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Hayward v. Hamilton
Hayward v. Hamilton
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Lawsuits: 1 of 2

Hayward v. Hamilton.

[1879-81. Not reported. (For the notes of this case I am indebted to T. Aston, Esq., Q.C.)]

Subject matter—Anticipation.

The plaintiffs were the registered proprietors of letters patent granted the 31st day of July, 1871, No. 2074, to Edward Lambert Hayward, for "improvements in pavement lights." The specification stated, "Pavement lights are commonly used to cover the areas in front of windows in the basements of buildings, and the object of my invention is to construct them that they may not simply allow the light to pass through, but that they may also direct the light in an inclined direction into the rooms it is desired to light. For this purpose I glaze the frame of the pavement light with glass which is moulded so as to be of a prism-like form on the under, resembling to some extent in this respect the glasses which are often inserted into ships' decks to give light below. The form and arrangement of the prism is, however, entirely altered in order that the light may be thrown forward in one direction, as already stated. One of the sides of the prism is upright, or nearly so, and the other side is inclined to it at such an angle that the light passing through the upper surface may strike this inclined side, and be reflected, or nearly so, within the prism, and issue from the upright, or nearly upright, side in the direction required. The sides of the prism may be flat or curved in an horizontal plane. I usually form the glasses to glaze pavement lights hexagonal on the upper surface, and fit them into an iron frame with corresponding hexagonal cells, but the glass may be made rectangular or of another form on the upper surface." The specification went on to describe the figures which showed various forms for the prism: in fig. 2 and also in fig. 5 two angles of the slanted sides were given. Claim: "The construction of pavement lights, substantially as described."

The defendant was working under a patent dated the 22nd Sept., 1877, No. 3574. This action was brought in the Queen's Bench Division and the issues raised (inter alia) were novelty and subject matter. At the trial before Hawkins, J., the jury (18th Nov., 1870), found:—

  1. That having regard to the state of knowledge at the date of the patent it was not a new thing to form and arrange a prism so that the light might be thrown forward in one direction by making one of the sides of the prism upright, or nearly so, and the other side inclined to it at such an angle that the light passing through the upper surface may strike the incline side and be reflected completely, or nearly so, within the prism, and issue from the upright, or nearly upright, side in any required direction.
  2. That having regard to the prisms described in the plaintiff's specification and shown in his drawings, and especially to the operative parts thereof, use in the transmission of light, the defendants used a glass light having the same operative parts for the transmission of light.
  3. That the defendants had infringed the plaintiff's patent.
  4. That it was a new thing to glaze pavement lights as the plaintiff had done.

The plaintiff on these findings moved for judgment before a Divisional Court (Pollock, B., Hawkins, J.). The defendants moved at the same time for a new trial on the ground that the verdict was against the weight of the evidence on the ground that one Darker had anticipated the plaintiff's patent. Darker's evidence was to the effect that he being a skilled optician had, in order to obtain selenetic designs, used prisms inserted in an aperture in the shutter of darkened rooms. He had in fact received the light on the angular face of the prism outside the shutter, but he further stated that the course of the rays of light was practically the same as in the plaintiff's prism. The Court entered judgment for the plaintiff and refused a new trial.

Appeal to the Court of Appeal (Bramwell, Brett, Cotton, L. JJ.). Appeal dismissed.

BRAMWELL, L. J.—I think the plaintiff is an inventor. I think he has found out and manufactured and patented a thing, an article, namely, a light directing pavement light. I do not think there is any very great quantity of invention in it; it is not as though a man had sat himself down to consider how he could make a sewing machine, or a grain-pressing machine; it is a much humbler piece of invention than that, and it may possibly be nothing more than that the idea struck him, and immediately the idea struck him he could apply it or carry it into execution by a very obvious apparatus. But still it is an invention, and it is not the less an invention because it required but small inventive powers to enable him to do it. One may take an illustration in this way, the screw propeller: I suppose everybody knew that a screw used as it was would act in the way a screw propeller does; but the man who thought of it and applied it to a steamboat, which I suppose anybody could have done if the idea suggested itself to him, would have been called the inventor of a screw propeller or screw propelling steamboat, as the case may be. It does not depend upon the quantity of invention. Nor is it in this case the patenting of an idea. He does not say, "I thought of such and such a thing, and I claim a patent for it;" but he says, "I have thought of such a thing and I will show you how to carry it into execution," and therefore it is not open to any objection such as I have indicated: nor is it open to any objection in regard to the constituent parts of it being old. No doubt the prism as the plaintiff uses it is old, it is as old as the world that a prism used as the plaintiff uses it will direct light in the way his prism does, and the other part of his invention is not new, that is to say, the particular mode in which he makes his pavement light, but the combination is a novelty. The thing was never practised before, and undoubtedly a combination of two old things may be made the subject of a patent. It seems to me then that the plaintiff really is an inventor; he has found out something. He makes an article that was not made before. This particular case may be, no doubt upon the verge; but one cannot help making this remark, that it is very strange if it is no invention that it has never been done before. Why has it never been done before? Why, because nobody else found it out, which I take to be an equivalent to inventing, and I think, therefore, that his patent is sustainable. So much as to the first question. Then as to the infringement. That really is the most obvious thing in the world. I think it is a direct claim to do that which the plaintiff is doing.

