Peacock v D M Osborne and Co

[1907] HCA 6

.

,

Intemaiioruil

Harvester Co ^ America y Peacock

n908)6CLR

4 C.L.K.] OF AUSTRALIA.

921

[HIGH COURT OF AUSTRALIA.]

PEACOCK

A p p e l l a n t

P l a in t if f ,

1). M. OSBORNE & CO. AND ANOTHER

R e s p o n d e n t s .

D e f e n d a n t s ,

ON APPEAL FROM 'I’HE SUPREME COURT OF VICTORIA.

Patent — Infringement — Validity of ymtent — Comhination — Prior publication —

H. C. OF A.

Patenta Act 1890 (Viet.), (A'b. 1P23), fee. 66.

1907.

Where a patent is sought for a coml)ination of several parts, it is not

necessary in the specification to distinguish between those parts which are old

jg jp

and those which are new.

20, 21, 22, 25,

07.

Sec. 56 of the Patents Act 1890 operates to protect a patent the specification

-------

of which contains several claims, one of which is identical with one of several

"̂Barton

’

claims in a specification for a prior patent granted out of Victoria, and is not limited to cases where there is absolute identity between the invention sought to be patented in Victoria and that in respect of which a patent has been granted out of Victoria.

A patent was granted in Victoria for rotary disc ploughs, and the specifi­ cation contained several claims, each of them being for a combination. In an action by the patentee for an infringement :

Held, on the evidence, that each of the claims was new, was good subject-

matter for a patent, and was useful, and that the patent was valid.

Decision of the Supreme Court: Peacock v. D. M. Osborne tL- Co., (1906)

V.L.R., 375; 27 A.L.T., 207, reversed,

A p p e a l from the Supreme Court of Victoria.

Walter Chamberlain Peacock, who was the legal and beneficial owner of letters patent, dated 31st August 1896, and numbered 13,446 of Victoria, for rotary disc ploughs, brought an action

922 H IGH COURT

[1907.

H. C. OF A. for infringement of hi.s patent against D. M. Osborne & Company

and the International Harvester Company of America. By tlieir

I’eacock

defence the defendants alleged that the invention was not new',

V.

U. M.

was not useful, and wnis not the proper subject-matter for a

Osborne patent. As particulars of the allegation that the invention w'as

& Co.

not new, the defendants said that the invention w'as published in Victoria prior to the date of the plaintiff’s letters patent b}'’ the publication wdthin Victoria of certain specifications or notes wdth drawdngs, wdiich w'ere set out.

The specifications of the plaintiffs patent, wdiich w'as granted to George Spalding and John Steele Bobbins, stated that “ this invention relates to improvements in ploughs and more particu­ larly to rotary disc ploughs.” After stating in detail, wdth the aid of drawdngs, the nature of the invention, and in what manner it was to be performed, tlie followdng claims w'ere set out:—

“ 1. In a rotary plough a triangular shaped frame, the one side being set at an angle to the line of draught and provided with flanges extending lengthwise the said side, in combination with brackets for the cutting discs adapted to be attached to the said side betw'een the said flanges substantially as described.

“ 2. In a rotary plough, the combination wdth a frame having two sides, the one extended parallel to the line of draught and the other at an angle thereto, each side having a flange set out from the face thereof, a land Avheel mounted on the side parallel with the line of draught in a bracket, and brackets for cutting discs mounted on the side at an angle to the line of draught and engaging the said flange, substantially as described. “ 3. In a rotary plough, the combination with a frame having two sides, the one extended parallel to the line of draught and the other at an angle thereto, of two carrying wheels the one mounted stationarily on one of the said sides of the frame and the other adapted to be adjusted lengthwise of the other side of the frame substantially as described.

“ 4, In a rotary plough, the combination with a frame having two sides, the one extended in the line of draught and the other a t an angle thereto, of rotary cutting discs mounted on the latter of the said sides and adapted to be adjusted laterally thereon, a furrow wdieel mounted on the side of the frame carrying the

4 C.L.R.I OF A U STRALIA,

923

disc, and a land wlieel mounted on the opposite side of the frame

H. C. OF A.

and adapted to be adjusted forward and back to form the pivot

1907.

on wliich the plough will turn substantially as described.

P k.vcock

V.

“ 5. In a rotary plough, the combination of a frame carrying rotary cutting discs, set at an angle to the line of draught, with a

]). i\l.

OsbornK

& Co.

guide wheel mounted on an arm extended to the rear of the frame and pivotally mounted thei'ein, and a flexible connection between the frame and arm to control the limit of the swing of the said arm in one direction substantially as described.

“ 7. In a rotary plough, the combination with a furrow or land wheel, of supplemental tilling weights adapted to fit within the hollow of the said wheel, and fastenings to hold the said weights in position, substantially as described.”

One of the specified prior publications was by drawings and notes of an invention of George Spalding and John Steele R(J)bins, of the United States, relating to rotary disc ploughs dated 7th July 1890, and published in Victoria on or about 21st August 1890. Tluit referred to a patent granted to Spalding & Robbins in the United States, the specifications of which con­ tained three claims, one of which was as follows;—“ In a rotary disc plough the combination of a traction wheel the face of which is recessed, with supplemental weights adapted to fit in said recessed face, and suitable fastenings for maintaining the said weights in place, substantially as described.”

