United Kingdom House of Lords Decisions

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URL: http://www.bailii.org/uk/cases/UKHL/1906/43SLR0671.html
Cite as: 43 ScotLR 671, [1906] UKHL 671

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SCOTTISH_SLR_House_of_Lords

Page: 671↓

House of Lords.

Friday, March 30 1906.

(Before the Lord Chancellor (Loreburn), Earl of Halsbury, Lords Macnaghten and Robertson.)

43 SLR 671

(In the Court of Session, November 8,1901, reported 42 S.L.R. 52, and 7 F. 97.)

Brown

v.

John Hastle & Company, Limited.

Subject_Patent — Patents for Inventions — Master Patent or merely Patent for Mechanical Arrangement — Claim — Infringement.
Facts:

A patent, the object of which was “the prevention of leakage of steam in steering and the like engines by the introduction into the steam feed pipe of a casing which contains a cut-off valve, operated from and acting in unison with the controlling valve of the steering or like engine,” claimed— “In connection with the valves of steering and like engines, fitting in a passage or casing through which the steam enters the controlling valve casing, a double beat or equivalent valve having opposite inclines acted on by counterpart inclines moving with the controlling valve, the parts being arranged and operating substantially as and for the purposes hereinbefore described.”

Headnote:

The owner of the patent maintained that it was a master or pioneer patent, no means up to its date having been invented for preventing the leakage of steam in steering engines, and sought to have declared as infringements later patents having the same object and using a cut-off valve, which valve, however, was operated by a different mechanical device.

Page: 672↓

Held, that the claim must be construed as being merely for a mechanical arrangement, and consequently that the later patents, the mechanical device in which did not infringe the mechanical arrangement in the earlier patent, were not infringements.

The case is reported ante ut supra.

Hastie & Company, Limited (defenders and reclaimers) appealed to the House of Lords.

The claim in Brown's specification is quoted supra in rubric.

At delivering judgment—

Judgment:

Lord Chancellor—This was an action for an infringement of a patent, and the question of the novelty of the invention was not raised upon the record, because that would have been derogating from a submission in a previous proceeding between the same parties. I do not desire to say anything whatever upon the subject of the novelty of the invention.

But, assuming that the invention was as novel as it appears to have been meritorious, I look at the claim in the appendix in order to ascertain whether or not there has been an infringement of this patent. It is superfluous to describe the mechanism of the patent, and of that which is alleged to be the infringement, for that has been done with the utmost clearness in the judgments of the Inner House, and also by the Lord Ordinary. In the result it appears to me that whether this is to be treated as an infringement or not depends upon the true construction of the claim at the end of the completed specification.

I have come to the conclusion that this claim cannot be enlarged in the manner proposed by Mr Cripps' argument. I think that the words in it, “having opposite inclines acted on by counter-part inclines,” are the material parts of the claim as stated. I do not know w'hether the claim could have been stated otherwise—at all events it seems to me that we must treat this claim for the present purpose as being a claim for a mechanical arrangement, and once that is ascertained I do not think that it can be said that the mechanical device applied by the appellants is an infringement of the mechanical arrangement which has been described in the claim of the respondents.

Under these circumstances, with the greatest possible respect for the learned Judges in the Court of Session, I am of opinion that this appeal ought to be allowed, and I move your Lordships accordingly.

Earl of Halsbury—I am of the same opinion, and I have nothing to add.

Lords Macnaghten—I agree.

Lord Robertson—I entirely agree. The only point on which I shall add one word is as to what Mr Cripps has described in English phraseology, although this is a Scotch case, as an “estoppel.” Now it seems to me to be perfectly clear that the whole effect of the consent decree pronounced in the previous action was that it tied the hands of this appellant from ever disputing the validity of the patent in question, or disputing that they had in the previous case infringed the patent.

To me it seems impossible to rear out of that consent to the decree a logical process which shall convict the present appellant of inconsistency in now arguing about a different machine altogether that he has in fact not infringed. His undertaking was not to infringe, and he seeks now to shew that he has fulfilled that, and I think he has succeeded.

Their Lordships reversed the judgments appealed with expenses.

Counsel:

Counsel for the Pursuer and Respondent— Cripps, K.C.—Sandeman. Agents— Steedman, Ramage, & Bruce, W.S., Edinburgh—Fowler & Company, London.

Counsel for the Defenders and Appellants— Solicitor-General for Scotland (Ure, K.C.) — H. Fletcher Moulton. Agents — R. H. Millar & Company, S.S.C., Leith — John Kennedy, Westminster.
1906