Home > Case Law Studies, Intellectual Properties & Copyrights > Patent – Validity – Provisional Specification – Variance from Amended Complete Specification – Nature of Invention – Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict. c. 57), ss. 5 sub-s. 3, 26: LANE FOX v KENSINGTON AND KNIGHTSBRIDGE ELECTRIC LIGHTING COMPANY. [1890 L. 2713.] [CHANCERY DIVISION]

Patent – Validity – Provisional Specification – Variance from Amended Complete Specification – Nature of Invention – Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict. c. 57), ss. 5 sub-s. 3, 26: LANE FOX v KENSINGTON AND KNIGHTSBRIDGE ELECTRIC LIGHTING COMPANY. [1890 L. 2713.] [CHANCERY DIVISION]

[1892] 2 Ch 66

LANE FOX v KENSINGTON AND KNIGHTSBRIDGE ELECTRIC LIGHTING COMPANY.

[1890 L. 2713.]
[CHANCERY DIVISION]
[1892] 2 Ch 66
HEARING-DATES: 23, 25, 26, 29, February 1, 2, 3, 4, 5, 7, 8, 14, 15, 16, 18, 30 March 1892
30 March 1892
CATCHWORDS:
Patent – Validity – Provisional Specification – Variance from Amended Complete Specification – Nature of Invention – Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict. c. 57), ss. 5 sub-s. 3, 26.

HEADNOTE:
A patentee must, in his provisional specification, describe the nature of his invention, though he need not go into detail. In his complete specification, when going into detail, he must describe the same invention; if not, his patent is void, although the variation is occasioned by the operation of a disclaimer amending the complete specification.

In 1878 the Plaintiff took out a patent for “Improvements in obtaining light by electricity, and in conveying, distributing, measuring, and regulating the electric current for the same, and in the means or apparatus employed therein.”

In his provisional specification the Plaintiff described how he obtained the light and the incandescent lamp he proposed to use, the mode of conveying the light, a mode of distributing it by means of a conductor with branches and sub-branches, and a mode of measuring it, and then stated: “The electro-motive force of the electric conducting mains should be kept as nearly as possible constant at, say 100 volts.” “A number of Plant ‘s(lead and sulphuric acid) cells” (a well-known form of secondary batteries), “joined together in series between the main and the earth will serve as a kind of reservoir for the electricity.” After describing the conductor to be used, the provisional specification proceeded: “In order to keep the electro-motive force in the electric mains constant, it is desirable to have in the first place several generating machines; next, it is necessary to have some regulator, such as those about to be described;” that is, a method of regulating the electro-motive force by means of a quadrant electrometer, no regulation by means of the batteries being mentioned.

In 1879 the Plaintiff filed his complete specification, wherein, after describing, in greater detail, his methods of obtaining light by electricity,and conveying, distributing, and measuring the electric current, and repeating in substance the statements in the provisional specification as to the keeping constant of the electro-motive force in the mains and the placing the batteries in series serving as a “kind of reservoir of electricity,” and pointing out the use of the batteries for storage when little electricity was wanted for lighting purposes, he stated that “in order to keep the electro-motive force in the electric mains constant, it is desirable to have in the first place several generating machines, also a number of reservoir batteries as above explained; next, it is necessary to have some regulator such as that about to be described.” The method of regulating with the

aid of a quadrant electrometer was then re-described in detail, and the improvements he sought to attain were set forth.

In 1882 the Plaintiff disclaimed his claims in respect of measuring and conveying electricity; and in 1883 he farther disclaimed his claims for distribution, whether alone or in conjunction with the incandescent lamps, and for regulating the electric current by means of the electrometer, the result being, that by his complete specification as amended by disclaimers, he then only claimed for improvements in distributing and regulating the electric current for obtaining light by electricity by means of the employment of secondary batteries as reservoirs of electricity in combination with a mode or system of distribution of electric energy:-

Held, that the provisional specification and complete specification after the disclaimers did not describe the same invention; that the provisional specification, read most favourably for the Plaintiff, claimed for secondary batteries the invention of keeping the electro-motive force constant in the mains, and for the electrometer the invention of regulating that force; whereas the complete specification, after the amendments by way of disclaimer, was made to claim, for secondary batteries, not only the power of keeping the electro-motive force constant in the mains, but also of regulating it, which had theretofore in the provisional specification and original complete specification only been claimed for the electrometer.

INTRODUCTION:
ST. GEORGE LANE FOX, obtained on the 9th of October, 1878, Letters Patent for an invention intituled “Improvements in obtaining light by electricity, and in conveying, distributing, measuring, and regulating the electric current for the same, and in the means or apparatus employed therein.”

