Raleigh Cycle Company Ltd v H. Miller & Company Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Simonds,Lord Normand,Lord Oaksey,Lord Morton of Henryton,Lord MacDermott |
| Judgment Date | 30 November 1950 |
| Judgment citation (vLex) | [1950] UKHL J1130-1 |
| Date | 30 November 1950 |
| Court | House of Lords |
[1950] UKHL J1130-1
House of Lords
Lord Simonds
Lord Normand
Lord Oaksey
Lord Morton of Henryton
Lord MacDermott
Upon Report from the Appellate Committee, to whom was referred the Cause Raleigh Cycle Company Limited and another against H. Miller and Company Limited, that the Committee had heard Counsel, as well on Monday the 23d, Tuesday the 24th and Wednesday the 25th, days of October last, as on Wednesday the 8th and Thursday the 9th days of this instant November, upon the Petition and Appeal of the Raleigh Cycle Company Limited, having its registered office at 177 Lenton Boulevard, in the City of Nottingham and George William Rawlings, of Hyde House, Station Road, Kenilworth, in the County of Warwick, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of His Majesty's Court of Appeal of the 19th of May 1949, might be reviewed before His Majesty the King, in His Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioners might have such other relief in the premises as to His Majesty the King, in His Court of Parliament, might seem meet; as also upon the printed Case of H. Miller and Company Limited, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of His Majesty the King assembled, That the said Order of His Majesty's Court of Appeal, of the 19th day of May 1949, complained of in the said Appeal, be, and the same is hereby, Affirmed, and that the said Petition and Appeal be, and the same is hereby, dismissed this House: And it is further Ordered, That the Appellants do pay, or cause to be paid, to the said Respondents the Costs incurred by them in respect of the said Appeal, the amount thereof to be certified by the Clerk of the Parliaments.
My Lords,
I have had the advantage of reading the opinion which my noble and learned friend Lord Morton of Henryton is about to deliver and, as I agree with him in thinking that this appeal should be dismissed, I will content myself with a few observations.
I am fully in accord with my Lord in thinking that, assuming that Mr. Justice Vaisey had jurisdiction to make the Order which the Appellants seek to restore, yet he clearly ought not to have made it, and that it would be in accordance with the principles upon which an Appellate Court overrules the exercise of its discretion by a lower Court for your Lordships to refuse an amendment which Mr. Justice Vaisey in the exercise of his discretion thought fit to allow. When this matter first came before this House, the opinion was unanimously expressed—by myself perhaps more strongly than by others of your Lordships—that the first four claims of the patent were invalid on the ground that the scope of the monopoly claimed was not sufficiently and clearly ascertained. That this among other grounds of attack would be sustained by the Respondents was clear from the outset; yet the Appellants chose to contest the point up to this House and only, when after protracted litigation the issue was decided against them, sought leave to amend the specification. It may be as my noble and learned friend points out that cases will occur in which such a course will be permissible, but I can see here no such circumstances as would justify it. It is at this point that in my opinion the learned Judge fell into error. He did not give any or any sufficient weight to a consideration which in my opinion was paramount and cannot be held to have exercised his discretion properly.
This is sufficient to dispose of the appeal and I do not think it necessary to discuss the question of jurisdiction. That is a question upon which I have felt great difficulty and I am by no means satisfied that section 32A of the Patents and Designs Act, 1907-1946, does not create an entirely new sphere of jurisdiction in which section 22 of the Act has no place.
I move your Lordships that this appeal be dismissed with costs.
My Lords,
I agree that the appeal should be dismissed. I am far from being persuaded that the Court of Appeal erred on the question of jurisdiction. But on the question of discretion I agree with the opinion of my noble and learned friend Lord Morton of Henryton, which I have had the advantage of reading in print.
