APPENDIX No. 2. 539 ROBERT MITCHELL. PETITIONER ; 1886 ..,,., AND Jan. 22. THE HANCOCK INSPI:RATOR COMPANY RESPONDENTS. Patent—Neto combination of known elements---.I'mportation—The Patent Act of 1872, see. 28. A new combination or known elements is an invention and as such is patentable. The person who bas devised such new combination has all the rights and privilege3 of an inventor even if the novelty consists in a trifling mechanical change, provided, in the latter case, some economic or other result is produced someway different from what was obtained before. 2. Where the subject of a patent is a new combination of old devices, the patentee cannot import such devices in a manufactured state and simply apply bis combination to them in Canada without violating the prohibition against importation contained in section 28 of The Patent Act of 1872. PETITION to the Minister of Agriculture for the avoidance of Patent No. 7011, granted to the respondents for " The Hancock Inspirator " on January 24th, 1877, on the ground of non-manufacture and illegal importation a1). (1) The section of The Patent the construction or manufacture of Act of 1872, with its amendments, the invention or discovery patent-governing this case are as follows : ed, in such manner that any per- 28. Every patent granted under son desiring to use it may obtain this Act shall be subject and ex- it, or cause it to be made for him pressed to be subject to the condi- at a reasonable price, at some tion that such patent and all the manufactory or establishment for rights and privileges thereby grant- making or constructing it, ih Caned shall cease and determin e, and ada, and that such patent shall be the patent shall be null and void, at void if, after the expiration , of the end of two years from the date twelve months from the granting thereof, unless the patentee, or his thereof, the patentee, or his as-assignee or assignees, shall, within signee or assignees, for the whole that period have commenced, and or part of his interest in the pat-shall, after such commencement, ent, imports, or causes to be im-continuously carry on in Canada ported into Canada, the invention
540 EXCHEQUER COURT REPORTS. [VOL. II 1886 The case was heard before the Deputy Minister of Ali= ELL Agriculture. TH v. E The evidence consisted of Customs files, business cor -HANCOCK respondence, statutory declarations, and the oral testi- ICsRAY. GoM DiPANY mony of witnesses heard before the Deputy Minister Statement, November 17th and December 22nd, 1885. or Ettete6 Fleet for petitioner ; Tait for respondents. Fleet, in substance, argued as follows : The case practically comes before this tribunal on a reference from the Superior Court of Montreal, Mr. Mitchell, the petitioner here, having been sued by the Hancock Company for infringement of their patent, to the -amount of $5,000, pleaded, besides other grounds of defence, the forfeiture of the said patent on account of illegal importation and non-manufacture in the terms of the 28th section of The for which the patent is granted ; 3. The Commissioner may grant and provided always, that in case to the patentee or his assignee or disputes should arise as to whether assignees for the whole or any part a patent has or has not become of the patent, an extension for a null and void under the provisions further period of time, not exceed-of this section, such disputes shall ing one year beyond the twelve be settled by the Minister of Agri- months limited by the first para-culture or his deputy, whose deci- graph of this section, during which sien shall be final. The Patent Act he may import, or cause to be im- of 1872, sec, 28. ported into Canada the invention 2. Whenever a patentee has been for which the patent is granted : unable to carry on the construction Provided, that the patentee or his or manufacture of his invention assignee or assignees for the whole within the two years hereinbefore or any part of the patent, shall mentioned, the Commissioner may, show cause satisfactory to the at any time, not more than three Commissioner to warrant the months before the expiration of granting of such extension ; but that period, grant to the patentee no extension shall be granted, un-a further delay on his adducing less application be made to the proof to the satisfaction of the Commissioner at some time within Commissioner that he was for rea- three months before the expiry of sons beyond his control prevented the twelve months aforesaid or any from complying with the above- extension thereof. The Patent Act mentioned condition. The Patent of 1872, as amended by 45 Vic. c. Act of 1872, as amended by 38 Vic. 22 s. 1. c. 14 s. 2.