His provisional specification, filed on the 9th of October, 1878, stated that his invention consisted of “improvements in obtaining light by electricity, and in conveying, distributing, measuring, and regulating the electric current for the same, and in the means or apparatus employed therein”; and that the inventor, in order to produce a light, passed the electric current through thin leaves or foil of some suitable material, preferably platinum or an alloy of platinum and iridium. The provisional specification then described the electric incandescent lamp intended to be used, and proceeded as follows:- “The way in which I work a number of these lamps from a single source of electricity is as follows:- From one pole or electrode of the electric generator or generators proceeds a large conductor, from which branch out, at various points where lights are desired, smaller conductors which again may have conductors branching off from them, and so on.” He then pointed out how the

connection with the earth was made, “so that, wherever the circuit is complete between the earth and any one of these branches, a current of electricity will pass through the thin leaf of metal rendering it incandescent, and so produce light.” The provisional specification then pointed out how the electricity used was measured, and concluded as follows:-

“The electro-motive force of the electric conducting mains should be kept as nearly as possible constant at, say, 100 volts or British Association units of electro-motive force. A number of Plant ‘s (lead and sulphuric acid) cells, joined together in series between the main and the earth, will serve as a kind of reservoir for the electricity. In order to keep the electromotive force in the electric mains constant, it is desirable to have, in the first place, several generating machines; next, it is necessary to have some regulator such as that about to be described. In my regulator I make use of what is known as the quadrant electrometer; in this instrument the position of the suspended needle will depend on the relative electro-motive force of the so-called quadrants. By connecting this instrument with the main and the earth in the ordinary way, the electromotive force of the main will determine the position of the suspended needle. If it increases or decreases, the position of the needle will be altered accordingly. Now, I fit this electrometer with small pegs so that a slight deviation of the needle one way or the other will bring it in contact with one of the pegs, and thus complete a circuit, and set up the electric current, which, acting upon an electro-magnet, sets a lever or other suitable device in action. The contact with each peg forms a separate circuit acting independently on two of these levers or other devices, which are in connection with steam valves, one diminishing, the other increasing the supply of steam to the engine which works the electric generators. The electro-motive force can be regulated either in this manner or by otherwise effecting the action of the electric generators through the instrumentality of the currents set up by the pegs above described, so as to increase or diminish the action of the generators.”

On the 9th of April, 1879, St. George Lane Fox filed his

complete specification, which, in the parts below set out verbatim,included as originally filed the portions inclosed in square brackets, but not the portions set out in italics. The title of the complete specification was: “Improvements in [obtaining light by electricity and in conveying], distributing, [measuring] and regulating the electric current for obtaining light by, electricity, [the same] and in the means or apparatus employed therein.”

The complete specification commenced with a statement that the invention consisted of “improvements in [obtaining light by electricity and in conveying,] distributing, [measuring] and regulating the electric current for obtaining light by electricity[the same] and in the means or apparatus employed therein,” and then stated that the Plaintiff, in order to produce a light, passed the electric current through “a thin strip or wire of some suitable material,” preferably “an alloy of platinum and iridium,” and proceeded to describe the proposed electric incandescent lamp in much more detail than it had been described in the provisional specification.

The complete specification then described, again in greater detail and with the aid of diagrams, the way in which the Plaintiff distributed the electric energy so as to work a number of the lamps from a single source of electricity, by means of conductors, branches, and sub-branches, and the way in which he measured the quantity of electric force or energy used, and continued as follows:-

“The electro-motive force of the electric conducting mains should be kept as nearly as possible constant at, say, 100 volts, or British Association units of electro-motive force. A number of secondary batteries, such as Plant ‘s (lead and sulphuric acid) [or those formed with plates of copper in a solution of bicarbonate of soda], such batteries being joined together in series between the main and the earth, will serve as a kind of reservoir for the electricity. The cells should have a very large conducting surface, and there should be several batteries connected up at various points of the mains, so that by increasing the electromotive force during the hours when not much electricity is being used, they will become charged, and the electric force will be

stored up in them so that a sufficient supply will be available, when the electro-motive force falls owing to the draft from the mains, when the force is most used and needed. The number of cells in each of these batteries will depend on the electro-motive force of the mains. Fig. 5 is a diagram representing a secondary battery joined up between the main and the earth for the purpose above described. E indicates earth and l lamps.”

