&c., filed by the Plt, or any part or parts of the same invention, and from using and permitting to be used in the manufacture of iron and steel forgings any appliances or means, being the same as the appliances or means now or lately used by the Defts as mentioned in the said particulars of breaches, or which, as to any part or parts thereof, are arranged or constructed according to the said invention, or any part thereof, or differ therefrom only colourably, and by the substitution of mere mechanical equivalents.-Siddell v. Vickers, Kekewich, J., 21 Dec. 1887, B. 2863, P.; 39 Ch. Div. 93; 15 App. Ca. 496.

7. Account of Goods manufactured and Profits.

UPON motion &c., by way of appeal &c., by counsel for the Defts, and upon hearing &c., for the Plts, Let the judgment, dated &c., be varied by substituting for the account thereby directed the following account, viz., an account of all iron and steel forgings manufactured by the Defts by the use of the Plt's invention as described in figure 2 of the specification in the said judgment mentioned, and also of the profits made by the Defts by reason of such use, otherwise affirm judgment.— Siddell v. Vickers, C. A., 18 May, 1888, B. 830; 5 Rep. Pat. Cas. 434.

8. Interim Injunction against Threats of Legal Proceedings. UPON motion &c., by counsel for the Plts, and upon hearing &c., for Defts, Let the Defts A., B., their officers, servants, and agents, be restrained until judgment in this action, or further order, from threatening the Plts, their customers, or any other person or persons, with legal proceedings or liability in respect of an alleged infringement of the letters patent, No. &c.—Kensington and Knightsbridge Electric, &c. Co., Limtd. v. The Lane Fox Electrical Co., Limtd., Stirling, J., 24 April, 1891, A. 613; (1891) 2 Ch. 573.

9. Perpetual Injunction against Threats of Legal Proceedings. THIS action coming on for trial &c., in the presence of counsel for the Plts and Defts, Let the Defts A. and B., their servants and agents, be perpetually restrained from making or continuing threats of legal proceedings or liability by circulars, advertisements, or otherwise, in respect of the alleged infringement by the Plts of the several letters. patent, No. &c.-Driffield, &c. Co. v. Waterloo, &c. Co., Bacon, V.-C., 10 Feb. 1886, A. 194; 31 Ch. D. 638.

NOTES.

INFRINGEMENT-RIGHT TO INJUNCTION.

An interlocutory injunction will be granted where the patent is old, and there has been long and undisturbed enjoyment, and evidence of actual public user; or where its validity has been established elsewhere, and the Court sees no reason to doubt the result; or where the conduct of the Deft has been such that as against him there is no reason to doubt the validity of

the patent: Dudgeon v. Thomson, 22 W. R. 464; Plimpton v. Malcolmson, 20 Eq. 37.

In support of these propositions, see also Hill v. Thompson, 3 Mer. 622; Bacon v. Jones, Collard v. Allison, 4 My. & Cr. 433, 487; Stevens v. Keating, 2 Ph. 335; Bridson v. M'Alpine, 8 Beav. 229; Bridson v. Benecke, 12 Beav. 1; Newall v. Wilson, 2 D. M. & G. 282; Plimpton v. Spiller, 4 Ch. D. 286.

Length of enjoyment is material: Davenport v. Richard, 3 L. T. N.S. 503; Betts v. Menzies, 3 Jur. N.S. 357; and although the mere recency of a patent does not prevent an interlocutory or even an ex parte injunction (Gardner v. Broadbent, 2 Jur. N.S. 1041; Clark v. Fergusson, 1 Giff. 184), there must, in a case of a patent of no great age, be at least a fair primâ facie case of validity: Renard v. Levinstein, 10 L. T. N.S. 177.

Actual public user of the patent must also be shown: Plimpton v. Malcolmson, 20 Eq. 37.

As a matter of pleading, the absence of an express averment of the novelty of the invention did not prevent an injunction from being granted: Amory v. Brown, 8 Eq. 663.

But the legal title of Plt, the novelty of the invention, and the validity of the patent, must be clearly and accurately set forth in the affidavits: Whitton v. Jennings, 1 Dr. & Sm. 110; Gardner v. Broadbent, 2 Jur. N.S. 1041; Sturz v. De La Rue, 5 Russ. 329; and there must also be clear evidence of the alleged infringement: Hill v. Thompson, 3 Mer. 624; Mayer v. Spence, 1 J. & H. 87; Renard v. Levinstein, 10 L. T. N.S. 177; Betts v. Willmott, 6 Ch. 239.

An injunction may, however, be obtained to restrain a threatened, as distinguished from an actual, infringement of a patent: Frearson v. Loe, 9 Ch. D. 48.

