Osmonds, Ld. v. The Balmoral Cycle Company, Ld.

which the technical rule really does justice, and that it ought to be applied; that we ought to tell the Patentee who puts in such a claim as this, that cannot be supported really by his Counsel or by his witnesses, that this is a thing for which he must suffer. We ought to tell him: "You have not shadowed forth 5"this upon your Provisional Specification, and it is altogether outside your “real invention, and you have no right to put it in so as to frighten others who I may be in the same trade."

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For these reasons, I think that on this ground the patent is void; but to sum up what I have said with regard to the other grounds, I am not prepared to say 10 that the patent may not be sustained according to its tenour and according to its true reading in regard to the other parts of the case. I point out again, so that I may not be mistaken, what the MASTER OF THE ROLLS has done, that after the evidence given, and after the manner in which the Plaintiffs' Counsel have, by the necessities of the argument, been compelled to place the Plaintiffs' 15 case on the other parts, the Plaintiffs may find themselves in a difficulty hereafter; but, of course, if they obtain the amendment of their patent by striking out the fifth claim, this judgment, as far as I am concerned, will not wholly preclude them. It will prejudice them, I am afraid, but certainly not preclude them from trying to sustain their patent upon the other grounds.

20

COLLINS, L.J.-I am entirely of the same opinion; but, as we are differing from the learned Judge, I will add a very few words. It seems to me that the essential factor in the Patentee's combination is the use of what he himself describes as a bearing or carrier-block; and I think the genesis of the matter is pretty clear when one knows something of the past history, as disclosed in 25 the other Specifications that we have before us. You had the tubular chainstay, and an earlier inventor had utilized a method of sliding in the tubular chain-stay and the apparatus which carried the spindle of one of the wheels-I think it was the back wheel. That was well known, and to that sliding apparatus the tubular chain-stay was an essential. The Patentee retained the 30 tubular chain-stay; he abandoned the sliding apparatus which Lovelace describes, who speaks of two projecting rods fitted to slide within the ends of the tubes-he abandoned that; but he got another sliding apparatus, namely, he got carrier-blocks of a size and shape suitable to take and slide in the open ends of the chain-stay. Now that provided him with two advantages if it 35 should turn out to be workable. In the first place, it tended to produce that parallelism which has been described as an advantage, and which I have no doubt was one of the advantages which Lovelace had sought to provide also. In addition to that, it allowed these bearing or carrier-blocks to act according to their name and constitute real bearing-blocks, taking the axle upon them and 40 bearing the axle, or being borne by the axle, and the whole being supported by the upper or lower surface of the tubular chain-stay. Now, how does he describe it himself in the first instance, because that, I think, throws a conclusive light upon the matter? He says that his "improvements in adjusting "the driving chains," and so on, "consist of the construction and arrangement 45 "of parts hereinafter described for facilitating the change of position "—of what?—not of the axle-" of the bearings of the driving-wheel spindle with respect to the bearings of the crank axles of the said bicycles and other velocipedes, and for locking the said driving-wheel spindles in the position," and so on. So that what he attempts to change the position of is the bearings 50 on either side. That is the method; it is not a mere method for moving the axle in the slot. He operates the removal of the axle by removing the bearings on the axle, and those bearings are made to slide in a tube. If there is any merit in the invention, it seems to me that is the essential factor in it, and that he cannot substitute for bearings which are made to take and slide in these 55 tubes a mere nut, which is what he suggests is the only function which they, in fact, perform, or were intended to perform.

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Now, I agree with what has been said, that, taking the Specification as it

Osmonds, Ld. v. The Balmoral Cycle Company, Ld.

stands, and giving the fair and ordinary meaning to the word "bearing"blocks"-which, in my judgment, mean bearing-blocks-it may be that on its face it is a good combination. The question has not been discussed from the other point of view. I do not know how far the retention of the tubular chain-stay at the point of adjustment—we have not enough of the history of 5 the matter to know how far that in itself might be deemed to be novel, or whether the whole combination, taken together, would or would not be the subject-matter of a patent; but I see no reason to doubt that it would be good subject-matter for a patent. Of course, when it comes to be tested in practice, it may be that it is open to the objections which the Plaintiffs' own witnesses 10 have sworn that it is, and, if so, it may probably turn out that the patent is absolutely bad. However, it is not necessary to give any opinion upon that point, because it is not before us for decision now. That is all I have to say upon the main point. It is clear to me that the most essential factor in the Patentee's combination is the means of adjusting the position of the axle by 15 operating upon its bearings, which bearings fill up and slide in the tubular chain-stay which he has retained.

