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, 3 App. Ca. 1055; Moseley v. Victoria Rubber Co., 57 L. T. 142; Woodward v. Sansum, 56 L. T. 347; Lane-Fox v. Kensington, &c. Electric Light Co., (1892) 3 Ch. 424, C. A.; 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 threaten ing 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 malâ fide: Burnett v. Tak, 45 L. T. 743; Incandescent Gas Light Co. v. New Incandescent Gas Light Co., 76 L. T. 47; and see W ́ren v. Weild, L. R. 4 Q. B. 730; Household v. Fairburn, 51 L. T.

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." The words "or otherwise are not to be construed as ejusdem generis with circulars and advertisements: Skinner v. Shew, (1893) 1 Ch. 413, C. A.

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. D. 425, C. A. (per Bowen, L. J.); Ungar v. Sugg, 8 Rep. Pat. Ca. 385; 9 Ib. 113; and as to the meaning of the expression general warning, see Johnson v. Edge, (1892) 2 Ch. 1, 9, 13, C. A. 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; whether addressed to the infringer himself, or to a third person, and though written in answer to inquiries: Skinner v. Perry, 9 Rep. Pat. Cas. 406; 10 Ib. 1; Skinner v. Shew, (1893) 1 Ch. 413, C. A.; and see Barrett v. Day, 43 Ch. D. 435, 444; Day v. Foster, 7 R. P. C. 54; or a printed notice to the effect that the patentee's rights were being infringed, and that all parties were warned not to infringe: Johnson v. Edge, (1892) 2 Ch. 1, C. A.; and so a letter written to third persons who had given an order to the Plt, stating that the matter would lead to a great deal of difficulty and unpleasantness, and that they must not be surprised if the Deft co. applied for an injunction against the Plt: Douglass v. Pintsch's Patent Lighting Co., (1897) 1 Ch. 176.

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. A letter written by the solicitors of a co. to the Plt stating that the co. declined to continue negotiations for a contract with him as to the use of his camera because of the Deft's threats, was held to be admissible to show that the negotiations were discontinued because of the Deft's threats: Skinner & Co.

v. Shew & Co., (1894) 2 Ch. 581. The proper measure of damages in such a case is the profit which the Plt would have derived from the proposed contract if it had been carried out: S. C. 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., 42 Ch. D. 665.

The fact that the Deft acted bona fide, or on a privileged occasion, is no defence: Skinner v. Shew, sup. ; and see Johnson v. Edge, (1892) 2 Ch. 1, 6, C. A.

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 Société, &c. de Glaces v. Tilghmann's Sand Blast Co., 25 Ch. D. 1, C. A.; 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. D. 770, C. A.

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; but exclusive licensees with option of purchase who have threatened legal proceedings are entitled to protection under the proviso in sect. 32: Incandescent Gaslight Co. v. New Incandescent Light Co., 76 L. T. 47.

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. ; and see Dunlop Pneumatic Tyre Co. v. New Seddon, &c. Co. Ld., 76 L. T. 405, C. A.; 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.

An action against an exclusive licensee of the Plt's patent, as well as of a subsequent patent belonging to another patentee, for a declaration that articles sold under that patent were an infringement of the Plt's, and to restrain the sale without payment of royalties to the Plt, is an action for infringement within the section: Barrett v. Day, 43 Ch. D. 435.

If the proviso takes effect the case is relegated to the old law, and the statutory right of action is taken away: Challender v. Royle, sup. ; Combined Weighing, &c. Co. v. Automatic Weighing, &c. Co., sup., in which case the threats action was, under the circumstances, dismissed without costs; Incandescent Gas Light Co. v. New Incandescent Gas Light Co., 76 L. T. 47.

As to what is "due diligence" within the meaning of the proviso, see Combined Weighing, &c. Co. v. Automatic Weighing, &c. Co., sup.; Barrett v. Day, sup. ; Colley v. Hart, 44 Ch. D. 179; Johnson v. Edge, (1892) 2 Ch. 1, C. A. In order to satisfy the proviso it is not necessary that the infringement action should be prosecuted up to judgment; the protection will not be lost by reason of the action being discontinued on its being discovered that there is no cause of action: Colley v. Hart, sup. The Deft in the threats action is entitled to wait for a reasonable time for the delivery of the statement of claim with a view to raising the question of infringement inexpensively by means of a counter-claim: Ib.

