66 The Castner-Kellner Alkali Company, Ld. v. The Commercial "movement of the projections. The amalgam is thus brought into contact "and re-action with the supernatant water or other liquid p whereby a commercial product is formed and more or less depolarization is caused and "the mercury is enabled to dissolve more of the kation and so on in a contin5 66 uous process. The anion separated out inside the vessel b may, whatever be "its state of aggregation act upon a substance floating on or mixed with or "dissolved in the electrolyte n and if it be a gas it may eventually be conducted through the pipe q and a system of tubes into other chemical apparatus or "if of no value may be allowed to escape. 10 15 66 "The apparatus as described, may as a consequence of its construction, have "heat applied to it with advantage either internally or externally either with "the object of diminishing electrical resistance or facilitating certain chemical "re-actions or for distilling certain chemical compounds out of the vessel b, "into a system of condensers. 66 "Having now particularly described and ascertained the nature of my said "invention and in what manner the same is to be performed I declare that "what I claim is :-(1) An apparatus for electrolysing solutions of salts with "utilization of a mercury kathode consisting of the particular electrolytic cell b capable of rotation, the bottom of which is provided with tubes ƒ dipping into 20"the mercury contained in an outer vessel a so that on rotating the electrolytic "cell the amalgam formed within the said tubes is mixed with the mercury and "brought into better contact with the water or other liquid contained in the "outer vessel the bottom of which is for this purpose provided with ribs c. "(2) An apparatus for the electrolysis of electrolytes, with preferably a 25" metallic kation, soluble in mercury, the utilization of a mercury kathode "which extends considerably outside the electrolytic cell and through which "the kation is diffused by ordinary diffusion as well as by the contact surface "formed by the electrolyte being continuously removed from one part of the "mercurial surface to another by rotating the vessel containing the electrolyte 30"bodily and further by providing means of simultaneously extracting the "kation from the amalgam all substantially as described. (3) In an electro"lytic apparatus, the combination with the outer vessel a having ribs c and adapted to contain a mercury kathode in metallic contact with the negative "pole of a dynamo or equivalent source of electricity, of the inner vessel b 35" provided with the tubes f and fitted so as to be capable of rotation and carrying 66 66 "carbon rods or other suitable anodes in metallic contact with the positive pole "of the dynamo or equivalent, all arranged and operating substantially in the manner and for the purposes herein described with reference to the accompanying Drawing. (4) The combination with the outer vessel a 40"formed of iron or other suitable material capable of resisting heat, of the 66 The Castner-Kellner Alkali Company, Ld. v. The Commercial Development Corporation, Ld. "inner vessel b constructed as a still and sealed hermetically whereby "heat can be applied to the apparatus to facilitate and expedite the "process of distilling acid compounds formed at the anode, substantially as "herein set forth." This action was commenced by the Plaintiff Company on the 9th of December 5 1897. The Statement of Claim asked for the usual relief, and the Particulars of Breaches alleged that the Defendants had infringed the Plaintiffs' patent by using certain apparatus made according to the Specification of Letters Patent No. 21,509 of 1896, granted to Rhodin; and also that the Defendants had threatened to infringe the Plaintiffs' Letters Patent by a prospectus dated the 10 30th of October 1897, and issued by them, and by a telegram dated the 8th of November 1897, and sent by the Defendants' solicitors to the Plaintiffs' solicitors: the said infringements and threats to infringe were infringements and threats to infringe the first, third, and fifth claims of the Plaintiffs' Specification. The telegram referred to in the Particulars of Breaches, admitted that the 15 Defendants intended to use the apparatus described in Rhodin's Specification for manufacturing alkali in the United Kingdom. The Defence denied infringement, and alleged that the Plaintiffs' patent was invalid. The Particulars of Objections contained the following allegations :-(1) That 20 having regard to the public knowledge, the alleged invention was not new or the proper subject-matter of Letters Patent; (2) that the alleged invention had been published within the realm before the date of the patent in the manner following:-(A) By the Specifications of Letters Patent No. 20,768 of 1890, granted