Reports of Patent, Design, and Trade Mark Cases

Aktiebolaget Separator v. The Dairy Outfit Company.

One other point requires a passing notice. It is said for the Defendants that in the Provisional Specification the inventor showed other machines for accomplishing his object, and that he abandoned all those in his Complete Specification, and consequently it was contended that his Complete Specification ought to be strictly construed as confined to a machine with the conical 5 plates. What the inventor did by his Complete Specification was to describe for the benefit of the public the best practical machine to effectuate his object. The argument does not assist the Defendants. What they have done brings them within the ambit of the invention as described in the Complete Specification.

VAUGHAN WILLIAMS, L.J.-I entirely agree in the judgments which have been delivered, and I should not think it right to deliver any separate judgment myself if it were not that we are over-ruling the decision of Mr. Justice Wright, and out of respect for that decision, I think it proper to give my own judgment and my reasons in my own way. In my judgment, the Appellants are 15 clearly right in this case. The appeal ought to be allowed and judgment entered for the Plaintiffs.

The action is brought for infringement of Letters Patent, No. 2837 of 1889. There is no question as to the validity of the patent, and the only question is as to whether the machine constructed by the Defendants is an infringement of 20 the Plaintiffs' patent.

The patent in question is a patent for improvements in centrifugal machines for separating fluids of different densities, and in particular for the separation of cream from milk. It is a patent for a combination. There is no claim for novelty in the separation by centrifugal machines of cream from milk. The 25 claim is that the improved apparatus, substantially as described in the Specification, will produce a quicker and more perfect separation than that previously obtained by centrifugal machines.

The question, therefore, being whether the Defendants' machine is an infringement of that described in the Plaintiffs' Specification, it becomes impor- 30 tant to consider in what respects the machines coincide, and in what respects they differ. Now, it seems to me that the principle of both machines is that the fluid to be separated is divided in inclined layers of small extension in a radial direction, directed so that there can be continuous drawing off.

The Plaintiffs' patent is the practical application to centrifugal creamers of the 35 principle (long recognised in the separation of cream from milk in stationary vessels) that separation takes place more quickly and completely the shallower the vessel. The application of this principle to centrifugal separators was new, and the Patentee, by his patent, for the first time showed how it could be done, by dividing the liquid to be separated into inclined layers of small extension 40 in a radial direction around the axis round which the milk bowl rotates, and says in his Complete Specification that in practice he makes use of a number of round conical plates, which are placed above each other inside of the bowl or drum of a centrifugal creamer in such a manner as to leave a narrow space between the upper surface of each lower plate and the lower surface of 45 each upper plate. Then the Specification concludes with a claim as follows: "In centrifugal separators or creamers the combination of the conical plates c1 "with the rotating drum or bowl a substantially as described." It really is not disputed but that the infringing machine is an application of this principle, and that the infringing machine in the operation of separating the cream from 50 the milk performs the function in the same maner as it is performed in the patented machine. In both machines, when in action, the layers of small extension and radial direction are arrived at by passages in a solid central column. The only difference is in the mode of construction of the solid central column. In the patented machine, the central column and its passages are con- 55 structed by placing conical plates above each other, which, in action, are firmly pressed together so as to form a solid passaged column; whereas, in the

Aktiebolaget Separator v. The Dairy Outfit Company.

infringing machine, the central column is cast in one piece and then the passages are drilled. If you solder the conical plates together you have the solid column of the infringing patent. If you cut the solid column of the infringing machine into conical slices you have the identical column of the patented machine, 5 except for the absolutely unimportant difference that the drilled passages are absolutely round, whereas in the column in the patented machine they are, or may be, somewhat flattened, and the Patentee's column can be taken to pieces when not in action. The infringers' column, in my opinion, is the mechanical equivalent of the column of the patented article, and is the obvious mode of 10 distinguishing the infringers' machine from the patented article without difference in principle in the force applied, in the mode of application of the force, or in any respect material to the attainment in centrifugal separators of layers of small extension of the liquid to be separated.