The action was heard before dBeckett J., who found, as to claims 1, 2 and 5, that the mode of attaching the brackets for the cutting discs, and the flexible connection were not proper subject- matters for a patent, and that the other parts of these claims were not new ; and, as to claim 7, that there had been prior publication, but that sec. 56 of the Patents Act 1890 protected the plaintiff’. He therefore gave judgment for the defendants ; Peacock v. P>. M. Osborne A Co. (1).

The jilaintiff now appealed to the High Court.

Coldham and [̂an■n, for the appellant. The onh’ question here is whether the Judge below was right in finding that there was no subject-matter for a patent. That is a question of fact. An

(1) (1900) V.L.R., 37o; 27 A.L.T., 207.

924 H IG H COURT

[1907.

H. C. or A. invention which consists of old elements and which performs an

old operation in a better way, is patentable : Edison-Bell Phono­ Peacockgraph Corporation Ltd. v. Smith (1); Anti-Vibration Incan­

V.

descent Lighting Go. Ltd. v. Grossleg (2); Arnot

Dunlop

T>. M.

Osborne

Pneumatic Tyre Go. Ltd. (3); Hayivard v. Hamilton (4). The

& Co.

question is whether the inventive faculty has been exercised in

putting tlie things together.

Thej' also referred to Willmann v. Petersen (5); Penn v. Bibhy (6); Perry v. Societe des Lunetiers (7); Patent E.cploita- tion Ltd. V. Siemens Brothers & Co. Ltd. (8).

Mitchell K.C. and Irvine K.C., for the respondents. The patent is void because as to each of the claims (1), (2) and (5) it is not a proiDer subject-matter of a patent, it is not new, and tlie specifica­ tion does not sufficiently distinguish betwmen what is new and wliat is old. As to claim (7) tliere was a prior paper publication, and it is not useful, and it is not a proper subject-matter of a patent. There has been no exercise of the inventive faculty : Longhottom V. Shatv (9); Harwood v. Great Northern Railway Go. (10); Kynoch A Go. Ltd. \. Webh{\\)', Clark v. Adie (\2)\ Murray V. Clayton (13); Frost on Patents, 3rd ed., p . 73; Horton v. Mahon (14). The substitution for a well known element in a well known combination of a well known mechanical equiv^alent does not give a patentable thing. The flexible connection in claim (5) is obviously a mechanical equivalent for the fixed stop. See also Moore v. Bennett (15); Leggott w. McGeoch (10). As to the prior publication, sec. 50 of the Patents Act 1890 is not an answer. In order to claim the protection of that section the inventions must be substantially identical. The section does not extend to protect a Victorian patent, one claim in which is iden­ tical with a claim in a previous foreign patent: Frost on Patents, 3rd ed., vol. ii., pp. 22, 23 ; L’Oiseau and Pierrard’s Patent (17); Siddell v. Vickers (18); Patents Act 1890, secs. 54, 55.

(1) n R.P.C., 389(10) 11 H.L.C., 654, at p. 680.

(2) 22 R.P.C., 441.(11) 17 R P.U., 100, at p. 110.

(3) 22 R.P.C., 105, .-it p. 108.(12) 2 App. Cas., 315, at p. 320.

(4) Griffin’s Put. Cas., 115.(13) L.R. 7 Ch., 570.

(5) 2 C.L.R., 1.(14) 12C.B.N.S., 4.37.

(6) L.R. 2 Ch., 127.(15) 1 R.P.C., 129, a tp . 143.

(7) 13 R .P.C., 6G4.(16) 10 R.P.C., 429.

(8) 21 R.P.C., 541.(17) Griffin’s Ab. Pat. Cas., 36.

(9) 8 R.P.O., 333, at p. 335.

(18) 39 Ch. 1)., 92.

4 C.L.R.J OF AUSTRALIA,

925

Coldham, in reply, referred to Von Heyden v. Neustadt (1);

1907.

Torrell on Patents, pp. 102, 498; Harrison

V. Anderston

Foundry Co. (2); Moser v. Marsden (3).

P eacock

V.

Cur. adv. vult.

D. M.

O.SBORSE

& Co.

G rib’F it h C.J.

This is an action for infringement of a patent

for a rotary disc plough. The defendants pleaded, amongst other defences, that the invention was not useful, that it was not new, and that it was not proper subject-matter for a patent, and they also alleged prior pxiblication. The infringement by the defend­ ants was not in controversy before us, but the learned Judge before whom the case was tried was satisfied that the defendants had infringed the plaintiff’s patent, if it was valid. The learned Judge, however, was of opinion that the plaintiffs patent was invalid for certain rea.sons. The patentee’s claim was in respect of several distinct matters, reduced by di.sclaimer to six, of wdiich four have been called in question on this appeal. It is admitted that, if any one of these claims is bad, either on the ground of want of novelty, or want of subject-matter, or want of utility, the action would fail. It is necessary, therefore, to consider each of

them separately, and the objections to them differ.

