Presto Gear Case and Components Company, Ld. v. Simplex is not invalidated by non-compliance with it; and I apprehend that in ascertaining the nature of the invention under the present as under the old Statute, the whole Specification must be considered. The Specification in the present case states that the invention relates to 5 improvements in or connected with cases or covers for the chains or gear of velocipedes or cycles, and that the object is so to construct such cases as to enable the same to be removed from the velocipedes, or to be replaced thereon without the employment of tools or skilled labour, and, if desired, without the removal from the case of any part thereof-that is, of the velocipedes or gear. 10 It appears that at the date of the patent, gear cases existed and were constructed in three or more separate parts, but that down to the date of the patent none had been made which could be removed from or replaced on the velocipede without undoing or removing, to a greater or less extent, either the gear itself or some other part of the velocipede. 15 It is also stated in the Specification that gear cases constructed according to the invention consist of two main parts, one of which is designated the guide frame, and the other is termed the case or cover. The guide frame is attached directly to the velocipede. It consists of a metal framework which in outline is in a vertical plane there approximately 20 rectangular, the longer edges being horizontal and the shorter edges vertical. The two horizontal portions of this framework consist of semi-cylinders of metal, and these are so adjusted that the upper half cylinder lies below the upper part of the chain, while the lower half cylinder lies above the lower part of the chain. This frame, with a view to its being placed in position on the velocipede, 25 is divided in such a way that it can be passed over the stay of the velocipede, and the parts afterwards re-united by means of a screw; and it is in this way that the difficulty of placing the frame on the velocipede and removing it without disturbing any part of the gear has been overcome. The second portion of the Plaintiffs' patented gear case is the case or cover. 30 This is attached, not to the velocipede directly, but to the guide frame already mentioned. For the purpose of effecting this attachment, the horizontal edges of the semi-cylinders, which I have already mentioned, are furnished with what are termed "troughed guides," being in the nature of grooves of half-an-inch or so in depth along, and within which other pieces of metal may 35 slide. 66 66 The case or cover of the Plaintiffs is described in the Specification as "capable of being separated vertically and transversely into two parts, either hinged together or fastened by screws or the like." The Specification then first describes the form in which the two parts are hinged together on one 40 side, and are secured at the other by screw fastening. It then proceeds :"When it is desired to inspect the chain, for example, and to remove the gear case for this purpose, the screw or other fastening at G" (with reference to the drawing annexed) "is loosened, and the end F1 turned upon its hinge into "the position shewn in Fig. 3. The case F may then be seized at its rear 45" end, being slidden along the guides C C and removed, when the driving "chain will be quite free and exposed. To replace the case F, the front end of "same is fitted into the guides of the part C C', slidden to place, and the end F1 "is closed and secured." Then it proceeds :-"Instead of the front end of the case being hinged, the front part may be made in a piece with the part F, and the 50 rear portion may be divided and hinged so that the gear case F would be "drawn off towards the front of the machine, or in some cases I may divide "the case F on, say, the line H H, Fig. 3, when the two parts would be "slidden on to the guides C separately and united at the division by screws or "other means." The Patentee therefore describes three forms of covers, all of 55 them transversely divided, and all of them to be attached to the guide frame by 66 66 Presto Gear Case and Components Company, Ld. v. Simplex sliding. The first claim is for" A case or cover for the chain or gear of velocipedes, "composed of a frame, covering the inner part of the chain gear, mounted on "the bottom stay tube and having upper and lower longitudinal guides in "combination with an outer case or cover divided transversely, and adapted "to take into and slide endwise upon such fixed guides, to cover the 5 "outer parts of the gear, all substantially as and for the purposes herein 66 set forth." What, therefore, the Patentee claims, is a combination of a fixed frame with a cover, the latter being divided transversely, and made capable of being attached to the former by sliding along longitudinal guides placed horizontally 10 on the fixed frame. The Defendants' cover also consists of a combination of a fixed frame with a cover. The fixed frame of the Defendants is almost identical with that of the Plaintiffs; but there is this difference, that its vertical as well as its horizontal edges are furnished with trough guides of the nature already described. 