APPENDIX No. 2. 541 Patent Act. This special pleading was met by a de- 1886 murrer to the effect that the nullity caused by violation m — ITCHELL of the 28th section of The Patent Act cannot be tried THE by any other court than that of the Minister of Agri- HANCOCK IN n culture. Upon which exception Mr. Mitchell applied, COMPesra x~, to Mr. Justice. Mathieu, to stay the proceedings, in Ar g a„t order to obtain a decision from this tribunal which of """se'might be introduced into the record. The application was allowed by the judge. We have, by the evidence produced in this case, so clearly demonstrated that large and continuous importations were made by the patentee and his legal representatives, and that the patented article was never entirely manufactured in Canada, that I have really very little to say, unless, perhaps, in replying to my learned friend on. the other side. In the case of Barter v. Smith (1), and the Bell Company telephone cases (2), all the points that can possibly arise have been clearly defined. A case of this kind narrows itself down to matters of fact, and the matter of fact is whether the importations were made subsequent to the term allowed by the Act, or whether they were not. I submit that, by Mr. Patton's evidence and the correspondence between the owners of the patent and Mr. Patton, their agent, for a time, we have demonstrated that, after the expiration of the delay, extensive importation of the invention actually took place, and that there was a decided intention shown to supply the demand for the article, to any extent, by means of importations. We have, furthermore, proved that, within two years of the . present time, 680 inspirators were imported in parts, to be simply put together in Canada, for the purpose of vending and selling them to the Canadian public. The affidavits produced by the respondents in the case are, virtually, an admission of the facts alleged (1) Reported ante, p. 455. (2) Reported ante, pp. 495, 524.
542 EXCHEQUER COURT REPORTS. [VOL. II. 1886 by the petitioner, facts which cannot be for a moment MITCHELL denied. The proof is so conclusive that it is unnecessary for me to say any more. We are willing to rely THE HANCOCK wholly on the point of illegal importation. JC COMPANY. Tait, ar g ued i , n su bstance, t hat the patentee and his ►~.~.~~~~.c assignees had done all they could to comply with the ■ Counsel. of requirements of section 28 of The Patent Act, and had actually kept themselves within the provisions of that section of the statute. The patent bears date the 24th January, 1877. The affidavits filed by respondents establish that James Morrison, of Toronto, commenced the manufacture of the invention in Canada on the 21st day of January, 1879, being within two years from the date of the patent, and had ever since continuously carried on in Canada the manufacture thereof according to law, in such a way that the petitioner could have obtained the article at such a reasonable price as to have been able to make a fair profit upon the resale. In the month of November, 1880, the firm' of Stevens, Turner & Burns, of London, Ontario, obtained a license to manufacture, and did manufacture, the invention until December, 1882, when they abandoned their license and transferred their stock to the respondents by delivering the same to their agent at Montreal, Mr. Betton. The respondents, in 1883, made a new arrangement with Morrison, already mentioned, by which they, the respondents, agreed to purchase the patented article manufactured in Canada by Morrison at the rate of no less than 500 in every year—an arrangement which has ever since been. and is now in force. The owners of the patent have never received any demand for license to manufacture from the petitioner, nor any other person except the said Morrison, and Stevens, Turner & Burns, and they have never refused to sell the patented invention to anyone. Therefore, the pretension of the petitioner that the respondents,
APPENDIX No. 2. 543 patent is forfeited by reason of non-manufacture should 1886 be declared unfounded. mac/JELL In considering, next, the allegation that the patent v THE had been forfeited by reason of illegal importation, it is HANCOCK OMPA Y0 I.t necessarytopoint out the nature of the invention. ~C COMPANY. The invention in question is a combination of two old Argument and well known sets of apparatuses. One of them is "c "e[. used to raise the water, and is called in the specification " the lifting injector," and is also known by the name of "ejector." Such an instrument was invented in England as far back as 1806 ; in the form used in the patent here in question, it was invented by Mr. Hancock, and patented in the United States under No. 86,152 in January, 1869. The other element or apparatus is used to transmit the water to the boiler, and is known under the name of "inject or." This instrument was invented in France by Mr. Giffard, and patented in Europe in 1858, and in the United States in 1860. Prior to Hancock's invention, here in question, each of these elements was used by itself, or in. other combinations, and both are so used to the present day. The invention of the patent No. 7011 has been accomplished by a new arrangement or combination of these two elements. To apply the combination, which is intended for stationary boilers, to locomotive boilers, a different system of valves and levers is used ; those used in the Hancock locomotive inspirators, as originally constructed, were invented by Mr. Park, and patented in the United States, and those used for locomotive inspirators more recently constructed were patented, in Canada, by J.T. Hancock in 1881. The respondents admit that they imported locomotive inspirators embodying Park's and Hancock's last mentioned invention, but they maintain that this does not entail the forfeiture of patent No. } 7011; because, as established by the affidavits, the machines