With regard to the third claim, I do not think it is necessary to say anything upon that.

With regard to the fifth claim, I entirely agree with what has been said by 20 the other members of the Court. The Patentee here having, first of all, claimed one combination which contained an obvious drawback-namely, that it got rid of the well-known usual step by cutting off the protruding end of the axle-provides himself and claims a combination embracing all the original factors with one other factor, namely, a new method of making a step sub- 25 stituted for the old one; and then he claims for the whole combination, consisting of that new step as one of the factors. That appears to me to be just as much a claim as is the first claim to the earlier combination. The suggestion is, when you come to look at this addition, it is so absurd to suppose that any Patentee in his senses could have claimed it as an essential factor in 30 a combination, that you must reject it. I do not think that that is an argument which lies in the mouth of the Patentee. It might be, where it is something inferentially embraced in the original combination, like the washer in the case which has been cited to us of Lucas v. Miller; but, where it is something entirely outside the original combination, and at the same time adding to it 35 and filling up a blank which was left by it, then it seems to me that against the Patentee it is fair to construe his Specification as claiming what it purports to claim, namely, the new combination with the added factor. But that added factor has not been adumbrated-which I believe is the technical word-anywhere in his Provisional Specification; and, not having been so adumbrated, 40 it voids the Complete Specification, which does claim it. Therefore, I entirely agree with the decision which has been pronounced by my learned Brothers.

The appeal was allowed, with costs. A certificate was given that the Defendants' Particulars of Objections were reasonable and proper, and a stay of execution was refused.

45

Helios Elektricitats Aktiengesellschaft v. Braulik.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BIGHAM.-July 6th, 1898.

HELIOS ELEKTRICITATS AKTIENGESELLSCHAFT v. BRAULIK.

Patent.-Action for infringement.—Validity.—Anticipation.—Subject matter. -Action dismissed, with costs.

This was an action for the infringement of a patent for a particular form of electric arc lamp, in which an enamelled disc was placed immediately above 5 the arc in order to serve as a reflector. The Defendant denied infringement, and alleged that the patent was invalid, us the invention had been anticipated by prior user, and there was not sufficient subject matter to support a patent. Held, that the Plaintiffs' invention was anticipated, and the patent was invalid for want of subject matter, and the action was dismissed, with costs.

10

On the 14th of December 1888, Letters Patent (No. 18,245 of 1888) were granted to Carl Couper for an invention of "Improvements in electric lamps "or lighting apparatus." This patent was assigned to the Plaintiffs by an indenture dated the 10th of August 1895, and the Specification was subsequently amended under date the 6th of January 1897.

:

15 The second claim of the amended Specification was as follows:"The "construction of the bridge piece M in the form of a disk which is enamelled "below and serves as a reflector, or the fixing of a reflector R to the bridge "piece M."

This action was commenced on the 22nd of April 1897. The Particulars of 20 Breaches complained of the sale by the Defendant on the 29th of March 1897 of a lamp infringing the Plaintiffs' Patent; and the Particulars included the following paragraph :-"The Breaches complained of are infringements of "the invention described and claimed in the second claiming clause of the "said Letters Patent as amended."

25

The Defendant by his Defence denied infringement, and alleged that the Plaintiffs' patent was invalid. The Particulars of Objections were as follows:"(1) The alleged invention claimed in the second claiming clause of the "amended Specification of the said Letters Patent is not new. Lamps fitted "with reflectors, attached in the same manner, were manufactured by R. E. 30" Crompton and Co. at their works at Chelmsford, and were used to light "the Mansion House in the City of London about the year 1883. (2) The "alleged invention claimed in the second claim is not a matter requiring any "invention. It is merely the application of a mirror or reflector to a suitable "part of a lamp, and therefore the second claim is bad for want of subject 35"matter."

The Particulars of Objections also alleged that the invention claimed in the third claim of the Plaintiffs' Specification was not a matter requiring invention.

The action now came on for trial before BIGHAM, J.

