The Selsdon Fountain Pen

193
Vol. LXVI.] REPORTS OF PATENT~ DESIGN~ AND TRADE MARK CASES [No.8.
Martin and Miles Martin Pen Coy. Ld. v. The Selsdon Fountain Pen Coy. Ld.
The Selsdon Fountain Pen Coy. Ld. v. Miles Martin Pen Coy. Ld.
IN THE HIGH Couar OF JUSTICE-eHANCERY DIVISION.
Before MR. JUSTICE V AlSEY.
25th January, 1949.
Before MR.
Downloaded from http://rpc.oxfordjournals.org/ by guest on March 21, 2016

JUSTICE HARMAN.
5 14th, 15th, ltith, 17th, l Sth, 21st, 22nd, 23rd~ 24th, 25th and 28th February, and
Ist, 2nd, 3rd and 4th March, and Ist April, 1949.
MARTIN and MILES MARTIN PEN COY. LD.V. THE SELSDON FOUNTAIN PEN COY. Ln.
THE SELSDON FOUNTAIN PEN COY. LD. v. MILES MARTIN PEN COY. LD.
Patent-s-Action for infringement of two pate,nts-Construction-Infringement-Equivalents

10 -Subject matter-Ambiguity-Insufficiency-Inutility-Both patents held valid-Infringement
established of one patent only-Costs.
Patent-Threats-Advertisement-Threat of proceedings against any person handling ball
pointed pens-s-Threat held actionable-Threat only partly justified-Relief.
Patent-«T hreats-Practice~1nterrogatories..
15 M proprietor andM.M.P. licensees of Patents 571,698 and 573,747 (hereinafter referred
to as 571 and 573) sued S.F.P. for infringement of both patents by the manufacture and sale
of certain ball-pointed pens. The Defendants denied infringement, alleged that both patents
were invalid on the grounds of want of 'subject matter, ambiguity, insufficiency and inutility,
and counterclaimed for their revocation.
20 Claim 1 of " 571 " was in the following terms.
" Improvements in writing instruments of the ball-tip type, wherein the ink reservoir of
"said instrument is formed by one or more conduits starting at an air intake and, after
" following an extended path, communicating with the recess for said ball, the said conduit
" or conduits being of so small a cross section that a suitable ink cannot escape from the air
25 "intake under the effect of gravity ".
The words after the final comma had been added by amendment,
Claim 1 0/ " 573 " was in the following terms:
" An instrument of the said type in which the ink reservoir for the ball is constituted by
" a capillary tube".
30 S.F.P. manufactured a pen comprising a straight tube full of ink open at one end and with
a ball point at the other, the tube being of 2.5 mm. diameter and the pen being such that ink
did not escape from the open end. It was contended by S.F.P. that their reservoir (being
straight) followed no "extended path" ,. that prevention of escape of ink from the open end
194
No.8.] R'EPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. LXVI.
of the reservoir depended upon the relation between the diameter of the tube and the
clearance between the ball and its housing as well as upon the size of the tube, and that
since this relationship was not discussed in the specification of "571 ", the instructions for
making the pen were insufficient ; that the term "capillary tube" in Claim 1 of " 573 " was
unclear, but in any case excluded a tube of 2.5 mm. diameter, so that this patent was invalid 5
for ambiguity and was not injringed ; that " 573" was also invalid for insufficiency in the
same way as " 571 ", and was also invalid as including cases which were useless because of a
wrong relationship of ball clearance to tube diameter.
Held: (I) That ',' 571 " was not infringed by a straight reservoir, either on the construction

of the claim orunder the doctrine of equivalents ; 10
(ii) That either specification would enable those skilled in the art to make a satisfactory
pen, and that such a pen (if made so as to be satisfactory in other respects) would be free
from escape of ink, and that the attacks upon sufficiency and utility consequently failed ,.
. (iii) That the term "capillary tube" was not uncertain, but meant a tube small enough
to prevent escape of ink, and that neither claim was bad for uncertainty ; 15
(iv) That since the S.F.P. pen was free from escape of' ink, it infringed" 573 " ;
(v) That" 571 " was valid but not infringed ,.
(vi) That "573" was valid and injringed ;
(vii) That the Defendants should pay one-half of the Plaintiffs' costs.
A certificate for three Counsel was refused. 20
. M.M.P. having issued newspaper 'advertisements stating that any satisfactory ball-pointed
pen must infringe some of their patents, and that they would enforce their patent rights against
all persons handling ball-pointed pens not licensed by them, S.F.P. sued to restrain such
threats. M.M.P. having justified the threats on the grounds that the pens infringed "571 "
and " 573 ", and S.F.P. having joined issue on infringement and pleaded that the patents were 2S
invalid, this action was consolidated with the infringement action.
After the pleadings were closed, S.F.P. applied for leave to administer interrogatories
asking 1. in what newspapers and on what occasions those advertisements had appeared,
and 2. as to the knowledge, intentions and beliefs of M.M.P. (who w~re a limited liability
company) at the time of insertion of those advertisements. 30
Held, that only the first class of interrogatories should be allowed.
In the course of his judgment on this summons, Vaisey, J., referred to Franklin v. Daily
Mirror Newspapers Ld. 149 L.~. 433.
At the trial, it was admitted that one ball-pointed pen manufactured by S.F.P. did not
infringe any patent of the Plaintiffs. 35
Held, that such advertisements constituted an actionable threat, which in relation to this
'non-infringing pen was not justified. A declaration to this effect was granted to S.F.P., but
as the defence of justificaiionsucceeded as to the other pen no order was niade as to costs.
In the course of his judgment, Hannan, J., referred to the following cases: Nobel's
Explosives Coy. v. Anderson, 11 R.P.C. 519 ; Electrical & Musical Industries v. Lissen, 40
195
Vol. LXVI.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.8.
56 R.P.C. 23 ; R.C.A. Photophone Ld. v. Gaumont British Picture Corp., 53 R.P.C.· 167 ;
British Thomson-Houston Coy. v. Corona Lamp Works Ld., 39 R.P.C. 49 ; Marconiv. British
Radio Telegraph Coy., 28 R.P.C. 181 ; No-Fume Ld. v. Frank Pitchford & Coy., 52 R.P.C.
231 ; Norton & Gregory,Ld. v. Jacobs, 54 R.P.C. 271; and Non-Drip Measure Co. v.
5 Strangers, Ld., 60 R.P.C. 135.
This was an action for infringement of patent and cross-action for threats, the two actions
being consolidated. (The" threats" action was the subject of certain interlocutory proceed-
ings reported at 65 R.P.C. 365). In the threats action the Miles Martin Pen Coy. pleaded
justification of the threats, the alleged infringers (The Selsdon Fountain Pen Coy.) replying
10 that the patents 'were invalid. The objections to validity that were raised appear sufficiently
from the judgment. .

