In Chancery.

Jan. 23, 1834.

The fact of a

action against

not a sufficient

ground for continuing an ex parte injunction,

RUSSELL v. Barnsley.

Cor. Sir L. Shadwell, V. C.

An ex parte injunction had been obtained in this case from Lord Brougham, L. C. (15th April, 1833), and it was part of the order that the motion should be heard before the Vice Chancellor.

The bill stated that the defendant had made, and by himself and his agents offered for sale and sold, large quantities of pipes according to Whitehouse's invention, and, after the usual charges, prayed an account and injunction. The defendant in his answer denied the novelty of the invention, and stated that he was a vendor and not a maker of tubes; that according to his belief there is no material variance between the plaintiff's process and the one referred to by him; but of that one Willett was the inventor, and had used it for many years, and long before the patent of Whitehouse. That he had long ago relinquished the business of manufacturing to Willett, but continued to supply iron, and purchased tube back from him. The defendant also denied the novelty of the invention by reason of Cook's patent (d). The quantities of pipes sold, and prices, were set forth in a schedule annexed.

Knight now moved to dissolve the injunction.

The motion was opposed on the part of the plaintiff by Sir E. Sugden and Campbell, who argued that under the circumstances of the case and the long-continued enjoyment of the plaintiff, and while an action was pending against other parties which would decide the question of the validity of the patent, the plaintiff would not even be put under terms of bringing an action.

Sir L. SHADWELL, V. C.: I shall certainly continue the inpendency of an junction; I may be wrong, but it really does appear to me at another party, is present that the principle in Whitehouse's specification—the thing he claims to have done-is to draw the tube when it is in a state of fusion immediately from the furnace, through the die, so that the very extraction from the furnace is to be simulwithout putting taneous with the passage through the die, and, consequently, the plaintiff to bring an action the state of fusion, or rather that approximation to a state of against the new fusion, will remain throughout the process, and that is different to what is stated by Mr. Knight.

defendant.

I do not myself recollect a case in which, where the defendant has stated his wish-a defendant against whom a bill is filed for the infraction of a patent-to try the question at law, that the

(d) Ante 457.

court has refused to give him that opportunity; and what Lord A.D. 1834. Eldon says in that case, of Hill v. Thompson, is this "It was insisted on the part of the plaintiff, and the court agreed to that position, that where a person has obtained a patent, and had an exclusive enjoyment under it, the court will give so much credit to his apparent right as to interfere immediately, by injunction, to restrain the invasion of it, and continue that interposition until the apparent right has been displaced" (e). But it does not at all follow, because it appears to me at present that the patent is good, that there may not be a different view of it taken by a court of law. I apprehend that the legal view of the thing is that which must ultimately bind this court, and if the plaintiff wishes to have the question tried at law, he must have liberty to do so.

Sir E. Sugden: Of course I must admit the general principle, but the only ground on which I put it is the pendency of the other action.

Sir L. SHADWELL, V. C.: At present I do not know enough about that case to say it will determine this. It seems to me the proper course to pursue will be to continue the injunction until further order, on the terms of the plaintiff undertaking to bring an action within three months, for the purpose of trying the validity of the patent. The infringement is to be admitted. Order accordingly (ƒ).

IN THE PRIVY COUNCIL.

EXTENSION OF WHITEHOUSE'S PATENT.

This was an application on behalf of Mr. Russell, for an ex- Dec. 12, 1838. tension of the term assigned to him in Whitehouse's patent.

The petition set forth briefly the history of the progress of The petition. invention and improvement in the manufacture of iron tubes, such as gun barrels and gas pipes; the invention of Whitehouse, an ingenious mechanic in the petitioner's employ; the taking out of letters patent for the invention for England, Ireland, and Scotland, at the petitioner's expense, and the assignment of the letters patent to the petitioner for a valuable consideration. That the demand for the tubes became general so soon as the

(e) Ante, 236.

(f) The action was brought, and the defendant pleaded, but subsequently withdrew his pleas, and the plaintiff had judgment by default. The de

fendant was subsequently committed for contempt of court by breach of the injunction, but discharged on undertaking to commit no further infringement, and payment of costs.

Petition.

Dec. 12, 1838.

Evidence.

first prejudice was overcome, and very extensive works were erected to meet the increasing demand, at an expenditure of upwards of £10,000. That the pipes became applied to a great variety of new purposes, as the warming of buildings by the circulation of hot water and steam, the boilers of locomotives, shafts for machinery, axles, and various purposes, where lightness and strength were required.

That so soon as the merit of the invention became well known, every kind of expedient was resorted to for the evasion of the patent, and the petitioner has been involved in continual litigation from Hilary Term, 1830, against various parties, and has been uniformly successful; the expense of which, however, in addition to the capital expended, and the loss incurred by surreptitious manufacture and sale, had prevented the petitioner from the enjoyment of the advantages which he had a right to expect from so important and successful an invention.

Cresswell (James Campbell with him) appeared for the petitioners, and having opened the case, the Attorney General said that he did not appear to oppose the petition from any doubt of the originality or utility of the invention, but to watch the proof that the parties had not been remunerated, and to what period the extension should be allowed to afford remuneration.

Mr. A. M. Perkins stated, that he was the patentee of an invention for warming buildings; that no other tubes than Russell's would have enabled him to carry out his invention; that he had tried other tubes, but they would not bend cold; that it was essential to him to be able to bend pipes cold into the form required, without bulging or splitting. The usual pressure to which the pipes were proved was 5000 lbs. on the square inch. Another excellence of the pipes was the manner in which they could be screwed together. He generally used them in lengths of twelve or thirteen feet; he had used nearly a million of feet during seven years, and had found them of the greatest advantage to his invention.

