1907. In the PERPETUAL The TRUSTEE CO. v. ORR. Higgins J. and under the New South Wales practice no equitable pleading H. C. OF A. can be supported unless it alleges facts in which an absolute and unconditional perpetual injunction would be granted. present case no Court of Equity would grant a perpetual injunction unless on the terms that the plaintiff's pay the rent paid by the defendants for the new lease granted by the Crown, and indemnify the defendants against the covenants. nearest analogy that I can think of is the case of a constructive trust, and the form of the decree in such a case is set out in Giddings v. Giddings (1). The decree there was, in substance, that upon the death of the tenant for life the remainderman became entitled to the benefit of the lease acquired by the tenant for life subject to the payment of a rateable proportion of the fine paid on the renewal, and subject also to the payment of rent; and it was referred to the Master to inquire and ascertain and certify the amount of the fines paid by the tenant for life, and to compute interest thereon, and to approve of a proper assignment to be executed by the defendant to the plaintiff of the subsisting term and interest, and to approve of a proper deed of indemnity to be executed by the plaintiff against the payment of the yearly rent and the performance of the Covenants in the lease. I may refer also to the cases referred to in Lewin on Trusts, 10th ed., p. 197, to Keech v. Sandford (2), and to Rowley v. Ginniver (3). many cases which illustrate the strictness with which the Courts of common law in England, so long as they adhered to the system of pleading to which the State of New South Wales still adheres, treated pleadings on equitable grounds. Where the machinery of the Courts of common law did not enable them to do final and complete justice between the parties by means of a perpetual unconditional injunction, the pleading was held to be bad: Gorely v. Gorely (4). But, although I do not discuss the other points which have been referred to in this case, I think it well to state, above all in a matter of title, to prevent any misapprehension, that I am not satisfied that the lessors had under (1) 3 Russ., 241. (2) 2 Wh. & Tud. L.C. in Eq. (7th ed.), vol. II., p. 693. (3) (1897) 2 Ch., 503. There are 1907. PERPETUAL LTD. Окк. Higgins J. H. C. OF A. the Crown Lands Acts any preferential right to a lease of the 100 feet, or that the Crown could not grant a lease thereof to a stranger. I am certainly not prepared to differ from the TRUSTEE Co. Full Court on this point. But, even if there was such a preferential right, I cannot find any fiduciary or other obligation on the part of the defendants, having got the new lease (and for this purpose we must assume the new lease to be valid), to treat the lease as having been obtained for or in the interests of the lessors. The replication, it is true, alleges that the new lease was obtained by the defendants by virtue of their title to and possession of the said residue of the said lands under the said lease." This is rather an allegation of law than of fact. I do not see a basis for it in law; and, even if it be treated as an allegation of fact, why should that fact give the benefit of the new lease to the plaintiffs, whether they take on themselves the burden of the covenants or not? The cases are collected in In re Biss Biss v. Biss (1). Nor do I see any ground for treating the defendants as estopped (as the plaintiffs contend) from insisting on a deduction of an apportioned part of the rent; for I can find no representation of an existing fact on which the plaintiffs acted; and there is no allegation of any contract. I may be permitted to add that, in my opinion, fully one half of the time and labour which this case has involved could, in all probability, have been saved to the Court and to counsel if, as under the English Judicature Acts, the same Court could deal freely with equitable and legal rights, so as to do justice once and for all between the parties litigating. Appeal dismissed with costs. Solicitor, for the appellants, F. A. Davenport. (1) (1903) 2 Ch., 40. C. A. W. 1907. Patent Application— Opposition- Invention already in possession of public- H. C. OF A. Description in specification of State patent-Construction of claim-Opportunity for applicant to amend-Claim for combination—Patents Act 1903 (No. 21 of 1903), secs. 56, 78. An application for letters patent for a method of treating ores, including iron oxide ores, was opposed by the holder of a patent granted in one of the States for a method of treating iron oxide ores. The Court having found on the evidence that the applicant's invention, as described in his specification and claim, had, so far as it applied to iron oxide ores, been described in the specification of the opponent's patent : Held, that the applicant's invention was "otherwise in the possession of the public” within the meaning of sec. 56 (ƒ) of the Patents Act 1903, and that a