vidal dyes syndicate ld. v, levinstein ld. same v, read

Supplement.]May 15, 1912] THE ILLUSTRATED OFFIOIAL JOURNAL (PATENTS). 245;

Vol. XXIX.] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES. [No. 14.

Vidal Dyes Syndicate Ld. v, Levinstein Ld.Same v, Read Hollidrty &; Sons Ld.

IN THE COURT OF ApPEAL.

Before THE MASTER OF THE ROLLS AND LORDS JUSTICES

FLETCHER MOULTON AND BUCKLEY.

,January 11th, 12th, 15th, Ifith, 17th, 18th, 19th and 20th, and!'J February fst and 9th, 1912.

VIDAL DYES SYNDICATE Ln. v. LEVINSTEIN LD.

SAME v. R~AD ,HOLLIDAY & SONS J....D.

l(ate!1't.-In/ringement.-Oonstruction of Specijication.-Oom'lnon krunoledae.- $peci./ication· h~ld sufficient and P~ttent valid. - Infrinqement found.

10 Judqment /01" Plaintiffs at the trial.-Appeals to Court of Appeal alloLved.~

Patent held invalid.-Nonw'injringement f01tnd.-Oosts.

In 1896 a Patent was granted for" Improvements in colouring matters."The Olaim was for improuements in the manufacture of' black. dye-stuffs;60nsistihgin causing sulphu« to react, either alone or -in the presenceof

15 sulphuret of sodium, upon diamidophenols and diamidonaphthols or UPOl1,

dinitrophenol». and 'd1~nitronaphthols, as described. Tuio examples of theapplication of the process to dia'midophenol and dinitrophenol were givert.The Specification stated, as to the dinitrophenols, that it was necessary toreduce 'those, bodies by' means oj sulphuret of sodium previously to heating them

20 witlisulphu», but, as to the dinitronaphthois, that it would be also useful toreduce them.: In two actions for inf'rinqement of the Patent, tried together, theDefendants alleged (inter alia) that there had been prior publication by certainSpecifications, and that the direction s in the Specification were insufficient,in that no details were given as ~o the treatment of naphthol derivatives, and

25 misleading, in that the processesdescribed did not give black dyes. The Plaintiffscontended that the common knowledge of a dYfirchemist was sufficient to enablehim to make the variations neceeearufor carrying out the processes. T~ell

alleged that the Defendants' dyes had been produced, as in one of the Plaintiffsexperiments, by boiling sodiuan sulphide, sulph1£r, and dinitrophenol' with a

30 refiuo: condenser for a considerable time, and the Defendants admitted tha!their dyes had been prepared by a process indi.~tingu1:shable from, that of the

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Supplement. ]246 tHE ILLUSTRATED OFFICIAL JOURNAL (PATENTS). [May 15, 1912

REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [Vol. XXIX].

Vidal Dyes Syndicate Ld. v. Levinstein. Ld.Same v, Rectd Holliday & Sons Ld.

Plaintiffs' experiment, but contended that the process was not within thePatent. It was held at the trial, that the prior Specifications did not suggestthe use of any tri-substituted derivatives of benzene or naphthalene, and thatthey were not anticipations of the invention; that they formed part of thecommon knowledge of the art of suiphu» dyeing; that the directions given in 5the Specification were sufficient; that the Olaim covered the process by whichthe Defendants' dyes had been prepared; and that the Defendants had infringed.Judgment was given for the Plaintiffs, an inquiry as to damages was ordered,and costs 01~ the higher scale were allowed. The Defendants in both actionsappealed to the Court of Appeal. 10

Held, that there was no common, knowledge as to the effect of heating thebodies mentioned in the Specification with sulphur, either alone or in the presenceof sulphuret of sodium; that, as to the diamidonaphthols, the Specification wasinsufficient; that, as to the dinitronaphthols, the Specification, in statinq thatit would be useful to reduce before treatment with sulphur, erroneously implied 15that the dye could be formed without previous reduction, and the directionsgiven were insufficient , and that the Patent uias invalid. Held also, that theDefendants' dye ioas a different subetance from the Plaintiffs', and was notproduced by the process claimed.

The appeal was allowed with costs. 20

Simpson v. Holliday (5 N.R. 840; L.R. 1 H.L. 815) and' Heath v. Unwin(2 Webs. P.O. 228; 5 H.L.C. 545) followed.

The nature of the instructions required of a Patentee in such a Specificationconsidered.

On a subsequent application as to the costs, it was held that, although the 25Particulars of Objections in the two actions differed, there had been no surprisethat the actions had been dealt with as one, and that the Defendants must havethe costs, on the" higher scale, of the issues decided in their favour. As to theallegation, that the manufacture of the patented article had been mainly abroadmade by the Defendants in one of the actions, but abandoned, no costs were 30given.

On the 24th of July 1896 Letters Patent (No. 16,449 of 1896) were granted toHenri Raymond Vidal for" Improvements in colouring matters."

The Complete Specification was as follows :-" I have found that sulphur not" only reacts on the disubstituteg derivatives of benzene or naphthalene but also 35" upon certain trisubstituted derivatives" and am.ong others, upon diamidophenols" and upon diamidonaphthols.

"Thus, by heating 3·2 kilogrammes of sulphur with 12·6 kilogrammes"diamidophenol 1.2.4 at a temperature of ~O to 120 for 6 to 8 hours I obtain a" colouring matter soluble in alkaline sulphides as a blue which dyes cotton 40"black. To facilitate the reaction, it is expedient to add sulphuret of sodium," in order to dissolve the sulphur and diamidophenol,

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•" I may replace the diamidophenol 1.2.4 by the corresponding dinitrophenol

" or the mixture of dinitrophenols 1.2.4 and 1.2.6, obtained conjointly by the" nitrification of phenol. In this latter case, it will be necessary to previously" reduce the dinitrophenols by means of sulphuret of sodium and to add sulphur

5 '~to the reduced mass. The dinitrophenols may be replaced by dinitronaphthols" such as the 1.2.4 or naphthalene yellow. It will also be useful, in this case, to" reduce the nitrified compound by means of sulphuret of sodium and to sub" sequentlyadd sulphur.

" For example: I take:10 " Sulphuret of Sodium... 3 kg.

" Dinitrophenol ... 1 kg. 840 gr." I heat the mixture to above 140 degrees Centigrade in a suitable vessel

" provided with a reducing agitator and after rednction, I add:" Sulphur ... 350 gr.

15 " When discharged from the apparatus the mass is crushed to a state suitable" for sale." .The Patentee claimed :-" The above described improvements in" the manufacture of black dyestuffs, these improvements consisting in causing" sulphur to react, either alone or in the presence of sulphuret of sodium, upon" diamidophenols and diamidonaphthols or upon dinitrophenols and dinitro-

20 "naphthols, as hereinbefore described."On the 22nd of July 1910 the Vidal Dyes Synd£cate Ld, commenced an

action for infringement of the Patent against Leuinstein Ld. claiming the usualrelief.

The Plaintiffs by their Statement of Claim alleged that they were the owners25 of the Patent, that it had been, at all times material to the action, valid and sub

sisting, and that the Defendants had infringed. By their Particulars ofBreaches they alleged that the Defendants had, in infringement of the Patent,imported into, made, sold, supplied and used in this country dyes made asdescribed and claimed, and that in particular they had, in December 1909,

30 snpplied to Askew and Dixon one keg of dye manufactured in infringement ofthe Patent. The invoice accompanying the said keg of dye was in thepossession of the Plaintiffs' solicitors and might be inspected at their office.

The Defendants by their Defence alleged that they had not infringed, andthat the Patent was invalid, and by their Particulars of Objections they alleged

35 (1) that the alleged invention was not new by reason of prior publication bythe deposit in the Patent Office Library of the two following Specifications, thewhole of each of which was relied upon :-Imray (No. 23,578 of 1893 and No,9443 of 1894). (2) The alleged invention was not subject-matter. TheDefendants would rely thereunder upon the matters set out in the preceding-

40 paragraph, and upon the common general knowledge relating to the manufacture of dyes and other colouring matter, (3) The alleged invention was notuseful. (4) The invention was insufficiently described, inasmuch as (a) diamidophenol was an exceedingly oxidisable body and could not be procured in theopen market. No method was given by which diamidophenol could be pro-

45 duced on acommercial scale or at all; (b) the Complete Specification did notsay whether ·the sulphuret of sodium was to be used in the crystalline form,fused, or pure. (5) The Complete Specification was misleading, inasmuch as(a) no colouring matter was obtained by carrying out the example specified onpage 2, lines 16-23,* if the ordinary sulphuret of sodium was used in the pro-

50 portions specified; (b) if fused sulphuret of sodium was used, and the crushed

* Supra, lines 9 to 16,T2

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mass used as a dye, the colour produced was a very weak greyish brown; (c) ifpure ·100 per cent. sulphuret of sodium was used the resulting colour was adirty brown; (d) no black colouring matter could be obtained by strictly andcarefully carrying out the example given on page 2, lines 16-23.*

The Plaintiffs delivered the following Interrogatories :-" 1. In the manufac- 5" ture of the keg of dye or any part thereof referred to in paragraph 2 of the" Particulars of Breaches :-(a) Was sulphur caused to react, and whether or not" in the presence of sulphuret of sodium, upon diamidophenol or/and whether" diamidonapthol? (0) Was sulphur caused to react upon dinitrophenol or/and" whether dinitronapthol previously heated with or/and whether in the presence 10" of sulphuret of sodium? If the Answer to (a) or (b) is in the negative-(c)" was sulphur added to sulphuret of sodium, and the product used to react upon"diamidophenol or/and whether diamidonapthol or upon any and what" dinitrophenol or/and whether dinitronapthol? If the Answer to (a) or (b) is" in the negative-Cd) Was sulphur caused to react in the presence of sulphuret 15" of sodium or/and whether the product of adding sulphur to sulphuret of sodium" caused to react upon the product of heating dinitrochlorbenzene and caustic" soda or/and whether upon the product of heating dinitrochlornapthalene and" caustic soda ? "

Herbert Leuinstein, manager of the Defendant Company, stated that his 20Answer to each. of the Interrogatories was in the negative, except that,asregards Interrogatory 1 (c) the Defendants in their process had produced sodiumtetrasulphide Na2S4, and then caused the same to react upon dinitrophenol incombination with another organic compound, not being any of the substancesmentioned in the Plaintiffs' Specification. 25

Also on the 22nd of July 1910 the Vidal Dyes Syndicate Ld. commenced anaction for infringement of the Patent against Read Holliday &: Sons Ld.,claiming the usual relief.

The Statement of Claim and Particulars of Breaches were the same as in theaction against Levinstein Ld., except that it was alleged that in December 1909 30the Defendants had supplied to Askew and Dixon two kegs of the dye.

The Defendants by their Defellce-(l) Admitted that they had manufacturedthe two kegs of dyes referred to, but denied that they had infringed. (2) Theyalleged that the Patent was invalid. (3) In the alternative, they would rely, asa defence, upon the fact that the patented process was carried on (if carried on 35'at all, which was not admitted) exclusively or mainly outside the UnitedKingdom, that was to say, by the Plaintiffs or by Raumond Vidal at Argenteuilin France, The patented process was not, and had not since 1903 been, carriedon in the United Kingdom. (4) In further alternative, if the dyes referred toin the Particulars of Breaches infringed the Patent, the Defendants would rely 40as a defence upon the fact that the reasonable requirements of the public withrespect to the patented process had not been satisfied, inasmuch as the Plaintiffshad neglected to carryon the process to an adequate extent, having regard tothe demand for the product. There was a large demand for the dyes, but nosuch dyes manufactured by the Plaintiffs could be obtained in the United 45Kingdom.

By their Particulars of Objections the Defendants alleged that-(l) 'I'healleged invention was not new; it had been pnblished by the following Specifications :-Ilnray (No. 23,578 of 1893 and No. 9443 of 1894); Read Holliday ~Sons Ld. (No. 11,370 of 1896). The whole of each of the Specifications 50

* Page 24:5, lines 9 to 16, supra.

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-VidalDnes Syndicate v. Levinstein Ld.Same v. Read Holliday &; Sons Ld,

was relied upon. (2) The alleged invention was not subject-matter, havingregard to the general common knowledge. The Defendants would rely uponthe Specifications in paragraph 1 referred to, as part of the general commonknowledge of the art. (3) 'I'he alleged invention was not useful. (4) The

;) Specification was insufficient to enable the invention properly to be carried intoeffect. Particulars.-No proportion of ingredients were given in the Claim, or,except in the specific examples, in the Specification. In the example, page 2,lines 3 to 5,# diamidophenol was not a commercially known substance and wasunstaple at the temperature indicated. No means of preparing or preserving it

10 were indicated. The operation described at page 2, lines 16 to 19,t produced asolid mass, and the next step 'described was therefore impracticable. Theproportion of sulphuret of sodium given at page 2, lines 16 to 22+ wasinsufficient for the suggested reduction. If the example described at page 2,lines 16 to 22+ was carried out with sulphur alone either the dinitrophenol

15 volatilized or an explosion occurred. None of the examples or processesdescribed gave the result it was alleged to produce. (5) The Specification gave'directions that were misleading or dangerous. Particulars were given underparagraph 4.

The Plaintiffs delivered the following Interrogatories :-" (1) In the manu-20 " facture of the two kegs of dye or any part thereof .... (a) Was sulphur

" caused to react and whether or not in the presence of sulphuret of sodium upon" any diamidophenol or/and whether any diamidonapthol? (b) Was sulphur" caused to react upon any dinitrophenol or/and whether any dinitronapthol,"previously treated with or and whether in the presence of sulphuret of

25 "sodium?"Joseph Turner, manag-ing director to the Defendant Company, in answer

to the first Interrogatory, said "N0." (2) In the manufacture of the"B.X." keg referred to sulphur, dinitrophenol and sulphide of soda wereemployed, but not c1initronaphthol. In the manufacture of the ,; R.X." keg

30 referred to, sulphur, dinitrophenol and sulphide of soda, together with anothersubstance, were employed, but not dinitronaphthol.

In answer to Interrogatories delivered by the Defendants, E. C. Scott,secretary of the Plaintiff Cornpany, said that the Works of the Plaintiffs atWest Ferry Road, Millwall, had been sold in January 1905. 'I'he stock of

35 dye-stuffs manufactured according to the invention the subject of the Patenthad not been disposed of in or about December 1904. The Plaintiffs had notthemselves possessed any works since January 1905, but the invention had atall times material been worked in the United Kingdom by their licensees andalso by infringers.

40 Evidence in support of the Plaintiffs' case was given by H. Ballantyne" before H. Fletcher Moulton ·as Special Examiner on the 18th, 20th and 21st of

March 1911 (for his evidence see 28 R.P.C. 545).On the 22nd of March 1911 the Defendants' solicitor in the action against

. Read Holliday &: Sons Ld. wrote to the Plaintiffs' solicitors that, in view of the45 objection suggested by the Plaintiffs in the examination, that dinitronaphthol

and diamidonaphthol (or one of them) was not within the Particulars ofObjections, they gave notice that the Particulars of Objections were intendedto cover and include Objections that none of the bodies mentioned in theSpecification would produce dyes that dyed cotton black with sulphur and (or)

50 sulphide, and that none of the processes described in the Specification with

* Page 245, lines 9 to 11, 8upra. t Page 245, lines 9 to 11, eupra.::: Page 254, lines 9 to 16, supra.

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Vidal Dyes Syndicate Ld. v. Levinstein u:.Same v, Read Holliday &: Sons u:

'any of those bodies would produce dyes that dyed cotton black, the Objectionapplying to all and each of the bodies and processes. On the 23rd of March 1911the Defendants' solicitors in the action against Levinstein Ld. wrote to thePlaintiffs' solicitors that they intended to allege at the trial as an Objection tothe Patent under the Particular of want of utility that the treatment of dinitro- 5naphthol, whether worked according to the Specification example as a substitutefor dinitrophenol, or by any treatment, either with sulphur alone or withsulphur and sulphide of sodium, would not produce a black dye. In bothactions, the Defendants' solicitors wrote that they would contend that theirParticulars covered the above Objections, but if it was held that they did not, 10the Defendants would apply at the hearing for leave to amend by particularisingthose Objections.

