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John Varey, Limited v. Walker, Mitchell, & Co.

manner that, the ends of the said bars may be cut to the angle required and at “ the same time grooved at the side for the spring guides."

One Mitchell had been for some time prior to 1890 in the employment of Varey, and one Walker, who was a mechanic, went periodically to Varey's works for the purpose of fitting up machinery. On the 15th of March 1890, 5 Mitchell left Varey's employment, and joined Walker and a man named Haigh. They then set up the business of machine makers as Walker, Mitchell, & Co. at Keighley. In the middle of October 1898, the Plaintiffs discovered that they had supplied to Taylor and Wordsworth, machine makers, of Leeds, a “faller “ machine” which was alleged to be an imitation of the Plaintiffs' invention, as 10 described in their Specification. On learning this, the Plaintiffs, on October 22nd 1898, wrote to them asking for particulars of the number of machines sold and “ fallers” made. Upon receiving no answer to this letter, they commenced the present action.

In their Statement of Claim the Plaintiffs alleged (in paragraph 1) that they 15 were the owners of Letters Patent No. 20,582 of 1890, for “Improvements in " the method of and apparatus for cutting the ends of fallers." It was alleged in paragraph 2 that the Defendants had infringed the Patent in manner in the Particulars of Breaches mentioned. The Plaintiffs claimed (1) an injunction to restrain the Defendants, their servants and agents, from infringing the Patent; 20 (2) damages ; (3) delivery up or destruction of all articles in the Defendants' possession constructed in infringement of the Plaintiffs' Patent; (4) costs ; (5) further or other relief.

In the Particulars of Breaches it was alleged that the Defendants had committed the infringement complained of by the manufacture, sale, and use of 25 machines constructed in accordance with the Specification of the Patent and claimed in all the claiming clauses thereof. In particular it was stated that the Defendants had, in September 1894, manufactured and sold to Taylor, Wordsworth, & Co., of Leeds, a machine constructed according to the Specification.

30 In addition to a denial of the allegations contained in the Statement of Claim, the Defendants by their defence (1) denied that the Plaintiffs were the proprietors of the Patent ; (2) denied that the Defendants had infringed the Patent. The 3rd paragraph of the defence was as follows :-“ If the Specification of the “ alleged invention in respect of which the said Letters Patent were granted, 35 “ properly construed, is wide enough to include anything done by the Defen“ dants, then the said Letters Patent are invalid by reason of the matters set “ forth in the Particulars of Objections delivered herewith.”

In consequence of an objection raised by the defence that the Company were not the proprietors of the Patent at the date of the alleged infringement and 40 that there had been no assignment of any right of action, Varey was joined as a Plaintiff in his own right.

The following Particulars of Objections were delivered by the Defendants :“ 1. The persons to whom the Letters Patent were granted were not nor was “ either of them the first and true inventors of the alleged invention. 2. The 45

alleged invention was not useful. 3. Having regard to the state of common “ knowledge (and to the matter stated in paragraphs 5, 6, and 7 hereof) the “ alleged invention was not proper subject matter for a Patent. 4. The “ Complete Specification of the alleged invention does not particularly describe " the nature thereof or the manner in which the same is to be performed, 50 “ inasmuch as there is not a sufficient description of the adjustable radial plate U “ or of the thin clip plate V to enable the alleged invention to be carried into “ practice. The said Specification is also insufficient and unintelligible in that “ it does not show how the pulley 2 is connected by trains of gearing 4 and 5 “ with the spur wheels 6 and 7. 5. The alleged invention was not novel at 55 “the date of the said Letters Patent having been published in this realm by

John Varey, Limited v. Walker, Mitchell, & Co.

66

“the publication at the Patent Office of the following Specifications :

(a) Smith's Patent, No. 5,369 of 1881, page 6, line 50, to page 8, line 38, and

Figs. 12 and 13, relied on with reference to Claims 1 and 2 of the Specification “ of the alleged invention ; (6) Smith & Coventry's Patent, No. 5917. of 1882, 5 page 5, line 57, to page 7, line 16, together with Figs. 6 and 7, relied on with

“ reference to Claims 1 and 2 of the Specification of the alleged invention ; “ (c) the Complete Specifications of Grierson and Thomas O'Maher, No. 2,138 “ of 1883, and of Henry Greenwood, No. 4,652 of 1885. The whole of these

“ Specifications relied on with reference to Claims 1 and 2 of the Specification 10 “ of the alleged invention. 6. The alleged invention was also published in

