Indian Vacuum Brake Co Ltd v E S Luard (1925)

Summary

"This is a petition under Section 26 of the Patents and Designs Act (II of 1911) for the revocation of a patent granted to the respondent on the 21st March 1922 by the Controller of Patents and Designs, Calcutta", "tried with the aid of an assessor, Mr. A.H. Thackwell" (p 2). "The petitioner is the Vacuum Brake Co., Ltd, who carry on business in the manufacture and sale of vacuum brake fittings for railway locomotives and rolling stock", and it "imported from the factory in England and sold in British India, vacuum brake cylinders described as having the value chamber mounted in the inner side of the piston according to two designs No. 14153 dated, 2nd November 1909 and No. 14678 dated 23rd April 1910" (p 2). In England "the Patent 5099 was cancelled on the 31st July 1924 by the Solicitor-General who held the view that it disclosed no invention"; in Calcutta "The application was opposed by the petitioner, but it was accepted on the 11th June 1922, and Patent No. 8018, dated 21st March 1922, the subject-matter of the present suit, was granted", and "The amendments asked for were allowed subject to the insertion of a disclaimer in the specification relating to British Specification 5864 of 1905, and in consequence of this, the present proceedings were instituted for a revocation of the patent" (p 3). The petition "is made on the ground that it is of no utility and that it is not a new invention, within the meaning of the patent law. The patent is also attacked on the ground that it was anticipated by Hardy's patent." (p 4)

Gregory J held that "in patent law the term 'utility'; is used, not in the abstract but in. a very special sense. Mere usefulness is not sufficient to support a patent", and recorded Lord Davey's words in Rickmann v. Thierry that "there must be some novelty in the mode of application" (p 4). He found that "both in the working principle, and general character of construction, the petitioner's designs and the respondent's patent are founded on Hardy's patent" (p 3). He concluded "that in no respect is the Patent 8018 an improvement on, or morn useful or better than, the petitioner's design. In my judgment it is not, as claimed, an improved vacuum brake piston and so far as I can see there is nothing new, in the sense of novelty, in the patent, and it discloses no invention. Furthermore, in my view, in material features, the patent was anticipated by Hardy's Patent." Then: "Applying the principles laid down in the cases cited, I am of opinion that the Patent No. 8018 of the 21st March 1922 granted to Mr. Luard the respondent with the amended specification relating thereto, ought to be revoked, and I give judgment accordingly in favour of the petitioner. The respondent mast pay the petitioner's costs in these proceedings." (p 7)

