AN IMPORTANT JUDGMENT

Greymouth Evening Star, 9 December 1911, Page 5

AN IMPORTANT JUDGMENT

QUESTION OF PATENT RIGHTS.

JUDGMENT FOR PLAINTIFF

Mr J. G.L. Hewitt, Registrar of the Supreme Court this morning delivered judgment in the case of C. Uddstrom, Mr S. G. Raymond, with liim Mr F. D. Sargent for plaintiff and Mr Hannan for the Red Jacks Sawmilling Company—

The plaintiff , sues the defendant Company in two actions for the in-, fringement in each case of seperate patents granted to plaintiff. The Company is really a partnership consisting of Joseph Donaldson, Thomas Jones, John Wright and Price Hamer, who if necessary are to be considered added as defendants. It will be convenient to refer to them as "the Company." The first patent is for an "improved chain and sprocket gearing." The other is for "driving a locomotive by means of chain gear applying power to all wheels." The defence pleaded was in each case a general denial of the allegations in the statement of claim, and an averment that the patent was not at the time it was applied for a new invention as to the public use and exercise thereof. In each case particular instances of prior user were set out. As to the "Sprocket wheel" case, it is sufficient to say that the claim of prior use failed, and was abandoned during the hearing, and the infringement was admitted. The only question in it therefore is the relief to which the plaintiff is entitled, which I shall deal with later.

As to the other, the "driving locomotive by means of a chain gear applying power to all wheels," the prior acts of user relied on at the hearing were the use by a party of contractors, Hackett, Anderson and Nyberg ;. by George Davidson of Hokitika, and by the Government Railway Department on the Greymouth line. The proof as to the first of these instances entirely failed as far as it .applied to the entire invention as shown in the plans and specifications lodged with the application for a patent. The same observation applied to the third. A self carrying pile driving machine was many years ago in use by the Railway Department in which chain gear applying power to all wheels was used. I am also satisfied that this is the case also with the machine designed and patented by Davidson. Up to a point the idea in this way, as the application of chain

gearing to all the wheels of the combined locomotive and trolly, similar to that of the much more elaborate specifications of. the plaintiff. If the defence pleaded had been that the plaintiff improperly claimed as part of his invention and as a novelty the

application of chain gearing to all the wheels of a travelling trolly or platform carrying its motive power, much might be said as to the validity of such a claim. No specific objection was set up, and I am not required to discuss it. The- plans and specifications, however, as illustrated by the drawings and by the model used at the trial, showed a much larger and fuller claim-—differing in many important details from Davidson's patent. I would instance in particular the rocker connected by a king-bolt with the wheel platform—giving it the flexibility necessary for rounding curves, which is stated, in my opinion correctly, as one of the main features in the plaintiff's patent. The combination patented by him is as a whole an entirely different thing from the machines relied on as proof of prior user. In my opinion therefore in both cases the inventions patented by the plaintiff are ingenious and novel improvements, and the Company has failed to establish the only defence set up —that of prior user.

As to the relief asked for,, I think the Company was justified in concluding that the plaintiff had authorised Middleton to ca?t and sell the sprocket wheels, and that the Company obtained the wheel from a person who had properly received them from Middleton. In respect of that action the plaintiff will have an injunction in terms of his prayer. As to the other action the plaintiff will have judgment for £25 damages and an injunction as prayed. At the close of the hearing I was asked to give, in the event of my finding for the plaintiff, a certificate under; section 35 of The Patents Designs and Trade\ Marks Act, 1908, that the validity of 1 the patents came in question. The effect'of such a certificate is to subject an unsuccessful defendant in a future action for infringement of either of these patents to pay full costs and charges and expenses as between solicitor and client. I shall not give such a certificate in either of these cases. As is said in Terrell on the Law of Patents sth Ed. p. 394: "In obtaining this certificate the plaintiff and the countryare parties, not the defendant, and the judge is bound to protect the interests of the country and to see that the cer-

tificate is not given when the validity of the patent has not in fact been proved to the satisfaction of the Court; otherwise there is nothing to prevent collusive actions being merely

brought-for the purpose of obtaining this valuable privilege—a privilege which can be used as an enormous lever preventing persons from incurring the risk of a conflict with the patentee." In neither of these cases has the validity of the patent been proved to my satisfaction. " There is no suggestion that the defence was in any -way collusive; but owing to the form of the defence, many points which might be suggested as to validity were not raised, and therefore not determined. All that fact in fact decided was the question of prior user in two stated instances. The plaintiff will have costs in each case on the lowest, scale—with costs of only, one trial—but with £7 7s Od for second day.