The invention

relates “ to improvements in rotary disc ploughs.” The principle pf a rotary disc plough is using for turning up the earth, in place of the ordinary plough-share, a heavy concave circular disc> wdth sharp edges, revolving on an axle, and set on a frame at an angle to the line of draught. The plane of the disc itself is also at an angle to the line of draught, and also at an angle to the perpendicular, the object being that, as the structure is drawn along over the ground, the weight of the disc may bite into the earth, and throw the eai-th upward and outward. That being the nature of the structure, it is obvious that it cannot be taken in any desired direction in a straight line wdthout very powerful guiding apparatus, because the tendency of the discs striking the ground in that way would naturally be to cause the whole machine to go in the same direction as the plane of the discs. It is obvious also that, when the guiding apparatus is introduced,

(I) 50 L.J. Cli., 126, at p. 128.

(2) 1 App. Uas., 574,

(3) 10 R.P.C., 350, at pp. 353, 359.

926 HIGH COURT

[1907.

H.C. OF A.tliere will be a very severe strain upon the connecting parts ;

1907.there will be a strain coining from various directions upon the

P eacocj;discs, a torsional strain, a strain tending to force them aside, and

V.a strain tending to force them upwards, and it is obvious that

D.

M .

Osborne the mode of attachment, in order to keep the implement rigid

& Co.

must be very carefully devised. Again, in the construction of a

Griffith C.J.plough of that sort it is desirable to have it as light as possible,

consistently with strength, and the importance of finding the best way to combine the elements of lightne.ss, strength, and con­ venience in use is obvious. Again, it is necessary, bearing in mind the importance of the qualities of strength and lightness, to have the machine sufficiently heavy to compel the cutting edges of the disc to bite the ground, and not, as they naturally otherwise would do, run over it. All those things have to be considered in making the plough. I do not suggest that the first person who built rotary disc ploughs tliought of all these thing.s. They were not known at first, but have been discovered in the course of time, although it may be conceded that, a jmori, these were elements to be considered. That being the nature of the invention, the plaintiff in his patent describes the rotary disc plough, and he specifies the particular claims that he makes. It

will be convenient to read the claims.

The first claim is—[His

Honor read the first claim, and continued :] That is a claim for a* combination of a triangular-shaped frame of a particular construc­ tion, having flanges extending lengthwise along one side witli brackets for the discs attached between the flanges. That is that combination. The second claim is—[His Honor read the second claim, and continued:] This is a combination of three elements, a particular kind of frame, a land wheel parallel to the line of draught, and brackets attached in a particular manner. The fifth claim is a combination again of tliree elements. [His Honor read the fifth claim, and continued:] The seventh claim, which is the claim in respect of which the infringement was proved, is as follows:—[His Honor read the seventh claim, and continued.] J t will be observed that all these claims are -for com­ binations. Each of the claims was attacked on grounds .stated briefly by Mr. Mitchell thus :—Claims 1, 2 and 5, because they are not subject-matter for a patent and are not new ; and, further,

4 C.L.R.]

OF AUSTRALIA.

because the specification does not distinguish the new from the

TI. C. OF A.

1907.

old in the combination.

The sev^enth claim is objected to on the

ground of want of utility, want of subject-matter, and also on the

P eacock

V.

ground of prior publication, that is, paper publication.

D. M.

OSBOB.SF.

With respect to the objection that the specification does not dis­ tinguish the new from the old in the combination, I refer to the

& Co.

Griffith C.J.

case of Harrison v. Anderstorv Foundry Co. (1), in which the law on that subject is di.stinctly laid down. Lord Cairns L.C., refer­ ring to the first claim on which the question of construction arose, said ;—“ It is, as I read it, a claim for a combination ; that is to say, a combination of all the movements going to make up the whole of the mechanism described. It must, for the present at least, be assumed that this combination, as a combination, is novel; that it is, to use the words of the Lord President, a new combination of old parts to produce a new result, or to produce a known result in a more useful and beneficial way. It is not doubted that a combination of which this may be said is the subject of a patent.” Then he referred to tiie case of Foxwell v. Bosfock (2), in which it was suggested that Lord Westbury L.C. had determined that, where there is a patent for a combination, there must be an explanation of the novelty, and the* specification mu.st show what is the Movelty, and what is the merit of the invention. But Lord Cairns went on to .say ;—“ I cannot think that, as applied to a patent for a combination, this is, or was meant to be the effect of the decision in Foxw(dl v. Bostock (2). If there is a patent for a combination, the combination itself is, ex necessitate, the novelty; and the combination is also the merit, if it be a merit, which remains to be jiroved by evidence. So also with regard to the di.scrimination between what is new and what is old. If it is clear that the claim is for a combination, and nothing but a combination, there is no infringement unless the whole combina­ tion is used, and it is in that way immaterial whether any or which of the parts are new. If, indeed, it were left open on the specification to the patentee to claim, not merely the combination of all tlie parts as a whole, but also certain subordinate or subsidiary parts of the combination, on the ground that such

(1) 1 App. Cas., 574, at p. .577.

(2) 4 De O. J. & S., 298.

928 H IG H COURT

[1907.

