66 * This section, so far as material for this report, is as follows:-" (1) After the 1st day of July "1889, a person shall not be entitled to describe himself as a patent agent, whether by "advertisement, by description on his place of business, by any document issued by him, or "otherwise, unless he is registered as a patent agent in pursuance of this Act. (4) If any person knowingly describes himself as a patent agent in contravention of this section, he "shall be liable, on summary conviction, to a fine not exceeding twenty pounds. (5) In this "section patent agent means exclusively an agent for obtaining patents in the United Kingdom." Rule 5 of the Register of Patent Agents Rules, 1889, is as follows:-" A person who is desirous "of being registered in pursuance of the Act on the ground that prior to the passing of the Act "he had been bona fide practising as a patent agent, shall produce or transmit to the Board of "Trade a statutory declaration in the Form 2, in Appendix A.; provided the Board of Trade may in any case in which they shall think fit require further or other proof that the person had prior to the passing of the Act been bona fide practising as a patent agent. Upon the receipt "of such statutory declaration, or of such further or other proof to their satisfaction, as the case "may be, the Board of Trade shall transmit to the Registrar a certificate that the person therein "named is entitled to be registered in pursuance of the Act, and the Registrar shall on the receipt "of such certificate cause the name of such person to be entered in the Register." 66 66 66 Graham v. Eli. Graham v. Barlow. "of the outside and of the entrance to the premises were produced, and are "annexed hereto marked respectively A.C.E. 1 and A.C.E. 2. (2) It was "further proved that, in various Specifications lodged in 1897, the Respondent's name appeared as the agent of the Applicant, the address to which notices were to be sent to him being given as 76, Chancery Lane. In one of these 5 "the Respondent was described as A. C. Eli, Secretary of the Inventors' "Medium, Limited, 76, Chancery Lane. (3) It was further proved that, on the "2nd of December 1897, one Barlow said to George Heynes Radford, in the presence of the Respondent, in a room on the first floor of the said premises, "If you want a patent agent, I am the man for you. I can draw specifications, 10 "conduct oppositions, make searches, give evidence as expert, and other "things.' Radford said he did not want his services. Barlow then said, "Well, if you don't want me, here is Mr. Eli, son of the late Mr. Eli, who is "ready to do anything for you.' The Respondent said nothing to the 66 contrary. (4) It was also proved that, on the said 2nd of December 1897, the 15 Respondent was not, and that he never had been, registered as a patent agent, "in pursuance of the Patents, Designs, and Trade Marks Act, 1888. 66 "I dismissed the said information on the ground that there was no evidence "that the Respondent had described himself as a patent agent within the meaning of the said Section 1 of the Patents, Designs, and Trade Marks 20 "Act, 1888. 66 "The question of law arising on the above statement for the opinion of this "Court is whether, on the facts above stated, I ought to have held that the "Respondent had described himself as a patent agent within the meaning of "the Patents, Designs, and Trade Marks Act, 1888. "If the Court shall be of the opinion that I was right in holding that he had "not so described himself, then the said order is to stand; but if the Court "shall be of opinion to the contrary, then the said order is to be reversed." 25 The facts in the case of Hughes were substantially similar to those in the case against Eli, with whose father he had been in partnership, and in the 30 notice of the dissolution of the partnership he described himself and Eli as carrying on business as Patent Experts. The facts of the case against Barlow were that he described himself in certain documents and at his place of business as "Walter A. Barlow, Patent Expert (Cert. Board of Trade Act, 1888)," and that he had been introduced by one of his clients, named Waller, to several 35 persons as a "patent agent." The case stated by Mr. Lushington set forth that it was admitted by Graham that Barlow applied to the Board of Trade in 1889 to be registered, and that the following certificate was issued by the Board of Trade to Graham as Registrar of Patent Agents : "Patents, Designs, and Trade Marks Act, 1888. 40 "Rule 5. "The Board of Trade, in accordance with the above Rules, hereby "certify that Walter Alfred Barlow, of 46, Chancery Lane, in the City of "London, is entitled to be registered as a Patent Agent, pursuant to the 45 66 provisions of the above Act. "Signed by Order of the Board of Trade the 13th day of January 1894. Courtney Boyle,' 66 6 "An Assistant Secretary, "Board of Trade. 50 "The Institute of Patent Agents. "The Registrar. 66 "This Certificate is issued subject to the payment by the Applicant of the required registration fee." |