544 EXCHEQUER COURT REPORTS. [VOL. H. 1886 imported were not the invention patented under patent MITC HELL No. 7011, for the reason that if the levers and valves . which constituted Park's invention (not Eatented in THE H NCOCK Canada) as used in the first form of the machine, were I C s O P M In PA A N T Y. otz removed, there remained nothingbut barrels and jets a.u»ne,at of themselves wholly inoperative for any purpose. The of Counsel. same can be said in relation to the Hancock's invention of 1881, patented in Canada, inasmuch as valves, connections and means of operating these elements would have to be supplied to obtain the result sought for. The patents of 1881, No. 12,934 and No. 13,087, Mr. Hancock had abandoned, and what was imported as locomotive inspirators were the old elements, Park's invention and the Hancock's inventions, patented in 1881, and not the subject-matter of patent No. 7011. As to the stationary inspirators, three series of shipments are referred to by the petitioner. 1st, to Fair-banks Sr Company, through g r. Patton ; 2nd, to Stevens, Turner & Burns, and 3rd, to J. M. Betton. The shipments made to Fairbanks, after the legal delay, were of a few articles, very nearly all " locomotive injectors," and were, moreover, made for the purpose of creating a market. It is to be remarked also that the "stationary inspirators" are made in fifteen different sizes at least, requiring for each size special expensive tools. The shipments to Stevens, Turner & Burns consisted of certain parts, particularly jets and barrels made to help the manufacture of the article in Canada, inasmuch as neither these licensees nor any other person were willing to undertake the manufacture of such parts. As to the shipments made to James M. Bettors, it appears that they consisted of a number of parts which had to be worked, combined and adjusted, in order to construct a number of stationary inspirators. The respondents submit that the importation of these parts cannot entail forfeiture of patent No. 7011, inasmuch
APPENDIX No. 2. 545 as the parts are old and well known elements, requir- 1886 ing to be combined, coupled and adjusted, to become Air r,L the invention of the said patentee ; inasmuch as they THE could be used for the separate instruments known as HANCOCK C A e J jector and injector ; inasmuch as, all the time, Morris- CO MPANY. on was manufacturing all sizes of stationary inspira- A, ,~,►►~•~~r. tors, as did also Stevens, Turner & Burns ; inasmuch of cm' as respondents never intended to injure the manufacturing interest of Canada, as is shown by them undertaking to purchase 500 of the patented articles from Morrison ; inasmuch as, all through, they acted in good faith under legal advice, believing themselves to be within the purview of the law. The case is different from the Bell Telephone case (1); but resembles a French case referred to in Barter y, Smith, the case of Warlick c. Peequet, which is reported in Dalloz (2). Mr. Dalloz, in his Repertoi,e, verbo "Brevets d'invention," No. 267, commenting on this arrêt, says :—" Il " est évident, en effet, que quand l'invention a pour " objet, non la fabrication d'un nouveau mécanisme, " mais l'application nouvelle d'un mécanisme connu, " il suffit que le breveté fasse cette application en France, " pour qu'il y exploite réellement sa découverte, et catis-" fasse ainsi au voeu de la loi, bien qu'il tire de l'étran-" ger les machines nécessaires à cette exploitation. Ce " que la loi interdit, c'est de faire fabriquer à l'étranger " des objets semblables d ceux qui sont garantis par le " brevet; or, dans l'espèce, les machines que le breveté " fait venir de l'étranger, n'étant pas l'objet du. brevet, " ne sont pas garanties par lui ; la disposition qui nous " occupe leur est donc étrangère." I will remark in conclusion that it seems hard, after the company trying so many years to introduce this (I) . eportecl conte, p. 495. (2) Jurisprudence G int.rale, 1846, partie 2, pages 194 et 195. 35
