Scottish Court of Session Decisions

In July 1893 Alexander Ogston Gill and William Smith Gill, both of the firm of Farquhar & Gill, paint manufacturers, North of Scotland Colour Works, Aberdeen, raised an action against William Coutts & Sons, painters, 216B Union Street, Aberdeen, in which they prayed the Court “to interdict the defenders by themselves or by others from infringing the Letters-Patent Number 22610 ⁹¹, dated and sealed the twenty-eighth day of December Eighteen hundred and ninety-one, granted to the pursuers for ‘improvements in and relating to paints and lacquers,’ and in particular to interdict the defenders by themselves or others from making, offering for sale, selling or using, without the consent, licence, or agreement of the pursuers, a paint in which collodion or dissolved liquid pyroxylin is used as the essential element, this being combined or mixed with bronze or other metallic or alloyed substances in a powdered state, to form a paint or a lacquer for gilding purposes manufactured in the manner described in the said letters-patent, and the specification relative thereto, or in manner substantially the same, and from further or otherwise infringing the said letters-patent, and to grant interim interdict; and also to ordain the defenders to pay to the pursuers the sum of fifty pounds sterling with the legal interest thereon from the date of citation to follow till paid.”

Immediately after the action was raised William Cutler, manufacturer, Cannon Works, Constitution Hill, Birmingham, lodged a minute in which he craved to be sisted as a defender along with William Coutts & Sons, as he was the party really interested in the action, being the manufacturer of the permanent gold enamel paint referred to in the petition. He was accordingly sisted, and at a subsequent stage William Coutts & Sons lodged a minute in which they stated that they had no interest in the letters-patent in question, and consented, with the concurrence of the defender Cutler, to decree of interdict being pronounced against them without expenses or damages. Decree on these terms was pronounced on 10th November 1894, and the action thereafter proceeded against William Cutler as sole defender.

The pursuers, inter alia, averred—“(Cond. 2) For a number of years the pursuers, who have for long made a speciality in the manufacture of various paints and enamels which have obtained a ready sale all over the world, were engaged in extensive research and experiment with the view of providing a new or improved paint particularly suitable as a gold, silver, or bronze paint, and also the production of a lacquer or varnish for use in combination therewith. (Cond. 3) The result was the invention of paints and lacquers known as ‘Bon-accord Liquid Gold,’ or ‘Patent Gold Paint,’ and these were duly patented by pursuers under Letters-Patent No. 2261091. (Cond. 4) The pursuers are the true and first inventors of the said paints and lacquers, which form a very valuable invention, better than any preceding knowledge of the trade and of great commercial usefulness. By their excellence as a substitute for gold leaf and by their general utility they have earned a high reputation in the trade, and their success has brought into the field several so-called gold paints. (Cond. 5) In particular, a preparation called ‘Patent Permanent Gold Enamel Paint,’ or ‘Permanent Gold Enamel Paint,’ and purporting to be manufactured by the defender William Cutler, who describes himself as patentee and sole manufacturer, has, in contravention of the Patents Act of 1883, been made up in style similar to those used by pursuers, and extensively sold through Great Britain by defender Cutler, and in Aberdeen by defenders Cutler and Coutts & Sons, who have thereby rendered themselves liable to a fine not exceeding five pounds for every offence. The defender William Cutler, by specification, No. 7688 ⁹², dated 23rd April 1892, applied for letters-patent for his said preparation, but his application having been opposed by the pursuers on the ground that it infringed their patent, was on 16th December 1892 rejected by the Comptroller-General. Notwithstanding the said decision the defender William Cutler has placed in the market the said preparation marked ‘Patent,’ or with his name thereon as patentee.… (Cond. 7) The defender William Cutler has been manufacturing in Birmingham or elsewhere, and selling and using, the said preparation throughout England and Scotland in infringement of the pursuers’ said patent; in particular, he refuses to desist from the manufacturing, selling, or using of the said ‘Patent Permanent Gold Enamel Paint,’ or ‘Permanent Gold Enamel Paint.” …