“ this realm prior to the date of the said Letters Patent by the publication at “the Patent Office of the following American Specifications :-(a) Wheeler's “ No. 129,876 ; (6) Cosgrove's No. 282,704 ; (c) Newton's No.319,302; (d) Pratt's

“ No. 323,202 ; (e) Hadley's No. 330,581. 7. The alleged invention was also 15 “ published in this realm prior to the date of the said Letters Patent by a

“ machine tool put into use in the year 1887 by Messrs. Hall & Stell, of Keighley, “for preparing faller bars. 8. The third claim, inasmuch as it claims every

attachment for gripping the faller bars, is a claim to a principle of construction

“and is not proper subject matter for a Patent.” 20 The following description of a “faller " will serve to explain the alleged

advantages of the Plaintiffs' machine when used for their manufacture :A “ faller" is a long steel bar with teeth in it very similar to an ordinary comb. It is used for drawing and straightening wool and other fibres such as flax,

jute, &c. The fallers are placed on a preparing machine or gill box which is 25 so constructed that the faller rises up at the back from the bottom serew end,

combs the fibre along the machine, then falls down at the frout or other end, disengaging itself from the fibre, passes back underneath the top screw of the gill box and then rises up again and catches the fibre again. In order that this

may be done, it is necessary that the faller should be grooved at the sides near 30 each end of the bar in order to keep the fallers steady and from slipping

sideways; the ends of the bar must also be cut out at a particular angle so as to enable the faller to run in the screws at the sides of what is called the gill box and do the work before intimated. A model gill box was produced in

Court. 35 The action was tried at the Leeds Assizes before Mr. Justice GRANTHAM

without a Jury. Tindal Atkinson, Q.C., and R. A. Shepherd (instructed by North & Sons, of Leeds), appeared for the Plaintiffs; Neill and Walter Beverley (instructed by Spencer and Clarkson, of Keighley), appeared for the

Defendants. 40 John Waugh, C.E., of Bradford, gave evidence on behalf of the Plaintiffs. He

said that the Plaintiffs' machine was exceedingly ingenious, the special feature being that it enabled certain cuts to be made simultaneously on the end of the “ faller." He believed the defence was practically that the machine had been

anticipated in a number of Patents, but not one of them did similar work to 45 that accomplished by Plaintiffs' apparatus. He was of opinion that the

Defendants' machine did the same work as the plaintiffs', being practically the same device. He pointed out that the cutting of the fallers in one operation makes them mechanically more correct, inasmuch as re-adjustment

is saved. With regard to the Plaintiffs' second Claim for “the combination 50 “ of the vertical slide plate 2 with the adjustable radial plate U and the

" thin clip plate V," the Defendants' machine had all these parts working in combination.

Tindal Atkinson, Q.C., and R. A. Shepherd for the Plaintiffs. Prior to the Plaintiffs' invention no machine was ever thought of that would groove the 55 sides of the fallers and cut the ends at one and the same time. There were

machines for grooving the sides and also for cutting the ends, but the processes John Varey, Limited v. Walker, Mitchell, & Co.

were separate and distinct, and the faller bar had to be reset after each operation.
Part of the present machine is new and part is old. The new part is the plate
which grips the faller between the groove at the side and the end and holds it
in such a way that it can be adjusted to any angle, and also held firmly so that
it will not twist or get out of shape. The combination of these parts is what is 5
claimed. In the case of a Patent for a combination which consists of new and
old parts, if the combination as a whole is claimed, it is not necessary to
specify which of the parts are new and which old (Frost's Law of Patents,
page 214 ; Forwell v. Bostock, 4 De G. J. & S. 298). The question always is :

Has the combination in substance been taken ?" The thin plate V which 10
grips the faller bar can be so adjusted that the end of the faller bar can be cut
at any angle. In the Defendants' machine the clip plate is moved by a bolt and
nut instead of a wheel and screw. This is not a substantial difference. This
part of the combination is new and useful. According to the rule in
Sellars v. Dickinson (5 Exch. 312) the Defendants have committed a breach 15
of the Patent Law. The Defendants' third Objection fails because there
may be a valid Patent for a new combination of materials previously in use
for the same purpose, or for a new method of applying such material (per
Lord Eldon in Hill v. Thompson, 1 W.P.C. 237).