The Letters Patent in suit were Nos. 571,698 and 573,747. These Letters Patent are
respectively referred to, in the Judgment and throughout this report, as " 571 " and" 573 ".
The Complete Specification of " 571 " was as follows, so far as is material to this report:
15 This invention relates to improvements in fountain pens of the ball tip type, and particularly
to means for providing a regular ink feed to the ball constituting the active or writing element
of said instrument.
The most suitable ink for ball-tip fountain pens is so-called "dense ink" which is very
.adhesive, and the ball, in rotating, 'will transfer to the exterior a regular and sufficient
20 quantity to make neat and normal strokes.
Although dense, such ink: is 'Sufficiently fluid to pass through small orifices, and it is
therefore difficult to prevent leakage while still. providing a permanently open air intake
and one object of this invention is to prevent leakage even when the pen is held with the
air intake downwardly.
25 In the case of a barrel-shaped reservoir, the mass of ink will change its position as the
instrument is moved about, so that 'when the tip of the pen is raised contact between the
ink and the ball is lost and the bubbles formed may not disperse entirely and may interrupt
the normal working of the instrument. Another object of this invention is to overcome
this difficulty,
30 Another object of this invention is to provide an ink reservoir wherein gravity does not
alter the position of the ink and wherein the charge is kept in a satisfactory condition and
forms a continuous vein of liquid, to provide a continuous feed as and when required
without delay or interruption. .
A still further object is to provide an ink reservoir of simple structure which will at the
35 same time be strong.
A still further object is to provide means for replacing the charge of ink by' having
detachable reservoirs.
A still further object is to provide a simple writing instrument of the fountain-pen type
which will not require auxiliary means for causing the ink to reach the writing ball.
40 According to the present invention an instrument of the said type is provided in which
the ink reservoir is formed by one or more .conduits starting at an air intake and after
following an extended path, communicating with the recess for said ball, the said conduit
or conduits being of so small a cross section that a suitable ink cannot escape from the air
intake under the effect of gravity. .
45 According to one method of carrying the invention into effect the ink reservoir is
constituted by one or more conduits arranged in the form of a helical coil.
The above and other objects and advantages of the present invention will become apparent
from the following description, when read· in conjunction with the accompanying drawings
196
No.8.] REPORTS OF PATENT , DESIGN, AND TRADE MARK CASES [Vol. LXVI.
illustrating, by way of example, some of the preferred embodiments of .the invention, and
wherein:
N
FI G./. c 5 ,
5' 5 8
7 C 5 7
N

FI G. 3 c 6
51 75 c 6 iJ
8 5' c
·51 5 c
c 5 c
2- F IG.6.
t:
4
C 5
FIG.? 101 c 5 d
7 5' c! 10 7 C 5'
197
Martin' and Miles Martin Pen Coy. Ld. v. The Selsdon Fountain Pen Coy. Ld.
Figure 1 is a view of one form of the writing instrument, partially in section so as to

disclose the interior thereof.
Figure 2 is, a cross-sectional view taken along the line N-N of Figure 1.
Figure 3 is a schematic view of a helical conduit constituting the ink reservoir of the
5 writing Instrument.
Figure 4 and Figure 5 show further embodiments.
Figure 6 is a schematic view of another form of conduit.
Figure 7 shows a further embodiment, wherein the reservoir is constituted by a detachable
member within the. fountain-pen' casing; and
10 Figure 8 is a view showing the separation of the reservoir.

