Brooks v. Lamplugh. tightening up is by disconforming a circle. According to the Provisional Specification, we have an L pin pinched by direct pressure between two gripping cheeks directly operated by nuts on either side. This was nowhere done before. Tilting was not the essence of the invention. Figure 9 is the natural development of Figure 5; it is like it in all respects in which Figure 5 differed from what 5 was known before. Development is not tested by what an ordinary workman could do. The alleged infringement is a copy of Figure 9 except that it incorporates an invention of Easom and Mills. They have the same advantage as Figure 9 of screwing up by one operation. The only difference between the fifth claim and the infringement is that the clearances are omitted in the latter. 10 As to Easom and Mills, No. 14,620 of 1893. The alleged infringing boss in Brooks v. Steele and Currie had not cheeks gripping the bar, and it was not screwed up by one operation. The Court of Appeal meant, not that one bolt passing through the bar was all important, but the one bolt fastening up by one operation was. The fact of the going through the bar is merely subsidiary. 15 The pin goes through because the longitudinal adjustment is got otherwise. The judgment of a Court on the construction of a Specification is not necessarily binding in a future case, because construction is partly determined on the evidence. Their trunnion is equivalent to the pin. The keep grooves in the washer prevent involuntary rotation. It is contended against us that there may 20 he no keep grooves, and, in that case, it becomes like No. 5829 Figure 11. We differ as to the meaning of "opposed washers" in Claim 1, as they contend the expression may include all four washers. The construction put on the Specification in the Court below is reasonable. The deduction that the pin must go through the bar, because, if not, one way can be shown in which it would not 25 work, is not correct, for the Patentees provide two ways. The pin through the bar is not of the essence, the Defendants may infringe, although they do not take all the elements of the combination; Clark v. Adie, 2 App. Cas. 320. They substantially have our invention. To set up a case of prior grant to Lamplugh they say that a ring and pin are equivalent; but on 30 the question of infringement they say the opposite. Lamplugh is bad. It is a case of cribbing. A man can only include in his Complete Specification a fair development of the invention contained in his Provisional Specification, provided he is the inventor of the development, not if it be merely communicated to him. (This question was argued at length, but, as no decision was given on it, 35 these arguments are not reported.) On the second patent, if he discovered before the Complete Specification that there were features which were novel, apart from the tilting, he was entitled to leave out the tilting. On the 1890 patent, we claimed a particular application of the trussed beam. In Riekmann v. Thierry, 14 R.P.C. 105, the patent was held bad on account of the Patentee 40 claiming all methods of covering with celluloid. As to subject-matter, see also Morgan v. Windover, 7 R.P.C. 131. Walter, in reply.-As to disconformity, the question is whether the nature of the invention is described; I admit that the Complete Specification may contain further modes of working; Woodward v. Sansum, 4 R.P.C. 166. In the patent 45 No. 14,620 of 1893 the pin was essential, and we do not infringe. It is impossible to tighten up ours by one operation. They must have a pin if there are keep grooves in the head-washer. In the drawings the head-washer is part of the pin. With a square head the rotation must be got by the pin. We only say that we have a prior grant of Easom and Mills, if a ring and pin are 50 equivalent. Figure 9 of Lamplugh was the first appearance of an eye-bolt with trunnion ends in bosses. The Complete Specification of No. 22,608 of 1892 was after this. Both Goddard and Rucker, and No. 6283 of 1891, had gripping cheeks with direct action. The reference to the former Specifications was for the Patentee's protection, to prevent the claims being read too widely. F.J.B. 3 55 cannot possibly be within No. 22,608 of 1892; it is Figure 12 of Lamplugh. Figures 7, 8, and 9 are not hinted at in the Provisional. They get rid of the Brooks v. Lamplugh. possibility of tilt. In the mode of working given in the last paragraph of the Provisional there is still the possibility of tilt. In No. 15,421 of 1890, the Patentee endeavoured to get a master patent, but his form can be got simply by cutting out part of the girder in the old saddles that had it. Claim 1 has nothing 5 as to the boss, which only comes into the later claims. In any case we do not infringe. [Jenkins.-We were stopped on that point.] In No. 14,620 of 1893, "preferably" indicates that in some forms there are to be no keep grooves. Their contention is that it means that they need not have them in the outside washers. If there are no keep grooves there is nothing beyond No. 5829 of 10 1893. Judgment was reserved, and the judgment of the Court was delivered on the 8th of December 1897. A. L. SMITH, L.J.