H.C. OF A.subordinate and subsidiary parts are new and material, as it wa.s

1907.held a patentee might do in Lister v. Leather (1), then it might

I ’ KACOCKbe nece.ssary to see that the patentee had carefully distinguished

V.

D. M.

those subordinate and subsidiary parts, and had not left in

Osborne & Co.dubio what claim to parts, in addition to tlie claim for combina­ tion, he meant to assert.” In the same case Lord Hatherley said

Griffith C.J.

(2), after referring to the case of Foxwell v. Bostock (3), speaking of a man who had invented a new kind of clock:—“ But if he says : ‘ I take all these well-known parts, and I adjust them in a manner totally different from that in which they have ever before been adjusted ; I have found out just what it is that has made these parts, though they may have been used in machinery, fail to produce their proper effect, and it is this, that thej' have not been properly arranged ; I liave therefore reconsidered the whole matter, and put all these several parts together in a mode in which they never were before arranged, and have produced an improved effect by so doing,’—I iippreliend it is competent to that man so to do, and that it would be perfectly impossible for him to say what is new and what is old, because ex concessis it is all old, nobody ever before used it in the manner in wdiich he has used it. That, my Lords, I apprehend, is tlie principle of a patent for a combination. It seems to me that that is just wdiat this gentlemen claims to have done. Whether or not he has really done it will remain to be seen.” That disposes of the objection that the specification does not sufficiently distinguish between what is new and what is old. The idea of a combination is that it is all old, and if some of it is new, tliat cannot make it any worse.

As to the objection that these claims are not the proper subject- matter for a patent, I will only refer to the rule this Court laid down in Willmann v. Petersen (4). In delivering tlie judgment of my learned brother Barton and myself, I said :—“ These cases in our opinion establish the following proposition (which when enunciated from the bench during the argument, was assented to by counsel on both sides)—A combination of two or more known mechanical appliances the result of which is to effect a new

(1) 8 El. & Bl., 1004.(.8) 4 Be G. J. & S., 298.

(2) 1 App. Cas., 574, at p. 584.

(4) 2 C.L.R., 1, at p. 21.

4 C.L.K.] OF AUSTRALIA.

929

purpose, or to effect an old purpose with greater efficiency or

H. C. OF A.

1907.

economy, may be tlie subject-matter of a patent, if it involves

some substantial exercise of the inventive faculty.”

P eacock

V.

Bearing those rules in mind, let us examine the nature of these

D. M.

O.SBORSE

claims. I will take them in numerical order. The first claim is

& Co.

for a combination, as I have .said, of a triangular-shaped frame

Griffith C.J.

of a particular construction, with brackets fastened on in a par­ ticular manner. The frame as de.scribed in the specification and the drawings consists of what is called the disc beam, that is, the side beam which carries the discs of iron, which is made either of what is called “ H ” iron or “ C ” iron (which is like double angle iron, that is, iron with one side perpendicular, called the “ web,” and the other two sides extending along horizontally at top and bottom), and the method of fa.stening the discs to the beam described in the specification is by fixing a bracket containing the axle on which the disc runs in between these two flanges, securing in that way a perfectly rigid connection. It is impos­ sible that there could be any upward thrust around the bolts ; or rather it is impossible that the bracket can revolve on the bolt by which it is affixed to the beam, because it is squared top and bottom, and brought into contact with the flanges above and below, so that this strain is effectually resisted. Another way, and in fact the only other way in which it is suggested that these brackets had be^n fixed to the beam before, would be by fastening them on to the top of a beam of “ T ” iron by bolts or screws. In that case, obviously, there would be a great shearing strain, which might tend to cut through those bolts, and di.sable the imple­ ment. It is suggested, however, that, although this mode neces­ sarily produces the strongest possible way of fixing the brackets to the frame so as to avoid the various thru.sts and tensions, it was not new, and the reason given is that in Victoria, some years before, a Mr. Fiirphy had invented an implement which carried rotary discs, really in the nature of a harrow. The discs wore all fastened one after another on a long pole. The mode of fastening was on the top of a beam in the shape of what is called “ T ” iron. The difference between this mode of fixing and the other mode of fixing is obvious, as I pointed out. But it is said, that being so, there is nothing novel in it ; there is no

930 H IG H COURT

[1907

H.C. OF A.inventive genius in that, because everybody knew that if you

1907.wanted to hx a square-ended thing in wliat is called “H” iron, or

P eacock“ C ” iron, the obviou.s thing was to put the scpiare end into it.

V.

D. M.

True, everybody knew that, but it does not appear to have

Osborne & C o .occurred to anybody to liiake use of that idea for the purpose of

forming a light and strong frame for a rotary disc plough, and the

Griffith C.J.use of such a thing in a building or in a floor is not so obviously

a use analogous to its use in an agricultural implement that it can be said that there is no exercise of inventive faculty in so applying tlie idea. I think, therefore, that the objection to tlie first claim, that it is not the proper subject-matter of a patent, and is not new, fails, and there is no evidence that it has been anticipated. Of its utility there can be no doubt—at least no reasons are suggested on the evidence. I think every objection to that claim fails.

