460 EXCHEQUER COURT REPORTS. [VOL. IX. Between 1905 P. M. SHARPLES AND HERBERT PLAINTIFFS ; Mas McCORNACK AND THE NATIONAL MANUFACTUR- ING COMPANY, LIMITED DEFENDAN7s. Canadian Patent No. 78,151 for steadying device in cream separators— Improvement on. old device -- Narrow construction—Application for writ of sequestration to enforce compliance with judgment. The invention in questidt consisted in the substitution of an improved device for one formerly in use as part of a machine, (in this case a tubular cream separator). Held that the patént must be given a narrow construction and be limited to a device substantially in the form described in the patent and specification. [In this case the plaintiffs after judgment applied for a writ of sequestration to enforce compliance with injunction restraining further infringement by the defendants of the patent in question. The writ was refused.] THIS was an action claiming an injunction and damages from the defendants for an alleged infringement of Canadian patent No. 78,151 for an improved steadying device to be used in centrifugal machines. The facts of the case are stated in the reasons for judgment. March 16th, 1905. The case was heard at Ottawa. • C. H. Masten, for the plaintiffs, contended that the issue of anticipation must be found for the plaintiffs. As soon as the steadying device was perfected the patent was applied for in Canada. The " iron drag" was not an anticipation, and the " brass drag" was patented as soon as it was found to fulfil its function
VOL. IX j EXCHEQUER COURT REPORTS. 461 as a frictional steadying device for use in cream sepa-iŸ rators. By this device the tendency of the suspended SIIARPLES bowl of the separator to wobble when the machine is TAE run at high speed is reduced to a minimum. The M A T rrun c spring instead of a weight to overcome inertia, together TURING Co. with the lateral movement in a horizontal plane of Argument the socket in which the spindle is inserted, consti- tutes the essence of the plaintiff's invention. The defendants' drag is the same in purpose and construc- tion. We were the first to use a spring to create. friction for the purpose of overcoming inertia in the construction of cream separators, and our patent should be protected. We have not contravened. section 37 of The Patent Act either in respect of non-manufacture or improper importation. The price of $85 demanded for our patented invention was reasonable under the circum- stances in evidence. (Anderson Tire Company v. Ameri- can Dunlop Tire Company (1) ; Hambly ilson (2) ; Power v. Griffin (3). W. White, X.C., (with whom was F. B. Fetherston-haugh and G. Delahaye) for the defendants, argued that there was a clear anticipation of the "brass 'drag" . device in the "iron drag" that is now the property of the public. The top bearing claimed in plaintiff's patent is not only found in the " iron drag" but is frequently used in centrifugal machines. The Ameri-can patents issued to Klots, and Morrison, and produced in evidence, also anticipated the plaintiff's patented device. The " iron drag" is as much within the specification of the plaintiff's patent as the " brass drag." Again, spring devices were in use for the purpose of producing friction before the plaintiffs' patent. The Morrison patent in evidence shows them. (1) 2 Ex. C. R. 576. (2) 5 Ex. C. R. 82. (3) 7 Ex. C. R. 363 ; :33 S. C. R. 39.