The same reference characters are used to indicate like or corresponding parts or elements
th.roughout the drawings.
. As ~ay be see!1 from the. ~rawings, a is th~ casing. of t~ewriting instrument terminating
In a.tip b carrying the wntmg ball 1. This ball IS SUItably mounted so as to project
15 s~,fficiently to engage the writing surface, The ball is held by its housing 2 sufficiently
tightly to form a closure but the ball is free to rotate and hold a coating of ink which
will pass out of the instrument when the ball is rotated in writing.
In order to. constitute the housing for said ball I, said tip b is provided with a recess 3
with which the ink feeding channel, 4 receiving the liquid from the reservoir c communicates.
20 Said reservoir c is constituted by at least one conduit 5, which is preferably helical
and, as shown in the drawings, starts at the air-intake 6, extending to the feeder 4.
In the embodiment of Figure 1, the reservoir c is formed by combining a /body 7 and a
cylinder 8 constituted by the casing a. For this purpose, said body 7 is threaded so as to
provide a helical channel 51., The throat of said channel 51 is relatively small, for example
25 of a section of less than 5 mm". The body 7 will co-operate with the cylinder 8 so
that when said body 7 is housed within said cylinder, the channels 51 will be
closed by the said cylinder 8. Under these conditions said channels 51 will form a coil-like
conduit capable of containing a continuous vein of liquid ink.
The schematic embodiment of the coil is clearly shown in Fig. 3, wherein the conduit is
30 represented by a helically coiled tube having a small section.
The embodiment shown in Fig. 4, comprises a helical conduit similar to that of Fig. 1,
t- but with the difference that channel 51 is formed by' a screw-thread provided on the inner
wall of cylinder 8. In this case, the body 7 is smooth and, upon being inserted into. the
threaded wall forming the channel 5\ said body 7 will close the channel and form a
35 helical conduit 5, capable of containing a vein of liquid ink extending from the air-intake 6
to the feeding channel 4. In this embodiment the air-intake 6 is protected by a cap 9
having an orifice, 61 •
Figure 5 shows a further embodiment of the invention, similar to that of Fig. 1 in that
the reservoir consists of a conduit formed by a cylinder 8 and body 7, except that in
40 this instance, the threaded body 7' has two adjacent channels following the same helical
course, after the fashion of a, screw with two threads. The starting point of each channel
will constitute an air-intake 6, and both the screw threads terminate at the feeding channel 4,
as shown.
Figure 6 illustrates a further embodiment of the invention, wherein the conduit 5, instead
45 of being helical, is formed by annular convolutions which are not circumferentially closed,
but communicate in series so as to form a coil which, when charged with ink, will contain
a vein of liquid extending from the air-intake 6 to the feeding channel for said ball 1.
In the embodiment of Figs. 7 and 8, the reservoir c is formed in a member which is
independent of the casing a and detachably housed 'within the said casing. In this instance,
50 the reservoir c is formed Iby' a member c' having a cylinder 10 terminating in a nozzle 101 ,
through which the tube 41 of feeder 4 is screwed. Within said cylinder 10, is a body 7
64979 0
198
No.8.] REPORTS OF PATENT,' DESIGN, AND TRADE MARK CASES [Vol. LXVI.
which, being threaded as in the embodiment of Fig. 1 co-operates with the walls of said
cylinder 10, so as to form a helical conduit 5 terminating at the tube 4 1 so that when
charged with ink, it will contain a vein of liquid which will reach the ball 1 in the same
manner as in the previous embodiments.
Inasmuch as the casing a will serve as a casing for the member c l constituting the 5
reservoir c, it will. be sufficient to detach said casing as shown' in Fig. 8, in order to
remove the member c'. In order to remove said member c l it should be unscrewed from
tube 4 when it will be free for removal and replacement. Thus, when the ink in the
fountain-pen has been exhausted, the charge may be replaced through the simple replacement
of said member and body 7, together constituting the reservoir. 10
From the foregoing it may be seen that in any of the embodiments illustrated in the

different figures, the reservoir c is constituted by a conduit starting at the air-intake 6 and
ending at the feed channel 4.
In charging the writing instrument with dense ink, all the cavities of the system constituted
by the channels should be filled, or in other words, there should be a full charge, from 15
the air-intake 6 to the ball 1.
Inasmuch as the conduit 5 of said reservoir c is of small section, when charged with ink
it will contain an interrupted vein of liquid, as if it constituted an extension of channel 4.
Due to this and to the - relatively adjusted. arrangement of said ball 1 in the setting 2,
whereby the tip of the instrument remains closed, the ink cannot discharge by gravity. 20
Notwithstanding the adjustment of the setting 2, the ball 1 will act as an intermediary
means between the ink 'charge and the writing surface, since due to the adhesive properties
of the ink, upon rotating the said ball it will be coated therewith, said coating passing out
of the instrument so as to define perfectly regular strokes.
As the ink is used through use of the instrument, the charge in the form of a vein of 25
liquid will be displaced 'So as to occupy the space of the portion carried out by the ball.
Said vein of liquid remains uninterrupted and is displaced as a whole the rear terminal
thereof being in contact with the atmosphere by means of said air-intake 6, and therefore
the continuity thereof will subsist as the ink is used, and there will be no risk of interruptions.
The vein of ink reaches the ball through the feeding channel 4, and is always in contact 30
therewith so that the feed will be permanent and the instrument will at all times be ready
for use.
Inasmuch as the reservoir c is formed by a coil of small section the instrument may be
placed in any position and used in any manner without the vein of liquid being affected by
gravity. 35
It is obvious that in carrying the invention into practice, several changes in construction
and detail will occur to those skilled in the art, without departing from the scope of the
invention as clearly set forth in the appended claims. '
Having now particularly described and ascertained the nature of my said invention and
in what manner the same is to be performed, I declare that what I claim is: - 40
1. Improvements in writing instruments of the ball-tip type·, wherein the ink reservoir of
said instrument is formed by one or more conduits starting at an air intake and, after
following an extended path, communicating with the recess for said ball, the said conduit
. or conduits being of so small a cross section that a suitable ink cannot escape from the
air intake under the effect of gravity. 45
2. Improvements in writing instruments as claimed' in Claim 1, wherein the conduit or
conduits constituting the. reservoir is or are in the shape of a 'helical coil.
3. Improvements in writing instruments as claimed in Claim 1 or Claim 2 wherein the
conduit forming the ink reservoir is formed by the combination of a threaded body snugly
fitted with a cylinder formed by the casing of the instrument. 50
199
Vol. LXVI.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.8..
4. Improvements in writing instruments as claimed in Claims 1 or 2 wherein the conduit

forming the ink reservoir is formed by the combination of a body snugly fitted with an
inwardly threaded cylinder constituting the casing of the instrument.
5. Improvements in writing instruments as claimed in Claim 1, wherein said reservoir is
5 constituted by a plurality of helical conduits terminating at the fee-d channel for said ball.
6. Improvements in writing instruments as claimed in Claim 1, wherein said ink reservoir
is formed within a member detachably fitted within the casing of said instrument.
7. Improvements in writing instruments as claimed in Claims 1 and 6 wherein said
member fitted within said casing is screwed to a tube constituting an extension of the ball
10 feeding channel.
8. Improvements in writing instruments as claimed in Claim 1, wherein the conduit of