Ill the next claim there are three elements. The first is a frame of two sides, one parallel to the line of draught and the other at an angle, each side having a flange set out from its face. The second element is a land wheel mounted on the side parallel with the line of draught in a bracket, and the third consists of brackets fixed substantially in the same way as in the first claim. It is claimed for this combination that, althougb there is only one flange to the beam, so that the rigidity of connection is not quite so great as if there were a flange both dbove and below, neverthele.ss the advantage is considerable, because the revolution of the bracket on the axis formed by the bolt is prevented to a great extent, though perhaps not quite so great an extent. The second element of a land wheel attached to the side parallel with the line of draught in a bracket, was, so far as we know, a novel idea. The third element of the beam extended at an angle to the line of draught may be taken to be not new. But it is not sug­ gested that the whole combination is not new, and, for the same rea.sons that lead me to hold that the first claim is good, I think that there is novelty and utility in the subject-matter of this claim. The mounting of the land wheel on the .side parallel to the line of draught in a bracket may or may not produce great advantages. On previous implements the land wheel had been set at the extremity of an axle, at a considerable distance from

4 C .L .ll .J

931

OF A U STRALIA.

the frame itself. The fixintr of the frame by a bracket was a

H. t:. OF A.

novelty, and the utility of the invention the subject-matter of

1907.

this claim was not seriously impugned. It is suggested, how­

P eacock

V.

ever, that it has been anticipated by a drawing and a claim in

D . M .

respect of an American patent publislied and obtainable in the

Osborne

& Co.

Patents Office Libraiy at Melbourne.

But that did not indicate

any way in which the brackets were to be fixed, nor did it indi­

Griffith C.J.

cate a land wheel fixed to the land beam, so that the objection based on that alleged anticipation fails ; and, for the reasons I liave given in I'espect of the first claim, I tliink tlie other objec­ tions fail also.

The fifth claim, which was attacked perhaps more seriouslj', was for a combination consisting of, first, the frame carrying rotary discs set at an angle to the line of draught; secondly, a guide wheel mounted on a movable arm extended to the rear of the frame, and swinging on a pivot; and thirdly, a flexible connection between the frame and arm to control the limit of the swing of the arm. As I said before, in a structure of this sort, the tendency of the whole machine would be to travel in a direction parallel to the plane of the cutting discs, and this tend­ ency must be controlled by some guiding apparatus. The mode adopted for guiding is what the inventor calls a “ guide wheel,” which is applied so as to run in the furrow nearest to the land wheel, and to press against it, so that, just as a tram rail in the street, if it is raised above the ground, will afford considerable resistance to a vehicle trying to cross it obliquely, so there will be a continual pressure exerted on the guide wheel which tends to keep the whole machine from swerving. It is ob\'ious that a wheel of that sort would have a very great strain upon it. It must be attached at the rear of the vehicle, and in order to get the nece.ssary leverage, means must be adopted to prevent it from swinging too far, and a mode of attaching it so as to get the necessary strength, at the same time avoiding undue weight and uiiwieliliness, was a matter which seems to have attracted some attention. This particular combination was impeached on the ground both of anticipation and want of subject-matter. So far as the anticipation was concerned, it appears that, before this patent was taken out, descriptions, called “ paper anticipations,”

932 HIGH COURT

[1907.

H. C. OF A. and plans of two inventions had been publislied in Victoria, from wliich it appeared that such a guide wheel had been previously-

P eacockused, but the mode adopted for securing strength and lev'erage

V.

was quite different.

A guiding wheel of this sort must extend to

R . M .

Osborne & Co.the rear of the machine, like the rudder of a ship, and if no other precaution was taken, the strain would come upon the pintle or

Griffith C.J.

pivot. In both of those inventions, the strain was cast entirely on the upright rod or shaft to which the wheel is attached, which I may call the pintle. In one case the means for preventing the arm from swinging too far consisted of a projecting pin upon which the arm would press; but that pin was close to the axis on which the arm was working, so that the whole leverage of the length of the arm at the end of which the wheel was attached, came upon the pin, and either the pin might break or the arm itself might bend or break. That apparatus was self-acting. The other invention represented a very similar contrivance, which could be worked from the front of the plough by the use of a long lever, by which a stop could be affixed, so that the wheel could at will be allowed to swing freely, or prevented from swinging ; but this was open to the same objec­ tion that the leverage of the whole length of the arm came upon the stop, with great danger of fracturing the arm. There was also the inconvenience of working it from the other end of the plough. Neither of these was the same thing as the present invention; they were both open to these obvious objections. The plaintiff’s invention used a chain, which is called the “flexible con­ nection,” attached to the wheel at one end and the frame at the other, which prevents all the danger arising from the leverage of the length of the arm to which the wheel is attached, tending to break the arm. In con.sequence the appliance might be made much lighter, and at the same time a great deal stronger. The advantage of the avoidance of accidents in the field in implements of this sort is extremely great. If in either of the earlier inventions the arm or the stop were broken, the whole machine would be di.sabled, and the probability of fracture was not small. On the other hand the chain entirely avoids this risk, and, in addition, the implement can be made much lighter, and more easily managed. It is said there is no invention in sub-

4 C.L.U.] OF AUSTRALIA.

933

stituting a chain for a rod. Tliat is true, if that be all. If the

H. C. OF A.

only object is to prevent a thing from swinging in one direction

1907.

beyond a given distance, it does not matter whether you have a

P hacock

V.

chain or a rod ; but in this case the object was to attach a wheel

D..M.

of that kind to an implement of that kind by the lightest and

Osborne

k Co.

most efficient means with least danger of fracture.

