The Welsbach Incandescent Gas Light Company, Ld., v. The Daylight lanthanum; when you precipitate this group from the mineral you get 90 per Moulton, Q.C., replied.-The Defendants' mantles are made in the manner described in the Specification, the only variation being that in the second part they use a collodion solution instead of an aqueous solution. Then as to the materials used, the only change which the Defendants have made is the 35 omission of lanthanum. The Court of Appeal have decided that, the invention not being the prescription merely, the omission of lanthanum is not sufficient to take one out of the Patent. In the De Mare case a substance, viz., erbium, not mentioned was used; it was contained in ytterite earth, but was not an equivalent for it. But it was said that leaving out lanthanum, with or without 40 an equivalent, was not sufficient to take one out of infringement. This is an a fortiori case. In the Nobel case there were words which were words of exclusion only. The Patentee has expressly made a distinction between didymium and cerium. He contemplated the use of zirconium, lanthanum, and a little cerium, as Sir William Crookes admitted. The substance of the 45 invention has been taken. The BYRNE, J.-The issue in the present case is one of infringement. Specification of the Welsbach Patent, which is alleged to be infringed, has been very fully expounded in the two judgments of Mr. Justice Wills in the cases. of the Incandescent Gas Light Company v. The De Mare Incandescent Gas 50 Light System, Ld., and of the same Plaintiffs against the Sunlight Incandescent Gas Lamp Company, Ld., and in the judgments of the Court of Appeal in the former of those cases; and I do not consider it necessary to go over the ground covered by those judgments, except so far as may be required to explain the present decision. In the De Mare case, after a close examination of the construction and scope of the Secification, having regard to the knowledge of chemists at its date, 55 66 66 The Welsbach Incandescent Gas Light Company, Ld., v. The Daylight Mr. Justice Wills says as follows:-" It seems to me now possible to understand exactly what the Patentee claims. It is not the prescription, apart from the "rest of the process. It is not the construction of the skeleton, or, as it has "been aptly termed, a simulacrum of the vegetable fabric-in any oxides—or 5" in any oxides which give good and durable incandescence (a claim which "would certainly vitiate the Patent), but it is the combination of the various "essential elements in the process described, the manufacture of the hood out "of the substances mentioned by the Patentee (no doubt because he had "ascertained that they would answer) by the means of impregnation with the 10" blends of salts within the descriptions and proportions indicated by the Specification, including, of course, all such variations of proportions or of strength of solution as are fairly within the Specification as it would be "understood by a competent workman, and brought to its final condition for "every-day use by being put into the burner, and so having the carbon filaments 15" and threads burned out, and the anhydrous oxides left in the precise shape "which the fabric had, till burned out, assumed. If the process which the "Defendants held out that they were going to use is substantially identical "with this process, they are liable in this action. If it is not so, they are "entitled to my judgment." So much for the Patentee's claim. Next, as to 20 the real substance of the invention, and as to the test to be applied in ascertaining whether or not there has been an infringement, I will read one more passage from the judgment of Mr. Justice Wills in the De Mare case :"Welsbach certainly discovered, for the first time, a method by which a skeleton, "frail but durable, of the resistent earthy oxides mentioned by him, could be 25" obtained which would give practically a means of obtaining light by "incandescence which would surpass the economy of the best modes known of "getting illumination from gas. His Specification claims the whole process by "which he arrived at that result. Out of it the Defendants take the impregna"tion of the fabrics by blends of salts of zirconia and of the rare earths, and 30" the reduction of these to anhydrous oxides forming the simulacrum of the "fabric. I am satisfied by the evidence that it is this mode of getting blends "of the specified oxides into the shape of the fabric out of which the hood has "been made that has rendered the process of any use, and that a mere variation "of prescription, extending even to the omission of lanthanum, is of very trifling 35 66 consequence in comparison." I now turn to the Specification, bearing in mind what has