Where a patent is obtained for a new process for arriving at a known result, it is no infringement to arrive at the same result by a different process, and the patentee can only claim to work out his process by means of materials known at the date of the patent: Badische, &c. Fabrik v. Levinstein, 24 Ch. D. 156; but see S. C., 29 Ch. Div. 366; 12 App. Cas. 710.

It is not a correct test of utility that an invented product at the time of the patent was likely to be in commercial demand, or capable of profitable manufacture: S. C., 12 App. Cas. 710.

The sale of articles to be used in producing a patented article (the elements of which afterwards enter into the combination for which the patent has been obtained) will not be restrained as an infringement: Townsend v. Haworth, 12 Ch. D. 831, n.; and see Sykes v. Howarth, Ib. 826.

The importation and sale in this country of articles made abroad according to a process patented here will be restrained by injunction: Elmslie v. Boursier, 9 Eq. 217; Von Heyden v. Neustadt, 14 Ch. D. 230; and see Wright v. Hitchcock, L. R. 5 Ex. 37; Walton v. Lavater, 8 C. B. N.S. 162; Betts v. Willmott, 6 Ch. 239. As also the user in this country, by sending to an English port for shipment to foreign customers, and not for consumption in England, bottles covered with capsules made abroad in imitation of the patented process: Neilson v. Betts, L. R. 5 H. L. 1; 3 Ch. 429.

To the same effect, see Caldwell v. Vanvlissengen, 9 Ha. 415. User of a patented article for purposes of experiment by, and instruction of, pupils is an infringement: United Telephone Co. v. Sharples, 29 Ch. D. 164; and an injunction was granted against the master of a ship exclusively fitted up with pumps which were an infringement of a patent: Adair v. Young, 12 Ch. Div. 13; so, also, the mere possession of an infringing machine, dismantled by removing the infringing elements, which, however, were kept stored, was held to be an infringement: United Telephone Co. v. Globe Telegraph Co., 26 Ch. D. 766; but though the importation from abroad of a foreign infringement may be restrained, the mere acting as Custom House agents for persons importing the foreign infringement in order to export it is not an infringement: Nobel's Explosive Co. v. Jones, Scott & Co., 17 Ch. Div. 721; 8 App. Cas. 1.

Where the experimental use of infringing machines had been abandoned three years before action brought, and no intention to resume the user was shown, an injunction was refused: Proctor v. Bayley, 59 L. J. Ch. 12.

And as to the distinction between merely selling an article to others to be used for the purpose of infringing a patent, and employing a person as the

agent of the seller to use the article, and that the one is not, and the other may be, an infringement, see Sykes v. Howarth, 12 Ch. D. 826.

The sale of goods piratically made during the term may be restrained after its expiration: Crossley v. Beverley, 1 R. & M. 166, n.

The right of the Crown to make use of patented inventions does not enable private contractors for the sale to the Crown for the public service of goods made under the patent, to use the patented process without licence or payment of royalties, or protect them against claims in respect of the infringement of the patent: Dixon v. The London Small Arms Co., 1 App. Ca. 632 (reversing 1. B. D. 384, and restoring L. R. 10 Q. B. 130); and see Feather v. Reg., 6 B. & S. 257.

COUNTY COURT JURISDICTION.

The right or privilege granted by letters patent is a "franchise" within sect. 56 of the County Courts Act, 1888, and an injunction to restrain the infringement of a patent is therefore excluded from the jurisdiction of the County Court by the Patents, &c. Act, 1883: Reg. v. Judge of Halifax County Court, (1891) 2 Q. B. 263.

PARTIES.

An injunction to restrain infringement may be obtained by an exclusive licensee of a patent: Renard v. Levinstein, 2 H. & M. 628; but an exclusive licence, limited to a specified district, not being equivalent to a grant of the whole letters patent, does not entitle the licensee to sue in his own name without joining the patentee: Heap v. Hartley, 42 Ch. D. 461. A licence to manufacture abroad under a foreign patent does not entitle the licensee to sell in this country in violation of the licensor's English patent: Societe, &c. de Glaces v. Tilghmann's Sand Blast Co., 25 Ch. Div. 1.

One of several co-owners of a patent can sue for an injunction and account: Sheehan v. G. E. Ry. Co., 16 Ch. D. 59.

But a mere agent to introduce, sell, and grant licences for the use of a foreign patent in this country is not entitled to take proceedings to restrain infringement and obtain damages: Adams v. North British Ry., 29 L. T. N.S. 367.

The legal pers. represve of an inventor who has died before taking out a patent is not entitled to patent the invention, nor to sue in respect of any infringement thereof: Dalton v. Saville St. Foundry Co., 39 L. T. N.S. 97.

NOVELTY-PUBLICATION.

Prior user of a patent within the colonies is not user "within the realm" sufficient to invalidate the title of a patentee as true and first inventor: Rolls v. Isaacs, 19 Ch. D. 268.