The action came on for trial on the 1st of May 1911 before Mr. JusticeParker, who held that the prior Specifications did not suggest the use of anytri-substituted derivatives of benzene or naphthalene, and that they were not 15anticipations of the invention; that they formed part of the common knowledge of the art of sulphur dyeing; that the directions given in the Specification were sufficient; that the Claim covered the process by which theDefendants' dyes had been prepared; and that the Defendants had infringed.Judgment was given for the Plaintiffs, an inquiry as to damages was ordered, 20and costs on the higher scale were allowed (.28 R.P.C. 541).

The Defendants in both actions appealed to the Oourt of Appeal.The appeals came on for hearing on the 11th of January IH12.Walter I{.O. and J. H. Gray (instructed by Grundy, Kershaw, Samson &: 00.)

appeared for the Appellants Leoinsteiri Ld., Walter K.O. and Kerly (instructed 25by Frank Patteson) appeared for the Appellants, Read Holliday & Sons Ld.;and Astbury K.O. and Oolefax (instructed by Bristoios, Cooke and Carpmaeiyappeared for the Respondents in both actions.

Walter K.C. for the Appellants in both actions.-Diaillidophenol will give ablack dye; diamidonaphthol will give, not a black, but a brown, dye, even 30when treated in the light of modern knowledge; dinitrophenol, treated by themethods known at the date of the Patent, gives a brown dye, but treated inaccordance with modern knowledge, gives the finest black known; dinitronaphthol cannot be used with the patented process, but, by modern research,has been found capable of giving a brown, but not a black, dye. As to both 35the naphthol derivatives, no sufficient information is given in the Specification.The Patentee says that dinitronaphthol may be treated with sulphur alone, butthe process will not succeed without polysulphide. 'I'he alleged infringementconsists in the production of a black dye from dinitrophenol by a processunknown at the date of the Patent, and only discovered five years later. The 40Specification is extremely vague. The literature of the dye-chemist consistslargely of Specifications. Croissant and Bretonniere used all sorts of materials,and obtained a brown dye, Cachou de Laval, from sawdust : the evidence isthat, by their process, no black dye was ever produced. In 1893 Vidal took outa Patent for the action of polysulphides on certain bodies, but there is no 45evidence of anything having been done. under that Patent; and in 1894 he.dealt with disubstituted benzene derivatives, and obtained a very fine blackdye. He used a high temperature and fused the mass. Oroissant andBretonniere's Specification does not deal with aromatic bodies. They taught-the world that by acting on certain bodies with polysulphides a dye-stuff is 50obtained, the -eolour depending on the time and temperature of the reactionthe higher the temperature, the nearer is the approach to black; but they neverobtained a black. Vidal's 1894 Patent included dinitro-bodies generally. The

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'nitrated compounds of naphthols are always dinitronaphthols. The 1894Patent related to a melting process after the addition of the sulphur. The proportions given are such as to lead to the formation of a polysulphide in thecase of the 1893 Specification, and of a higher polysulphide in the case of the

5 1894 Specification. 'I'he Appellants' witnesses say that the expression 'Ii the"nitrated compounds of naphthol," would have directed them to thedi-derivatives: the Respondents' witnesses say it would have indicatedthe mono-derivatives. In the 1896 Patent sulphur is, for the first time,used alone, without polysulphic1es, for obtaining a sulphur dye. The

10 sodium sulphide and dinitrophenol are in almost the molecular proportions. At 1400 ammonia is still being given off, and the dinitro-body passesthrough the stage of the amidonitro-body. The Appellants' witnesses wenton until the reaction was complete; if the directions are followed only a browndye is obtained. The Respondents say, that if they raise the temperature to 1900

15 they get a black dye, but it is brown and only appears black when thicklypainted on the cloth. There are no instructions as to the dinitronaphthols,except that the dinitrophenols may be replaced by them. To obtain a black,it is necessary to go to a much higher temperature, and add much more sulphurthan the Respondents have done. 'I'he process the Respondents use for dinitro..

20 phenol is said to be common knowledge, but if used for dinitronaphthol willnot give a black. If one takes dinitrophenol and adds sodium sulphide andsulphur and heats to 106 0 in a reflux condenser, one obtains a very good black.Ammonia comes off at about 140°, and the process goes on with the formationof different bodies. Dr. Liebmann and Dr. Silberadd thought that diphenyl-

25 amine was formed. The Patentee no doubt thought that nitro-bodies, by thereduction, became amide-bodies, but that, whatever the reduction body was, ifthe reagents were heated as directed, a black dye would be obtained. TheAppellants have carried out the experiment with dinitronaphthol, but have notobtained a black dye. 'I'he Respondents say that the word "useful" is to be read

30 as meaning" necessary." The learned -Iudge in the Court below said that thereneed not be any examples given. The Patent is bad either because there areno directions given in the Specification, or because they will not work. Pitt'sSpecification (No. 19,831 of 1896) was not published at the date of theRespondents' Patent, but it was put in and cross-examined to. [Astbur-y K.C.-

35 There is no evidence that Pitt's Patent gives the results deseribed.J It is not acase of prior grant. Abel's Patent (No. 1151 of 1900) is the Patent of theBerliner Company. No dye made according to the prescription for thedinitrophenol has ever been put on the market. The case as to infringement isone of construction. The words" as hereinbefore described" are unnecessary

40 if the Claim is for acting with the reagents upon all the bodies mentioned. Thelearned Judge below held that the Claim was for carrying out the process inany way. The Respondents used the process and obtained browns. TheAppellants work as in the experiment 6A, and if the Claim covers everyprocess of acting on dinitrophenol with sodium sulphide and sulphur the

45 Appellants are within it. No witness was called as to the practice before 1893-6.The Patent is for producing specific dyes from specific substances, and directionsmust be given. The Patentee bad only tried the diamido-body, and he put inthe other bodies without knowledge as to whether they would act or not.There has been an attempt to read Croissant and Bretonniere into the

50 Specification. The monoamido-body does not act as the diamido-body between800 and 1200

; it does not form a black dye till 130° is reached. Thedinitronaphthol will not give the dye when treated as in the experiment 6A ;dinitrophenol will work with 'a boiling process. There is no evidence that the

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process for dinitrophenol will work for dinitronaphthol unless one trebles thesulphur and raises the temperature to 190°. Both Cassella and the BerlinerCompany mixed the sulphur with sodium sulphide. Sir J. Dewar's evidenceis that there was no common knowledge, but that it was mere surmise, as to theeffect of alkaline sulphides on sulphur. All the naphthols are worthless for 5dye-stuffs. If reduction in the presence of sulphur is not effected at the lowertemperature, experiment 6A is outside the Patent. Professor Green was a witnessof exceptional knowledge, and the fact that he could make the patented process,succeed does not show that the description was sufficient, [FLETCHERMOULTON L.J.-If the fact that one can get a black dye from a diamido arornatic 10body was published by the 1894 Specification, the Patent is impossible. It isclear why Dr. Liebmann. said the Patent was for selection, because themention of the name was enough.] [A8tbury K.O.-The diamido-body isnot produced; the monoamido-body is produced, and ammonia is given offuntil condensation occurs.] [FIJETCHER l\iOULTON L.J.-Reduction is going 15on all the time.] 'I'he Patent is invalid either for misdirection or forinsufficiency of directions. If the Specification directs certain things to bedone, the knowledge of the chemist is immaterial. It is agreed that no onehad ever acted with sodium sulphide on dinitrophenol. [FLETCHER MOULTONL.J.-Did anyone try sodium sulphide and diamidonaphthol alone?] Yes; if 20it is heated to 1900 it makes a brown. The Patent is for the application ofCroissant and Bretonniere to four named bodies for the purpose of obtain-ing black dye-stuffs, and directions ought to have been given. The fact that,as the learned Judge below said, the Patentee left the working chemist to ascertainby experiment and observation the suitable temperatures and proportions in 25the case of two of the bodies is sufficient to invalidate the Patent. The statements of the learned Judge as to the essential feature of the invention areincorrect. There is no process in which sulphur was previously used alone.If the Patentee had claimed the action of sulphur on diamidophenol simply,that would have been bad. [Edison v, Holland (6 R.P.C. 282); Simpson. v. 30Holliday (12 L.T. N.S. 99; L.R. 1 H.L.320) ; Rex v. Wheeler (2 B. & Ald. 353) ;Plimpton v. llfalcolmson (L.R. 3 C.D. 576) ; and Macnamara v. Hulse (2 Webs.P.C. 129n) were referred to.] The chemist is told by the Patentee that reduc-

. tionis essential as to the dinitrophenol, and useful as to the dinitronaphthol. Thereduction is directed to be done first. On what seems to be the true construe- 35tion, the Specification says that the instructions for the phenols apply to thenaphthols, but they do not. The Patent is bad if no instructions are given forthe naphthols, and the proportions and temperature have to be varied. TheClaim is not for acting in any way, but "as hereinbefore described." Thatmeans that one is to operate in the manner and with the proportions given, and 40they do not lead to a successful result.

Kerly followed.-Having regard to the extraordinary view of common.knowledge adopted in this case, it is important to notice the dates. The writwas issued within a few days of the expiration of the term of the Patent, andthe Plaintiffs are endeavouring to recover the profits for six years made under 45what has been supposed to be an open process. The production is measuredby hundreds of thousands of tons. If, after all this delay, there is any doubt as to

.the extent of common knowledge, the fault is the Plaintiffs'. They do notclaim a-new body ; they say that their Patent is for the selection of four bodies,and that the process in which dinitrophenol is treated with sulphur is to be 50carried out according to the common knowledge of the trade. [FLETCHERMOULTON L.J.-If Croissant and Bretonmiere included those bodies therewouldbe no invention; if it did not; there would be no common knowledge.]

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Dinitrophenol only came on the market in 1890. The Vidal Patent of 1894does not direct attention to the dinitronaphthol. As to utility, the Specificationtells one to do what cannot be done-to act on the nitro-bodies with sulphuralone. To look at the matter from the other side, if the Appellants had found

5 out a process for making a black dye from dinitronaphthol and sulphur alone,the Respondents would have said that was within their Claim. The Respondents say that sulphur is to be used alone for the amido-bodies, but it is to beused with sulphide as a reducing agent in the case of the nitro-bodies. Theonly direction to reduce is in the second example. Otherwise, reduction is an

10 independent direction. It is not clear to what extent reduction is to takeplace. [FLETCHER MOULTON L.J.-Apparently the Patentee thought that thereduction would be complete.] Professor Green said that he would have thoughtso. The Appellants put in the sulphur and sulphide together; that makes adifference, and the Appellants do not use the Patentee's method. The

15 directions are not merely insufficient-they are misleading. They say that thephenols are to be replaced by the naphthols, and that the temperature of thedye-formation is 800 to 1200

; but there is no dye-formation with the naphtholswithin that range of temperature. It is necessary to carry the temperature to 1400

with the same proportion of sulphur, and to 1900 wih double the proportion. A.sto20 insufficiency, the Respondents say that any dye-chemist would easily find the

temperature. But he would need to make experiments, and there are six variations, including the time and the order, and it is necessary to get them allright to get the dye-formation. The Respondents' experiments were ex postfacto.

25 .J.4.stbury K.C. for the Respondents.-AII the difficulties and points were putbefore Mr. Justice Parker, whose judgment follows the spirit, rather than theletter, of many decisions. The Respondents do not accept the construction puton the Specification by the Appellants. The authorities referred to by theAppellants do not apply; the present case is distinguished by the fact that the

30 Patent follows several others; and the .Respondents' contentions depend upon arather subtle view of the case, requiring minute examination. On reading theSpecification through, as a chemist would read it, one is -forced to theconclusion that the invention is the selection of four new bodies, and the application to them of an old process. [FLETCHER MOULTON L.J.-There is not

35 the faintest indication that the old process will succeed; it is the first processin which sulphur alone is used. In the 1894 Specification an alkaline sulphideor polysulphide is used; and in Oroissant and Bretonniere a polysnlphide.] Itis not suggested that the first two lines of the Specification say that one is to read inthe previous process; it is a reference to a new art. 'I'here was an everyday practice,

40 apart from the documents, that would enable the dye to be obtained; and wherethe practice is well known, a much less degree of particularity is required.Only two things were necessary-to tell the public of the new body, and of thedye that it would make if used in the known way. There was a great sulphurdye industry, including the manufacture of Cachou de Laval. The appre-

45 ciation of a desideratum is good subject-matter provided there is a knownprocess in the art. Vidal's discovery was that the four bodies could not onlybe used in the sulphur dye industry, but would give a black. In the practiceof the art before 1896, there had grown Up a knowledge as to the effect ofprolongation of the heating, and increase of the proportion of sulphur. It was

50 known that the temperature had to be raised to a certain point to give the dye.[FLETCHER MOULTON L.J.-You are assuming that what would act with otherbodies would act with. these new bodies.] The bodies mentioned by Uroissantand Bretonniere are very numerous, and the general rule applies to all.

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[FLETCHER MOULTON L.J.-There are thousands of bodies to which it doesnot apply.] If one raises the temperature one gets a condensation product,which will give another dye. The Appellants have argued as if this was aPatent for a medical or chemical prescription. The chemists who were calleddeclined to say that "useful" did not mean "necessary." The Claim means 5that the dinitro-bodies are previously reduced-as described in the case of thedinitrophenol. The points as to insufficiency are not fully pleaded in theLeoinstein action. [Kerly.-They were abandoned in the Respondents'summing-up.] The point of construction must be pleaded. [COZENS-HARDYM.R.-Why does not the plea of non-utility cover it?] That plea does not 10include insufficiency of directions. There is no suggestion that dinitrophenoland diamidophenol will not give a black dye. If the plea of non-utility hadthe effect suggested, it would never be necessary to give Particulars ofinsufficiency or misleading directions. Want of utility means that the thingdescribed is not useful. [FLETCHER MOULTON L.J.-It means that you do 15not get the thing.] The Appellants did not apply to amend. 'I'hey have takenthe point that the employment of the word "useful" gives an option. It hasnever been proved that dinitronaphthol will not give a dye with sulphur alone.Utility is presumed; the onus is not on the plaintiff; but the onus of provinginfringement is on him. [FLETCHER MOULTON L.J.-A plaintiff always 20gives evidence of utility.] He may if he chooses to do so, but he is not obligedto. [Babcock and Wilcox v. Water Tube &le. Oompany (2'1 R.P.C. 626) wasreferred to.] The grant having been made, the Patent isprirnajacievalid, untilit has been proved to be invalid; if a plea of invalidity is raised a plaintiffmust give prirnd facie evidence of validity. [.Llfinter v: Wells (1 Webs. P.C. 129) 25and Hill v. Thompson (1 W~ebs. P.C. 237) were referred to.] [Kerly.-Dr.Liebmanm said that dinitrophenol, heated with sulphur, would explode.]Every chemist has said that the dinitro-bodies need to be reduced. If there isa direction to use dinitrophenol with sulphur, and the Court is satisfied that itwill explode, there is an end of the case, But there is no evidence that it will 30explode, or that it will not make a dye. It is impossible to make more thanthe one reduction body. The difference between the experiment 6A andexample 2 is in the proportion of sulphur; in 6A there is five or six timesthe proportion there is in the example. Mr. Sfwinb1.,f;rl~ehad a differenttheory-that there were intermediate products-but it was proved to be wrong. 35[FLETCHER MOULTON L.J.-N0 one knew at the date of the Patent that theAppellants' process was an equivalent for the Respondents'.] Yes, the pith ofthe invention is the production of the dye. The evolution of ammonia showsthat the condensation product is being decomposed. [Tttrner v, Winter(1 T.R. 606) was referred to.] The witnesses said that the Specification is not 40misleading, and that there are sufficient directions. Those are questions offact, and ought to be taken separately. A certain amount of experiment maybe reqnired without invalidating a Patent. 'The question is whether thePatentee has made an invention, and done sufficient to communicate it to thepublic. There is no question of uberrima fides here. There is a well-known 45sulphur rule. [Minter v. Wells (ubi supra), Derosne v, Fairie (2 Cr. M. & R.476), and Turner v, Winter (1 Webs. P.C. 77 at pages 80-81) were referred to.]Here, the Respondents have given much evidence of validity. The Respondentshave never said that the process would succeed without the aid of alkalinesulphides. The danger of heating the nitro-body with sulphur is removed by 50reduction to an amide-body. [FLETCHER MOULTON L.J.-AII that is subse,quent knowledge.] The Respondents' witnesses said that they would neverheat a nitro-body with sulphur; the danger of doing so was a matter of