said reservoir is formed by unclosed, annular convolutions successively communicating with
each other.
9. Improvements in writing instruments as claimed in Claim 1, ·wherein said conduit is
15 smaller than 5 mm" in section.
The Complete Specification of " 573 " (so far as material) was as follows:
This invention relates to writing instruments of the type in which a ball is mounted for
rotation in a housing with part of the ball exposed and is supplied with ink from a suitable
reservoir, the arrangement being such that as the ball is rotated such as by being moved
20 relatively to and in contact with a writing surface the ball carries a quantity of ink
through the housing, which ink is deposited on said surface and a trace is made.
An object of the present invention is to improve the construction of instruments of the
aforesaid type. According to this invention an instrument of the said type is provided in
which the ink reservoir [or the ball is constituted by a capillary tube. The said tube
25 is preferably open at one 'end to atmosphere and at the other end communicates with
the rotatably mounted ball. It is preferably in the form of a series of limbs, each substantially
parallel to the longitudinal axis of the instrument so that a comparatively long length
of continuous tube 'can be accommodated in a. comparatively small compass such as the
usual type of fountain pen casing. The end .of the tube remote from that end which
30 is open to atmosphere conveniently communicates with the ball by way of a duct which
is of the same diameter or cross sectional area as the internal diameter or cross sectional
area of the tube or is smaller. The term tube as used herein where the context so permits
includes a tube like dUtct formed in a body.
In order that the nature of the invention may be more readily understood reference' will
35 now be made to the accompanying drawings in which:-
Figure 1 is a cross sectional view illustrating by way of example one embodiment of the
'present invention.
Figure 2 is a diagrammatic representation of the embodiment illustrated in Fig. 1.
Figure 3 is a cross sectional view illustrating another embodiment.
40 Figure 4 is a cross section on line N.N. Fig. 3.
Figure 5 is a cross section on line S.S. Fig. 3.
Figure 6 is a diagrammatic representation of the embodiment illustrated in Figs. '3, 4 and S.
Figure 7 is a perspective view of yet another embodiment and
Figure 8 is a cross section view on Fig. 7.
-45 The same numbers and letters of reference have been used to indicate like or corresponding
parts in all the several views. '- ,
As will be seen by referring to the _drawings, a is the body part of the pen or holder,
terminating in a point 1, whereat by means of a suitable housing 2, the small sphere or
200
No.8.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. LXVI.
Martin and Miles Martin Pen Coy. Ld. v. The Selsdon Fountain Pen Coy. Ld .
The Selsdon Fountain Pen Coy . Ld . v. Miles Martin Pen Coy. Ld.
- - -- - - - -- - - - - - - - - ~ - - --- - -- - - -
ball 3 which forms the writing element is rotatably mounted with part of the ball exposed ;
said ball is in contact with the ink supplied by the feed channel 4 which, in tum, receives its
supply from the reservoir b.

The reservoir b is formed by a duct, forming an extension of the feed channel 4, constituted
by a plurality of lengths or duct sections 5, preferabl y arranged in parallel relationship 5
to the longitudinal axis of the body of the holder a ; the reservoir thus forms a series
or group of duct sections occupying the greater part of the body a; said sections 5 are
connected together and communicate in series, one in continuation of the other, so as to
form, as a whole, one single channel, commencing at the inlet or air intake 6 and ending
at the feed duct 4 of the ball 3. 10
This invention is adapted for construction in many ways, among which are to be particularly
noted the embodiments shown in the several Figures of the accompanying drawings.
In the embodiment according to Fig. 1, the reservoir b is formed by a capillary duct or
tube which, being connected to .the feed channel 4, extends parallel to the holder a, and
as the tube is folded several times by a bend through 180 the same will form a group 15
0
,
of several sections 5 of reduced length with the bends 51 establishing communication between
the several sections, so that all of the sections are connected in series. The ink reservoir b
is removably housed within the holder a, which in this case is hollow.
The duct which forms the reservoir b is filled with a viscous or semi-fluid ink, thus
establishing a fluid vein extending when the reservoir is full from a point near the inlet 20
or air intake 6 to the ball 3, which is in contact with the ink ; consequently when the
ball is rotated such as by being rolled over a suitable surface, the ball will make a trace
with the ink supplied from the said liquid vein.
201
In the embodiment of Figs. 3, 4, 5 and 6 the reservoir b is also formed by lengths or

sections 5, but in this case, said sections are 'constituted by ducts formed in the body of
the holder Q. . .
Said ducts extend longitudinally in a parallel arrangement, and are closed at both ends,
5 such as by means of the head piece c, constituting the point 1, and the head piece d. The
head piece c is threaded at 7 into the body Q, while the part d is threaded at 8 into said
body a, as may be seen by referring to Fig. 3.
As shown, the 'channel sections 5 are enabled to communicate with each other, by means
of passages 5\, so that all the sections together form a continuous single linear duct.
10 One of the duct sections, indicated at 5 1 1 , ends with an air intake 6, preferably directed
towards the point 1, but at a certain distance short of the same.