The defender did not deny that the gold paint manufactured and sold by him was practically identical with the pursuers', and that an infringement of the pursuers' patent had been committed if that patent was to be regarded as valid, but he pleaded that the pursuers' letters-patent were invalid on three grounds. The first of these grounds was that the pursuers were not the first and

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true inventors of the paint in question, the same having been publicly used, or at least publicly known, prior to the pursuers' patent. The second and third grounds of defence are referred to in the Sheriff-Substitute's interlocutor, but as no decision was pronounced by the Court upon them, they need not be further referred to.

The Sheriff-Substitute ( Duncan Robertson) heard proof, the result of which sufficiently appears from the interlocutors and opinions.

On 16th January 1895 the Sheriff-Substitute pronounced the following interlocutor:—“Finds in fact (1) that pursuers have obtained a patent, dated 28th December 1891, and numbered No. 22610 ⁹¹, for improvements relating to paints and lacquers; (2) that the claim made, as set forth in specification was for a combination of collodion or dissolved liquid pryoxylin with bronze powder or other metallic or alloyed substance in a powdered state for the purpose of forming a paint or lacquer for gilding purposes; (3) that defender Cutler has since the date of said patent been manufacturing and selling a paint composed of dissolved pyroxylin and bronze, &c. powders, which is practically identical with the paint described in pursuers' said specification: Finds, with reference to annexed note that the defender has failed to prove as contended by him (1) that there has been prior use or prior knowledge, in the sense of the patent laws, of the invention set forth in pursuers' said patent either by defender himself or by anyone else; (2) that the patent is invalid, in respect that in addition to a paint, the pursuers in their said specification claimed the use of collodion as a lacquer, which was admittedly not novel; and (3) that the invention as described in the said specification is an impossible one, or that said specification is grossly misleading: Finds that the pursuers are the first and true inventors of the invention as described in said patent, and that defender has infringed said patent: Therefore repels the defences, declares the interim interdict already granted perpetual, and decerns: Finds further that the defender is liable in damages to the pursuers, assesses same at the sum of £5 sterling, for which decerns against the defender William Cutler: Finds the pursuers entitled to expenses against the said William Cutler,” &c.

In his note the Sheriff-Substitute, after considering the two grounds of defence based on defective or erroneous specifications, dealt with the defence of prior use as follows:—“(3) There remains, therefore, only the argument having reference to prior use or anticipation, and I have put this last, as I have found it the most serious. There is no prior publication alleged, but the defender avers and says he has proved (1) that he himself made and used and gave to the public his paint, which was an anticipation of pursuers', prior to the date of pursuers' patent; and (2) that the witness Denham, of Ballantine & Co., of Edinburgh, had also used this paint in the sense of the patent law prior to pursuers' patent. (1) As regards defender himself, the facts as proved seem to me to be as follows:—About the year 1887 defender came to know of a preparation called ‘kristaline,’ sold by a Mr Hartley, in Birmingham, as agent for an American company. Kristaline was sold as a lacquer or varnish, and for about a year after he knew it first defender used it as a lacquer over metal. He was in the way then of using in his business a gold paint made of terebene and bronze powder, and about 1888 he began to coat this with the kristaline. About March or April 1888, accident, more or less, led him to try mixing the kristaline with bronze powder to see how it would act as a paint, when it was found to act very well indeed. From that time up to March 1892 defender states that he continued to make small quantities of gold paint with kristaline. He has only brought evidence of one actual sale of the paint during that period, viz., 5s. worth to the witness Bendall. and that was rather to try as an experiment than in the ordinary course of business; but I think in addition it is clear he gave a certain number of bottles to the French Wreath Company without charge, in order that they might touch up and renew metal-bound glass cases, &c., got from him. Defender's son also (the witness Walter Cutler) speaks to getting 5s. from a Mr Hope for regilding some frames, but that was rather as a gratuity than actual payment. Defender was in the way of using this kristaline as a lacquer as well as a paint; and I find that for both purposes the quantity he got from May 1888 to September 1890 was sixteen quarts, and he continued at about the same rate down to March or April 1892. Keeping in view the amount and nature of prior use so spoken to, and the further fact that when the paint was supplied no one could tell what it was composed of, I think upon the authorities a nice question might have arisen, whether what defender had done had gone beyond the region of experiment, and was sufficient prior use to exclude a subsequent patent; whether this was ‘use in public so as to come to the knowledge of others than the inventor.’ But this case presents another feature which to my mind seriously alters the complexion of the alleged prior use. Defender was using kristaline to combine with bronze, &c., powder; but, in point of fact, up to and even after the date of pursuers’ patent—in fact, up to the end of March 1892—defender did not know what kristaline was. He no doubt knew it was a lacquer, and that it was called a celluloid lacquer by the sellers, for that appears on some of the invoices; but as to how it was composed he was absolutely ignorant. I think we may take it now as proved (though as to this the proof is not very satisfactory) that kristaline is pyroxylin dissolved in amyl acetate, and that a paint made with it is identical with pursuers’—but even as to this we are pretty much dependent on the analysis of one sample. But at the time when pursuers took out their patent, all that defender knew was that a lacquer with a fancy name, the composition of which he was quite unacquainted

