Webb v. Kynoch and Co., Ld. 5 IN THE COURT OF APPEAL.-IRELAND. Before THE LORD CHANCELLOR, and LORDS JUSTICES FITZGIBBON, WEBB v. KYNOCH AND CO., LD.* Patent.-Infringement.-Validity of patent for a combination.—Alleged anticipation by previous patents.-Sufficiency of Patentee's claim. In 1891, W. obtained a patent for "An improvement in apparatus for con"centrating sulphuric acid," consisting of a chamber divided into two parts by an iron floor arranged in steps, in the lower part of which a series of open 10 beakers containing the acid were exposed to the action of heat, the acid being conveyed from the top of each beaker to the bottom of the next by a loose glass tube, thus securing a constant circulation, and being gradually concentrated as it passed through the beakers, and delivered from the lowest beaker in a concentrated state. The smoke and products of combustion were 15 confined to the lower chamber, and prevented from contaminating the acid, by the iron floor, and the acid fumes in the upper chamber were conveyed to a condenser. None of the parts of which the combination was composed was new, each having been anticipated by previous patents; but the combination was novel, and the result was greater convenience, economy, and efficiency. In 20 1896, the Defendants erected at Arklow apparatus for concentrating sulphuric acid, practically similar to that of the Plaintiff. An action was brought for infringement. The Plaintiff's Specification described the entire machine and the process, and his claim was "for concentrating sulphuric acid, a series of "glass vessels placed on steps in a heating chamber, each of these vessels being "made with an overflow spout and having placed in it a glass tube reaching "down to its bottom from the spout of the next higher vessel, arranged and 25 66 operating substantially as herein described." The Patentee did not state in his Specification that he claimed only for the combination. At the trial it was held, by the Master of the Rolls, that although each part of the Plaintiff's 30 combination had been anticipated, the combination was novel and useful, and showed invention, that the claim was sufficient, and that he was entitled to an injunction. The Defendants having appealed, held, by the Lord CHANCELLOR and Lord Justice HOLMES, that the judgment of the Master of the Rolls should be 35 affirmed; by Lord Justice FITZGIBBON and Lord Justice WALKER, that not having stated that the claim was only for a combination, the Specification was bad, and that the patent was invalid. The appeal was dismissed, but without costs. This was an appeal from a judgment of the Master of the Rolls, pronounced The correct name of the Defendant Company is in fact Kynochs, Ld., but they were sued as Kynoch and Co., Ld, Webb v. Kynoch and Co., Ld. on the 16th April 1898, whereby he decided that the Plaintiff's patent (No. 2343 of 1891), for "An improvement in apparatus for concentrating sulphuric acid," was valid, and granted an injunction against the Defendants for infringement. The facts of the case, and the Specification and the evidence at the trial, are sufficiently stated in the report of the proceedings before the Master of the 5 Rolls* Ronan, Q.C., Matheson, Q.C., and Blood (instructed by Milward, Jones, and Cameron) appeared for the Plaintiff; The Macdermot, Q.C., Gordon, Q.C., Meredith, Q.C., and R. J. Doyle (instructed by Casey and Clay) appeared for the Defendants. A main feature of the argument for the Appellants in the Court of Appeal was that the Plaintiff's Specification and claim were invalid, as he did not state that his claim was only for a combination. 10 The following cases were cited :-Foxwell v. Bostock, 4 De Gex, J. & S. 77; Harrison v. Anderston Foundry Company, L.R., 1 App. Cas. 574; Clarke v. 15 Adie, L.R., 2 App. Cas. 315; Rushton v. Crawley, L.R., 10 Eq. 522; Crane v. Price, 1 Webster 393; Lister v. Leather, 8 E. & B. 1004; Proctor v. Bennis, 4 R.P.C.333; Curtis v. Platt, L.R., 3 Ch.D. 135n; Seed v. Higgins, 8 H.L.C. 550; Boyd v. Horrocks, 6 R.P.C. 152; Plimpton v. Spiller, L.R., 6 Ch.D. 412; Rowcliffe v. Morris, 3 R.P.C. 145; Thomson v. Moore, 6 R.P.C. 426; Wenham 20 Gas Company v. Champion Gas Lamp Company, 9 R.P.C. 49; Carpenter v. Smith, 1 Webster 530; Lister v. Norton, 3 R.P.C. 199; Cannington v. Nuttall, L.R., 5 H.L. 205; R. v. Wheeler, 2 B. & Ald. 345; Hill v. Thompson, 1 Webster 229; Murray v. Clayton, L.R., 7 Ch. App. 570. ASHBOURNE, L.C.-In this appeal three main points have been argued 25 before us. First, it is urged by the Defendants that they have not infringed on the Plaintiff's patent, assuming him to be entitled to it; second, they contend that the Plaintiff discovered nothing, and that his patent is invalid; third, they argue that, no matter what his discoveries were, his Specification is defective and inadequate, and therefore that he is not in a position to maintain this action. 