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REPORTS OF PATENT, DESIGN, AND TRADE MARK CASESr EDITOR: FRANK G. UNDERHAY, M.A., BARRISTER-AT-LAW. Downloaded from https://academic.oup.com/rpc/article/45/1/1/1603592 by guest on 28 September 2021 Vol. XLV.] 18TH JANUARY, 1928. [No.1. IN THE HOUSE OF LORDS. Present: Lords DUNEDIN, SUMNER AND BLANESBURGR. March 7th, 8th, 10th, 11th, 17th, 18th, 21st and 22nd and July 25th and 29th. BRITISH THOMSON-HoUSTON 00. LD. v. METROPOLITAN-VICKERS ELECTRICAL 00. LD. 5 Patent.-Action 101" inlringement.-Infringement.-Novelty.-Subject-matter. Patent held infringed but invalid.-Action dismissed.-Appeal.-Patent held: valid and to have been infringed.-Appeal to the Court of Appeal allowed.­ Appeal to the House of Lords dismissed. A Patent was granted to R. for "Improvements relat·ing to Synchronous 10 "Dynamo Electric Machines." Claim 1 of the Specification was as follows:­ " Arrangement lor starting synchronous dynamo electric machines by means of "an electric motor, in u,hich a series or electrically equivalent connection is "pro'vided between the windings of the starting motOr and the synchronous "machine, for the purpose 01 effecting in one operation both the speeding up 15 "and the synchronising of the synchronous machine with the supply current." The Plaintiffs alleged infringement of the Claim by the sale by the Defendants of a rotary converter to West Hartlepool Oorporation. The Defendants alleged that the Patent was invalid by reason of want of novelty and of subject-matter. At the trial the Defendants relied upon the publication of the Specification of an 20 U.S.A. Patent which showed an arranJ1ement which was capable of being user! in the manner ind.icated by R. They a,[so contended that the series connection in the alleged infringement did not perform the function specified in the Claim. The Plaintiffs contended that the prior arrangement was not suitable for the purpose claimed, and that the Patentee had selected useful members from a 25 krwwn class and applied them to a new object. The U.S.A. Patent had not been, used. .4t the trial it was held, that the Patent was anticipated by the" A 2 No. 1.] REPORTS OF PATmNT, D$IGN, AND TRADE MARK OASES. [Vol. XLV. British Thomson-Houston 00. Ld. v. Metropolita'Tlr-Vickers Electrical 00. Ld. U.S.A. Specification and was invalid, but that, if it had been valid, the Claim would have been infringed. The action was dismissed, tke PlaintiffB being ordered to pay tke general costs of the action and the costs of the issue raised by the Particulars of Objection, and tke Defendants being ordered to pay the Downloaded from https://academic.oup.com/rpc/article/45/1/1/1603592 by guest on 28 September 2021 costs of the issues raised by the Particulars of Breackes with a set off· The 5 Plaintiffs appealed to tke Court of Appeal on the issue of validity. It was held that it is not enough to show that an apparatus described in an earlier specification alleged as an anticipa.tion could have been used to produce a certain result; it must also be shown that tke specification contains clear and unmistakable directions so to use it; that the Patent was not anticipated by the 10 U.S.A. Specification, and w'as valid and had been infringed. The Appeal was allowed with costs in the Oourt of Appeal and below, and an injunction and an inquiry as to damages were granted. The Defendants appealed to the House of Lords. The Appeal was dismissed with costs. 15 On the 23rd of April, 1912, Letters Patent (No. 9644 of 1912) were granted to Emanuel Rosenberg for "Improvements relating to Synchronous Dynamo " Electric Machines" and prior to the acts complained of in this action were assigned to the Plaintiffs. The Oomplete Specification, with the drawings, so far ws material for the purpose of this report, is set out in the report of the 20 trial of the action, 42 R.P.O. at p. 144 et seq. The Patentee claimed:- " 1. Arrangement for starting synchronous dynamo electri~ machines by , "means of an electric motor" in which a series or electricaHy equivalent con- :: nectihon is provihd~d bfetwetehn the windifngsff o!. the. starting mOt~or bantdh tthhe 21). sync ronous mac Ine, or e purpose 0 e eCLIng In one opera IOn 0 e "speeding up and the synchronising of the synchronous machine WIth the " supply current. "2. In an arrangement for starting synchronous dynamo electric machines " according to Olaim 1, means for reveNing the direction of the field exciting " current, or for opening the field cir·cuit or reducing the current in the field 30 " circuit of the synchronous machine during the starting period, substantially " as and for the purpose set forth. "3. In an arrangement according to Olaim 1 for