Swinborne v Nelson
| Jurisdiction | England & Wales |
| Judgment Date | 01 January 1852 |
| Date | 01 January 1852 |
| Court | High Court of Chancery |
English Reports Citation: 51 E.R. 839
ROLLS COURT
S. C. 22 L. J. Ch. 331; 1 W. R. 155. See Elmer v. Creasy, 1873, L. R. 9 Ch. 72.
[416] swinborne v. nelson. Dec. 10, 11, 1852 ; Jan. 28, 1853. [S. C. 22 L. J. Ch. 331; 1 W. E. 155. See Elmer v. Creasy, 1873, L. R. 9 Ch. 72.] The Plaintiff's right to discovery and to production rest on the same principle. A Defendant who submits to answer must answer fully ; he cannot, by denial of the Plaintiff's title, escape answering. Discovery of title-deeds and of professional communications forms an exception. The Plaintiff and Defendant had both patents for making gelatine. The Plaintiff instituted his suit for redress against an alleged infringement of his patent, and the bill contained searching questions, requiring the Defendant to set forth all the articles manufactured by him, the names and addresses of his customers, the prices and the profits, &c. The Defendant denied all infringement. He said he had made his articles according to his own and not according to the Plaintiffs patent, and he declined to give an account of such articles. Held, that, notwithstanding his denial, he was bound to do so. Dissent from the doctrine laid down in Adams v. Fisher, 3 Myl. & Craig, 526. In 1837 Nelson obtained a patent for the manufacture of "isinglass," and in 1839 he obtained a patent for making "gelatine." [417] In 1847 Swinburne obtained a patent for making " gelatinous substances," the specification of which he inrolled on the 24th of May 1848. The Plaintiff by this bill alleged that the Defendants had infringed their patent, by manufacturing articles sold by them as " gelatine" and " isinglass," by a process substantially 840 SWINBORNE V. NELSON 16 BBAV. 418. similar to the process described in the specification of the 24th of May 1848, or only colourably differing therefrom; and alleged that the Defendants had resorted to various subtle arts and contrivances to conceal the infringement. The bill charged that the Defendants, after the 24th of May 1848, altered their mode of manufacture ; that several articles now manufactured and sold by the Defendants by the names of "Nelson's Patent Refined Isinglass," &c., and which were then manufactured and sold by them in large quantities, were imitations of the same names respectively manufactured and sold by the Plaintiff, and the one could not, but with great difficulty, be distinguished from the other; and that the articles go manufactured and sold by the Defendants could not have been manufactured by either of the processes described by Nelson under his " isinglass " patent, or his "gelatine" patent, by any process known to or practised by the Defendants, previously to the 24th of May 1848, and that they had been manufactured by them, for the first time, since the 24th of May 1848, and they had, in fact, been manufactured by them by an imitation of the process, or some material part of the process, of Swinborne, as described in the specification. The bill charged that it would so appear, if the Defendants would set forth when they first manufactured, and to whom by name they first sold, any and what quantity of the articles then manufactured and sold by them, under the names of "Nelson's Patent Refined Isinglass," &c., respec-[418]-tively, and from what substance the same respectively were manufactured, and what were the respective processes of such manufacture. The bill also charged that the Defendants " ought to set forth an account of all articles manufactured and sold by them since the 24th of May 1848," under the names of " Nelson's Gelatine Isinglass," &c.f and the quantities thereof respectively, and the names and addresses of the persons to whom sold and at what prices, and the profits which the Defendants had realized thereby. The bill prayed an account of all the articles manufactured by the Defendants since the 24th of May 1848, under the names of "Nelson's Gelatine Isinglass," &c., and the profits made thereby, and for payment to the Plaintiff of the amount, and for an injunction to restrain the Defendants from manufacturing those articles, or any other articles which were an imitation of the articles manufactured and sold by the Plaintiff, under the names of " Patent Refined Isinglass," &c., and for infringing the patent rights of the Plaintiff. The 13th interrogatory asked the Defendants to set forth when they first manufactured, and to whom by name they first sold, any and what quantity of the said article now manufactured and sold by them under the said names of " Nelson's Patent Refined Isinglass," &c., respectively, and what were the respective processes of such manufacture. A subsequent part of the same interrogatory required the Defendants to set forth an account of all articles manufactured and sold by them since the 24th of May 1848, under the names of "Nelson's Gelatine Isinglass," [419] &c., and the quantities thereof respectively, and the names and addresses of the persons to whom sold and at what prices, and the profits which the Defendants had realized thereby. The principal Defendant, by his answer, denied the novelty and utility of the Plaintiffs alleged invention. He also denied, altogether, the infringement by him of the Plaintiff's patent, and the circumstances alleged in respect to...
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