BRETT, L. J.—I must confess that from an early stage I had very little doubt about this case. It seemed to me that the whole matter really depended upon what was the proper construction of the specification, and that if the specification did in truth claim a new machine, a new apparatus, or a combination, whichever you may please to call it, that then that combination was new, and it was palpable it had been infringed. If anything less than that new machine, made up of combined parts, was claimed by the specification, it seemed to me that the plaintiff's case must fail on several grounds, namely, that if less than the whole were claimed, that which was claimed was not new, and if less than the whole were claimed, there was no infringement. So that, according to my mind, the whole case practically depended upon what was the true construction of the specification, and of the claim. In my opinion the proper construction of that specification is that the plaintiff claims in it a new pavement light, made by combining together so as to make a new machine or a new apparatus, or a new pavement light, an old frame, an old flange, and perhaps an old prism, which old portions of the now apparatus or machine had never before been combined together so as to produce the machine claimed by the plaintiff. In order to support that proposition one ought to examine a little the specification, and the very first phrase in it is this: " This invention has for its objects improvements in pavement lights." What is a pavement light? A pavement light, as we have seen it, and as it is bought and sold, is a particular article. "Pavement lights," he says, and therefore pavement lights in one sense existed before, "are commonly used to cover areas in front of windows in the basements of buildings, and the object of my invention is so to construct them" (what is the word "them" referred to? why, pavement lights,) "that they may not simply allow the light to pass through, but that they (that is pavement lights again) may also direct the light in an inclined direction into the rooms it is desired to light."

The problem which he had to solve was this: it is to be a pavement light, and it is necessary therefore that the upper surface should be horizontal, should be level with the pavement; it is necessary that it should be made to a frame strong enough to hold thick glass, and so thick that people may walk upon it; and it seems that it must be necessary to have something in the shape of a flange to the glass. And the other part of the problem was to arrange a pavement light that it might "direct the light in an inclined direction into the rooms it is desired to light"—that is to say, that it might direct the light which falls vertically on this horizontal pane of glass so as to pass into rooms which are not under it. That was the problem in fact. In order to make the light effective in a room, it seems to me it must go nearly horizontally into the room, because if the window were so far below the pavement that the light had to go at anything like a large angle down, it would only light a portion of the room, and, therefore, this thing can only be really used where the window of the room is sideways, and where the top of the window is not much below the level of the pavement. Therefore, that gave him another datum line, which was that the side of the prism with which he was about to deal should be upright or nearly so. The problem he had to solve, therefore, was to construct a pavement light with the direction of two given lines in it, so as to throw the light sideways, and he states that to be the object. He says, "for this purpose I glaze the frame of the pavement light with glass, which is moulded, so as to be of a prism-like form on the underside, resembling to some extent in this respect"—that is, in respect only of its being a prism-like form—"the glasses which are often inserted into ships' decks to give light below. The form and arrangement of the prism is, however, entirely altered—"so that it is not a prism like the one in the ship's deck, but it is a prism entirely altered, and the only similarity between the two declared here is that there is a certain similarity in this respect, that they are in prism-like form but entirely altered" in order that the light may be thrown forward in one direction as already stated. One of the sides of the prism is upright, or nearly so"—that was part of the problem he had to solve—"and the other side is inclined to it"—not at any particular angle but—"at such an angle that the light passing through the upper surface may strike this inclined side and be reflected completely or nearly so within the prism, and issue from the upright or nearly upright side in the direction required." Then he says, "In order that my invention may be fully understood and readily carried into effect, I will proceed to describe the drawings," and he says, "Fig. 1 is a plan of a pavement light;" and he describes it, to my mind, in unusually clear terms for a specification. His Lordship then read the claim and said: Therefore he does not claim a frame, he does not claim a frame which will hold glass with a flange, he does not claim a prism of any particular sort; but what he does claim is the construction of a pavement light, substantially as described, and it seems to me what he claims, and what he has just described, is a machine, or apparatus, or article, which is a pavement light . Now that pavement light he has described, and it is formed by the combination of three things which it may be said were known before. It is necessary, in order to make that pavement light of his, that there should be a frame; it is necessary that there should be flanges, so that the frame may hold with sufficient firmness the glass to be put into it; and it is necessary, in order to make that pavement light which he describes, that the bottom part of the glass should be in the form of a prism, but in a particular form of prism, which may be described at large, and not with total accuracy, as a half prism, but a half prism of which the upper side must be horizontal, one side must be nearly vertical, and the other side at an angle, and such an angle that the vertical rays, when striking against the inner circles of the inclined side of the prism, may not strike the other side as to be reflected back into the prism, but may go at once through it. The true construction of the specification seems to me that he has claimed such a machine.