-This case has been extremely well argued on each side, though it has occupied a lengthened period and numberless points have been 15 taken; but this has been caused by the excessively inconvenient course adopted by the Plaintiff in having sued the Defendant in one action for infringing three separate and distinct patents, which has resulted in an enquiry at one and the same time, not only as to the construction of each of the three patents sued on and the alleged infringement, but of a great number of other 20 patents relating thereto. To disentangle this case, we will first take the first patent in order of date and deal with it as shortly as we can. Lord Justice COLLINS has written the judgment of the Court upon the second patent. Its The Plaintiff is a bicycle saddle maker, and has for years been turning his 25 attention to the improvement of bicycle saddles, as also to the mode of affixing the same to the pillar, or L bar, of bicycles, as will be seen from the many patents taken out by him in that behalf. Upon the 30th of September 1890 he filed his Provisional Specification, and the Complete Specification on the 30th of June 1891. This patent we shall hereafter call" Brooks' 1890." 30 number is 15,434. It was proved that, in the manufacture of bicycles, lightness combined with strength was of prime importance, and it was shown by uncontradicted evidence that, prior to Brooks' patent of 1890, breakages were of constant occurrence in bicycle saddles, and in their affixment to the pillar or bar of the bicycle. As lightness was maintained strength was proportion35 ately lost. That this was a source of great annoyance and inconvenience to the public goes without proof. To overcome these difficulties cycle makers had been (it was said for some twenty years) resorting to various contrivances, but without complete success; and until Brooks supplied the mechanism, which he did when he brought out his patent of 1890, the annoyance and inconvenience 40 still continued to exist. It was proved, and not contradicted, that the patent of Brooks' 1890 not only reduced the weight of bicycles, but at the same time materially increased the strength of the base frames of the saddle in a way never previously attained; whereby the risk of breakage, as compared with old bicycles, was 45 very much lessened, the result of which was that bicycles made with saddles with base frames according to the Plaintiff's patent at once became, and still are, a very great commercial success. That the Plaintiff Brooks first hit upon what for years he and the trade had been seeking after we think established, and there is no evidence to the contrary. It is now said by the Defendant, who 50 is sued for infringing Brooks' patent of 1890, that it is bad for want of subjectmatter; in other words, that the Plaintiff had exercised no invention bringing about what he has. The Defendant says that the principle of a trussed beam which was utilized by Brooks was well known; that the Plaintiff simply claims the use of a trussed 55 beam in general in his first claim, without showing how it is to be applied so as to form the base frame of the saddle, and that this claim is consequently bad; and, without disclaimer, so is his whole patent. That the principle of a Brooks v. Lamplugh. trussed beam was old and well known no one denies, and what that principle is, namely, of the one member being in tension and the other in compression when the weight is placed thereon, has been accurately described by Mr. Justice Ridley, against whose judgment the Defendant appeals, and we do not refer further to it. It by no means follows that a patent is bad because an old well- 5 known mechanical contrivance has been brought into use by a Patentee. If it were so, very few patents at the present day could be upheld. We think the law upon this subject may be stated thus :-Although there cannot be a valid patent for a well-known mechanical contrivance merely, when it is applied in a manner, or to a purpose, which is not quite the same, but is analogous to the 10 manner, or the purpose, in or to which it has hitherto been notoriously applied (we quote here the words of Lord Westbury in Harwood v. The Great Northern Railway Company, and the same will be found again repeated by the House of Lords in the case of Morgan v. Windover, 7th Reports of Patent Cases 131), yet there may be a valid patent, although well-known mechanical 15 contrivances are used, if they are applied in a manner, or to a purpose, to which they have not been hitherto applied, and which new application results in a new and useful article not theretofore attained. In the first case there is no room for invention; that is, there is what is called no subject-matter. In the second there is room for invention; and if the Court comes to the conclusion 20 that there has been invention in what has been done, then there is good subjectmatter, and it is no answer to say that an old well-known mechanical contrivance has been used in bringing about the novel and useful result attained. If what the Plaintiff has claimed by his patent is merely the user of a wellknown mechanical contrivance, in a well-known manner, for a well-known 25 purpose, then, of course, the patent is invalid, and Longbottom v. Shaw, 8th Reports of Patent Cases, page 338, is a good example of this. There will be found in that case a statement by Lord Herschell as to what does and does not constitute evidence of invention, which has peculiar application to this case, and is strongly in favour of the Plaintiff upon the facts established in this case. 30 It appears to us that in the present