After repeating, in effect, the statements in the provisional specification as to the conveyance of the current through copper conductors, describing the conducting mains, and pointing out the preferable mode of insulating, the complete specification continued as follows:

“In order to keep the electro-motive force in the electric mains constant, it is desirable to have, in the first place, several generating machines; also a number of reservoir batteries as before explained [next, it is necessary to have some regulator, such as that about to be described. In my regulator I make use of what is known as the quadrant electrometer; in this instrument the position of the suspended needle will depend on the relative electro-motive force of the so-called quadrants. By connecting this instrument with the main and the earth in the ordinary way the electro-motive force of the main will determine the position of the suspended needle. If it increases or decreases, the position of the needle will be altered accordingly. Now I fit this electrometer with small pegs, so that a slight deviation of the needle, one way or the other, will bring it in contact with one of these pegs, and thus complete a circuit, and set up the electric current, which, acting upon an electro magnet, sets a lever or other suitable device in action. The contact with each peg forms a separate circuit, acting independently on two of these levers or other devices, which are in connection with steam valves, one diminishing, the other increasing, the supply of steam to the engine which works the electric generators. The electro-motive force can be regulated either in this manner, or by otherwise effecting the action of the electric generators, through the instrumentality of the currents set up by the pegs above described, so as to increase or diminish the action of the generators. Fig. 6

represents a quadrant electrometer adapted to regulating the electro-motive force in the mains as just described. …”]

“And having now described the nature of my invention, and in what manner the same is to be performed, I declare that I do not claim generally the obtaining of light by the incandescence of a continuous conductor, nor the lamps represented in Figs. 1 and 2, and hereinbefore described, but [that] I claim as my ‘Improvements in [obtaining light by electricity and in conveying] distributing [measuring] and regulating the electric current for obtaining light by electricity [the same], and in the means or apparatus employed therein.’ [First: The mode or system hereinbefore described of distributing the electric current by mains, branches, and subbranches with returns by ‘earth.’ Second: In combination with the said mode or system of distributing the electric current by mains, branches, and sub-branches, with returns by ‘earth,’ I claim the production of light by the incandescence of a continuous conductor as hereinbefore described. Third: The means or apparatus, substantially as hereinbefore described, with reference to Fig. 4, for measuring the amount of electricity passed through conductors. Fourth:] The employment as described of secondary batteries as reservoirs of electricity in combination with a mode or system of distribution such as is hereinbefore explained. [Fifth: The employment of petroleum or rock oil, or other suitable insulating liquid, in the space between the conductor and the pipes in which they are laid, as hereinbefore described. Sixth: Constructing apparatus substantially as hereinbefore described and represented in Fig. 6, for regulating the electro-motive force in the main by which the electricity is conveyed. Seventh: The combination of the means or apparatus hereinbefore described for obtaining light by electricity, and conveying, distributing, regulating, and measuring the electric current for the same. Eighth: Obtaining light by the incandescence of a continuous conductor, as hereinbefore described and as represented in Figs. 1 and 2 of the annexed drawings. Ninth: Insulating the conductors for conveying electricity for lighting purposes by means of earthenware or other insulating supports in pipes, as hereinbefore described.]

On the 26th of January, 1882, St. George Lane Fox disclaimed

his claim to the appliances for measuring and conveying electric energy, and on the 30th of July, 1883, he disclaimed his claim in respect of the distribution of the electric current, whether alone or in conjunction with the incandescent lamp, and also his claim in respect of the regulator operating by the electrometer and the appliances connected with it.

The effect of the two disclaimers on the complete specification was that, as amended, the words above set out in italics were added, and the parts enclosed in square brackets were expunged.

On the 15th of November, 1890, St. George Lane Fox commenced an action against the Kensington and Knightsbridge Electric Lighting Company, Limited, alleging that the Defendants had infringed his letters patent by the use of secondary batteries as reservoirs of electric energy in combination with the said system of distribution; and he claimed an injunction to restrain such infringement from being continued and other relief.

By his further particulars of breaches, the Plaintiff stated that the modes of distribution used by the Defendants, of which he complained, were: 1. “The use of the secondary batteries in combination with a number of lamps placed in multiple arc between two main leads. 2. The use of secondary batteries in combination with two or more systems of multiple arc distribution in which one or more of the main leads are common to two or more of the said systems.”

The Defendants, by their statement of defence, alleged (inter alia) that the Plaintiff’s letters patent were invalid on the ground that the alleged invention described and claimed in the Plaintiff’s complete specification as amended was not the same as that described in the provisional specification, but differs therefrom in describing a method of regulating the electrical current by means of secondary batteries or accumulators of electricity, which system of regulation is totally different from that of the quadrant electrometer. That the complete specification, as amended by the disclaimers, dated the 26th of January, 1882, and the 30th of July, 1883, claimed an invention substantially different from the invention claimed by the original specification filed in pursuance of the grant of the said letters patent.