462 EXCHEQUER COURT REPORTS. [VOL. IX. 1905 The plaintiffs have not manufactured all the parts of SHARPLES the combination patented by them ; they only make the THS, lower bearing. All the parts must be manufactured NATIONAL t MANUFAC- o comply with the terms of sec. 37 of The Patent Act. TURING Co. The plaintiffs' test book shows that they manu- Rea for Judgment. factured the lower bearing after the time allowed by law for expel imental user, and so it became public property. The refusal of the plaintiffs to sell the patented invention at a reasonable price is fatal to the patent. Mr. Masten replied THE JUDGE OF THE EXCHEQUER COURT now (May 8th, 1905,) delivered judgment. The action is brought to restrain the defendants from infringing Letters Patent, numbered 78,151, granted on the 11th day of November, 1902, " for alleged new and useful improvements in shaft mounting for centrifugal machines, &c." and for an. account and damages for infringement thereof. The invention, as described in the specification, , relates to improvements in the mounting of rotary machinery of high velocity ; and particularly of centrifugal machines having rapidly rotated drums, in which to subject material loosely carried therein to the centrifugal action developed by rapid rotation. In this class of machinery, to use the language employed in the specification, peculiar nicety of adjustment of the supporting mechanism to particular conditions is required in order to secure satisfactory operation ; extraordinary speed of rotation being combined with a varying weight of mobile matter; the slightest shifting of which, or the development otherwise of any undue influence, tending to more or less seriously interfere with the proper operation of the machine. The object of the invention, as stated in the specifica- •
VOL. IX.] EXCHEQUER COURT REPORTS. .463 tion, is to so construct and arrange the rotary shaft or 1905 drum and its bearings as to provide. for an automatic SHARPLES V. adjustment of the same to correspond with or correct THE any variations of the mechanical axis, from the natural NATIONAL 1VTAN IIFAC- axis of rotation ; and to this end the invention. consists, TI7RING CO. it is alleged, first, in certain improvements in the sup-Reasons for Judgment. porting bearing whereby the axis of the shaft may be shifted under stress, though constantly tending to return to normal; secondly, in providing a flexible spindle adapted to readily bend under stress developed during rotation, so as to permit the rotating mass to adjust itself to the natural axis of rotation when said axis does not coincide with the normal mechanical axis of the shaft ; thirdly, in providing a non-rebounding frictional steadying device adapted to limit and stop any swaying movement of the drum or shaft ; and lastly, in the combination of these several features to effect jointly the corrections called for by the disturbing forces occurring during rotation. There are eleven claims made by the inventor, of which the plaintiffs in this action rely upon the first, second, third, fourth, fifth and: ninth. The latter claim, which for the purposes of this case, may be taken as including the others, is made in these terms :---- " The combination with a shaft and a suspension bearing therefor, of a non-rebounding laterally movable friction steadying device arranged to contact with the depending portion thereof when the latter is swayed from the normal axis of rotation." So far the language is general and relates to centrifugal machines of all kinds. But the invention was made in experimenting with cream separators, and the only use to which it has as yet been put is in the manufacture of such separators, the different elements. or features described and shown in the drawing attached to the specification, constituting both_ sepa-
464 EXCHEQUER COURT REPORTS. [VOL. IX. 1905 rately and in combination parts of a complete cream SHARPLES separator. It is in that aspect of the case only that TrE the invention comes under consideration in this case. MANUFAC• No attempt has been made to sustain the first or TURING Co. second features of which the invention is said to cou- aeaso Judgment. silt. The issues have been confined to the third ___~. feature, the frictional steadying device, and to the latter in combination with the other features described. Prior to the invention now in question the plaintiff, P. M. Sharples, had manufactured and sold cream separators, in which all the elements or features now claimed appealed, including "a frictional steadying device adapted to limit and stop any swaying movement of the drum or shaft ;" and these were arranged, or combined, if that term is preferred, in the same way as the corresponding parts in the present invention are arranged or combined. In the steadying device or drag first used the result obtained was due to the inertia and weight of the drag moving upon a horizontal plane. In the improved form of the device, its weight was so reduced as to be a matter of no consequence, while a spring was used to give the necessary frictional resistance. There is some question as to whether the former was also a " non-rebounding frictional steadying device" ; but it seems to me that it was, the difference being only one of degree ; but yet a difference in degree so great that a very much better result is obtained. For the earlier improvements made by the plaintiffs in cream separators no patent was taken out in Canada within the time limited therefor ; so that when the application was made in Canada for the present patent the public here had a right and were free to make and use tubular cream separators in which all the elements or features or parts described in the present patent existed and were arranged or combined in the same way. What