case there is good evidence that a long existing defect had been felt by the public, and a desire, if not a demand, for its remedy for a long time had existed, and that mechanicians had been at work to remedy these defects—namely, the numerous patents from time to time taken out for this purpose-and that the Plaintiff first produced a real remedy of these 35 defects by his patent of 1890, and that the matter was not obvious before 1890. We do not doubt that this constitutes good evidence of invention. We now come to the Plaintiff's Complete Specification-Brooks' 1890-to see what is the Plaintiff's invention, and what he has claimed in his first claim that is now impeached. The Specification is headed" Improvements in Velocipede 40 "Saddles." The Patentee states that "his invention relates in the first part to "the base framings of cycle saddles, and in the second part to the bosses "connected with the said base framings." Bosses are the parts by which the base frames and saddles thereon are taken hold of and gripped, and then attached to the pillar, or L bar, of the bicycle. He then states that the primary object 45 of his invention, in connection with the framing part, is to obtain a maximum strength with lightness. This he accomplishes by making the base framing trussed, or of the figure of a double-sided beam trussed or tied together in like manner, so that the same is capable of resisting considerably tensile strain. He then describes how he takes two triangular-shaped frames, and how these are 50 attached to the boss, and then to the bar, and he states how the boss is suspended, as it were, between and at the middle of the framing rods; and he then, in drawings, sets forth how his invention is to be brought into play. We do not doubt that his Specification is not open to the objection of no subjectmatter, showing, as it does, the grasping of the tension and the compression 55 member of a trussed beam by a boss, and the putting thereon the superstructure of a saddle, and then the saddle upon a bicycle. All that is perfectly new. Brooks v. Lamplugh. 5 66 His first claim is this:-"In cycle saddles, making or forming the base framings "of them of a trussed beam, that is to say, a base framing, consisting of triangular "open-shaped sides (made from wire or sheet metal) separated from each other by a divisional space, and united at their ends by bosses, crossbars, or other connections; hence a trussed supporting frame with the members composing "the sides separated from each other at a greater distance at their middles than "their ends, substantially as described and set forth." The Defendant argues that this claim is bad, because it claims for the use of a trussed beam in general used anyhow in cycle saddles, and not the use of a trussed beam in any particular 10 way therein; and that, as a trussed beam is unquestionably old, the first claim is bad. If this were the true reading of this first claim we agree that it would be bad, but we do not so read it, for, in our judgment, the words at the end of the claim, "substantially as described and set forth," apply to the whole claim, and limit the user of a trussed beam to the manner described in the Specification. 15 We therefore agree with Mr. Justice Ridley that the patent cannot be successfully impeached for the want of subject-matter by reason of the form of the first claim. The next point taken by the Defendant is that he has not infringed the Plaintiff's patent-Brooks' 1890. His point is this:-He says the Patentee 20 claims for a trussed beam by which no change of figure to the sides can take place unless by rupture or bursting; in other words, a perfectly rigid structure, and he says that in what he (the Defendant) has done, a change does take place otherwise than by rupture or bursting, and that his structure is not rigid. We will observe that when the infringing model is looked at, it is to us obvious 25 that what the Defendant has done is to get a base framing by way of a trussed beam (whether by circular wires or otherwise is, in our judgment, not material) as rigid as he could without its being identical with the Plaintiff's base framing. The Plaintiff's principle he has taken. If it is not as rigid as the Plaintiff's base framing, we think that Sir Frederick Bramwell was correct when he said that 30 what motion there might be came from faulty construction, and we agree with Mr. Justice Ridley's finding upon this point; for, in our judgment, the models show that what slight motion there may be in the Defendant's base framings, it comes from accident, and not from design. We think that this patent (Brooks' 1890) is a good patent, and that it has been infringed by the Defendant, and 35 that the Defendant's appeal as to this should be dismissed. 