The action was tried before Mr. Justice A. L. Smith, sitting for Mr. Justice Romer, on the 23rd, 25th, 26th, and 29th of February, and the 1st, 2nd, 3rd, 4th, 5th, 7th, 8th, 14th, 15th, 16th, and 18th of March, 1892.

COUNSEL:
Sir R. E. Webster, A.G., Moulton, Q.C., and J. C. Graham, for the Plaintiff:-

By interposing secondary batteries in his circuit, between the generator and the earth, the Plaintiff obtains a constant current so far as pressure is concerned. The Defendants say that the complete specification is not in conformity with the provisional one, but that is not correct. In the provisional specification, one of the improvements effected by the invention is “regulating the electric current.” The Plaintiff states that the electromotive force should be kept constant at, “say, 100 volts,” and that pressure, pointed out by him in 1878, is to-day the best electro-motive force for working lamps in any system which has been devised. Then he states that the secondary batteries, in series between the main and the earth, will serve as a reservoir; and subsequently states that, “in order to keep the electromotive force in the electric mains constant,” it is necessary to have several generating machines and “some regulator” such as he describes. The Defendants say that the indication of this regulator prevents the Plaintiff from saying he used the secondary batteries as regulators; but the regulator thus described is for keeping the steam which drives the engine constant, and has no relation to the functions performed by the secondary batteries. In the complete specification as amended the claim for improvement by regulating is retained. The statements as to keeping the electro-motive force constant at 100 volts, and as to placing the secondary batteries, are in effect repeated; and then occurs the passage as to the large conducting surface of the cells connecting the batteries at various points, and the storing up in them for the time when the force is most needed. He also states that, in order to keep the force constant, it is necessary not only to have a number of generators, but also a number of reservoir batteries. By his amendments, the Plaintiff discards everything (including the steam regulator) but the use of secondary

batteries. The Defendants have used secondary batteries in exactly the same way, and have not so improved on the Plaintiff’s system as to escape infringing his patent.

Sir H. Davey, Q.C., Finlay, Q.C., and R. W. Wallace, for the Defendants:-

The patent has been amended in such a way as to make it appear that there is a claim for automatic regulation by means of the secondary batteries, whereas the patent was originally granted for something wholly different. If a patent is taken out for a mode of regulating electric light, a particular detailed mode, in which the patentee achieves his object, being shewn by the specification; he cannot by amendment strike out the whole of that claim because he finds out that there is an inherent property in some other part of his improvement which will achieve the same object. By the provisional specification the Plaintiff alleges improvement in five things, one of which is regulating the electric current. The only claim in respect of secondary batteries is as reservoirs of electricity – not as regulators. The only improvement by regulation mentioned in the provisional specification is by the use of the quadrant electrometer. The complete specification also claims for an improvement by regulation; and it is stated that, in order to keep the electro-motive force in the mains constant, it is desirable to have, not only several generating machines, as stated in the provisional specification, but also “a number of reservoir batteries as before explained.” But it is only a recommendation, not a direction. Even as a direction, it would only be to increase the number of generators and batteries, not to use them in any particular way. Then he says it is necessary to have some regulator such as the electrometer, which is described, and shews how the force is regulated by the means pointed out. All he says about regulation is, that it is effected by that regulator. The claim in the complete specification is for “the employment, as described, of secondary batteries as reservoirs of electricity,” not as regulators. The first disclaimer left untouched the claim in respect of regulation by the electrometer, shewing that that was all the regulation originally contemplated. But in the second disclaimer the

Plaintiff, while retaining regulation in his title and claim, and retaining the words, that, “in order to keep the electro-motive force in the electric mains constant, it is desirable to have” “a number of reservoir batteries as before explained,” strikes out the words as to the necessity for the regulator described, the electrometer, and the description of it, and also the claim for it as an improvement, and claims for, amongst other things, “regulating” by the employment of secondary batteries. This mode of disclaiming and altering the specification makes a substantial alteration in the nature of the invention. “Regulating” ought to have been struck out altogether, for automatic regulation by the batteries was a different thing from what was originally claimed, viz., regulation by the mechanical appliances previously described, but afterwards discarded. The provisional specification need not go into all the minute details as to how the invention is to be carried out: In re Newall and Elliot n(1) . It need not contain a complete description of the thing, so as to enable a workman of ordinary skill to make it, but must disclose the invention, fairly but in its rough state, until the inventor can perfect its details: Stoner v. Todd n(2) . Nevertheless, the invention must be described with sufficient precision and accuracy to inform the law officer what is to be the subject-matter of the patent: Penn v. Bibby n(3) . A patentee cannot, under the form of a disclaimer, make material additions to the original specification, so as, by the aid of the corrected form of words and the additions so made, to introduce into the specification an accurate and perfect description of an invention not to be found in the original specification: Ralston v. Smith n(4) .