patent should not be granted to the respondent, unless he should within a limited time amend his specification so as to claim any new invention that might be disclosed in his specification. Although in construing a claim the whole specification must be taken into account, yet the applicant for a patent is not entitled to protection for anything which is not claimed. Where a patent is sought for a combination of subordinate processes, and also for some of those subordinate processes themselves, the applicant must make it plain that he intends to claim protection, not only for the combination, but also for those subordinate processes. MELBOURNE, June 11, 12, 13, 14, 17, 18. Griffith C.J., Higgins JJ. H. C. OF A. 1907. MOORE AND v. PHILLIPS. APPEAL from the Commissioner of Patents. On 4th January 1906, Edwin Phillips applied, under the Patents Act 1903, for a patent for a method of treating ores," and lodged therewith a complete specification. On 10th April 1906, notice of opposition to the grant of patent was duly given by Montague Moore and Thomas James Heskett. The grounds of opposition were :— 1. That the invention had been patented in each of the States of Australia. 2. That the invention was not novel. 3. That the invention had been described in a book or other printed publication published in the Commonwealth before the date of application or was otherwise in the possession of the public. The material parts of the applicant's specification and of the specification of the opponents' Queensland patent are sufficiently set out in the judgment of Griffith C.J. hereunder. On the hearing of the opposition, the Commissioner of Patents dismissed the opposition and awarded costs to the applicant. From this decision the opponents now appealed to the High Court. The Irvine K.C. (with him Levinson), for the appellants. objections to the respondent's patent are taken under paragraphs (c), (e) and (ƒ) of sec. 56 of the Patents Act 1903, and are that the invention has been previously patented in Australia, that it is not novel, and that it has been described in a publication published in the Commonwealth, that is to say, in the specification of the appellants' Queensland patent. It is only so far as the respondent's specification and claim relate to iron oxide ores that the objections really go. If the patent is granted as the specification and claim stand, the appellants will be prevented from exercising their patented invention throughout Australia. As to the respondent's claims (1), (4) and (5), they are not novel having regard to the facts. As to those claims the invention has been already patented in Australia because those claims are identical with claims in the appellants' specification. That question depends on a comparison of what the respondent claims 1907. HESKETH with what the appellants claim. If there is not that identity, H. C. OF A. then, at any rate, what the respondent claims has been described in the appellants' specification. That questions turns on a com- MOORE AND parison of the respondent's claim and the appellants' specification. [Counsel referred to Terrell on Patents, 4th ed., p. 157; Corrigal v. Armstrong, Whitworth & Co. Ltd. (1); British Motor Traction Co. Ltd. v. Friswell (2).] Coldham and Mann, for the respondent. The appellants' patent is for a process consisting of a combination of old and well known processes. In that respect it resembles the respondent's claim. Unless it can be said that these two combinations are so alike that no reasonable man could say that they are not identical, the patent should be granted. A patent should not be refused unless the objections are proved beyond possibility of doubt, because irremediable harm is not done by granting it, whereas such damage is done by refusing it: Tolson's Patent (3): In re Russell's Patent (4); In re Spence's Patent (5); Er parte Sheffield (6); Stubbs' Patent (7); Newman's Application (8); In re Stuart's Application (9). The proceedings on an opposition to the grant of a patent are not the same as those in an action for infringement. It was not intended that the examiner, in preparing for a report under sec. 41 (b) as to whether an invention is novel, should go into such inquiries as would be made in an action for infringement. The word "novel" in sec. 56 (e), is used in the same sense as in sec. 41 (b) and refers to user of the invention, and there is no evidence that the respondent's invention had been previously used. Both as to the questions of novelty and prior publication the evidence is not such as to lead to the conclusion that the two combinations of processes are identical. The respondent's combination includes processes not included in the combination of the appellants, and those processes which are common to both are not used in the same order. In construing the claim the whole specification (1) 22 R. P.C., 268. (2) 18 R. P.C., 497. (3) 6 DeG. M. & G., 422. (4) 2 DeG. & J., 130. (5) 3 DeG. & J., 523. (6) L. R. 8 Ch., 237, at p. 240. V. PHILLIPS. |