Dredge v. Parnell.

any other trade, and I have no doubt that it is-that you may take that machine, copy it literally exactly as it stands there on the table before us, and use it without there being any pretence for saying that you are infringing the patent. Very well. Suppose that that is copied accurately and literally-I need not say 5 the case would not be less clear if there were something different; but, if copied accurately, I see no conceivable reason for saying that the principle, which is alleged to be the governing principle of the Plaintiff's patent, would prevent any person, workman or other, from making that new machine and fitting it with, say, a hand-knife, taking a hand-knife, and using that hand10 knife, pressing it upon the sides of the top and the bottom templet so as to make shapes for the linings exactly corresponding with the templets on either side of it. I do not say it is to be taken for granted, but to my mind it is perfectly clear that that is the result of all the evidence; and when once you have ascertained that, what is the so-called combination of that new thing 15 which everyone may make with that old thing which everyone may make and use? It is simply saying, "Although you may use one tool for the purpose of "shaping these pieces of 'Swansdown' or whatever you call it, and there will "be no ground of complaint, yet you shall not use the other well-known tool "which produces, without the slightest invention in the application of the tool, 20 a thing which everyone may make, and that you may treat that as subject"matter of a patent."

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I entirely agree with what the MASTER OF THE ROLLS has said, that these are very difficult questions. Like all other questions, the difficulty mainly consists in getting at the simple and material facts; it is a difficult thing to say 25 whether there is that amount of invention about a patent that will support it. But then, when we really get at the bottom of this, I think the difficulty disappears, and that it is nothing more or less than, what Counsel for the Respondent argued, and what the learned Judge in the Court below seems to have treated it as, an attempt to prevent them fron using the band-knife 30 to accomplish a purpose which, unquestionably in my judgment, might have been accomplished, without the band-knife, by a hand-knife.

VAUGHAN WILLIAMS, L.J.-I agree that these questions are very difficult, and they are not the less difficult because, admittedly, in the present case, you have to decide a question dependent upon degree. It is not suggested here that 35 there is no invention, or that there is no utility in the invention. The question is whether there is a sufficiency of invention here to entitle this inventor to maintain his patent.

Now, I need hardly say that I should hesitate very much to differ in such a case from those who have much more experience in patent 40 cases than I have. The MASTER OF THE ROLLS has had, I suppose, as much experience in these cases as any living authority, and, when you couple with that his agreement with Lord Justice RIGBY and Mr. Justice ROMER, I say, and say with all sincerity, that I feel that there is a strong probability that I am in the wrong in so far as I differ from them. At the 45 same time, I think it my duty to express my difference, and to give reasons for my difference, which I propose now to do very shortly. I, of course, can only deal with the evidence in the case. I know nothing outside the evidence in the case, and if I did know of my own knowledge matters that were material outside the evidence in the case, I should feel that I ought to use such 50 knowledge with the very greatest caution and hesitation. But, on the evidence in this case, it is perfectly plain that the band-knife is nothing new. It has been known for years and years. It is equally clear that the system of consolidating the thin layers of material (whether brittle or flimsy does not matter), which are difficult to work from their thinness, into one mass for the 55 purpose of working them, and especially for the purpose of working them when you desire to produce a series of repetitions of the same pattern, is a perfectly well known and familiar process, and has been so for years.

Dredge v. Parnell.

In the making of linings for neckties you had to deal with a subject-matter of that sort; that is to say, you had to deal with a very flimsy material called "Swansdown," and you had to deal with it in thin layers for the purpose of economy, and for the purpose of producing a number of repetitions of the same pattern.

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It is common ground in this case that the band-knife is a very convenient tool to use when you are dealing with woollen materials, or with woven materials, and, at all events, with cloths of one sort or another. What was the object of the people who had to deal with the necktie trade? They wanted to produce out of this material a quantity of repetitions of instances of necktie 10 linings of the same shape and size. What did they do? Did they use the wellknown band-knife for the purpose of producing it? The fact is, on the evidence, they did not. Why not? One is told that your reasonably practically educated workman knew perfectly well of the system of consolidating thin layers of material, and that it was perfectly obvious to anyone who desired to 15 arrive at the result that all he had got to do was: Consolidate your layers and then apply your band-knife. But did they do so? The fact is that they did not do so, and the object of the Plaintiff's invention, as I understand it, is this: to enable you to do this very thing-to apply the band-knife, in this particular example, to the linings of neckties made of this flimsy material.