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common knowledge. [FLETCHER MOULTON L.J.-rrhe Appellants say thatthe Respondents may not say that if they have given a wrong direction itought to be rejected.] The word "useful," by itself, is for the Court to construe, but having regard to the context it is a question of evidence whether it

5 was misleading. [BUCKLEY L.J.-But if "useful" means that one "may" reduce" you cannot give evidence that it ought to be rejected.] The Specification is a translation, and there is plainly an ambiguity. [FLETCHERMOULTON L.J.-Many processes are dangerous; for instance, the manufactureof nitroglycerin. In Badische Anilin, &c., Eabrik v. Leuinstein. (2 R.P.C. 73)

10 it was said that the plaintiff must prove that the process could be worked, notthat it was not dangerous.] The evidence was not that heating the dinitrobody with sulphur would not give a dye, but that no one would try it. TheAppellants admit that with regard to the dinitrophenol, the Clairn only refersto a reduced body, and no instructed chemist would think that the dinitro-

15 naphthol was to be treated differently from the dinitrophenol. [FLETCHERMOULTON L.J.-The earlier Specifications do not give any knowledge on thepoint; one cannot speak about these foUf bodies' action under the sulphur law.]There is no body known now that will give a dye with sulphur and that doesnot follow the sulphur law. Anyone reading the Specification ought to start

20 his operations in the belief that the Patentee's statement that dinitrophenol willgive a black with sulphur is true. Any dye-chemist would know that sulphurwould give a dye in this way, and that it must be done in solution by boilingor by fusing. Chemists did not know in 1896 what would happen in thereaction that occurred, but they knew that every body did in fact give a dye

25 with sulphur. [FLETCHER _MOULTON L.J.-With regard to the four bodies,they knew only' what was in the Specification.] Everyone knew that intreating the bodies in solution there is an appropriate temperature. Theinvention consists in the selection of the four bodies to be treated asdescribed, with the direction to reduce the nitro-bodies. All the examples

30 are merely illustrations-they are not limitations. The statement thatthe nitro-body is to be converted .into the amido-body is a direction.Everything else is to be rejected as a limitation. One has to go on until oneobtains a d-ye. If one is told that bodies will react, the obvious thing is to goon-one can raise the temperature or alter the proportions. There is no doubt

35 that the four bodies, treated with the limited proportions of the example, givea dye, The Patent is not for a definite chemical body, but merely for a black)and not for any particular shade or tint of black-at one time a blue black ispreferred, at other times other blacks are in demand. It is necessary to findthe pith of the invention. 'I'he Appellants cannot avoid infringement by

40 putting in the reagents together. The test is whether the direction is of theessence or not. The evidence is that the result is the same whether the reagentsare put in separately or not, -although the Specification says "to previously" reduce." If a patentee gives five steps for producing a result, the essentialityof the steps is to be determined, not by the Specification, but by the fact; one

45 has to find out which are the essential steps. If someone discovers a method,not known at tb.e date of the Patent to be an equivalent of a step in the patentedprocess, that is invention, according to Heath v. Dnwin (2 Webs. P.O. 228;5 B.L.C. 545). The Specification does not say that the sulphur and sulphideare to be put in together, but one has to find out what is the object. Adefendant

50 cannot avoid infringement by leaving out a step he has found to be unnecessary. [FLETCHER MOULTON L.J.-In none of the cases was the step stated tobe essential.] It is immaterial whether the reagents are put in separately ortogether, if Nature determines the order in which the reactions take place.

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Mr. Swinburne said that nitroamidophenol will be produced, that the Defendants, by the use of the reflux condenser, prevent the destruction of that body,and that it is that body in their process that acts to give the dye. A dye cannotbe made with nitroamidophenol; it splits up and forms condensation bodies thatreact with the sulphur to give the dye. [FLETCHER MOULTON L.J.-Mr. Swin- :>burne thought nitroamidophenol was necessary; the Respondents show it is notnecessary; but it is wrong to say it does not give a dye.] The Appellants usedseven times as much sulphur as the Respondents' use. [FLETCHER MOULTONL.J.-Oroissant and Bretonniere's so-called sulphur rule is not true of the bodiesdealt with in the Patent.] They say that if one goes to a higher temperature 10one will get a different body and a deeper tint. The colour depends on thestrength of the dye, and solutions of from 5 to 60 per cent. are used. Dr.Eichwald said that he could not fail to get a dye from dinitrophenol. It issaid that the Patentee contemplated complete reduction of the nitro-bodies, andthat one cannot know when that has been effected, but the reaction gives out 15heat and will finish itself. There is no question of invalidity on that pointraised in the Particulars. [FLETCpR MOULTON L.J.-The question wasraised with the consent of the Court.] The chemists say that they could tellwhen reduction was finished. Dr. Hubner said that people do not like a brownblack, and it is a valuable thing for the dyer to be able to make any colour that 20is required. There is evidence that Vidal blacks were made in England,though the Respondents did not make them until 1899. There was a greatamount of literature on the subject. If it had been published that a black dyehad been obtained from diamidophenol that would have been an anticipationif the Patent was only for selection. [BUCKLEY L.J.-You must say that the 25Patent is for the action of sulphur on the four bodies: treat' them in any wayand you will get a black; or you may say it is for treating those bodies in aparticular way, but as to one of them no instructions are given.] It is theformer coupled with a sufficient method of getting the dye. 'I'he words" as4' hereinbefore described" can only refer to the reduction. The cases cited do 30not mean that if any experiment is required the Patent is invalid. [BadischeAnilin, &c., Fabrik v. La Societe Chimique (14 R.P.C. 887') was referred to.]In Edison v. Holland (6 R.P.C. 282) the distinction was between practice andexperiment and invention. If there are directions as to a practice that does notexist, the Patent is bad; but if it is with regard to a practice that does exist, it D5is not. [FLETCHER MOULTON L.J.-Edison v, Holland related to manualdexterity.] According to Simpson v. Holliday (L.R. 1 H.L. 315), if there is apositive error the Patent is bad. Evidence is admissible to show that the word"useful," in its frame, is misleading; the question is one for the jury. If thePatentee had said" I may treat dinitronaphthol with sulphur, or I may reduce it 40" first; I prefer the latter" the Patent would be bad. If a person used theprocess that was not preferred, he would infringe. If" useful" had been a wordof chemical art, evidence would have been admissible to show its meaning;but here regard must be had to the framing, and that requires chemicalknowledge. The word "useful," taken with the context, gives an option. 45[BUCKLEY L.J.-" Also " may refer to "reacts " and the" nitrified compound"may mean sulphur and dinitronaphthol.] The Claim may be taken reddendosingula singulis.

Cole/ax followed.-ln 1896 there was an established sulphur dye industry,and the manufacture of dyes, such as Cachou de Laval, formed by the action of 50sulphur on various bodies, was known to chemists. The matter is correctlystated in the judgment of Mr. Justice Parker. A chemist reading Croissantand Bretonniere:« papers would see in them more than the mere substances

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Same v. Read Holliday &: Sons ia.

named. [FLETCHER MOULTON L.J.-They are all direct products of life, andwould not suggest diamidonaphthol.] They include tannin and gallic acid,both aromatic bodies, and the fact that they are products of life would not affectthe chemist's mind, now so many natural bodies have been synthesized.

5 [FLE'rCHER MOULTON L.J.-We have always to be on our guard againsttwisting printed publications into more than they mean. Croissant andBretonniere did not tell the chemist anything about the behaviour of the bodieswe have to deal with.J Gallic acid is a phenolic derivative of benzene; maddertoo is included. [BUCKLEY L.J.-Croiss(lnt and Bretonniere tell how to

10 produce all sorts of colours-sulphur dyes; the Patentee tells how to makeblack dyes; he ought to tell how to avoid all other colours.J Oroissant andBretonniere's statements in 1896 were only believed as general statements.[FLETCHER MOULTON L.J.-There is nothing to enable a chemist to say if theprocess would work; there is no statement of a general law as to what will

15 produce a dye. They merely say that if you do produce a dye you can change it,and since Vidal brought in his molecule to molecule process that is no longertrue.] Dr. Green thought it a fair carrying out of the process to increase thesulphur to seven times. Vidal was taking a new step in using molecular proportions. [FLETCHER MOULTON L.J.-The Patentee ought to have given the

20 best tints.] There are no best tints; it is a question of fashion. [FLETCHER1VloULTON L.J.-In the process of the 1894 Specification, the completedecolourisation was a test. What test is there in the 1896 process?J ThePatentee did not intend to get a diamido-body, but he saw that it was necessaryto have an amide-group present. Mr. Swinburne's theory was abandoned.

25 Another theory was that dihydroxynitrobenzene is formed. [FLETCHERMOULTON L.J.~Dr. Liebmann. practically said that the nitro-amido body willnot act; but it will. There is no evidence that the condensation product isdestroyed, but there is evidence that new condensation products are formed.Heath v. Unwin (ubi supra) is applicable. Very probably a nitroamido-body

30 is formed in the experiment 6A. One may say the dye-formation depends onthe formation of the condensation products.] If the proportion of sulphur iskept the same, the same result follows if the time is prolonged to compensatefor the lower temperature. The chief question ultimately is one of the construction of the Claim. [Andrews' Patent (25 R.P.C. 477) was referred to.]

35 If the plea of want of utility covers the questions raised in this case as to sufficiency of the Specification, there is no reason for ever raising the issue ofinsufficiency. In the case of the Badische Anilin, &:e., ll'abrik v. Levinstein(2 R.P.C. 73), the experiment did not have the effect anticipated. In the actionagainst Read Holliday & Sons the point is taken as to dinitrophenol but not as

40 to dinitronaphthol. [Walter K.C.-If the dinitro-body is heated to 1900 abrown black is obtained.] That is a question of the proportion of sulphur.Besides the Respondents deny that the product is a brown black. [FLETCHERMOULTON L.J. referred to Nobel's Explosives Oompany v. Anderson (11 R.P.C.115, 159; 12 R.P.C. 164).J It is not right to apply what is known as to the

45 mononitro-body to the dinitro-body, but the learned Judge found that nogreater difficulty would be found in dealing with the naphthols than with thephenols. It is not known whether or not the Patentee knew about the naphthols. He may have thought there was no need to give directions as to them.[FLETCHER MOULTON L.J.-He ought to have enabled the public to step into

50 his position.] He has done all that is necessary; he had no need to giveexamples at all. Dr. Green thought that the right method was to apply themethods given for the phenols to the naphthols. It is not necessary to go to1900 for the naphthols. What is required to find the right method is not

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research but everyday practice. This is really a Patent of addition. The temperature of 1400 is not an essential condition, but is the advantageoustemperature in respect of time.

Walter in reply.-----There never has been any question as to whether Dr.Morgan's experiments were practicable. Insufficiency has been sufficiently 5pleaded. [Astbury K.C.-The Respondents do not say that the Appellants'letter did not give sufficient notice, or that the point has not been sufficientlyraised.] As to construction, the Appellants say that the Specification wouldhave been sufficient if Iimited to the first few lines of it. It claims reactingupon certain bodies in certain ways, for producing certain results. The 10Patentee has not even said in the Specification that common knowledge is tobe applied. The case of the Respondents is based on Croissani and Bretonniere,but they have tried to jettison Croissant and Bretonniere, whose Patent is formaking any dye from any body in any way, and has been used only by onefirm in the north of England. Then as to the experiment6A, they have to go 15back to Croissant and Bretonniere. [FLETC:HER l\fOULTON L.J.-That isCroissami and Bretonniere in the presence of alkaline sulphides.] Croissantand Bretonniere's Mulhouse paperis not common knowledge. The Respondentsput forward the suggestion, only to abandon it, that the Claim is to be readdistributively. In that case they cut out the use of sulphide with the amido.. 20bodies. On the true construction, it is a Claim for acting with sulphur orsodium sulphide or any on the four bodies. [BUCKLEY L.J.-Suppose it meanseither alone where he has said sulphur alone, or with sulphide when he hassaid sulphide?] That is not the construction put forward by the Respondents,and on it there is no infringement. The words" it will be also useful" mean 25in the case of the phenol. Probably there is no meaning- in U also"; thewriters of Specifications are not grammarians. [COZENS.HARDY .1lf.R.-ThePatentee says (, expedient" as to the diamidophenol.] The instructions as tothe amidophenol are to be applied ceteris paribus. All the Specificationamounts to is, that the Patentee says that he has found that he can make a black 30dye from the four bodies, and he leaves the public to experiment. It has beensuggested that the problem is purely a question of the proportion of sulphur.There are no other instructions than that molecular proportions are to be used.No one knows what stages the 140° and 1900 bodies go through. The Respond..ents say they are the same body' but for the proportion of sulphur; but they 35cannot be the same if they contain different proportions of sulphur. 'I'hemeaning of the direction to reduce is that one is to heat to 140°, and whateveris going on then is to be allowed to go on until it is completed. There isno comnion knowledge, and one cannot depart from the instructions of thePatentee. 40

Judgment was reserved, and was delivered on the 1st of February 1912.COZENS..HARDY J.l1.R. (whose judgment was read by Lord Justice BUCKLEY).

-1 have have had the opportunity of reading the judgment which Lord JusticeFLETCHER ~10ULTON is about to deliver. I agree with his conclusions bothas to validity and as to infringement, and I do not think it necessary or desirable 4;)to add an independent judgment of my own,

FLETCHER MOULTON L.J.-The Plaintiffs in the two actions which arebefore us on these appeals were, at the date of the writs, owners of LettersPatent No. 16,449 of 1896 granted to Henri Raymond Vidal for" Improve-" ments in colouring matters." They sued in the one action Levinstein Ld., 50and in the other action Read Holliday & Sons Ld., for infringement of theseLetters Patent, claiming the usual relief. The actions were tried togetherbefore Mr, Justice Parker, "who granted to the Plaintiffs the relief prayed tor,

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with the exception of the injunctions, which could not be granted because theterm of the Letters Patent had expired before the hearing of the action.

The circumstances under which these actions are brought are in some respectspeculiar. The alleged infringement is, substantially, the making of a dye which,

5 it is admitted, has been made for many years (ever since the year 1900) in enormous quantities and sold openly in the market. It was known to be made under,and in accordance with, Letters Patent" granted in January of 1900 to CharlesDenton Abel on behalf of the well-known Berliner Oompany. The writs inthese actions, however, were not issued until the 22nd of July 1910, that is to

10 say, two days before the expiry of the Letters Patent sued upon. g.J~q!

~1i~e~~t;'~~~1~~fa~~~a~~~~~tI~~efu~c~~a~trre~fuJl¥!efu1~fIfe1~case"'i:h"£Iie present' actions' they will be entitled to damages, or to an inquiryinto profits for infringement occurring 'Yithi~ .s_t~Iearsbefo~.~;-!l.!~.~,g!!~~>~~2.f,.~.~1!e

15 wri~s. None of these circumstances affect the legal'" rfg1itS of th~~g'!.ei~~~t[s,b;lt~e fact that the Letters Patent were granfea fourteenyears''igo increasesthe difficulty of the Court in deciding the issues before it. Both validity andinfringement must be decided according to the state of knowledge at the dateof the Letters Patent, and the greater the interval between the granting of the

20 Patent and the trial of the action, the more carefully must the evidence belooked into lest the Court be induced to take an erroneous view, either on theone side or on the other, of the knowledge of the world at the critical date.

The necessity for extreme care in this respect is increased in the presentactions by the fact that the alleged infringement appears on the evidence to be

25 the result of an independent line of invention. The application for the Plaintiffs'Letters Patent was made on the 24th of July 1896, and the Complete Specification was not accepted till the 5th of June 1897. On the 8th of September1896 an application] was made by Sidney Pitt on behalf of the well-knowndye manufacturers, Cassella & Co., for an invention, an improvement of which

30 was in the year 1900 patented on behalf of the Berliner Oompany, and was theinvention in accordance with which the Defendants' dyes are made. A description of the Cassella invention was therefore in the Patent Office long beforethe publication of the Specification of the Plaintiffs' Patent, and to my mindit is clear the information it gives and the progress it describes could not have

35 been derived from the Plaintiffs' Specification, but have an independent origin.We have, therefore, a case before us in which the Defendants have used whatis the product of an independent line of invention, and, although that does notin any way interfere with the rights of the Plaintiffs, if that invention, thoughindependently made, should indeed come within the am.bit of a monopoly

40 validly granted by the Plaintiffs' Patent, it makes it incumbent on the Court toexamine the Plaintiffs' Claims very carefully, inasmuch as there is no groundfor imputing any actual appropriation of the knowledge given to the public bythe Plaintiffs' Patent. .

