Scottish Court of Session Decisions

William Morgan Wallace, managing director of the Carrongrove Paper Company, Limited, and others, pursuers, brought an action against Tullis, Russell, & Company, Limited, paper manufacturers, Markinch, Fife, defenders, for interdict against their infringing the patent No. 104, 578, dated 18th April 1916, “for improvements in and relating to the removing of esparto or the like from stationary digesters used in papermaking and the like by using, exercising, or putting into practice, in whole or in part, without the consent or licence of the pursuers, the invention forming the subject of the said patent and described in the specification relative thereto, and against their using, exercising, or putting into practice … any process, method, or appliances for the removal of digested grass from stationary grass digesters constructed or applied according to the method or in the manner described in the said specification or according to any method or in any manner substantially the same therewith, or embracing in the construction thereof any of the improvements claimed by the pursuers and set forth in the said specification, or any improvements substantially the same therewith, and … from using the process or method of applying jets of water under pressure to disintegrate and break up the digested grass in stationary grass digesters and to wash it out of the digesters; and from further or otherwise infringing in any manner of way the rights and privileges granted by the said patent.”

Conclusions for an accounting of profits or otherwise for damages followed.

The pursuers averred that they were vested in the patent and produced the complete specification relative thereto. The specification contained the following claims, inter alia:—“1. The method of and means for removing the digested material from digesters which consists in subjecting the material to the action of a stream or streams of water so as to disintegrate and wash out same substantially as herein set forth. 5. In the method of and means for removing the digested material from digesters as specified in claim 1, the arrangement of the nozzles for directing the disintegrating streams of water at the upper or top part of the digester with a conical or like member at the bottom substantially as and for the purposes herein set forth.”

The pursuers averred, inter alia—“(Cond. 7) Since January 1918 the defenders have been infringing, and they are still infringing, the said letters-patent by using for the removal of digested esparto grass from their stationary grass digesters a process or method constructed or applied in a manner substantially the same as that described in the said specification. In particular, during said period they have been infringing and are still infringing said letters-patent by applying jets of water under pressure to disintegrate and break up the digested grass and wash it out of the digesters.”

The defenders denied infringement, and averred, inter alia—“( Ans. 5).… The pursuers' said alleged letters-patent are invalid in respect (1) The alleged invention was not at the date of the alleged letters-patent the subject-matter of a grant of letters-patent within the meaning of the Patents and Designs Act 1907. The invention claimed does not show any ingenuity or any new device of general utility. The method of

