Scottish Court of Session Decisions

This was an appeal from the Sheriff-Court of Lanarkshire, against the interlocutor of the SheriffZ-Substitute ( Clark). On July 1869 Mr Thomson, an engineer in Glasgow, presented a petition to the Sheriff against Dubs and Co. Locomotive Engine-Builders, Glasgow, setting forth that the petitioner is the inventor of ‘improvements in tools or apparatus for expanding and cutting tubes and metallic rings, part of which is applicable for withdrawing ferules from the ends of boiler tubes.’

“That this invention was protected by letters-patent, dated 18th August 1868, and sealed the 16th February 1869, a copy of which is herewith produced.

That in the specification filed by the petitioner on the 17th February 1869, in pursuance of the conditions of said letters-patent, the said invention is described as consisting, inter alia, of (first), ‘The arrangement and construction of tube and ring expanders, in which expanding cones are placed in a reverse position to a central cone, having a proportional amount of taper by which the whole length of the sides of the expanding cones are brought to bear simultaneously against the sides of the ring or tube, as described in said specification, and shown on the drawings accompanying the same; and (second), The method of expanding or pressing the cones against the tube or ring by means of a nut placed on a central screwed spindle, as also therein decribed, and shown on the accompanying drawings.’

This invention has in practice been found to be greatly superior to the tools or apparatus formerly in use for expanding and cutting tubes, &c., and has led to a considerable demand for it, and also to several attempts to infringe the petitioner's patent therein. Among others, the respondents, Dubs and Company, have infringed the rights secured to the petitioner by said patent, by making, using, and vending tools or apparatus for expanding tubes and metallic rings, made according to one or other of the modes in which the said invention is practically carried into effect, set forth in said specification, and drawings accompanying the same, or which are such close imitations thereof, particularly of the mode illustrated by figure seven on said drawings, as not to be distinguishable from the same, and that without holding any authority or licence from the petitioner for so doing.

That the petitioner has frequently desired and required the respondents to desist from so making, using, and vending such tools or apparatus, but they refuse, at least delay so to do, which renders the present application necessary.” The petitioner therefore prayed for interdict against the respondents making, using, or vending, tools such as those specified, and described in the letters patent.

On July 20th 1869, interim interdict was granted, and thereafter a proof at considerable length was entered into. Ultimately the Sheriff-Substitute ( Clark) pronounced the following interlocutor and Note:—

Glasgow, 13 th May 1872.—Having heard parties' procurators, and made avizandum, Finds that in 1868 the petitioner obtained letters-patent for the invention of ‘Improvements in tools or apparatus for expanding and cutting tubes and metallic rings, part of which improvements is applicable for withdrawing ferules from the ends of boiler tubes,’ and that these were dated the 18th February 1869, the specification of which forms No. 6 of process: Finds, for the reasons set forth in the subjoined note, that without obtaining any authority or licence from the petitioner, the respondents have infringed the rights secured to him by the said patent, to his loss and damage, therefore declares the interdict already granted perpetual: Finds the respondents liable to the petitioner in expenses: Allows an account thereof to be given in, and remits the same, when lodged, to the Auditor of Court to tax and report, and decerns.

Note.—In 1868 the petitioner obtained letters-patent for the invention of ‘Improvements in tools or apparatus for expanding and cutting tubes and metallic rings; part of which improvements is applicable for withdrawing ferules from the ends of boiler tubes.’ These were dated the 18th August 1868, and were sealed the 16th February 1869, and form No. 6 of process. The invention thus secured by patent was found valuable, and capable of being made the source of considerable emolument to the petitioner.

The petitioner avers that the respondents have infringed the right of monopoly so secured to him, and have made and vended tools and apparatus intended; for the same purposes, and either practically identical with, or such close imitations of, his invention, as not to be distinguishable therefrom. He has accordingly brought the present action of interdict.

In answer, the respondents do not deny that they have made and used tools and apparatus for the purposes foresaid, but they allege various grounds in respect of which they consider the present application incompetent. These grounds may be briefly stated as follows:—1. They impeach the petitioner's patent on the ground that he was not the true and original inventor. 2. They contend that they themselves had invented and perfected the tube expanders which they are sought to be interdicted from using; and that the petitioner's alleged invention was a mere copy of this, fraudulently abstracted from their works, and made the subject of the letters-patent. Lastly, they contend that the alleged improvements on which the petitioner now stands are not in fact covered by his patent.

