Scottish Court of Session Decisions

By letters-patent, dated 7th March and sealed 13th July 1866, George Tomlinson Bousfield, of Loughborough Park, Brixton, in the county of Surrey, secured for himself, his executors, administrators, and assignees, the sole and exclusive privilege, during the term of fourteen years from the date of the said letters-patent, of using, exercising, and vending within the United Kingdom of Great Britain and Ireland, the Channel Islands, and the Isle of Man, an invention of “Improvements in apparatus used in expanding boiler ‘tubes,’ a communication from abroad by Richard Dudgeon (the complainer), residing at New York, United States of America.” The said letters-patent were applied for and obtained and held by the said George Bousfield on behalf of, and as trustee for, the said Richard Dudgeon, to whom they were afterwards assigned.

In pursuance of the proviso contained in the said letters-patent, the said George Tomlinson Bousfield, on 30th August 1866 duly filed in the Great Seal Patent Office a specification, dated 30th August 1866, particularly describing and ascertaining the nature of the invention, and in what manner the same was to be performed.

The specification set forth that “the object of the invention is to enable the ends of boiler tubes to be expanded in the holes in the flue-sheet. Previous to this invention, it has been customary to expand the ends of tubes by an expanding tool, composed substantially of a series of swages radiating from a common centre, and caused to diverge by means of a tapering plug driven into the centre of the tool by the repeated blows of a maul or sledge.”

The specification then proceeds—“The principle of the invention, which constitutes the subject matter of this patent, is to expand the tube by rolling the metal, by the application of one or more pressure-rollers to the interior of the tube, so that the metal is expanded by rolling, in contradiction to the old system of driving it outwards by hammering, and as the roller can be operated by hand, the use of mauls or sledges, and all the inconveniences that attend their employment, are dispensed with.”

The specification after setting forth in detail the mechanism of the instrument patented, as well as the manner of working it, including descriptions of various modifications of the tool, concludes thus:—

“In all the above described modifications of the expanding tool, at least one roller combined with a tapering plug (or its equivalent, by whose action the roller is forced outwards in the tube), and with a stock or holder by which the roller is prevented from twisting sidewise as it is turned round in the tube. These three instrumentalities are all that are absolutely essential to the construction of the roller expanding tool, but the cutter and ratchet handle constitute, with the said instrumentalities or implements, useful combinations which are supplementary to the aforesaid fundamental combination. What is claimed, therefore, as the invention to be secured by letters-patent, is the combination in an expanding tool of the following implements, viz., the roller, roller stock, and expanding instrument,—these three operating in combination substantially as set forth.

Also the combination in an expanding tool of the following implements, viz., the roller, roller stock, expanding instrument, and cutter for trimming the tube, all operating in combination substantially as set forth.

Also the combination in an expanding tool of the following implements, viz., the roller, roller stock, cutter, and a ratchet handle for turning it, all operating in combination substantially as set forth.”

On the other hand, the respondent obtained letters-patent, dated 18th August 1868, and sealed the 16th February 1869, for an invention of an apparatus to be used in the same process as that of the complainer, but for which he claimed novelty and originality in the following particulars:—

“1st, The arrangement and construction of tube and ring expanders, in which expanding cones were placed in a reverse position to a central cone, having a proportional amount of taper, by which means the whole length of the sides of the expanding cones were brought to bear simultaneously against the sides of the ring or tube. 2nd, The method of expanding or pressing the cones against the tube or ring, by means of a nut placed on a central screwed spindle. 3rd, The arrangement and construction of apparatus for cutting metal tubes or rings, in which the cutting tool was pressed against the ring or tube by the tool holder being moved up on an incline. And 4th, The arrangement and construction of apparatus for withdrawing ferules from boiler tubes by means of hooks or claws situated inside of a cylinder and expanded by a central cone.”

On 30th March 1872 the complainer brought the present note of suspension and interdict, praying that the respondent should be prohibited from making, vending, or issuing any apparatus for expanding boiler tubes, constructed or used in the manner described in the specification filed by the complainer, or in any manner substantially the same.

On the 31st January 1873 the Lord Ordinary ( Mackenzie) pronounced the following interlocutor:—

“The Lord Ordinary having heard the counsel for the parties, and considered the closed record, proof, and process, sustains the reasons of suspension, suspends, prohibits, interdicts, and discharges in terms of the note of suspension and interdict, and discerns: Finds the respondent liable in expenses, of which allows an account to be given in, and remits the same, when lodged, to the Auditor to tax and to report.”