15 The Defendants' cover is different in several respects from that of the Plaintiffs. It consists of two parts divided longitudinally and not transversely. The attachment to the frame is effected, as it appears to me, to a small extent by sliding; that is to say, there is a certain amount of sliding along the grooves on the short vertical edges of the frame; but into the grooves of the long 20 horizontal edges of the frame, the corresponding edges of the cover pass without longitudinal sliding, the motion resembling rather that of the blade of a claspknife when being shut into the case contained in the handle. It may be that this arrangement has some advantages over that of the Plaintiffs, and is an improvement upon it; but with that I have nothing to do in this action. The 25 question is,-Have the Defendants taken the combination protected by the Plaintiffs' patent? 66 66 Now in this case learned Counsel for the Defendants have cited and relied on the case of The Ticket Punch Register Company, Ld. v. Colley's Patents, Ld., in 12 Patent Reports, page 171, and I may refer to what was said by Lord Justice 30 Smith in giving judgment :-" Have they, in reality, taken the Plaintiffs' com"bination, which is what is protected by the patent? As was said by Lord "Cairns in Dudgeon v. Thompson, 3 App. Cas. at page 41, there is no such thing as the infringement of the equity of a patent; if there were, I should say the "Defendants were in peril; but that which is protected is that which is specified, 35 "and that which is to be held to be the infringement must be an infringement of "that which is specified. It appears to me that the decision in Curtis v. Platt, LR., 3 Ch.D. 135, is applicable to this case rather than that of Proctor v. "Bennis, LR., 36 Ch.D. 740.* The former case decided that where a combina"tion only is claimed for improvements to bring about a given result perfectly 40 "well known before, the Patentee must be held to the particular combination "which he described, and that the doctrine of mechanical equivalents does not "apply, and it is, therefore, no infringement unless the particular combination "be taken. In the latter case it was held that if a Patentee for a combination "claimed by his improvements to bring about a new result not known before, 45 "then the doctrine of mechanical equivalents does apply, and if the substance "and essence of the Patentee's combination be taken by means of a mechanical "equivalent, it is an infringement.' Regard being had to that statement of the law, the first question which I have to ask myself is whether the cases described in these patents are to be treated as 50 bringing about old or new results within the rule thus laid down. Now, in considering whether a result is old or new, I may refer to the judgments of the Court of Appeal given in Proctor v. Bennis, and particularly to * 4 R.P.C. 333, 5 66 Presto Gear Case and Components Company, Ld. v. Simplex Gear Case Company, Ld. that of Lord Justice Fry. There the patent had for its object the improved selfacting mechanism for supplying and distributing fuel at intervals over a fire, and Lord Justice Fry says:-"Was the object in the present case an old one or "was it a new one? Putting fuel upon a fire is, of course, an act, if not as old as Adam, I suppose as old as the time when Tubal Cain wrought in metal, or "when Prometheus introduced fire to mankind. It is, therefore, as old as can "be. But is that the real object of the patent? I think that the real object of "the patent is this-the automatic placing of coal on a fire by intermittent "radial action. That object is new. I think, therefore, we are bound to 10"construe this combination as a combination to effect a new and useful object." Now, in the present case gear cases were perfectly well known at the date of the patent, and so were gear cases divided into parts. But gear cases which could be applied to and removed from the velocipede without disturbing any of the parts of the velocipede itself were new, and, in my judgment, this improvement 15 was the real object of the patent. 66 66 66 666 That being so, let us see how in Proctor v. Bennis the rule is applied. In that case Lord Justice Fry says:-"The question of infringement, no doubt, is one of some difficulty in the present case from the great peculiarity of the language in which the Plaintiff has made his claim. He has described the 20" machine, he has indicated its parts by letters, and he has said that what he "claims is not the hopper, nor the spiked rollers, nor the shafts and worms for operating the same, but he says: What I do claim is the employment of the "tappets G G and shafts E E and springs H, when applied to and in con"nection with the doors D D as and for the purpose herein fully described 25 "and illustrated.'" Now there in that claim the invention is there particularly described by reference to the annexed drawing. In continuing his judgment after the portion which I have read with respect to the novelty of the patent, the Lord Justice says:-" That being so, what was stated by Lord Cairns in the case to "which I have already referred of Clarke v. Adie distinctly applies. He there 30 "said this: "The second mode'-that is to say, the second mode in which a com"bination might be infringed-would be one which might occasion more "difficulty. The infringer might not take the whole of the