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clearing out solid or semi-solid material from a vessel by the injection of water, which disturbs and dilutes the mass and serves as a vehicle for carrying away the material, has long been familiar and in common use. With regard to claim 3, in so far as this claim covers the method of disconnection indicated, this method of disconnection is well known and has long been utilised in mechanical construction. The method of diverting a current of water by means of a guide claimed under claim 5 is also matter of common knowledge and has long been in use. (2) There is no sufficient distinction between what was old, or was in use and known at and prior to the date of the said letters-patent, and what was new or claimed as new by the said alleged inventors. Further, there are claimed as new methods and inventions which were old and well known at the date of the said patent. (3) The alleged invention was not new or original. At least material parts of the said alleged invention, and in particular the inventions claimed in claims 1, 3, and 5 of the said specification, were not new or original. In so far as the letters-patent relate to the method of removing the digested material from digesters, which consists in subjecting the material to the action of a stream or streams of water so as to disintegrate and wash out same, this method was not at the date of the said letters-patent new or original, The alleged inventors were not the first and true inventors of the alleged invention described or alleged to be described in the said letters-patent and relative specifications, and it was not first disclosed in Great Britain by them. It was disclosed and was publicly known and used in Great Britain prior to the date of the said letters-patent. Inventions similar to or substantially the same as the said alleged invention were described and disclosed in letters-patent, with their relative specifications, granted to.… [ Here followed an enumeration of patents]. The said alleged invention, so far as it relates to the method of disintegration and washing out of semisolid matter from vessels or receptacles by streams or jets of water, has been a matter of common knowledge in Great Britain for many years before the date of said letters-patent, and has been commonly and publicly employed in numerous processes and industries there. In the paper-making industry said method has for many years before the date of said letters-patent been in common use for beaters, chests, digesters, and other vessels and paper machines containing grass pulp in various stages of manufacture. The said method is described in a published book by Hoffman entitled Praktisches Handbuch der Papier Fabrikation, at volume ii, page 1524, line 5 et seq., and a published book by E. Kirchner, entitled Das Papier, at Part iii B.u.C. Zellstoff, pages 436, 437, 402, 483. The said books were published and publicly placed in the library of the Patent Office before the date of the said alleged letters-patent. Messrs Boving & Company, Limited, hydraulic engineers, 56 Kingsway, London, W.C.2, have for many years, and in particular during 1913 and the years subsequent, made a business of manufacturing for sale digesters and other vessels for use in paper manufacture, in the construction whereof they have habitually embodied the method of disintegration and washing out of the pulp by jets of water from pipes. The said digesters and other vessels manufactured by them are specially fitted and adapted for operating the said method, and have been publicly sold and offered for sale by them throughout the said period. The said company in the course of their business have prepared drawings and specifications of digesters and other vessels fitted with water-pipes for the operation of said method in which the said method is clearly shown. Throughout the said period the said drawings and specifications have been publicly exhibited and circulated by the company in the various departments of their offices and works, and to their subcontractors for piping and materials, and also to their own customers and prospective customers. For many years prior to the date of the pursuers' said letters-patent, and in particular in 1910 and the years subsequent, the West End Engine Works Company, Dundee Street, Edinburgh, have publicly manufactured and sold a pattern of beater or breaker for use in paper manufacture, fitted with a high-pressure water-valve through which numerous jets of water under pressure are injected into the mass of grass pulp in the vessel, thereby disintegrating and breaking up the digested grass pulp and washing it out of the vessel. Prior to the said letters-patent and at the date thereof the defenders have used in their mills in the manner described a breaker and valve similar to the said pattern manufactured and sold by the said West End Engine Works Company, which was supplied to the defenders on or about 1st August 1904 by Messrs James Bertram & Son. Limited, Leith Walk, Edinburgh. (4) The said alleged invention was not at the date of said letters-patent of any practical utility, and the defenders believe and aver that the same has not in fact been put in use. It has been found necessary in practice to reintroduce hand labour. As the result of recently-made experiments the defenders have ascertained and aver that none of the means or appliances shown or described in the specification or relative drawings is useful or effectual for the purpose of carrying the alleged invention into effect or practice without substantial modification and without further device such as a flexible hose or moving nozzle through which a stream of pressure water can be directed by a human operator against any portion of the mass of boiled material in the digester and in a manner essentially different from any manner described in said specification. The said means and appliances shown and described when competently and carefully made and operated in accordance with the said specification and drawings or any of them and without substantial modification and further device are incapable of carrying the alleged invention into effect or practice. (5) The said specification does not describe

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the alleged invention so that a workman of ordinary skill could understand the same, or make or use the alleged invention without further invention. It does not sufficiently disclose the nature of the alleged invention, or how it is to be perfected; in particular, no means of carrying out claims 1, 2, 4 or 5, so as to be useful, is shown, and experiments would be necessary in order to make the plant described so as to secure the result alleged to be thereby attainable.”

The pursuers pleaded—“1. In respect that the defenders have infringed and are still infringing the letters-patent belonging to the pursuers, as condescended on, the pursuers are entitled to interdict as concluded for. 2. The pursuers having suffered loss and damage through the illegal infringement by the defenders of said letters-patent, the defenders are liable to the pursuers in reparation. 3. The pursuers are entitled to payment of the said increased profits made by the defenders through the illegal use by them of said patented process, or alternatively, in the option of the pursuers, to the loss and damage sustained by them in respect of said infringement of said patent. 4. Claims 3 and 5 being subordinate to claim 1, the objections stated to these claims should be repelled.”

The defenders pleaded—“1. The action quoad the conclusions for an account of profits is incompetent and should be dismissed. 2. The pursuers' averments are irrelevant and insufficient in law to support the conclusions of the summons. 3. The pursuers' averments, so far as material, being unfounded in fact, the defenders are entitled to be assoilzied. 4. The defenders not having infringed the said alleged letters-patent, should be assoilzied. 5. The defenders are entitled to decree of absolvitor, the said alleged letters-patent being invalid, in respect—( a) The alleged inventors were not the first and true inventors of the alleged invention; ( b) the said alleged letters-patent do not embrace any subject-matter for which a patent could be granted; ( c) the said specification does not sufficiently distinguish what is new and claimed from what is old and not claimed; ( d) the said specification includes excessive claims extending to subject-matter for which a patent could not validly be granted; ( e) the said alleged invention was publicly known prior to the date of said letters-patent; ( f) the said alleged invention was publicly used prior to the date of said letters-patent; ( g) the said alleged invention is of no practical utility; ( h) the said specification is not so expressed as to be intelligible to a workman of ordinary skill; ( i) none of the means or appliances shown or described in the specification or relative drawings is useful or effectual for the purpose of carrying the alleged invention into effect or practice without substantial modification and without further device as averred in answer.”

On 28th April the Lord Ordinary ( Blackburn), after proof, assoilzied the defenders.