30 As to the first point, before the close of the argument we intimated our opinion that the Defendants had been guilty of infringement, and had availed themselves of the Plaintiff's invention; leaving, however, the other points to be fully discussed. I do not deem it necessary to further enter into this first point; more particularly because I am aware that Lord Justice HOLMES, in his 35 judgment, deals with it very fully. The second point involves the substantial consideration of the Plaintiff's case, his merits as an inventor, and an examination of the evidence and arguments on which he relies to justify his claim. The action is brought for alleged infringement of the Plaintiff's patent for an improvement in apparatus for concentrating sulphuric acid. Processes to effect 40 this result have been known for a long time; and from time to time science has applied itself to render them more expeditious, simple, and economical. The Plaintiff claims to have made a decided step forward, and by his patented process he claims protection for his apparatus-his arrangement--" for concentrating sulphuric acid, constructed and arranged in a simple, durable, and 45 inexpensive manner, all parts of it being readily accessible for repairs or "other purposes." 66 The Specification states fully the whole operation, referring to drawings which are attached, and closes as follows:-" Having now particularly described "and ascertained the nature of this invention, and in what manner the same is "to be performed, I declare that what I claim is: For concentrating sulphuric "acid, a series of glass vessels placed on steps in a heating chamber, each of "these vessels being made with an overflow spout and having placed in it a glass tube reaching down to its bottom from the spout of the next higher "vessel, arranged and operating substantially as herein described." 66 * See ante page 259, 50 55 Webb v. Kynoch and Co., Ld. The Defendants' real contention is that there is nothing new at all in the Plaintiff's patent-that everything was to be found in Chance's patent, which was so much discussed before us. We had the advantage of seeing Chance's glass vessels placed before us, side by side with the glass vessels of the patent of 5 the Plaintiff; and anyone could see at a glance wide differences between them, in structure, in size, and in the dimensions of the opening at the top. The Plaintiff, however, does not claim any particular part of his system as a novelty. He claims that his combination or arrangement is new; and he urges that his results are achieved with the minimum expenditure of fuel and the maximum 10 of efficiency. The open part of the beaker, surrounded by a tight-fitting collar of asbestos, also plays a useful part. The beakers and tubes are also less liable to break, and if broken can be readily removed and replaced. The Master of the Rolls discussed in full detail the parts of Chance's patent, pointing out the points of identity, similarity, and difference. The patents of Garraway and 15 Veitch were also referred to in the argument; but the strain of the Defendants' contention was that the Plaintiff had merely borrowed, or utilized, or slightly altered Chance's discoveries, which are apparently being still worked with success. But the Plaintiff gave strong evidence to show that his apparatus gives results more shortly, more economically, and more simply. The scientific 20 evidence he has produced to show the novelty of his arrangement, and the distinctions between his process and those of his predecessors, was of high authority. Nothing could be stronger or clearer than the testimony of Professor Emerson Reynolds, Mr. Imray, and Professor Tichborne. Is, then, the Plaintiff's patent valid? The scientific evidence is strong and clear as to the 25 novelty and efficiency of the combination. It is not contended that any of the parts, taken alone, is in principle new. The object in view is old: the result sought to be accomplished has long been familiar. But though no detail, no part, may be new, the whole combination and arrangement may be novel, and work out results in a simpler, more durable, more expeditious and efficient way. 30 Is there anything to prevent a patent being given for such a combination? I can see nothing; and there is abundant authority to support the validity of a patent given for a combination. Here the Plaintiff, applying his brains, his energy, his patience, his scientific knowledge, availing himself of the discoveries then known, has discovered a combination which makes a distinct advance in 35 procuring an eagerly sought result in a better, simpler, cheaper, and shorter way than was theretofore known. A vast number of cases have been cited; and it is not at all necessary to go through them. Lord Justice James, in Murray v. Clayton (L.R., 7 Ch. App. 570), affirmed the principle of a combination being the subject of a valid patent, 40 and pointed out the merit of producing a thing "in a more expeditious manner, "in a more economical manner, and of better quality." On this second point, I am therefore clearly of opinion that the Plaintiff has made a combination or arrangement that was novel and the proper subject for a patent, and that there is no want of merit or novelty on his part to prevent his patent being valid. 