VOL. 1X.] EXCHEQUER COURT REPORTS. 465 was at the time new, and not open to the public was 1905 the improved form of the steadying device, which is SAARPLEs spoken of in the evidence as the brass drag. Now THE' with regard to the issues ~ as to novelty, subject matter NA IA TI ONAL N OFA 0 L and utility, it is immaterial whether the invention is TURING Co. taken to consist, in the improved form, of this steady- Reaeonei for J nflginen t. ing device, or of the latter in combination with the — other elements or features described. In either view of the matter these issues should, I think, on the evidence in this case, be found for the plaintiffs, and I so find. Then, there are allegations that the patent in ques- tion is void, and should be so declared :- 1. For failure to manufacture the invention in accordance with the statute ; 2. For the importation of the invention contrary to to the statute ; 3. For refusal to sell it to the defendants, on request, at a reasonable price. With regard to these questions it is a matter 'of some importance to come to a conclusion as to what the invention covered by the patent really was. It is clear of course that it was not a cream separator, of which the improved steadying device, either alone, or in combination with the supported shaft or drum, formed part. And then, with regard to the alleged combination of the steadying device with the tubular drum having a suspension bearing, there is nothing new except the particular form of the steadying device, and all the rest is old both as to form and arrangement. And whether the steadying device is considered as itself a part of the separator or machine, or as a feature of a combination that formed a part of such separator or machine, the invention consisted, it seems to me, in the substitution of one steadying device for another, and that the patent, if it is to be
466 EXCHEQUER COURT REPORTS. VOL. TX. 1905 sustained, must be given a narrow construction and SIIARPLtS be limited to the use of a steadying device substan- V. THE tially in the form described. In the present action NATIONAL MANUFAC• no attack is made u p p on the validity of the patent on TURING Co. the ground that more is claimed than the inventor Reasons for was entitled to claim, and nothing stands in the way Judgment. of holding it good in respect of the improvement mentioned. And if it be limited to that there are no grounds for declaring it void either for importation contrary to the statute or for failure to manufacture it in Canada, in accordance with the statute. But not only must an inventor, or his assignees, after the lapse of the period prescribed by the statute, carry on in Canada the manufacture of the invention patented, he must also do this in a manner that any person desiring to use it may obtain it or cause it to be made for him at a reasonable price. (The Patent Act, s. 37 (a)). When the time had arrived for the plaintiff Sharples . to manufacture the invention in Canada, the defendants, who are also manufacturers of cream separators, applied to his agents to have the invention made for them at a reasonable price for use in their business, and there was correspondence and negotiation on the subject. What the defendants wished to purchase were the brass drags or steadying devices. All the other parts of a tubular cream separator were free to the public, and to them as a part of that public, and it was also open to them to use the same in connection with a steadying device, provided the latter was not an. infringement of the device covered by the plaintiffs' patent. The negotiation, however, was carried on in general terms, the defendants asking for the article covered by the patent and the plaintiffs naming a price for that article. In the conclusion the plaintiff Sharples, through his solicitor, offered on receiving an order with a satisfactory guar-
VOL. IX. I EXCHEQUER COURT REPORTS. 467 antee of payment, to cause to be made for the defend-}9fl5 ants the patented invention as shown in the drawings sHARPZES and specification (excepting the supporting frame and 7LE the feed tube) at the price, on au order for one hundred ANUF aL and twenty, of thirty-five dollars a piece. The price TURING CO. did not suit the defendants and nothing more came of !Loda f the negotiation or offer. Now, in the view I have taken of this case, what the plaintiff Sharples offered to furnish, and for which a price was named, included • a good deal more than the invention for which -the patent can be sustained. At the same time it was, I think, reasonable for him to take the view at the time that the patent covered what he offered to sell at the price named. And I am not 'prepared to say that the -. price asked for the parts of a tubular cream separator shown in the drawings attached to the patent (exclud- ing the frame and feed tube) was, under the circum- stances, an unreasonable price, especially as there was nothing vary definite