Opinion.—The pursuers are paper-makers who are vested in letters-patent No. 104,578 for improvements in and relating to the removing of the digested grass from stationary grass digesters, as commonly used for digesting esparto and the like in the course of papermaking, In the present action they sue the defenders, another firm of papermakers, for infringing the patent, and ask interdict against them from using or exercising the invention forming the subject of the said letters-patent and described in the specification relative thereto, and also from using or exercising any process, method, or appliances for the removal of digested grass from stationary grass digesters constructed or applied according to the method or manner described in the specification, or according to any method or in any manner substantially the same therewith. Finally, they ask that the defenders should be interdicted ‘from using the process or method of applying jets of water under pressure to disintegrate and break up digested grass in stationary grass digesters and to wash it out of the digesters.’ There follow conclusions for damages. The defence to the action is the usual one that the patent is invalid for want of subject-matter, of novelty, of utility, and of sufficiency of specification, and in addition that it is unworkable.

The use of esparto grass for the manufacture of paper was first introduced into this country in 1860—Chalmers on Papermaking, p. 4—and it has ever since been extensively used for the making of high-class paper. The art of papermaking is much the same whether the material out of which the paper is made is rags, wood pulp, or grass. The material is first of all, if necessary, treated mechanically to clean it and get rid of dust, &c. It is then boiled in closed digesters with a solution of caustic soda to dissolve out all non-cellulose matter which it may contain, leaving in the boiler the cellulose fibres used to manufacture paper. This takes the form of a pulp, which is then washed in the boiler, preferably with hot water, and thereafter transferred to another machine called a breaking machine, which further disintegrates and washes it. It is unnecessary to follow the art beyond the breaking machine, as the patent in this case relates to a method of transferring the boiled esparto grass from the boiler to the breaking machine.

The pulp of the boiled grass left in the bottom of the digester is materially different in consistency to the pulp of any other material out of which paper is made. The effect of the boiling on rags or wood is to disintegrate the cellulose fibres into such small particles that the pulp can with compartive ease be washed out of the boiler through a discharge pipe at its foot and conveyed by gravity or by a pump to the breaker. Numerous devices have been patented and used for transferring the pulp of wood and rags from the digester to the breaker through a pipe in this way by water or by steam pressure. Boiling, however, has no effect in disintegrating esparto or other grasses, but leaves each blade at its full original length, which may vary from 12 inches to 2 feet according to the quality of grass used, with nothing removed from it except the non-cellulose substances. The

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boilers ordinarily in use, which measure 9 feet high and 9 feet in diameter, are capable of dealing with about 2 1 2 tons of grass at one boiling, and what is left at the conclusion of the operation is described by Mr Ballantyne as a ‘tangled matted mass like a large cylinder of felt.’ He goes on to state that it extends from side to side of the boiler and is not broken up in any way, and that while the fibres singly can easily be torn apart, the mass of interlocked fibres as a whole is very strong and hold together tenaciously. He also adds that while the fibres are entangled in all directions they are less entangled between layer and layer owing to the manner in which the grass is put into the boiler in the first instance. This description is accepted by other witnesses, and it is obvious that a mass of this character could not be washed out of the boiler through a pipe without being first very completely disintegrated. For many years endeavours have been made to discover a method of removing the boiled grass by mechanical means from the digester, but prior to the patent in the present case no process had been discovered to supersede the elementary method generally practised of forking the mass out of the boiler by hand labour into boxes on wheels, and so conveying it also by hand labour to the breaker. For this purpose there is a door in the side of the boiler near the bottom which opens to just above the top of the boiled grass. After the contents of the boiler have been cooled by flooding with cold water, and the water has been drained off, the top of the boiler is removed and the door at the side is opened. A man then enters the boiler through the top and proceeds to fork the boiled grass through the door into the boxes. This is described as being very hard work, as I have no doubt it is, and the whole operation from the conclusion of the boiling process to the emptying of the digester takes from an hour to an hour and a-half and necessitates the employment of two or three men. Now, considering that it is seventy years since esparto was introduced into this country, and that for thirty years at least it has been very largely used in the manufacture of paper, it is most surprising to find that it never occurred to anyone until quite recently that it was perfectly easy to disintegrate the boiled grass in the digester and to wash it away through a discharge pipe to the breaker by directing on it through the opening in the top of the boiler a jet of water under pressure. No additional machinery is required, as the operation can be performed successfully by hand with a flexible pipe with a nozzle at the end similar to a fire-hose. All that is required is to direct the jet of water on to the boiled grass at a point above the discharge pipe, when the water will cut through the tangled mass, disintegrating the fibres as it goes until the entrance to the discharge pipe is cleared. Thereafter by directing the jet of water round the edges of the hole already formed the rest of the grass can be gradually disintegrated, and the whole of it discharged to the breaker through the discharge pipe in from thirty-five to forty-five minutes. This was practically the discovery made by the defenders about midsummer 1917, when under the necessity of war conditions they were compelled to economise labour and turned the fire-hose on to a digester to see what effect it would have on the boiled grass, and it is this method of disintegrating the boiled grass which the defenders have been using, and of which the pursuers complain as an infringement of their patent.