instrument here described, but he might take a certain number of parts of the instrument "described; he might make an instrument which in many respects would 35 resemble the patented instrument, but would not resemble it in all its parts. "And there the question would be, either for a jury or for any tribunal "which was judging of the facts of the case, whether that which was done by "the alleged infringer amounted to a colourable departure from the instrument "patented, and whether in what he had done he had not really taken and 'adopted the substance patented.' That," said the Lord Justice, "appears to me to be the inquiry in the present case," and in like manner it appears to me to be the inquiry in this. Here the combination described in the patent consists of a frame and cover connected in a particular way. The frame is taken bodily by the Defendants; but that is only one element of the combination, and 45 the taking of it gives no cause of action to the Plaintiffs unless the Defendants have taken substantially the other element also. The difference between the Plaintiffs' cover and the Defendants' cover is that the former is divided transversely or vertically, the latter longitudinally or horizontally. The Plaintiffs' cover is attached to the frame by longitudinal sliding; the Defendants' cover to 50 some extent by vertical sliding, but also by a different motion. It seems to me that, notwithstanding these differences, the Defendants have in truth taken the essence and substance of the Plaintiffs' cover, and consequently of the Plaintiffs combination. In my judgment, therefore, the Plaintiffs are entitled to the usual relief which they ask. 40" 55 66 Moulton, Q.C., asked for a certificate that the Plaintiffs had proved their Presto Gear Case and Components Company, Ld. v. Simplex Gear Case Company, Ld. Particulars of Breaches, and also for a certificate that the validity of the patent came into question. STIRLING, J.-The validity of patent did not come into question before me. It was admitted. Moulton, Q.C.-If the Defendants raise the question of validity on the 5 pleadings, the mere fact that they abandoned it at the trial is not sufficient. There were a number of prior Specifications set up. It is very difficult for a Patentee. He may be fighting in order to establish the validity of his patent, and then at the end, after all the preparations are made, the Defendant may not contest the point in Court. It is for your Lordship to decide, but 10 in these circumstances is it not fair to say that validity came into question in the action? STIRLING, J.-I am not prepared to say that it came into question. Execution, except as regards the injunction, was stayed provided the Defendants gave notice of appeal within a fortnight. 15 The Castner-Kellner Alkali Company, Ld. v. The Commercial 5 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE BIGHAM. July 14th, 15th, 16th, 18th, and 19th, and August 3rd, 1898. THE CASTNER-KELLNER ALKALI COMPANY, LD. v. THE COMMERCIAL Patent.-Action for infringement.-Validity.-Subject-matter.-Novelty.Disconformity.-Patent upheld and injunction granted. This was an action to restrain infringement and threats of infringement of a patent for an improved electrolytic apparatus for producing caustic 10 soda or caustic potash from suitable salts by a continuous process. The Defence denied infringement and alleged that the patent was invalid, for the reasons that the invention was not new, not useful, and not the proper subject-matter for Letters Patent, and also for the reason that the Complete Specification described and claimed inventions not comprised within 15 the Provisional Specification. 20 Held, that there was sufficient invention to form subject-matter for Letters Patent, that there was no disconformity between the Provisional and the Complete Specifications, and that the Defendants had infringed. A perpetual injunction was granted to the Plaintiffs, together with the costs of the action. On the 23rd of October 1894, a patent (No. 20,259 of 1894) was granted to Carl Kellner, of Vienna, for "Improvements in electrolytic apparatus for decomposing metallic salts." 66 66 The Complete Specification was as follows :-"This invention has reference "to an apparatus for the electrolysis of alkaline salts with the aid of a 25" stationary mercury cathode, in which the amalgam formed by electrolytic "action, has its location changed from the decomposing chamber, in which it "is produced, to a combining chamber, in which it is decomposed and the "cation combined with water, an acid, or other body, by the shifting of a partition which is adapted to be moved to and fro in the mercury and 30 serves to separate the two aforesaid chambers from each other. The partition "is in this case made in the form of a bell closed at its lower edge by a mercury "seal and enclosing the decomposing chamber, so that the amalgam formed in "the latter is caused by the shifting of the bell to have its location alternately "on one side and on the other side of the bell without itself changing or moving "its position, and is thus caused to gain access to and become situated in the "combining chamber, whilst the mercury on the other side of the partition, "which was previously situated in the combining chamber, effects in the 35 31 |