Scottish Court of Session Decisions

John Gwynne, sole partner of the firm of John & Henry Gwynne, hydraulic and mechanical engineers, Hammersmith Iron Works, London, brought this action against Drysdale & Company, Bon Accord Engine Works, London Road, Glasgow, to have them interdicted from “infringing the letters-patent, dated 23d July 1878. .. granted to the pursuer for the invention of “improvements in pumping-engines and, in particular …. from making or selling or using without the pursuer's consent or license any mechanism, or method or arrangement of mechanism, relating to pumping-engines in which pumps are driven by steam-power, and having for its object to enable their suction and discharge pipes to be swivelled and set at any angle, without interfering with the driving-engine, and constructed in the manner described in the said letters-patent, and the specification relating thereto, or in a manner substantially the same; and from making or selling or using without said consent or license any apparatus or machine constructed with, or embracing in its construction, such mechanism or method or arrangement of mechanism as aforesaid.”

The defenders pleaded that the patent was null and void in respect of (1) prior use; (2) no practical utility; and (3) failure to distinguish what was old and not claimed from what was new and

Page: 466↓

claimed. They also pleaded that there had been no infringement, and upon this plea the case ultimately turned.

The nature of the invention is described by the Lord Ordinary in his opinion infra, which also contains the material facts proved in the case.

On 15th July 1885 the Lord Ordinary ( M'Laren), who heard the case along with Professor Tait as assessor, found that the defenders had not infringed the letters-patent founded on by the pursuer, and assoilzied them.

“ Opinion.—…. This is an application for interdict against the contravention of the letters-patent taken out by Mr Gwynne for improvements in centrifugal pumps, the improvement consisting in an arrangement whereby the pumps shall be made to turn round or swivel in relation to the frame of the engine or motor, so that its suction and discharge pipes may be placed at successively different angles to the perpendicular. We have nothing to do with the mechanism of the pump itself. I understand that the centrifugal pump is a pump in which the water is lifted by the revolution of vanes, which takes the place of the reciprocating movement in the common pump; but that really does not enter into this case at all.

Now, we have no doubt, upon the evidence and the explanations that have been given, that this is a useful improvement, and, as described in the specification, it is the proper subject of a patent. It appears that Mr Gwynne had been asked by some of his customers whether he could not supply a pump in which the direction of the suction and discharge pipes could be altered, and he reflected and came to the conclusion that the best way of doing so was by changing the adjustment of the whole pump-case instead of attempting to impress such a movement merely upon the pipes, and we have had reasons given why this was the proper way of accomplishing the object. The mechanism described is of a very simple character. Of course it is not claimed that any of the mechanical parts are new. The claim is for accomplishing the object of swivelling the pump by a suitable combination of known mechanical arrangements; and the mechanical appliances are these—the flanges of the pump and the engine-frame are to be bolted together, but as the pump overhangs, and its weight is to be borne by the flange of the engine-seat or motor-frame, it is necessary that there should be a trunnion or check, or some projecting part of one of these flanges, which is made to fit a corresponding depression in the other, so that the weight of the overhanging pump shall be to a large extent borne by this projection, and not thrown upon the bolts which couple the two plates together. That would be necessary in any case of an overhanging pump, although it were not intended to be swivelled. But where it is intended to be swivelled care must of course be taken—first, that the flanges, if plane, have their plane surfaces truly at right angles to the axis of the shaft that is to pass through them; secondly, that the trunnion, or whatever is its proper name, should be a true cylinder or surface of revolution; and thirdly, that the cylindrical surface should be concentric with the shaft. These are conditions which, I should imagine, would occur to any person having even the most elementary knowledge of mechanics, and certainly to any engineer who is setting about such an invention as this.