In a cross action for infringement, leave to amend specification by way of disclaimer may be granted, notwithstanding that the threats action is not concluded: Re Hall, 21 Q. B. D. 137. As to evidence sufficient to justify committal for breach of order restraining issue of threats, see Dick v. Haslam, 8 Rep. Pat. Cas. 196.

10. Order for Trial of Issues-Particulars of Breaches and Objections

-Inspection.

LET the following questions of fact be tried on the — day of —, before &c., by a special jury of the county of M., that is to say, 1. Whether the invention in the pleadings mentioned was the working or making of any manner of new manufacture, which others at the time of making the letters patent of the day of in the pleadings mentioned did not use (within this realm). 2. Whether the grantees of the said letters patent were the true and first inventors of the said new manufacture. 3. Whether the specification particularly described and ascertained the nature of the invention for which the said letters patent were granted, and the manner in which the same is to be per. formed. 4. Whether the said Deft J. has infringed the said letters patent-And Let the Plts, on or before &c., deliver to the solr of the Deft J. particulars in writing of the breaches complained of; And Let the Deft J. on or before the day of - (or within ten days after the receipt of such particulars) deliver to the Plt's solr particulars in writing of any objections (to the validity of the said letters patent), on which he means to rely at the trial hereby directed; And Let the Plts and the Deft J. by their solrs and scientific witnesses be at liberty from time to time, upon giving three days' notice of their intention so to do, mutually to inspect the machines heretofore used by the Plts and the said Deft in the manufacture of chenille; And Let the same machines be put to work upon such inspection; And Let the Plts and the said Deft, by their said witnesses and solrs, be at liberty to take samples of the chenille made or to be made upon the said machines, and be at liberty upon the like notice to inspect the machines, or exhibits marked Y and Z 1, produced by the said Deft, and referred to as exhibits to the affidavits of &c., and to put the last-mentioned machines to work, and to take samples of the product thereof.-Davenport v. Jepson, V.-C. W., 20 Dec. 1862, A. 2399; 1 N. R. 307.

For same form of issues, see Hincks v. Safety Lighting Co., M. R., 24 Feb. 1876, A. 444.

In Simpson v. Holliday, V.-C. W., 28 March, 1863, B. 2487, the words "within this realm were inserted in the first issue as above.

For like order, see Morgan v. Fuller, V.-C. W., 18 Jan. 1866, B. 928.
For forms of application for inspection, see D. C. F. 949 et seq.

11. Another Form of Issues-where Part disclaimed.

1. WHETHER the invention, the subject of the letters patent of the

- day of (as altered by disclaimer or memorandum of alteration), was or was not at the date of the said letters patent new as to the public use thereof by others within this realm. 2. Whether the Plt was the true and first inventor of the said invention. 3. Whether the specification of the said letters patent in the pleadings mentioned (as altered by the disclaimer or memorandum of alteration) does or does not particularly describe the nature of the said invention, and in what

manner the same is to be performed, pursuant to the proviso in that behalf contained in the said letters patent. 4. Whether the Defts have or have not infringed the said letters patent in or by any or either and which of the apparatus manufactured by them as in their answer filed in this cause mentioned, or in any other manner.-Cunningham v. Colling, V.-C. W., 13 June, 1864, A. 1240. (In this case the issues were inserted in a schedule to the order.)

12. Another Form.

1. WHETHER J. and F., the grantees of the letters patent in the pleadings mentioned, and numbered &c., were the first and true inventors of the alleged invention or improvements for which the said letters patent were granted.

2. Whether the undisclaimed portions of the said alleged invention were used in the United Kingdom at the date of the said letters patent. 3. Whether the Defts, or any or either and which of them, have infringed the said letters patent.-Batley v. Kynock, V.-C. B., 31 July, 1874, A. 2680.

In Simpson v. Holliday, sup. p. 648, and Renard v. Levinstein, V.-C. W., 1864 (see 11 L. T. 766), this additional issue was directed :"Whether the said invention was, at the date of the said letters patent, and whether the same is now, of public utility.'

And in Morgan v. Fuller, V.-C. W., 18 Jan. 1866, B. 100, the terms were "whether the alleged invention was a useful invention."