546 EXCHEQUER COURT REPORTS. [VOL. H. 1886 invention into. the country, that the patent should be MITCHELL set aside, at the suggestion of somebody who has sat ".all the time watching the efforts of the owners of the THE HANCOCK patent until they have made it a success. The res- I C COY O M M P P A A RN N Y Y. . pondents,therefore, feel that they can with confidence Argument leave their fate in the hands of this paternal tribunal. of Counse l. Fleet, in reply, argued that although willing to rely on illegal importation alone, the petitioner could rely solely on the point of non-manufacture. By referring to the evidence and correspondence of Mr. Patton, it is clearly seen that up to the year 1880 he was the only representative of the patentee in Canada, and that the manufacturing which commenced shortly before that time was begun in infringement of the patent. Taking the affidavit of Mr. Howe and the deposition of Mr. Betton, together with the deposition and letters of Mr. Patton, it is clearly established that Morrisois manufacturing, up to . the agreement of 1881, was a case of infringement of the patent and not a compliance, by the owners of the patent, with the requirements of the law. A certain amount of stress was laid upon the fact that the locomotive inspirator is not, as alleged, covered by the patent ; but in Mr. Patton's deposition we see that all the imported articles sold by him (Mr. Pat-ton) were stationary inspirators ; he had nothing to do with the others. Again the 630 inspirators imported in parts and put up by Mr. Betton were all stationary inspirators. The intention of the respondents, as it is clearly shown, was to supply the Canadian market to any amount they could with imported inspirators, and, as a matter of fact, they did supply the Canadian market with articles imported either in whole or in parts. It was sought to be established that the machine in question is composed of two machines known and in use for a long time. The invention in question is a new
APPENDIX No. 2. 547 combination and the patent is, consequently, a patent 1886 for a combination, it stands as such .as covering the M1T âLr LL invention and for the performance of the functions THE described in the specification. As decided in the Bell HANcocK • Telep hone case O 1 ~ t he imp p o rtation of the elements of I COMP NY. t t COMP4NY the combination to serve in the combination was the a rgu ou v ut importation of the patented combination. o'. counsel. I submit that, by the evidence produced, under none of the administrative régimes during which the patented articles were supplied to Canadians, have these articles been manufactured in Canada ; all the machines sold were imported either in whole or in part, under Mr. Patton's régime, under Messrs. Stevens, Turner & Burns' régime, and under Mr. Betton's régime, to within two years of the present time. Under the facts which have been produced, I submit that the prayer of the petition should be granted, and, moreover, I would strenuously urge that, considering the flagrant nature of the contravention of the law, the costs, which are prayed for in the petition, should be awarded against the respondents. TACHÉ, D.M.A., now (January 22nd, 1886) rendered his decision. In this case the question of importation is the only one which really appears to be involved. There is no proof that at any time the patentees have refused to sell or license their invention ; far from it, they seem to have always been anxious that its manufacture should be carried on by somebody in Canada, under license or on payment of a fair royalty, at the same time that they have shown themselves determined to push the sale of their patented articles, even to the alternative of supplying the Canadian markets by importation. The injury to home labor, in this case, comes not (1) Reported ante, p. 495. 351
548 EXCHEQUER COURT REPORTS. [VOL. IL 1886 under the head of non-manufacture, but under the title MITC H EoLfL importation, because to the extent that imported TH articles have been introduced into Canada, to that HANCOCK extent the manufacturing industry of the country has ICo MA NY . been deprived of the advantage intended to be secured ►uciHion by the 28th section. M _1.6' It is not necessary to sift the technical question as to whether the locomotive inspirators imported were the inventions of Hancock's patents No. 12,934 and No. 13,087, which the patentee has forsaken, or some other invention, and. not the invention of patent No. 7011, the subject matter of the dispute ; for the reason that the importation of the stationary inspirators, about which there could not be any such problem raised, is of sufficient importance to decide the fate of this dispute. Patent No. 7011 was granted on the 24th January, 1877; therefore, the year during which the importation of the invention was allowed by law expired with the 24th day of January, 1878. It is clearly proved that the importation did continue after the latter day, till within two years of the present contest. At times the importation consisted of the article brought in in its complete state, in small numbers ; at times it consisted of the articles introduced in parts, in some instances all the parts to be simply put up in Canada, in. other instances of only some of the parts ; the aggregate of such importations amounting, so far as the evidence goes, in number to many hundreds of the patented apparatus, in value to many thousand dollars' worth. It is argued that inasmuch as the patent covers an invention which consists of a new combination of old elements, the importation of the elements in their separate state is not the importation of the invention. This is opposed to the very nature of things, as admitted in
