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Griffiths v. The Birmingham Stopper and Cycle Components Company.

of the stopper is pressed out, so that the stopper becomes thereby firmly fixed in the neck of the bottle. What do the Defendants do? The Defendants, it is quite true, have a lever, and they have the equivalent of the ears, and they bring about the same result as the Plaintiffs do by their Patent; but the essential feature-or what the Plaintiffs term the essential feature of their Patent-the 5 Defendants omit, namely, the pressure plate. How can it be said, therefore, when the essential feature is omitted by the Defendants, that what they are doing is an infringement of the Patent as the plaintiffs allege? It seems to me, therefore, on the question of infringement the Plaintiffs have not succeeded ; they have failed on their own evidence, and upon that ground judgment ought 10 to be for the Defendants.

But there is another ground that is taken, and that is if you take it the other way-that the essential feature is not the pressure plate--then the Patent of Thompson's, which had not that essential feature, anticipated what the Plaintiffs had patented in 1895. So that, whichever way you take it, if the pressure 15 plate is the essential feature the Defendants have not infringed ; if it is not the essential feature, then the Patent has been anticipated by Thompson.

But it is said, “Oh! it is quite true that Thompson took out a Patent in 1865 for these stoppers, and attached to his Specification were drawings. One drawing, to bring about the action necessary for keeping the stopper 20 tight in the bottle, was by means of what he calls the hook; but he gave an alternative method in drawings 19, 20, 21 and 22, and described in the letterpress what those drawings meant. It is quite true, although there have been hundreds and thousands of stoppers made with the hook, there have been none made in the alternative method shewn in these drawings, I do 25 not myself consider—it is not necessary to decide it—that that makes these drawings mere paper anticipations. But, be that as it may, it is said these drawings shew nothing, and no mechanic could ever have made stoppers from them. The Plaintiff's called an expert at the trial to say that the drawings were such that a mechanic could not make a stopper from them. But on the 30 other side they called much more important evidence as it seems to me-a man who said “not only you can make stoppers from the drawings, but here is “a stopper I have made from the drawings themselves.” That is better than the evidence of a man who says, “ I could not make it ;” it is the evidence of a man who says, “ I can make it, and here is the thing I have made.” Putting 35 the matter in whatever way it can be put, I cannot agree with my brother Channell that the Plaintiffs are entitled to judgment in this case. opinion the Defendants are entitled. VAUGHAN WILLIAMS, L.J.-I agree.

. ROMER, L.J.-I will simply add this, that, speaking for myself, I see no 40 difficulty in the way of any ordinary skilled workman carrying out Figs. 19 to 22 inclusive of Thompson's Specification, and making a workable stopper as indicated by that Patentee. It follows that substantially there has been an anticipation of Griffiths' Patent if the pressure plate was not an essential part of that Patent. But I think the pressure plate was an essential part of that 45 Patent. I should further add that if Griffiths, by their Patent in Claim 3, did really intend to patent what they thought was an improvement on what had been indicated by Thompson in his Specification and Figs. 19 to 22 inclusive, then I cannot see that there was any subject-matter in that Patent.

ROMER, L.J.-We will certify for the anticipations tbat you have put in as 50 Objections-so far as you have put them in. We have not decided that the Patent is invalid.

McCardie.--No, my Lord.

ROMER, L.J.-But we give you the Particulars of those Objections as being reasonable.

55

In my

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London

and Suburban Maintenance Company.

IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.

Before MR. JUSTICE BRUCE.

May 3rd and 4th, 1899.

THE WELSBACH INCANDESCENT GAS LIGHT COMPANY, LD. v. DOWLE AND

THE LONDON AND SUBURBAN MAINTENANCE COMPANY.

5

Patented article sold under limited license.-Alleged infringement of Patent by Breach of License.-Action dismissed.-Admissibility of evidence of acts subsequent to date of writ.

The Plaintiffs sold mantles of their manufacture with a limited license. It 10 was alleged that the Defendants had infringed by breach of the limited license.

Evidence was offered of acts done after the issue of the writ to strengthen and explain the evidence prior to the date of the writ.

Held, that the evidence of acts prior to the writ was not sufficient to prove the Plaintiffs' case, and that, where an action is for infringement and not to restrain 15 threatened infringement, evidence of acts subsequent to the date of the writ is inadmissible.

The Shoe Machinery Company v. Cutlan 12 R.P.C. 342 followed.