It is not only necessary that the pump should rotate for the purpose of adjusting it, but also that it should be securely clamped and fixed at the required angle when it is working, and that is provided by an arrangement which I need not describe in detail. There is an annular slot with a T-shaped section cut in one of those flanges, in which the heads of the four (or other number of) bolts are confined, so that the bolts are capable of moving round the annular slot, but not of being pulled out. These pass through holes in the other flange, and are secured behind it by nuts. The result is—and I believe in this I am also expressing the opinion of the learned assessor—that the merit of this invention or improvement consists in this, that you have the power of free rotation to any required angle, the power of moving the rotating pump-case by simply slackening the screws without displacing them, and the power of clamping the pump at any angle that may be required. There might be other mechanical means of accomplishing these objects, but they are certainly accomplished by the movement which is described in the specification, and, in the opinion of the assessor, accomplished in a very efficient and practical manner. Therefore there can be no doubt that the patent is a good patent if it has not been anticipated; and we have not had any evidence that deserves consideration on the subject of anticipation, because we are quite clear that neither the patent of Mr Bessemer nor the patent of Mr Newton, which professedly relate to other subjects, is an anticipation of this improvement for the purpose of swivelling. The important points are, that the rotation may be made without disengaging the screws so as to interfere with the stability of the pump, and that those screws can be clamped in any angular position. It is easy to see that any improvement of this kind might be varied by mechanical appliances. If an infringer leaves out some part of the inventor's design which, though useful, is not essential to it, this would be a colourable variation of the patented invention. It would be doing in a less perfect way the thing which the inventor has patented. If an infringer makes use of an inventor's design with improvements of his own, that would also be a colourable variation of the invention, and it will be so where a part or parts of the inventor's design are varied by the substitution of chemical or mechanical equivalents for one or more of the elements of the inventor's design. If you had, for example, a slot cut upon the outside of one of the flanges instead of on the inside, or if you had a number of clamps shaped like a vice to clamp the two flanges together, but capable of having the screws relaxed while the one flange was being turned round, I should have little doubt that a court of law would hold this to be a mere mechanical variation. But supposing the pumps made by the respondents were intended to be moved round to definite angles by taking out the bolts and changing the bolt holes, it is a very different question whether a pump so made, capable of being turned only to definite angles, determined by the number of bolt-holes through which the bolts pass, would be a mechanical variation of this design. As at present advised, I think it would

Page: 467↓

not; and I think that is also the opinion which Professor Tait is inclined to come to, because in the case supposed you have nothing more than the means of turning the pump upon a hollow bearing, which is a very well-known elementary mechanical part, and a mode of clamping entirely different, not only in external form, but in principle, and not admitting of the clamping at any required angle. It is necessary I should dwell a little upon this, because the specification sets out by saying, ‘I arrange the pump-case with the suction and discharge pipes to swivel, so that the suction and discharge pipes can be set at any angle without interfering with the driving engine,’ and then, in the claim, the thing claimed is described to be ‘the arranging the pump-case to swivel, substantially as hereinbefore described, with reference to the accompanying drawings for the purpose specified.’ Now, reading these two passages together, and with reference to the description, we think that the claim was for an attachement of the pump to the motor-frame which would allow the pump to be placed at any angle, and not merely at certain definite angles, and that the arrangement or means for securing the pump to the motor-frame when it was in use must be substantially of the character described in this specification and drawings—that is to say, it must be a clamp allowing of continuous motion, and not merely a series of bolts that may be taken out and replaced in successive positions. While I have thought it right to state our view upon this part of the case, because we have had some indication that possibly swivelling pumps of that kind may hereafter be made, yet, strictly speaking, the question raised by the evidence here is, whether Mr Drysdale ever made pumps which are capable of being used in this way at all? There are some little variations in the evidence on the subject, but I think the weight of the evidence in relation to the defenders' pumps is to this effect, that unless the holes were bored for the purpose of being interchangeable, so that each hole of the one flange might be successively placed opposite the holes in the other, it would be impossible to secure the pump in successive positions, because the bolts would not fit. That would be the case even supposing the bolt-holes were placed approximately at equal distances as they usually are, for the sake of symmetry and equal distribution of strength. There is no doubt as to how the operation of boring is done when the bolt-holes are not intended to be interchangeable. First, the holes are laid off on the one plate and bored, and then that plate is placed in juxtaposition to the other plate, and the holes in the other plate are bored through from those of the first, and they are bored so that the bolts are to fit them tightly. Now, unless all the holes were placed with absolute accuracy on the same circle, and at absolutely equal distances, the result would be, that after one of the plates is turned round less than a circle, the holes in the two plates would not be simultaneously opposite each other, and there is no evidence that any attempt was made on the part of Messrs Drysdale's foreman or workmen to secure that equidistance of the holes which would admit of the two flanges being bolted together in different positions. No doubt it might be so. The gentlemen from that establishment quite candidly admitted it might be so, and I have no doubt occasionally it would be so, but they do not think, and nobody has said, that holes which are not drilled for the purpose of being interchangeable would in the general case be found to be so, or that that would be a mode which the maker would use if he intended the flanges to rotate face to face. It seems quite certain, according to the evidence of Messrs Drysdale's people, that they never went through the proper process of manufacture to enable such a result to be obtained. The evidence of Mr Morton, to whom I put some questions on the subject, is quite conclusive. He says that very great care must be used, and he described the means of obtaining absolute equidistance on the part of the bolt-holes, and he said it was impossible that any person who received a pump in which these precautions had not been taken could bore holes such as would admit of the pump being swivelled—that it would have to be taken to a shop and the holes bored by the aid of the proper tools and machinery.