By consent of all parties the two actions were tried together, and the evidence45 of the principal witness for the Plaintiffs, Mr. Ballantyne, was, by an Order of

the Court, taken by an Examiner before the trial came on, because his engagements would have prevented his appearing at the trial. The Defendants inboth actions challenge the validity of the Patent on various grounds, and alsodeny infringement. The grounds of objection to the validity of the Patent

50 were, in the Pleadings of the Defendants, somewhat restricted, and, in my

• No. lI5l of 19GO. t..:.No. 19,831 of 1896,

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opinion, an application must necessarily have been made to extend and developthem after the examination-in-chief of, Mr. Ballantyne had shown to theDefendants the line which the Plaintiffs proposed to take. But, as a matter offact, at the hearing both parties, alike in examination-in-chief and in crossexamination, went into points which were not strictly raised by the Pleadings 5and Particulars of Objections, and this was done substantially without objectionfrom the opposite party. Counsel for the Plaintiffs in the appeal before us, onmore than one .occasion, urged that we were not entitled to go into questionswhich had in this way plainly been raised in the Court below, but which werenot. included in the formal Pleadings. I am of opinion that, in view of the 10course taken by both parties at the hearing, all points then raised, and on whichthe two parties called evidence and examined their witnesses, are before us inthis case. It must be remembered that the rule as to this (Order LIlIA, Rule21) is that, at the hearing, no evidence shall, except by leave of the Oourt, beadmitted in proof of any Objection not raised in the Particulars of Objections. 15But if the evidence is allowed to be given, the Oourt must take it into consideration and decide upon it. There is nothing in the Rules compelling the Oourt,or the Oourt of Appeal, to do otherwise than to decide the validity or infringement upon the evidence given, provided that the points raised have been fairlypresent to the minds of the litigants and the Court at the bearing, so that no 20one is taken by surprise or prejudiced. The true position of the parties in thepresent case is that both parties consented, by their conduct, to all the points,raised in the course of the hearing on either side being for the decision of the.Court. There is nothing surprising in this, because it was admitted that manyother actions have been brought and are only waiting for the decision of the 25·present actions, so that it would be to the interest of all parties that the caseshould be fully fought out.

In this case, as in well-nigh all patent actions, it is necessary for the Court tobegin by ascertaining the state of knowledge at the date of the Letters Patent.But it is peculiarly necessary in the present case, because the case of the Plaintiffs, 30so far as the validity of the Patent is concerned, rests almost entirely upon asuggested state of public knowledge for which there is, in my opinion, nowarrant in the evidence before us. It is common ground that with regard toindustrial products such as coal-tar dyes, the literature on the subject consistsmainly, though not exclusively, of Specifications of Patents. New discoveries, 35'being usually of commercial value, are made the subject of Patents and firstappear in the descriptions given in the Specifications. In the present case;the relevant prior knowledge is to be found in three Specifications, namely, thatof Croissant and Bretonniere.ui 1873, and the two Vidal Specifications of 1893and 1894 respectively. It is true that, in addition to the Specification of 40,Croissant and Bretonniere, a Paper was read by them before the Societe Industrielle de Mulhouse in 1874, which is also before us, but there ,is nothing in thatPaper which materially adds to what is to be found in the original Specification.The state of public knowledge, therefore, so far as is relevant to the presentcase, is obtained from these three documents. 45

The Specification of Letters Patent No. 1489 of 1873 granted to Croissant andBretonniere sets forth, at considerable length, their invention. It consisted in.heating what are termed in the Specification "organic bodies" or "organic" matters" with alkaline sulphides, including in that term alkaline polysulphides,This process is stated to yield colouring substances soluble in water. It would 50seem that the colour of the dyes thus obtained varies widely. They aredescribed as imparting the most varied tints-browns, lilac greys, violet greys,intense black grey, violets, yellows and maroons are mentioned.. The degree of

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heat to which the mixture is snbject varies from 1000 to 3500 C. No precisedirections as to proportions or temperatures are' given, excepting in the case ofone or two examples, but it is stated generally that the higher the temperatureand the longer the duration of the heating process the more nearly does the tint

5 approach a black, or, at least, a dark colour. The most important point for thepurpose of the case is the type of materials which the patentees use in carryingout their invention. The list is given on pages 4 and 5 of the Specification,and consists of a most heterogeneous collection of substances. From the importance attached to this document in the Plaintiffs' case, it is worth while setting

10 this out in full: "Among the numerous organic bodies which are eonverted by,,' this process into coloring matters the following may be mentioned as examples" which have been frequently experimented upon with the same success, viz.,"wood sawdust, humus and vegetable detritus, lichens and mosses, bran," farina, gluten, starch, fecula, sugar glucose, cellulose, waste paper, cotton

15 "waste and the like, tannin, gallic acid and the like, gelatine, caseine," fibrine, albumen, blood, horn, feathers, as well as animal excrement, soot," tartaric, citric, formic acids and their alkaline salts; resins, such as galipot,"aloes, guaiacum and dragon's blood: gum resins, such as gum lac and the" like; gums, such as gum tragacanth, gum arabic and the like. In a word

20 "the majority if not all organic bodies may be treated by this process."It is evident, on an examination of the list, that these bodies have nothingin common excepting that they are each of them" some natural product of"organic life," to use the language of Mr. Ballantyne, the first witness for thePlaintiffs. It is, therefore, also evident that the term" organic body" is used

25 in that sense in the Specification and this corresponds with its historic origin.Originally, the word was used in connection with the phrase" the organic"kingdom," namely, the kingdom of life as opposed to the inorganic kingdom.It was in this sense that the phrases "Organic Chemistry" and "Inorganic" Chemistry" were originally used. But the attempt to keep apart the study

30 of those bodies which were connected with the organic kingdom and thosewhich were connected with the inorganic kingdom entirely failed. The twodefinitions overlapped too much to be of any value, and now organic chemistrydeals, not only with substances derived directly from animal or vegetable life,but also with the chemistry of most carbon compounds and all the coal-tar

35 products. But the word" organic" is still used in its old meaning, as, forinstance, when we speak of "organic matter." Iii is quite evident, as a matterof construction, that the phrases" organic substances," or "organic matters,"when used in this Specification, are used in the original sense. Most of thebodies, such as wood, sawdust; humus, vegetable detritus, bran, waste paper,

40 blood, horn, excrement, &c., are not of any definite chemical constitution.Some, however, are more definite, such as tannin and gallic and tartaric acids.But there is no common feature in their chemical nature or constitution, and inmost cases this constitution is not even known. The one thing, however, thatthey do possess in common is, as I have said, that they are natural products of

45 organic life, and I am satisfied that the Specification ought to be read in thatsense, and would be so read by any person at any date material to the presentcase. The only importance of this is-to determine whether or not the four bodiesto which the invention in the Plaintiffs' Patent relates are or are not amongthe substances referred to in this Specification. In my opinion, they certainly

50 are not. They are not natural products of organic life. They are specialderivatives of phenol or naphthol, and are no more and no less included in thebodies referred to in this Specification than any other of the sixty or eightythousand coal-tar derivatives which are known, To suppose that this

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Specification meant to announce that every coal-tar product would makedyes on being treated with an alkaline sulphide would so obviously makeit state something that the authors of the Specification could not be in aposition to know, that, if I came to the conclusion that such was its meaning,I should consider it to be a document which scientific men would reject 5as being unworthy of acceptance. For .. it, i~_~..,fal~acyto s~g~est ~hat .~~eworldiknows everything that isstatea:'=~"m__~Specifica~ion8 of ~arentB~=:lI_J~tere, 'Il() the world would kn.2,w many- strange, thi~..Spe~Jg[~~~~yown experience alone, I can say that it would know tat wlieat,~~~~.~..,w_~oll!{to'e turned into gold, that ice-making . machines could supply th~ .,energy 10requisite to keep themselves worliing without the assistance of .a~: .~!~~,.tif~lsource of power, and that a bicycle could befitted with slidingW~iglitsSo asto propel itself without the. assistance of the rider. Statements in SpecmcatrOiiSdonot become part of the knowledge of the world when they are such thatthe author cannot be warranted in making them. If the phrase "organic 15" substances" must be taken here in the extreme and unusual sense of includingevery body which would belong to organic chemistry, this Specificationwould announce to the world that the whole of those many tens ofthousands of bodies will yield dyes when acted upon by alkaline sulphides, andthat" the congeners of sulphur, and especially of brome and of iodine, may 20" also be employed." Such an announcement would be so' obviously beyondthe knowledge of any person that it would be rejected as nonsense. The Specification, however, is not open to such a reproach. The language used and thecontext point to the limited class to which I have referred. So far as is materialfor the present case, however, the matter is not in contest. Counsel for the 25Plaintiffs admitted, in the argument before us, that the four bodies in questionwere not among those referred to in the Croissant and Bretonniere Specification. There is nothing, therefore, in that Specification which refers to them orto their behaviour in any way, and, that being so, it is impossible to derive anyknowledge from that document as to what that behaviour would be. In this 30respect they stood, at tho date of the Patent, in the same position precisely ascoal-tar products in general, and nobody would pretend that, even with theknowledge of to-day, we can tell whether any particular coal-tar product willyield dyes of this class other than those that have been discovered so to do bythe various inventors who have worked at the subject. As Sir James Dewar 35himself says in his evidence-prevision in such a case is impossible in chemistry.The Court is bound, in justice both to the public and to patentees, to be on itsguard against assuming public knowledge at the date of the Patent which didnot exist as such. In the present case, if we were to hold-contrary to the fact-that the Specification of Oroissant and Bretonniere included, whether -40explicitly or impliedly, the bodies used in the Plaintiffs' Patent, we should beobliged to hold that there was no novelty or SUbject-matter of invention in proposing to make dyes out of them, and then the Plaintiffs' Patent would not bevalid, unless the Patentee had invented a new process for dealing with oldmaterials, and no such case has been, or could be, put forward by the Plaintiffs 45for obvious reasons.

Before leaving the Specification of Oroissani and Bretonniere, it is importantto ascertain what industrial results came from it. The evidence leaves no doubton this point. In spite of the large number of possible dyes to which it wouldseem to point, it turns out that, in fact, only one dye known as Cachou de Laval 50made under it became an article of commerce. It was a brown dye manu..factured and sold by a French firm, and apparently to some extent also made atone time by a firm in Manchester, Beyond this, there is no evidence of any

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manufacture or sale of products made according to the Oroiseani and Breton-niere invention. .

The inventions, which led to the great development of sulphur dyes, commenced in 1893. In that year Henri Raumond Vidal took ont a Patent for

5 making black dyes out of certain di-derivatives of benzene, which eithercontained an amide-group or were capable of producing such a body by reduction and splitting. The. method is by heating to a high temperature in thepresence of sulphur and caustic soda, that is to say, of an alkaline sulphide.This was undoubtedly the fore-runner of the Patent now sued upon, but

10 all are agreed that it was impossible to predict, from the fact that these diderivatives were susceptible to this treatment, that the particular bodies used inthe Plaintiffs' Patent would also be susceptible to it, so little is prevision ofthis kind possible in chemistry. 'The temperature prescribed is so high that it isagreed that this process was a fusion process. The same is true of the Patent

15 taken out by Vidal in the following year. The bodies there used were eithernitroso-bodies or amido-derivatives of phenol or naphthol, or of bodies capableof producing them by reduction and dividing. The process was once more aprocess of heating in the presence of sodium sulphide and sulphur to atemperature so high that this also was a fusion process.

20 The public knowledge at the date of the Plaintiffs' Patent therefore may besummed up this way. It- was known that a large variety of organic bodies, allof them being direct products of life, could be made to yield dyes of variouscolours by being heated at temperatures of from 1000 to 350) with alkalinesulphides. There is no evidence that any black dye had been so produced;

25 one brown dye was on the market so produced, but from what substance is notclearly shown. It was further known that certain derivatives of benzene, andcertain mono-derivatives of phenol and naphthol, would yield black dyes onbeing heated to a temperature of fusion with alkaline sulphides. But there wasnothing known which would tell the chemist what would be the behaviour of

30 the di-derivatives of phenol and naphthol, which are used in the invention forwhich the Patent sued upon was granted.

The invention-the subject of the Plaintiffs' Patent-was the manufacture ofblack dyes from diamido- or dinitro-phenol or naphthol, which are, of course,tri-substituted derivatives of benzene and naphthalene. There are three points

35 of novelty in it. Tn the first place, the bodies chosen were new for the purposeof the manufacture of such dyes. In the second place, the manufacture was byheating them with sulphur alone (although an alkaline sulphide might optionally be added), whereas previously the dyes were always obtained by heatingwith alkaline sulphides; and, thirdly, instead of employing fusion, the process

40 was carried out at a low temperature, so that it is admitted that it is fairlydescribed as a boiling process. I come to the conclusion, therefore, that noobjection can be sustained against the Patent on the ground of want of novelty.But, on the other hand, it follows that the public had to derive their knowledgeof how to carry out the invention from the Specification alone. There was no

45 previous knowledge as to the effect of heating either these or other coal-tarproducts with sulphur alone, and there was no knowledge of the behaviour ofth~e particular bodies when heated with sulphur in the presence of alkalinesulphides. The Plaintiffs seek to evade the legal consequence of this fact in avery ingenious way. They suggest that, although the bodies are outside those

50 to which the Specification of Croissant and Bretonniere refers, yet that when thepublic were told that a black dye could be made by heating these new bodies withsulphur they would know from Croissant and Bretonniere that the tint would-get nearer to black the higher the temperature employed, This is quite unsound.

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In the first place, Croissant and Bretonniere did not tell the world anythingabout the effect of sulphur alone upon any bodies whatever. In the second place,when it is once admitted that the statements of Croissant and Bretonnieredo not refer to this body directly or by implication, it follows that their statements as to the tint getting deeper the higher the temperature does not refer to :>these bodies. But there is a third difficulty. The evidence shows conclusivelythat no such rule is true of these bodies. The Defendants' black dye, which issubstantially that which has been sold in hundreds of thousands of tons, andwhich we are told is the most successful, is made at the lowest temperature. Itis true that a larger amount of sulphur is used, but this is beside the question. 10Nowhere in Croissant and Bretonniere is it said that a larger amount of sulphurproduces a darker tint, nor, so far as the evidence goes, is there ground forthinking that such is necessarily the case. Take again the naphthol experiments made by Dr. Eichuiald, He was unable to get the dye when using thetemperature of 140°, but in a subsequent experiment he found that the dye 15began to form about that temperature, though in an infinitesimal quantity. Hethen took the temperature up to 1900 and obtained a black dye. But it is a partof the Plaintiffs' case that he did this, not for the purpose of getting a differentdye, but of getting a full yield of identically the same dye as was formed at thelower temperature. The same may be said with regard to the duration of the 20process. In the argument before us, Counsel for the Plaintiffs repeatedlypressed upon us that .hoth the prolonged duration of the process, and the raisingof the temperature-that is, from about 140° to 1900 or upwards-after thecommencement of the dye-formation, in order to work the process practically,were only for the purpose of maintaining a full yield of the same dye as was 25formed at the lower temperature in the earlier part of the process, and that theydid not change the nature or colour of the dye. Below the lower limit of 1480

they did not pretend that any black dye was formed. The evidence of theDefendants' witnesses was equally fatal to the suggestion that any such rule orlaw holds good for the bodies we have here to deal with. To show how baseless 30is the suggestion that there is a general law connecting depth of tint withtemperature in the case of these bodies, one may refer to the history of theinvention of the Defendants' dye, It originated as an improvement on itspredecessor, which was the dye made under Pitts' Patent, and it conquered themarket, as being a finer black. Yet it is made from the same body, i.e., dini- 35trophenol, by the use of smaller proportions of sulphur and of alkaline sulphide,and at a much lower temperature.