Samuel Hey, Patent Agent, of Keighley, called on behalf of the Defendants, 20
gave evidence to the following effect :--It would be quite impossible
to make the machine from the description in the Plaintiffs' Specification.
For instance, (1) the clip plate "V" is described as being held in a certain
manner upon a radial plate « U," but as this clip plate is only shown in an end
elevation of the machine (Figs. 3 and 5), and no further reference is made to it 25
in any of the other figures, it is impossible to tell what it is like as viewed in
any other direction, what position it occupies in the machine, and how it is
made to work ; (2) the slide plate “0” and screw “P” are referred t'', but
they are only pointed out in Fig. 2, and there is nothing to show their position
with regard to the gauntry. With regard to the Claim 1, machine tools with 30
milled cutters are so common and well known that the Plaintiffs are bound by
the strict letter of their claiming clause. The following differences may be
noted between the Plaintiffs' machine and that of the Defendants' :-(1) The
Defendants' cutters are mounted on brackets in a different manner. (2) The
means of operating the cutters (M) to cut the groove are different. In 35
the Plaintiffs' machine they are pressed into action by weights or springs. No
such weights or springs are used in the Defendants' machine, the motion being
obtained through the medium of a bell-cranked lever connected with the
sliding block. (3) The method of determining the course through which the
cutters (M) advance is by means of an arm referred to in the Specification 40
as “V?." There is no such arm in the Defendants' machine. (4) The radial
plates are quite different in the two machines, and that used by the Defendants
is well known in machine tools. (5) The Defendants have nothing corresponding
to a clip plate marked V which is an integral part of the Plaintiffs' machine.
With regard to Claim 2, the Defendants have got the slide plate which is 45
common to many old machines. The radial plate on the Defendants' machine
is old, and is different to that used by the Plaintiffs. With regard to
Claim 3, inasmuch it claims every attachment for gripping faller bars, it
is a claim to a principle and therefore invalid. There are many different
methods of holding faller bars. The Defendants have had a holder in use 50
for upwards of ten years, different from that which they now attach to their
machines.

Cross-examined.--The purpose of the Defendants' machine is certainly the same as that of the Plaintiffs'. Hall 6 Stell's machine, with certain slight mo lifications, would produce the same result. Mr. Bottomley designed the 55 Defendants' machine without having seen the Plaintiffs' Specification.

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John Varey, Limited v. Walker, Mitchell, & Co.

Neill and Beverley for the Defendants. — Though in Jupe v. Pratt (1 Webs. 145) it is said that if a man not only discovers a principle, but invents a way of carrying it into effect, he may protect every way of

carrying that principle into effect; still that decision has received consider5 able modification in more recent cases. In The Automatic Weighing Machine

Company v. Knight (6 R.P.C. 297) the Patentee had invented a new kind of machine, and claimed it in the widest terms; but the Court of Appeal decided that the Patent was not infringed because the Defendant, although he had produced

the same result, had done so by different means, and had not taken the essential 10 features or underlying principle of the Plaintiffs' invention. So here, even if

the Plaintiffs' invention embodied a new principle, there is no infringement, because the two machines are essentially different in their means of obtaining the required result. The problem with which the plaintiffs had to contend,

when designing their machine, was to get the proper relative traverse of the 15 side cutter. The Plaintiffs met the difficulty by drawing the side cutter

forward against the guiding plate, so that a guide plate attached to the bracket carrying the side cutter was kept by a weight or spring in contact with a guiding surface on the clip plate Ù. The adjustable plate is brought to press

against the edge of the clip plate, and for that purpose the bracket carrying the 20 slide plate must be swivelled. None of these features are present in Defendants'

machine, and they are essential to the success of the Plaintiffs' machine. A Patent cannot be taken out for a principle ; but a Patent may be taken out for a principle coupled with a mode of carrying the principle into effect, provided

the Patentee has not only discovered the principle, but invented some mode 25 of carrying it into effect (Jupe v. Pratt, 1 Webs. 145). Here the plaintiffs'

machine was merely an improvement on a well-known type of machine, and in such a case the wide protection suggested in Jupe v. Pratt does not exist, and the doctrine of mechanical equivalents does not apply (Curtis v. Platt, L.R.

3 Ch. D. 135), and, the Defendants' means of obtaining this result being 30 essentially different from the Plaintiffs', there is no infringement of Claim 1.

