VOL. X. EXCHEQUER COURT REPORTS. 17 INDIANA MANUFACTURING COM- PLAINTIFF 1905 PANY Oct. 23. AND HARRY WARD SMITH AND THE GOOD ROADS MACHINERY DEFENDANTS. COMPANY; LIMITED . Patent for invention—Pneumatic straw stackers—Combination—Assignment —Right of assignor to impeach validity of patent—Right •to limit construction—Estoppel. ' The assignor of a patent, sued as an infringer by his assignee, is estopped from saying that the patent is not good ; but he is not estopped from showing what it is good for, i.e., he can show the state of the art or manufacture at the time of the invention with a view to limiting the construction of the patent. 2. In an action for infringement against the assignor of a patent for improvements in pneumatic straw stackers, it appeared that an earlier patent assigned by the defendant to the plaintiff excluded everything but the narrowest possible construction of the claims of the second patent. In the latter, speaking generally, the combination was old, each element was old, and no new result was produced ; but in respect of one of the elements of the combination there was a change of form that was said to possess some merit. Beyond that there was no substantial difference between the earlier and later patents. Held, that while as between the plaintiff and any one at. liberty to dispute the validity of the later patent, it might be impossible on these facts to sustain the patent, as against the assignor, who was estopped from impeaching it, it must be taken to be gond for a combination of which the element mentioned was a feature. THIS was an action for the infringement of a patent for improvements in pneumatic straw stackers.* The facts of 'the case are stated in the reasons for judgment. June 2nd, 1905. The case was heard at Toronto. * REPOnTER'$ NOTE :—An earlier case between the plaintiff company and the defendant Smith, and others, involving a similar patent, will be found in 9 Ex. C. R. 154. . 2
18 EXCHEQUER. COURT REPORTS. [VOL. X. 1905 W. Cassels, K. C., and W. D. Hogg, K.C., for the INDIANA plaintiffs ; MANUFAc- TURING Co. C. A. Masten and G. Lynch-Staunton for the defend- V. ,H. ant, H. W. Smith. Reason for Judgment,. THE JUDGE OF THE EXCHEQUER COURT 110W (Octo-ber 23rd, 1905), delivered judgment. The action is brought by the plaintiff against the defendants for the infringement of the first and second claims of the Canadian letters-patent numbered 84,183 grunted for certain alleged new and useful improvements in pneumatic straw stackers. The defendant Harry Ward Smith sets up four defences : First, that he has not infringed ; secondly, that the matter in controversy is res adjudicata ; thirdly, that the patent is void because of the failure of the plaintiff to carry on in Canada the manufacture of the invention according to the statute ; and fourthly, that the patent is void by reason of the *importation by the plaintiff of the invention contrary to the statute. The other defendant, the Good Roads Machinery Company, Limited, set up the first, third and fourth defences mentioned ; and also that the invention was not new, that the alleged inventors were not the first or true inventors ; and that the invention was not useful. The action as against the defendant last-mentioned has been discontinued. The patent sued on was granted to the plaintiff company upon an application and specification made by the defendant Harry Ward Smith and his brother Martin Franklin Smith, the specification bearing date of the 26th of December, 1901. On the 15th of January, 1902, Martin Franklin Smith assigned his interest in the invention and application to Harry Ward Smith and the latter assigned to the plaintiff company on the 20th of December, 1902, and the patent was
VOL. X.] EXCHEQUER COURT REPORTS. 19 ' granted to the company on December 1st, 1903. A 1 905 prior patent for improvements in pneumatic straw INDIANA l1 ÎANUFA C- stackers had been granted to the defendant Harry TURI NG Co. Ward Smith and his brother Martin Franklin Smith smTR. upon an application and specification made by them. ons for The specification in case of the earlier patent is dated "dame"t-the 26th of August, 1901, and the patent bearing the number 73,416 was issued on the 15th of October of that year: On the 15th of January, 1902, as appears from the allegations and admissions to be found in Exhibit "J ", Martin Franklin Smith assigned his interest in letters-patent numbered 73,416 to the defendant Harry Ward Smith, and the latter assigned the same to the plaintiff on the 5th of January, 1903. • It will be observed that the first patent was granted prior to the date of the specification • of the second patent; and also that the assignment of the first patent (No. 73,416) to the plaintiff bears a later date than the assignment to the company of the second invention and application. The consideration. however, mentioned in the assignment of the second invention is the nominal one of dollar, while the defendant Harry Ward Smith admits having received one thousand dollars as consideration. The following is taken from his cross•examinatfon by Mr. Cassels: " Q. You were paid a money consideration, were you not, for the assignment of this patent ?--A. Yes. Q. And it amounted to quite a 'sum of money ?— A. Not very much in a case of that kind. Q. A thousand dollars at first, I understand ?— A. There is a good deal of expense.. Q. Just answer my question. It was a $1,000 was • it not ?—A. Yes." I infer from this and the fact that the assignment produced mentioned only a nominal consideration that Mr. Cassels and the witness had in their minds 2%