The Plaintiffs sold to the Defendants mantles for incandescent lighting made under the Plaintiffs' Patent, subject to the limited license set out in the Particulars 20 of Breaches below. The Plaintiffs alleged that the Defendants had broken the

conditions imposed upon them under the limited license by the sale of mantles of the Plaintiffs' manufacture in connection with, or for use upon, burners not of the Plaintiffs' manufacture. Tbe Plaintiffs issued their writ on the 12th of May 1889,

and delivered their Statement of Claim on the 3rd of August 1898, by which 25 they alleged (1) That the Plaintiff Company were the legal registered owners of

Letters Patent No. 15,286 of 1885, granted to Carl Auer von Welsbach for an invention of “The manufacture of an illuminant appliance for gas and other “ burners,” and of Letters Patent No. 3592 of 1886, granted to Oliver Imray for

an invention of “Improvements in illuminating appliances for burners." 30 (2) That the Defendants had infringed the said Letters Patent in the manner

by the Particulars of Breaches appearing. (3) In an action brought by the predecessors in title of the Plaintiff Company, The Incandescent Gas Light Company, Ld., against The Deimel Light Company, Ld., and another, a

certificate was granted by the Honourable Mr. Justice Romer that the validity 35 of both the said Letters Patent had come in question therein. The Plaintiffs

claimed (1) An injunction to restrain the Defendants, their servants and agents, from infringing the Plaintiff Company's said Letters Patent, and from selling or using any mantles bought from the Plaintiff Company, or their agents, or the

predecessors in title of the Plaintiff Company, upon or in connection with 40 burners not of the Plaintiff Company's manufacture or sale. (2) An inquiry as

to damages. (3) Costs as between solicitor and client. (4) Such further or other relief as the circumstances of the case might require.

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London

and Suburban Maintenance Company.

The following were the Particulars of Breaches complained of :-(1) Prior to the month of November 1897 the Defendants purchased from the Plaintiff Company or their predecessors in title, The Incandescent Gas Light Company, Ld., or from the agents of one or other of them, all of whom were referred to as “the Plaintiffs,” incandescent mantles constructed in accordance with the 5 Plaintiff Company's Letters Patent, No. 15,286 of 1885 and No. 3592 of 1886, on the following express terms and conditions, that is to say :

The Incandescent Gas Light Company, Ld., in supplying the mantle contained “in this box grant a limited license to the purchaser to use or sell the same on “the express condition that neither the purchaser nor any other person into 10 “ whose hands the same may come shall use or sell the said mantle except in “ connection or for use with burners sold or supplied by the Company.

Any other sale or use will amount to infringement of the Company's Patents. “ The Company supply mantles for the purpose of renewals at the nominal

price of 1s. 3d., subject to the conditions and limitations above set forth.” 15

(2) In or about the month of November 1897 the Defendants, at their premises, 24, Hatton Garden, sold to one William John Moore, of 14, Palmer Street, Westminster, one complete burner for incandescent gas lighting, consisting of an incandescent mantle of the Plaintiffs' manufacture, together with a burner which was not of the manufacture or merchandise of the Plaintiffs, in 20 breach of the terms and conditions imposed upon purchasers of their incandescent mantles by the Plaintiffs, as set out in paragraph 1. (3) On or about the 13th day of December 1897 the Defendants, at their premises, 24, Hatton Garden, aforesaid, sold to one Henry Thomas King, of 14, Palmer Street, Westminster, one complete burner for incandescent gas lighting, of which the 25 mantle was, but the burner was not, of the manufacture of the Plaintiffs, in breach of the terms and conditions aforesaid. (4) On or about the 5th day of April 1898 the Defendants, at 24, Hatton Garden, aforesaid, sold to one Henry Lacey, of 14, Palmer Street, Westminster, one complete incandescent lamp, consisting of a mantle, burner, and chimney, of which the mantle was, but the 30 burner was not, of the manufacture of the Plaintiffs, in breach of the terms and conditions aforesaid. (5) On or about the 28th day of May 1898 the Defendants, at their stall at the Alexandra Palace, sold to one J. H. Williams, of 14, Palmer Street, Westminster, one complete incandescent lamp, consisting of a mantle, burner, and chimney of which the mantle was, but the burner was not, of the 35 manufacture of the Plaintiffs, in breach of the terms and conditions aforesaid. (6) The Plaintiff Company was unable, until it obtained discovery from the Defendants, to give better or further particulars, but the Plaintiff Company alleged that all such sales by the Defendants as are set out in paragraphs 2, 3, 4, and 5 constituted infringements of the said Letters Patent No. 15,286 of 40 1885 and No. 3592 of 1886, and claimed to recover from the Defendants full compensation for all infringements of their said Letters Patent by the Defendants.