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with, but which was sold by an American company in Birmingham, made a good gold paint when combined with bronze powder. If the company that sold the kristaline had failed, defender's paint was put a stop to, or if for some reason they had slightly altered the nature of kristaline, it might quite well be that it would have been useless for a paint, and defender would have been helpless. It seems to me that a good test of the matter is this—Had the defender at the date of pursuers’ patent discovered enough to take out a patent himself, and had he made this discovery known to the public? I think there can be no doubt this question must be answered in the negative. Defender could not have patented the combination of kristaline and bronze powder without knowing what kristaline was, and if so, his prior use of the article was not of the intelligent and understanding nature which in my opinion would be necessary to come in the way of the pursuers, who had unquestionably honestly invented the paint for themselves. The defender himself was quite conscious of this, for we find both him and his son stating that they were most anxious to find out the composition of kristaline, even going the length of asking Mr Hartley, the agent for the sale, what it was; and the moment that the son by accident did so, about March 1892, the defender at once applied for a patent. This application was refused at the instance of the pursuers, who objected, and I must say that the position taken up by the defender with regard to his application for a patent is not to my mind in his favour. He now pleads prior use by himself as an objection to pursuers’ patent; but if it is a good objection to pursuers’ patent, it must have equally stood in the way of defender getting a patent, and defender must have known this when he applied. He says now he was not serious in applying for a patent, that it was done for advertising purposes; but I confess I have difficulty in taking this off his hands.

On this point, therefore, of prior use by the defender, my opinion is that the prior use, even if sufficient in extent to void the patent, which is at least doubtful, was not of a character to anticipate pursuers' patent in respect the person using had no knowledge or understanding of the composition of kristaline, and therefore did not know the actual materials of which the paint he was making was composed.