APPENDIX No. 2. 549 all countries in matters of patents. A new combina- 1886 tien of known elements is an invention to all intents MILT, and purposes, and as such is patentable and confers ,1,H on the person having devised such new combination HANCOCK IC O MPA Y OR . the rig g h ts and p p r ivilege s of an inventor, even if the C OMPANY. novelty consisted in a trifling mechanical change, Decision provided, in the latter case, some economical or other "L n , result is produced someway different from what was obtained before. The combination then is the invention, and, when patented, is the essence of the patent ; it must be taken as a whole, not the elements as several things to be separately discussed, and the combination another thing, but the elements as combined, one thing, to stand' with all the privileges conceded by law, and, reciprocally, with all the obligations imposed on all patentees. The manufacture of a combination is the producing of the elements as combined, in the sense applied to the word manufacture; the importation of the combination is the introduction of the elements as combined, to perform the functions described in the patent and in the manner described, totally irrespective of the existence of other combinations of the same elements, whether patented or not patented. Consequently, if Nicholson's ejector of 1806, now of the public domain, if Gifard's injector of 1858, also now public, if Hancock's apparatus of 1869 or of 1881, are imported, to be used as such, they do not affect patent No. 7011; but if the elements made use of in these mechanisms are imported as constituents of the combination secured by the said patent, and to be used as such, this importation is the importation of the patented article ; because, in the same way that a new combination of known elements is entitled to the protection granted by a patent, in the same way it subject to the conditions to which all patents are subjected.
550 EXCIIEQITEft COURT REPORTS. [VOL. II. i886 The counsel for the respondents invokes, in support MITCHELL of his contention, a celebrated judgment of the Court v. of Appeal, in France CO, referred to in the decision in the THE HANCOCK case of Barter v. Smith (2), but it does not apply, in specie, ICOMPANY, COMPANY. to thepresent case. This ju J d gm g en t , , o n the s s t t r r eng th ~► ~.~ ~~;"~► of its being a bien jugé, has become a part of .universal ":."T. jurispr uTdhenec eF.r ench patent, in the case of Wartick c. Peequet (1), was not for a new combination of known mechanical elements at all; it was for a new article of manufacture, an artificial combustible made in the shape of bricks (briquettes), for the manufacture of which a well known machinery, described in the specification, was applied. The patentee had introduced into France a few samples of the patented article, amounting to a trifling value, and the essential parts of the machinery to proceed with the manufacture of his briquettes. The court of the first instance, mistaking the nature of the invention and otherwise misconstruing the whole affair, had decided that the patent had become void on account of importation after the expiration of the delay granted bp the law ; an appeal was interjected, and the judgment of the court of first instance was quashed, the superior tribunal deciding that the import ation of a few patented articles as samples was no importation in the meaning of the law, and that the importation of the machinery to manufacture the patented article cannot affect the patent ; in the translated words of Dalloz, commenting on that decision—" the " machines introduced from the outside, not being " guaranteed by the patent, the exigencies of the law " are foreign to them." In the present case the importation of the invention itself lasted for several years of the existence of the (1) Cited ante, p. 545. (2) Reported ante, p. 455.
.APPENDIX No. 2. patent, till a comparatively recent date, covered a large dumber of the patented articles and amounted in. the aggregate to a large sum, many thousands of dollars. " It seems hard," says the counsel for respondents, "after " the company trying so many years to introduce th " invention into the country, that the patent should be " set aside." It is, undoubtedly, very hard ; if it were "n a matter of sympathy or of sentiment in all probability the patentee would continue to enjoy the privileges to which inventors are so well entitled ; but it is a matter of the fulfilment of obligations and administration of the law, in a case where no legitimate doubt can come to the rescue of the patent. A s regards that part of the petition of the petitioner which asks for costs, the answer is that there is no awarding of costs to parties coming before this tribunal. Therefore, John Theobald Hancock's patent, No. 7011 for an " Inspirator," has become null and void under the provisions of section 28 of 1872. 551 1886 MIT̀ E Lr, T v H E HANcocK s INSPIRATOR i COMPANY. ,,,,,,pion 6' The Patent Act of
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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.