to G. J. Atkins and E. Applegarth; (B) by the Specifications of 25 Letters Patent No. 21,859 of 1891, granted to Hermite and Dubosc; (C) by the Provisional Specification No. 4349 of 1882, granted to A. L. Nolf; (D) by the Specification of a United States Patent No. 271,906 of 1882, granted to A. L. Nolf; (E) by the Specifications of Letters Patent No. 7426 of 1886, granted to Camille Petic; (F) by the Specification of Letters Patent No. 16,046, of 1892, granted 30 to Hamilton Young Castner; (G) by the Specification of Letters Patent No. 14,910 of 1893, granted to Peter Jensen; (H) by the Specification of Letters Patent No. 13,499 of 1894, granted to Alf Sinding Larsen. (3) That the Specification of the alleged invention did not sufficiently distinguish which of matters described were claimed to be invented and which were admitted to be 35 old; (4) that the Specification of the alleged invention did not sufficiently describe in what manner the invention was to be performed and in other respects was insufficient, ambiguous, and contained false suggestions; (5) that the alleged invention consisted merely in the obvious use and adaptation of devices old and well known at the date of the patent, and did not involve invention; 40 (6) that the Complete Specification described and claimed inventions not comprised within the Provisional Specification; (7) that the alleged invention was not useful; (8) that the patent was void by reason that the invention claimed formed the subject of a prior grant to Alf Sinding Larsen and numbered No. 13,499 of 1894. 45 The following further Particulars of Objections were delivered pursuant to an order dated the 22nd of April 1898, in which the Defendants were ordered to give further particulars of paragraphs numbered 2, 4, and 6 in their Particulars of Objections:-" (1) As to paragraph 2-The Defendants rely upon the whole "of each of the Specifications therein mentioned as anticipating all the claims of 50 "the Plaintiffs' Specification. (2) As to paragraph 6-The Complete Specifica"tion therein mentioned describes on page 4, lines 54 to 56, and page 5, lines 1 "to 57, and illustrates by Figures 6, 7, 8, and 9, and claims in claims numbered "2, 3, and 4 inventions or apparatus which are not comprised in the Provisional The Castner-Kellner Alkali Company, Ld. v. The Commercial Specification." The Defendants omitted to give further particulars of paragraph 4. The Plaintiffs by their Reply joined issue. The Specification of Castner's patent (No. 16,046 of 1892), which was the 5 property of the Plaintiffs, described an apparatus in which there was only one cell. This cell was divided into two compartments by a central partition which did not reach to the bottom of the cell, but dipped into the mercury covering the bottom, the mercury thus forming an effectual seal between the two chambers. In one compartment was situated the solution of salt to be decomposed; in the 10 other there was water. In the mercury there was a rotating paddle fixed to a shaft which passed through the centre of the partition; this paddle kept the mercury continually flowing from one chamber to the other and back again. The anode was situated in the decomposing or salt chamber, and the current thence passed through the solution to the mercury at the bottom, then left the 15 mercury in the combining or water chamber, and passed through the liquid to a second cathode fixed in that chamber. Thus the current traversed each compartment, depositing sodium in the one and setting it free in the other. It was important that there should always be some sodium in the mercury of the combining chamber, as otherwise the mercury would itself be oxidized, and the 20 Specification directed that the strength of the amalgam should always be maintained at 2 per cent. The action now came on for trial. Moulton, Q.C., Bousfield, Q.C., J. C. Graham, A. J. Walter, and Lord Robert Cecil (instructed by Baker, Blaker, and Hawes) appeared for the Plaintiffs; 25 Terrell, Q.C., Astbury, Q.C., W. D. MacConkey, and J. H. Gray (instructed by Brook, Freeman, and Batley, agents for Wright, Becket, and Co., of Liverpool) appeared for the Defendants. Moulton, Q.C., opened the case for the Plaintiffs.