The pursuers' patent, which was completed on 15th March 1917, describes a more complicated method of disintegrating the boiled grass by water pressure through nozzles. But very soon thereafter it must have been realised that the operation could be performed in the comparatively simple manner above described, as a new patent was applied for on 10th April 1917, which was completed on 4th April 1918, and which gives effect to this method although the nozzle of the pipe is not held in the hand, but operated mechanically by a very ordinary system of hand levers. This second patent is not founded on by the pursuers, and the question in the case is whether the original patent is valid and sufficient to protect the pursuers against the method adopted by the defenders of disintegrating the boiled grass by water pressure.

The completed specification of the patent sets out that the ‘invention relates to an improved process or method and appliances for removing the digested grass from stationary grass digesters as commonly used for digesting esparto and the like, and consists in applying jets of water under pressure to disintegrate and break up the digested grass and wash it out of the digester.’ It then goes on to describe the apparatus to be used for the purpose, which is illustrated by drawings on which the different parts are indicated by numbers. I will endeavour to describe briefly its material features and the method by which the process is carried out. Figs. 1, 2, and 3 give sectional, end, and plan views of an apparatus to be attached to a cover plate on the door on the side of the boiler, through which it was formerly the practice to fork out the boiled grass. Figs. 4, 5, and 6 illustrate slightly modified arrangements on this apparatus, but these modifications, as I understand them, relate to such matters as the attachment of the apparatus to the cover plate, and have nothing to do with the process of disintegrating the grass. Fig. 7 refers to a different process, which I shall deal with separately, and meantime I refer only to figs. 1, 2, and 3. The apparatus fitted to the cover plate consists in the first place of a discharge pipe (3) on which there is a valve (7), by means of which the flow of water from the boiler can be checked and controlled. There are three nozzles shown on the drawings, each fitted with a separate valve through which water under pressure can be directed into the boiler. One of these (12) is fitted into the discharge pipe at the bend of the pipe so as to direct a jet of water through the discharge pipe. The only practical purpose of