“ Note.—The questions raised for decision in the closed record are—

“ First, Whether the respondent has wrongfully, and in contravention of the complainer's letters patent, used the invention described in the said

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letters patent and in the relative specification, or any part thereof? and

“ Second, Whether the letters patent are invalid, in respect (1) of the disconformity of the provisional specification with the letters patent and final specification, and (2) of the misrepresentation in the final specification, and of failure to make a full and true disclosure therein of what is necessary to render the invention effectual, and to enable a workman of ordinary skill to put the same into practice?

“1. The complainer's letters-patent for ‘improvements in apparatus used in expanding boiler tubes’ are dated 7th March 1866. On 18th August 1868 the respondent obtained letters-patent for ‘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.’ This tool or apparatus of the respondent has been extensively manufactured and sold by him since the date of his letters-patent, and the question is, whether the respondent's tube expander is either in whole or in part a tool of the description set forth in the complainer's specification, or of a description substantially the same.

“The Lord Ordinary is of opinion that it is clearly proved that the respondent's tool embraces in all substantial respects the combination or apparatus for expanding tubes patented by the complainer.

“Previous to the date of the complainer's letters patent, boiler tubes were fastened in the boiler plate by means of hammering out the tubes so as to make them fit the holes in the boiler plate, or by driving a conical iron mandril into the tubes with repeated blows of a heavy maul or sledge-hammer, or by means of placing in the tube a hollow iron cone cut into swages or segments, and driving with repeated blows of a heavy maul or sledge a tapered iron plug into the centre of the swages. For the purpose of ensuring tightness, a flat conical piece of iron, with a greater taper, was sometimes in addition driven into the tube by means of a hammer, and made to distend in succession still further the circumference of that part of the tube which was in contact with the boiler plate. In all these modes the expansion was obtained by percussion alone, and the disadvantage was not only that a very large percentage of the boiler tubes was split in the ends and spoiled, but that the adjoining tubes, which had been fixed in the boiler plate, were loosened. By the invention of the complainer these disadvantages were entirely removed. That invention consists in the expansion of the tube, as his specification states, ‘by the application of one or more pressure rollers to the interior of the tube, so that the metal is extended by rolling it, in contradistinction to the old system of driving it outwards by hammering.’ This was a novel and very useful invention. There is no objection stated by the respondent in the record either to the novelty or to the utility of the complainer's invention.

“The essential parts of the complainer's apparatus are the combination in an expanding tool of a roller stock, one or more rollers, and a tapering plug or expanding instrument. Various modes of carrying out the invention are set forth in the complainer's specification. But that which for gener use he gives in preference consists of a roller stock holding in radial slots three or more rollers, which are operated upon by means of a tapering plug passing through the stock and between the rollers. When the apparatus is inserted into the tube to be expanded, the tapering plug upon being forced inwards, and turned upon its axis by means of a wrench or spanner, forces the rollers outwards and causes them to rotate within and to expand the end of the tube.

“The Lord Ordinary is of opinion that the whole of these three essential parts of the complainer's expanding tool have been included by the respondent and claimed in his specification, and that they operate in combination in the respondent's tool substantially as set forth in the complainer's specification. The respondent's tool is, like that of the complainer, composed of a roller stock, three rollers, and an expanding instrument. His roller stock is called in his specification a ‘hollow cylindrical body.’ His rollers are called in one part of his specification ‘expanding cones,’ and in another part ‘conic rollers, and his expanding instrument is called a ‘central cone.’ The sides of his roller stock, as originally constructed by him, were not extended so as to keep the rollers straight when caused to rotate, which made the tool unworkable, and he was obliged twice to extend the stock between the rollers so as to keep the rollers straight. The progress of the respondent's tool is well shown in the three productions, Nos. 28, 29, and 30 of process. The Lord Ordinary considers that all these are mere colourable variations of the complainer's roller stock, and that the last of them only wants a cap fitted on to make it identical. The complainer's rollers work in slots in the body piece. So also do the respondent's. The only difference in the mode of fixing the rollers is that the complainer's body piece having a cap, his rollers are formed with journals at each end so to work and to rotate in radial slots, while the respondent's body piece having no cap his rollers work only at one end in slots, these slots being made dovetailed, or wider below than above, and the rollers being formed with a head like a screw nail so as to catch and rotate in the dovetailed slots. But that mode of connecting the rollers with the roller stock or body piece is, the Lord Ordinary considers, a mere mechanical equivalent for and a colourable variation of the complainer's mode.