The defence of the infringers admits really the practical identity in action of 15 the two machines, but is based on the form of the claim, and on the fact that, by means of the adoption of conical plates in the construction of the passages in the central column, the patented machine attains a result in respect of facility of cleaning which is not achieved in the infringing machine; and it is said: "You, the Patentee, having chosen by your claim to make the inclusion of 20 conical plates, which achieve this result in respect of cleanliness, a part of your "combination, cannot be heard to say that the conical plates are not an essential 'part of the combination, or that a combination which does not include these "conical plates with their attendant merits for purposes of cleanliness is an "infringement of what is claimed in these Letters Patent."

With regard to the inclusion in the claim of conical plates "c" as part of the combination, the strength of the Respondents' contention is that this makes the conical plates an essential constituent part of that which the Patentee claims to protect, and that this is emphasized by the advantage in respect of cleaning which the Patentee in the Provisional Specification attributes to the user of such 30 movable plates; and it is said that the Patentee, having chosen thus for his protection to narrow his claim and to minimize the danger of objections based on anticipations by persons who may have chanced to use obstructions in the milk-bowl dividing into sections the milk to be separated, cannot, for the purpose of attacking infringers, treat the inclusion in the claim of conical 35 plates "c" otherwise than as a constituent part of it, and ignore such plates as essential to the combination, or say that a person substituting something else for the conical plates is using a mere mechanical equivalent for the plates, and especially cannot do so, having regard to the emphasis placed by the Patentee himself upon the benefit gained in cleaning by the user of such plates.

I agree that if the claim expressly included conical plates as part of the combination, and the user of such conical plates was of the essence of the invention which the Patentee claims to protect, he could not successfully treat anything as an infringement which did not include this specified constituent of the claim at the end of his Specification; but in my judgment it is plain that, 45 according to the reasonable construction and meaning of this claim, when read, as one must read it, in conjunction with the body of the Specification and the accompanying drawings, it does not claim the user of the conical plates as an essential constituent of the Patentee's claim, but merely as the mode by which in practice he divides the liquid to be separated in layers of small 50 extension in a radial direction. The real merit of the Patentee's invention was the discovery that the principle that the separation of cream from milk in stationary vessels takes place more quickly and completely the shallower the vessel-as in a shallow vessel the layer of liquid to be passed by the separating parts is thinner than in a deep vessel-can be applied to a machine 55 in which the separation is accomplished by the application of centrifugal force. This discovery in the abstract could not be patented, but in a concrete embodiment in a method of practical application the meritorious discovery can

Aktiebolaget Separator v. The Dairy Outfit Company.

be patented, and when once it is recognised that the patent is of this character, that is to say, is a patent embodying a new practical application of an abstract principle, this affects the construction of the Letters Patent, and the claim-affects, that is, the question whether a detail of the combination is to be read as of the essence of the claim, or merely as one mode of the 5 application of the principle on the lines indicated by the Specification.

To apply this to the present case, you have first the discovery of the truth that this law, that the separation of cream from milk proceeds more quickly and effectively when the milk to be separated is in thin layers, applies to milk subjected to centrifugal force. Then you have the main line of the practical appli- 10 cation of this truth to centrifugal creamers, that is, by the introduction into the bowl of the centrifugal creamer, of dividing obstructions in a radial direction to the vertical shaft round which the milk bowl rotates. Having ascertained, then, the main line or characteristic of the practical application of the discovered principle, one must read the claim in the light of this, and the conclusion is 15 easily arrived at, that the detail of the characteristic method of practical application is not to be treated, in construing the claim, as an essential constituent of it. In my judgment, every word of this Specification goes to show that the division of the milk to be separated by radial passages of small extension is the characteristic of the patented invention, and that the construction of these 20 passages by the user of conical plates is a mere detail and not of the essence of the claim.