starting a rotary converter " connected to a mechanically coupled alternating current booster machine, the 35 " provision of an additional winding on the booster machine, to enable this to ., be used as a starting and synchronising motor, substantially as described. " 4. Arrang·ements for starting and synchronising synchronous dynamo "electric machines, substantially as described and illustrated in any of the "figures of the accompanying drawings." Figures 1 and 2 of Rosenberg's Specification are shown on page 3- 40 The Plaintiffs by their Statement of Claim alleged as follows:- (1) 'l'he Plaintiffs were the registered legal owners of the Patent; (2) The Defendants had infringed and threatened and intended to infringe the Patent. By their Particulars of Breaches they alleged as follows:-(i) The Defendants had infringed the Patent by manufacturing, sel)ing and using rotallY con¥erters 45 3· Vol. XLV.] REPORTS OF PATl!lNT, DESIGN, AND TRADE MARK CASES. [No.1. British Thomson-Houston Co. Ld. v. Metropolita'flrVickers Electrical Co. Ld. constructed in accordance with the invention as claimed in aU the claiming clauses of the Specification; (2) In particular the Plaintiffs co~plained of the sale towards the end of the year 1913 by the Defendants to the West Hartlepool Cornoration of two 300 K.W. rotary converters constructed as aforesaid. Downloaded from https://academic.oup.com/rpc/article/45/1/1/1603592 by guest on 28 September 2021 F,ig.l. + 5 The Defendants by the Defence (1) madie no admissions with regard to paragraph 1 of the statement of Claim; (2) alleged that they had not infringed and did not threaten nor intend to infringe; and (3) alleged that the Patent was invalid. The Particulars of Objections will be found set out in 42 R.P.C. at p. 149. 10 Of the prior documents therein specified only the U.S.A. Specification of l'esla (No. 459,772) was relied upon in the Court of Appeal and this is set out in 42 R.P.C. at p. 151 et seq. Figures 4, 5, 8 and 9 of Tesla are shown on page 4. A diagrammatic representation of the Defendants' apparatus is shown on page 5. 15 The action came on for trial on the 8th of July, 1924, before Mr. Justice P. O. Lawrence who held that the Plaintiffs' Patent was anticipated by the U.S.A. Specification of Tesla and WIIiS invalid, but that, if it had been valid, the Claim would have been infringed. The action was dismissed, the Plaintiffs being ordered to pay the general costs of the action and the costs of the issue 20 raised by the Particulars of Objection, and the Defendants being ordered to pay the costs of the issues raised by the Particulars of Breaches with a set off. The Plaintiffs appealed to the Court of Appeal. .. It was held that it is not enough to show that an earlier specification alleged as an anticipation could have been used to pI\oduce a certain result; it must A2 4 No. 1.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLV. --"-"-""--------------------------- British Thomson-Houston Co. Ld. v. Metropolita'llrVickers Electrical Co. Ld. also be sho~n that the specification contains clear and unmistakable instructions so to use it; that the Patent was not anticipated by the U. S.A. Specification and was valid and had been infringed. The Appeal was allowed with costs in the Oourt of Appeal and below, and an injunction and inquiry as to damages were granted. 50· Downloaded from https://academic.oup.com/rpc/article/45/1/1/1603592 by guest on 28 September 2021 L ------'L=-----'~T ~ ------~~~.-----------------------------------------) ~ 81' T L ) [Q] "\ J fEflp' .z;' .-JI Ftp. () L &EiJ~8 J 'I 13' T" I." ) The Defendants appealed to the House of Lords. Sir Arthur Oole/a):}; K.O., W. Trevor Watson and B. Sandeman (instructed'. by A. R. Monks) appeared for the Appellants. Vol. XLV.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 1. British Thomson-Houston 00. Ld. v. MetropolitanrVickers Electrical Co. Ld. Sir Duncan M. Kerly KO., J. Whitehead KO., J. M. McEwen 'and James Mould (instructed hy Faith/ull, Owen and Fraser) appeared for the Respondents. Sir A. Cole/ax, KG., for the Appellants.-The only cla-im of Rosenberg's Patent which is alleged to he infringed is Olaim 1, and, if the construction is Downloaded from https://academic.oup.com/rpc/article/45/1/1/1603592 by guest on 28 September 2021 DIAGRAM OF COIYNecTiONS. THROW SWITCH. 3 POLl! JINGLE THROW .5wlrCH WITH IIYTERMEOI•• TE CONTACTS. STARTING MOTOR. METHOD OF STARTING I. CLOSE SWI7'CHE5 / ~ 2. JO COtvtvECT/N(i THE STARTING MOTOR IN SI!RIE$ 11//TH THE" ROTARY. II. WHEN APPI(OX" FULL SPEED /5 REACHED, ClOSE SWITCH o.v fX)I'ITACTS 5 so C.lJNNECTING CHOKE COILS IN PARALLEL WlrH STI'tI<TING MOTOR.

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