VARIANCE-continued.

that all the patents were valid, and had been infringed, the first patent being the application of an old principle in a way which involved the exercise of ingenuity; as to the second patent, that the alleged variance from the Provisional was only such a change as might fairly follow on further consideration by an inventive mind of the method of the Provisional; as to No. 3 patent, that the Specification alleged as a prior grant was itself invalid on the ground of variance. Judgment was given for the Plaintiff, with costs, except so far as the same had been increased by the inclusion of the abandoned patent, and the order certified that the alleged prior grant was invalid. The Defendants appealed.-Held, on appeal, that the first patent was valid, since the words at the end of the first claim, "substantially as described and set forth," limited the claim for use in base frames of a trussed beam to the particular manner described in the Specification, and, further, that this patent had been infringed; that, as to second patent, Figures 8, 9, and 10 were not within the Provisional Specification, and, further, the Defendants had not infringed this patent; and that, as to the third patent, without deciding the question of validity, the Defendants had not infringed it. The appeal, as regards the first patent, was dismissed with costs; but, as regards the second and third patents, it was allowed with costs, the costs to be taxed as if there were separate actions. A certificate was given that the Particulars of Objections to the second and third patents were reasonable and proper. BROOKS v. LAMPlugh, p. 33.

2. Disconformity alleged, but held not to be established. HEIDEMANN v. THE SMOKELESS POWDER CO., LD., p. 305.

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3. Several machines for accomplishing the patented invention shown by Provisional, but only one in Complete.-"One other point requires a passing notice. It is said for the Defendants that in the "Provisional Specification the inventor showed other machines for "accomplishing his object, and that he abandoned all those in his "Complete Specification, and consequently it was contended that his "Complete Specification ought to be strictly construed as confined to a machine with the conical plates. What the inventor did by his "Complete Specification was to describe for the benefit of the public "the best practical machine to effectuate his object. The argument "does not assist the Defendants. What they have done brings them "within the ambit of the invention as described in the Complete "Specification," per CHITTY, L.J. AKTIEBOLAGET SEPARATOR v. THE DAIRY OUTFIT Co., p. 336.

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4. Disconformity held to have been established.—Action for infringement.-Construction.-Validity. - Disconformity.-Judgments for Plaintiffs.-Appeal.-Appeal allowed.-Patent invalid on the ground of disconformity.-No infringement by Defendants. In 1894, Letters Patent were granted for "Improvements in adjusting the driving "chains for bicycles and other velocipedes." The first claim was for "The improvements in driving chain adjusting mechanism of velocipedes herein before described and illustrated in the accompanying drawings, that is to say, making the ends of the arms or branches "of the chain stay hollow or tubular and longitudinally slotted on

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VARIANCE-continued.

"their inner sides, and arranging on the ends of the driving wheel "spindle carrier blocks for taking into and working in the said hollow "or tubular ends of the chain stay, the said carrier blocks being moved "in the hollow or tubular chain stays in the ways herein before "described and illustrated." By his fifth claim, the Patentee claimed "The combination with the chain adjusting gear for velocipedes "herein before described and claimed, when used with semi-circular "or semi-elliptical chain stay arms, of foot steps of the kind herein"before described and illustrated in Figures 22, 23, and 24 of the "accompanying drawings." The Provisional Specification contained no reference to the foot steps. In 1897, a Company, who were then the registered owners of the Letters Patent, commenced an action against another Company for infringement of the same, alleging Claim 1 to be infringed. The Defendants denied infringement, and alleged want of novelty (setting up, inter alia, prior publication by a Specification of Palmer in 1889), want of subject-matter, and disconformity. The Defendants' arrangement had a chain-stay with a tubular end which had two slots in it, one at the side through which the end of the driving-wheel spindle passed, and one underneath for manipulating a nut which screwed on the end of the spindle inside the tubular chain-stay; on the side of the latter nearest the wheel a draw-bolt was screwed on the spindle. The Plaintiffs contended that the Defendants had in substance their carrier-block. Draw-bolts in chain-adjusting mechanism were old, Palmer having them in his invention.-Held, at the trial, that the defences of disconformity and of want of subject-matter failed, and that the patent was valid and had been infringed. A stay was granted upon terms. The Defendants appealed.-Held, by the Court of Appeal, that the invention claimed in Claim 1 was the combination of the improved tubular end of the chain-stay with the particular adjusting apparatus of which the carrier-block was the essential feature; that the Defendants had not infringed, and that the patent was bad for disconformity, inasmuch as what was claimed in Claim 5 was not shadowed forth in the Provisional Specification. The appeal was allowed, with costs in both Courts. OSMONDS, LD. v. THE BALMORAL CYCLE Co., LD., p. 505.

5. Held not to have been established.-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 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 the Provisional Specification.-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. CASTNER-KELLNER ALKALI CO., LD. v. THE COMMERCIAL DEVELOPMENT CORPORATION, LD., p. 645.

DIGEST OF DESIGN

CASES.

COSTS.