Then comes the question, Is such a machine, so formed, a new thing? The frame is not new, the mode of setting the glass into the frame is not new, and the fact of the lower side of that glass being in a prism-like form is not new, because that had been done in the decks of ships, and if this light had been substantially like the deck lights of ships, I should have thought that was a sufficiently analogous use to have prevented the novelty of this machine; but it is not the same prism as was used in the deck lights of ships, and it is not used for the same purpose. In the case of deck lights of ships the prism was used for dispersing the light both ways into the cabin that was beneath it, and the problem of throwing the light only one way, and thus into a room which was not under the light, was not a problem which had presented itself to the minds of those who had to deal with deck lights. It therefore seems to me that the deck light of ships was not an anticipation of this machine.

Then it was said that a prism used by a man of the name of Darker was an anticipation of the prism used by the plaintiff. In the first place, if this claim had been only for the use of the prism in the way in which it is used, I should not have thought that Darker's was an anticipation. It is true that Darker used the prism to introduce light from the outside into rooms ; but it was no part of the use of that prism that the upper side should be horizontal, or that the one side should be vertical; it turned upon a pivot, and was merely used for the purpose of directing the light to a given point, but not directed so as to disperse it into a room at the side. Supposing you could say that the prism, as a prism, was the same as Darker's, it seems to me really preposterous to say that Darker had used a machine such as is anything like the whole, which, as I have said, is the subject-matter of the plaintiff's claim. Therefore Darker's prism is no anticipation at all, and if that be so, there is no anticipation of what the plaintiff claims. I wish to say that I do not decide that Darker's prism might not have been an anticipation of the plaintiff's prism if the plaintiff had only claimed the prism. I assume for the purpose of this case that the use of the prism merely as a prism is old ; but what I hold to be the plaintiff's claim is a new instrument or apparatus made up of three old parts which had never been combined before in order to make the whole machine. It seems to me, therefore, that the plaintiff has claimed a machine, and that that machine was new. That it is useful none have denied.

There was a point raised and discussed which for a time did seem to me to present a difficulty, namely, whether although this was new and useful it could be said to be an invention. Now the difficulty that that proposition presented to me was this: that I did not recollect of myself any case in which, where a thing had been pronounced to be new and useful, the question of whether it was an invention had been ever discussed, or even left to a jury, for instance. It seemed to me in all previous cases it had been taken for granted that if the thing were new and useful there must have been an invention in order to arrive at a thing that can be so described, and I should say that in nine hundred and ninety-nine cases out of a thousand that must be so. I say if the thing is new and useful it is impossible to suppose there is not sufficient to make an invention, but I do not think as a matter of law that could be predicated as an absolute rule of law, because I think it is possible, although a thing were new and useful, it might be, under certain circumstances, that there was no invention in it. However, in this case, I think, taking this to be a combination, there was so much invention that we cannot say as matter of law that it was not an invention, and nobody at the trial seems to have raised that question, or asked that it should be left to the jury as a separate question. Therefore I think this machine is invented by the plaintiff and claimed by him as a new machine combined of old parts, or apparatus, or commercial article, whichever you please to call it, is new, that it is claimed as new, and therefore it is the subject-matter of a new patent. I do not find that the learned Judge at the trial in terms construed the specification, but I think that he, by the questions he left to the jury, substantially construed it in the way I think it ought to be construed.