I think that, the Patentee having achieved by his invention this new result of the application of this principle to centrifugal creamers, by the characteristic method described in the body of the Specification, the Respondents have by 25 their machine adopted the identical characteristic method, merely substituting a mechanical equivalent for the mode detailed in the Specification. If authority were wanted for the proposition that the doctrine of "mechanical equivalent applies to specific definite parts of a combination, definitely included in the words of the claim, Proctor v. Bennis, L. R., 36 Ch.D. 740, is a complete 30 authority for that proposition. Mr. Justice Wright seems to have held that Proctor v. Bennis has no application to a case where the Patentee claims merit for such a detail of the combination specified by the words of the claim, and that the doctrine of "mechanical equivalent " cannot be applied to such a part of the combination detailed in the claim; but I think that Proctor v. Bennis does 35 apply in cases when the merit claimed for the detail has no relation to the principle of the invention, but merely relates to an incidental collateral matter. Assuming that the doctrine of "mechanical equivalent" can be applied to this detail thus specified in the claim, I have, as I have in effect already said, no doubt whatever but that the solid column of the infringers, with the inclined 40 radial passages drilled therein, is the mechanical equivalent of the conical plates built into a solid column in action, as described in the Specification, with the inclined radial passages formed by the projections on the under side of one conical plate being brought in contact with the upper surface of the next conical plate, and it is not the less a mechanical equivalent because it happens not to 45 comprise some of the collateral advantages of the method detailed in the claim, or even though it had comprised (which I think it does not) some collateral advantage not attained by the Patentee's method.

An injunction was awarded, and an inquiry as to damages (the costs of the inquiry being reserved) was ordered. Certificates were given that the Plaintiffs 50 had proved their Particulars of Breaches, and that the validity of the patent had come in issue.

William Currie and Co. v. James Currie.

IN THE COURT OF SESSION IN SCOTLAND.

Before LORD Low.-July 17th, and November 23rd and 30th, 1897.

Before LORD KYLLACHY.-March 8th and 17th, 1898.

WILLIAM CURRIE AND Co. v. JAMES CURRIE.

5 Trade name.-Transfer of business, including trade name in assets.Construction of agreement.

Prior to 1892, J. and W. C. carried on business as wine and spirit merchants under the style of J. and W. C., and used the words "Prince Charlie" as a Trade Mark, which they did not register. In April 1892, the partnership was 10 dissolved by W. C. paying to J. C. his share of the partnership assets. There was no deed of dissolution, but terms were arranged by correspondence, in which no reference was made to the goodwill or the Trade Mark, but it was stipulated that the old firm name should no longer be used. After the dissolution both parties carried on rival businesses-W. C. as W. C. and Co., and J. C. in his own 15 name. Both parties continued to use the words "Prince Charlie." In 1896, W. C. and Co. registered a Trade Mark, of which the material particular was "Prince Charlie." The registration was unsuccessfully opposed by J. C. W. C. and Co. brought an action against J. C. for a declaration that they were entitled to the sole and exclusive use of the words "Prince Charlie," and that 20 the Defender should be prohibited from using the words "Prince Charlie" in connection with the sale of whisky.

Held, that the Pursuers were entitled to interdict and £25 damages and expenses.

Prior to April 1892, James and William Currie carried on business as wine 25 and spirit merchants at Leith under the firm name of J. and W. Currie. The firm used the words "Prince Charlie as an unregistered Trade Mark. In April 1892, the firm was dissolved by William Currie paying to James Currie his share of the partnership assets. No deed of dissolution was executed, but a correspondence passed between the parties, the essential parts of which are 30 the following:-The agents of William Currie wrote, on the 4th of April 1892, to James Currie :-"He" (William) "has resolved that he shall no longer "continue in partnership with you, and he has accordingly directed us to "intimate that the co-partnery as carried on under the firm of J. and W. Currie 66 may be held as dissolved from this date."