already been determined in reference to the true construction to be put upon it. The prescription referred to as to materials to be employed is to be found in these passages :-"For this purpose I employ a compound of "oxide of lanthanum and zirconium, or of these with oxide of yttrium." "The proportions in which the substances are compounded may be "varied within certain limits. I have found the following proportions very 66 suitable : 60 per cent. zirconia, or oxide of zirconium; 20 per cent. oxide of "lanthanum ; 20 per cent. oxide of yttrium. The oxide of yttrium may be dispensed with, the composition being then 50 per cent. zirconia; 50 per 45" cent. oxide of lanthanum. Instead of using the oxide of yttrium, ytterite earth, and instead of oxide of lanthanum, cerite earth containing no didymium, and but little cerium, may be employed. . . . . . For part of the "zirconia a mixture of magnesia and zirconia may be employed, with a little "loss of intensity of the light." Cerite earth contains, besides some slight 50 traces of other matters (which for present purposes may be disregarded) lanthanum, didymium, now known, (but at the date of the Specification not more than suspected) to be in itself a compound of rare earths and cerium. 40 66 66 66 It has been determined in the De Mare case that, notwithstanding the prominent place occupied in the alternative prescriptions given, to the oxide of 55 lanthanum, there may be an infringement of the Patent, although oxide of lanthanum be altogether omitted in the prescription used by the infringers. Passing by, for the present, a point in reference to the method of application of The Welsbach Incandescent Gas Light Company, Ld., v. The Daylight the cerium, with which I shall have to deal later on, I have first to consider whether or not the Defendants, who admittedly use a very small proportion of cerium, together with zirconia, and certain other immaterial matters, are making use of the Plaintiffs' prescription. For the Defendants, it is said that the reference to cerium in Welsbach's 5 Specification is merely a reference for warning against its use, and the main contest has turned upon the true meaning of the sentence in the Specification, "and instead of oxide of lanthanum cerite earth containing no didymium, and "but little cerium, may be employed." It appears that, at the date of the Patent, the true value of cerium, as assisting illumination, was not fully understood. 10 More recent discovery has shown that it is for that purpose most valuable, and the Defendants say that, although the inventor tells the world that but a little cerium may be used with lanthanum, he only does so incidentally in a sentence designed to warn against the use of that substance, and, therefore, as meaning it would be better if it were got rid of altogether. I do think that it is the fair 15 reading of the Specification. The claim is in terms for "the manufacture, "substantially as herein described, of an illuminant appliance for gas and other "burners consisting of a cap or hood made of fabric impregnated with the "substances mentioned and treated as set forth." Now the substances mentioned as one alternative prescription are of zirconia, and cerite earth deprived altogether 20 of didymium and of all but a little cerium. If the inventor had meant that cerite earth, deprived altogether of cerium, would be better than the same earth containing but a little of that substance, it would have been most easy and most natural for him to say so. If I have rightly apprehended the evidence, to have prescribed cerite earth, containing no didymium and no cerium, would have 25 been to say, instead of oxide of lanthanum you may use cerite earth deprived of everything material except oxide of lanthanum. It is quite clear, I think, that the inventor knew at least that the presence of a little cerium would do no harm, and that much cerium would be injurious. I think he means and intends that, instead of pure lanthanum, a mixture of lanthanum and cerium may be 30 employed. His warning is against much cerium; his prescription is no didymium and a little cerium. The Defendants get rid of oxide of lanthanum altogether, but this will not serve them; they use a little, a very little, cerium, and rely upon it mainly for their illumination; but apart from minute verbal criticism, in substance the inventor says, instead of oxide of lanthanum you may 35 use cerite earth deprived wholly of didymium and of all but a little cerium. It was further argued that the inventor says that the proportion in which the substances are compounded may be varied within certain limits, and that this variation must be intended for limits within which the Defendants do not come, inasmuch as they use only half per cent. of