In the embodiment illustrated in Figs. 3, 4, 5 and 6, when the instrument is filled with
ink, a liquid vein is established which extends without interruption up to the ball 3.
With reference ,to the embodiment shown in Figs. 7 and 8, it 'will be seen that the
15 reservoir b is constituted by a striated body e, arranged to fit snugly within the cavity a l
of the body a, which in this case is of tubular shape. .
Said striated body e is formed with longitudinal grooves which together with the wall of
the cavity a l constitutes the duct sections 5. .
After inserting the striated body e within the body a, the parts c and d are fitted by
20 screwing at 7 and 8, in a manner similar to that shown 'in Fig. 3; in this embodiment
also, the duct sections 5 communicate one with another in series, so as to constitute a
continuous linear duct forming the reservoir b. The body c is provided with an axial
bore forming part of said duct which communicates with the feed duct 4 closed by the
ball 3.
25 In all the embodiments the duct is charged with a viscous ink so that a continuous liquid
vein is formed communicating with the ball 3.
It will be evident that in carrying the invention into practice, modifications may be
introduced with regard to certain details of construction and shape of the instrument,
without departing from the basic principles of the invention, as set forth in the claims hereto
30 annexed.
Having now particularly described and ascertained the nature of my said invention and
in what manner the same is to be performed, I declare that what I claim is : -
1. An instrument of the said type in which the ink reservoir for the ball is constituted
by a capillary tube.
35 +2. An instrument according to Claim 1 in which the tube is open to atmosphere at
one end and the other end communicates with the ball.
3. An instrument according to Claim 2 in which the tube communicates with the ball
by way off a duct of the same or smaller cross sectional area or diameter than the tube.
4. An instrument according to any of the foregoing claims in which the tube is formed
40 into limbs, substantially parallel to the longitudinal axis of the instrument.
5. An instrument according to Claim 4 in which the open end of the tube is directed
towards but does not extend to the ball.
6. An instrument according to any of the foregoing claims in which the ink reservoir
is adapted to be removably received within a casing.
45 7. An instrument according to any ,of the Claims 1 to 6 in which the tube is constituted
by a duct formed in a body.
8. An instrument according to Claim 7 in which a series of parallel ducts is formed
in a body positioned within an outer casing, said ducts being each connected by a passage,
an end closure being provided (removably or otherwise) at each end of said body, one
64979 p
202
end of one duct being open to atmosphere and the arrangement and disposition of the parts
being such that there is formed a single linear duct extending from.. the opening to atmosphere
to the ball.
9. An instrument according to any of the foregoing 'claims when charged with a
viscous or semi-fluid ink. 5
10. An instrument constructed and arranged substantially as described herein with reference
to the accompanying drawings. '
The form of the advertisements constituting the alleged. threats is set out in the judgment;
the remaining facts appear' sufficiently from the judgment, the headnote and the arguments of
Counsel. 10

On 25th January, 1949, an application by the Selsdon Fountain Pen Company (the Plaintiffs
in the threats action) came before Vaisey, J., as a procedure summons. Heald, K.C., and Guy
Aldous (instructed by Rowe & Maw) appeared for the Plaintiffs. Shelley, K.C., and Kenneth
Johnston (instructed by Payne, Hicks, Beach & Coy.) appeared for the Defendants. The facts
and the arguments of Counsel (Guy Aldous and Kenneth Johnston) appear sufficiently from 15
the judgment.
Vaisey, J.-This is an application for leave to administer certain interrogatories. It arises
on a summons issued in an action of The Selsdon Fountain Pen Coy., Ld., as Plaintiffs,
against Miles Martin Pen Coy., Ld., as Defendants, which action is now consolidated with
another action, to which I need not further refer. The action in which this application is 20
made came before my brother Harman on the 23rd July, 1948, on a motion for an· injunc-
tion, and a report of the proceedings on that occasion will be found in 65 R.P.C. at p. 365. -
The nature of the action will be found from that report, and I need not repeat what will
be found there.
In an action of Franklin v. Daily Mirror Newspapers, Ld. (149 L.T. 433), to which my 25
attention has been called, I "find it stated by Lord Hanworth, the Master of the Rolls, that
in matters of interrogatories it is probably unwise to lay down a general rule, because the
circumstances vary so much. I further find in the same judgment a reminder that one ought
to bear in mind that interrogatories are, in the. main, burdensome to a defendant. A third
statement in the same judgment is that interrogatories ought to be sparingly used. 30
In the present case the issue arises from. an advertisement which was inserted in one
issue of one newspaper in the -month of July last. In the first interrogatory the Defendants
are asked: "Have you not inserted in newspapers other than the Financial Times dated
" 14th July, 1948, similar or substantially similar advertisements to that set out in' para-
" graph 3 of the statement of claim herein?" Then, as a corollary to that, there is a second 35
interrogatory: "If the answer to interrogatory 1 is 'Yes " specify each of such other adver-
"tisements." Finally, it is sought to obtain an answer to the question whether the Defendants
did not, after the respective dates of each such advertisement, insert other similar advertise-
ments,-that is Interrogatory 6 (v).
I do not know what the final interrogatory means exactly, but it seems to me to cover '40
much the same ground as the first one, which is perfectly generally expressed. That par-
ticular group of interrogatories is sought to be resisted by the Defendants on the ground
that it is premature,
On that question I am in favour of the Plaintiffs. I do not see why Interrogatories 1
and 2 should not be allowed. It may be that they are premature in a sense; but the 45
~laintiffs have ~lle~e~ that su~h similar advertisements have been inserted in various publica-
tions, and I think It IS matenal that the Court should know whether that allegation is true.
It is an allegation which could be proved by the Plaintiffs, no doubt, by their having a
search made through pages of trade journals and other publications to find out the necessary
facts to prove the matter for themselves; but that information must be in the possession 50
of the Defendants, and can, I think, be produced without any trouble at all. I think that
203
The Selsdon Fountain Pen Coy. Ld. v, Miles Martin Pen Coy. Ld.
it is sheer obstruction for the Defendants to refuse to answer that interrogatory, and I
propose to allow Interrogatories 1 and 2..
As I do not understand what particular addition is made by Interrogatory 6 (v), I am
going to confine the relief on this point by allowing Interrogatories land 2.
5 Then there are Interrogatories 4 and 5, which are designed simply to identify two kinds'
of ball-pointed pens. There, again, I do not really think that any objection can be taken,
and I think it might save time and trouble to have an identified pen duly marked as an
exhibit before the action comes on lor trial. I propose to allow Interrogatory 4: "Look
"at the pen marked 1. Is not this pen one of the said' The Four-Year Everflow ball-
10 '" point pens' or a pen of similar construction thereto?" That can be answered in a
moment, without the slightest trouble. Similarly with the next Interrogatory, No.5, which
refers to the other pen. I shall allow Interrogatories 4 and 5.