20 EXCHEQUER COURT REPORTS. [VOL. X. 1905 the first patent as well as the second, and that the INDIANA two assignments constituted one transaction although MANUFAC- TURING CO. upon the face of the documents there is some sixteen V. SMITH. days between the respective dates. In that view of Iron. f ur the case, probably, in any view of the case, it becomes judgment. important to see wherein, in the matters now in controversy, the two applications and specifications were alike and wherein they differed. And that it seems to me may be most conveniently done by placing extracts therefrom in double columns opposite to each other, by omitting the portions that are not material to the consideration of this case which has to do with a part only of a pneumatic stacker ; namely, with the discharge pipe, the sectional elbow, and the arms by which the sections of the elbow are supported in coin, bination with means for collapsing or extending the sections of the elbow, and means for limiting such extension movement. SPECIFICATION OF AUGUST SPECIFICATION OF DECEM-26, 1901. BER 26, 1901. Patent issued October 15th, Patent issued December 1901, and numbered 1st, 1903, and numbered 73,416. 84,183. To all whom it may concern: To all whom it may concern: Be it known that we Be it known that we Harry Ward Smith Harry Ward Smith and Martin Franklin Smith and Martin Franklin Smith * have invested certain * * have invented certain new and useful improve-new and useful % improvements in Pneumatic Straw ments in Pneumatic Straw Stackers, of which the fol-Stackers, (,f which the following is a specification : lowing is a specification : The object of our inven-The object of our invention is to devise a simple, tion is to devise a simple, cheap and effective pneu-cheap and effective pneumatic straw stacker, and it matic straw stacker and consists essentially of cer-it consists essentially of tain improvements in the, certain improvements in
VOL. X.1 EXCHEQUER COURT REPORTS. ' . 21 means for introducing the the means for introducing 1905 straw into the fan .h ousing the straw into the fan • in the means for discharg _ housing in the means for Mar UAc-ing the chaff either with discharging thechaffeither TURInG_Ca. the straw or separately ; with the straw or- sepa- SMITH. in an improved and simpli- rately; in an improved and — fied turntable and elbow ; simplified turntable and a l= and in certain other details elbow and in certain other of construction herein- details of construction ` after more specifically deg hereinafter more specifi- scribed and then definitely cally described and then claimed. definitely claimed : * * * '* The discharge pipe H is The discharge pipe H connected with the interior is connected with the in-of the fan housing in the terior of the fan housing usual manner, its inner in the. usual manner ; its side opening substantially inner side opening sub-at or near the point where stantially at or near the the narrow part of the point where the narrow _ housing and the wide part of the housing and part come in line. _ See the wide part come in line. Fig. 3. See'Fig. 3. * The ' discharge pipe H , The .discharge pipe H . passes directly upward passes directly upward and is fitted loosely within and is fitted loosely with the lower end of the elbow the lower end of the elbow M so that the elbow may M so that the elbow may turn freely around as here- turn freely around as here-inafter described. The inafter described. The elbow is formed in three elbow is formed in • three pieces g, h, i. To the lower pieces A, h, i. To the lower piece g of the elbow is piece g, of the elbow is secured a metal ring j pro- secured ametal ringrj provided in front with. twO prided in front with two suitably journalled rollers suitably ,journalled :rollers k and behind two suitably k and behind two, suitably journalled rollers -k 1 . The journalled rollers k'. The rollers k are adapted to rollers k are adapted to engage::the underside of engage the 'underside' of the metal ring N and the the metal ring N` and the rollers kl the upper side of rollers le' the upper side the same ring. This metal of the same -ring: • This ring is secured to the board metal ring is secured to the 1 by 'means . of outwardly board '1 by means of .out-