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this jet would appear to be to clear the boiled grass away from the mouth of the discharge pipe at the commencement of operations, or at a later stage if it should become choked. The other two nozzles (8) are fitted into the cover plate or shell of the boiler at each side of the discharge pipe, and operate directly into the boiler. All three nozzles are supplied with water under pressure from the pipe (9); but to understand the working of the process I do not think it is necessary to refer to anything more than the three nozzles and the discharge pipe with its valve. This apparatus comes into operation at the time when the boiling of the grass has been completed, the solution of caustic soda drained off, and when under the former process in use the flooding of the boiler for cooling purposes would have commenced. The boiled grass accordingly, though still dump, is not flooded. The first thing which requires to be done in working the apparatus is to partially flood the boiler. This can be accomplished by turning on the water through any or all of the nozzles and closing the valve on the discharge pipe, and has the effect of diminishing the cohesion between the layers of grass and the downward pressure of the whole mass on the lower layers. Then the valve on the discharge pipe is opened so as to equalise to some extent the inflow and outflow of water into the boiler. The nozzle (12) is turned off, and the two nozzles (8) are worked alternately. The effect of this alternate working is to produce and keep up a swirl of the flooded mass, and to bring different parts of the mass under the influence of the jets in succession, with the result that they disintegrate the grass by degrees from the bottom to the top of the mass into small fibres, which escape easily through the discharge pipe to the breaker. Now it is proved that this process can be worked, and that the boiler under favourable circumstances can thus be emptied in about half an hour. The time may vary according to the quality of the grass, the extent to which it has been boiled, and the pressure of water actually applied. Accordingly the defenders' averment that the patent is unworkable fails. They have also, in my opinion, failed to prove that it is lacking in novelty or utility. But their averment that the method of working is not sufficiently disclosed in the specification appears to me to be a very formidable one. The partial flooding of the boiled grass and the alternate action of the two nozzles (8) are essential to the success of the operation. It is proved that without partial flooding the only effect of the jets is to bore two tunnels through the grass, and that it is only by the swirling movement imparted to the mass when in a flooded state that different parts of it come in succession under the influence of the jets. The lower layers are thus disintegrated first, and then the upper layers settle down into the place of the lower and are disintegrated in their turn. Now there is not a word about all this in the specification. The machinery is described, but so far as directions for working it are concerned they appear to be confined to the statement on page 3—‘Two nozzles (8), arranged one on each side of the pipe 3, direct streams or jets of water into the digester so as to disintegrate and discharge the material into the pipe 3.’ There is nothing said about their acting alternately, and the only reference to the valve on the discharge pipe, which plays, an important part in regulating the amount of water required to flood the grass, is—‘A valve (7) is arranged in the pipe 3.’ Now although it is not sufficient to invalidate a patent that the description should not be so explicit as to enable a person skilled in the art to work the invention without any trial or experiment ( Edison & Swan, 6 R.P.C. 243; Haskell Ball, 22 R.P.C. 478), he must, I think, be supplied with some directions as to how the trial or experiment is to be conducted, and in this specification there appears to be none. It is not proved that the pursuers ever had this apparatus in use at their works for manufacturing purposes, and, as I have already mentioned, they certainly have not had it in use recently, as they have been employing instead an overhead moveable jet acting vertically downwards on the grass. But since this action was raised both they and the defenders have fitted up temporary machinery for the purpose of testing it. Four witnesses for the defenders, very eminent in their respective professions of engineering and chemistry (Mr Swinburne, Professor Hudson Beare, Principal Irvine, and Dr Macdonald), gave evidence that with nothing but the specification to assist them they had been unable to work the method so as to disintegrate the grass or empty the boiler. They failed to make a proper use of the valve on the discharge pipe so as to keep the grass partially flooded, and they failed to use the nozzles (8) alternately, so as to set the mass of grass in motion. Their experiments had no effect except to bore the tunnels through the grass which I have referred to, and which are illustrated by the photographs produced. They are none of them, of course, practical papermakers, but they all had some knowledge of paper-making. I have little doubt that they would have discovered how the apparatus worked if they had been very anxious to do so. But they made numerous experiments to discover if it would work in accordance with such directions as the specification gave, and these did not lead them to experiment upon the partial flooding of the boiler, although they tried the effect of flooding the whole boiler and then immediately draining all the water off. Mr Swinburne admitted to having had a suspicion that success might lie in the direction of partial flooding, but he did not follow out the idea. As he says himself, ‘I was in a minority of one.’ On the other hand, the one witness for the pursuers who tested the apparatus did succeed in finding out how to work it. This was Mr Alexander Wilson, the works manager of Guardbridge Paper Mills, and a practical papermaker. He says he was provided with the specification to study,

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and then visited the pursuers' works on 17th November 1920, where he found the apparatus ready for him attached to a boiler containing 2 1 2 tons of boiled grass, and that without any other information, and after experimenting with the valve on the discharge pipe and the nozzles, he succeeded in emptying the boiler in 2 hours and 20 minutes. At a second visit, on 17th December 1920, he, after his previous experience, emptied it in 45 minutes. Now this result is founded on as proving that there is a sufficient description in the specification to enable any practical papermaker to work the machine. It, of course, proves that the apparatus can be worked successfully; but the evidence of one practical man, who may be a person of great ingenuity, or who may hit upon the method of working by accident, is, in my opinion, hardly sufficient to establish that the description in the specification is sufficient for any ordinary practical man. Further, Mr Wilson approached the problem with this advantage, that he was already familiar with the possibility of disintegrating grass while stationary in the boiler by means of an overhead moveable jet of water, as he was in course of introducing this process at Guardbridge. And with this knowledge it does not appear to me to require great ingenuity to conclude that if your jets are fixed and immoveable, as they are in this apparatus, it might be necessary somehow or other to put the mass of grass in motion so as to bring different parts of it under the action of the jet. But this knowledge was not available to any practical maker at the date of the patent, and certainly was not disclosed in the specification. Again, Mr Wilson's experiments were made by him after his examination as a witness in this case on 23rd June 1920 and before his additional evidence was given on 16th March 1921, and I cannot help feeling that this placed him at a considerable advantage as to how the problem should be approached. The conclusion I have come to is that the description in the specification leaves the reader, whether a practical papermaker or not, to discover for himself how the process described in figs. 1–6 can be worked, and that the discovery involves the exercise of considerable ingenuity on the part of the reader. In my judgment accordingly the patent, so far as concerns figs. 1–6, is bad for want of sufficient description.