45 We now come to the second patent sued on, namely, Brooks' 22,608 of 1892. It is alleged that the Defendant has infringed this patent, particularly the method described in Figures 8, 9, and 10. The Defendant denies infringement, and contends further that as to the arrangement set forth in Figures 8, 9, and 10 40 there is disconformity between the Provisional and Complete Specifications. In his Provisional Specification the Plaintiff describes "a means of connecting "the saddle to a vertical pillar or an upright fitted to the frame of the machine." This he proposes to do by means of "a divided clip or a clip made of two "sectional parts with the wings or branch extensions upon one side of them "pierced horizontally and through which a pivot pin passes. The wings at the "other side have formed through them radial slots, struck from the centre of "the before-named pivot pin, upon which the said clip turns as a centre of "motion." He provides for a slot in each end of the pin, and through these slots he passes the framing rods of the saddle, which has two framing rods only, 50 one at each side of the vertical pillar, each of such rods passing between washers with concave inner surfaces, the whole being clamped together by means of nuts working from each end of the slotted pins. His pins, therefore, fulfil a special purpose; one of them forming a pivot working in a radial slot, and providing a means when the nuts are screwed up of fixing the slot in any 55 position within the limits of such slot, to which it may have been tilted as the frame bars pass through the slots of the pivot pin; the tilting motion can only be secured by the rotation of this pin. The saddle also can be F Brooks v. Lamplugh. moved horizontally by drawing the framing bars forwards or backwards through the washers when the nuts are loose. "Thus," says the Patentee, "tilting " and horizontal adjustments are made by adjusting and sliding the parts "into such positions as they may be required upon the frame rods." It seems obvious that the essentials of this arrangement are "the method of 5 "tilting the saddle combined with horizontal adjustment." To this tilting arrangement two pins are indispensable, one serving as a pivot, the other carrying the means of fixing the saddle when tilted in the desired position in the radial slot. The winged clips, also with slots in one wing, are essential. In his Complete Specification he gives in detail, with Figures, the arrangement 10 described in the Provisional Specification above stated. He, however, interpolates into it what he calls "the modified form of clip comprehended "under Figures 8, 9, and 10," and it is these that are challenged by the Defendant as being outside the Provisional Specification. This "modified "form of clip" consists of a slot ring with solid trunnion ends, which is 15 slipped over the vertical pillar, the framing rods of the saddle being passed through the slit in the ring at either side of the vertical pillar and held between opposed bearings formed by section clips and threaded washers, the whole being clamped together against the vertical pillar by nuts upon the trunnion ends of the ring. It is said that this is a mere modification of the 20 arrangement described in the Provisional Specification, and not in any sense a new invention. We cannot so regard it. It preserves, it is true, the possibility of lateral adjustment by drawing the framing rods through the bearings when the nuts are loose; but this is common to every arrangement whereby framing rods are held in position by the action of nuts upon washers. 25 But it entirely abandons what we regard as the special object and feature of the combination, namely, the method of tilting the saddle and holding it in its place by the operation of winged and slotted clips and two pins, one acting as a pivot, the other affording the means of fixing it in the desired position in the slotted wings. A ring which embraces the vertical pillar, and 30 so being incapable of pivoting, makes it impossible for the frame rods which pass through the gaps in it to be tilted, seems to us in no sense a development of the former arrangement. It is said that a ring is only two pins bent into half-circles and joined at the ends; but even if this were so, the existence of two pins was the most essential part of the old combination, without which its 35 main features were impossible. They did not merely supply a method of attaching the saddle frame to the pillar. The so-called "modified clip" is very skilfully introduced into the Complete Specification. Express references to tilting are omitted, though the arrangement by which it is produced is carefully described, and the description of the "modified clip" is 40 dexterously interposed between the explanation of the original tilting attachment and another modification of the same arrangement made by carrying the washers round the slotted pins instead of taking them through the slots. We think that in dealing with patents for special arrangements of very familiar mechanical means such as pins, washers, clips or gripping cheeks, nuts, 45 &c., it is necessary to scrutinize the invention claimed with some nicety. By straining the doctrine of mechanical equivalents, a patent for a particular combination of well-known appliances for fastening the framing rods of a saddle to a vertical pillar might be made to cover almost any other combination; and we cannot regard the slit ring with trunnion ends as in any fair sense a develop- 50 ment of the contrivance to which the two pins and the wired and slotted clips of the Provisional Specification were essential. It seems to us to be a different means of accomplishing a different end, namely, the rigid attachment of an untiltable saddle to the vertical pillar, and, therefore, to be outside the Provisional Specification. The learned Judge has found that the Defendant 55 has infringed the arrangement shown in Figures 8, 9, and 10 of the patent, namely, that which for the reasons given we regard as outside the Provisional |