45 This introduces the third and last point, which I do not think appears to have been much discussed before the Master of the Rolls. Is the Plaintiff's Specification sufficient, or has he lost the advantage of his invention by a blundering description-by using words wide enough to include a claim for some of the parts, and not sufficiently definite in its claim for a combination? 50 It would be really hard for a bona fide inventor of a new and meritorious combination, on account of stupid blundering in the Specification, to lose the advantage and benefit of his patent, and be sent away, because his draftsman was not sufficiently precise. But the law must be observed; and if the Specification is not clear and distinct, if the alleged discovery is uncertainly and 55 inadequately stated, the patent cannot be upheld. What is the construction of the patent? What does the Plaintiff claim in his Specification? In my opinion, he claims a new combination or arrangement. Webb v. Kynoch and Co., Ld. : It is not stated in the Specification with much precision or directness, but that is the claim of the Plaintiff, and is certainly what he stated in his evidence. The decision of the German Court is interesting, but it does not throw much light on this third point, and, in any event, could not be taken as a guide for our action. The question for our decision is according to English law, is this 5 Specification clear and definite? Does it claim a combination or arrangement of the whole apparatus? Does it claim that, and nothing more? Now, from the mass of authorities that have been cited, I will only refer to three, on one of which I base my judgment. The first case to which I refer is the well-known one of Foxwell v. Bostock (4 De Gex, J. & S. 298), before Lord Westbury. That case 10 presented some aspects not found in the case now before us. There appear to have been discrepancies between the Provisional and Final Specifications, and a substantial controversy as to the character and extent of certain disclaimers. Now, the marginal note to this case of Foxwell v. Bostock is this:-[His Lordship read the marginal note.] Lord Westbury, who delivered the judgment 15 in that case, was not then speaking in the House of Lords, but, of course, gave the judgment the full weight of his great authority and erudition. He uses these words in giving judgment :-"It is the duty of the Patentee particularly "to describe and ascertain his improvements in his Specification, for it is the improvement which is the invention. The Plaintiff's Counsel intend that this 20 "is done by the drawings and the description of the drawings; but the "drawings and the description thereof exhibit and describe the entire machine, "and the position and working of its several constituent parts, without in any manner indicating where the improvement lies or in what it consists. The answer given to the objection is that the improvement, that is, the invention, 25 "lies in the whole combination or arrangement, which is the novelty;" and then, in another passage of his judgment, he says: "I must, therefore, lay "down the rule, which is consistent with, and in reality a mere sequence from, "the decided cases, that in a patent for an improved arrangement or new "combination of machinery, the Specification must describe the improvement, 30 "and define the novelty, otherwise and in a more specific form than by a general "description of the entire machine. It must, to use a logical phrase, assign the Idifferentia of the new combination." 66 66 It is not too much to say that that judgment, and some of the words I have read, were largely the foundation of the argument addressed to us on behalf of 35 the Defendants; but it must be borne in mind that that case is to be read as controlled, qualified, and explained by the authority upon which I found my judgment—that is, the case in the House of Lords of Harrison v. Anderston Foundry Company (L.R., 1 App. Cas. 574), which I need hardly say is a case to which all Courts must bow. The authority of that case, in addition to that of the great 40 tribunal in which it was delivered, derives an increased importance from the great eminence of the noble and learned Lords who took part in the decision; and, as I have said, I rest my judgment upon that case, and the passages of the judgments to which I will refer. That case came before the House of Lords on an appeal from the Court of Session in Scotland; and the marginal note 45 being very short, I will read some of it :-"If the combination and application "of old machinery be new and beneficial, the invention of this combination "may be protected by patent." Then, per Lord Chancellor Cairns, "If there "is a patent for a combination, the combination itself is the novelty, and also "the merit, which must both be proved by evidence." Per