The applica­

tion of a chain for that purpose involved also the construction of

Griffith C.J.

the implement in such a form that a chain could be attached to it. That, also, was a matter requiring some consideration. The applicant applied his mind to these subjects, and it is quite impossible, applying tlie rules which I liave stated, to say that no inventive faculty was involved in doing it. I think, therefore, the objection to that claim fails.

The objection to the seventh claim, which is for tlie combina­ tion with a furrow or land wheel of supplemental tilling weights, is based on a somewhat different ground. The idea of the invention is that the wheels, the land wheel which runs on the uiiploughed land, and the wheel on the other side of the imple­ ment furthest away from it, should be so constructed that weights can be affixed to the wheels themselves. The principle of weighting a plough in order to give it a greater grip of the land was well known, for stones and all sorts of things were used as weights, and placed on various parts of the implement. It is said there are several advantages in having the wheels themselves weighted. In the first place, it is said, you need not have the weights on at all unless you like. That would apply also to movable weights. Next it was said that the idea is not merel}’ to have removable weights—there is nothing new in that—but to have them affixed in particular parts of the plough where they can produce the greatest benefit. So far as the weights are affixed to the land wheel, of course, it is obvious that, by reason of the greater leverage, the weights would have more effect in keeping down the discs, provided the construction is rigid, than if you put them at any other places—much more than if you put the weights on the beam. Again, there might be advantages in having them fixed, instead of having them in a place where they might fall off. Again, it is said that, for the purpose of ordinary ti’action, when j'ou are taking the implement to and from its

934 HIGH COURT

[1907

H. C. Of A.

work, the distribution of weight on the wheels themselves is an

1907.advantage, and that must be so to a .slight extent. The learned

P eacock

Judge who tried the case thinks it is not so to a veiy great

V.

D. M.

extent, but it was pointed out that, in a case of that sort, where

OSISORNK& Co.an implement is running on the ground, the actual weight of wheel

pressing on the top of the axle is only half the weight of the

Gi-ilfith C.J.wheels, and the .same consecpieuce follows if the additional weight

is affixed to the wheels, whereas, if the whole of the weight were on the frame it would be above the axle, and a slightly greater tractional power would be needed. The learned Judge thinks there is not much in that, but, on the whole, he comes to the conclusion that the ap^jlication of weights in this way was an advantage. One of the matters to which he attached very great importance was that the defendants themselves thought it was an advantage, because they had adopted it. On the whole, he came to the con­ clusion that this was a useful invention, and was an invention capable of being patented. I see no reason to di.sagree with him. That disposes of all objections to the patent except one, and that is that claim 7 had been previously published. Now, it is admitted that it had been previously published in Victoria, and on that ground the patent must fail, notwithstanding all its merits, unless the plaintiff can claim the benefit of sec. 50 of the Patently Act 1890, which provides that—“ (1) Notwith.standing anything in any Act of Parliament contained, where any patent or like privilege for the monopoly or exclusive use or exercise in any parts of Victoria of any invention first invented in parts out of Victoria has been obtained, a patent may be granted for such invention at any time within one year from the date of the granting of the first of any such patents or privileges notwith­ standing that such invention has been used or published in Victoria within such period of one year, and such patent when gi-anted shall have the same force and effect as if such prior publication or u.se had not taken place.” Now, the facts are that about a fortnight before the granting of the patent, a brief de.scription had been published of a patent, also belonging to the plaintiff,granted in America. Sub-sec. (2) provides:—“ (2) If such u.se or publication have been made in Victoria with the consent of the true and first inventor for the time being such inventor shall

5 C.L.K.] OF AU STR A LIA .

935

not be entitled to a grant of letters patent under the authority

n . C. OF A.

1907.

of this section.”

This publication was not made with the consent

of the plaintiff, who was the true and first inventor, so that the

P eacock

V.

plaintiff does not come within sub-sec. (2). The American patent

U. M.

Osborne

contained three claims, one of which was for the weighted wheels. & Co.

The Victorian patent contained at that time more tlian seven

Griffith C.J.

claims, one of whicli was for the weighted wheels, and it is said that the inventions are not identical, and therefore that the section does not apply. The object of the section evidently was to pre­ vent a bond fide inventor from losing the benefit of an invention patentable in Victoria because somebody else, without his consent, had disclosed it to the public. Now, it is not di.sputed in the present case that, if the plaintiff’s patent had been limited to the seventh claim, it would have been a good patent so far as subject- matter goes, apart from the objection of want of novelty. Suppos­ ing, then, the patent had only been for what is included in the seventh claim, would that have been vitiated by the fact that an American invention of that and something else had been granted during the year ? Surelj^ the object is to protect the invention, so far as it is new in Victoria, where it is new. The words of the section a r e A patent may be granted for such invention,” that is, an invention first invented in parts out of Victoria, and new in Victoria. The invention of these weights adjusted to the machine was an invention first invented beyond Victoria, and the Act says that the grant of a patent for such invention shall be valid, notwithstanding that such invention has been published in Victoria within the period of one year. In the very words of the section, the invention in question, the weighted wheels, had been invented abroad. It had been published in Victoria within one year, without the consent of the patentee, and that publica­ tion is declared to be irrelevant. It seems to me that the case falls within the exact terms of the section, and that the plaintifi'is entitled to the benefit of i t ; otherwise, the singular con.sequence would happen that, in the case of an agricultural implement invented and patented in Victoria, and patented, say, in Canada, with improvements, and with a separate claim for the improv e­ ments, if the patentee desired to obtain a patent for the improve­ ments in Australia, he could not do so, because the original

