Scottish Court of Session Decisions

¹ Cornelius Whitehouse of Wednesbury, Staffordshire, obtained letters patent, applicable to both Scotland and England, as for improvements in the manufacture of tubes for gas, &c., and he lodged a specification of his improvements in common form. He assigned the patent to James Russell of Bescothall, Staffordshire, who raised an action of declarator, interdict, and damages against Andrew Crichton, smith, and gas-tube manufacturer, Glasgow, alleging that he was infringing on the patent. In making up a record, Russell averred that the improvements in question were new, and were the invention of Whitehouse, and were duly set forth in the specification. He also averred that Crichton manufactured gas-tubes “according to the modes described in the specification of the invention;” and that he violated the principle and modes of manufacture there specified. Crichton denied that the alleged improvements were new, or were the invention of Whitehouse. He also denied that he infringed on the specification, or violated the principle and modes there set forth; and in his statement of facts, he explicitly alleged that “the mode of manufacture set forth in the pursuer's specification is not new, nor invention, having been known and practised, or at least substantially known and practised, previous to the date of the pursuer's patent, and that by manufacturers of tubes in Glasgow or Edinburgh.” He also alleged that “he has all along manufactured, and is now manufacturing, gas-pipes, or tubes, according to a mode of manufacture, known and practised, at least substantially, in Glasgow, Edinburgh, or elsewhere in Scotland, prior in date to the pursuer's patent—the pursuer having only made some alterations or improvements upon the method of manufacture referred to;” and, in particular, that he did not “violate any new mode or useful invention.”

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¹ See a previous stage of this case, ante, XV. 1270.

The defender refused to specify the details of his manufacture, alleging that they involved a valuable secret which was unprotected by a patent. The Court ordered an inspection of the manufacture, as already reported. ¹ Russell pleaded, that as his patent was free from all objection, and was infringed, he was entitled to interdict and damages as concluded for. Crichton pleaded, that, as he had not infringed the patent, the action was groundless; and that Russell could not “found upon his specification or patent, excepting in so far as the principle therein set forth is properly new, and of the nature of a useful invention.”

The following draft of an issue was prepared by the jury clerks:—“It being admitted, that on the 25th day of May, 1825, one Cornelius Whitehouse of Wednesbury, by letters patent, No. 3 of process, obtained for the period of fourteen years, from the said 25th day of May, the exclusive privilege of manufacturing tubes for gas and other purposes, according to the specification and particular description, of which No. 4 of process is a copy; and that, on the 12th day of June, 1830, the said Cornelius Whitehouse transferred to the pursuer his right in the said patent—

“Whether the defender, by himself or others, did at Glasgow, during the year 1836, and subsequent to that year, without the consent or permission of the pursuer, and in contravention of the privilege granted by the said letters patent, wrongfully manufacture, or wrongfully cause to be manufactured, certain tubes by machinery or means substantially and in effect the same with the machinery and means described in the specification aforesaid, to the loss, injury, and damage of the pursuer?”

To this the defender objected, in respect that the pursuer was bound to take an issue whether his alleged improvement was new, and truly an original and useful invention. Though the pursuer had obtained letters patent, these passed without any contradictor, and were obtained periculo petentis. It therefore lay on the pursuer to prove the affirmative of such an issue, as the patent was not otherwise of any legal force. But if this was not necessary for the pursuer, the defender was at least entitled to take an issue of denial of the invention, for which his statements on the record were sufficient. The pursuer answered, that, before obtaining his letters patent, evidence was submitted to the Officers of the Crown, such as to satisfy them that the improvement was truly an original and useful invention; and, as holder of the patent, he had at least a prima facie proof of invention in his favour, so as to lay the onus on the defender to disprove its originality. But independently of this, there was no means by which a pursuer could absolutely prove the originality of any invention; for that resolved itself into the negative that nothing similar ever existed before. And in such a matter, it rested with the defender, who denied the originality, to disprove it, as he could easily do if his averments were

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¹ July 11, 1837 (ante, XV. 1270.)

true, by adducing evidence of the previous existence of the alleged improvement. And as to the issue asked by the defender for himself, he could not take it without amending his record.

The Lord Ordinary “approved of the issue proposed by the pursuer, and appointed parties' procurators to be ready to close the record, unless the defender intimated his intention to take an issue on the denial of the invention, and asked permission to amend his averments in reference to such issue.” ^*

The defender reclaimed.

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* “ Note.—Though the summons contains narrative, the statement, that the process of manufacture for which the pursuer obtained a patent was an invention, it appears to the Lord Ordinary that the patent itself forms the pursuer's title, and is a sufficient title, until impeached on some legal ground. No doubt, as the patent was obtained on statements entirely ex parte, it offers in itself no bar to a challenge, but admits of being impeached by way of exception. But then that exception forms properly part of the defender's case, and if it is to form the subject of an issue, it must be the subject of an issue taken by the defender, who of course must make in the record the averments necessary to warrant such an issue.

“In these circumstances, the Lord Ordinary thinks the issue proposed to be taken by the pursuer ought to be approved of. Indeed, the other course would expose him to great inconvenience. For if the novelty of the process, or the averment of invention was to be made part of his issue, it is clear he could not bring any conclusive evidence on the matter. The averment of invention, though in form an affirmative, is in substance a negative, as it resolves into a denial that the same mode of proceeding was previously known to or practised by any other person. All the evidence that could be got would be only evidence of opinion, that in so far as the witnesses knew, such process was not previously known or practised; while, on the other hand, the defender could be required in the record to do no more than deny or not admit the averments of the pursuer on this point, and would be enabled to bring any specific evidence he chose of the fact of such process being previously in use, without any notice to the pursuer. And accordingly, the defender's statements on this point are very vague, and give no precise information on the subject. No doubt, if this course were pursued by a defender, there might be room for challenge of the verdict on the ground of surprise. But it is obviously much better to prevent all hazards of this kind, by obliging the defender to make the challenge of the patent in form, as it is in substance, part of his case.

“On these grounds, the Lord Ordinary thinks, that whether the nature of the pursuer's title be considered, or the obvious expediency of the course of procedure, which he holds to be a legitimate inference from it, the propriety of that course is equally clear. The issue, as proposed by the pursuer, must be held as the correct issue for him to take; and if the patent is to be challenged by way of exception, on the ground that there was no invention, that must be done by an issue taken by the defender, to support which there must be some distinct statement on the record of the specific facts on which the affirmative truly involved in this issue rests.”