Scottish Court of Session Decisions

On 3rd November 1904 the Mica Insulator Company, Limited, London, manufacturers of and dealers in mica segments, cut mica, and micanite, raised an action against Bruce Peebles & Company, Limited, engineers, Edinburgh, in which the pursuers concluded (1) for £500 damages for breach of a contract of sale, whereby the defenders had bound themselves to purchase their whole supply of mica segments, micanite segments, and cut rectangular mica for the year 1904 from the pursuers; (2) for interdict against the defenders from “infringing the letters-patent No. 10,430* A.D. 1892 for ‘an improvement in electrical insulating sheet,’ and No. 6048* A.D. 1895 for ‘improvements in the manufacture of flexible sheets for electrical insulation,’ of which the pursuers are the registered proprietors, by making, vending, or using, in whole or in part, the said inventions for ‘an improvement in electrical insulating sheet,’ and ‘improvements in the manufacture of flexible sheets for electrical insulation’ described in the specifications relative

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to the said patents, dated 28th January 1893 and 20th December 1895 respectively, as amended in accordance with the decisions of the chief examiner, dated 2nd August 1904 and 27th August 1904 respectively, and in particular from making, vending, or using any micanite or electrical insulating sheets or flexible sheets for electrical insulation, constructed or used in the manner described in the said amended specifications, or either of them, or in manner substantially the same, and from infringing the said letters-patent in any other manner of way;” and (3) for decree ordaining the defenders “to exhibit and produce a full and particular account of the whole micanite electrical insulating sheets or flexible sheets for electrical insulation made, or which during the dependence of this action they may make, in infringement of the said letters-patent or either of them, and of the whole micanite and others as aforesaid made in infringment of the said letters-patent or either of them, bought by the defenders from persons other than the pursuers, and to pay to the pursuers the sum of £500, with interest thereon at the rate of 5 per centum per annum from the date of citation to follow hereon until payment, as the damages sustained by the pursuers through the defenders' infringement of the said letters-patent or either of them.” …

The pursuers stated—“(Cond. 1)… The pursuers manufacture in accordance with said patent of 1892 a substance which is sold by them and known in the trade as ‘micanite,’ and in accordance with said patent of 1895 a substance which is sold by them and known in the trade as ‘extra flexible micanite cloth’ or ‘extra flexible micanite paper.’ The pursuers have the sole right of making and selling the same. The terms ‘micanite’ and ‘extra flexible micanite cloth’ are hereafter used in this condescendence as conveniently expresing the name of the material or substances particularly described in the amended specifications of said letters-patent respectively.”…

They further stated—“(Cond. 5) The pursuers further believe and aver that the defenders have been manufacturing and continue to manufacture ‘extra flexible micanite cloth.’ In manufacturing the said micanite and extra flexible micanite cloth as aforesaid, the pursuers have used and employed the inventions protected by the said letters-patent, or one or other of them, and described in the amended specifications relative thereto, and have infringed the said letters-patent or one or other of them. The pursuers further believe and aver that since the beginning of 1902 the defenders have been purchasing from other persons micanite and extra flexible micanite cloth made in contravention and infringement of the said letters-patent, or one or other of them, and have thereby infringed the same. In particular, they believe and aver that at various dates during said period the defenders have bought from one Brandt in Hamburg, and used in their machines in Scotland, micanite made in contravention of said letters-patent, and have purchased from the Bergman Electricitats Gesellschaft of Berlin machines insulated in infringement of said letters-patent, and sold them to various persons in England and Scotland.”

The defenders admitted that prior to 1904 they had purchased from Mr Brandt, and that they had purchased from the Bergmann Company, and they called on the pursuers to specify the points in which they had infringed the said patents. They pleaded, inter alia—“(1) The pursuers' averments are irrelevant and lacking in specification, and ought not to be remitted to probation.

By interlocutor of 27th March 1905 the Lord Ordinary ( Stormonth Darling) repelled the first plea-in-law for the defenders, and allowed the parties a proof of their averments.

Opinion.—“The defenders plead that the pursuers' averments are irrelevant, and lacking in specification, both as to their claim of £500 of damages for breach of the contract of sale, and their claim of £500 of damages for infringement of patent. As to the first claim, they say that a contract to purchase their whole supply of mica segments and similar articles during a particular year does not debar them from manufacturing the articles for themselves, which is the main part of the pursuers' complaint against them. Perhaps so, but the pursuers go on to say (Cond. 4) that the ‘defenders have also been buying mica and micanite from persons other than the pursuers, whose names are unknown to the pursuers.’ I see no objection to the relevancy of this averment. If true, it would constitute a breach of contract, and the defenders can hardly complain of it as wanting in specification, because it is a fact within their own knowledge.