22 EXCHEQUER COURT REPORTS. and downwardly extend-INDIANA ing lugs m so that the MANUFAO- free engagement of the TURING Co. rollers k and k' with the S n ;Tn. metal ring is not interfered --- with. Reasons for Judgment. As the weight of the ex- tension O of the discharge • pipe presses downward at the rear side of the elbow and upwards at the front side of the elbow the roll-ers k and kl provide for the proper taking of this strain with rolling friction on the ring N. Arms n are secured to the ring j and extend rearwardly to a point or line with the cen-tre from which the sections of the elbow are struck. Sections h, i are respec-tively connected to arms n', n' on a common centre. The sections g and scope within the sections h and i respectively, as shown, and thus by tele-scoping these sections the extension 0 of the dis-charge pipe may be given any desired upward incli-nation. Short sections of wire or chain o may be used to connect the sections of the elbow to limit their motion and retain them in their proper position. It will be necessary to provide a slot at the point p to enable the section the elbow , to work over the arm n' of section To the metal rim j I con- [VOL, X. wardly and downwardly extending lugs In, so that the free engagement of the rollers k and k' with the metal ring is not interfered with. As the weight of the extension O of the dis-charge pipe presses down-ward at the rear side of the elbow and upwards at the front side of the elbow the rollers k and k' provide for the proper taking of this strain with rolling friction on the ring N. Arms n are secured to the ring J and extend rear-wardly to a point or line with the centre from which the sections of the elbow are struck. Sections h, i, are respectively connected to arms n', n' on a common centre. h tele-The sections g and h telescope within the sections h and i respectively, as shown, and thus by telescoping these sections the extension O of the discharge pipe may be given any desired upward inclination. Short sections of wire or chain o may he used to connect the sections of the elbow to limit their motion and retain them in their proper position. (No corresponding pro-vision.) i of h. To the metal rim j I
VOL. X.] EXCHEQUER COURT REPORTS. 23 nect standards P on which connect standards P on 1905 is journalled a winding which is journalled a J.NDIANA drum Q provided with a winding drum Q provided MAPiIIFAC suitable pawl and ratchet with a suitable pawl and TURING CO. retaining device q. A ratchet retaining device q. SMITH. crank handle r is also pro-A. crank handle r is also — vided by which the wind-provided by which the meet. ing drum may be operated. winding drum may be A cord s connects this operated. A cord s con-drum with the upper end nects this drum with the of the arm n' secured to the upper end of the arm nl section i of the elbow. By secured to the section i of operating this drum the the elbow. By operating elevation of the extension this drum the elevation of of the discharge pipe may the extension of the dis-be varied as desired. ' charge pipe may be varied as desired. What we claim in our in-What we claim in our vention is :— invention is :— (Then follow ten claims (Then ' follow fourteen of which the seventh, claims of which the first eighth and tenth only are and second only are in relevant to the case.) issue in this case.) 7. In a pneumatic stack-1. In a pneumatic stack-er, a discharge pipe, a er, a discharge pipe, a tele-sectional telescopic elbow, scopic elbow made in and arms connected to the three sections and arms sections and pivoted to-connected to the sections gether at a point substan-and pivoted together at a tially coincident with the point substantially co-inci-centre from which the dent with the centre from curve of the elbow is which the curve of the struck, in combination elbow is struck ; in com-with means connected bination with means con-with the elbow for adjust-nected with the elbow for ably collapsing or extend-adjustably collapsing or ing the section at will, sub extending the sections at stantially'as described, will, substantially as described. 8. In a pneumatic stack-2. In a pneumatic stack-er, a discharge pipe, a tele-er, a discharge pipe, a telescopic elbow made in three scopic elbow made in three sections and arms con-sectiàns, and arms connected to the sections and nected to the sections and pivoted together at a point pivoted together at a point
24 EXCHEQUER COURT REPORTS. I VOL. X. 1905 substantially co-incident substantially co-incident INDIANA with the centre from with the centre from MANuFAc- which the curve of the which the curve of the TURING CO. elbow is struck, one of the elbow is struck in combi-SMITH. end sections being slotted nation with means con-to embrace the arm of the nected with the elbow for Reasons for Judgment. centre section when the adjustably collapsing or elbow is collapsed, in com-extending the sections at bination with means con-will, and means for limit-nected with the elbow for ing the extension move-adjustably collapsing or ment of each section, sub-extending the sections at stantially as described. will, substantially as described. 