Covneu. 4 fis v discharged and order nisi to qu

Covneu. 4 fis v discharged and order nisi to qu - [1907] HCA 3 - HCA 1907 case summary — Zoe

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unless, possibly, in the case where the product is of such a nature that the mode of production cannot be discovered from it. There are, no doubt, reported cases in which the language of the learned Judges is wide enough to cover this proposition to its fullest extent. But with one possible exception: Wood v. Zimmer (1), - which is not fully reported, so wide a proposition was not neces- sary for the decision of any of the cases. The invalidity of a patent which follows from what is sometimes called, indiscrimi- - nately, public user may depend upon either of two reasons: (1) If the public user, whatever that term means, has been by the - inventor himself, the invention is no longer new. In that case - the objection is want of novelty. (2). If the public user, what- ever that term means, has been by others, the grant is forbidden by the Statute of Monopolies, which is incorporated in the definition of the term "invention" in the Victorian Patents Act - 1890. The ground of the objection founded upon user by the inventor alone is, therefore, that the invention has been published to the world. And so the case is treated by the Courts in Hancock y. Somervell (2) (quoted in all the text books); Morgan v. Seaward (3); Harwood vy. Great Northern Railway Co. (4); Humpherson v. Syer (5), and other cases. But it is manifest that, whether an invention has been published or disclosed to the world or not is a question of fact. I will afterwards consider the question whether the use by the public of an article from which no information can be obtained as to the nature of the process by which it is produced is a user by "others than the inventor" within the meaning of the Statute of Monopolies, and the further question whether the disclosure of means of know- ledge is conclusive or sufficient evidence of disclosure of the invention. If the sale or use of the article produced gives in fact no information to anyone as to the nature of the invention it is hard to discover any principle on which it can be said that there - has been a disclosure.

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agents for the plaintiffs. It was deposed by the salesman who had charge of that branch of their business during all that period that in May 1893 some hundreds of new burners came into his hands, which were put to use in the warehouse. A large room on the first floor, about 80 feet by 40 in dimensions, was fully lighted with twelve or fourteen of them, and they continued to be so used for many years. They were similar in appearance to those now made by the plaintiffs under their patent, and were sold in similar boxes. The witness said that, so far as he could see, there was no change in the shape of the mantles, or in the brilliancy of the light that they gave, or in the quantity of light which they diffused, before and after March 1894. It appeared from other evidence of expert witnesses that the light which had been given by all the mantles in use before the plaintiffs' invention was far inferior to 'that given by those made under it. The learned Judge of first instance was of opinion that this witness was thoroughly trustworthy. It is contended for the respondents that, even assuming the accuracy of his evidence, it is not suffi- cient to establish identity in kind between the mantles sold before and those sold after the grant of the patent. As I have already said, the evidence is circumstantial. In my opinion it is highly improbable that, in the case of a large room entirely lighted by twelve or fourteen hoods, a sudden inerease in brilliancy (to the extent of from 50 to 80 per cent.) would not have been noticed by an intelligent observer whose duty it was to push

the sale of the article in question. It is also highly improbable that the plaintiff company would have begun their operations in Australasia by sending out obsolete or obsolescent hoods, and _ when the new discovery was made would not have called public attention to it. Public attention was in fact called in June 1893 to the "New Welsbach Gas Burners," but it was not proved that this was done under the plaintiffs' authority. If, however, still newer and much better hoods were sold after the date of the _ patent, it would have been to the plaintiff' interest that the fact
should be' made known to the public. The plaintiffs' agents, _ however, whose special duty it would have been to make it _ public, were not asked to do so. The natural inference of fact is

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washing with hydrochloric acid, which fabric is saturated with 'an aqueous solution of nitrate or acetate of the oxides of the rare metals, and so forth. As to the facts which came out in evidence before Hodges J., there were sales by James McEwan & Co., first apparently on their own account, and secondly as agents for the respondents ; (a) on their own account for some time in 1893, not later than June, and (b) as agents for the respondents from September 1893 till long after the issue of the patent. I shall not follow His Honor through the details of the evidence as to the identity in kind of the mantles sold by James McEwan & Co., whether independently or as agents before the patent was issued, and those sold by the company afterwards as agents under the patent. Evidence was given by a witness who was ina responsible position in McEwan & Co.'s establishment, who had to look after this branch of their business, and who, more than anyone else, probably, would be likely to notice any sensible difference in appearance in the shape, make or luminousness, or in the colour of the light which the mantles gave. It would be most strange that there should be any marked difference in any of those par- ticulars which would not be observed by him. At any rate he gives evidence that, during the period antenior to the agency of McEwan & Co. and from that onwards and during the latter period after the issue of the patent, he could observe no difference, in any of those particulars, in the appearance of the mantles. That seems to me to be primd facie evidence. Unanswered it is strong evidence. Of course I do not forget that, when novelty is in issue, the presumption is that the invention is novel once the patent is produced. The case of Amory v. Brown (1) cited by Mr. Coldham, seems to establish that proposition, and Lindley LJ. in Harris v. Rothwell (2), cites it with approval as settling the question. When the question is one of novelty the plaintiff establishes a primd facie case by proving his patent, so that the burden is then thrown on the defendant of proving prior use cr prior publication, but when he has given express, even though not overwhelming, evidence to rebut the tacit presumption, does it not become fatally strong when no attempt is made to deny