-Caustic soda was formerly manufactured by means of lengthy and indirect chemical processes. More 30 recently it was discovered that caustic soda could be produced by passing an electric current through a solution of salt. The current splits up the salt solution, and chlorine is given off at one pole, and sodium is deposited at the other. There was a great drawback to this process in practice as the sodium obtained was never pure, but was always mixed with salt. Several attempts 35 were made to get over this difficulty. One plan was to deposit the sodium in mercury. The sodium forms an amalgam with the mercury, which can be dissolved by placing it in water, the sodium leaving the mercury and combining with the hydrogen and oxygen of the water to form caustic soda. But the method was never practical until Castner in 1892 invented his continuous 40 process. Kellner took out his patent in 1894; he has two rigid structures, one of which contains water and the other a solution of salt. The upper of these structures consists of a number of bells, whose edges dip into a layer of mercury contained in the lower vessel, the mercury forming a seal between the two. These bells are then moved so that their edges slide over the mercury with45 out disturbing it, and the mercury which was in contact with the salt solution now comes into contact with the water, and vice versa. In this way Kellner gets rid of the necessity, which is inherent in Castner, of constantly driving round the mercury. Castner has one common cell and fluid motion in it; Kellner has two cells, and the mercury never moves relatively to the vessel 50 which contains it. The Defendants have pleaded that Kellner's patent is invalid because of disconformity between the Provisional and Complete Specifications. A patent is very rarely held bad for disconformity. It was never intended that a Complete Specification should be exactly the same as the Provisional. A Patentee is allowed nine months after he has filed his The Castner-Kellner Alkali Company, Ld. v. The Commercial Development Corporation, Ld. Provisional Specification, in which to develop his invention. A Provisional Specification is only an enlarged title; it is merely for the purpose of identifying an invention and preventing fraud. Edison's phonograph case is one of the very few in which a patent has been held invalid for disconformity. There is no real difference between rotatory movement and movement to and 5 fro. It is ridiculous to say that a man who is allowed nine months in which to develop his invention may not make such a small development as this. The third cathode described in Figure 9 and claimed in Claim 4 is a device for accelerating the combination of the sodium with the water; Kellner has described it before in an old patent. The fourth claim is superfluous; it is a 10 claim for the use of an old device in conjunction with the patented apparatus. If an infringement is within Claim 4, it must be within Claims 1, 2, and 3. Claim 4 does not extend the ambit of the patent, and therefore does not invalidate it. [See the case of British Dynamite Company v. Krebs, 13 R.P.C. 190, in the House of Lords.] Kellner's invention possesses superior utility 15 over Castner's, in that the seal is as good and less mercury is needed. The novelty of Kellner's invention consists in the fact that the mercury never moves relating to its containing vessel. Another advantage of Kellner's apparatus over Castner's is that in the former only solid bodies are moved, while in the latter it is necessary to move the mercury. It makes no difference 20 whether the bells are rotated or the vessel containing the mercury is rotated; in both cases the mercury lies like a steel sheet in its containing vessel. We first heard of the infringement by the appearance of a prospectus of a company which proposed to sell Rhodin's invention for a very large sum to the public. We asserted that this was an infringement of our patent, and the 25 Defendants brought an action for threats against us, and gave us an admission that they were going to use Rhodin's patent. Rhodin took out his patent in 1897. In his apparatus there is a lower vessel which contains the mercury, while an upper bell with six projecting mouths whose lips dip into the mercury revolves on a shaft above. This upper revolving vessel contains the salt solution, 30 while water is situated above the mercury in the lower vessel. The apparatus is exactly or substantially the same as Kellner's, and it works in the same way. Evidence was given for the Plantiffs by Lord Kelvin and Mr. Swinburne. The latter deposed as follows :-Kellner's apparatus was the first in which the mercury was kept at rest and the cells moved. There was no difference 35 between rotatory movement and movement to and fro. It was old to use a mercury cathode, and both Atkins and Applegarth and Hermite and Dubosc described a moving mercury cathode. In Castner the mercury was driven round in part directly and in part by friction; in Figure 7 of Kellner the lower vessel revolved and carried the mercury with it. The advantage of 40 Kellner's apparatus over Castner's was that less mercury was necessary, and the mechanical arrangements were better. The quantity of mercury used was a very serious question owing to its great cost. Castner needed a deeper layer of mercury because he must have room for the blades of his paddle to revolve. The bells in Figure 1 of Kellner rested upon the bottom of the 45 trough, and when moved they would disturb the mercury to some extent. For that reason, Kellner had provided grooves either in the bottom of the trough or in the base of the bells. The grooves in the Plaintiffs' model of Figure 1 of Kellner were in the wrong direction. Kellner's apparatus was not in actual use. [Bousfield, Q.C.