[They also referred to Johnson’s Patentee’s Manual n(5) .]

Sir R. E. Webster, in reply:-

There is no authority suggesting that, if a patentee has in his provisional specification described in general terms what he proposes to do, it is any ground of objection that he does not point out the advantages either in the provisional or complete

n(1) 4 C. B. (N.S.) 269.

n(2) 4 Ch. D. 58, 60.

n(3) Law Rep. 2 Ch. 127.

n(4) 11 H. L. C. 223, 244.

n(5) 5th Ed. p. 107.

specification. You must look at the invention described in the provisional specification; and if what you have been doing, and which you say is part of the patent, is fairly within the nature of the invention described, you are protected – if it is a new and separate and different invention you are not protected. When the nature of an invention has been described in the provisional specification, if something is found out during the six months to make the invention work better, or with respect to the modus operandi, still the nature of the invention remains the same, and it is no objection that in the complete specification the invention is described more particularly, or even if more discovery is shewn, so as to make the invention described in the provisional specification really workable: Bailey v. Roberton n(1) . In other words, the description in the complete specification must be within the fair ambit of that given in the provisional specification; but there is no disconformity merely because advantages are pointed out in the complete specification which are not pointed out in the provisional specification. Regulation is not merely stopping the flashes due to the engine running irregularly. The regulation is this, that whether there are more lamps on, or less lamps on, whether there is a current in the main given from the dynamo alone, or given from the dynamos and batteries, there will be constancy of pressure and of electro-motive force. In the provisional specification the Plaintiff points out that the electro-motive force must be kept as nearly as possible constant, and that involves regulation; the second batteries being used as a “kind of reservoir,” but not as a mere reservoir for storage, for Plant had told people of that for years. The Plaintiff knew that the effect of the engines might vary, and he thought some such regulator as he described was necessary, and afterwards he found it unnecessary and disclaimed it. But that does not deprive him of the benefit of the previous description. The provisional specification shews that regulation by means of the secondary batteries was part of the nature of the invention there described. Sects. 6 & 8 of the Patent Law Amendment Act, 1852 (15 & 16 Vict. c. 83), required only that “the nature of the invention” should be described in the provisional specification;

n(1) 3 App. Cas. 1055, 1075.

but under that Act it was held that the nature of the invention need not be described in the provisional specification with minute particularity, or that the mode in which the invention was to be worked or carried out should be described; and that the complete specification was to be supplemental to the provisional, not varying from it as to the nature of the invention, but conveying additional information as to how the invention was to be performed: Penn v. Bibby n(1) . And under the Patents, Designs, and Trade-marks Act, 1883, it has been held that although a patentee in his provisional specification has stated a different mode of carrying his invention into effect from that which he has described in his complete specification, the patent is not bad if both are really within the invention described in general terms in the provisional specification: Woodward v. Sansum & Co. n(2) .

[They also referred to In re Newall and Elliot n(3) and United Telephone Company v. Harrison, Cox-Walker and Co. n(4) .]

[A. L. SMITH, J., referred to Nuttall v. Hargreaves n(5) .]

1892. March 30.

PANEL: A. L. SMITH, J

JUDGMENTBY-1: A. L. SMITH, J

JUDGMENT-1:
A. L. SMITH, J: :-

This is an action brought by Mr. St. George Lane Fox, an electrician of high repute, to test the validity of a patent taken out by him on the 9th of October, 1878. The Plaintiff alleges that he then hit upon the idea that, by utilizing secondary batteries, as invented by Plant , and coupling them up to the mains which conveyed the electro-motive force in his system of distribution of electricity, such force could be kept constant in the mains, and thus an even steady light would be had in incandescent lamps which otherwise would not be. The Attorney-General designated this invention as being one to keep a constant potential n(6) at the lamps with a variable load.

It has been proved that the system of distribution of electric

n(1) Law Rep. 2 Ch. 127, 132.

n(2) 4 Rep. Pat. Cas. 166, 174.

n(3) 4 C. B. (N.S.) 269.

n(4) 21 Ch. D. 720.

n(5) [1892] 1 Ch. 23.

n(6) “Potential” has since been defined by Lord Halsbury, L.C., in the House of Lords, as meaning “the intensity of pressure by which the electricity is caused to pass along a conductor”: Anglo-American Brush Electric Lighting v. King, April 5, 1892.

current for incandescent lighting, in conjunction with the use of secondary batteries as reservoirs, was a novel and valuable suggestion which has aided the perfecting of that science which has culminated in the incandescent lighting of the present day, and it certainly appears to me that, if the Plaintiff did invent and carry to a practical result what is now claimed for him, he is an inventor of very great merit.

some ten years prior to the year 1878, Gaston Plant had invented and brought into use what is known as a “secondary battery,” that is, a reservoir in which the electric current emanating from a generator could be stored. Daniell, my Brother Grove, and Smee had also invented cells to act as accumulators of electric energy, and these were in common use in telegraphy and other electrical work.