Mr. Francis Bramah: I inspected the premises, and should think that from £10,000 to £12,000 must have been expended for the plant as it stands the machinery, buildings, and steam engines. If the patent were thrown open, there would, from the simplicity of the manufacture, be a great reduction in the value of the premises and of the outlay. A great deal of the machinery is fitted only for the particular purpose, and is not convertible to other purposes, and would not pay for the The merit and removal. The manufacture, if thrown open, would hardly be utility of the worth following; it is so beautifully simple, that it would be invention, and outlay. almost within the reach of every person of capital. In the case of the hydraulic presses, of which my father was the inventor, we are not now able to compete in the London market with the Scotch and Staffordshire manufacturers. As the son of an

inventor, who had between twenty and thirty patents, I should A.D. 1838. say (considering the risk, and trouble, and expenditure), that twenty-five per cent. profit upon the outlay would be a moderate remuneration for so valuable an article as that given to the public by Mr. Russell. If machinery be kept in a constant state of repair, it is of equal value to the party working it at the expiration of eight, or ten, or fifteen years. If the monopoly be continued, I should be glad to give £20,000 for the plant, &c., with a view to profit. The most valuable use to which we put the pipe is for connecting the pumps with the hydraulic press. It was very difficult to obtain pipes that would stand the enormous pressure of our presses, which are proved for three tons on the inch. The copper pipe made for these purposes cost the public 10s. a foot; now the public has a better article for 1s. 3d. a foot.

Mr. F. P. Hooper: I have been solicitor to the petitioner in Law expenses. all the cases; six in equity and two at law. My costs amounted to £2,942, of which £1,039 18s. have been paid by the other parties. There were expenses in the country amounting to £380; besides, there were two suits in Scotland, of which the costs were £700. The damages at law were nominal only; the compensation in one case was arranged at £6000; in the other the party went to gaol. Mr. Russell's law expenses have been upwards of £4000, and his life was endangered by the anxiety of the Chancery proceedings.

Mr. J. Hobbins, clerk to the petitioner. Many experiments were made and expenses incurred by Mr. Russell in perfecting Whitehouse's invention. The ground, buildings, and machinery, cost about £14,000. This includes the restoration and enlargement, but not the wear and tear. This applies wholly to the present invention. The books were placed in the hands of Mr. Puckle, an accountant. About ninety men and boys are employed on the patent business merely. The manufactory and the whole of the mill apparatus has been down once; it

was worn out.

Mr. Puckle. The books of Mr. Russell were put into my The profits. hands for the purpose of extracting the amount of profits. I extracted the whole of the tubing from the rough day books, and consolidated them under various heads and sizes, and ascertained the average cost. The expenditure connected with the outlay I took from the cash book. I ascertained the average yearly sales, and deducting the average cost, which I procured from Mr. Hobbins, I got at the profit. [Mr. Hobbins recalled. I made out the statement of the cost from calculations formed on my general experience of the concern, and the workmen's wages which passed through my hands. The day books contain a correct account of the sales made, and the prices charged. The pipe is sold at 4td. per foot; in Jan. 1825, it was 7d., and

The advertisements.

before that, 9d. The entries in the day-book, from which the accountant has made the account, are principally in my own hand.] The bad debts I took from the ledger. The returned goods are credited. I allowed interest on the outlay, which I ascertained from the various books. The balance of net profits is £13,173, up to last Midsummer. The outlay has increased during the last five years. In 1834, it is put down at £11,000; in 1831, at £7429. The premises (the patent being out) would not let at more than £150 a year; so that their value at twenty years' purchase would be £3000. The machinery is not costly, but the deterioration is very great in all fire processes. This account is a correct copy of the one made by me.

Mr. T. W. Fletcher (solicitor of the petitioner) produced the "London Gazette" of the 9th, 12th, and 16th of October, 1838, the "Morning Herald," the "Morning Chronicle," and the "Times," of the 6th of October, and the "Wolverhampton Chronicle," of the 3rd, 10th, and 17th of October, containing the advertisement of the application; also the several original letters patent, and the specification. The manufactory is at Wednesbury; there is no paper published nearer than Wolverhampton. The only manufactories are at Wednesbury and in London. Some profits have been made by sales in Scotland and Ireland. The profits have decreased from £7300 to £5300 during the last year, which arises partly from the reduction in the selling price, and the corresponding decrease in the license dues. There are eight licenses in existence; most of them granted before the act for extending patents (g). They do not contain any additional clause applicable in case of the extension of the patent, but they were all aware of this application, and Mr. Russell intended to continue them on reduced terms. The first rent reserved was £25 per cent.; Mr. Russell had reduced them voluntarily, and is willing to agree to continue them on lower terms.

The assignment to Mr. Russell was put in; it contained a clause securing to Mr. Whitehouse an annuity of £300; it was suggested by one of their lordships, that as the extension of the term would occasion considerable additional profits, the inventor should have a larger annuity secured to him. Mr. Fletcher (after conferring with Mr. Whitehouse) put in an agreement, signed by him in behalf of Mr. Russell, to secure to Whitehouse an annuity of £500 during the existence of the patent (h).

(g) 5 & 6 W. 4, c. 83. Passed Sep. 10, 1835. (h) Effect was given to this suggestion of their lordships, and the undertaking of Mr. Fletcher by the new letters patent, reciting that the judicial committee of the Privy Council had recommended an extension of the term of the said letters patent for six years, upon Mr. Russell securing the said annuity to Whitehouse. The securing

this annuity was further recited as part of the consideration of the grant of the new letters patent to Russell; and then there was among other provisos, a proviso that the said new letters should be void if the said Russell should not secure the annuity to Whitehouse, so long as the said new letters patent should last. The new letters patent bear date the 26th day of Feb. 1839.