His Lordship then discussed the question of infringement, and said:—It is wholly immaterial whether what was done by the defendant was done in accordance with the terms of his specification or not, because the question is whether the defendant made articles which were an infringement of the plaintiffs patent. It seems to me that the articles made by the defendant and sold by the defendant are identical substantially with the articles made and sold by the plaintiff. They are the plaintiff's machines with a notch cut into the glass, which notch has no effect upon the strength and no optical effect whatever, but, in reality, is a sham. Therefore, in my opinion, not only are the machines similar and sufficiently similar to be an infringement, but they are identical. Then the only remaining question is as to whether the judgment ought to be entered, as it is, upon the questions found by the jury. The first question left by my brother HAWKINS seems to me to have been left out of caution, and in order to meet any difficulty which thereafter might be raised by the extreme ingenuity of counsel who were before him. It seems to me to be a question that he was asked practically to leave by the plaintiff's counsel, and did leave in order to be cautious. It is a mere abstract question of a scientific proposition, and it is a question which, to my mind, is wholly immaterial, and has no effect. In my opinion it was only put by way of caution, which caution, I think, my brother HAWKINS was right to use; but under the circumstances, I think it is a question which ought not to have been left as matter of law, and which can have no effect. The other two questions are material, and it seems to me, after the construction of the specification had been practically ruled, that the learned Judge left the right questions to the jury, which I think were substantially right, and upon the construction of this specification and the question of novelty and invention it seems to me that this patent was a good one upon the part of the plaintiff, and that it was infringed by the defendant. I think the judgment was right in the result, and that this appeal ought to be dismissed.

COTTON, L. J.—I am of opinion that the judgment appealed from ought to be affirmed. The question as to the validity of the patent depends upon the construction of the specification, which I was not able to see to be quite so clear as BRETT, L.J., seems to consider it; but in my opinion, upon the true construction of the specification, the plaintiffs is a good patent. Now what is it? It was contended that it was a mere claim for inventing this prism, and if so, that would not be sufficient; but when one looks at it one sees that it is not so; it is for an improvement in pavement lights, a prism not being a pavement light, but only part of an apparatus called a pavement light, and, in my opinion, what is claimed is this an improvement in pavement lights by a particular form of glazing, that is to say, by substituting for the old glazing of less or greater thickness, which had been in use before, a glazing which would not be simply a prism, but a prism so constructed as to direct the light in any required direction, not always in the same direction but in the direction which might be required, having regard to the depth below the pavement of the room and the size of the room; and that, I think, is indicated sufficiently by the specification which has been read by my brother BRETT, and I will not read it again. It is clearly stated that the object is to construct a pavement light with a prism so as to send the light in the direction required. My doubt was when it was so pointed out, whether it was sufficiently explained by the specification what the plaintiffs invention was, and how it was to be done; but I think, when one looks at the evidence, and to the words of the specification, it does. In my opinion he does sufficiently point out that which I think was his invention, namely, an apparatus called a pavement light, not only with glazing with a prism, but with a prism, or such portion of the prism so constructed as keeping the upper surface fixed to the pavement, as it must be, to send the light in the required direction. That, in my opinion, is not only a new union of things not found together in one apparatus before, but it is a union, an introduction of this in such a way as to obtain the required result, and therefore to constitute in the meaning of the words a combination, that is to say, a new machine, and a putting together of parts so as to constitute the subject of a valid patent, and therefore, in my opinion, this is a good patent which the plaintiff has taken out. I agree with the reasons given by BRETT, L. J., for saying that Darker's prism was not an anticipation of the invention which the plaintiff has claimed, and I do not go again through the reasons he has given for that. Then, with regard to ships' deck lights, I hardly think it necessary to advert to it, but I may say there the prism was entirely different. No doubt in those cases it was a prism with an acute point cut off more or less, but it was not a prism in any way arranged or intended to throw the light into any given direction, though possibly it was to a great extent introduced for strength, and probably it had some effect in diffusing the light, but it was introduced in an entirely different way and for an entirely different purpose, and in my opinion did not anticipate the invention of the plaintiff. Then, as regards the infringement, really one has nothing to say about it, because it is, in my opinion, clear that this is an infringement. I do not say that it may not be some improvement on the original invention, but if the invention has been taken by the defendant he cannot use it so long as the plaintiff's patent lasts without infringing the plaintiff's patent, even although he may have done something which improves the original invention. I say that because I do not think we are in a position to decide whether the shaving off a portion of the one surface of the prism, that is to say, the transmitting surface, may not have an effect, and be an improvement upon that which the plaintiff originally patented. It is not necessary for us to decide that, but in my opinion the defendant has fixed into a pavement light, in other respects like that of the plaintiff, a prism, possibly with the transmitting side not always so perpendicular as in the plaintiff's, but with the two sides so arranged that the one side inclined at a greater angle, shall reflect the light in the interior of the prism on to the transmitting surface.

Application for stay pending an appeal was refused, COTTON, L. J., saying:—As a rule, the plaintiff is entitled to all his ruling immediately, unless the defendants could show good grounds for a stay of execution.

[Abstract of Reported Cases Relating to Letters Patent for Inventions (between the Years 1884 to 1886 Inclusive): Together with Some Unreported Cases, and Cases Decided by the Law Officers and the Comptroller-general : with the Statutes and Rules — by Ralph Hare Griffin]