10. The tenth claim is identical in terms with the eighth with the addition of the following feature " and means for limiting " the extension movement " of each section," substantially as described. It will be observed that the differences between the descriptions of the inventions in the two cases and of the claims made are very slight indeed. Tn the first specification the middle section as described and shown is carried by a single arm so located and connected with that section that it was necessary to have a slot in the upper section to permit the latter to pass over or telescope the middle section. That slot is described and claimed as being something necessary and essential. The drawings attached to the second specification show a different location of the arm whereby the necessity of the slot is obviated ; and the elbow when extended does not present an opening through which dirt and small straws might when the stacker is being operated be discharged. That change or improvement in the mode of attaching the arm to the middle section of the elbow is not described in the second
VOL. X.1 EXCHEQUER COURT REPORTS. 25 specification; but as stated it is shown in the drawings 1945 attached thereto. The claim in the second patent is INDIANA MANUFAC- limited to a telescopic elbow made in three sections TowNo co. while in the seventh claim of the first patent the claim SMITH. is made for a sectional telescopic elbow without any Seasons for reference to the number of such sections. But in. the Judgment. specification it is. stated that this elbow is made in three sections, and it is so shown in the drawings. There is no difference' between the two patents in this respect, or so far as they are in question in the action; in any other respect than that which has been pointed out. And with reference to this difference between the second patent and the first it was not at the time a new thing to so connect the supporting arms of an adjustable or telescopic elbow to the sections thereof that such slots as those mentioned were unnecessary. • An illustration of a similar attachment or connection of the supporting arms with the sections of the elbow is to be found in the United States Patent numbered 396,773 granted on the 29th of January, 1889, to Lyman Smith for useful improvements in adjustable curved pipe sections or elbows But in this case the plaintiffs company derives its title to the invention through an assignment from the defendant Harry Ward. Smith and the latter is estopped from setting up or showing that he and his brother were not the first or true inventors of the alleged invention or that it is not new or useful, or that there was no invention or that the specification was not sufficient. It was contended that he could not give evidence of the state of the art or manufacture so as to narrow or limit the construction of the patent. The contention is not of any considerable importance in. this case as the first patent, the particulars of which were known equally to both parties to the transaction, shows sufficiently at what stage the manufacture of
26 EXCHEQUER COURT REPORTS. (VOL. X. 1905 pneumatic stackers had arrived. But I have seen no INDIANA reason to modify in any way the view that I expressed MANUFAC- TURING Co. on that point in the action between the sanie parties Sa ' ITH. on the. earlier patent. (The Indiana .Wanufacturing Reasons for Go. v. Smith (1). In Hocking v. Rocking (2), Lord. Jndrrnent. Watson said "the appellant is patentee of the invention " which he is said to have infringed, . the respondents " having acquired the right to it by direct assignment " from him. He has probably been well advised in " abstaining from impeachment either of the novelty " and utility of the invention, or of the sufficiency of " the specification, and the case must therefore be dis-" posed of upon the assumption that the patent is in " all respects valid. But notwithstanding the peculiar " relation in which he stands to the respondent, he " cannot be held to have infringed it, if as he alleges " he has done no more than would have been permissi-" ble to any independent member of the public who " admitted the validity of the patent." An assignor of a patent, sued as an infringer by his assignees, is estopped from saying that the patent is not good ; but he is not estopped from showing what it is good for ; and that can only be done by reference to what was known at the time of his invention. In the present case there is however as has been suggested no difficulty on that point. The earlier patent assigned by the defendant to the plaintiff concludes everything but the narrowest possible construction of the claims of the second patent now sued on. Speaking generally, and omitting for the moment the minor distinguishing features, the combination is old, each element is old, and no new result is produced. But then in respect of one of the elements there is a change of form that is said to possess some merit. The supporting arm or arms (as the case may be) of the (1) 9 Ex. C. R. 154. (2) 6 R. P. C. 77.