“As to the second claim of damages, it certainly comes to a very narrow point, because the two patents said to have been infringed were each made the subject of amendment (it is not said whether ‘by way of disclaimer, correction, or explanation,’ but it must have been by one or other) in August 1904. Now, this action was raised on 3rd November of that year, and therefore there were only ten or twelve weeks during which damageable infringement can have taken place without the patentee undertaking an almost prohibitory onus of proof under the 20th section of the Act of 1883. I can hardly suppose that the pursuers, knowing this, seriously intend to undertake that onus, and if not, the period of available infringement is so short that the defenders cannot be put to any real disadvantage in not being told more particularly the occasions when they are said to have used the pursuers' processes in manufacturing their own machines. But I cannot say that the pursuers are absolutely debarred by the statute from undertaking if they please the onus which section 20 lays upon them, and therefore it is formally open to them to prove infringement from 1895 downwards. The rather vague nature of the averments in Cond. 5 is, I

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think, to be excused by the fact that the thing complained of is, not sale of this or that article, but use of the patented processes in the defenders' own works. The real question between the parties, so far as I see, will thus come to be whether the patents are good, and cover the sheets for electrical insulation used by the defenders.

“I will therefore repel the first plea for the defenders, and allow a proof on a day to be fixed.”

The defenders reclaimed, and in the course of the debate in the Inner House pursuers counsel tendered a proposed amendment of Cond. 5, to make it read as follows:—“The pursuers further believe and aver that since 27th August 1904 the defenders have been manufacturing and continue to manufacture ‘extra flexible micanite cloth.’ In manufacturing the said ‘micanite’ and ‘extra flexible micanite cloth’ as aforesaid the pursuers have used and employed the inventions protected by the said letters—patent respectively, and described in the said amended specifications relative thereto, and have infringed the said letterspatent. The pursuers further believe and aver that since the 27th August 1904 the defenders have been purchasing from other persons,” &c., as above set forth in the original Cond. 5. This amendment was embodied in a minute which the Court allowed to be received.

The defenders and reclaimers argued—It was admitted that the Lord Ordinary was right in allowing a proof on the averments of breach of contract. But as to the averments of infringement of patent, it had been decided that “micanite” could not be protected by letters-patent— The Mica Insulator Co. v. The Electrical Co., Limited, 15 Patent Cases Reports 489—and the averments of infringement were irrelevant as lacking specification. The pursuers therefore were not entitled to proof. Section 20 of the Patents, Designs, and Trade-Marks Act 1883 dealt with damages for infringement of amended patents, and prescribed that where a patent had been amended no damages were to be given in any action in respect of use before the amendment, unless the patentee proved that his original claim was framed in good faith and with reasonable skill and knowledge. No averments to this effect were present on record. Nor had particulars of the breaches complained of been put on record in terms of section 29, (1). Such averments were necessary in terms of the Act, and as notice to the defender to procure evidence of skilled persons— Neilson v. Househill Coal and Iron Company, November 15, 1842, 5 D. 86, 2 Bell's. App. Cas. 1; Kerr v. Clark & Company, November 4, 1868, 7 Macph. 51, 5 S.L.R. 736; Hutchison, Main & Company v. Patullo Brothers, May 24, 1888, 15 R. 644, 25 S.L.R. 519. There was no distinction between the law of England and that of Scotland as to the necessity for particulars, and sec. 29 (1) was of as binding a nature in the latter as in the former country. The case of Neilson v. Househill Coal and Iron Company, ut supra, however, decided that in a case in Scotland the particulars could not be given at a later stage than the record.

Argued for the pursuers and respondents—The Lord Ordinary's judgment should be affirmed. The averments were sufficiently specific. There were two sorts of infringement complained of, viz., manufacturing and purchasing from foreign manufacturers. The case of Mandleherg v. Morley, June 21, 1893, 10 Patent Cases Reports 256, had decided that manufacturers were not entitled to such detailed particulars as a person who only sold infringing articles since they knew what processes were carried on in their own works. Nor was any special averment necessary to show that the original claim was framed with reasonable skill and knowledge. That might be taken from the evidence given at the proof— Hopkin-son v. The St James and Pall Mall Electric Light Company, Limited, March 15, 1893, 10 Patent Cases Reports 46.

At advising—