“The respondent maintains that his rollers are conical or tapered, and that his central cone or expander has a corresponding taper the reverse way, which produces parallel expansion of the tube, and that there is nothing in the complainer's patent corresponding to. it. But the complainer's specification is not limited to tapered expansion or to parallel rollers, or to any particular form of roller. And while he states that ‘in the drawings the rollers are represented with profiles adapted to expand the tube in the form commonly produced by the old expanding tools,’—that is from within outwards,—he also states that the profile of the rollers ‘should be the same as that of a longitudinal section of the interior of the extremity of a tube when properly expanded.’ To use other words, that is to say, the nature of the expansion being determined on, and the tapering plug or expander being conical, the rollers must be constructed with such a profile as to produce the desired shape. If conical expansion is desired

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then parallel rollers operated on by a tapering plug will produce it, and if parallel expansion is desired then the rollers must be so tapered in the opposite direction that the tapering expander and tapering rollers will be the complement of each other, and make together a parallelogram.

“The respondent also contended that while complainer's plug or expander is tapered inwards and is forced inwards, his expander or central cone tapers from within outwards, and operates by being pulled outwards. Such a distinction as this requires, it is thought, no remark.

“But the respondent further maintained as part of his invention the method of expanding or pressing his rollers against the tube by means of a nut working on a screw placed on his central cone, which nut when turned by a wrench pulls the central cone outwards, and causes it to expand the rollers. This superinduction of a screw and nut upon the tapering expander might or might not have been a good subject for a patent. As to that the Lord Ordinary is not called upon to express any opinion. But even although this had been the case, it cannot warrant the incorporation with it and the claim, as part of the invention, of the complainer's apparatus, or the essential parts thereof. Such an incorporation, and such a claim, as is made by the respondent for the combination patented by the complainer, may invalidate, but cannot strengthen, the respondent's patent, even as regards the screwed expander and nut, supposing these to be new and original, on the ground that the introduction of any one objectionable item into a patent is fatal to the whole.”

“2. The respondent pleads as an objection to the complainer's patent that the title ‘Improvements in apparatus used in expanding boiler tubes’ is misleading, and does not sufficiently disclose the true nature of the invention claimed, which, in addition to claiming an apparatus for expanding boiler tubes, also claims a cutter for trimming boiler tubes, besides other combinations, so that its title and nature are inconsistent with and disconform to each other.

“The Lord Ordinary cannot adopt this objection of the respondent. What the complainer patented was improvements in expanding apparatus. One of the improvements so patented is thus described in his specification:—‘In order that one tool may be used for performing the two operations of expanding the tube and of turning off its end, the expanding rollers and stock are combined with a cutter E, which is arranged to turn upon the stock of the expanding rollers, so that the compound tool thus formed may be used first to expand the tube, and then, by turning the cutter without withdrawing the tool, to trim off the end of the tube. In this case the rollers retain their positions in the groove which they have formed by rolling, and hold the tool in the tube while the cutter is operating.’ That was, the Lord Ordinary conceives, such an improvement in the apparatus used in expanding as to be fully covered by the title of the patent. That is the case also as regards the other improvements claimed by the complainer, in reference to which the objection was not urged in argument. All these improvements are fully set forth both in the provisional and final specifications, and these specifications may be brought in aid to explain the title, which, in the opinion of the Lord Ordinary, they fully do.

“This is sufficient, it is thought, for the disposal of this objection. But further, the title of the patent, and the provisional specification, both received the allowance of the law officer acting in terms of the Patent Law Amendment Act, 15 and 16 Victoria, c. 83. By that statute (sections 6, 7, and 8), which for the first time required a provisional specification to be lodged with the petition for the letters patent, these are to be referred to the law officer acting under the statute; and it is provided that, ‘in case the title of the invention, or the provisional specification, be too large, or insufficient, it shall be lawful for the law officer to whom the same is referred to allow or require the same to be amended.’ The title and provisional specification received the allowance of the law officer, and the objection taken to them cannot, the Lord Ordinary thinks, now be urged. The final specification claims nothing that is not set forth in the provisional specification. The respondent's objection on this ground falls therefore to be repelled—( Penn v. Bibby, 6th December 1866, Law Reports, Ch. App. 2. 127).