Boyd, Jameson, and Kelly, who were James Currie's agents, replied to Beveridge, Sutherland, and Smith, who were the agents of William Currie, on the 4th of April 1892 :-" As you are aware, this business to sell it by a forced sale "would be simply to sacrifice the interest of both parties, and our client has "requested us to make the following suggestions for your consideration, 40 "viz." :-[Here follow the terms, amongst which the goodwill did not appear.

William Currie and Co. v. James Currie.

These terms sufficiently appear from the answer, dated the 8th of April 1892.] "P.S.--It is understood that either party be entitled to carry on all the "branches of the business in their own name or in partnership with another, "but in the event of our client taking over the mineral water boxes &c. with "the name of J. and W. Currie thereon will be entitled to use the boxes with 5 "the firm's name so long as they last; also that he will be entitled to use the existing labels until they are used up."

On the 8th of April 1892, Beveridge and Co. wrote to Boyd and Co. the following, as conditions of the transfer :-"(1) That, as stated in your letter, "Mr. James should take over the property in Charlotte Street and Elbe Street, 10 subject to the bonds. (2) That the Cornwall Street property be forthwith reposed for sale by public roup. (3) That Mr. James take over the whole machinery, shafting, gas engine, and generally the whole working plant "connected with the beer bottling and mineral water manufacture, together "with the horses and vans. (4) That Mr. William Currie has taken over the 15 "whole of the working plant connected with the whisky and wine business, 66 as also the whisky and wine stocks. (5) That Mr. William will be prepared "to make an offer for all rolling stock lying with country customers, as per the "ledger, on the distinct understanding that any of these coming into your "client's yard will be handed over to our client. (6) That the whole book 20 "debts due to the firm be collected and ingathered by Mr. William Currie, "at the sight of and under the supervision and direction of Mr. John Walker, "C.A., Edinburgh; and the whole debts due by the firm to be liquidated by "Mr. William as they fall due, also at the sight and under the supervision of "Mr. Walker. The business books to be handed over to Mr. William, 25 "Mr. James having access thereto. Mr. William to receive a reasonable "remuneration for collecting and paying the debts of the concern, said amount "being fixed by Mr. Walker. (8) That a Gazette notice be inserted

" and a circular issued at the joint expense of the parties and at the sight of "Mr. Walker, intimating dissolution of the firm, and that the respective shares 30 "of the business have been apportioned as above, and that Mr. William has "been authorised to collect the accounts and pay the debts of the firm." On the 8th of April, Boyd and Co. wrote to Beveridge and Co. :-". "The first five articles seem to be quite reasonable, but we cannot see our way "to recommend our client to agree to the sixth, more particularly to that part 35 "where your client expects a remuneration for the collection of the accounts. "To be allowed to collect such accounts is really an introduction to the customers, and we have no doubt any whisky merchant would be glad to collect "the accounts for that introduction free of charge. The strong objection we see to Mr. William being allowed to collect them is that it would appear to 40 "the outside public as if he were succeeding to the best part of the business, "that is the whisky business, and as if our client were to retire from that "branch of the business altogether. While our client intends to continue the "aërated water and bottling branches, he intends to do business in the whisky "line as well. As each partner is to be allowed to continue to carry on all 45 "branches of the business, it is only right that neither should get an advantage over the other by having authority to collect the debts. To allow Mr. Walker "to collect them will place both parties on an equal footing."

On the 9th of April, Beveridge and Co. wrote to Boyd and Co. :-"We are in "receipt of your second favour of yesterday in regard to this matter, and as our 50 "client's terms, as contained in our first letter to you of yesterday, have not "been accepted by Mr. James, they may now be considered as withdrawn. With reference to the counter proposal made in your letter now "under answer, we have to state that the same cannot be agreed to. "Our client, however, instructs us to say that he is quite willing that a fresh 55 "balance sheet be drawn up by Mr. Walker quam primum on what he, Mr. "Walker, may consider or be advised to be the fair and reasonable value of the

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Reports of Patent, Design, and Trade Mark Cases, Volume 15