There remains fig. 7, which describes an entirely different method of working to that set out in figs. 1–6. I am confident that fig. 7 was only intended to come into operation if any grass was left in the bottom of the boiler after the side nozzles shown in figs. 1–6 had completed their work. This might very easily happen, for the discharge pipe is 9 inches above the bottom of the oiler, and as the boiled grass does not float the layers of grass below the level of the two nozzles 8 might not come under their influence. It actually did happen on the occasion when Mr Ballantyne saw the method described in figs. 1–6 in operation, for he says that there was 9 inches depth of fibre left in the bottom of the boiler below the level of the door, which he did not wait to see emptied out, and the proof does not disclose how this residuum was disintegrated. That the whole drawings (figs. 1–7) are intended to illustrate in combination a process of completely clearing out the boiler is, I think, plain from the terms of the specification, and that the important part of the process is shown in figs. 1–6, and a merely incidental part in fig. 7 may be deduced from the fact that figs. 1–6 could be used as working drawings, while fig. 7 is only a diagram. It shows only a boiler fitted at the side with a discharge pipe, and on the bottom with a conical member from 12 to 18 inches high. In the opening at the top of the boiler there is represented a bent nozzle pointing into the boiler through the opening. This fig. is first referred to in the specification as illustrating ‘in a diagrammatical manner a further modified arrangement,’ the previous modifications being figs. 4–6. The letterpress referring to fig. 7 is as follows:—‘In the arrangement diagrammatically illustrated by fig. 7 the nozzle (8) is arranged above the digester (2), preferably in the centre of the filling opening (23), and the jet or stream of water under pressure is directed on to a conical or like member (24) fixed in the bottom of the digester, which deflects same, and thus washes out the whole digester.’ In my judgment the last words of this description mean that the washing out of the whole of an already partially emptied boiler might thus be completed. It cannot, I think, possibly be assumed that the patentee after illustrating the methods described in figs. 1–6 with six working drawings, should go on to illustrate by a diagram only what is now claimed to be a different method of disintegrating and washing out the whole mass of grass from the boiler. That the whole seven drawings refer to a single combined method by which the boiler might be emptied is, I think, clear from the paragraph in the specification which immediately follows the description of figs. 1–7, and in which the advantages of the invention are set out as being ‘obtainable from this method of discharging the digesters.’ The pursuers, however, found on fig. 7 as fully disclosing the method now practised by both themselves and the defenders of disintegrating the grass and emptying the boiler by vertical jets of water through a flexible nozzle used independently of a conical or any like member. Accordingly at the proof a question which was much discussed was whether the nozzle represented in fig. 7 was fixed or moveable. In one sense it must be moveable, as it cannot remain in position when the boiler is shut. In my opinion the drawing and description indicate that once in position the nozzle was to remain fixed—it is to be ‘preferably in the centre of the filling opening,’ and the water is to be directed on the cone. This certainly suggests that the nozzle, having been placed in a position, was to remain stationary in that position. But this question appears to me to be rather immaterial, because on this part of his case the pursuer has to jettison the

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cone as superfluous, while in my opinion the patentee must have regarded the cone as the most important feature shown in the drawing. Its purpose is to deflect the jet, or in other words to convert the water pressure from a vertical to a lateral direction. Now according to the accepted description of the mass of boiled grass as given by Mr Ballantyne it is much less tangled between the layers than it is in other directions, and accordingly it would offer less resistance to a lateral than to a vertical attack. I think it is apparent that it was with this idea in his mind that the patentee has approached the whole problem, and that it was only after he had ascertained by the expenditure of much time and ingenuity that the mass could be disintegrated by water pressure applied laterally and after he had completed his patent that it was realised how easily the same effect could be attained by vertical pressure through a flexible nozzle. Had fig. 7 been intended to indicate such a method it is difficult to account for its being only illustrated by a diagram, and the taking out of the second patent would have been superfluous. It is for these reasons that I reach the conclusion that fig. 7 is not described as a separate method of disintergating a whole charge of boiled grass, that the cone must be regarded as its most important feature, and that the method there disclosed and described is different to the overhead method now practised by both parties to this action. That the exercise of the method illustrated in fig. 7 may have led to the pursuer's discovery of the simpler method now practised by them is highly probable, but they have not proved that they ever exercised the method of fig. 7 in the manner described in the specification by confining the direction of the stream of water to the cone so as to empty a whole charge of grass out of the boiler. There is no evidence that they ever tried to do so, and I cannot hold it proved that it is possible to do so, although there is some evidence for the pursuers that it could be done in this manner, and in cross-examination Mr Swinburne admitted that possibly it might be done.