What the court decided

1. The petitioner's designs in prior use. "These designs were published, and have been publicly known in British India since 1910." (p 2) "It has been proved, and it is not disputed, that the petitioner's ball valve type Exhibit D has been in use on Indian railways many years, and long prior to the grant of Patent 8018 to the respondent". "It is important therefore to nee the interpretation placed by (the, Courts on the terms 'utility,' 'novelty,' and 'invention.'" (p 4)
2. Utility in a special sense. "The cases show that in patent law the term 'utility'; is used, not in the abstract but in a very special sense. Mere usefulness is not sufficient to support a patent." In Young and Nelison v. Rosenthal & Co., "Grove, J. in charging the jury described 'utility' as meaning an invention better than the preceding knowledge of the trade as to a particular article." (p 4)
3. Known contrivance, analogous use. "As to the meaning of 'novelty' and 'invention,' Lord Westbury, in the case of Harwood, v. Great Northern Railway Co." "said 'you cannot have a patent for a well known mechanical contrivance merely when it is applied in a manner or to a purpose, which is not quite the same, but is analogous to the manner or the purpose in or to which it has been hitherto notoriously used.'" (p 4)
4. Novelty in the mode of application. "In citing thin rule in Rickmann v. Thierry" "Lord Davey said:' It is not enough that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be some novelty in the mode of application. By that I understand that in adopting the old contrivance to the new purpose, there must be difficulties to be overcome, requiring what is called invention, or thane must be some ingenuity in the mode of making the adaption and Cotton, L. J., in Blakey v. Latham" "laid that to be new in the patent 'sense, the novelty moat show invention" (p 4). The Court then proceeded "Applying the principles laid down in the cases cited". (p 7)
5. Common origin in Hardy's patent. "I think there can be no doubt that both in the working principle, and general character of construction, the petitioner's designs and the respondent's patent are founded on Hardy's patent". "In the respondent's patent the ball valve, as it is in Hardy's patent, is attached to the piston wall inside the cylinder", and "so both in Hardy's patent and in the petitioner's design the ball rests on a removable seating." (p 3)
6. Fewer parts, one piece. "Mr. Bwye says that she essential difference between the two is the simplicity of the respondent's ball valve which has fewer parts the ball seat sing combined with the plug. I do not think that this in itself is enough to support a patent. Many cases are collected in Fletcher on Patents P. 39 where it is stated that patents for making in one piece, articles, previously made in two or more pieces, have generally been held invalid. I have been unable to see what advantage results from this and I cannot regard it as an invention." (p 5)
7. The advantages claimed by the patentee. Of the removable valve seat, "In my opinion there is no substance in the point made." "The overhauling of the ball valve is so occasional, that if Mr. Luard's design showed any greater convenience, which I have been unable to find, it would not be one of value." Of the cage, "As there is no greater likelihood of the cage not being replaced than there, is of the ball not being replaced in the chamber in Mr. Luard's construction, there is no substance in the advantage he claims differentially for his own design." (p 5)
8. A misleading statement in the specification. "In this connexion, Mr. Luard has made a state, went in his amended specification to which exception has, and I, think justly, been taken." "If Mr. Luard had seen a specimen of the petitioner's ball valve, it should have been patent to him' that the ball comes away in the cage, and that his statement was misleading." (p 6)
9. Welding the valve. "Mr. Bwye says that welding the valve after it has been fixed to the piston wall eliminates a possible source of leakage of air at the place of attachment. I do not think it can be contended that there is any invention in this. Mr. Bwye concedes there is no novelty in welding and there can be no question that welding could be applied equally well in the case of the petitioner's ball valves if were considered an advantage." "The evidence altogether leaves the impression on my mind that the welding process, taken as a whole, is not unattended with danger to the piston. I do not find in Mr. Luard's specification or affidavit, a claim to any specialty in the process". (p 6)
10. An independent witness. "Mr. Cook has many years' practical experience of vacuum brakes and is well acquainted with the construction and working of the petitioner's ball valve type D and lie is a witness unconnected in any way with the parties. He was unable to find anything new, or, from the point of view of practical utility, anything more useful in Mr. Luard's patent." (p 7)
11. No improvement, novelty or invention. "After giving my best consideration to the several matters on which evidence has been given and the question raised in this case with reference to both Mr. Luard's patent and the petitioner's deign, I have come to the conclusion that in no respect is the Patent 8018 an improvement on, or morn useful or better than, the petitioner's design. In my judgment it is not, as claimed, an improved vacuum brake piston and so far as I can see there is nothing new, in the sense of novelty, in the patent, and it discloses no invention." (p 7)
12. Anticipation by Hardy's patent. "Furthermore, in my view, in material features, the patent was anticipated by Hardy's Patent. Applying the principles laid down in the cases cited, I am of opinion that the Patent No. 8018 of the 21st March 1922 granted to Mr. Luard the respondent with the amended specification relating thereto, ought to be revoked, and I give judgment accordingly in favour of the petitioner." (p 7)
13. Procedure. Costs, experts and the assessor. "The respondent mast pay the petitioner's costs in these proceedings. The Taxing Officer will on taxation fix what allowance can reasonably be made to the expert witnesses in the suit, viz.' Messrs. Cook, Remfry and Bwye for qualifying themselves for the purposes of giving evidence and also for their attendance in Court; the amount to be fixed by the Taxing Officer in his discretion. Under Section 35 of the Patents and Designs Act I fix the remuneration of the accessor at Rs. 100 per diem. This item will not be chargeable to the parties." (p 7)

Subsequent treatment

• Followed — In Laxmi Dutt Roop Chand v Nankau (1962) the Allahabad High Court recorded that in this case "it was held by a single Judge of the Calcutta High Court that the term 'utility' used in the Act has been used in a special sense" (para 28).