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But it is not an application of the band-knife to this material for this purpose, which is the basis of this invention. This invention goes really to the application of the band-knife to layers of flimsy material of this sort, whether you are going to convert the flimsy material into a necktie lining or anything else. On the evidence, that had never been done up to the time of this patent, 25 either for the purpose of converting this flimsy material into neckties, or for the purpose of converting layers of this flimsy material to any other purpose. Practically it does not seem to me to be in dispute that this invention is a very useful invention, and it has led to that which was previously unknown in the trade the application of the band-knife to this purpose. Then it is said, 30 "Oh, it was not used previously in the trade for this purpose because people "did not choose to use it." I hesitate to arrive at that conclusion. I think the reason why it was not used was because there were very great difficulties in the use of it, and I do not proceed to detail what, to my mind, those difficulties were. When you have to deal with materials, whether flimsy or otherwise, 35 whether woven or any other material, which you wish to cut out into shapes or patterns, it is a common practice to have some sort of pattern according to which you are to cut in order to produce the articles in those shapes. One of these forms of patterns is called a templet, and a templet as used with regard to these woollen or other flexible materials seems, in practice, to be made of some- 40 what weighty metal, and you take that and you press that down upon the layers of the stuff; you then take your knife, if you choose, and cut round the edges of the templet, and the pressure of the hand of the cutter, plus the weight of the templet, is such that it sufficiently consolidates the layers of flimsy material and enables you to produce the patterns which you want. That, as I under- 45 stand Mr. Martin in his evidence to say, is the practice which has hitherto been obtained in the trade. You have used what I will call for short a hand-templet, and you have then proceeded with the hand-pressed hand-templet to cut out with the hand these patterns.

Well, what would you have to do if you wished to apply these layers of 50 material to the band-knife? In some form or other you must get sufficient pressure because you have taken your hand off, and with your hand you have taken away the templet and the pressure, and the consequent necessary consolidation has gone; and if you are to deal with those layers of material at all, you must renew pressure in some shape or other. Now, of course, you 55 could renew pressure by putting on clamps or plates of some sort or kind. But it seems to have been found to be inconvenient in practice to use clamps,

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Dredge v. Parnell.

because, when you come to apply your band-knife, they got in the way of the working of the band-knife. Then it seems to have occurred to this inventor, "Why should not I use my templets as the clamps; apply them to one purpose; get rid really of one operation in the manufacture, and do at one 5 step that which hitherto must have taken two steps;" and accordingly he clamps with his templets. It seems to me that is a useful invention, and it had not occurred apparently to anyone to do so previously to the Plaintiff. I have looked at the evidence, and I find no evidence of that having been done, either in this trade or in any other trade, before.

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Then, not only, if you do this, do you save that one operation, but you get this advantage. If you consolidated your layers with clamps that were mere clamps, you had to apply your band-knife by the guide of the chalked pattern that had been taken, and which was a guide to your eye. If you used your templets as clamps you did not want any chalked pattern, and you got a guide 15 which was not only a guide to your eye but a physical guide, because you could press the cloth, the material controlled by the templet, against the revolving knife, and in that way the templet itself afforded a physical guide to the operation of the wheel, by the mere pressure of the templet, with the material pressed between it, against the wheel.

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On the evidence, it seems to me that this invention taught people how to do that which they never had done before; that is, how to apply the band-knife to consolidated layers of flimsy material. I should have thought that there was sufficient invention in that to support this patent; and without going in detail into the words of the Specification, which have already been read, it seems to me 25 that the words of the Specification, with sufficient particularity, describe the invention which I have within the last moment or two described.

Therefore I have only to say that, if I had had to decide this case by myself, I think I should have arrived at a different conclusion from Mr. Justice ROMER; but I should be very sorry that the Plaintiff should be in any way encouraged 30 by anything I have said to doubt the decision of this Court now, because, if he is well advised, he will recognise that the weight of authority is all one way. LINDLEY, M.R.-The appeal will be dismissed, with costs.

Fabriques de Produits Chimiques de Thann, &c. v. Caspers.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE ROMER.-December 9th and 15th, 1897.

FABRIQUES DE PRODUITS CHIMIQUES DE THANN, &c. v. CASPERS.

Patent.-Infringement.-Chemical process.-Defendant arriving at the same result by substantially the same methods, but with some differences.

In an action for infringement of two patents for producing artificial musk (one of which was abandoned at the trial), it was proved that the Defendant produced the same result as the Plaintiffs' process described in the Specification of the patent relied on by them at the trial, and by a process which was substantially the same, although some of the steps were different, and some of 10 the intermediate products different.

Held, that the Defendant had infringed, and an injunction was granted, with costs, except that the Defendant was held entitled to the costs so far as the abandoned patent was concerned. A certificate of the validity of their other patent was given to the Plaintiffs, and a certificate was given to the Defendant 15 that his Particulars of Objections to the abandoned patent were reasonable and proper.