He who imports a novel invention into this country is true and first inventor within 21 Jac. 1, c. 3; Re Avery's Patent, 36 Ch. Div. 307; Plimpton v. Malcolmson, 3 Ch. D. 531; Plimpton v. Spiller, 6 Ch. Div. 412; Nickels v. Ross, 8 C. B. 679, 723; and a patent for a communication from abroad will not be invalidated for want of novelty by prior publication; and the process cannot be infringed, unless there has been actual publication of the information in a book publicly circulated in this country. The sending over to the English Patent Office Library a single copy of a foreign scientific work, and of a book of illustrations describing and containing a drawing of the invention afterwards here patented, was held not to make the foreign invention "part of the public possession, and part of the public knowledge," so as to amount to prior publication: Plimpton v. Malcolmson, 3 Ch. D. 531; Plimpton v. Spiller, 6 Ch. Div. 412; nor the simple fact that a treatise containing a description of the invention was to be found in the inner library of the British Museum: Otto v. Steel, 31 Ch. D. 241; and see Stead v. Williams, Stead v. Anderson, 2 Web. Pat. Ca. 126, 147; affirmed 6 Ch. Div. 412; Re Lamenaude's Patent, Ib. 169; Househill Co. v. Neilson, 1 Web. Pat. Ca. 673; secus, where the specification in a foreign language is to be found in a free public library, such as that of the Patent Office, unless it is proved that the existence of it was not known: Harris v. Rothwell, 35 Ch. Div. 416, 435; or where the foreign work

had been sent over to a bookseller in this country for the purpose of being sold: Lang v. Gisborne, 31 Beav. 135 (and see observations of M. R. on this case, 3 Ch. D. 561, 562); or a witness had seen in a German journal in a public library a description of an invention which he, though ignorant of German, could make out from plates and technical words: United Telephone Co. v. Harrison, 21 Ch. D. 720; and a report to a public office by referees specially appointed under Act of Parliament is public property: Patterson v. Gas Light and Coke Co., 3 App. Cas. 239; and where there is such publication the patent is avoided, though it is not shown that the invention has been put in use: S. C. But the patentee of an invention communicated from abroad is bound to tell the public all he knows; while, on the other hand, insufficiency of specification will avoid the patent: Wegmann v. Corcoran, 13 Ch. Div. 65.

PATENT FOR COMBINATION.

A new combination, application, or arrangement of materials or principles, in themselves old, so as to produce a new result, may be the subject of a valid patent: Cannington v. Nuttall, L. R. 5 H. L. 205; Murray v. Clayton, 7 Ch. 577; Forwell v. Bostock, 12 W. R. 725; Lister v. Leather, 8 E. & B. 1004, 1031; Wright v. Hitchcock, L. R. 5 Ex. 37: Harrison v. Anderston, Foundry Co., 1 App. Ca. 574; and see Otto v. Linford, 46 L. T. N.S. 35. Secus, a combination of two prior inventions which any person of ordinary knowledge would be able to effect by only placing the two inventions side by side: Saxby v. Gloucester Waggon Co., 7 Q. B. D. 305. According to the latest authorities, a patent for a combination of several improvements or materials will not be infringed by a new combination of some only of those improvements or materials: Clark v. Adie, 10 Ch. 667; 2 App. Ca. 315; Murray v. Clayton, 10 Ch. 675, n.; and see Dudgeon v. Thomson, 3 App. Ca. 34; or by the use of any particular part which is not novel: Parkes v. Stevens, 5 Ch. 36; 8 Eq. 358; and see Thorn v. Worthing Rink Co., 6 Ch. D. 415; but may be by a combination of mechanical equivalents with additions and omissions, if the substance of the patented invention is taken: Proctor v. Bennis, 36 Ch. Div. 740. Where a combination is claimed it is not essential that the specification should show how far novelty is claimed for particular parts: S. C.; and see Ehrlich v. Ihlee, W. N. (88) 50; Morgan v. Windover, Ŵ. N. (87) 143; W. N. (88) 80.

SUFFICIENCY OF SPECIFICATION.