cerium to over ninety per 40 cent. of zirconia and no lanthanum. The range of limit given is, as appears by the prescriptions themselves, very wide, and having regard to the fact that the proportion of cerium is obviously intended to be very smail indeed as compared with other constituents, I do not think that this suggestion can prevail. So far, I think, the Defendants fail in their contentions; but I have now to 45 consider a different matter altogether. The Patentee contemplates omitting stages of his process which are immaterial-saturation of the fabric which he uses with an aqueous solution of nitrate or acetate of the oxides he refers to prior to burning, and he also contemplates that the fabric can be painted with or dipped into a concentrated solution of the salts so as to provide a fresh layer 50 of the metallic salts, which becomes fully oxidised soon after the fabric has become incandescent. The Defendants in their process use zirconia and half per cent. of cerium. I need not trouble about any other substances, as Mr. Bousfield fairly admitted, but they apply the cerium by painting only without previously using an aqueous solution containing that substance. On the question of construction of the Specification, the Defendants have failed to satisfy me that they are right. They use in substance one of the 55 5 The Welsbach Incandescent Gas Light Company, Ld., v. The Daylight prescriptions given, and unless they can differentiate what they do from what is covered by the Plaintiffs' Patent upon the ground that the method of application of the cerium to the zirconia mantle is sufficiently distinct from the method employed by the Plaintiffs, I think they fail. The Sunlight case is absolutely distinguishable from the present in thisthat the Defendants did not in that case make use of one of the rare earths for the source of their main illuminant power. They used chromium, not a rare earth, and not one of the substances referred to in the Specification. Upon the evidence before me I do not think that there is any such distinction to be 10 drawn in reference to the method of application of the rare earth cerium to the zirconia mantle as will entitle the Defendants to say that they have not substantially taken the Welsbach process and produced the same result by means of the use of zirconia plus a small quantity of cerium. There is a difference of opinion between Dr. Dewar and Mr. Ballantyne on 15 the one hand, and Sir William Crookes on the other, upon the question whether or not an improved result is obtained by introducing the cerium in the collodion coating on to the zirconia mantle, as is done by the Defendants, instead of introducing it with the zirconium and lanthanum into the aqueous solution in which the fabric is dipped, as suggested in the Welsbach Patent. Sir William 20 Crookes finds an improved result in respect of illuminating power if it is introduced in the way the Defendants introduce it. Dr. Dewar and Mr. Ballantyne say that the result of their experiments shows that it makes no difference. I think the result of the evidence is that, in whichever way the cerium is applied, a permeation of the whole mass of the whole mantle is obtained, 25 although the result is more certainly equal in the case of the Welsbach method being employed. It is true that in the Sunlight case Mr. Justice Wills refers to the different method of applying the chromium as one of the points going to show that in that case there was no infringement, and he sums up the result of the evidence in that case as follows :-"No use is made by the Defendants 30 "of any of the rare earths, and their choice of substances, and their method of "applying the illuminants, appear to be as wide asunder as the poles from "those contemplated by Welsbach." I do not gather that if the Defendants in that case had used one of the rare earths instead of chromium that Mr. Justice Wills would have arrived at the conclusion he did; and I have in the 35 present case evidence which satisfies me that the Defendants do use a process or method of applying the illuminant "cerium," a rare earth, so as to effect substantially the same permeation and incorporation of the mantle as is effected by the Welsbach method. 40 45 50 Upon the whole case, I think the Plaintiffs are entitled to succeed. Terrell, Q.C.-Then there will be judgment as against The Daylight Incandescent Company and Arthur Hill. BYRNE, J.-Who is Arthur Hill? Terrell, Q.C.-Arthur Hill is Secretary of the Company. BYRNE, J.-Is it usually granted against the Secretary of a Company? Terrell, Q.C.-It is against everybody connected with the infringement; it is a case of tort. Then the judgment will be a judgment for an injunction with an inquiry as to damages? BYRNE, J.-Yes. Terrell, Q.C.