There only remains the alleged prior use of a similar substance by Mr Denham. And I should say, before referring to this, that the admission of this evidence was strongly objected to by the pursuers. I should in all probability have refused it if it were not that the proof of necessity was adjourned for some months after the first two days, and before Mr Denham's evidence was taken. Notice of the proposal to lead this evidence having been given before the first day's evidence, pursuers had thus ample opportunity of inquiring into and meeting the alleged use by Messrs Ballantine or Mr Denham. If I had arrived at a different conclusion as to the effect of Mr Denham's evidence from what I have, in all probability the fact that notice of this evidence was not given at the proper time would have had a very great effect on the question of expenses. As, however, I have come to be of opinion eventually that Mr Denham's evidence as to the use by him does not turn the scale as against pursuers, this question of expenses does not fall to be considered. Mr Denham seems to me to have been practically in the same position as Mr Cutler with regard to the matter. He discovered exactly what Mr Cutler did, namely, that kristaline with bronze powder made a good gold paint, and his use of what he discovered up to December 1891 was even less than Mr Cutler's. His whole evidence as to dates is vague, but it is certain he used a very small quantity, and of that he sold nothing, and in no way made his discovery public prior to the date of pursuers’ patent. No doubt he spoke to Mr Ballantine about it, but he was his partner, and that was not in any sense making it publie. No more was the making of presents of a few articles covered with it, for, as already stated, no one getting these articles would know what they were painted with. On this ground, therefore, I should be inclined to hold that Mr Denham had made no public use of the combination prior to December 1891. But, further, to my mind exactly the same objection applies to Mr Denham's knowledge as I have found fatal to Mr Cutler's. I don't think he knew what he was using, and I don't think that if the sale of kristaline had been stopped he could have made the paint, at any rate at first, or without experiments, which, as he is not a chemist, he apparently could not have made himself. No doubt he says his partner told him what kristaline was made of, and that they knew when they first got it, and also that they had made some of it themselves (though when that was does not appear, probably after December 1891), still when asked how to make it his answer is ‘by dissolving celluloid in acetate of amyl.’ Being asked what is celluloid, he answers ‘I don't know.’ Apparently, from the evidence of Mr Ellis, celluloid is not at all the same thing as pyroxylin, but includes camphor, and if kristaline is made of dissolved celluloid, it is not the same as dissolved pyroxylin, and the combination of kristaline and powder is not or may not be the same thing as pursuers’ patent. I do not lay so much stress on this, however, as on the fact that Mr Denham cannot give even now an explanation of the composition of the substance which he gives as the essential element of kristaline, and that being so, certainly he was not in a position, from his own knowledge and without assistance or experiment, to apply for a patent for the paint in question.

On all the grounds of defence, therefore, I think defender has failed, and pursuers are entitled to the remedy they seek.” …

The defender appealed to the Second Division of the Court of Session.

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When the case came up for hearing, the Court raised the question of jurisdiction, and desired argument thereon.

Argued on the question of jurisdiction—It was competent for a foreigner to prorogate the jurisdiction of a Scots court, either the Court of Session or the Sheriff Court—Erskine, i. 2, 27; White v. Spottiswoode, June 30, 1846, 8 D. 952; Longmuir v. Longmuir, May 21, 1850, 12 D. 926. Prorogation was all the more competent where what the petitioner complained of was a wrong done within the jurisdiction of a Sheriff for which the foreigner was said to be responsible— Waygood & Company v. Bennie, February 17, 1885, 12 R. 651. The complaint here was that an infringement of a Scots patent had been committed by an Englishman who sold to retail dealers in Aberdeen. Even if the defender had desired to plead no jurisdiction, he had barred himself from doing so by his appearing voluntarily in the Scots Court as a respondent, and consenting by minute to the prayer of the petition being made applicable to him.

On the merits, argued for respondent and appellant—The evidence here showed that there had been prior use of the article patented. The appellant had made public use of it in the course of his business, and not merely experimentally. The patent was therefore bad, and interdict should not be pronounced—Edmonds on Patents, p. 40, and cases there quoted; Humpherston v. Syer, 1887, 4 P. O. Rep. 407; King, Brown, & Company v. Brush Electric Light Corporation, Limited, July 1890, 17 R. 1266.

Argued for petitioner and respondent—The use by the appellants of the article in question was experimental. It was secret use as distinguished from public use. Others might have made the discovery, but the petitioners were the first who had made their bargain with the public in regard to it. The patent was a good one, and the interlocutor of the Sheriff-Substitute should be affirmed— Smith v. Davidson & Wilson, March 11, 1857, 19 D. 691, opinion of Lord Pres. M'Neill, 695: Hancock v. Somervell, 1851, 39 Newton's London Journal 158; Hills v. London Gas—Light Company, 1860, 5 H. of L. Cas. 312.

At advising—