Lord Penzance, “ In 50 "the present case all questions of fact were withdrawn from the jury." Per Lord Cairns, "The Specification appears to me ex facie to distinguish the new "from the old, where it is necessary to distinguish the new from the old, and to "claim for the combination in a manner which is sufficient." The House of Lords reversed the judgment of the Court of Session, which had proceeded entirely 55 on its own reading and interpretation of that case of Foxwell v. Bostock to which I have referred; and this case of Harrison v. Anderston Foundry Company Webb v. Kynoch and Co., Ld. must, in my opinion, now be held to be the governing decision; and the meaning, interpretation, weight, and authority of Foxwell v. Bostock must be explained, governed, and controlled by the words of the judgments delivered in this case of Harrison v. Anderston Foundry Company. The entire judgments may 3 be read with enormous advantage by anyone interested in the question, but the portions which I shall read are very much to the point. The question there was this -The Appellants, who were engineers in Blackburn, in Lancashire. had applied to the Court of Session for an interdict to restrain the Respondents from infringing certain Letters Patent granted in 1868 for improvements in loom 10 weaving, to which the Appellants claimed a right under an assignment from the inventors dated the 30th of September 1871. The Court of Session refused the interdict, holding that the Letters Patent were void, the Specification, according to the opinion of the Scotch Judges, failing to show wherein the invention consisted, or what was the novelty the Patentees claimed. The case was argued 15 by Counsel of the highest eminence on both sides, including Mr. Aston, Q.C., and Mr. Asher, of the Scotch Bar, for the Appellants; and the Attorney-General, Mr. Balfour, and Mr. Webster for the Respondents. Lord Cairns, in giving judgment, says: "The question, and the only question, now to be determined "is whether, reading the Specification as it appears before us, your Lordships 20❝ought to say that it is upon the face of it, by reason of something contained "in it, or something omitted, invalid. Lord Gifford, before whom the case had "been tried in the first instance, says that it appears to him that the validity of "the patent in point of law turns entirely on the first claim in the Specification. "Had that first claim not been stated, he thinks there would have been no 25"valid legal objection to the other claims. It is the first claim which endangers "the whole Specification; and the objection, he continues, arises in this way :"The absolute and indispensable condition of the patent and monopoly claimed "by the Patentees is that they must disclose the nature of their invention, and "the manner in which it is to be performed. While they have done the 30latter with great minuteness, they have failed in their first claim, or anywhere "else, to state what their invention is. What, then, are the objections to the "first claim, viewed as a claim for a combination? The first is the objection said "to be founded upon the case of Foxwell v. Bostock, decided by Lord Westbury "when Lord Chancellor. It is said to have been determined in that case that 35" where there is a patent for a combination there must be a discovery or "explanation of the novelty, and the Specification must show what is the novelty, "and what the merit of his invention. I cannot think that, as applied to a patent for a combination, this is, or was meant to be, the effect of the decision "in Foxwell v. Bostock. If there is a patent for a combination, the combination 40." itself is, ex necessitate, the novelty, and the combination is also the merit, if "it be the merit, which remains to be proved by evidence. So also "with regard to the discrimination between what is new and what "is old. If it is clear that the claim is for a combination, and "nothing but a combination, there is no infringement, unless the whole 45" combination is used; and it is in that way immaterial whether any or "which of the parts is new. If, indeed, it were left open on the Specification to "the Patentee to claim, not merely the combination of all the parts as a whole, "but also certain subordinate and subsidiary parts of the combination on the "ground that such subordinate and subsidiary parts are new and material, as it 50" was held that a Patentee could do in Lister v. Leather (8 E. & B. 1004), then it "might be necessary to see that the Patentee had carefully distinguished those "subordinate or subsidiary parts, and had not left it in dubio what claim to "parts in addition to the claim for the combination he meant to assert. The "second objection to the first claim in the present case was founded on the 55 doctrine of Lister v. Leather. However, no question of this kind appears to "me to arise. The Patentees claim, as I have said, for a combination under "their first claim, calling it 'the construction and arrangement of the parts of 66 |