-And costs as between solicitor and client? BYRNE, J.-The validity of the Patent was not disputed here. It is pure infringement. Terrell, Q.C.-It does not matter under the Act. BYRNE, J.-I think you are right. I had the same discussion the other day. A passage was read to me in which one learned Judge did not give these costs; but 55 this is a case in which the validity of the Patent has been clearly involved and a certificate given in a former action. The rule applies to all actions of infringement, and not necessarily to actions disputing the validity of the Patent, and, The Welsbach Incandescent Gas Light Company, Ld., v. The Daylight unless some very special reason is shewn, I see no reason to depart from what the section says. Graham.-I do not think it is the ordinary rule. I can refer your Lordships to some cases in which it has not been done. One which occurs to me at this moment is the Pneumatic Tyre Company v. The East London Rubber Company, 5 14 R.P.C. 77. Mr. Justice Romer there refused to give solicitor and client costs. Moulton, Q.C.-There validity came into question, and there was no reason whatever for not doing it, except that there were special circumstances in the case. Graham.-Then there was the case of Otto v. Steel. BYRNE, J.-That was a case that was cited to me the other day. Graham.-In that case the Patent was attacked on every conceivable ground, and on that occasion Mr. Justice Pearson refused to give solicitor and client costs. BYRNE, J.-The fact that in one particular case the learned judge thought it was not a proper case to give solicitor and client costs, without giving any principle on which he went, does not materially assist me. Graham.-The reason why Mr. Justice Romer did not give them was that it was optional with him whether he should give them or not, and he thought it was a reasonable case to be tried, and he did not think the Defendant in a reasonable case should be prejudiced because the Patent had been upheld before. That was the ground of the decision. 10 15 20 BYRNE, J. Of course, without consideration of all the facts of that case, I cannot say. In that case there seems to have been a dispute as to the validity of the Patent in the second action also, and Mr. Justice Romer begins his judgment by saying: "Inasmuch as the evidence before me somewhat differs "from that in the prior action, and the case is one of considerable importance, 25 "which may come before other Courts, I think it right to state fully my reasons "for the conclusion I have arrived at." So that, he says, the case is one of considerable importance, and the evidence differs from that in the prior case. Graham. So it does here, and we are in a better position than the Defendant was in there, because we have not put the Plaintiffs to the trouble and expense of 30 upholding the Patent again; they did so there, but notwithstanding they had done that, and they were proved to be wrong in doing it, still the judge thought it was not a case in which to make the Defendants pay solicitor and client costs. Then there is a case of The Automatic Weighing Machine Company v. The International Hygienic Society, 6 R.P.C. 480. That was before Mr. Justice 35 Charles. He said, "There was no question of the validity of this Patent raised "before me at all. The only question was, whether the Defendants' machine "was an infringement of an admittedly valid Patent of the Plaintiff, and I 66 66 am, therefore, of opinion that even if Section 31 does apply, I ought to certify that the Plaintiff ought not to have his costs as between solicitor 40 "and client." That was the view Mr. Justice Charles took. BYRNE, J.-That does not give any special reason. There must be something special in the facts of the particular case. Graham. He does not give his reasons, but I submit to your Lordship there is no settled rule-it is entirely in your Lordship's discretion. BYRNE, J.-Yes, it is entirely in my discretion. It is a rule to be followed, unless I see good reason to the contrary. The only question is, whether I should depart from the terms of the section; what you have to do is to show me in this case why I should depart from the ordinary rule? 45 Graham.-I say on that point, this case does not differ in any material 50 respect from the cases I have cited, except in this respect, that it is in favour of the Defendants that we have not put the Plaintiffs to the trouble of proving the validity of their Patent. Bousfield, Q.C.-The section is not intended to give a Patentee an advantage as a litigant which other litigants do not possess, except that, if somebody, after 55 the matter has been orce settled, comes and tries the same matter over again, he is penalised to that extent; but think your Lordship will agree with me, |