By their Defence, delivered the 14th of November 1898, the Defendants (1) admitted paragraphs 1 and 3 of the Statement of Claim. (2) Denied that they 45 had infringed the Letters Patent mentioned in paragraph 2 of the Statement of Claim as alleged, or at all. (3) Denied all and every of the allegations of infringement, or of improper sales, or acts, or conduct material to the issues contained in the particulars delivered with the Statement of Claim.

The action was tried by Mr. Justice BRUCE, without a jury, on May 3rd and 50 4th, 1899.

T. Terrell, Q.C., and Walter (instructed by Faithfull & Owen) appeared for the Plaintiffs ; Edmunds, Q.C., and Moyses (instructed by Robert Wells & Son) appeared for the Defendants.

Terrell, Q.C., opened the Plaintiffs' case. There is here no question as to 55 validity. The Plaintiffs sold mantles to the Defendants under a limited license to use and sell them only in connection with, or for use upon, burners of the Plaintiffs' manufacture. Such a license is valid. (The Incandescent Gas Light

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London

and Suburban Maintenance Company.

Company, Ld. v. Cantello, 12 R.P.C. 262.) The Defendants had knowledge of the conditions of this limited license, and the real contest here is whether they sold the mantles in breach of those conditions or not. Some of the breaches

complained of are after the date of the writ, but when applying for an injunc. 5 tion I am entitled to bring evidence of the Defendants' acts up to the date of

the trial. [Edmunds, Q.C., for Defendants, objected to the admissibility of evidence of acts subsequent to the date of the writ. After some discussion, BRUCE, J., decided to hear the evidence and decide the question of its admissi

bility at the end of the case.] 10 Evidence was then given on behalf of the Plaintiffs as to the sales specified

in the Particulars of Breaches. No evidence was given as to alleged sale on the 13th of December 1897.

Edmunds, Q.C.--The evidence of Moore as to the alleged sale in November 1897 is too incomplete to be met. The witness does not remember the date, nor the 15 price. He does not produce the articles sold nor the invoice; in fact he does

not remember whether he got an invoice or not. The sale to Lacey on the 5th of April 1897 has not been satisfactorily proved.

Evidence was then given for the Defendants, including that of Miss O'Hare, who sold the burner and mantle to Lacey on the 5th of April. 20

Edmunds, Q.C., summed up for the Defendants. There is no evidence of any breach before the date of the writ. Such evidence as has been given is scanty and unreliable, and is contradicted by Miss O'Hare. This being so the evidence of acts committed after the issue of the writ is inadmissible ; The Shoe

Machinery Company v. Cutlan, 12 R.P.C. 342. Such evidence is only 25 admissible where the action is for an injunction, and is based on a threat to infringe,

Terrell, Q.C.-I submit that the evidence of the sale on the 5th of April is quite sufficient. If this is so then evidence subsequent to the writ is admissible to

shew a consistent course of infringement. Even if the evidence is not quite 30 conclusive then subsequent evidence is admissible to explain the acts before the

writ. In the case cited, The Shoe Machinery Company v. Cutlan, there was no evidence of any infringement before the writ, and therefore there was nothing to which to attach the subsequent evidence. I rely on Dowling v. Billington,

7 R.P.C. 191. I submit that there is in this case sufficient evidence before the 35 writ to allow of the admission of the evidence subsequent to the date of the writ.

BRUCE, J.-In this case I think the action fails. It is an action for an alleged infringement of the plaintiffs' patent rights. The Statement of Claim alleges

that the Defendants have infringed the Plaintiffs' Patent in manner by 40 the Particulars of Breaches appearing. In the Particulars it is alleged that the

Defendants purchased incandescent mantles constructed in accordance with the Plaintiffs' Letters Patent on the following terms and conditions :-" Incandescent "Gas Light Company, Ld., in supplying the mantle contained in this box,

grant a limited license to the purchaser to use or sell the same on the express 45 "condition that neither the purchaser nor any other person into whose hands

" the same may come shall use or sell the said mantle except in connection or " for use with burners sold or supplied by the Company. Any other sale “ or use will amount to infringement of the Company's Patents."