When we come to the actual machines made by Messrs Drysdale, only three cases were founded upon by the pursuer. The first was the case of a pump that had been supplied to Ramage & Ferguson of Leith, and it appears that in this instance the flanges of the pump were not circular, but what is called D shaped, one side being a straight line and the other a curve, and the straight side was made to rest upon a bracket cast on the motor-frame, and therefore it could not be turned round. It is said that by withdrawing the one plate from the other until it cleared the bracket, it might be turned round to an angle and then replaced. I do not know how far that is practicable, but the bolt-holes would certainly not be opposite each other, because they were not equidistant, and the arrangement of the flanges and holes were such as would only be adopted for a fixed overhanging pump. In the case of the machines that were supplied by Messrs Drysdale to the contractors for the Forth Bridge, I think some of them were of the same construction, and some had circular flanges, but Mr Arrol, who desired for some special purpose to alter the angle of the suction and discharge pipes, caused the two plates to be detached and the angle to be altered, and then he found that the plates would not fit. What corresponds to the trunnion—the circular projection on the one flange intended to fit into the other—was not concentric with the driving-shaft, and consequently when the flange was turned round the two parts of the bearing through which the axle was to pass were not opposite each other, and the axle could not have been passed through the pump in that position without being strained or broken. There could not be stronger evidence that the machine in question was never made for the purpose of being swivelled, and there is nothing to show that if the experiment had been tried upon the other pumps supplied to the Forth Bridge contractors any different results would have been obtained or are to be expected. Then, further, it has been shown that if Messrs Drysdale's object was to make a non-rotating pump to hang to the motor-frame, they could not well have adopted any other mode of connection than that which they had adopted. It would be quite contrary to sound mechanical principles merely to bolt the two flanges together without a

Page: 468↓

central boss or projection. It need not be circular, it might be square or any shape, but there must be some projection to bear the weight and relieve the bolts from the weight, and also to relieve them from the stress which would be otherwise put upon them by the revolution of the pump. No doubt these projections are generally made cylindrical, because that is the easiest way of making them. They can be turned to the same guage in the turning-lathe, and the one will readily fit into the other, no better way has been suggested, and therefore we may take it that Messrs Drysdale have just made a connection between the pump and the motor, as any honest maker would do who intended to make a fixed pump and not to copy the patent. All that can be said is, that if the plates were taken off and returned, and new holes bored in them you might get a pump which would swivel, but surely it can never for a moment be contended that this would be an infringement of the patent, assuming the object is not to make a swivelling pump, but one of the ordinary description.

The only remaining point in the case is the order or offer which was made to execute a swivelling pump. It is rather a peculiar order. There were two cases—there was one spoken to yesterday and one this morning. The case spoken of yesterday depends entirely upon the impression made upon the mind of the witness who spoke to it—Mr Beal. Mr Beal went there—I do not think he is to be blamed at all—but he went there by arrangement with Mr Gwynne, to find out information; and he made proposals for the supplying of pumping-engines; and he says that Mr Drysdale offered to make him a swivelling pump if he desired it, but he did not give an order. Mr Drysdale does not remember having said so; but as he did offer in writing to make a swivelling pump for another person, I think it is very likely that Mr Beal's recollection is correct. Drysdale certainly made an offer to Mr Allan in the letter which we have in process. Well, in the first place, these cases are open to the observation that they were both offers obtained from Mr Drysdale by persons who were seeking for evidence of a contravention of the patent, and it is quite certain that Drysdale never supplied swivelling pumps to any previous customer. Further, the offer is a very general one. He does not say that these swivelling pumps which he was to supply were to be according to the description in Gwynne's specification. We have been shown a model of the machine intended to be supplied, but I do not know that that was necessary to the case. The patent does not claim every mode of swivelling a pump; indeed, I do not think a legal specification could be drawn such as would embrace every arrangement of swivelling—at all events, it was not so done here, and I cannot assume that the intention was to infringe the patent. The presumption is always in favour of innocence, and I must assume that Drysdale meant to supply something which was not a contravention. If Mr Allan had allowed the arrangement to go on, and had ordered a swivelling pump, we would then have seen what it was like, and possibly a case of infringement might have been made out; but the mere statement that an offer was made to supply a swivelling pump if desired, unaccompanied by any evidence of positive infringement, is not such evidence as in my opinion would justify the Court in granting an injunction or interdict against contravention. These interdicts are very inconvenient to manufacturers, because they are hampered in doing many things which they may think legal or permissible by the fear that they may possibly be brought in for penalties for breach of interdict, and I am quite clear that the circumstances I have last mentioned are insufficient to support an interdict.

The result is, that while we are of opinion that this is a useful invention, and properly described, and that there is no objection to the patent as a patent, we are not of opinion that the respondents have infringed the patent, and consequently they are entitled to be absolved from the conclusions against them, or to have the action dismissed, with expenses.”

The pursuer reclaimed, and argued—The defenders had taken the pursuer's combination, and had merely altered it by substituting certain mechanical equivalents.

The defenders argued that no infringement had in fact been proved, and that their pumps were not capable of swivelling to any angle— Stewart & Briggs v. Bell's Trustee, December 5, 1883, 11 R. 237, Lord President at 243.