“3. The complainer's patent is also said to be bad in respect of misrepresentation in the final specification, and of failure in that specification to make a full and true disclosure of what is necessary to render the alleged invention effectual, or to enable a workman of ordinary skill to put the same into practice. The grounds of these objections are set forth in the seventh statement of the respondent, and are to the effect that whereas the complainer sets forth in his specification that by means of his invention the use of mauls and sledges, and all the inconveniences that attend their employment, are dispensed with, yet in practice it has been found that the invention cannot effect the object without the use of mauls or sledges, or hammers, as a means of forcing in the expanding plug—that any other mode of forcing in the same would be inadequate—and that no other means are provided.

“By the modes in use before the complainer's invention, boiler tubes were expanded by percussion alone. The most common modes were by driving with repeated blows from heavy mauls or sledges a tapered mandril into the tube, or a tapering plug into the centre of a hollow cone cut into segments and inserted in the tube. By the invention of the complainer, the tube is expanded by rolling the metal by the application of one or more pressure rollers to the interior of the tube, so that the metal is expanded by rolling in contradistinction to the old system of driving it outwards by hammering. These rollers are made to diverge and rotate by a tapering plug or expander being forced inwards and turned round and round. The complainer does not limit his mode of forcing the tapering plug or expander inwards to the hand of the operator. He only says, when describing the subject-matter of his patent, that ‘as the roller can be operated by hand,’ the use of mauls or sledges and their attendant inconveniences are dispensed with. It is, the Lord Ordinary thinks, proved that the complainer's tapering plug or expander can both be forced in and turned upon its axis by the hand. Some of the respondent's witnesses said that this could not be done. But numerous witnesses examined by the complainer deponed that they had successfully worked it by the hand. Further, the complainer gives two descriptions of tapering plugs with

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shallow flat screw threads, which draw themselves inwards when turned by the hand, and also an apparatus with the axis of the rollers slightly skewed to the axis of the tube, the effect of which is, as was demonstrated before the Lord Ordinary, to cause the tapering plug when turned in one direction to draw into the tube, and to expand the tube, and when reversed, to loosen itself within the rollers. These three apparatus are worked more easily than the others, but it is proved that the others can also be worked by the hand. It is not, the Lord Ordinary considers, a good objection to the patent, that the workmen, instead of using the hands alone to force the tapering plug inwards, find it easier to give it a slight blow with a light hammer or wooden mallet (not a heavy maul or sledge), so as to place the rollers in position, or to bite the tube before they proceed to turn the tapering plug round, in order to cause the rollers to revolve within the tube, and to expand it by rolling. That is a very different thing from the old practice of expanding by driving an expander into the tube with heavy mauls or sledges. The invention of the complainer is ‘the combination in an expanding tool of the following implements, viz., the roller, roller stock, and expanding instrument, these three operating in combination substantially as set forth.’ It is clearly proved that they do so operate in combination, and produce the required expansion. The mode of applying the requisite power to force the expander inwards is no part of the patent. That may be done by a common brace, or in various other ways. But even if the complainer had by his specification limited his mode of forcing in the expander to the hands of the workman, it is proved that the said three implements operating in combination can be worked by the hands alone, and that when so worked they will produce the desired expansion. There is thus, the Lord Ordinary is of opinion, no misrepresentation in the specification, and no failure to make a full and true disclosure therein of what is necessary to render the alleged invention effectual, or to enable a workman of ordinary skill to produce the effect set forth in the specification.”

The respondent reclaimed, and argued—““1. The suspension and interdict ought to be refused, as the letters-patent founded on by the complainers are invalid, in respect (1) of the disconformity of the provisional specification with the letters-patent, and final specification; (2) of the misrepresentation in the final specification above stated; and (3) of the failure in the said specification to make a full and true disclosure of the invention, such as would enable a workman of ordinary skill to put the same into practice. 2. The suspension ought also to be refused, in respect the respondent has not infringed the letters-patent founded on by the complainers.

Authorities cited—Hindmarch on Patents, p. 43; Lord Cochrane v. Smethurst, 1 Starkie, 205; King v. Wheeler and Alderson, 2 Barnewell, 345; Croll v. Edge, 19 L. J.; C. P. 261; Nelson v. Househill Coal Company, 4 D. 470, and 5 D. 86.

Authorities cited by Complainer—Patent Act (1852), secs. 6 and 8; Newall v. Elliot, 1858, 4 Scott's C. B. Reports (N.S.) 269 and 288; Penn v. Bibby, 2 L. R. (C. App.) 127; Sturz v. De la Rue, 5 Russell's Ch. Repts., 322; Neilson v. Harford, Webster's Patent Cases, 331; Pratt v. Millar, 1 Macph. 450; Coryton on Patents, p. 133.

At advising—