to, or by, each other party to the hearing of the application.
(4) The court may:
(a) extend the time for giving particulars; and
(b) allow the amendment of particulars."
A requirement in virtually identical terms to paragraph 2 of sub-reg. 12.4 is contained in O.58 r.15(2) of the Rules of this Court.
It is accepted by Counsel for WIM that RGC has, by its particulars, complied with the obligation to specify the name of the persons alleged to have performed the acts involved in the prior process and the period in which, and place where, those acts are alleged to have occurred. However, it is contended that the description is not "sufficient to identify the act" as required by Reg. 12.4(2)(b)(iii). The requirement to give, by way of particulars, a description of the prior user relied on is of some antiquity. It was to be found in R.S.C. Order LIII.(A), r.18 discussed in Minerals Separation Ltd v Ore Concentration Company (1905) Ltd (1909) 26 RPC 413 as a requirement for the particulars to "contain a description (accompanied by Drawings if necessary) sufficient to identify such alleged prior user, and, if such user relates to any machinery or apparatus, shall specify whether the same is in existence and where the same may be inspected". In the Minerals Separation Case, Neville J was asked to order further particulars of a description of "the concentration of metalliferous ores by mixing the finely powdered ore with water, adding a suitable oil, and liberating a gas, namely carbonic acid in the mixture, upon the several dates hereinafter mentioned".
The plaintiffs' second request was for further and better particulars of the kind of oil used, the quantity of oil, the percentage to the ore, "the quantity - approximately stated -of the carbonic acid liberated on every several occasion in proportion to the quantity of concentrates recovered;" and a "sufficient description of each of the said users as to apparatus, proportions, time and other matters to enable the Plaintiffs to repeat the user". Swinfen Eady J, at first instance, made an order confined to directing the defendants "to give to the Plaintiffs the best Particulars they can of the kind of oil used, the quantity of oil and percentage, and the nature of the apparatus".
On appeal, Cozens-Hardy MR, said, at 421:
"What is it that the Rule requires? That question cannot be answered in a word. It depends upon the nature of the Plaintiffs' invention - that is one thing - and it also depends upon the nature of the prior user alleged by the Defendants. If the Patent is one for machinery or apparatus, great detail is required by the Rule, to the language of which I shall call attention in a minute. Drawings have to be furnished and experiments have to be permitted, always qualifying that statement by the fact that it must be within the power of defendants to furnish the drawings and to allow the experiments. But when the Patent is for a process, and merely for a process, no such detailed Particulars are required. All that the Rule exacts is a description sufficient to identify such alleged prior user. Now in the present case the Plaintiffs allege that the Defendants are infringing a Patent called Froment's Patent. We are bound to see what it is that is claimed. It is clear that no machinery is claimed; no apparatus is claimed; it is simply and solely a Patent for a process. The first words of the Specification are these:- This invention has reference to the concentration of metalliferous ores and earths for the purpose of separating and recovering therefrom the finely divided metal or metallic compounds, and consists of a modification of what is known as the oil process of ore concentration'; and the Claim is:- The herein described process for the concentration of metalliferous ores and earths which consists in mixing the finely powdered ore or earth with water, adding a suitable oil, and then liberating a gas in the mixture substantially as
described and for the purpose specified.' There is no indication of any particular kind of oil. The Patentee claims what in one part is called a thin layer of ordinary oil, and in the claiming clause it is described as a suitable oil'. Nor is there any statement of the kind of oil which is alleged by the Patentee to be required in order to give effect to his invention." After referring to the particulars of objection, the learned Master of the Rolls, with whom Farwell LJ agreed, concluded, at 425: "In my opinion we ought not to make any Order for further Particulars on those matters. The Defendants seem to me to have gone to the full length which it was necessary for them to go. Their Particulars do contain a description sufficient to identify such alleged prior user. They give a large number of chemical ingredients, and they give the time, place persons, and the mines from which the ores came which were used on these particular occasions. It does seem to me if we were to accede to the view of the Plaintiffs in this action, we should be imposing upon the Defendants, who are resisting this Patent, a burden which they are not entitled to bear, and in my opinion, therefore, the appeal, so far as it relates to the Order made by Mr. Justice Neville, ought to be dismissed, and the appeal, so far as it relates to the Order of Mr. Justice Swinfen Eady, ought to be allowed..." The present case similarly concerns a process and not a machine or device. The process consists