This secondary battery of Plant consists of a number of cells joined together, each cell holding sulphuric acid, in which are immersed plates of lead rendered porous and oxidized by a process fully described by him.

These secondary batteries had, before 1878, been used for the storage of electric energy, and utilized, among other things, for the ringing of bells or kindling lights, the energy, when wanted, being let out of the secondary battery by the pressure of a button, as is well known to many.

Prior to 1878 attempts had been made at lighting by electricity, the means adopted being to place arc lamps into what is called series – that is, into line – and to pass the electric current through each lamp and thence to what is known as “earth.” This system, though suitable to the lighting of lamps in streets and such like, was not adapted to light the interior of houses and other buildings, as is now done by incandescent lighting, and, to use the words of Sir Frederick Bramwell, a director of the defendant company, “The great question of the day was the distribution of electric light.”

In this state of circumstances the Plaintiff took out his patent of the 9th of October, 1878. In it, among other things, he sought to bring about a distribution of the electric current, or, in other words, to divide the main current into a number of small currents branching off from the main current, and again branching off

from them, so that by placing his lamps into what is called parallel – that is, at the side of the main current instead of in a line with it – each lamp might be fed by a small current which, when it had performed its mission at the lamps and exhausted its energy, or, in technical language, had reached zero potential, should pass on therefrom to earth. By this means of distribution of the electric current, and the other means stated in the specification, the Plaintiff designed to light, by incandescent lighting, towns and other inhabited districts. The name the Attorney-General gave to the proposed system was “The Multiple-Parallel Incandescent Bridge.”

The Plaintiff, as before stated, for the purpose of carrying out his proposal, determined to couple up the secondary batteries of Plant to his system of distribution. The complete specification as it now stands, states that the purpose for so doing was to distribute and “regulate the electric current” for obtaining light by electricity. The Plaintiff’s case is, that, by coupling up secondary batteries to the mains, the electric energy therein would flow from the mains into the batteries when the energy in the mains was above equilibrium, and also reflow from the batteries into the mains when the energy therein was below equilibrium, and that thus a constant potential would be kept in the mains and the light in the lamps steady.

The Defendants, in the first place, assert that the specification shews that Plant batteries were resorted to by the Plaintiff, not for the purpose, as he now states, of regulating the electric current, but for the purpose of storing up what excess motive force might emanate from the generator when the load upon the main was light, or, in other words, when lamps were off, and of using such stored up force when the load upon the mains became heavy – i.e., when the lamps were on – or when the generator was not at work. They say that the present claim of the Plaintiff, as to using secondary batteries for regulating the electric current, is not to be found in the complete specification as it originally stood, and that it is only rendered possible by an adroit amendment made therein in the year 1883, when the second disclaimer took place.

It becomes necessary to see what the complete specification

did contain when filed on the 9th of April, 1878. The Attorney-General, in opening the case, and again at the end of his reply told me that if Mr. Lane Fox had now, in the year 1892, to sit down and re-write a provisional and complete specification of his invention of 1878, with all his subsequent knowledge, he would write them again in the same words and the same form. This statement in reply somewhat stretched my credulity, seeing that he and Sir Horace Davey had occupied me for fifteen days in trying this case, a very considerable portion of which had been taken up in discussing what the two documents meant.

By the complete specification, Mr. Lane Fox claimed for improvements in electric lighting by, amongst others, the six following means:- (1) By means of the distribution of electric energy by mains, branches, and sub-branches; (2) by means of this distribution in conjunction with incandescent lamps; (3) by means of an apparatus for measuring electricity; (4) by means of the employment of secondary batteries as reservoirs in combination with his system of distribution; (5) by means of the use of a regulator and other mechanical mechanism wherewith to regulate the electro-motive force in the mains; (6) by means of mechanism wherewith to convey electric energy. On the 26th of January, 1882, the Plaintiff disclaimed his claim to his appliances wherewith to measure and to convey electric energy, and on the 30th of July, 1883, he further disclaimed his claim to his distribution of the electric current, whether alone or in conjunction with the incandescent lamp, and also his claim to the regulation of the electric energy by the electrometer.

It will be seen that all that was left of his patent, as the specification now stood, was his claim for distributing and regulating the electric current for obtaining light by electricity by means of the employment of secondary batteries, as reservoirs of electricity, in combination with a mode or system of distribution of electric energy.