It must have been apparent to the Appellants from the cross-examination of their first witness in the trial that an attack was to be made on the validity of the four first claims and what the basis of the attack was. They were then, in my opinion, put to an election between amending these claims and continuing their action without amending while maintaining that the claims were valid. They chose the second alternative and now seek all the advantages of amendment which they then rejected. Without going so far as to say that a patentee can never in any circumstances be allowed to do this. I think that he cannot be allowed so great an advantage except in very special circumstances which are not here present.
I would not interfere with the exercise of the judicial discretion unless I were satisfied that the learned judge had taken too narrow a view of the principles which should govern its exercise. He did not take into account the public interest which is injured when invalid claims are persisted in so that inventors are illegitimately warned off the area of the art ostensibly monopolized by the claims. And he failed to take into account the interest of the patentee's opponents in the litigation. The amendment of the claims at the time when the Defendants' objections to them were disclosed by cross-examination would certainly have simplified and shortened the proceedings and might even have brought them to an end.
My Lords,
I have had the advantage of reading the opinions of the noble and learned Lord on the Woolsack and of my noble and learned friend Lord Normand. I agree with them and have nothing to add.
My Lords,
It will be convenient to refer to the present Appellants as "the Plaintiffs" and to the present Respondents as "the Defendants".
The Plaintiffs are the owners of Letters Patent No. 468065 for "Improvements in Electric Generators". It is not necessary to describe the Plaintiffs' invention at this stage, but it should be stated that the complete specification contained five claims.
On the 18th July, 1939. the Plaintiffs issued a writ against the Defendants, alleging infringement of their Patent and claiming the usual relief in an infringement action.
The Defendants alleged that the Patent was invalid, denied infringement and counterclaimed for revocation of the Patent.
The trial of the action was delayed owing to the war and took place before Vaisey, J. in 1945. The learned Judge held the Patent to be invalid, dismissed the action and on the counterclaim ordered the Patent to be revoked.
The Plaintiffs appealed to the Court of Appeal, and that Court unanimously upheld the Order of Vaisey, J. but for reasons different from those given by him.
The Plaintiffs appealed to this House, and on the 13th February, 1948, this House, by a majority of three to two, declared that Claim 5 of the Patent was a valid claim and had been infringed but unanimously held that Claims 1 to 4 were invalid. The Order of the Court of Appeal was reversed, the judgment of Vaisey, J. was discharged and it was ordered:
"That the cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice to determine what, if any, relief should be granted to the Appellants in accordance with section 32A of the Patents and Designs Act, 1907-1946, and to do therein as shall be just and consistent with this Judgment".
The last 13 words of this Order were not included in the Order as agreed in the speeches of the majority, but were inserted, I understand, in accordance with a long-standing custom. I need not further comment upon this matter, as Counsel on both sides conceded that these words added nothing to the effect of the Order.
Section 32A of the Patents and Designs Act. 1907-1946 (hereafter called "the Act") is as follows:—
Section 32a.
"Where the court in any action for infringement of a patent finds that any claim in the specification, in respect of which infringement is alleged, is valid, but that any other claim therein is invalid, then, notwithstanding anything in section twenty-three of this Act—
( a) if the patentee furnishes proof to the satisfaction of the court that the invalid claim was framed in good faith and with reasonable skill and knowledge, or if the patent is dated before the commencement of the Patents and Designs Act, 1932, the court shall, subject to its discretion as to costs and as to the date from which damages should be reckoned, and to such terms as to amendment of the specification as it may deem desirable, grant relief in respect of any valid claim which is infringed without regard to the validity of any other claim in the specification and in exercising such discretion the court may take into consideration the conduct of the parties in inserting the invalid claim in the specification or permitting that claim to remain there;
( b) if the patentee does not furnish proof as aforesaid and the patent is dated after the commencement of the Patents and Designs Act, 1932, the court shall not grant any relief by way of damages or costs, but may grant such other relief in respect of any valid claim which is infringed as to the court seems just, and may impose such terms as to amendment of the specification as a condition of granting any such relief as it may deem desirable;
( c) if a counter-claim for...
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