A specification is insufficient if a skilled mechanic would not, without performing a series of experiments, be able to construct the patented machine from the description: Wegmann v. Corcoran, 13 Ch. Div. 65; or if one of the materials to be used is described by a generic term comprising others, most of which would be unsuitable: S. C.; and see Badische, &c. v. Levinstein, 29 Ch. Div. 366; 12 App. Cas. 710; or if the manner in which the patented process is to be performed is not sufficiently described: Bailey v. Roberton, 3 App. Cas. 1055; or if it fails to point out the distinction between the patented invention and one previously patented, although under a patent unknown to the Plt: Eades v. Starbruck Waggon Co., W. N. (81) 160. It is sufficient if the complete specification describes something which, though not specifically referred to, is within the general description contained in the provisional specification: Siddell v. Vickers, 39 Ch. Div. 92; and see United Telephone Co. v. Harrison, 21 Ch. D. 720; and a patent for colouring matters for dyeing and printing by a chemical process was upheld, notwithstanding a failure to discriminate between isomeric substances, only one of which would produce a useful result: Badische, &c. Fabrik v. Levenstein, 12 App. Cas. 710; but the rule that the patentee must not withhold information does not entitle him to put into his final specification an invention of which he was ignorant when he filed his provisional specification: Edison and Swan Electric Light Co. v. Woodhouse, 32 Ch. D. 520; and as to the effect of want of conformity between provisional and final specification, see Bailey v. Roberton, sup.; Moseley v. Victoria Rubber Co., 57 L. T. N.S. 142; Woodward v. Sansum, 56 L. T. N.S. 347; Patents, &c. Act, 1883, s. 9; and inf. Chap. LII., "PATENTS."

THREATS AGAINST ALLEGED INFRINGERS.

Formerly, a patentee was not liable in damages for issuing circulars threatening legal proceedings against infringers and purchasers from them, which he did not follow up by action for infringement, provided he issued the circulars bona fide in assertion of his supposed legal rights; though he might have been liable to be restrained from continuing to issue the circulars, if, knowing that his patent was invalid, or that it had not been infringed, he continued to do so: Halsey v. Brotherhood, 15 Ch. D. 514; and see Axmann v. Lund, 18 Eq. 330; Rollins v. Hincks, 13 Eq. 355 (there considered); and generally the Plt in an action to restrain threats was bound to prove that the statements complained of were false, and made malá fide: Burnett v. Tak, 45 L. T. N.S. 743; and see Wren v. Weild, L. R. 4 Q. B. 730; Household v. Fairburn, 51 L. T. N.S. 498.

Now by the Patents, Designs and Trade Marks Act, 1883 (46 & 47 V. c. 57), s. 32, "where any person claiming to be the patentee of an invention, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged manufacture, use, sale, or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats; provided that this section shall not apply if the person making such threats with due diligence commences and prosecutes an action for infringement of his patent."

In order to bring a case within the section, the threat must be in reference to an act done by the person threatened; not a mere general warning bond fide given against piracy: Challender v. Royle, 36 Ch. Div. 425 (per Bowen, L. J.). A letter saying that proceedings will be instituted has been held to be a threat: Driffield v. E. Riding Linseed Cake Co., 31 Ch. D. 638; Combined Weighing, &c. Co. v. Automatic Weighing, &c. Co., 42 Ch. D. 665; and see Barrett v. Day, 43 Ch. D. 435, 444; Day v. Foster, 7 R. P. C. 54. The person applying for an injunction ought to make out a prima facie case, that the matter to which the threats related was not in fact an infringement: Challender v. Royle, sup.; Barney v. United Telephone Co., 28 Ch. D. 394; but as to an interim injunction, see Walker v. Clarke, 56 L. J. Ch. 239. The Deft is not bound to assert his rights by defence or counter-claim, but is entitled to bring a separate action for infringement; but if he does so, arrangements ought to be made for a stay of the one action to abide the result of the trial in the other: Combined Weighing, &c. Co. v. Automatic Weighing, &c. Co., sup.

If in opposition to a motion for injunction a case of alleged infringement is raised, an injunction will not be granted, although the Deft declines to take legal proceedings: Barney v. United Telephone Co., sup.

That an interim injunction will not be granted, unless some right is shown by the Plt, however much the balance of convenience may be in favour of granting it, see Societe, &c. de Glaces v. Tilghmann's Sand Blast Co., sup.; but the balance of convenience and inconvenience will not be disregarded; Walker v. Clarke, 56 L. J. Ch. 239.

In an action under the section the validity of the Deft's patent may be called in question: Challender v. Royle, sup.; and see Kurtz v. Spence, 36 Ch. Div. 770.

Persons who are simply entitled in equity to an assignment of a patent upon certain terms are not persons having "legal rights" within the meaning of the section: Kensington and Knightsbridge Electric Co. v. Lane Fox Electrical Co., (1891) 2 Ch. 573.

The proviso has been held to be satisfied if the action for infringement is honestly brought with reasonable diligence against any of the persons who have been threatened: Challender v. Royle, sup.; if the infringement is of the same character as that in respect of which the threats were made: Combined Weighing, &c. Co. v. Automatic Weighing, &c. Co., sup. ; but the proviso does not apply where the threats are made by persons entitled in equity only, and the action is brought by the legal owner: Kensington, &c. Co. v. Lane Fox, &c. Co., sup.