As regards the rest of the interrogatories, I shall' allow none of them. The third asks
whether, when the advertisements were inserted,-(and, having regard to what I am allowing
15 under 1 and 2, that must mean, I suppose, at the date of each of the advertisements, though
I really do not know), the Defendants, "prior to each such insertion, knew that (a) the
"Plaintiffs were (i) manufacturing (ii) offering for sale and (iii) selling ball-pointed pens?
" (b) the Plaintiffs were (i) manufacturing (ii) offering for sale and (iii) selling ball-pointed
"pens known as 'The Four-Year Everfiow ball-pointed pen '? (c) the Plaintiffs were (i)
20 "manufacturing (ii) offering for sale' and (iii) selling ball-pointed pens known as the
" , Everflo "l " I do not think that at this stage it is necessary or right that that interrogatory ~
which I regard as very embarrassing, should be allowed, and I disallow it.
Then I come to the only remaining Interrogatory, No.6, which is subdivided into (i),
(ii), (iii), (iv) and (v). I have already dealt with (v). The other interrogatories are an
25 attempt to ascertain the "intention" of the Defendant Company and the "belief" of the
Defendant Company at each of the dates of the advertisements, that is to say, their intention
as to how the advertisement should be read-whether it should be treated as referring to
these particular pens-and their intention as to whether, at the date thereof (there again.
I am not sure what that means) ,the Defendants intended "to take any and what steps
30 "against any firm or company otber than" one named company, that is to say.the company
who manufacture or handle the identified pen.
I do not think that to interrogate this company as to intention or as to belief in any of
the respects indicated under those four heads of the proposed Interrogatory No. 6 is justified
at this stage. I disallow Interrogatory 6.
35 If the Defendants had been asked merely to allow Interrogatories 1, 2, 4 and 5, I should
have hoped-though without a great deal of confidence-that they would not have resisted
it, although in this type of action and on this type of application nobody ever agrees to'
anything, in my experience. That is really a consideration which is only relevant on the
question of costs. Even if today the Defendants had before me refrained from arguing that
40 they ought not to answer Interrogatories 1, 2, 4 and 5, and had submitted to answer those
without further discussion, I think that I should have made an order that the Defendants"
costs of this application should be their costs ; but, in all the circumstances, I propose to make
the order which I ·have indicated, allowing Interrogatories 1, 2, 4 and 5; and their costs
of this summons will be costs in the action.
45 An application by the Plaintiffs for leave to appeal was. refused, His Lordship' pointing
out that an appeal would involve an adjournment of the trial which was fixed for 14th
February.
The action and cross-action came on for hearing before Harman, J., on 14th' February,
1949. The Miles Martin Pen Coy. were represented by the same Counsel as before and
50 by John Brewis, The Selsdon Fountain Pen Coy. by the same Counsel as before.
· Shelley, K.C., opened on the infringement action.-The Biro" pen, the subject of the
It
patents now in suit, was the first commercial ball-pointed pen, although the advantages
64979 P2
204
Martin and Miles Martin Pen Coy. Ld. v. The Selsdon Fountain Pen. Coy. Ld.
of a ball point had been known for 50 years. The problem was holding the ink and feeding
it to the ball. If there is a closed reservoir, with the viscous ink that is 'needed to give a
satisfactory trace from a ball-pointed pen, the feed-channel to the point becomes blocked
by bubbles of air moving slowly from the point to the reservoir, while an open reservoir
allows leakage. Biro's solution was to form the reservoir from an open-ended tube, narrow 5
enough for surface tension to prevent the escape of ink when. the pen is held with the air-
intake downwards. "Extended path", in Claim 1 of " 571 ", means that a definable path
is provided extending from the air intake to the feeding channel. "Capillary tube", in
'Claim 1 of "573", means a tube less than about 3.5 mm. diameter, and this is also the
requirement for a tube that will comply with the final words of Claim 1 of " 571". Both 10
claims are therefore infringed by the Defendants' pen with its open-ended reservoir of
2.5 mm. diameter. (Counsel referred to British Thomson-Houston Coy. v. Corona Lamp

Works, 39 R.P.C. 49 ; Pope Appliance Corp. v. Spanish River Mills, 46 R.P.C. 23; No-Fume
Ld: v. Pitchford & Coy., 52 R.P.C. 231.) .
Evidence was then called for the Plaintiffs. 15
Johnston summed up.e-Jnfringement is proved, the only question is as to the meaning