I will now turn to the Specification. It commences with what purports to bea statement of the invention which the Patentee has made. This statement isas follows: "I have found that sulphur not only re-acts on the disubstituted 40" derivatives of benzene or naphthalene but also upon certain tri-substituted"derivatives, and among others, upon diamidophenols and upon diamido-" naphthols." The Patentee goes un to describe how such a dye can beobtained from diamidophenol by heating with sulphur alone. Quantities,temperatures and times are fully given, and it is not contested that this 45process will effect its purpose. He then says that, to facilitate the re-action,it is expedient to add sulphuret of sodium in order to dissolve the sulphur andthe diamidophenol. I t is admitted that this modification of the process is alsoeffective. The remainder of the Complete Specification deals with a differentclass of bodies, namely, the dinitrophenols and the dinitronaphthols. Then 50follows the Olaim, which is preceded as usual by the words: "Having now" particularly described and ascertained the nature of my said invention and in" what manner the same is to be performed, I declare that what I claim is,"

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The Claim itself Is in the following words :-" The above-described improve" ments in the manufacture of black dyestuffs, these improvements consisting" in causing sulphur to react, either alone or in the presence of sulphuret of" sodium, upon diamidophenols and diamidonaphthols, or upon dinitrophenols

5 "and dinitronaphthols, as hereinbefore described." The meaning of one phrasein this Claim is clear. The alternative of sulphur alone or in the presence ofsulphuret of sodium refers to the alternative given in lines 6 and 7, where,after giving an example where sulphur is used alone, the Patentee adds thatto facilitate the reaction it is expedient to add sulphuret of sodium. The phrase

10 in the Claim to which I refer clearly means that the Patentee claims the invention, whether or not, in the process used to produce the dye, the assistance ofthe presence of sulphuret of sodium is taken to facilitate the reaction. This isclear as a matter of construction, and is not substantially disputed. The first_po~nt that arises is one of grave importance. It will be noticed that, in the

15 Complete Specification (excluding the Claim), diamidonaphthols are only referredto in the first paragraph where the Patentee says that he has found that sulphurreacts upon them. In the Claim they reappear as part of "the above described." improvements," and these improvements are described as consisting in causingsulphur to react upon them, "as hereinbefore described." It has to be admitted

20 .by Counsel for the Plaintiffs that there is no description of the method employedin the case of diamidonaphthols, unless it be in the first paragraph of theComplete Specification. There is no alternative course open to them, becausethey cannot say that the example given is intended to apply to diamido..naphthols as well as to diamidophenols, because it is clear on the evidence that

25' the process described will not give a dye if applied to diamidonaphthols.Accordingly Mr. Astb1try, as representing the Plaintiffs, frankly admitted thathe must accept the position that, so far as diamidonaphthols are concerned, thevalidity of the Patent is the same as though the Complete Specification consistedonly of that first paragraph of the Specification and the Claim. In order to

30 make clear the effect of this, I will omit all the parts of the Specification andClaim which do not relate to diamidonaphthols, and, in order still further tosimplify the matter, I will omit from the Claim the alternative of seeking theaid of sulphuret of sodium, to which I have above referred. I do this solelyfor the purpose of simplification, inasmuch as the same arguments would apply'

35 if I had retained it. The Specification and Claim would then read as follows :" I have found that sulphur not only reacts on the disubstituted derivatives of" benzene or naphthalene but also upon certain trisubstituted derivatives, and," among others, upon diamidonaphthols. Having now particularly described" and ascertained the nature of my said invention, and in what manner the'

40 "same is to be performed, I declare that what I claim is : The above described" improvements in the manufacture of black dye-stuffs, these improvements" consisting in causing sulphur to react alone upon diamidonaphthols as herein" before described." We have to decide whether such a Patent would have.been valid, and, if we decide that it would not have been valid, the Plaintiffs'

45 Counsel admit that their case must fail.In my opinion, it is impossible to support such a Patent. Two duties are

incumbent upon a patentee in preparing his Complete Specification. In thefirst place, he must "particula~lydescribe and ascertain the nature of the inven"tion," and, in the second place, he must particularly describe and ascertain

50 "in what manner the same is to be performed." Theset'Yoduties aredistillcta~d.have<li~W~~Q.b1ects. The first is to ensure that ifie·monopoly grallooaD'YtMPatellt extends no'1Urther than the invention which the applicant for thePatent has made. The second is to ensure that the public shallIn return for

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the grant of the monopoly, be put in full possession of the way to carry out theinvention, in order that, after the Patent has expired, they may enjoy to the fullthe benefit of that invention. In such a Specification as the above, the patenteewould have performed neither of these duties. To say that an invention consists in causing sulphur alone to react on diamidonapthols is so vague as to 5" describe and ascertain" nothing. It is common ground that before the dateof this Patent no knowledge existed of any reaction between sulphur alone anddiamidonaphthols. In the evidence-in-chief of Mr. Ballantyne, the firstwitness for the Plaintiffs, we find as follows :-" (Q.) Is there literature or"practice that you know of, prior to the date of this Patent, of any reaction 10" between sulphur and the diamidophenols, and the diamidonaphthols, or the" dinitrophenols and the dinitronaphthols ?-(A.) No, I know of none. (Q.)" Is there any publication, or literature, or practice that you know of that would" lead a chemist to use any of those four specified bodies with sulphur ?-(A.) No."This is confirmed by all the evidence in the case. Hence the description of the 15invention is a perfectly general description which must include every kind ofreaction between sulphur and diamidonaphthols, however produced. Such adescription cannot be held to "describe and ascertain the nature of the inven"tion." The failure to perform the second duty is equally clear. No description ofthe way in which "the same is to be performed" is given in the Complete 20Specification. The case of the Plaintiffs on this point is, in my opinion,unarguable. They cannot appeal to common knowledge and say that it wouldsuffice to enable a chemist to carry out the in-vention (whatever that inventionmight be), because their own witnesses prove that no knowledge existed at thedate of the Patent as to any reaction between sulphur and the diamidonaphthols. 25Croissant and Bretonniere and the earlier Vidal Specifications do not assistthem here, because these Specifications do not relate to the action of sulphuralone upon bodies, but only of sulphur when presented in combination with analkali, i.e., in the form of sulphide of soda or other alkaline sulphide, quiteapart from the fact that it is admitted that the bodies proposed to be acted upon 30in those Specifications do not include diamidonaphthols. Under such circumstances, the total absence of directions in the Specification as to diamidonaphthols is fatal. On the ground, therefore, that the Plaintiffs have claimedgenerally (among other things) the manufacture of black dye-stuffs by causingsulphur alone to react on diamidonaphthols, a~ have giv~n no J!~~cription of 35;~ ~:e~~r~~ii~Yid~i!E~<!~r ~~l?-~;y_ ~!:~tob2. p~rt<>r~~~ tIle Patent

Although the above is sufficient to decide the action, it will be necessary todeal with the other important points relating to the Specification which wereraised at the trial. After correctly giving the process for obtaining a black dye 40from diamidophenol by causing sulphur to react upon it, either alone or in thepresence of sulphuret of sodium, the Specification proceeds to deal with anewclass of bodies which are distinguished from the diamido-bodies alreadymentioned in that they have two nitro-groups in the places occupied by theamido-groups in the diamido-bodies. In other words, the two NH2 groups in 45the diamido-bodies are replaced by two N02 groups in the dinitro-bodies. Thewhole of the rest of the Specification is devoted to these bodies. The Patenteefirst remarks that he may replace the diamidophenol of his example by thecorresponding dinitrophenol, or by a mixture of that and another dinitrophenol. He then continues :-" In this latter case, it will be necessary to 50" previously reduce the dinitriphenols by means of sulphuret of sodium and" to add sulphur to the reduced mass." I will pass over, for the present, thenext three lines (which relate to another subject-matter) and go to the example

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which he gives of carrying out his invention with dinitrophenols. He says :"For example: I take sulphuret of sodium, 3 kg.; dinitrophenol, 1 kg. 840 gr."I heat the mixture to above 140 degrees Centigrade in a suitable vessel"provided with a reducing agitator, and, after reduction, I add sulphur

:> "350 gr."The Plaintiffs' witnesses gave evidence-and this was accepted by the Defend

ants-that a chemist would read sulphuret of sodium as meaning the actualsulphuret of sodium, and not either of its commercial forms, which containlarge proportions of water, their ground being that the quantity was obviously

10 intended to supply sufficient reducing material to reduce both nitro-groups. Ihave no doubt that this is correct, and it is to my mind clear from this that theinventor expected that such a reduction would take place. In his earlierPatents he had dealt with monoamidophenols, and had made black dyes out ofthem, and had brought mononitrophenols within his invention by reducing them

15 to monoamidophenols by the use of sodium sulphide in the way adopted in thepresent Patent. He, no doubt, thought that a similar reduction of both thenitro-groups would take place in the case of the dinitro-body. That this washis view is confirmed by the fact that he gives no temperatures or times for thedye-forming reaction in this case, no doubt thinking that he had already done

20 so in his first example. In other words, having put in sufficient sulphuret ofsodium to reduce both nitro-groups, and having directed that the sulphur shouldbe added after reduction, he thought that this would be a case of forming thedye from what had become a diamidophenol by reduction, and he had alreadygiven full details as to how such a process should be carried on in the case of

25 a diamidophenol. But unfortunately that which occurs in the monitro-bodydoes not occur in the same way in the dinitro-body. We now know that one only ofthe two nitro-groups in the dinitro-body is reduced and, moreover, that, attemperatures such as these which he directs, the body formed by such reductionbreaks up and forms a new compound,giving off ammonia in the process. It

30 must be taken that even now the nature of these changes is not known. The majority of the witnesses for the Plaintiffs think that a condensation productis produced. Dr. Green, a witness for the Defendants and a very eminent dyechemist, thinks that the result is a different product not due to coudensation, andDr. Liebmann, an equally eminent witness for the Plaintiffs, says that either view

35 may be right. A great difficulty, therefore, arises as to the meaning of the phrase" after reduction" in the Specification. If it were necessary to decide such anintricate point, I should myself be of opinion that either the Specification mustbe taken to mean" after complete reduction," i.e., when both nitro-groups arereduced (a thing which we now know would not occur), or that the direction

40 was insufficient because no chemist would know when the reduction referredto was complete. Seeing that he did not know what bodies were to be formedin the process, he had nothing to indicate when the reduction process had cometo an end. Fortunately, it is not necessary to go into such an intricate questionof chemistry, but it accounts for the very varying interpretations that have been

45 'put, by the different chemists, upon the words" after reduction." Bome haveconsidered that the Specification directs that you should Ietzhe temperature riseto 140°, and that when it has reached that point the reduction is finished. As amatter of construction, I think this inadmissible. Others think that you areto heat up to 140°, and keep it there until the reactions that are going on appear

50 to have spent themselves. This I think probably the fairest interpretation, ifwe do not take it to mean" after complete reduction." It is certainly the mostbeneficial interpretation for the Patentee. In either case, the result is that thebody formed in the preliminary process is a body partly due to reduction, and

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partly due to subsequent or eo-temporaneous decomposition. It must not bethought that I am accusing this eminent inventor of ignorance when I say that,in my opinion, he thought that both nitro-groups would be reduced, and thatafter reduction he would be working with diamidophenol, as in the firstexample. This was the first time that sulphuret of sodium had ever been used 5,to produce reduction in the diamido-body, and there was no existing knowledgeon the subject. I think that even Mr. Ballantune, when he began to give hisevidence, shared the Patentee's views on the point. Errors in chemical theorydo not make a Patent invalid, if those errors do not interfere with the sufficiencyof the practical directions given, and it is only because of the uncertainty intro- 10duced into the practical direction, that sulphur has to be added" after reduction,"that this error in theory could be material. But, as I have clearly said, it is notnecessary to hold that the directions on this point are insufficient and that thePatent is on that ground invalid. The necessity of a close examination is dueto its bearing on the question of infringement. I shall not here anticipate my 15examination of that question, but shall content myself with pointing out thatthe Patentee states specifically that it is necessary to reduce the dinitrophenol,and that the sulphur is to be added to the reduced mass, i.e., to the mass afterreduction.

It remains to examine lines 13 to 15, which is the passage which I purposely 20omitted when dealing with the case of dinitrophenols. It is a passage of primeimportance from the point of view both of the Plaintiffs and the Defendants.It is the only passage in the Specification, apart from the Claim, which relatesto dinitronaphthols, which are indisputably included in the Claim. The validityof the Patent therefore depends on the sufficiency of the directions for making 25dyes from dinitronaphthols which are given in this passage. The passage inquestion reads as follows: "The dinitrophenols may be replaced by dinitro-" naphthols such as the 1.2.4. or naphthalene yellow. Itwill also be useful, in" this case, to reduce the' nitrified compound by means of sulphuret of sodium" and to subsequently add sulphur." The step which is here recommended as 30." useful" is the same as that which, two lines before, had been specified as" necessary" in the case of dinitrophenols. The word" useful" stands, therefore,in marked contrast to the word "necessary" in the former case. No questioncomes more frequently before a Court, in connection with the construction of aSpecification, than the question whether a patentee has confined himself to 35some process or arrangement described in the Specification, so as to make ~t a,necessary part of his invention, or whether it is merely an optional alternative'which may or may not possess special advantages, but the use of which is not anessential part of the invention. The importance of rightly construing aSpeciflcation in such a matter is obvious when one considers the consequences that 40·necessarily flow from the one 'construction and from the other. By his Specification, and the Claim with which it concludes, the patentee delimits the area ofhis monopoly. If the validity of his Patent ischallenged, he has to .sh.Q~JJ.!~& _.all within that area. isnovel ~,!14" ...lls,~f!!J, andif he does so his Patent is valid,assuming, of course, that he has duly performed his other obligations. But, on 45the other hand, he cannot complain of the public doing anything which isoutside of the area so limited. What they thus do is not within his monopoly.If, then, he has made a step an essential step, he 'cannot be required to provethat the invention without that step is either novel or useful. It is not withinthe area of his monopoly. It follows, of course, that he cannot complain of the 50public doing anything in which that step is not used. But if he has describedthat step as merely optional (however advantageous it may be) he has extendedthe a~ea claimed byhim to c~s~s where it is.not used, and the public do notget

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outside the area of his monopoly by non-user of that step. But the Patenteemust then show that the invention is novel and useful without it.

It is, I think, worth while saying a few words on the reason why this question5 arises so frequently in Patent actions. It is settled law that a patentee must act

towards t he public uberrima fide, ~!?-9:-I!lJJ.at ...gly~~"the.,b.~.§t~Jl1.tQ~!!!~~tggqiIl. }l1~,*power ~E?<,..~2.,4g,~ ..~t22~~rY'.rgqt.,th.e.in~antiQ.u, •. He is therefore bound to telrtli~public all the steps "tllat can advantageously be taken in carrying out theinvention. :J?~~heis not. limited to claiming only the best way qfcarryingit

10 out. On the"cO'ntrary, he may properly, alldindeed~must. in hisowndefence,r claim t~e iD.veIltioIlllo~eV"er}~~rried()llt,--otherwise the public would have it

iii,·thefr"power to use"the;irivention in every way excepting that which, at thetime, he might deem to be the best. It is this co-existence of the duty to tellthe public the best way of carrying out the invention, which is at the time

15 known to the inventor, and the duty of marking out clearly the 'limits of the," ~. monopoly which the inventor claims, that leads so frequently to.the presence of

permissible alternatives in the Specification, and the Courts' rightly considerthat an inventor is Ilot~o be,liIllit~<J.b{.~escr~p~iol18of~~e:e~.w~~(Jh~~,~,!'~£Qm::~~~n..~~l,;;proyided;- op.'''tli~~~:!~i~_c~9Q!l:§~F!Ig~.!Qp.,' 9,r:.-l1ie-.... SRe~Iij,2~t~2_I!,,!J..~ ...has.:no(

20 re~rA~~Ilt,~~,.,~p.(3Ill ~~" ~~9.~~~~ry.,,~~:p.q. _t9-~t.llJ~ Q~~~!I.1,.' fairly. CQ;n~tI'Jleg" J!1~J~<!~~cases 'where th'ese useful.altel'uatives. .. are-not used; as .. well as those w~~r~they are. - ", .,"

In my opinion, no better example of the necessity of those rules could befound than the Specification of the Patent sued on herein. Having fully

25 describdedt

thetPadtehn!ed. proc~ss. as applied kto ~iamhidod~h~nolsh' theI Patdentheeprocee s 0 ex en IS invention so as to ta e In t e initrop eno s an t edinitronaphthols. In thecase of the dinitrophenoIs, he says that it will be"necessary" to previously reduce the dinitrophenols by means of sulphuret ofsodium, and to add sulphur to the reduced mass. It is quite clear that this is

30 made 'by hirn an essential part of his patented process as applied todinitro

phenols. To establish the validity of his Patent in respect of these bodies, heneed only show.that his process succeeds if this is done, and correlatively theambit of the Patent is correspondingly limited. When he comes to the dinitronaphthols, he refers to this step in language which clearly shows that it is advantageous but not essential. In contrast with the statement with regard to the

3,5. dinitrophenols that it is " necessary " to use the step, he says here that it will be"usef-t;tl." He has not, in this latter case, restricted himself to cases where it isused. In performance of his duty to give the public the best information as tocarrying out the invention, he hasadvised them to use it, but has not, told themthey must do so, and, by reason of the contrast between the word" useful " and,

40 the word "necessary," has by implication told them that they mayor may notuse it, at their option. I cannot feel any doubt that, as a matter of construetion, we are bound to hold that the Patentee does not represent that the previous,reduction of the dinitronaphthols was essential, or to limit the ambit of his'monopoly to cases where this step was used in operating with those bodies.