So far then as concerns the methods discribed in the specification, figs 1–6 fail for want of description as to the manner of working, and fig. 7 in not disclosing a separate method capable of disintegrating and washing out a full charge of grass in the manner described. This materially affects another part of the pursuers' argument. It was maintained that the description of the invention already quoted, coupled with the first claim in the specification, which is “The method and means for removing the digested material from digesters which consists in subjecting the material to the action of a stream or streams of water so as to disintegrate and wash out same substantially as herein set forth,” entitles the holders of the patent to protection against any use of water under pressure for the purpose of disintegrating boiled grass. Now, had the specification disclosed an effective method of carrying out the process, I should have held that the pursuers were entitled to protection to this wide extent. In my judgment the discovery or idea that boiled grass could be disintegrated—for the disintegration is the crux of the whole matter—by water pressure through jets was a novel and valuable discovery involving ingenuity and invention, and although water pressure is a well-known force and was applied in a manner already known, yet the character of the substance to which it was applied is so peculiar that the use made of it does not appear to me to be strictly analogous to any previous use to which my attention has been drawn. Numerous existing patents were referred to in the proof in which water is used to wash the boiled pulp of wood or rags out of digesters, and these were founded on not as anticipations of the pursuers' patent but as illustrations of the analogous use of water pressure The action of the water on the pulp of rags or wood appears to me to be quite different and to consist in separating fibres already broken up and not in breaking up large fibres into small particles. I think that, had the uses to which water was put as disclosed in these patents been in any way analogous to the use to which the patentee succeeded in putting it, this means of disintegrating boiled grass would have been discovered and adopted long ago. In short, I think the discovery falls within the principles laid down by C. J. Tindal, in Crane v. Price ( 1 Webster at 409—see also Murray v. Clayton, 1872, L.R. 7 Ch. Ap. 570), and is not affected by the decision in Harwood v. G.N.R. ( 1865 11 H.L. Ca. 654). But while I think that the discovery or idea that boiled grass could be disintegrated by water pressure might be a good subject-matter for a patent, it is essential that in the patent a method of carrying out the idea should be disclosed, even if it be afterwards discovered that there are other methods by which the same idea may be more easily carried out (see L. J. Fletcher Moulton in Hickton's Patent Syndicate, 1909, 26 R.P.C. 339), and it is the failure of the specification to disclose an effective method of carrying out the idea which leads me to the conclusion that the patent is bad and that the defenders must be assoilzied. I have reached this result with some regret as I think the discovery was a meritorious one which leads to great economy in both time and money in the manufacture of paper out of grass. It was, as I have said, the result of much investigation and ingenuity on the part of the patentee, for which I think he was well entitled to be rewarded by the protection afforded by a patent, but I am unable to read the specification as disclosing any method by which it can be carried out without the exercise of some additional ingenuity and discovery on the part of the operator.”

The pursuers reclaimed, and argued—(1) The specification was sufficient. If it was insufficient the onus of proving that it was insufficient was upon the defenders, because it was they who were challenging the patent. It was necessary for the pursuers to present a prima facie case only, and slight evidence was enough as to the sufficiency of

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the specification— Turner v. Winter (1787), 1 Durn, and East 602, per Buller, J., at 607. In point of fact the specification was sufficient. It disclosed a process and the means of carrying it out and the appliances for so doing. The evidence showed that the apparatus described in the specification could be worked by an ordinary skilled workman. If a practical man was able to understand it the absence of detailed directions did not matter— Aktiengesellschaft für Autogene Aluminium Schweissung v. London Aluminium Company, Limited, (1920), 37 R.P.C. 153, per Sargant, J., at 164, affd. (1921), 38 R.P.C. 163, per Lord Sterndale, M.R., at 176; Osram Lamp Works, Limited v. Pope's Electric Lamp Company, Limited (1917), 34 R.P.C. 369, per the Lord Chancellor (Finlay) at 384, Lord Parker at 391, and Lord Parmoor at 402; Watson, Laidlaw, & Company, Limited v. Pott, Cassels, & Williamson, 1909 S.C. 1445, 46 S.L.R. 348; (1910), 48 S.L.R. 782, 27 R.P.C. 541, per Lord Justice-Clerk (Kingsburgh) at 48 S.L.R. 786, 27 R.P.C. 558; affd. (1911), 48 S.L.R. 782, 28 R.P.C. 565, per Lord Shaw at 48 S.L.R. 795, 28 R.P.C. 580; Haskell Golf Ball Company v. Hutchison (No. 2) (1905), 22 R.P.C. 478, per Buckley, J., at 493; Leonhardt & Company v. Kalli & Company (1895), 12 R.P.C. 103, per Romer, J., at 116; Edison & Swan Electric Light Company v. Holland (1889), 6 R.P.C. 243, per Cotton, L.J., at 277, and Lindley, L.J., at 279 and 282; Badische Anilin und Soda Fabrik v. Levinstein, (1887), 12 A.C. 710, per the Lord Chancellor (Halsbury) at 713; Frost, Patent Law and Practice (4th ed.), vol. i, pp. 216, 218, and 222; Terrell, Patents (6th ed.), p. 107. The use of the word “substantially” was simply verbiage—Terrell, Patents (6th ed.), p. 105. (2) There was sufficient subject-matter for a patent. If there was something new and useful a mere scintilla of invention was sufficient to support a patent— Hickton's Patent Syndicate v. Patents and Machine Improvements Company, Limited, (1909), 26 R.P.C. 339; In re Alsop's Patents, (1907), 24 R.P.C. 733, per Parker, J., at 753; Neilson v. Harford, (1841), 1 Webster 295, referred to in Terrell, Patents (6th ed.), 32; Crame v. Price and Others, (1842), 1 Webster 393, per Tindal, C.J., at 409 and 411 (see Roberts' Grant and Validity of British Patents for Inventions, p. 195); Frost, Patent Law and Practice (4th ed.), vol. i, 35; Terrell, Patents (6th ed.), pp. 39, 47, and 83; Patents and Designs Act, 1907 (7 Edw. VII, cap. 29), sec. 93, “Invention”; Statute of Monopolies, (1623), 21 Jac. I, cap. 3, secs. 6 and 7—see Terrell, Patents (6th ed.), p. 449. (3) The defenders had infringed the patent—Frost, Patent Law and Practice (4th ed.), vol. i, pp. 341 and 342. (4) In any event the Court ought to grant relief in respect of such of the claims as were valid—Patents and Designs Act 1919 (9 and 10 Geo. V, cap. 80), sec. 9; Terrell Patents (6th ed.), p. 480.

