IN THE MATTER OF A PETITION FOR THE REVOCATION OF KROMSCHRÖDER (G.) A.G.'S PATENT NO. 755,462

75 [1960.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.3 In the matter of a Petition for the revocation of Kromschroder (G.) A.G.'s Patent No. 755,462. IN THE COURT OF ApPEAL. Before LORD EVERSHED, M.R., LORD JUSTICE PEARCE AND . LORD JUSTICE UPJOHN. 16th, 17th, 18th and 19th January and 25th February, 1960. 5 IN THE MATTER OF A ,PETITION FOR THE REVOCATION OF KROMSCHRODER (G.) AG.'s PATENT No. 755,462. Patent-Validity-Petition to revoke convention patent on grounds (inter alia) of prior claiming and false suggestion-Meaning of "was claimed" in Sec. 32 (1) (a)ludgment for Petitioners-Appeal by Patentees allowed and petition dismissed 10 with costs-Claim to combination not rendered invalid by prior claim to such combination with additional integers. Patents Act, 1949, Sec. 14 (1) (a) (c) (J). This was a petition for the revocation of K. AG.'s L.P. No. 755,462 relating to " Dry Gas Meters" the alleged grounds of invalidity material for the purposes 15 of this report being prior claiming Sec. 32 (1) (a) and false suggestion Sec. 32 (1) (j). K. AG. had made two applications for patents in Germany, viz., K15,207 and K17,996 and had obtained under the International Convention two corresponding British patents, viz., L.P. Nos. 716,771 and 755,462, and this petition sought the revocation of the latter patent on the grounds (inter alia) that 20 the invention claimed by its first claim had been validly claimed by the first claim of L.P. 716,771 and also that the Applicants for L.P. 755,462 had falsely stated that the first application in a Convention Court for the protection of the invention the subject of such application had been K17,996 whereas in truth the first application for such protection had been K15,207. 25 Lloyd-Jacob, I., found for the Petitioners on both these points and ordered L.P. 755,462 to be revoked. The Patentees appealed from this decision. Held by the Court of Appeal (Lord Evershed, M.R., Pearce and Upjohn, L.JI.) (1) That Claim 1 of L.P. 716,771 was for a combination of integers which included as a sub-combination the integers specified in Claim 1 of L.P. 755,462 but required 30 the presence of other integers also, and that there was no. claim, express Dr implied, in the earlier patent for the combination the subject of Claim 1 of the later patent. (2) That the subject matter of K15,207 was not the subject matter of L.P. 755,4~2. • For a fuller headnote, &C. see [1959] PI>. 309, et seq. 76 No.3] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1960.] In the matter of a Petition for the revocation of Kromschroder (G.) A.G.'s Patent No. 755,462. Appeal allowed and petition dismissed with costs in both Courts. of validity granted to Patentees. Certificate Leave to Petitioners to appeal to the House of Lords. Reference was made in the judgment to the judgment of Fletcher Moulton, L.J., in British United Shoe Machinery Coy. v. Fussell & Sons Ld. (1908) 25 5 R.P.C.655. This Iwas an appeal by the Patentees of Letters Patent NOo. 755,462, from a judgment of Lloyd-Jacob, J., holding that patent bad on the grounds Oof prior claiming (in SpecificatiOon No. 716,771) and Oof false suggestion (in stating, on the applicatiOon form for the patent, that the first foreign application to protect the 10 invention was German Application No. K17,796 whereas it was the eadier K15,207). The Petitioners, on the appeal, did not raise the issue of laok of inventive subject matter (on which they had relied below) so that the appeal concerned only prior claiming and false suggestion. The specification in suit; the alleged prior claiming specificatiOon ; and the earlier 15 German Specification NOo. K15,207 are printed as part of the report Oof the judgment below. * The specification of the application for the patent in suit, as originally filed together with the application alleged to contain a false suggestion, contained the following Claim 1, to which the others were subordinate: 1. Gas meter in combination with a pipe line connector piece cOonnected 20 to the supply and disoharge pipe, in which the ,supply and discharge conduit lie concentrically within one another in a connector socket o[ the device, according to Patent Application No. 30533/53 [716] characterised in that the connector socket of the gas meter ,consists of Itwo concentric tubular ,sockets (2,7,7') inserted in the plane of symmetry into the meter casing (1), one of which 25 issues intOo the interior of the casing, while the other one is in communication with the discharge manifold (9) through a connector piece (8,11,15). The appeal came on for hearing on 16th January, 1960. Johnston, Q.C. and John Whitford (instructed by Lovell, White & King) appeared on behalf of the Appellants. 30 G. D. Everington and R. A. Stanley (instructed by G. B. & L. Ellis) appeared ')n behalf of the Respondents. Johnston, Q.C., for the Appellants (Patentees).-The two issues, prior claiming and false suggestion, were argued below on the basis that if prior claiming failed there was no false suggestion; but they are treated separately in the judgment. 35 As to prior claiming: 716 was not a patent for a gas meter and there is no description of ~he gas meter. If the gas meter is included at all, it is included merely as one element of a combination and only the combination is claimed. 755 claims !the meter, and the question is whether the gas meter " was claimed in " a claim ·bf" 716. A claim to a combination is not a claim tOo a part: British 40. United Shoe Machinery Coy. v. Fussell (1908) 25 R.P.C. 631 at 652, 653-6. Even if a man carrying out 716 would naturally use a gas meter according to 755, or is told to use a gas meter according to 716, it does nOot follow that there is prior claiming: Pugh v. Riley Cycle Coy. (1913) 30 R.P.c. 12, 514 at 525-6 ; '" The judgment below is reported at [1959] R.P.C. 309 at 322. It should be noted that in the specification of German Application K15,207 as printed at [1959] R.P.C. 317, italics occur at lines 30-31, which are not in the original; and that of the illustrations of the prior art at [1959] R.P.C. 320, the first three are printed upside-down. 77 [1960.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.3 In the matter of a Petition for the revocation of Kromschroder (G.) A.G.'s Patent No. 755,462. 31 R.P.C. 266; where the drawings of the two paltents were the same and both had "substantially as described" claims. There is here no specific disclaimer in 716 of the meter of 755 (as in Pugh v. Riley, supra) but what is not claimed is disclaimed. The Judge below compared the inventive steps of 716 a\1d 755, 5 and decided thail: the cla~ms of 716 included what was claimed in 755; but that is not warranted by the wording of Sec. 31 (1) (a). ~Oounsel also referred, on this issue, to: Dewandre v. Citroen Cars (1930) 47 R.P.C. 221 ; Mullard v. Philco (1935) 52 R.P.C. 261 at p. 277; Commercial Solvents' Appln. (1954) 71 R.P.C. 143; Macfarlane's Appln. (1954) 71 R.P.C (...truncated)