The mere fact that the same result is produced in each machine does not necessarily mean infringement; but the result must be produced by substantially the same means (Nordenfelt v. Gardner, 1 R.P.C. 61). It does not follow that

because a new result is produced the invention must necessarily be entitled to 35 wide protection. In Williams v. Nye (7 R.P.C. 37) a new result was produced

such as is relied on here; what formerly had been done in two operations was done by Williams' machine in one, yet the Court of Appeal held the invention invalid for want of subject matter. With regard to the second claim in the

Specification, a vertical slide plate such as Q is common to all old machines 40 such as planes. A radial plate is also old, and the only novel element of the

combination is the clip plate V, which is the essential feature of the combination. The 'laintiffs must be held to the elements claimed in combination (Dudgeon v. Thompson, L.R. 3 App. Cas. 34). The Defendants have not the

clip plate V, nor any equivalent for it. Their clip is an old one, and the 45 combination of the three elements in their machine is an old combination. If,

therefore, Claim 2 is infringed the Patent must be invalid. In Claim 3 the Patentees claim the thin clip plate V, or any other holding device. There are no limiting words, such as “substantially as described,” which were to be

found in the first claim in The Automatic Weighing Machine Company v. 50 Knight (6 R.P.C. 113). Here the Patentee claims every sort of holding device,

and the claim is for a principle of construction, and is bad. If, however, the claim is limited to the thin clip plate V, or something substantially the same, there is no infringement, as the Defendants' clip is an old and well-known one.

Moreover, the Plaintiffs' Specification is not sufficiently clear to enable the 55 Patent to be carried into effect. A description must be given so as to be

intelligible, and to enable the thing to be made without further invention-not

John Varey, Limited v. Walker, Mitchell, & Co.

by an ordinary workman, but by a person described by Lord Ellenborough in Huddart v. Grimshaw (1 Webs., pp. 85, 87) as a person skilled in the particular kind of work or a person conversant in the subject. But the description must not involve the necessity of experiments (per Lord Chelmsford, C., in Simpson v. Holliday, L.R. 1 H.L. at page 321). It is 5 submitted that experiments would be necessary in this case. [GRANTHAM, J.A skilled mechanic would understand the drawings.]

Shepherd in reply.—The Defendants' machine is an infringement of ours apart altogether from the question of combination. Ours is the first machine able to produce faller bars complete. With regard to the combination, if we produce the 10 same result in a more speedy manner the case of Curtis v. Platt does not apply. There the Patentee claimed the novel construction, combination, and application of certain parts of a spinning mule. In that case Lord Westbury said :—“If “ the idea be nothing more than a discovery of a road to attain a particular end, “ it does not at all interfere with another man discovering another road to 15 “ attain that end.” But here our method is infinitely more speedy than any method previously known or understood. It is not necessary that the Plaintiffs' Specification should explain the novelty and merit of the invention (Proctor v. Bennis, L.R. 36 Ch. D. 740; 4 R.P.C. 337). Moreover, where a Patent is taken out for a combination, it is not material to its validity that the 20 Specification should point out what parts are old and what are new (Proctor v. Bennis).

GRANTHAM, J.--This case has been very ably argued by the learned Counsel who have appeared before me, and, although it may not be usual to hear and decide Patent cases on Circuit, I think neither of the parties bas suffered from 25 the way in which the case has been conducted. Many objections have been raised to the claim of the Plaintiffs. First, it has been contended that the Specification and drawings are not sufficiently clear to enable an ordinary skilled workman-such a workman as would ordinarily be engaged in the manufacture of milling machinery—to make the machine without bringing to 30 bear his inventive faculties as well as his mechanical skill, and particularly in three points (1st) the absence of a wheel on sheet 2, Figs. 3, 4, and 5; (2nd) the position of the washer in Fig. 5 ; (3rd) the omission of a catch to throw the lever bar 13 on Fig. 2 into gear on the return action of the gearing wheel No. 10. Taking any one of those objections by itself, I do not think it could be said 35 that a skilled mechanic would not understand the drawings sufficiently with the aid of the letterpress to make the machine. Though the absence of the missing wheel is certainly not an unimportant omission, yet, taking the whole contrivance together, the object being so well known by its description in the Specification, I think I ought not to say that the Patent is bad because it is 40 alleged that there are three details which may require some mechanical skill to work them out. Take, for example, the washer. It may be that the drawing would indicate that the nut screwed down on the washer would bite and fasten together the three plates instead of two, though I am not convinced that it does so indicate it; but the letterpress clearly shows that the drawing is not to be 45 read in that way, and therefore I come to the conclusion that the Defendant fails on that argument in resisting the Plaintiff's claim.

We now come to a more difficult question, namely, whether or not the claim of the Plaintiff is for a Patent for a new principle, or only for a new combination to work out an old principle. It was argued that because the Plaintiff 50 described his Specification as one for improvements in the method of and apparatus for cutting the ends of fallers, therefore it was admittedly only a combination to work out an old principle, hut I do not think that is necessarily so. In Proctor v. Bennis (36 Ch. D. 740) the Specification was described as having for its object improved and self-acting mechanism for supplying fuel 55 and distributing it over a fire, yet that Patent was held to be good and to have

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