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H.C. or A. or in any way meet it? It is not disputed by the responden Bo: that all the mantles sold from September 1893 were Welsba Couey mantles. Were those sold before that time different? Eviden Werepacn having been given that they were the same in appearance, that Lieut Co. or in shape, make, luminousness, colour, &ce. - in fact that McEw: ae * & Co's employé could not find any difference - it would have interesting to know whether the mantles previously on sale y withdrawn in September when the agency was conferred, a replaced by fresh ones; or whether the previous stock allowed to run down to nothing and new stock put in its place September; and similarly as to the period between Septem 1893 and the issue of the patent. The defendant haying elicited prima facie evidence that the mantles sold during the periods were precisely alike - indeed identical in effect and so presumably in composition - the fact that no attempt is made t shake the evidence in its main features or to countervail it mu have been most impressive to the learned Judge who tried case, as it would have been to any of us. The expert evidene has been sufficiently dealt with by His Honor the Chief Jus and I need only state that I have come to the same matter o fact conclusion as he has on that question. Now the Statute*of Monopolies (21 Jac. I. e. 3), after prohibit ing monopolies, enacts in sec. 6 that: "Any declaration befor mentioned " (against monopolies) " shall not extend to any letter patents and grants of privilege for the term of fourteen years 0 under, hereafter to be made, of the sole working or making of a manner of new manufactures within this realm, to the true am first inventor and inventors of such manufactures, which oth at the time of making such letters patents and grants shall use." The Victorian Patents Act 1890, defines "inyention" "any manner of new manufacture which might be in En and Wales the subject of letters patent and grant of pri within section six of the Statute of Monopolies," &. So that thi definition clause of the Victorian Patents Act 1890 brings inté use, for the purpose of defining "invention," the very ph ology of the Statute of Monopolies. Now the question here is really in a broad way one of novelty. There were some ¢ pre sions of Mr. Justice Story in the case of Pennock & Sellers ¥

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way, they become absolute." In illustration of that he cited the ease of dedication of a highway. The following passage from a well known text book was cited with approval by high authority in the House of Lords in 1877 on a question of prior publication. "If the public once becomes possessed of an invention by any means whatever, no subsequent patent for it can be granted either to the true and first inventor himself, or any other person, for the public cannot be deprived of the right to use the invention, and a patentee of the invention could not give any consideration to the public for the grant, the public already possessing every- thing that he could give." That passage is from Hindmarch on Patents, 1st ed. (1846), p. 33, and Lord Blackburn says in Patter- son v. Gas Light and Coke Co. (2): - * This, is, in my opinion, a correct statement of the law." The passage is cited again with approval by Fry L.J., in Humpherson v. Syer (3), and as Lord Blackburn says in the case I have mentioned, the consideration for a patent is the communication to the public of a process that isnew. It may be deprived of novelty in many ways, but in three principal ways : - (1) by prior publication, i.e. by publication of a sufficient description which would enable people to construct or make the thing in question by a specification which would give similar light and information, and published before the patent ; or (2) by prior user, i.e, user before the patent, except for the purposes of mere experiment and under confidence, by the inventor himself; or, (3) by user by the public in the ordinary and open way, as, for instance, by buying it in the open market and using it for the purpose for which it is designed. So, as to the issue of "true and first inventor," that in most cases is a mere question of novelty and generally depends upon the words which are to be found in the Statute of Monopolies. In that connection I refer to the judgment of Lindley LJ., in which Cotton L.J. concurred, in

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contidence was enough to constitute publication. Hoe & Co. v. Foster & Sons (1) was a case in which there wasa user of printing machines by the patentees and the newspaper owners in con- junction, for a fortnight up to the date of the grant. The machines which were imported by the patentees for the news- paper owners under contract, made several trial runs, and some small defects were remedied. On all occasions the papers were sold as printed by the machines, which were running perfectly a week before the patent issued. The machines were seen by several persons, and though it was alleged that the user was under a pledge of confidence, that excuse was brushed aside, and it was held by the Court of Appeal that the user described was fatal to the patent. Vaughan Williams LJ. concluded his judgment thus (2): - * I am aware that the Statute of Monopolies speaks of user by others, and at the same time there is no doubt that a user by the patentee does prevent his subsequently taking out letters patent, and it seems to me that really, where- ever you have a patentee supplying the patented article in such a way and to such an extent that he cannot recall the patented article - that he cannot impose any obligation of secreey - im- mediately you have that state of things, it becomes impossible for the inventor subsequently to take out letters patent." Of course, in that case the thing patented was a machine, the im- provements in which, the subject of the patent, would be dis- closed to a competent person by inspection. But the passage shows clearly the learned Lord Justice's opinion that the avoid- ance of a patent by user on the part of the inventor himself stands on the ground of publication or gift to the public - in effect the ground of want of novelty; while the user by others is referable to the explicit exception in the Statute of Monopolies. Both the other members of the Court - Lindley M.R. and Chitty L.J. - based on this user their decision on the two issues - first, that the invention was not new, because the patentees themselves had used it before grant and so had published it, and, secondly, that it had been used by others before the date of the patent. As Moulton, then Q.C. now L.J., said in the course of the argu-

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Judgment (182 paragraphs)

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