45 This being so, let 'me examine the Claim so far as it deals with nitro-co-mpounds. The full Claim reads as follows: "The above-described improve..'" ments in the manufacture of black dyestuffs, these improvements consisting" in causing 'sulphur to react, either alone or in the presence of sulphuret of" sodium,upon diamidophenols and diamidonaphthols or upon dinitrophenols

50 "and dinitronaphthols,as hereinbefore described." .In the first place, it is clear that the words" as hereinbefore described," which

qualify the verb "to react," are essential parts of the Claim. Without them,the Claim.would be bag because iti~ n~w,known t1l1l~. sulphuralonewill not

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act upon these nitro-bodies. In order, therefore, to support the Patent we mustgive the Patentee the benefit of the reference in the Claim to the description inthe Specification, and read it as though, in the case of the nitro-bodies, thereaction of sulphur with them meant the reaction with them after they hadbeen subjected to such preliminary processes (if any) as were directed in the 5Specification. What processes are so directed? In the case of dinitrophenols,the Specification clearly says that you must reduce by sulphuret of sodiumbefore you expose the body to the reaction of sulphur, which causes theformation of the dye. But in the case of dinitronaphthols, the Specificationonly says that you may advantageously do so, and it clearly reserves to 10the Patentee, as one method of carrying out his invention, that youshould perform the dye-forming reaction without previously treating thedinitronaphthols with sulphuret of sodium. Both these processes, therefore,are included within the Claim, and it is admitted that the latter will not work.It follows, therefore, that on this ground also the Patent must be held to be 15invalid. Counsel for the Plaintiffs endeavoured to meet this by an argumentwhich is certainly ingenious, though not entirely novel. They adduce evidenceto the effect that dinitronaphthols are bodies of so unstable a character that, ifheated with sulphur, they would explode, and that, therefore, a practicalchemist would reject the suggestion of treating them with sulphur alone, with. 20out previous reduction. Hence they say that the suggestion in the Specification, .that this previous reduction is only" useful" as opposed to " necessary," wouldnot be misleading. ..rr~~ practical chemist would treat it, they saY,-~,§~!!Q~~~.~.... Patentee had .saicffnat it was " necessary," as hehad .. f'~i<!.pr~Y1Qn~!LiJlJ.lw~.a~~ •.. ofdinitronaphthols, This argument appears to me to be unsound for many 25reasons. In the first place, it is not the fact that a mixture of dinitronaphtholsand sulphur alone cannot be heated to the temperatures mentioned in the Speci..fication without explosion occnrring. In the example given in the Specificationof the reaction between sulphur alone and one of the other substances men..tioned, without previous reduction, the temperatures given are 80° to 1200 for 30six to eight hours, and it is not established, nor is it the fact, that with propercare sulphur and dinitronaplithol could not be heated to such a temperature asthat without an explosion resulting. In the list of the experiments of Dr.Morgan, one of the Defendants' witnesses, we find that he heated dinitronaphthols and sulphur alone up to a temperature of 160° and no reaction took place, 35and even at higher temperatures it only resulted in charring and ignition. Butone may go deeper. The explanation why it is impossible to get a dyefrom the reaction of sulphur alone and dinitronaphthols is not the risk ofan explosion, but the fact that sulphur will not act on a dinitro-bodythat has not previously been broken up so as to form bodies in which 40one of the nitro-groups has been replaced by an amido..group. This isequally true of dinitrophenols, where there is no such danger of explosion.The Patentee was quite right in saying that it was necessary to reduce thedinitrophenols before submitting them to the action of sulphur alone. Dinitrophenol will not react with sulphur alone. It is only its reduced products which 45will do so. Indeed, according to Dr. Liebmann, not even the direct product ofthis reduction will so react, but only the product, or products, into which itpasses, if the temperature at which that reduction is performed is sufficientlyhigh. It was therefore necessary that the dinitrophenol should be reducedbefore the sulphur was put to it, because otherwise the sulphur would not 50react upon it. All this is knowledge of to..day, much of it having beendiscovered by the experts in their researches for the purpose of this case. Atthe date of the Patent, it is admitted by both sides that no knowledge whatever

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existed as' to the possibility of sulphur reacting on these nitro-bodies, andtherefore a chemist at that date would take the whole of his guidance from theSpecification, and, though he might realise that heating sulphur and dinitronaphthols together was perilous, he would be justified in' taking it, and indeed

5 bound to take it, that the Patentee told the public that by so doing you couldobtain a black dye, and that the so-obtained dye was included within his Claim,and that this process must not be used without his licence. It is, therefore, nomere question of certain directions being misleading or not. It is a questioninvolving the area of monopoly claimed, and if, on the proper construction of

10 the Specification, the Court holds that the Patentee has claimed a process whichis so dangerous that an expert chemist would avoid it, or even a process whichan expert chemist would take to be impossible, the consequence is, not thatthe Patentee is relieved from the consequences of his blunder, but that hisPatent is invalid-until the Specification is duly amended-if the process is

15 in fact impossible, or if he has not given adequate directions how it can becarried out.

The law applicable to such a case forms the subject of a very celebrateddecision of Lord Westbury when sitting as Lord Chancellor on appeal from theVice-Chancellor in the case of Simpson v, Holliday.- The point of law raised

20 in that case was, to my mind, identical with the contention of the Defendantsin the present case. The Patent in issuein that case was held to describe twoprocesses for obtaining the result, the one with, and the other without, theaction of heat. It was admitted that one of them, namely, the cold process, wasineffective, but it was contended that any workman of ordinary knowledge and

25 observation would reject the cold process and adopt the hot. In his judgmentthe Lord Chancellor said: "When it is said that an error in a Specification,h which any workman of ordinary skill and experience would perceive and" correct, will not vitiate a Patent, it must be understood of errors which appear" on the face of the Specification, or the Drawings it refers to, or which would

30 "be at once discovered and corrected in following out the instructions given for"any process or manufacture; and the reason is, because such errors cannot" possibly mislead. But that roposition is not a correct statement of the la~

"!!_,~~!,!~~..,~o,~~~r~!:~_;Y_,le are (lsc8vera e.only.E.I, ex~erlme~~w,ang.~~er"~P:~1..!:I:- Nelflier IS trie propositIon true of any erroneous statement In a

35 " SpeCIfication amounting t2-a false suggestion, even though the error would" be at once observed by a workman possessed of ordinary knowledge of the"subject. For example, if a Specification describes several processes, or several"combinations of machinery, and affirms that each will produce a certain"result, which is the object of the Patent, and some one of the processes or

40 "c<>.!!!!?t~atio~s is whoIIX., ineff.~Qt~~J_._~n<L US~~~4 t!te.,.".~~&~,~J.,>,~!I!_J:l~ bad~w" allhougli'tfieinlsteke committed by the Patentee maybe'such as would be at once" observed by an ordinary workman. I am of course speaking of cases where that" process or machine which is inefficient is the invention or part of the invention" that is claimed." An appeal was brought from the Lord Ohancellor's judgment

45 to the House of Lords, and the judgment was supported on all points relating tothe Patent. Lord Chelmsford, who was Lord Chancellor when the appeal washeard, said :-" It was also said that there was a considerable body of" evidence to show that skilled persons, to whom the Specification must be" taken to be addressed, found no difficulty in working it out, and applied heat

50 " in the process as a matter of course. This, however, cannot have any effect

• L.B., 1 H.L.S15.

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" upon the construction of the Specification. It merely proves that the descrip" tion, though erroneous, is not likely to mislead skilled workmen. That the" description may induce the necessity of experiments appears from the evidence" of an experienced chemist, who says :-' If I found there was no action without" , heat, I should heat it immediately.' The construction of the Specification :>" remaining untouched by the evidence, and the Court being informed that the" invention which is claimed is incapable of producing the result intended, it"had no other course to pursue than to pronounce the Patent to be void."Lord Cranworth, who was the other member of the Court, said as follows:-" There is no doubt in this case as to the construction of the Specification. It 10" specifies two modes of obtaining the mixture which produces the dyes-one" with, and the other without, the agency of heat. It was admitted, on the" motion before Lord Weetburu, and it was also admitted on the hearing of the" appeal before your Lordships, that no practical result can be obtained without" the heat. This clearly makes the Specification bad. It specifies two processes, 15" whereas only one is practicable. It is no answer to say, as was said at the"bar, that any practical workman would know that the cool process was"bad, and so would adopt the other. It may be that in construing a" Specification the Court may sometimes feel justified in understanding the" language, not according to its ordinary meaning, but in the mode in which it 20" would be understood by skilled workmen called upon to act according to its"direction. But this does not warrant us in giving effect to a Specification" claiming two things; one practicable, and the other impracticable, because a" skilful workman would know that one of them could not be acted upon, and" so would confine himself to the other. This would not be to construe a 25" Specification according to the language of workmen, instead of according to" our ordinary language, but to reject something claimed by the Patentee," because a workman would know that it was an impracticable claim." To mymind, this is decisive authority in the present case. Whether or not a skilledchemist would reject the suggestion to use sulphur alone with dinitronaphthols, 30it is, on the proper construction of the Specification, a part' of the invention that (is claimed and if, as is admitted, it will not succeed, the Patent is invalid.

I have now dealt with all the points raised upon the Specification with theexception of one, namely, whether the directions given therein are sufficient to .enable the invention to be carried out with the naphthol compounds claimed. 35I have already dealt with the case of the diamidonaphthols, as to which rio .directions whatever are given, but the Defendants contend that, even in the.case of the dinitronaphthols, the directions are insufficient. This point, thoughonly one of many raised in the case, forms the subject of the bulk of the!evidence given on the one side or the other, much of which: is very contra- .~40

dictory. But out of this mass of evidence there emerge one or two. facts ""not in substantial dispute- which, in my opinion, are sufficient to decidethe issue, and I will now proceed. to deal with them. 'I'here was no disputethat the example given in -she Specification, lines 3 to 5, gave a trueblack dye as described in the Specification, whether it was worked with 45sulphur alone or in the presence of sulphuret of sodium. In this example,diamidophenol is employed. When dinitrophenol was taken the· evidencebecame very conflicting, largely because of the difficulty of interpretation of theSpecification. Mr. Ballantyne, the first witness for the Plaintiffs, took the viewthat the reduction process was intended to give a substance which was to be 50used in the place of dinitrophenol in the example at the head of the Specification, and accordingly he heated it as there described and obtained what he considered to be a proper black dye.. The success of this experiment was strongly

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contested by the Defendants' experts, who maintained that the dye obtainedwas not in truth a black dye but rather a dark brown. In my opinion it is notnecessary to examine into this minor issue, seeing that there are so many moreimportant points to be. decided. I shall therefore assume in favour of the

[) Plaintiffs that the patented processes succeed with both the phenol derivatives,or, in other words, that a black dye can be produced by the action of sulphur,alone or in the presence of sulphuret of sodium, on diamidophenol, or upondinitrophenol which has been reduced by heating with sulphuret of sodium.The case with regard to the naphthols is very different. It is admitted that

10 neither diamidonaphthols, nor the dinitronaphthols after reduction, will give adye if substituted for the diamidophenol in the process described in the Specific..ation. In that process the mixture of sulphur and diamidophenol is kept at atemperature of from 80° to 120° C. from six to eight hours. If diamidonaphthols or reduced dinitronaphthols be substituted for it no result is obtained.

15 It is only necessary to look at the evidence of Dr. Eichwald, a witness calledby the Plaintiffs, to establish this. It must be remembered that there wasno knowledge at the date of the 'Patent as to any reaction between sulphurand either of these bodies. So far, indeed, as the dinitronaphthol after reduction is concerned, there is nothing in literature which states what the reduced

20 body is, as Sir James Dewar, a witness for the Plaintiffs, said. No one cansay even now with certainty what it is. The Patentee was therefore bound togive to the public full directions as to how to obtain the dye from the naphthols,and he has not done so. As a matter of fact, in order to obtain a black dyefrom diamidonaphthol, or from reduced dinitronaphthol, the mixture must be

25 carried up to a temperature of 1900 or over, and kept at that temperature till theprocess is finished. Thus the raising of the naphthols to temperatures farabove those given in the Specification for the sulphur reaction is necessary tosuccess, and no intimation of this fact is given in the Specification. It follows,to my mind, incontestably that the Specification is insufficient in respect of

'30 that part of the invention claimed which relates to naphthol derivatives. Theanswer. of the Plaintiffs !"~.;","~,!?-a~_'iR!.~_e.~.Jerim~nt3,..~~g~.~J!,~9JjQ -,,,,Q.9~J4,."",,!J..~!>ea~_ce~t~~.~~q. t~~t !,h~~<~.~!t~th~!~~~eq.~E~!11fuf]lg1ire~~!~~.~E.~. But It IS settle~Iawtha] a Patentee musThot Uirow upon the publle tne burden of expert..menting in order to ascertain how the invention is to be carried out. The

35 Plaintiffs are here in a dilemma from which there is no escape. The Patenteeis bound to act towards the public uberrima fide, and to tell them all that heknows which is requisite to enable them to carry out the invention to the best effect.Now in this case the Patentee had either made the dyes with the naphthols orhe had not. If he had, he must have known that the temperatures necessary

40 to success were vastly higher than those he had given in the case of the phenols,and the fact that he has not given that knowledge to the public must invalidatehis Patent. If, on the other hand, he had never made the dyes from thenaphthols, he could not, in the then state of knowledge, know that they couldbe so produced. He had, in fact, not made an important part of the invention

45 which he claimed. He did not and could not" describe and ascertain" in hisSpecification the manner in which his invention so far as relates to these bodieswas to be performed, for he did not know it himself. They were inserted onspeculation only, in the hope that somebody by experiment and research wouldfind out that these bodies could be 'used, in which case he would claim the benefit

50 of that which, of right, would belong to another. Without, therefore, attemptingto decide between the rival views of the various eminent experts called on theone side or the other as to whether particular dyes are. fairly called black

... dles., I a~ .?f.opinio~ t4~t.<?:g. ~4i~._a:rouI}.9. also t4e.LettersPatent are Invalid, )