as to the size of machine for which the parts were needed ; and that being so, I do not think the case is one in which the patent should be declared void for failure • to sell for a reasonable price, there being a bond fide controversy, not free from doubt or difficulty, as to what the thing was that the patentee was bound to manufacture and furnish. Then with regard to the issue as to infringement, it is conceded that the second steadying device or drag that the defendants used, which is 'shown and illus- trated by Exhibit No. 14, was an infringement of the plaintiff's' device, if as to that the pat ent is, as I think it is, sustainable. With regard to the form of a steady- ing device exemplified by Exhibit No. 17, which may be briefly described as a ball moving in a socket, I have seen no reason to change the conclusion that I formed at the hearing that it is not an infringement. With respect to the form of a steadying device or drag
468 EXCHEQUER COURT REPORTS. L VOL, IX. 1905 shown and illustrated by Exhibit No. 16, and now in S1ARPLEs use by the defendants, I am of opinion that in that V. THE form, and constructed as that is, it is an infringement. m It is argued that it is merely the reverse of No. 17, Axo nc TURING Co. being a socket moving over the surface of a ball. But S Jn ea d ~m r i e e a n n n t. r actual test of No. 16 will show that the contact ring into which the hollow spindle is inserted is so constructed as to have under pressure a lateral movement bodily in what approaches a horizontal plane, and substantially in the same way and manner as the device mentioned in the plaintiffs' patent may be moved, And otherwise the two devices are very similar. It is said that this is due to the faulty construction of the particular device. That matter cannot at present be determined. The facts will no doubt be brought out on the reference that will be directed. So far as those in use are so constructed as to have under pressure a lateral movement bodily in what is substantially a horizontal plane, instead of a movement about an imaginary or fixed point as in the case illustrated by Exhibit No. 17, they will be taken to bi infringements of the plaintiffs' device. There will be judgment for the plaintiffs ; and an injunction to restrain the defendants from infringing the plaintiffs patent No. 78,151, as herein construed ; also a reference to the registrar of the court to ascertain the damages. The plaintiffs are also entitled to their costs. Judgment accor.hnn ly. Solicitors for plaintiffs : Masten, Starr Spence. Solicitors for defendants : Delahaye & Reeves. . On the 10th day of July, 1905, the plaintiffs moved for an order directing a writ of sequestration to issue
VOL. IX.] EXCHEQUER COURT REPORTS. 469 against the defendant company for an alleged. con; 1905 tempt of court in continuing to infringe the plaintiffs' SHARPL.Es• patent after the order for an• injunction restraining 'j such infring b e ment had been entered. NATIONAL . MANUFAC- C. H. Masten in support of the motion ; TURIN(} Co. G. Delah aye, contra. Reasons for J udgment. On the 4th day of October, 1905, THE JUDÔE OF THE EXCHEQUER COURT dismissed the motion for sequestration, with costs. The learned judge filed the following reasons for his judgment upon such motion. This is an application for an order take out any patent in Canada, and of sequestration against the defen- it became in Canada public proper-dant company for a-n alleged con- ty. Later they obtained in Canada tempt in disobeying an injunction a patent that was held in this court granted on the 8th day of May last, to protect an improved form of whereby the company was restrained such device ; and an injunction was from infringing a certain patent of granted restraining the defendant the plaintiffs for useful improve- company from infringing the patent mente in shaft mounting for centri- in that respect. fugal machines; or in the alternative On the trial of the action three for an order that a writ of attach- forms of such steadying devices or ment should issue against certain drags that the defendant company officers of the company for such con- had made and used were exhibited, tempt. and marked respectively No. 14, The plaintiffs and the defendant' No. 16 and No. 17. All bore a close company are manufacturers of tubu- resemblance to that made by the lar cream separators, the former in • plaintiff Sharples under the patent the United States of America, the then in question. It was .conceded latter in Canada, The company in that No. 14 constituted an infringe-establishing its business in Canada ment, if the patent were good and has followed very closely in the covered the device or drag made by plaintiffs' footsteps and makes in Sharples. It was held that No. 17 Canada cream separators that do not was not an infringement, and with differ in any material respect, other respect to No. 16 it was held that than that to which reference will when constructed as the one before be made, from those manufactured the court was, it did infringe, the in the United States by the plaintiff test applied being whether the con-Sharples. So far as the art has as tact ring in which the hollow spindle yet proceeded, it is necessary in was inserted was so constructed as making a tubular cream separator to have Under pressure a lateral to have a steadying device or drug bodily movement in what approa-adapted to limit and stop any sway- ched a horizontal plane, and cubing movement of the drain or shaft stantially in the same way and man-of the separator. For the first stea- ner as the device • mentioned in the dying device or drag of that kind plaintiffs' patent moved under like used by the plaintiffs in making tu- pressure. bular cream separators they did not The present application is made