In the complete specification, after describing a lamp and the way of distributing the electric energy and the means for measuring it, the Plaintiff makes this statement: “The electromotive force of the electric conducting mains should be kept as nearly as possible constant at, say, 100 volts or British Association

units of electro-motive force. The Attorney-General, in opening this case, stated that this mention of 100 volts shewed the foresight of Mr. Lane Fox, for it was the pressure now universally adopted. This, upon the evidence, appears not to be so, nor does there seem to be any special virtue at all in having a pressure of 100 volts.

[His Lordship referred to evidence as to the pressure now used in various places, and continued:-]

Mr. Lane Fox then proceeds to deal with secondary batteries as follows: “A number of secondary batteries, such as Plant ‘s (lead and sulphuric acid) … such batteries being joined together in series between the main and the earth, will serve as a kind of reservoir for the electricity. The cells should have a very large conducting surface, and there should be several batteries connected up at various points of the mains, so that, by increasing the electro-motive force during the hours when not much electricity is being used, they will become charged, and the electric force will be stored up in them, so that a sufficient supply will be available, when the electro-motive force falls owing to the draft from the mains, when the force is most used and needed. The number of cells in each of these batteries will depend upon the electro-motive force of the mains. Figure 5 is a diagram representing a secondary battery joined up between the main and the earth for the purpose above described. E indicates earth, and l lamps.”

It is true that in the paragraph about secondary batteries Mr. Lane Fox does not mention anything about their being employed to keep the electro-motive force in the mains constant, but in another place he is explicit on the matter. He says: “In order to keep the electro-motive force in the electric mains constant, it is desirable to have, in the first place, several generating machines, also a number of reservoir batteries as before explained.” He then goes on to disclose his electrometer as follows: “Next, it is necessary to have some regulator such as that about to be described. In my regulator I make use of what is known as the quadrant electrometer.” He then describes the instrument, and finishes thus: “The electro-motive force can be regulated either in this manner or by otherwise

effecting the action of the electric generators through the instrumentality of the currents set up by the pegs above described, so as to increase or diminish the action of the generators.”

It was known to electricians at the time that, by reason of the resistance of the mains, the further the electric current travelled up them from the dynamo, the less was the potential in that current; or, in other words, that, by reason of the resistance of the mains, the further the lamps upon circuit were situated from the dynamo, the less illuminating power they received. This, upon a long circuit, was matter of moment.

Anxious as I am to read the specification in favour of the patentee, I cannot do so without seeing that Mr. Lane Fox, when he drafted it in April, 1879, had in his mind, as regards the matter now in hand, two separate and distinct ideas. The one was, that by coupling up secondary batteries to his system of distribution of electric current, he might be able to neutralize the pressure of the mains, and thus render constant the electromotive force therein (this would be in aid of the dynamo). The other was to regulate such electro-motive force in the mains (and this, as it seems to me, was for the benefit of the lamp). These ideas are separate and distinct.

In my judgment, the Defendants are not correct when they state that Mr. Lane Fox, by this specification, only claimed the use of secondary batteries as reservoirs, for, by these batteries he also claimed to keep the electro-motive force in the mains constant. I am against the Defendants on this point.

The Defendants, however, say that, if the specification is to be read as I read it, the patent is bad, because the complete specification, as it now stands, is not in conformity with the provisional. This point appears to me to be a formidable one for the Plaintiff.

It is unnecessary to go over the earlier cases cited by counsel on either side, for they are dealt with in the late case in the Court of Appeal of Nuttall v. Hargreaves n(1) . The law is clear. It is this: A patentee must describe the nature of his invention in his provisional specification. He need not go into details, but he must describe, as I have said, the nature of his invention.

n(1) [1892] 1 Ch. 23.

In his complete specification, when going into detail, he must describe the same invention; if not, the patent is bad.

Now, what has Mr. Lane Fox done here? In his provisional specification he states: “The electro-motive force of the electric conducting mains should be kept as nearly as possible constant at, say, 100 volts or British Association units of electro-motive force. A number of Plante’s (lead and sulphuric acid) cells, joined together in series between the main and the earth, will serve as a kind of reservoir for the electricity.” “In order to keep the electro-motive force in the electric mains constant, it is desirable to have in the first place several generating machines.” It must be noticed that he does not here state that secondary batteries are available for this constancy, as in his complete specification he does, but proposes that the generators should keep the electro-motive force constant and not even in conjunction with the secondary batteries. He then goes on to state that it is necessary to have the electrometer for the purpose of regulating the electro-motive force.

This provisional specification, reading it most favourably for the Plaintiff, can only be read to claim, for the invention of using secondary batteries, the keeping of the electro-motive force constant.