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There remains the issue of infringement. The Defendants deny that theyuse the patented invention. They affirm that their dye is produced by adifferent process and that it is a different substance. That it is a differentsubstance is beyond contest. On page 296 of the evidence will be found atabular statement of the results of the experiments which Professor Green 5made upon the comparative behaviour of the Defendants' dyes and dyes madeaccording to the directions contained in the Specification, when subjected tothe action of various reagents, and it will be seen therefrom that they behavein a wholly different manner to the tests applied, showing that the bodies areessentially different. The last column of this table relates to the dye made 10according to the Specification from dinitrophenol, which is the substance fromwhich the Defendants' dyes are made, and it is therefore the column whichshould be compared with the columns relating to the Defendants' dyes. Tocite only one example of difference of behaviour, it will be seen that theDefendants' dyes are insoluble in acidified bichromate, whereas the dye made 15according to the Specification is completely soluble in it. I prefer to relyupon tests of this kind rather than upon questions of the behaviour of thebodies when used as dyes, because there is room for great difference of individual opinion on the latter subject. Moreover variations in strength of thedyeing solution often produce results which to the unskilled eye appear as 20differences of colour in the dye. Nevertheless, there is a mass of evidencesubstantially uncontradicted to the effect that, even regarded as dyes, theDefendants' dyes are different from those produced according to the Specification. The Defendants give evidence to prove that the dye obtained fromdinitrophenol according to the Specification was not a black dye, but a brown 25dye. This was vigorously denied by the Plaintiffs' witnesses, but they did notdeny that the one was a brown black and the other was a blue black, that is tosay, that one was a brownish black, and the other was a bluish black. As Ihave already said, I should be sorry to have to decide whether the Plaintiffs orthe Defendants were right in their contention, and for the purposes of my 30judgment I have assumed that the Plaintiffs' dye is properly called black.But, on the question of identity of product, it suffices that one should be adifferent type of black from the other, and this is not substantially controverted. I need not, however, examine elaborately the evidence as to theDefendants' dye being a different substance from that given by the processes 35in the Specification, because it was admitted by the Plaintiffs' witnesses. Forinstance, Dr. Liebmann stated that it was so, and this was so generally acceptedthroughout the case that when in the examination-in-chief of Dr. Liebmann onhis .being recalled, after the Plaintiffs' case was finished" Mr. Astbury appeared tobe asking questions of the witness tending to show identity between these sub- 40stances, the Judge interposed as follows :-" (Mr. Justice Parker): At present" the evidence I do not think is really cross-examined to, that 6A. and the Defend-" ants' have chemical characteristics different from those produced by the example" in the Patent. (Mr. Astbury) Certainly," and this admission was more thanonce repeated by Plaintiffs' Counsel in the argument before us. During the 45argument before us, Counsel for the Plaintiffs sought to minimise, or get rid of,the effect of this proved difference between the products, by saying that theDefendants' dyes did not differ from those given by the process in the Specification" except in containing more sulphur. Such an answer is equally bad,whether regarded from the point of view of chemistry or law. To say that 50two bodies are the same, only that one contains more sulphur than the other, isas meaningless as to say that corrosive sublimate is the same as calomel, onlythat It.contains more chlorine. Mysterioua as is the composition of this class of

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dyes, they are certainly chemical compounds and not physical mixtures, andmoreover an examination of the processes given in the Specification, and thoseby which the Defendants' dyes are made, shows that the products are definitechemical combinations. The language of the witnesses on both sides makes

:> this clear. The Plaintiffs' witnesses, for example, speak of the temperature atwhich the formation of the dye commences, and of its continuing to form, onraising the temperature, until the full yield is obtained. If. therefore, thecontrasted processes produce definite chemical compounds differing in theproportion of sulphur which is brought into chemical union with the benzene

10 nuclei, they produce products which are different in every sense of the word.I should add that no one can say whether .or not this different proportion ofsulphur can be brought into combination without a change in the moleculargrouping of the benzene nuclei with which it is compounded. It may well bethat the molecule of the dyes is a complex molecule built up of many benzene

15 nuclei, and that the increase in the proportion of sulphur taken into the combination is due to a larger number of benzene nuclei being introduced into thegrouping or to a change in their arrangement. Nothing is known as to this.It is therefore impossible to say how great is the difference in chemical composition between the two bodies. All we can go by is their different behaviour

20 to chemical re-agents. This establishes that they are different chemical compounds, and further than that the knowledge of to-day does not permit us to,make any assertion.

The proof of the issue of infringement rests, of course, on the Plaintiffs, andtherefore they must, in this case, show that, notwithstanding that the Defendants'

25 dye is a different body from dyes produced according to methods given in theSpecification, it yet comes within the Patentee's Olaim. This can only be successfully done (if at all) by showing that it was obtained by using a process sub..stantially the same as one of those described in the Claim of the Specification.This is impossible upon the facts. Proportions, temperatures, times, are all in

30 striking contrast. For example, the Defendants use six times as much sulphuras is used in the example given in the Specification. They boil for fifteenhours instead of from six to eight hours. In addition to this, the Specificationstates that it is necessary, before adding the sulphur, to reduce the dinitrophenol, and in the Defendants' process this is not done. The dinitrophenol is

35 put in without any reduction. The temperature, at which this previousreduction is directed to be carried out in the Specification, is stated to be above140°. The whole operation in making the Defendants' dye is carried on at a temperature of about 106°, and the special precaution of using a reflux condenser istaken in order to prevent it rising above that temperature. It must be borne in

40 mind that, in the Specification, no rules are given beyond such as can be gleanedfrom the study of the examples, and nothing can be gleaned from them except thatthe amount of sulphur corresponds, molecule for molecule, with that of thephenol derivative. No indications are given how the process described in theexamples may safely be varied or departed from. It must also be remembered

45 that, at the date of the Plaintiffs' Patent, nothing whatever was known of theeffects of treating these bodies with sulphur, alone or in the presence ofsulphuret of sodium, and there could be no prevision as to what would be theeffects of so doing. No knowledge, therefore, existed which would enable thepublic at that date to see that the Defendants' process would succeed in making

50 a dye at all, and still less in making the dye which the Plaintiffs had invented.There is no Olaim in the Plaintiffs' Specification for the product as distinctfrom the process. The Claim is for causing sulphur, alone or in the presenceOf sulphuret of sodium, to react on the body in the manner described, and

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although no mere icolourable departure from the patented process would beallowed by the Courts, yet it is impossible to sa)" that so radical a departureas omitting a step stated in the Specification to ·be necessary, and departing fromall the other directions contained therein, could be said to be a case of causingthe bodies to react "as therein described." In his argument, Mr. Walter put 5forward, fairly in my opinion, a dilemma in which the Plaintiffs stand in thisrespect. If the process used by the Defendants is within the Patent when usedfor dinitrophenol, it must be equally so when used for dinitronaphthol. But ifdinitronaphthol be used in it, no dye is formed. It follows" therefore, that thedirections in the Specification either do not include such a process, or that the 10Specification is insufficient in the case of dinitronaphthol. But although thisdilemma may assist the arguments of the Defendants, I do not think it necessaryor proper to leave it doubtful on which of the two alternatives I base my decisionon this point, In my opinion, the process used by the Defendants is a distinctprocess, the result of independent invention, and is not described or included in 15the Specification sued on by the Plaintiffs, or within its Claim.

In this connection, it is important to call attention to the decision of theHouse of Lords in the case of Heath v, Unwin:" The Patent in that case wasone for the use of carburet of manganese in the manufacture of steel. Thedefendant had used manganese and carbonaceous matter, which he had put 20together into the crucible. The Judge at the trial held that the Patent had notbeen infringed. On appeal to the Exchequer Chamber, a judgment of venirede novo was given by a majority. Baron Alderson, who was in the minority,

'held that the Judge at the trial was right. In his judgment he said: t" There" is no evidence that oxide of manganese and carbon were known to be at the '25" time of the Specification (which time, and not the time of the use, is the" material time to look at) exactly and under all the circumstances an equivalent,'" in chemistry to carburet of manganese . . . . The plaintiff did not then" know it himself, nor did anyone else know it. If they know it now it is" in consequence of a new discovery alone, for which no Patent has been taken 30" out and no Specification enrolled. ~~ehend that nothing is an equivalent"now which would not have been an infringement immediately after this" Specification was enrolled. The knowledge of the equivalents must be the

:" knowledge the world had before these experiments, now called infringements," were first made." On appeal to the House of Lords, the judgment of the 35Exchequer Chamber was set aside, and the view of the dissentient minority

.. adopted. The judgment of the House of Lords was delivered by Lord Oranworth, then Lord Chancellor. In the judgment he said: t" There is no"evidence whatever tending to prove that, at the date of the Patent, it." was known to persons acquainted with the subject of manufacturing cast 40" steel, that coal tar and oxide of manganese would be chemical equivalents"for the carburet of manganese claimed by the Plaintiff. Indeed it is" obvious that the discovery of such 'equivalents was made after the use of

,"the carburet, as a distinct metallic substance, had -been some short time in"operation. It was itself a most valuable discovery, and would have legiti- 45" mately formed the subject of a new Patent. . . . . On the short ground,"therefore, that the invention claimed is for the use of a particular metallic'" substance, namely, carburet of mang-anese, in certain definite proportions" according to the weight of the steel under fusion, and that no such substance,

," nor any equivalent for it, known to be such at the date of the Specification, 50

*.. ~,Webs.'-P.C. 2~8. t 2 Webs. r.o, 24:6. t 2 Webs.P.O. 51?,

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" was used by the Defendant, I think that there was no evidence of infringe" ment, so that the ruling of the learned Judge at the trial was correct." It is,therefore, settled law that, alike as regards validity and infringement, the rightsof a Patentee must be judged as they would have been judged at the date when

5 the Patent was granted. On the one hand, no subsequent discovery can invalidate the Patent if it was novel at that date. On the other hand, nothing is aninfringement of t~at :p~t.~nt which the knowledge of the world on the publication of tne SpecIfication would not have recognised as being an equivalent ofthe patented process. In the present case the Patent is for a process in which

10 temperatures and proportions are essential to produce the result, and- nothingwhatever was known as to the behaviour of the bodies used. There was noknowledge, therefore, which would have enabled the public to go outside theSpecification, or to know that the process by which the Defendants' dye is madewas an equivalent for that given therein. On the authority of Heath v, Ununs:

15 (ubi supra), in the House of Lords, therefore, the Defendants' process is not aninfringement of the I...etters Patent. The force of this argument is immenselyincreased when it is found, as here, that the alleged infringing process producesa different, and a new, result. It must not be thought that the differencebetween the two processes is one of mere degree, or would be recognised as

20 such at the date of the Patent. In the absence of experiment it would beimpossible to predicate that the one could be substituted for the other, or wouldproduce like effects. In the one case the final body, produced by the completereaction between the dinitrophenol and sulphide of sodium, is formed beforethe quantum of sulphur necessary to bring about the dye-forming reaction is

25 added. In the. other case (amongst other differences) sulphur in large excess ispresent from start to finish during the whole of the reactions between all thebodies employed. It is impossible to predicate that its presence will not influence the decompositions and recompositions that ensue, or that it will not itselfenter into combination with some of the intermediate products that are formed

30 only to be immediately destroyed again. It cannot be predicated in chemistrythat the same or a similar result will be obtained by allowing a body A to reacton the body obtained by the reaction of B upon C as would be obtained byallowing A, B, and C to react together. It is clearly not so in the present case,as is shown by the difference in the products, and even if it had turned out to

35 be so in fact, there was certainly no public knowledge at the date of the Patentwhich would have enabled the public to know that it would be so. I am, therefore, of opinion that the process by which the Defendants' dye is manufacturedis not within the Claim in the Plaintiffs' Patent. It is true that it is a reactionbetween sulphur and dinitrophenol in the presence of sulphide of sodium, but

40 it is not such a reaction as is described in the Plaintiffs' Specification, which, inthe case of dinitrophenol, only describes a dye-forming reaction with a bodyderived from dinitrophenol after reduction has been carried out as completelyas it can be carried out by sodium sulphide at a temperature not less than 140°.

As the conclusions, to which I have come, differ from those of the learned.45 Judge in the Court below who has given a most careful and detailed judgment,

and for whose decisions I have such a profound respect, I wish to deal in conclusion with certain additional points in his judgment beyond those alreadydealt with, as to which I find myself not in accord with his conclusions. Inthe first place, I cannot agree with his conclusion of fact with regard to the

50 existence at the date of the Patent of a sulphur dye industry (in any sensewhich would have legal consequences) based on the invention of Oroist~attt

and Bretonniere. It was admitted before us by Mr. Astbury, on behalf of thePlaintiffs, and it is clear on the evidence, that the only manufacture under that

X

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invention down to the date of the Patent, was of the single brown dye Cachoude Laval, which was made chiefly by a French firm. There is no evidencethat it was made by more than one firm in England, and even as to that firmthere is no evidence as to the extent or duration of the manufacture. Further,there is no evidence that any experiments, either known to the public or other- 5wise, were carried on in accordance with that Specification, either within therealm or elsewhere, by any manufacturers of dyes, unless it is to be found inthe publications before us. As to the Vidal Patents of 1893 and 1894, there isno evidence that they were worked in England largely, or at all, prior to thedate of the Patent, but even if they had been it would not have affected this point. 10No such sulphur industry, therefore, existed within the realm as is found by theJudge, and there is no evidence of any practice of experimenting on substances on"the lines of that Specification at any dye-works, either within the realm or elsewhere. It is therefore erroneous, both in fact and law, to appeal to any practicewith regard to the manufacture of such dyes, or with regard to experimenting 15on new substances as part of the routine of business in dye-works as enlarging,or forming part of, the knowledge of the public, at the date of the Patent. Nosuch practice is shown to have existed. Even if such a practice did exist in theparticular dye-works where Cachou de Laval was made, it could not in law beappealed to here. The practice at particular works can only be taken as adding 20to that stock of public and general knowledge which a Patentee has a right toassume to exist in the class to which his Specification is addressed, when thatpractice is common and notorious within the realm, or has found its way intothe literature which they must be presumed to have read. In the present case,we find nothing of the kind with regard to the manufacture of dyes according 25to the practice in Croissant and Bretonniere's Specification, and therefore thepublic general knowledge cannot be enlarged by any reference to a supposedpractice, and must be judged of from the publications alone. It must be bornein mind that, as Mr. Astbury admitted, the practice alleged was a supposedpractice relating only to the Oroissant and Bretonniere dyes, which, as I have 30said, appear to have been made by only one firm in England. An erroneousconclusion on this point would, however, have been of minor importance, butfor an application to it of a supposed principle of law which I cannot accept.Throughout his judgment, the learned Judge has treated the question as thoughthe duties of the Patentees towards the public were confined to instructing 35persons practically engaged in the manufacture of what are now called sulphurdyes. This is not so. It is quite true that Specifications of new dyes mayfairly be taken to be addressed to skilled chemists, such as are employed indye-works, because they practically constitute the public for putting in practicesuch inventions. But there is no principle of law that to any further degree 40relieves the Patentee of his duty of publishing his invention, and themode of performing it, in a manner intelligible to the whole of that class.If the directions contained in a prior document are necessary for carryingout a Specification he must refer to that document, and incorporate thosedirections, unless, from the nature of the case, any such chemist would under- 45stand them to be so incorporated without specific reference. But, aboveall, it is important to bear in mind that there is nothing in the manufacture ofdyes by these sulphur reactions which separates it from the manufacture of coaldyes generally, or of other artificial dyes, and it is erroneous in law to treat aSpecification as sufficient which would only be so to persons who were engaged in 50some special form of manufacture, in this case that of Cachou de Laval. The test,therefore, which the learned Judge has applied to the Specification to determineita sufficiency, namely, whether it would sufficiently instruct a person who

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was practically engaged in the manufacture of dyes under Oroissant and.Bretonniere'e Specification, and who was in the habit of making experimentsupon new substances on the lines of that Specification as part of the ordinarybusiness routine, is, in my opinion, a fallacious one. The test is that it must

5 be sufficient to instruct all reasonably competent dye-chemists how to carry outthe invention with the certainty of obtaining the proper result. It is not difficultto see how the learned Judge was led to his, in my opinion, erroneous conclusion. The evidence of the earlier witnesses called by the Plaintiffs was veryskilfully framed so as to induce him to think that a developed industry existed

10 under the Croissant and Bretonniere Patent, and that the Plaintiffs' Patent wasa mere addition of a new substance to the list of those utilised in that industry.Mr. Ballantyne and Dr. Liebmann, in their evidence, spoke of the Plaintiffs'Patent being" a Patent of selection," and Mr. Ballantyne, obviously with thesame intention, repeatedly referred to the substances used in the Plaintiffs' Patent

15 as "the organic bodies," thus suggesting that they are bodies belonging to theCroissant and Bretonniere class, and therefore bodies to which the statementsin that Specification refer. This position had to be subsequently abandoned,and was more than once formally given up in the argument before us. Itwould have been fatal to the Plaintiffs to have fought the case on these lines,

20 because if Croissant and Bretonniere had told the world that a dye could bemade by the reaction of sulphur on the bodies mentioned in the Plaintiffs'Specification, the work of Monsieur Vidal would not have been invention, butmere verification. He would not have increased the knowledge of the world asto the bodies which would form dyes, but he would have verified the statements

25 of his predecessors, and determined that the dye produced was a black dye,neither of which services could come under the head of invention. Thelearned Judge, in my opinion, had his mind so permeated by this unsupportedrepresentation of the existence of a developed industry in sulphur dyes, thepractice of which was so notorious and well-known that it must be added to

DO the knowledge of chemists in general, that he did not realise the effect of thesubsequent admissions (which appear both in the evidence and in the argumentbefore us) that the manufacture was limited to a single dye, and to a singlefirm, and that the bodies in question were outside the class to which Croissantand Bretonniere referred, and that no knowledge existed in the public as to

35 their behaviour with sulphur, or alkaline sulphides.. .But there is a further and more important question of law upon which I am

not in accord with the learned Judge. He has treated it as a sufficient dischargeof the duty of a Patentee towards the public that he should have told them thata result could be obtained, and left them to find out by research and experiment

4:0 the practical way of obtaining it. His judgment, when closely examined, holdsthat it would have been sufficient if the Patentee had stated that sulphur wouldreact on these four bodies and produce black dyes, and that under such a Specification the Patentee could have claimed any reaction of sulphur, with or without sodium sulphide, on the four bodies in question, under the influence of

45 heat, that might subsequently be found to produce a black dye. Proportions,temperatures, and, to a certain extent, duration of process, are essential to pro..duce these dyes. This is proved by the Plaintiffs' witnesses as well as theDefendants'. For example, Sir James Dewar, on behalf of the Plaintiffs, saidthat giving the temperatures is all-important. It is evident that a chemist, how-

50 ever skilled, if he was only told that a black dye could be obtained by such areaction, would have to experiment without guidance as to proportion, or as tonecessary duration. He might fail in his experiment from not having bad thegood luck to hit upon the proper requirements of the process in any of these

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particulars. After such failure he must recommence his work, varying some orall of these matters, or he must conclude that the statements of the Patenteewere not justified, and abandon his attempts. Even if he obtained some degreeof success, he must carry out further research to see whether that is all that canbe obtained from the "invention when properly carried out, or whether he h~s 5not yet hit upon the proper mode of performing it. In contrast to the publIcwho are left thus to experiment, the Patentee (if he has really made the Invention) is in a position to carry out the invention with certainty, and without thecost and trouble of such researches. He knows already that which the publicmust search for, and find, before they can enjoy the result of the inventioJ.l. 10According to my view of English Patent Law this is a non-performance of hISduties to the public, and fatal to the validity of the Patent. It is quite immaterial to say that skilled chemists once put on the track would, after experimental research, find the requisite proportions and temperatures. The Patenteeis bound to give this knowledge to the public in return for the monopoly con- 15ferred upon him, and if he does not do so his Patent is invalid.