Helios Elektricitats Aktiengesellschaft v. Braulik.

Moulton, Q.C., and L. B. Sebastian (instructed by Cecil John Rawlinson) appeared for the Plaintiffs; Astbury, Q.C., and J. Č. Graham (instructed by T. F. Goddard) appeared for the Defendant.

L. B. Sebastian opened the case for the Plaintiffs.

Evidence was given for the Plaintiffs by Professor S. P. Thompson to the 5 following effect :-The invention consisted in placing an appropriate mirror in an appropriate position with respect to the arc; the proper place was immediately surrounding the lower end of the upper carbon. A lamp, alleged to have been made by Messrs. Crompton and Co., was then produced to the witness, who said that in this lamp the metal disc or alleged reflector was placed above the 10 bridge piece instead of below it as it should be if it were intended to reflect the light downwards; also that the bridge piece was not insulated, and was probably intended to hold the lower carbon. Judging from the shape of the lamp, the arc must have been above the bridge piece and metal disc, which latter consequently could not have acted as a reflector.

J. H. Greenhill, on behalf of Defendant, gave evidence as follows :-He had bought this lamp from Messrs. Crompton and Co. about the year 1883, after seeing lamps of the same pattern at the Mansion House. As then arranged, the metal disc was below the bridge piece and acted as a reflector, the light was below the reflector.

Moulton, Q.C.-If the lamp was originally arranged as Greenhill described, then it was clearly an anticipation of the Plaintiffs' claim, but it is submitted that the evidence is not sufficient to prove this.

15

20

BIGHAM, J.—I am satisfied that this lamp is an anticipation of the Plaintiffs' claim, and, in my opinion, there is no subject matter for a patent. I therefore 25 give judgment for the Defendant, with costs.

The Pneumatic Rubber Stamp Company, Ld. v. Lindner.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE BYRNE.-June 23rd, 24th, and 27th, 1898.

THE PNEUMATIC RUBBER STAMP COMPANY, LD. v. LINDner. Patent.-Infringement. - Reference to English patent on goods imported 5 from America.-Damages.-Costs.

In 1892, a patent was granted to B., an American, for "Improvements in "rubber stamps," and a patent for a similar invention was granted to him in America. L. sold certain rubber stamps which he imported from America, where he obtained them from H. These stamps bore, by arrangement between 10 B. and H., the following:-"Licensed Buck's Patent"; "Made in America"; "Patented in U.S."; and "Patented in England." The owners of B.'s English patent brought an action against L. to restrain him from infringing their patents and from selling stamps inscribed "Buck's Patent," or with any other words leading to the belief that the stamps were made under their patent, and 15 they claimed an account of profits.

Held, that the Defendant's stamps were not infringements, and that on the Defendant undertaking in future to use words showing that the American patent was alone referred to, no injunction would be awarded; that no case of passing off had been made out by the Plaintiffs, but that the Plaintiffs were 20 entitled to damages for the use by the Defendant in the past of the words complained of, which damages were assessed by the Judge at 40s. A special order as to costs was made.

25

On the 1st of April 1892, a patent (No. 6350 of 1892) was granted to Taylor Scott Buck, of New York, U.S.A., for " Improvements in rubber stamps."

66

The Complete Specification stated :-"My invention relates to an improved means of supporting the letters, figures and other characters which are used "on rubber stamps, and the object of my invention is to overcome the "inconvenience now existing, caused by the rigid construction of such stamps, "whereby they are not adapted to make an impression upon uneven surfaces. 30" This object I obtain by forming out of rubber or other suitable material and "in a suitable manner a flexible foundation or base to support the characters. "This foundation is devised with one or a series of compartments or cells "which may be of any suitable configuration. In one form of my invention, "which I will describe herein these compartments or cells are made cube 35 shaped with walls parallel with each other; and in the use of this founda"tion the pressure is applied to these walls end-wise, thereby affording great "elasticity as well as enabling the stamp to conform readily to uneven surfaces. "The cells may be covered on one or both their open sides with a sheet of "rubber or other flexible material.

40

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"In order that my invention may be better understood and explained in "detail I have hereunto annexed a sheet of drawings on which like letters of "reference indicate similar parts. Figure 1, is a perspective view showing one "form of my invention. Fig. 2, is a horizontal section of the same, and Fig. 3,