And as to the form of issues in a patent suit, see Spencer v. Jack, 3 D. J. & S. 346; Curtis v. Platt, 11 L. T. 250; 35 L. J. Ch. 852; L. R. 1 H. L. 337; Morgan v. Fuller, 2 Eq. 296 (where Deft was refused leave to add a totally new issue of fact not raised by his answer and particulars, and inspection, and putting the machinery in motion, were directed): S. C., sup.; Penn v. Bibby, V.-C. W., 20 July, 1865; S. C., on motion for a new trial, 2 Ch. 128; Needham v. Oxley, 8 L. T. 532; 2 N. R. 232.

13. Questions of Fact for Trial before the Court without a Jury, in a Suit relating to a Patent communicated from Abroad.

1. WAS N. the first importer into her Majesty's realm of the invention for which the letters patent of the, 1865, were granted?

2. Was the invention new within her Majesty's realm at the date of the letters patent?

3. Did the specification particularly ascertain and describe the nature of the invention, and in what manner the same was to be performed?

4. Has the Deft wrongfully, and in contravention of the said letters patent, used the said invention?-Plimpton v. Malcolmson, M. R., 24 June, 1875, B. 1152.

14. Order for Trial of a Representative Case for the Purpose of determining the Question of Validity.

AND the Plt F. by his counsel undertaking to be bound by the result of the trial hereinafter directed, and the several above-men

tioned Defts by their respective counsel admitting that the letters patent in the pleadings mentioned are duly vested in the Plt, and consenting to be bound by the result of the trial hereinafter directed, and that the said trial shall be conducted by B., G., B., and W., four of the above-named Defts, on behalf of and as representing all the Defts in the said suits; Let, by consent of all the said several Defts in the above-mentioned suits, the said Defts B., G., B., and W., be the Defts in the said trial; And Let the said Defts, B., G., B., and W., on or before the day of, pursuant to the statute, deliver to the Plt their objections to the validity of the said patents; And Let, by the consent of the Plt and the said Defts, the following question be tried before his Lordship without a jury, that is to say: Whether the patent in the pleadings mentioned, dated &c., is a valid patent; And the Plt is to proceed to such trial on such day &c.-Adjourn the consideration of the costs of the several applications to the Judge and to his Lordship until after the said trial; And Let all further proceedings in the above-mentioned causes be stayed until after the said trial; And any of the Defts in any suits commenced by the Plt with respect to infringement of the said patent are to be at liberty to apply to be made parties to this order.-Foxwell v. Webster, and eighty other titles, L. C., 7 Dec. 1863, A. 2391; 4 D. J. & S. 77.

TRIAL OF QUESTIONS OF FACT.

A Deft was not entitled, under the Chancery Amendment Act, 1858 (21 & 22 V. c. 27), as of right, to have issues of fact in a patent case tried by a jury; but the Court would not, in doubtful cases, where there was a question really to be tried, or where charges against the Deft not raised by the pleadings were opened at the hearing, refuse an application for a jury: Davenport v. Goldberg, 2 H. & M. 282; Bovill v. Hitchcock, 3 Ch. 417; Tangye v. Stott, 14 W. R. 128.

And see Eaden v. Firth, 1 H. & M. 573; Roskell v. Whitworth, 5 Ch. 549; Henderson v. Runcorn Soap Co., 19 L. T. 277.

The practice in Equity, in the absence of special circumstances, has been to try the ordinary issues in a patent suit before the Court without a jury: Patent Marine Inventions Co. v. Chadburn, 16 Eq. 447.

And see Young v. Fernie, 1 D. J. & S. 353; Fernie v. Young, L. R. 1 H. L. 63.

Under O. XXXVI, 3, 1875, in all cases a Deft might insist on a trial before a Judge and jury, even where the action would be best tried by a Judge with assessors: Sugg v. Silber, 1 Q. B. D. 362; but now, under 0. XXXVI, 2, 10, the mode of trial is in the discretion of the Judge.

A judgment establishing the validity of a patent does not conclude a Deft in subsequent proceedings from contesting the novelty of the invention: Bovill v. Goodier (2), 2 Eq. 195; but he will be restrained in the meantime from infringement.

And see Newall v. Elliot, 1 H. & C. 797.

In the case of numerous suits for infringement of the same patent, the suits have been consolidated, and a trial directed in a selected suit for the purpose of determining, as between the Plt and the several Defts, the validity of the patent: Foxwell v. Webster, 4 D. J. & S. 77, sup., Form 14; and see Bovill v. Crate, 1 Eq. 388.

And v. sup. Chap. XXII., "ISSUES."