470 EXCHEQUER COURT REPORTS. [VOL. 1X. 1905 upon two grounds :—First, on the have not been able to come to that ground that since the order for the conclusion. If I had I should have SH'R,PL1 S injunction the defendant company held that the drag illustrated by Ex-v. THE has sold separators containing stea- hibit No. 17 was also an infringe-NATIONAL dying devices or drags identical with ment. In view of the well known MANUPAC- those that were held to be infringe- use of springs for like and similar TURING Co. ments of the plaintiffs' device ; and purposes it does not appear to me Reasons for secondly, that the company has that the defendant company, in Judgment. since the hearing and judgment making such a drag or device, is adapted another form of such device precluded from using a spring. An or drag that is, it is argued, an in- examination of the device now under fringement of the plaintiffs' patent, consideration will show that the and within the terms of the injunc- contact ring in which the hollow lion order mentioned. spindle of the drum or shaft is in- With regard to the first ground sorted has not under pressure a late-mentioned, I do not think that any rat movement bodily in a horizontal sale has been so brought home to plane as the plaintiffs' device has. the company or to any of its officers It is capable of a lateral movement, as to justify the conclusion that not in a horizontal plane, but about there was any wilful disobedience an imaginary fixed point. The spring of the order of the court. The no doubt restrains that movement plaintiffs will not in that behalf be or rotation to some extent by increas-without a proper remedy, and for ing the friction between the contact the rest the case is not one which ring and that which encloses it, but calls for the exercise of the authority the spring has another office which of the court to punish for contempt. is directly opposed to the object Then with regard to the new stea- aimed at in the plaintiffs' device. dying device or drag used by the As the contact ring in the defen-defendant company there is, as there dant's drag is moved the spring is was in the eases illustrated by Exhi- compressed on one side and extend-bits No. 14, No. 16 and No. 17 re- ed on the other, and in that way ferred to, a very close resemblance the spring, according to its strength, in appearance between it and that operates or tends to cause the con-made by the plaintiff Sharples under tact ring to return to the position his Canadian patent. The same oh- from which it was moved. To that ject is obtained in much the same extent the defendant's is a " rebouu-way. But that is in this case no ding " device, not a, " non-rebound-objection, for the same might be said ing " device, as the plaintiffs' is. of the first steadying device or drag If the plaintiffs' device covered by used by the plaintiffs, which is now their patent had been the first to be free to the public. The improve- used I should not have thought that ment in the device covered by the the differences I have pointed out plaintiffs' patent lies in the use of a were material. I should have had spring to create the necessary fric- no hesitation in holding both the tion, instead of relying for that pur- device illustrated by Exhibit No. 17 pose on the weight of the drag ; and and that now in question to be in-if that is to exclude anyone from fringetnents of the patent. But it using a spring for any purpose was not, as has been seen, the first in constructing such a drag or to be used, and it is necessary to give device, then I should think that the the patent a narrow construction if defendant's present device is an in- it is to be upheld at all. The plain-fringement of the plaintiffs'. But I tiffs by not obtaining in Canada a .~..~— • ,me-
VOL. IX.] ' EXCHEQUER COURT REPORTS. patent for the device first used by plaintiffs' footsteps, . as long as it them gave or dedicated all that was does not invade their rights, It is involved in, or incident to it, to the in that way that manufactures in- Canadian public, and what they have crease and commerce grows. It is given, and the public has thereby open to the defendant to adopt any acquired, the defendant company is modification of the device first used free to use. The plaintiffs cannot that does not infringe the particular now detract from their gift by oh- form or improvement covered by the tainin g apatent for an impr P o ved plaintiffs'patent. In myview the form of such device. The patent is device now used by the defendant good only for the particular form of company, and. complained of on this device described in the patent. And application, is not an infringement it is no just reproach to the defen- of that patent. dant company that it follows in the Thé application is refused, and with costs. 471 1905 SHARPIES THE NATIONAL. MANUFAC-TURING Co. S easons for ~nagment. —
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.