The evidence led on both sides has been very voluminous, and though the Sheriff-Substitute has gone very carefully over it, he does not think it necessary to do more than refer to its general results. Now that the proof has been closed, it is obvious that a certain portion is irrelevant, and that much might have been dispensed with altogether.

The first ground of defence impeaches, as already stated, the validity of the letters-patent as not being warranted by originality on the part of the inventor. Now, it is unquestionably sound law that when it can be shown that the invention for which a patent has been obtained is not that of the patentee, his patent is worthless, and will secure him no monopoly. But it must be observed that the onus of proving this lies on the respondents, for the patent itself is prima facie evidence of originality. See as to this Russell v. Chrichton. 19th June 1838, 16 S., 1155. In point of fact, this

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must be so, for otherwise the advantages of letters-patent would be very elusory; in every case of in-fringment the patentee would have to establish the originality of his invention, and the same proof would have to be repeated as often as new contraventions of his rights had to be repressed. Starting then from the presumption raised by the letters-patent, the real question comes to be, Have the respondents succeeded in proving that the invention patented was not that of the petitioner?

Now, after carefully and anxiously weighing the evidence, the Sheriff-Substitute has come to be clearly of opinion that the respondents have entirely failed in establishing their contention. In this, as in other inventions of a mechanical kind, the root or germ is often to be traced back to previous inventions, and many surrounding appliances often exist to which it bears a certain resemblance. Yet this is no objection against its originality, so long as the application is new, or the improvement marked. The men who invented moveable types, patent floats, or breach-loading rifles, were not the less entitled to originality because their inventions were improved applications of appliances already known in less perfect forms. It is necessary to keep this principle in view in the present case; because otherwise much of the evidence led by the respondents might seem to have a weight beyond its real value. It would appear that for some time past various devices for expanding tubes were in operation in the trade—one patented as Dudgeon's being very much used. They all, however, were found to labour under certain grave disadvantages, and it is plain there was room for the efforts of a successful inventor. As far back as the year 1867 the petitioner, it appears had hit upon what seemed a plain improvement, viz., that which constitutes the principle of the invention of his patent. The mode of best applying this principle he improved from time to time; and by April 1868 he had got a tool made in Dixon's Ironworks, in which it was so well applied as to be used with great and obvious advantage. Still further improvements suggested themselves, and at length, in August following, he lodged his provisional specification, and in February 1869 the final specification, when the patent was sealed. In all these, from first to last, the principle was entirely the same—the variations constituting the improvements being simple in the details. Up to the date, at least, of the provisional specification, no other person had hit upon or utilized the petitioner's discovery; and therefore he is plainly to be considered the original inventor.

On the other hand, it would appear that the respondents had likewise come to be aware of the imperfections of the existing tools, and particularly those of Dudgeon's patent, one of whose tools they had purchased. It would then appear that they set about making some improvements, or attempted improvements, of their own, and in one way or another ended with producing the tools for the making of which they are sued under the present action.

Now, assuming for the moment that the respondents, without any hint from the petitioner, had, by following out their own investigations, arrived at the same results in substance as did the petitioner, the question arises, Would this entitle them to impeach the petitioner's patent? Certainly not—unless, indeed, they could show that they had made their invention public before the petitioner lodged his provisional specification. For in point of fact the monopoly which a patent confers is granted in the interests of the public; and he only is entitled to such patent who first makes his invention public. To fall upon a new invention, and to keep it secret, benefits no one. It is not, therefore, the priority of invention, but the priority of discovery, in which the public is concerned. (See Smith v. Davidson and Wilson, March 11,1857, 19 D. 601.)

But it does not appear to the Sheriff-Substitute that the facts disclosed in evidence warrant even this view in the present case. There is really no evidence of even similtaneous invention. It would rather appear that the respondents got their idea of the tools they are now interdicted from making from the petitioner's invention, and that they only succeeded in making them after the provisional specification had been lodged.