-We own a group of patents; we actually use 50 an improvement of Castner's.] The object of the grooves in Kellner was to allow the mercury to slip past the edges of the bells when they were moved; the object of the grooves in Rhodin was to hold the mercury still. [Bousfield, Q.C.-Claim 5 is gone as far as infringement is concerned.] The Caster-Kellner Alkali Company, Ld. v. The Commercial Development Corporation, Ld. Lord Kelvin further said :-The only difference between rotating the bells and rotating the vessel containing the mercury was that in the latter case centrifugal force exerted a tension on the mercury. The force was so trifling that for all practical purposes it might be neglected. Rotatory movement 5 was not so advantageous as movement to and fro, because the outer ends of the bells travelled faster than the inner ends. Witness would prefer Kellner's apparatus to Castner's, and would put up a long trough extending for two hundred feet or more. The less the mercury in Kellner's apparatus was stirred the better. The depth of the paddle blades in Castner's apparatus depended 10 upon their number; the depth of the mercury in Castner must be greater than in Kellner by the depth of the paddle and one clearance. In both Rhodin and Kellner the mercury was as nearly stationary as possible. The edges of the bells disturbed the mercury a little, but practically it was stationary. Rhodin's apparatus was the same as Kellner's, Figures 7 and 8; it was not so good as the 15 apparatus described in Kellner's Figures 1 and 2. If the bells in Rhodin were to be moved intermittently instead of continuously round, the practical result would be just the same. The bell in Kellner's Figures 1 and 2 would move from one end of the path to the other in three or four minutes. There would be practically no heaping up of the mercury in front of the advancing edge. 20 If Terrell, QC., opened the case for the Defendants.-The Plaintiffs have brought evidence of theories only; we will bring evidence of facts The cost of the mercury used by Kellner in an apparatus which produces 2251. worth of caustic soda annually is 37.; the cost of an equivalent amount in Castner's apparatus would be 51. So that, assuming the annual waste of mercury to be 25 5 per cent. of the total quantity, Kellner merely effects a saving of two shillings a year on an annual output of 2251. The question is whether Kellner's patent, taking into account the general public knowledge at the time, shows substantial invention and substantial utility. It must be shown that there is something useful in substituting stationary mercury for moving mercury. You 30 cannot take out a patent for putting a screw where there was a nail before. Castner's invention had not existed, Kellner would have a good patent. But has Kellner, coming after Castner, shown any substantial invention ? There might be a patent for the paddle of a steamer and another for the screw, and they would both be good patents. But if a patent is taken out for an 35 alteration which involves no useful substantial invention over a prior patent, then it is bad. The Plaintiffs say that in Kellner's apparatus the mercury is stationary, while in Castner's it is flowing; then they must show that the difference involves substantial invention. It must offer the public a choice of distinct apparatus, and not a choice in a difference of the same apparatus. 40 An invention may do a thing in a different way; it may be of great utility, but the patent may be bad for want of invention in doing it. (Hinks v. The Safety Lighting Company, L.R., 4 Ch.D. 615; Williams v. Nye, 7 R.P.C. 67; Morgan v. Windover, 7 R.P.C. 134; Gadd v. Mayor of Manchester, 9 R.P.C. 524; Savage v. Harris, 13 R.P.C. 90; Kiekmann v. Thierry, 14 R.P.C. 45 114; Thompson v. American Braided Wire Company, 6 R.P.C. 518.) some of these cases a slight alteration was held to be patentable; in others, not to be so. They all agree in showing that there must be substantial ingenuity in an invention in order to support a patent. I will now pass to the question whether Kellner's invention is different from Castner's. You 50 may have a continuous process in three ways You may either have a stationary top and bottom, and moving mercury as in Castner, or a stationary bottom and moving top as in Kellner's Provisional Specification, or a stationary top and moving bottom as in Kellner's Complete Specification. If Kellner's second method is the same as his first, then it is the same In |