The substance of the complaint is that the Defendants sold the Plaintiffs' 50 mantles in breach of the terms and conditions imposed. In support of the case

of the Plaintiff Company Mr. Moore, who is employed by the Plaintiff Company, said that he went in November, 1897, to the Defendants' place of business, 24, Hatton Garden, and asked for a complete incandescent burner. The burner

supplied was not a burner of the Plaintiffs' manufacture, and the mantle was, 55 the witness said, a mantle of the Plaintiffs' manufacture. The witness said he

handed the burner and mantle to the Plaintiff Company, but they seem to have been lost or mislaid, and neither the mantle nor the burner was produced. The witness was unable to specify the day on which the transaction occurred; he

66

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London

and Suburban Maintenance Company.

could not remember whether he received an invoice or not; and he did not remember the price he paid for the articles he received. He could give no description of the person from whom he purchased the articles beyond that she was an elderly female. He said she was not Miss O'Hare, a witness who was engaged in November, 1897, as a saleswoman in the Defendants' shop. He did 5 not remember whether he asked for a white mantle or not. I cannot regard this as satisfactory evidence to establish a sale in breach of the condition. The best evidence of the character of the articles sold would be the articles themselves, and the non-production of the articles, without any explanation or excuse, constitutes a serious defect in the Plaintiffs' proof.

10 Moreover, assuming that the burner sold by the Defendants was not a burner sold or supplied by the Plaintiff Company, and that the mantle sold was one of the patented mantles supplied by the Plaintiff Company, still the mantle may have been supplied to be used with a burner supplied by the Company, and so there would have been no breach of the condition. It is consistent with the 15 terms of the condition that mantles may be supplied not in connection with burners supplied by the Plaintiff Company if they are supplied for use with burners supplied by the Plaintiff Company. The last clause of the notice is clear :-"The Company supply mantles for the purpose of renewals at the “ nominal price of 1s. 3d.,” so that it is quite in accordance with the conditions 20 imposed by the Company that mantles may be sold, not in connection with the burners of the Company, but may be sold for the purpose of renewals.

Again whether a mantle is or is not supplied for use with a burner supplied by the Plaintiff Company may depend—and in many cases must depend-upon the conversation which takes place at the time of sale. When the witness 25 who deposes to the circumstances is unable to recollect whether he asked for a white mantle (which would mean a mantle of the Plaintiffs' manufacture) and cannot recollect the price he paid for the articles he purchased (the price would afford some indication of the character of the articles purchased), I do not think I can regard his memory as sufficiently accurate to justify me in 30 treating his evidence as establishing that the circumstances attending the sale were such as to constitute a breach of the condition. This, I think, applies with additional force when the witness is unable to specify the day on which or to identify the person with whom the transaction took place, because the absence of these particulars, if it does not prevent, at least 35 renders it exceedingly difficult for the Defendants to produce any evidence to explain the transaction.

The next case—and the only other case of alleged infringement prior to the writ-relates to the transaction which took place on the 5th of April 1898. With reference to that matter there is a conflict of evidence. Mr. Lacey, who 40 was called on behalf of the Plaintiff Company, stated that he went to the shop in Hatton Garden and asked for a complete burner, and he says that the burner was packed up by Miss O'Hare without a mantle, and, according to his statement, when it was packed up he paid for it, although no mantle was packed up with it; and a receipt or a document was made out for him, charging him for the 45 mantle and the burner, although no mantle was put in the packet. I gather from his evidence that the Sunlight mantles were not in the shop, and he says that Miss O'Hare sent a boy to get a Sunlight mantle, and he waited for some time and the boy did not come back. He looked round the shop and he saw some of the Welsbach mantles, and he asked her whether those boxes 50 contained mantles. Miss O'Hare said, “Yes ; but if you have one of those you “ will have to pay 6d. extra.” He said no conversation took place about the conditions on which the mantle could be used, and thereupon the Welsbach mantle was put into the parcel. The bill was altered by striking out the 3s., substituting for it 28. 3d., and adding the price of the mantle, ls. 3d. 55 Miss O'Hare was called, and she contradicted in substance that statement. She says that she supplied one Sunlight mantle. She says it is not true that she packed up the burner without the mantle, but that she supplied

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