VOL. X. J EXCHEQUER COURT REPORTS. 27 middle section of the elbow is or are so connected 1905 therewith that a slot in the adjoining section is avoided. INDIANA MANIIFAC- • That is all. It may be that as between the plaintiff TURING Co. and any other person who disputed the validity of the SnTx patent it would be impossible on, these facts to sustain ra; the patent. That is not the question here and I Judgment . express no opinion as to it. But as against the defend s ant, or any person who admitted the validity of the patent it must be taken to be good for a combination of the features mentioned of which that is one. What is it, then, that the defendant has done ? He has manufactured pneumatic stackers in which he has used a discharge pipe, a telescopic elbow made in three sections with arms connected to the sections and pivoted together at a point substantially co-incident with the centre from which the curve of the elbow is struck, in combination with means connected with the elbow for adjustably collapsing or extending the • sections at will and means for limiting the extension movement of each section. And the supporting arms connected with the middle section of the elbow are so located and arranged that the slot mentioned in the earlier patent is not necessary. As has been observed the specification itself does not show how this is to be done, and it is not clear, I think, whether the drawing shows one arm attached to the lower and inner part of the section or to a ring passing round the section ; or two arms passing round the lower part of the section in the form of a bail as it was called. So far , as I can see the drawing shows either a ring with one arm or a bail with two ; bût after all the difference is not important. There is not, it seems to me, a sufficient difference of construction to enable the defendant to escape no matter how narrow) y the claim is construed.
28 EXCHEQUER COURT REPORTS. [VOL. X. 1905 It is argued, however, that the question is concluded INDIANA by the former action to which reference has been made. MANUFAC- TURING co. That is not my view of the matter. The present action v. SnIITN. is brought upon a different and later patent ; which if Reason, f or good is good for something that was not granted in the ana~ult. former patent. It is not possible under these circumstances, it seems to me, for the issues to be the same ; and as a matter of fact they are not the same. In the earlier case there was a feature in one of the elements that the patentee had declared to be essential and necessary that he was not then using. The particular mode of constructing the elbow has been altered so that this feature is omitted, and its omission is claimed to have, and appears to have, some advantages. A patent has been granted which in respect of this elbow cannot be distingushed from the earlier patent except in respect of this feature, and because of the relation of the parties it has to be he taken to be true, whether it really be true or not that the patent is good. The defendant has manufactured pneumatic stackers in which he uses a telescopic elbow constructed in accordance with the second patent. That question was not in issue in the first suit and is not concluded. No evidence was offered on the other defences set up. There will be judgment for the plaintiff company with the relief that it is usual to grant in such cases, but the relief must be limited to the particular thing or part of the stacker in controversy and to its manufacture, sale or use in the particular form described. And there will be a reference to take an account or to assess damages, and the plaintiff will have its costs. Judgment accordingly Solicitors for plaintiffs : Hogg 4. Magee. Solicitors for defendants : Masten, .Starr 8 r Spence.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.