I am of opinion, therefore, that the Plaintiffs fail, and that the action must bedismissed, with costs here and below.

BUCKLEY L.J.-The judgment to which we have listened is the judgment ofof the Court, but as we are differing from Mr. Justice Parker I shall state very 20concisely, in words of my own, my reasons for thinking that this Appeal mustsucceed.

The Patentee states that he has found that sulphur reacts upon certaintrisubstituted derivatives of benzene, or napthalene, and, among others, upontwo amido-bodies, which he names. They are diamidophenols and diamido- 25naphthols. The latter are never mentioned again until I come to the Claim.The Claim (as regards this latter substance) is to the improvements in themanufacture of black dye-stuffs, consisting in causing sulphur to react, eitheralone or in the presence of sulphuret of sodium, upon diamidonaphthols, " as"hereinbefore described." The Patentee has "hereinbefore" given no des- 30cription of any process, and no instructions whatever as to how this substanceis to be treated. He has simply said that sulphur is to be caused to react uponit. There is no evidence that diamidonaphthol, however treated in reactionwith sulphur, taking any proportions, and adopting any temperature, and anytime, will produce black dye-stuff. On the contrary, the evidence is that it will 35not. Upon this .first ground alone, I think that the Patent is invalid.

Secondly, the Patentee does give directions as to how the other amidobody, viz., diamidophenol, is to be treated. If I am to assume-although Ithink I am not-that his instructions with reference to the one amino-body areintended to refer to the other also, then the result is that the diamidonaphthol 40treated in that way will not, at the temperature named, produce any dye-stuff.Again, it results that the Patent is invalid.

Thirdly, the Patentee, after giving directions as to the first amido-body, viz.,diamidophenol, which result in success, goes on to say that he may replace thatamido-body by the corresponding nitro-body, but says that in this case it is 45necessary to previously reduce the nitro-body by means of sulphuret of sodium,and to add sulphur to the reduced mass. He then proceeds to add, not that theamido-body may alternatively be replaced by the other nitro-body, but that thefirst nitro-body may be replaced by the second nitro-body. This is a singularway of expressing it, but it is the way which he chooses. If I replace the first 50nitro-body by the second nitro-body, he may mean me to understand that lines8 to 12 are applicable to this case, and, if so, there is included the direction thatit is necessary to previously reduce, &c. But the Patentee tells me specifically

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as regards this last case, not that it is necessary, but that it is to' useful " toreduce. The expression he uses is that" it will be also useful." In this context,it seems to me that the word" useful" is necessarily contrasted with the word"necessary.'" The Patentee offers the operator an option either to use, or not

5 to use, reduction. He says that it will be "useful" to use it. There is greatdifficulty, I agree, in the word" also." At the beginning of the Specificationthe Patentee has told me to react, and "also" might mean that I am not toreact only, but to reduce also. But this is not the context in which the wordoccurs, and I reject this meaning. Another possible suggestion is that he means:

10 "I have told you that it is necessary, but let me add for your information" that it will be also useful." This construction I reject as bearing no meaning.

. It is idle to say that it is useful to do a necessary act. I must read the wordsas if they were: "Let me add that in this case it will be useful." Thus read,the words contain a direction that the reduction mayor may not be used as the

15 operator prefers. The evidence is that reduction is necessary for success,nay more, is, in the opinion of the Plaintiffs' witnesses, necessary, if theexperimenter wishes to come away with his life. Again it results that thePatent is invalid.

Fourthly, all parties are agreed that the Claim cannot be read distributively.20 It must be S'O read as to include a claim for the sulphur reacting alone upon

dinitronaphthols. The evidence is that such a reduction will result, not in·producing a black dye-stuff, but in producing an explosion.

Upon all these grounds, therefore, I hold the Patent to be invalid. Butfurther, and assuming the Patent to be valid, there is, in my opinion, no

25 infringement. The Defendants' operation is to use dinitrophenol as the SUbstance and to put in sulphur and sulphide together, and to heat with a 'refluxcondenser to 1060

; whereas the Patentee's directions with regard to this substance are, not to put the sulphur and sulphide in together, but to heat themixture of sulphide and dinitrophenol without the sulphur to 140°, and, after

30 reduction, to add sulphur. The process is essentially different in that theDefendants put the sulphur and sulphide in at the same time, which thePatentee does not, and that they produce their dye at 106°, when the Patenteedoes not put the sulphur in at all, and therefore cannot commence the production of dye-stuff until after 140°. Further, the evidence is quite plain that the

35 Defendants' process results in a substance which is, in Professor Green's language, absolutely distinct, and an entirely different product, as to which Dr.Silberrad says it is chernically qnite different, and as to which Dr. Morgan saysthat analysis shows an essential difference. Near the conclusion of the evidencethe learned Judge accepted this view, and said that the evidence to that effect

4:0 was not really cross-examined to, a proposition which he repeated. TheDefendants, therefore, do not adopt any process indicated by the Patentee, andthey obtain a different product. These considerations lead me to the conclusionthat there is no infringement.

Upon a review, and careful reading, of the learned Judge's judgment, it seems45 to me that his conclusions can only be reached upon the footing that thisPatent

could be supported if it contained only the first three lines and the Claim.That is, I think, really the proposition which the learned Judge affirms. Mr.Ballantyne's view is that the invention consists in the selection of the namedtrisubstituted bodies. Dr. Liebmann takes the same view. "Selection," he

50 says," is the invention, and the only invention." The learned. Judge, I think,adopts this view, and accordingly holds that there is infringement, notwith,standing the fact that the Defendants' operation results in "an undoubted"difference in the dye-stuffs produced." .In my opinion, the Patent cannot be

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supported upon any such footing. If that be the Patent, the Patentee is claimingthe production of black dye-stuffs from the four named bodies by reaction withsulphur, be the process adopted any process whatever to which general knowledgeextended at the date of the Patent. There is no evidence that every suchprocess will, and there is evidence that it will not, produce black dye-stuffs in 5the case of these bodies.

Upon both validity and infringement, I am of opinion that the appeal succeeds,and the action fails.

The appeal was allowed, with costs on the higher scale, but with regard tothe costs of the Particulars of Objections it was directed that, as the Counsel who 10had appeared for the Respondents at the hearing of the appeal were not present,the case should be mentioned again.

On the 9th of February 1912, Walter K.C. asked for costs on the higher scale,and Certificates in both actions as to the Particulars of Objections relating toutility, sufficiency, novelty, and subject-matter. 15

Astbury I{.C. for the Respondents.-In the Court below the Respondentsasked that the issues in the two actions should be tried separately. On some ofthe issues the 'Appellants have failed here. The Particulars of Objections weredifferent in the two actions. The Respondents suggested that the Levinsteincase should be tried first. They were entitled to have the cases tried separately, 20but were willing to make some arrangement. The Appellants said that the issueswere the same. The learned Judge said that he would decide the issues in thetwo actions separately. The Respondents never consented to the Defence in theone action being used in the other. If they wished to appeal in the Levinsteinaction, and not in the other, they never consented to the appeal in one action 25being decided on the evidence in the other action. The Appellants in theLevinstein action have no right to rely on any evidence not relevant to theirPleadings. Taking the Particulars in that action, the Appellants are entitled tothat as to novelty, but not to that as to subject-matter. As to the Objectionthat the invention is not useful, there has been a distinct belief among Counsel 30practising in these cases that it means that the process is not workable. [FLETCHERMOULTON L.J.-Simpson v, Holliday (L.R. 1 H ..L. 315) is an example.] Thatwas insufficiency. [FLETCHER MOULTON L.J.-No, there was no way of makingthe dye in the cold.] Then, whenever there is the Objection of non-utility, it willbe necessary to have further Particulars-the Objection of insufficiency will 35cease. It is admitted that the diamidophenol and dinitrophenol, treated asdescribed in the Specification, do make useful dyes. [FLETCHER ~{OULTON L.J.Simpson v.. Holliday shows that the invention is not useful if one part of it isnot useful.] It will be necessary to observe that. [FLETCHER MOULTON L.J.The Particulars as to novelty are given under statutory provision; there is no 40corresponding provision as to utility. One never used to ask for Particulars ofutility.] The Appellants in the Levinstein action failed as to Particulars 4 and5. They have nat pleaded the ground f.~ insufficiency, on which this Court hasheld the Patent invalid. Particular 5 (a) was given up. The costs are important inrelation to the experiments the other side made with sodium sulphide in crystals : 45are they to have the costs of experiments which they knew would fail? Particular5 (d) of the Objections has been proved to be wrong. There is not a Particular-except as to utility-on which the Appellants have succeeded. They wroteamplifying their Particulars but never applied for leave to amend. As to paragraph 3 of the Defence in the action against Read Holliday &; Sons, it has been 50decided that all infringing dyes are within the Section. As to their Particulars,

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the Appellants cannot have the costs of (1), and ought not to have those of (2).The Respondents are entitled to the costs of (4) in the Levinstein action, theAppellants having given up most of their points on it. They said that the process would not give a black. They meant that it would give a brown. They

5 ought not to get the costs on that point under the Particular of inutility. Therewere a great number of points raised on which they have totally failed. If theAppellants wish to alter their Particulars the rule in Baird v. J.l1.oule's PatentEarth Closet Company (L.R. 17 C.D.139n) applies. It was explicitly stated thatthe two cases should be tried together only if the evidence was kept separate.

10 The costs will, of course, be apportioned.Walter K.C.-A large number of irrelevant documents were brought in on

taxation that had not been disclosed, although an Order for discovery had beenmade. The Respondents are not entitled to any costs as to the Particular ofmanufacture abroad. [Astbury K.C,-It has been decided under Section 27 of

15 the Patents Act of 1907 that an application for discovery of documents will notbe allowed until the other side has made out a primd facie case, and the Appellants have not done that, but have abandoned their allegation. ] The documentswere not scheduled nor produced. [(Jol~fax.-Until a primd facie case hasbeen made out they are not relevant.] It is sufficient if the Particulars are

20 reasonable and proper. The Appellants ask for the costs of the Particulars ofSUbject-matter, utility and sufficiency, only so far as they have been raised onthe appeal. Also the costs of the Shorthand Note. [Astbury K.C.-Yes.]

FLETCHER MOULTON L.J.-In this case, I think the proper order for costsis, that, on all the issues that are decided in favour of the Defendants, the

25 Defendants should receive their costs, and therefore that such a Certificateshould be given, that the Objections were reasonable and proper, as will benecessary to effect this.

The case is a peculiar one. As I indicated in my judgment, I think thatthe Particulars under the head of insufficiency in the Pleadings were very

30 imperfect and meagre; but, on the other hand, the main objection was wantof utility, that is to say, that the processes described in the Specification wouldnot work so as to produce the specified result.

Shortly before the trial, the main witness of the Plaintiffs, Mr. Ballantyne,was examined, and he opened a case with regard to prior knowledge which he

35 sought to use in favour of the Patentee, which must have taken the other sidevery much by surprise. When the trial came on, that evidence of Mr. Ballantuneunquestionably shaped the course of the trial to a very great extent, and made itvery different from anything that the Defendants could have foreseen.

It is quite true, that, at the beginning, Mr. Astbury tried to keep a distinction40 between the Pleadings in the two cases that were being tried together; but one

cannot read even a fraction of the Shorthand Notes without seeing that, inevitably, the fight between the Plaintiffs and the Defendants became a fight allalong the line. There were points, and even important points, at the trial,which, it might be argued, did not strictly come within the Particulars of

45 Objections; but, unquestionably, with the permission of the Judge, and by theaction of both Plaintiffs and Defendants, these were gone into at full length.The Plaintiffs even claimed the right to recall one or more witnesses on pointswhich would come under the category that I have described, and that right wasconceded to them. Under these circumstances we are bound to decide on the

50 Talidity of the Patent, and on the infringement, in view of all the points raisedas to which evidence was adduced, and we must take it that the learned Judgepermitted evidence to be given upon all those points. There was no surprise.So far from there being any surprise, each point was taken up at once by the

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other side, and dealt with both in evidence ana cross-examination. It would bea lamentable failure of justice, after a trial of that kind, where both partiestreated all the points as being open for the Court, cross-examining, and callingevidence as to them and thus lengthening the trial, if we were now not to takeit that these were properly taken into consideration by the Judge. 5

In my opinion, therefore, on all the points which we have decided in favourof the Defendants, they are entitled to their" costs. They were points fairlyfought out between the parties in the Court below upon which they havesucc-eeded.

With regard to the special defence, based on the ground of the manufacture 10having been mainly ahroad, it is clear that Mr. Walter's clients are not entitledto those costs, for they abandoned that defence. On the other hand, I do notthink there is any reason why we should give costs with regard to it to theother side. The Defendants claim that the Plaintiffs did not give, on discovery,documents relating to that matter, although there was an Order made for such 15discovery. We are not bound to give any costs to an unsuccessful plaintiff;although sometimes, when he has succeeded in completely repelling one headof attack, we do it. But the costs are in our discretion. I do not think thatthis is a case where we ought to exercise our discretion by giving to thePlaintiffs any costs of that issue, but of course the Defendants will not get any 20costs of that issue.

COZENS-HARDY M.R.-The Order ought to be dated to-day. It is not drawnup, is it ?

Walter K.C.-No. I understand that the costs of the prints of the evidencefor the use of the Court are to be allowed ? 25

COZENS-HARDY M._R.~Yes.Astbury K.C.-Of course; there is no question about that.

Before THE COMPTROLLER-GENERAL.

February 8th, 1912.

IN THE MATTER OF AN ApPLICATION FOR THE REVOCATION OF 30SEREX'S P A'l'ENT.

Patent.-Application under Section 26 of the Patents and Designs Act 1907

for revocation.-Patents and Designs Act 1907, Section 11 (1) (c).-ConventionApplication.

An Application uias made under Section 26 of the Patents and Designs Act 351907 by A. to revoke a Patent/or " Improuements relating to valves/or internal"combustion engines" (No. 27,295 01 1910) granted to S. on an AJ)j7l~Fation

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