I have no doubt that in the complete specification, as originally filed in April, 1879, the words “regulating the electric current” at page 3, line 16, and at page 5, line 44 n(1) , were solely applied to the electrometer. What has been done is this: Upon disclaiming the electrometer on the 30th of July, 1883, four years after the complete specification, it was sought to apply the words “regulating the electric current,” which had been theretofore applicable solely to the electrometer, to secondary batteries, so as to claim for them, not only the power of keeping the force constant in the mains, but of regulating it therein. The question is, Does the Plaintiff now claim for the same invention in his complete specification as it stands, as he did in his provisional specification? I say he does not.

In the provisional specification he claimed as his invention the use of secondary batteries, in aid of the dynamo, to keep the

n(1) The beginning and end of the specification.

electro-motive force in the mains constant, whereas he now, by his amendment of his complete specification, claims as his invention the use of secondary batteries, not only to keep the electromotive force constant in the mains in aid of the dynamo, but also to regulate the electro-motive force in the mains for the benefit of the lamps. The case is this: In the provisional specification he claimed, by his use of secondary batteries, invention X. In the provisional specification he further claimed, by his use of the electrometer, invention Y. In the complete specification he now claims by the use of the secondary batteries, inventions X + Y. How can it be said that he now claims in the complete specification the same invention as he did in the provisional, unless X and Y are the same invention, which, in my judgment, they are not? And, what is more, the evidence leads me to conclude that secondary batteries when coupled up to the main will, under certain conditions, bring about some of the regulative force originally claimed for the electrometer, but automatically will not bring about the constancy originally claimed for them.

The eminent electricians called by the Plaintiff, in conjunction with those called by the Defendants, have satisfied me that in some circumstances, especially when fully charged, secondary batteries coupled to the Plaintiff’s system of distribution have an inherent power of regulating the electro-motive force in the mains, but the amount and value of such power was matter of keen dispute. The evidence shews that the batteries, automatically worked, will not keep the electro-motive force in the mains constant.

The Plaintiff declared that his invention was a departure from many of the things written before 1878, and, as regards that part of his invention for distributing electric current, together with coupling up of secondary batteries to the mains, I think may be so.

[His Lordship referred in detail to the evidence of the witnesses with respect to the extent of regulations effected by secondary batteries, and continued:-] In my judgment the Plaintiff, as to the controlling effect of secondary batteries, has placed his case too high, and the real truth is that if there be a short quick flicker at a lamp, a secondary battery coupled up to a main

will at times help to diminish it; but that second batteries, as designed to be used by the Plaintiff, i.e., to work automatically and without mechanical and manual devices, will not bring about that constancy of pressure which the Plaintiff claimed for them in his original specification.

The result of the evidence upon this head I may, I think, accurately sum up in the words of an article in the Engineer newspaper of the 26th of December, 1890, which the Attorney-General used largely in cross-examination of the Defendants’ witnesses. Mr. Crompton, Mr. Miller, and Mr. Kennedy said that the words were fairly accurate. They are as follows: “One of the advantages found by having more than one pair of batteries attached to the system at points tolerably wide apart is, that the effect of the regulating movement of switching in an extra cell which would show a difference of two volts on the lamps, is partly neutralized by the distant battery.” Mr. Lane Fox, in his declaration made in March, 1883, stated that the effect of the change of about one volt upon a lamp was practically nothing; and if Professor Forbes was correct in stating that there was a change going on of from fifteen to twenty volts in the lights in my Court, it is obvious to me that a two-volt change is of little importance. The Board of Trade sanction a change of four volts up and four volts down.

In my opinion, the point taken up by the Defendants is fatal to the Plaintiff’s case, and the complete specification as it now stands does not claim the same invention as the provisional.I might stop here, but as others may not agree with me I shall give judgment also upon some of the other points raised. [His Lordship dealt with other points of the case, and concluded as follows:-]

I have now held that the patent is bad upon the ground that the complete specification does not conform with the provisional, upon the ground that the invention as described cannot be made to work, and also upon the ground that, if it could, no sufficient information is given as to how it was to be made to work; and I have stated my reasons fully for so holding. It is not necessary to give any further judgment in the case, but, had the Plaintiff been able to surmount the above-mentioned difficulties, and had

he established that by his invention he could have brought about what the Attorney-General said he could, my judgment would have been that his invention was the subject-matter of a patent, that it had not been anticipated, and that the Defendants had infringed it.

I give judgment for the Defendants with costs.

SOLICITORS:
Solicitors for Plaintiff: Vandercom, Hardy, Oatway, & Doulton.

Solicitors for Defendants: Deacon, Gibson, & Medcalf.

F. E.

(c)2001 The Incorporated Council of Law Reporting for England & Wales

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