of ",extended path" in "571 ", which is a matter of construction, but the evidence shows
that it makes no difference to the operation of the reservoir whether it is straight or curly.
The evidence was that none of the publications cited made the invention obvious; while
the sales of the patented pens have been very large-a Biro" pens alone constituting 15 per 20
cent. of all fountain pens sold in this country. .Attempts in cross-examination to account
for this success otherwise than by the merit of the '-' Biro" inventions failed. It has been
shown that the inventions are useful and the specifications sufficient, and" capillary tube 5'
has been shown to mean a tube of diameter up to about 3.5 mm. (Counsel referred to Nobel's
Explosives Coy. v. Anderson, 11 R.P.C. 115 at p. 127.) 25
Heald, K.C., on both actions.-" Extended path" excludes a straight reservoir from
" 571 " ; while" capillary tube" is ambiguous, at least unless it means the same as " extended
" path ": a tube with enough convolutions to hold a. useful supply of ink although of
extremely small bore. Of the Plaintiffs' witnesses, Dr. Yarnold did not disagree with this,
while Dr. Fehling is not an expert in this field. (Counsel referred to Electrical & Musical 30
Industries Ld. v. Lissen Ld., 56 R.P.C. 23.) It is clear that the inventor thought a curly
tube essential, or he would have described as his preferred form a straight tube which
would be simpler to make and hold' more ink. The meaning put by the Plaintiffs upon
"capillary" is inconsistent with the inventor's own specification 564,173. (Shelley.-That
is not a legitimate use to make of 564,173.) It is not a sound argument, that the straight 35
tube infringes because it is equivalent to a slightly curved one: R.C.A. Photophone Ld. v.
Gaumont British Picture Corp., 53 R.P.C. 167. Both patents are anticipated. Commercial
success is irrelevant, in the absence of evidence that any problem solved by Biro had been
holding up development : Longbottom v. Shaw, 8 R.P.C. 333; Parkes & Coy. v. Cocker
Bros., 46 R.P.C. 241. 40
Evidence was then called for the Selsdon Fountain Pen Coy.
Aldous summed up.-The requirements for freedom from leakage' are wrongly stated in
the specifications: the essential condition 'is a correct relationship between clearance round
the ball and reservoir diameter. It is irrelevant that since these pens have come onto the
market the other requirements for a commercial article have become known, and that the 45
instructions in the specifications may be sufficient for these pens. (Counsel referred to:
Norton & Gregory Ld. v. Jacobs, 54 R.P.C. 271 ; Raleigh Cycle Coy. v. Miller & Coy.
65 R.P.C. 141 ; Von Heyden v. Neustadt, 50 L.J.Ch. 126 ; Plimpton v. Malcolmson, 3 Ch.
D. 531 ; Molins v. Industrial Machinery Coy., 55 R.P.C. 31 at p. 40.) There is anticipa-
tion, ·or if not mere workshop alteration of the prior proposals (Gadd v. Mayor &c. of Man- 50
chester, 9 R.P.C. 516 at p. 524). Capillary tubes were well known for avoiding escape of
205
The Selsdon Fountain Pen Coy. Ld. v. Miles Martin Pen Coy.' Ld.
ink from fountain pens, and it was. obvious for this purpose to reduce the size of the hole
from which the ink could escape (Chapman v. Deltavis Ld., 47 R.P.C. 163 at p. 173). In
" 571 ", "extended path" cannot be an inessential integer for which an equivalent may be
substituted, for before amendment ,it was the major essential of the claim (R.C.A. Photo-
5 phone Ld. v. Gaumont British Picture Corpn., supra, at p. 186).
On the cross action, Counsel referred to re Faversham's Contract; [1942] Ch. 33.
Shelley, K.C., in reply.e-The invention made by Biro was: substituting for the old, large
reservoir, an extension of the small feed-conduit to the ball. "Extended path" means a
definite path, identifiable as an extension (in the geometrical sense of "extend the line
10 "AB to X ") of the original path-i.e. the feed-conduit. It would be wrong to gloss the claim
from the body of the specification and so make" extended" mean" not straight ".

Judgment was reserved and was delivered on 1st April, 1949.
Harman, J.-These are consolidated actions, by the first of which the Plaintiffs, being
respectively the owner and licensees of two British Letters Patent numbered 571,698 and
15 573,747 in respect of writing instruments, sue the Defendants. for infringement of each of these
patents.
The Defendants deny infringement and allege the invalidity of each of the Letters Patent
on a number of grounds set out in their particulars of objections. They also counterclaim
for revocation of the patents.
20 The second of the consolidated actions is what is known as a threats action between the
Defendants in the infringements action as Plaintiffs and the Plaintiff Company in the infringe-
ment action as Defendants. -
The threats complained of consist of advertisements publishedin the month of July, 1948,
by the Miles Martin Pen Coy., Ld., in a number of newspapers. There was an alternative
25 claim for trade libel, which was, however, ~ abandoned at the hearing.
The defence is, firstly, a plea that the advertisements do not constitute a threat within the
meaning of Sec. 36 of the Act; .secondly, a denial that the Selsdon Company are persons
aggrieved within that section and. alternatively, justification on the ground that this company's
pens are an infringement of the same patents as are in suit in the infringement action.
30 By way of reply the Selsdon. Company take the same objections to the validity of the
patents as appear in the infringement action.
The patents in suit concern what have come to be known as. ball-pointed pens. The merits
of a .ball point instead of a nib of the conventional type for fountain pens have long been
canvassed, and many attempts have been made to produce a workable instrument of this
35 kind. I was told that ball-pointed pens were proposed as far back as 1890. A ball point, it
has been found, will not work with the ordinary type of ink, called in this case aqueous ink.
In order that a continuous trace may be made a dense or sticky ink, called in the present case,
viscous ink, is required. The use of viscous ink, of course, makes a ball point of no use
except with a reservoir behind it, but, if a satisfactory reservoir of viscous ink can be provided,
40 such a pen will write for a very long time, because the amount of ink used by the ball is very-
small. A further advantage is that the trace when made is absorbed immediately by the
writing material and no blotting paper is required.
These advantages had long been recognised, but before the Plaintiffs' pen appeared on the'
market no practical ball-pointed instrument had ever been sold, at least in England, and the
45 reason was that no one had solved the problem of the reservoir and the manner in which the
ink should be fed to the ball. The essential problem is one of ventilation. Air must be
allowed to enter the pen as ink is used up, because otherwise a vacuum is caused and the
ink ceases to flow to the nib.
This difficulty was not present in fountain pens of the ordinary type, owing to the fact that
50 with an aqueous ink air is able to penetrate into the pen past the nib and so up into the air
cavity at the base.
206
With viscous ink, however, it was found that the air could not, or at any rate did not, at
sufficient speed pass by the nib through the viscous ink behind it, and some other method of
ventilation. had to be discovered. Attempts were made to provide a piston or other device
which would force the ink down as it was used and thus keep it in contact with the ball, but
these were too elaborate and never successful. The alternative was to have an air vent at 5
the base of the reservoir, but the trouble always was that the ink, though viscous and there-
fore slow flowing, would, when the pen was inverted, sooner or later flow 'back through the
air vent and the pen would leak. Moreover, if the ink did not remain in contact with the
ball, air would enter and thus form a bubble which produced an air lock between the ball
and the ink. 10
Among those interested in this problem was one Laszlo Ioszei Biro, an Hungarian citizen
living in Buenos Ayres, who is to be found as early as 1938 applying for a British Patent