936 H IG H COURT

[1907.

H.C. OF A.machine was not novel. It would be a very sino'ular thing, that

1907.merely because the state of knowledge in the two countries was

P eacockdifferent as to a particular part of the invention, this section

V.

D. M.

should not apply with re.spect to those parts of the invention

0SB0K?« E& C’o.which were novel in both countries. I think, therefore, that tlie

objection last referred to fails. I entirely agree with the learned

Griffith C.J.

Judge on this subject, and it follows that all the objections fail,

and the plaintifi'is entitled to judgment.

B a r to n J.

I entirely agree with His Honor in the conclusion

at which he has arrived. It is not necessary for me to traver.se the whole of the ground, and I will confine myself, first, to expre.ss- ing my agreement with him in the construction of the section in the Patents Act 1890, and secondly, to mentioning one or two authorities which support me in my agreement. With respect to the question of subject-matter, the case of Murray v. Clayton (1), is useful. In that case the patent had been granted for a machine which had been shown to work more expeditiously, more economically, and produced a better result than any knowji machine of the .same sort would do. Bacon V.C., liad held that a patent was invalidated because the machine was formed by the mere arrangement of common elementary mechanical materials, producing results of the same nature as those previously accom­ plished by other meclianical arrangements and construction. It maj" be mentioned that the appliance was an improvement in machinery for making bricks, relating more particularly to the mechanical appliances for cutting the clay into bricks of the desired sliape and dimensions. Bacon V.C., held tliat the patent

was bad for want of subject-matter.

The case went to the Court

of Appeal in Chancery before James and MelUsh L.JJ. James L.J., delivered the judgment, in which Mellish L.J., concurred. In the course of his judgment he said (2):—“ Before proceeding to consider the last question, that of infringement, it is nece.ssary to refer to the Vice-Chancellor’s judgment. His Honor, after referring to the evidence of the witne.s.ses who spoke of the plaintiff’s machine in terms of unqualified commendation, and .said that, according to their knowledge, it was a novelty and an

(1) L.R. 7 Ch., 570.

(2) L.R. 7 Cli., 570, at p. 583.

4 C.L.K.] OF AUSTK ALIA.

937

improvement upon all brick-making machines with which they H- C. or A.

were acquainted, says : ‘ But, assuming all this to be true, I do not

1907.

think that it can therefore be held that the plaintiff is entitled

P eacock

V.

to the monopoly which the patent purports to grant. No doubt a

D. M.

combination of things, not in themselves new, but which com­

OsBOliNE

& Co.

bination is perfectly new in the form in which the inventor has

cast it, and producing new and more beneficial results, may be

Barton J.

the sul)ject of a patent ; but I am aware of no case in which it has been held that the mere arrangement of common elementary mechanical materials, and the construction, by means of such arrangement, of a machine which produces no other result than that which had been previously accomplished by other mechanical arrangements and construction, would support a patent. If it were so, there would be no protection to the public or to earlier patents against the ingenuity of any artisan who might have the skill to arrange the old mechanism in a new shape, and thereby to approjiriate to himself the fruits of previous inventors, in the projier sense of that term, and so that the privilege and reward which the law only concedes to art, and wit,and invention,might be bestowed upon mere skill in handicraft.’ I find it very difficult to reconcile this proposition with what has been said by many Judges in many cases, and more particularly in the case of Crane V. Price (1). Now, no doubt. Crane v. Price has been questioned, and if I may be permitted to say so, with all respect to the very powerful tribunal which decided that case, I have never been satishod with the decision. That, however, was simply because I could not see how the word ‘ combination ’ could be propeidy applied to the introduction of a particular kind of fuel into a machine which had been patented for the use of every kind of fuel in the making of iron; and neither I nor, so far as I am aware, any other Judge has ever questioned the principles upon which that case was decided, and which are thus laid down in the judgment of the Court delivered by Chief Justice Tindall (2) :— ‘ We are of opinion that if the result produced by such a com­ bination is either a new article, or a better article, or a cheaper article to the public, than that produced before by the old method, that such combination is an invention or manufacture intended

(1) 1 Webs. Pat. (las.,393.

1 Webs. Pat. Cas., 393, a t p. 409.

VOL. IV.

61

938 H IG H COURT

[1907.

H. C. OF A. ijy statute, and may well become the subject of a j^atent.

Such an assumed state of facts falls clearly within the principle P eacockexemplified by Abbott C.J., where he is determining what is or

V.