The second ground of defence is—that the petitioner actually purloined from the respondents the very invention which he now seeks to interdict them from using. The Sheriff-Substitute cannot but regret the incident which they have laid hold of to support this allegation, reflecting as it does anything but credit on the conduct of the petitioner's son, and saying very little for the workmen who did not at once report such proceedings to their employer. But it does not appear that the petitioner was himself any party to this affair, and—what is of still more importance,—it is clear that it has no bearing on the present question. The alleged purloining took place long after the provisional specification had been lodged, and therefore could have nothing to do with priority of invention. It was argued, no doubt, that the final specification differs greatly from the first, and that it was just the idea caught from the respondents' draft that enabled the petitioner to make the changes in the latter. The facts, however, do not come up to this. It must be observed that so long as the original specification clearly embodies the principle, it is quite legitimate to make in the final specification such alterations in detail as may seem necessary; and it does not appear that in the present case there is any greater difference between the one specification and the other than this amounts to. Even if it could be shown that the respondents had arrived at the same results with the petitioner before his final specification was lodged, this would avail them nothing unless they could also show that the second specification was not a legitimate expansion of the first, or that they had made their invention public before the first specification was lodged. The Sheriff-Substitute is unwilling to moot the question at all, but if it were necessary for the decision of the case, he would rather be inclined to the opinion that the respondents had unwarrantably possessed themselves of the petitioner's invention, than that the petitioner had purloined their diagrams to enable him to complete his final specification.

The last ground relied on by the respondents, viz.—that the improvements on which the petitioner takes his stand as having been infringed by the respondents do not fall under his patent, does not appear to rest on any solid foundation. If these improvements, as they are termed by the respondents, are not covered by the specification, it is difficult to see what is covered by it. All the figures annexed to the specifications are mere illustrations of the same principle. They differ in details of drawing; but that is of no moment. The

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invention is one; the applications may be various, and any one who contravenes the patent in one of its applications is guilty of infringment of the monopoly, and ought to be interdicted.

In conclusion, the Sheriff-Substitute would remark that in dealing with the evidence, and more particularly the productions, he has, in regard to the construction of the words of the specifications, and the question of identity or non-identity of the tools, been guided by his own judgment; but has been glad to find it confirmed by the weight and general drift of the scientific evidence. He grounds his judgment in the following propositions:—The patent is ex facie proof of original invention; the general drift of the evidence supports this presumption. Simultaneity of invention cannot avail against priority of discovery; the respondents have since the date of the patent made and used tools of the kind falling under its monopoly without license from the petitioner; he is therefore entitled to interdict as craved.”

The petitioner pleaded (1) That being the inventor and patentee of improvements in tools or apparatus for expanding and cutting tubes and metallic rings, he had the exclusive right, by himself or those duly authorised by him, of making, using, and vending the same. (2) That the respondents having infringed the petitioner's rights, and having refused to desist from so doing, he was entitled to interdict against them as craved. And (4) that the right to the invention in question being recognised and secured by the letters-patent founded on, the defenders could not competently challenge that right in the present action.

The respondents pleaded in answer (1) that they were entitled to be assoilzied, having in no way infringed the patent. (2) That the pursuer was not entitled to interdict, as not being the true and first inventor of the improvements in question. And (4) that the pursuer having fraudulently, collusively, and improperly acquired and abstracted the defenders' improved tube expander, or the drawing or tracing thereof, his right or supposed right to the same under the alleged letters-patent was void, and the same should be disregarded, as giving him any ground for asking the interdict craved.

Authorities—Coryton on Patents, 92, 93, 94, 99 and 259; Newall v. Elliot, 27 Law Jour. (C. P.) 337; Hously v. Campbell, March 6, 1843, 2 Bell's App. 44; Carpenter v. Smith, 9 L. and W. 300; Sykes v. Wilson &Sons, Feb. 2, 1866, 4 Macph. 350; Peun v. Bibly, Nov. 1866, 2 Law Rep. C. App. 127; Macnee and Others, June 12, 1855; Peale and Mandatory, Feb. 28, 1863.

At advising—