of five or six enumerated steps, the first of which involves the attainment of a minimum temperature of 900oC, but does not specify a range, above that minimum, of permissible temperatures. The first step also requires the use of a "solid carbonaceous reductant" without specifying it more precisely. The first step, so far as is relevant, thirdly requires the formation of metallic iron without specifying the percentage or a range of percentages of metallization. The fourth step requires a leaching with one or other or both sulphuric and hydrochloric acid in unspecified concentrations. To require RGC to provide particulars confining it to a range of permissible temperatures, to identified reductants, to a specified percentage, or range of percentages, of metallization and to a specified concentration of one or other leachant would be to confine its objection more narrowly than the words of WIM's specification. Consequently, it would offend against the principle which I understand to have been laid down by the Court of Appeal in the Minerals Separation Case. I have examined each of the authorities in this area to which I have been referred by Counsel for WIM but have found nothing in them to dissuade me from the provisional view which I have just indicated. Smith v Lang (1890) 7 RPC 148 concerned an alleged invention of an improved type of wire rope which was claimed to have been published previously "by the manufacture, sale, use or public exhibition of wire rope made according to the alleged invention by the several persons named at the times and places mentioned, viz. (a) by Mr James Buck Wilson from 1832 to 1862". On an appeal from refusal of particulars, the Court of Appeal ordered further particulars which it was apparently considered could be given after inspection of the rope manufactured by Mr Wilson. However, that was case of a device rather than a process and no particulars at all were given by way of description of the prior user. Scott v The Hull Steam Fishing and Ice Company Ltd (1896) 13 RPC 206 concerned an alleged invention of an improvement to trawl nets. Thus as in Smith v Lang the case concerned a device or article rather than a process. The particulars of objection were regarded by the Court of Appeal as vague or unintelligible, and the defendants were ordered to give further particulars "as to the mode of connecting the other boards, first, with trawl nets, and, secondly, with tow ropes, on which the Defendants rely as anticipations". I agree with Counsel for RGC that the particulars ordered were of matters which were the two core integers of the claim and in that respect Scott's Case is distinguishable from the present. Holliday v Heppenstall (1889) 6 RPC 320 concerned an alleged invention of an improvement in dyeing threads and fabrics with aniline. Cotton LJ in a passage at 327, on part of which Counsel for WIM rely, observed: "Then as regards anticipations. What is the object of this law? It is this; that the parties may come to the trial prepared to meet the case which is intended to be proved against them, and that there may be no taking by surprise, and no applications and orders for fresh trials, on the ground of the Plaintiff being surprised, and not being prepared from not knowing what the point was that was going to be brought against him by the Defendant. Then if there is a mass of alleged anticipations without showing in some way how the Defendant intends to rely on these alleged anticipations, the Plaintiff will be put to enormous expense in being prepared on all points to meet these alleged anticipations, and there will be a great increase of cost in the trial of these cases, and a great increase of the length of time which is already sufficiently long, occupied in the trial of patent actions. In my opinion, we ought, as far as we can, to discourage on both points the Plaintiff being burdened by additional costs, and the time of the Court being unnecessarily occupied by entering into a great number of questions which ought never to have been brought forward, and which have no real bearing on the questions which the Court has to decide - I mean the Courts generally, and I do not confine it to the Court of Appeal. Now, what ought to be done? What I think should be done is this: that we ought to require the Defendants to strike out from their particulars of objections those publications which they rely on simply as enabling them to prove general public knowledge at the time of these Specifications, and then I think we ought to require them to state more particularly what they rely on as regards the alleged anticipations; what the alleged anticipation is, and where it is to be found. I do not think it would be right to bind them to state what the particular pages are of the books on which they rely as regards the anticipations. That might throw a burden on them, and prevent possibly their case being properly brought forward before the Court, if by some accident they had not properly specified, or had omitted a page on which they intended to rely as regards anticipation; but if they state the nature of the anticipation they rely on, or what part of the claim they rely on as an anticipation, then unless there is something more in the Specification, or publication, which requires them to specify where that is to be found - something which notwithstanding they have indicated that leaves that which they intend