Argued for the respondents—(1) The specification was insufficient— Ackroyd & Best, Limited v. Thomas & Williams, (1904) 21 R.P.C. 737, per Cozens-Hardy, L.J., at 750; Bailey v. Roberton, (1877) 4 R. 545, 14 S.L.R. 348, aff. (1878) 5 R. (H.L.) 179, 15 S.L.R. 748— per Lord President (Inglis) at 4 R. 563, 14 S.L.R. 354; Plumpton v. Malcolmson, (1876) L.R., 3 Ch.D, 531, per Jessel, M.R., at 568; Simpson v. Holliday, (1866) 1 E. & Ir. 315. The words “substantially as herein set forth” were important— Brooks v. Lamplugh, (1897) 15 R.P.C. 33. In case of doubt a patentee must be held not to have claimed more than was substantially set forth in the specification—Patents and Designs Act 1907 (7 Edw. VII, cap. 29), section 2 (2); Frost's Patent Law and Practice (4th ed.), vol. i, pages 162 and 212. (2) There had been previous publication of the patent— Winby v. The Manchester, &c., Steam Tramways (2) Company, (1890) 8 R.P.C. 61, per Bristowe, V.—C., at p. 67; Humpherson v. Syer, (1887) 4 R.P.C. 407, per Cotton, L.J., at 412, Bowen, L.J., at 414, and Fry, L.J., at 416. (3) There was not sufficient subject-matter for a patent. The pursuers' invention was merely the application of an old and well-known process to a new material, and it did not contain enough of ingenuity or discovery. Moreover, it covered no general principle, but was confined to a particular method and means which was described in the specification. That was not sufficient— British Thomson-Houston Company, Limited v. Duram, Limited, (1918) 35 R.P.C. 161; Morris & Bastert v. Young, (1895) 12 R.P.C. 455; Murchland v. Nicholson, (1895) 20 R. 1006, 30 S.L.R. 857; Lane-Fox v. The Kensington and Knights-bridge Electric Lighting Company, Limited, (1812) 9 R.P.C. 413, [1892], 3 Ch. 424, per Lindley, L.J., at 9 R.P.C. 416, [1892] 3 Ch. 428; Windby v. The Manchester, &c., Steam Tramways Company (2), (1891) 8 R.P.C. 61, per Bristowe, V.C., at 67; Morgan & Company v. Windover & Company, (1890) 7 R.P.C. 131, per the Lord Chancellor (Haisbury) at 134; Bamlett v. Picksley (1875); Griffin's Patent Cases, 40; Tatham v. Dania, (1869); Griffin's Patent Cases, 213, per Willis, J., at 214; Harwood v. Great Northern Railway Companp, (1864) 11 Clark (H.L.) 654, per the Lord Chancellor (Westburv) at 682; Brook v. Aston, (1859) 28 L.J. (Q.B.) (N.S.) 175, per Martin, B., at 176; The Patent Bottle Envelope Company v. Seymer, (1858) 20 L.J., C.P. (N.S.) 22, per Willis, J., at 24. (4) In any event the defenders had not infringed the patent. (5) There was no record which would allow the pursuers to plead section 9 of the Patents and Designs Act 1919 (9 and 10 Geo. V, cap. 80). [ The Lord Justice-Clerk referred to Ridd Milking Company, Limited v. Simplex Milking Company, Limited, [1916] 2 AC 550].

At advising—