Practice with regard to the costs of copies of affidavits for the Court of Appeal. These costs will not be allowed without an order, and application for such an order should be made while the matter is fresh before the Court, and within its recollection. ROLLASON'S DESIGN, p. 231.

DESIGNS RULES, 1890.

Rules 1 and 9. ROLLASON'S DESIGN, p. 441.

INFRINGEMENT.

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Infringement held established, Defendants having produced an infringement of the combination which was the essence of the design.-Action for infringement.-Prior publication.-Novelty. -" Proprietor."-Patents, &c. Act, 1883, Section 47. The Plaintiffs, as owners of a registered design to be printed or woven on textile piece goods, brought an action for infringement. The Defendants denied infringement, alleged that the Plaintiffs were not the proprietors of the design, that it was published prior to registration, and that there was no novelty.-Held, that the Plaintiffs were proprietors of the design, that it was not published prior to registration, that it was a new and original design, and that the Defendants had infringed. CHARLES HENRY NEVILL AND OTHERS v. JOHN BENNETT AND SONS, p. 412.

MARKING OF GOODS.

Plaintiff held to have taken all proper steps for the marking of his goods, that the design was novel, and that the copyright had not ceased.-Registration.-Motion to expunge.-New or original. -Statutory requirements as to marking goods.-All proper steps.Patents, &c. Act, 1883, Sections 47, 51, and 60.—Designs Rules, 1890, Rule 1.-Patents, Designs, and Trade Marks Act, 1883, Sections 47, 51, and 60.-Designs Rules, 1890, Rule 9.-Meaning of words "applicable for the pattern, or for the shape or configuration, or for "the ornament thereof," in Section 60.-Marking with prescribed mark.-Effect of proviso at end of Section 51. In 1894, R. registered a design in Class 1 in respect of a set of coffin plates under

MARKING OF GOODS-continued.

No. 232,908; the design was registered as "Applicable for the "patterns." R., having commenced a County Court action against S. H. and Sons for infringement of this design, S. H. and Sons moved to expunge it on the ground of (1) want of novelty, and (2) that articles to which the design had been applied had been sold without the marks prescribed by Section 51 of the Patents, &c. Act, 1883. R.'s design was alleged to be anticipated by a design registered in 1892; and it was also alleged and proved that a considerable number of articles to which the design had been applied had been marked with the No. 252,908 instead of the No. 232,908, the mistake having originated in a stamping die. The Respondent gave evidence that he had given instructions to a competent manufacturer to make the necessary dies, and had furnished him with the proper number, but that through a mistake of a workman a "3" had been substituted for a "5" in one of the dies. The Respondent said that he always examined the first impressions from every die he bought, but had not noticed the mistake in question until it was pointed out to him by the Appellants, when it was at once corrected.-Held, (affirming the decision of the Court of Appeal) that the design was novel, that R. had taken all proper steps to ensure the marking of the article, and that his copyright had not ceased. The object of the Interpretation Clause, Section 60 of the Patents, &c. Act, 1883, is to make the word "design" in Section 47 and the following sections as extensive as it reasonably ought to be. It was not intended to draw a sharp, hard and fast distinction between the design as being applicable for the "pattern," or for the "shape or configuration," or "for the ornament." Rule 9 of the Designs Rules, 1890, requiring the Applicant "in "describing the nature of the design" to state whether it is applicable for the pattern, or for the shape or configuration of the design, does not import a condition which will limit the effect of the design when registered. The object of marking, under Section 51, the articles to which the design is applied is to denote that the design is registered. If there is no mark on the article sold, the case against the proprietor would be much stronger than if there is merely an error in complying with the exact requirements of the section as to the figures or words to be put on the article, as the public would be equally warned of the registration whether one figure in the number was or was not correct. ROLLASON'S DESIGN, p. 441.

NOVELTY.

1. A new arrangement of old details held to be a registrable design. CHARLES HENRY NEVILL AND OTHERS v. JOHN BENNETT AND SONS, p. 412.

2. Prior publication where the parties are arranging to put a design on the market. See NEVILL V. BENNETT, p. 412.

3. "

Very often a very successful design may be one in which the difference "from previous designs can, on analysis, be shown to be very slight, 'where, nevertheless, the result is to make the one so much more pleasing than the other that it is a successful design. Whilst on the "one hand we certainly ought not to give protection to a design in

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"which the variations are trivial and unimportant so that it is "substantially the same design as one already registered, on the other "hand we ought not to refuse it where the design is practically a "different one which may be more attractive," per LORD HERSCHELL. ROLLASON'S DESIGN, p. 447.

PATENTS, &c. ACT, 1883.

Sect. 47. CHARLES HENRY NEVILL AND OTHERS v. JOHN BENNETT AND SONS, p. 412.; ROLLASON'S DESIGN, p. 441.

Sect. 51. ROLLASON'S DESIGN, p. 441.

Sect. 60. ROLLASON'S DESIGN, p. 441.

PATTERN.

The meaning of in Rule 9 of the Designs Rules, 1890, discussed. ROLLASON'S DESIGN, p. 445.