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In 1889, a patent (No. 4963 of 1889) was granted to Albert Baur for "A method "for producing a substitute for musk." The Complete Specification was as follows:-"The object of this invention is to produce a compound or material, 20 "or series of compounds or materials, having the properties of musk. To this "end I make a nitrated hydro-carbon of the C H group and proceed as "follows: Toluole is mixed with a haloid combination of butane and boiled "with addition of chloride or bromide of aluminium. Water is added to the product and it is then distilled with steam and that portion which distills over 25 "at a temperature between 170° and 200° Centigrade is taken and treated with tuming nitric acid and fuming sulphuric acid. The resulting product is "washed with water and crystallized from alcohol. The product may be "dissolved in alcohol and on addition of a small quantity of ammonia or sal"animoniac, will exhibit all the essential properties of a tincture of musk. 30 "For carrying the invention into practice 5 parts of toluole are mixed with one "part of butylic bromide or butylic chloride or butylic iodide and to these may "be added gradually whilst boiling part of aluminium chloride or aluminium "bromide this results in the development of hydro bromic acid or hydro-chloric "acid or hydriodic acid respectively and a product of reaction is obtained from 35 "which by the action of steam the hydrocarbon C1 H1 and unchanged toluole are distilled. By the admission of steam the hydrocarbon is carried along and may be obtained in a condenser as a colourless oil floating on the water. The "oil removed and dried by means of chloride of calcium is fractioned and in

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Fabriques de Produits Chimiques de Thann, &c. v. Caspers.

"this manner the necessary hydrocarbon for the production of artificial musk "is obtained, 100 parts of the former giving a like quantity of musk preparation. "3 parts of fuming nitric acid of 152 specific weight and 6 parts of fuming sulphuric acid are mixed together and to this mixture is carefully added 5" whilst cooling one part of the hydrocarbon aforesaid. Each drop causes a "violent reaction. As soon as all the hydrocarbon is added, the whole mixture "is heated up to a temperature of about 100° C. After cooling the nitro-product "is precipitated by pouring into cold water of about 5 to 6 times the volume "and is separated from superfluous acid by washing with cold water. The 10" nitro product separates first as a heavy viscid oil, which after some time "hardens into a firm crystalline substance. The raw nitro product is then "purified by re-crystallization from alcohol of 90° strength. The purified "product crystallizes out in yellowish-white-needles, possessing a strong smell "of musk.

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Ο

"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:-The process for producing artificial musk substantially as "described."

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In 1896, the Fabriques de Produits Chimiques de Thann et de Mulhouse, as 20 owners of this patent, and of a patent No. 18,521 of 1888, granted to Emil Schnaufer and Heinrich Hupfeld for an analogous invention, commenced an action against Charles Julius Caspers for infringement of these patents, claiming the usual relief. The Defendant denied infringement, and put in issue the validity of the patents. Particulars of Objections to both patents were 25 delivered. The Defendant, in his answers to interrogatories, said :-" My "improved process dispenses with the production of the hydrocarbon or hydrocarbons and aims at a direct formation of the sulphonic acid of "the same, which is subsequently nitrated and thus converted into "artificial musk, the combination and sulphonation being carried out 30" in one process without the application of heat or of pressure. I take 2 "parts of nitro-benzol and 8 parts of iso-butyl alcohol (boiling between 102 and "105 degrees C.), to which are added, subject to their respective commercial "qualities, proportionate parts of toluole and xylol, or toluole only, according "to the specific odour I wish ultimately to obtain, and taking into consideration 35" various external influences. 700 grammes of the mixture are slowly and "steadily dropped into 4 kilogrammes of sulphuric acid made by mixing 3 parts "of ordinary sulphuric acid and one part of sulphuric acid of 66 Bé. "When the reaction is complete, the admixture is poured into about 10 times the quantity of cold water with constant stirring. After allowing to stand, the 40"uncombined hydro-carbons are separated and drawn off. The nitration "of the sulpho-acid is carried out as follows :-Into a mixture of one kilogramme "of fuming nitric acid and one kilogramme of pure sulphuric acid of 66 Bé "200 grammes of dry sulpho acid are introduced together in one batch. A "reaction takes place and heat is evolved. I allow to cool and pour the cold 45 "mixture into 10 litres of cold water, stirring well. The precipitate is filtered off." At the trial, Moulton, Q.C., and J. C. Graham (instructed by Radford and Frankland) appeared for the Plaintiffs. The Defendant appeared in person. Moulton, Q.C., for the Plaintiffs.-The Plaintiffs have decided to proceed on Patent 4963 of 1889 alone, as that is the one which, by the answers to interro50 gatories, the Defendant appears to have infringed, so that the other patent need not be considered. The 1889 patent was applied for before the 1888 patent was published, so no question of anticipation by it arises. [The issue of validity was then discussed.] The question of infringement is really the main question. The Plaintiffs' process starts with toluol, which is the substance obtained by 55 replacing one hydrogen atom in benzene with a methyl group; its formula is therefore CH.CH3. This being treated, as described in the Specification, with a haloid combination of butane, a butyl group (C,H,-) is introduced into the molecule.

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