to rely upon doubtful - that would be sufficient for them; but I think, in the present instance, all we ought to do is this: to make one order, on both the appeal and cross-appeal. Then we shall vary the order by ordering the Defendants to expunge all particulars which are relied on merely to prove the state of knowledge in, and before the years 1874 and 1877, and to direct them to give further and better particulars of the alleged anticipations on which they rely, and to specify where, in particular, the anticipation is to be found." In my view that order in which Lindley LJ agreed did no more than require a description of the process involved in the alleged anticipations which was sufficient to identify it. It did not require a detailed prescription of each step of each alleged anticipation sufficient to enable the plaintiff to replicate it. That view is reinforced by the explanation of Holliday v Heppenstall given by Lindley LJ as a member of a unanimous Court of Appeal in Nettlefolds v Reynolds (1891) 8 RPC 410 where his Lordship observed, at 417: "Now, the object of all this is, of course, to prevent surprise, to limit the scope of the inquiry, and to prevent expense; and, provided that the Defendant does deliver his objections fairly and honestly, it appears to me that it is not the province of the Court to tie his hands so tight, or to dictate to him in an early stage of the proceedings how exactly he is to frame his case. That is a function which the Court does not take upon itself, and it cannot, in justice to the parties, do such a thing until it has mastered the whole case, which, upon a preliminary matter like this, is perfectly impossible, because we should have to try patent cases, first of all, on objections to particulars, and then again on the trial. It appears to me, therefore, that the moment the learned Judge came to the conclusion, as he did in fact, that the defendant here had honestly done his best to give to the Plaintiff that information that he is entitled to, unless the Court came to the conclusion that there was some grievous or some obvious mistake, he ought to be satisfied with that, and not to say, I shall order further particulars, because I know from experience that if you say you rely on the whole of the Specification, when you come into Court nine-tenths will not be referred to.' If the Defendant is to be bound hand and foot to a particular page, and to a particular line, it will be perfectly impossible for him to defend his case, or to impeach the patent to the extent and in the manner in which he is entitled to do it. Nothing which I have said appears to me to be in the least degree opposed to what was said or done in the case of Holliday v. Heppenstall, where the objections were piled up to an extent which was perfectly shocking. We insisted and required that they should be amended, and half of them I suppose were struck out; but when you look at the object of these particulars, and when you bear in mind the grievous injustice which we may be doing to a Defendant by tying his hands too tight in ignorance of the material facts, it appears to
me that in this case we ought to do what we very seldom do, differ from a learned Judge on a matter which, after all, is very much a matter of discretion, and say that the Defendants have done all that they can be reasonably required to do as regards these particulars..."
In Siemens v Karo, Barnett, & Co (1891) 8 RPC 376 particulars of anticipation had been given in the form "by the general use of Wenham's regenerative gas lamps for several years prior to the patent". The vice in that form of particulars was identified by Chitty J at 379 in these terms:
"[Counsel for the defendant] at once saw, as is obvious, k, l, and m are not sufficiently specific. I will take k by the general use of the Wenham regenerative gas lamp for several years prior to the patent.' Now Wenham, as appears from what I have already said, is one of the Patentees. The Wenham Regenerative Gas Lamp' is not a sufficiently definite description of any particular lamp. There might be dozens of lamps made under Wenham's name - made either in accordance with the patents, or with any variations which can proceed from them. This particular is intended now for the purposes of anticipation, and therefore the further and better particular must specify in sufficient terms the lamp it is intended to refer to, and the time and place of user. As the particulars stand at this moment, k, l, and m can be used upon the two heads of objections - that is, general knowledge and the particular anticipation. It is now intended that they should apply only to anticipation, and therefore it is plain that as to them further and better particulars should be given."
I do not regard the present particulars as infected by that vice.
Birch v Harrap and Co (1895) 12 RPC 431 also involved an allegation of anticipation against the validity of a patent for a device or article, in that case a sewing machine. The Particulars of Objection included this paragraph:
"4. The said alleged invention was not the subject-matter of valid Letters Patent, but was the mere analogous use and application to an old and well-known sewing-machine of mechanical appliances and arrangements of parts well known and in common use in machines of a similar kind, and used for similar or analogous purposes, prior to the date of the said alleged Letters Patent."