D. M.

what is not the subject of a patent, namely, it may, perhaps,

Osborne & Co.extend to a new process to be carried on by known implements

or elements acting upon known substances, and ultimately pro­

Barton J.ducing some other known substance, but producing it in a cheaper

or more expeditious manner, or of a better or more useful kind. And it falls also within the doctrine laid down by Lord Eldon, that there may be a valid patent for a new combination of materials previously in use for the same purpose, or even for a new method of applying such materials. But the specification must clearly express that it is in respect of such new combination or application.’ ” That is as to subject-matter. As to the (juestion of insufficiency of the specification, as not having properly dis­ tinguished the new from the old, I think the matter comes within the principle laid down in the case of Moore v. Bennett (1). That was a case in which the patentee of imjjrovements in machines for cutting and trimming the hairs or bristles of brushes sued the defendant for using a machine which the plaintiff’ alleged was an infringement of his patent. The defences were that the plaintiff’s patent was invalid because his specification was insufficient, that there was no infringement, and that there had been prior u.ser. Judgment went for the plaintiff, and the defendant appealed. The Court of Appeal reversed that judgment and dismissed the action, with costs, on the grounds that the specification was insufficient in not pointing out what was novel in the combina­ tion constituting the plaintiff’s patent, and that the defendant’s machine was not an infringement. The plaintiff then appealed to the House of Lords, and it was held that the specification was sufficient, because, where the claim is for a new combination only, and not also for subordinate elements included in that combination, then, if the combination and the mode of working it are properly de.scribed, it is not necessary to specify which of the .subordinate elements are new. In giving judgment to that effect. Lord Herschell L.C. said (2):—■“ But your Lordships will decide, consistently with what, I think, is the general rule in

(1) 1 R.P.C., 129.

(2) 1 R.P.C., 129, at p. 14.3.

4 C.L.H.] OF AU STR A LIA .

939

these cases, by holding that where the claim is for a combination,

H. C. OF A.

and not for particular subordinate things included in that com­

1907.

bination, if the combination is a new one in substance and in

P eacock

c.

truth, and if the manner of arriving at it and working it, and

1). M.

Osborne

the purpose for which it is useful, are all properly, sufficiently, & Co.

and correctly described in the specification, so that any one

Barton J.

accjuainted with the subject will know in what respect it differs from the things which have gone before, then it would be contrary to the whole policy which allows such combinations, though no part of them is new, to be the subject of a patent, to .say that, besides describing clearly and sufficiently the manner of doing it, in a way which would show everyone acquainted with the subject what was the novelty in the thing, you are to go on, and though you do not want to claim subordinate parts of the combination as distinct from the entire combi2iation, never­ theless you must specify the subordinate parts of it as constituting new elements and a new thing.” I think that case effectually supports the arguments of the appellant on this point. I am of opinion that the appeal must be allowed.

O ’C o n n o r J. I agree tliat the appeal must be allowed, and judgment entered for plaintiff for the reasons so fullj" elaborated by our brother the Chief Ju.stice, to which I have nothing to add.

H ig g in s J. I am of the same opinion. The arguments before \is have been principally addressed to the sufficiency of claims 1, 2 and 5 as the subject-matter of a patent. It is said that these do not .show a sufficient di.splay of the inventive faculty when we regard the rotary di.sc ploughs already used or published. It is assumed rightly or wrongly, even by the plaintiff, and, for the present purpose, I shall assume also, that whatever amounts to prior paper jmblication may be treated as a sufficient datum line from which to measure the extent of the inventive skill involved in a new invention. The (jnestion becomes a mere question of fact —a ([uestion as to degree in inventiveness—a question as to which experts of the highest standing differ, and we have to come to the best conclusion we can. The principles of law are perfectly clear and are fully recognized by the learned Judge as his major

940

[i9o;

H IGH COURT

H.C. OF A.jii’einiss. But, in my opinion, lie has rewarded too much the

1907.separate parts of the combination and tlieir separate insigniticance,

P eacockinstead of recognizing the collective effect and effectiveness of the

V.

D. M.

combination.

OSBOKN E

As for sec. 56 of the Patents Act 1890,1 agree with the judg­ ment of tlie learned Judge. If the construction pressed upon us

& Co.

Higgins J.

by counsel for the defendants be adopted, then, if a patent be taken out in the United States for three claims, and a copy of those claims be lodged in tlie Victorian Patents Office, there can be no protection for the patentee in Victoria if he limit his claim to one of the three. I tliink that, having regard to the definition of “ invention ” in sec. 8, and to the obvious object of the section, we are at liberty to disregard a construction which leads to such an absurdity.

Appeal alloived with costs. Juthpnentfor plaintiff with costs except so fa r as they are increased by the first farther par­ ticular of breach. Plaintiff to pay chfendants costs occasioned, by that particular. Certify that validity of patent was in question, and that par­ ticulars delivered by plaintiff were reasonable. Cause remitted to Supreme Court for inquiry as to damayes.

Solicitors, foi' appellant. Waters & Crespin, Melbourne. Solicitors, for respondents, Blake & Rigyall, Melbourne.

B. L.