for a ball-pointed pen using viscous ink (Specification No. 512,218, accepted 30th August,
1939). This was a pen of the piston type.
In about the year 1943 he appears to have hit on the notion that, if the viscous ink were 15
either drawn or forced into the pen so as to form a continuous vein of ink right up to the ball
point, and if the feed channel and reservoir were so constructed .that the ink would not run
back down the reservoir when the pen was held with the nib upwards, the base of the
reservoir (the end remote from the nib) could be left open to the atmosphere and an air vent
provided in the pen case. This would solve the ventilation problem and provide a simple 20
instrument without internal machinery or complications..
Accordingly in August, 1943, and February, 1944, Mr. Biro is found applying for the
patents in suit in this action. These I shall call for convenience" 571 " and" 573". Both
were amended with the Comptroller's consent after acceptance, and in the case of 573 a few
days after the issue of the writ in the first action. I consider, except where the contrary 25
appears, only the amended specifications.
In Specification" 571 " the inventor starts by stating that his" invention relates to improve-
" ments in fountain pens of the ball-tip type and particularly to means of providing a regular
" ink feed to the ball." He then states that the most suitable ink is so-called" dense ink"
and mentions the difficulty of preventing leakage 'with a permanently open air intake. 30
His objects, so far as relevant, are stated to be, firstly, to prevent leakage when the pen is
inverted; secondly, to prevent the formation of air bubbles between the ink and the ball which
would result from the back flow of the one from the other; thirdly, to provide a reservoir
" wherein gravity does not alter the position of the ink and wherein the charge . . . forms
" a continuous vein of liquid". 35
The inventor then describes his invention as being an instrument of the said (that is, ball-
tip) type (I read from p. 1, 1. 58) " in which the ink reservoir is formed by one or more conduits
" starting' at an air intake and after following an extended path communicating with the
"recess for said ball, the said conduit or conduits being of so small a cross-section that a
.., suitable ink" (that is, dense ink) "cannot escape from the air intake under the effect of 40
"gravity." He then states that in one method "the ink reservoir is constituted by one or
" more conduits arranged in the form of a helical coil ", the throat of the channel (that is to
say, the internal bore of the reservoir) being relatively small" for example of a section of less
" than 5 mm."
He then proceeds to describe his invention by reference to several figures which are said 45
to illustrate by way of example some of the preferred embodiments of the invention. All these
examples show the ink reservoir as being either coiled or twisted many times inside the barrel
of the pen.
After describing the various figures shown the inventor proceeds at p. 2, 1. 114, as follows:
" From the foregoing it may be seen that in any of the embodiments illustrated in the different 50
" figures, the reservoir c is constituted by a conduit starting at the air intake 6 and ending at
"the feed channel 4.
207
The Selsdon 'Fountain Pen Coy. Ld. v. Miles Martin Pen Coy. Ld.
" In charging the writing instrument with dense ink, all the cavities of the system constituted
" by the channels should be filled, or, in other words, there should be a full charge, from the
" air intake 6 to the ball 1.
'c Inasmuch as the conduit 5 of said reservoir c is of small section, when charged with
5 "ink it will contain an uninterrupted vein of liquid, as if it constituted an extension of
"channel 4. Due to this and to the relatively adjusted arrangement of said ball 1 in the
"setting 2, whereby the tip of the instrument remains closed, the ink cannot discharge by
" gravity." .
At 1. 30 on p. 3 I find the following: "Inasmuch as the reservoir c is formed by a coil
10 "of small section the instrument may be placed in any position and used in any manner with-
" out the vein of liquid being affected by gravity.

" It is obvious that in carrying the invention into practice, several changes in construction
" and detail will occur to those skilled in the art, without departing from the scope of the
" invention as clearly set forth in the appended claims."
15 The claims said to be infringed are Nos. 1 and 9 and are in the following terms:
"(1). Improvements in writing instruments of the ball-tip type, wherein the ink reservoir of
" said instrument is formed by one or more conduits starting at an air intake and, after follow-
"ing an extended path, communicating with the recess for said ball, the said conduit or
"conduits being of so small a cross section that a suitable ink cannot escape from the air
20 "intake under the effect of gravity."
"(9). Improvements in writing instruments as claimed in claim 1, wherein said conduit is
" smaller than 5 mm" in section." .
It will be observed that Claim 1, unlike Claim 9, makes no dimensional disclosure as to
the size of conduit. It is left to the worker to discover by trial and error with what size of
25 reservoir within the limits imposed by a fountain pen case the ink will not run back ; he has,
however, to help him the example in which the recommended dimension is less than 5 mm",
which gives a diameter of 2.6 mm.
As to " 573," the second patent in suit, the inventor states that an object of this invention
is to improve the construction of instruments of (in effect) a ball-tip type. His consistory
30 clause, commencing at p. 1, 1. 22, reads as follows: " According to this invention an instrument
"of the said type is provided in· which the ink reservoir for the ball is constituted by a
" capillary tube. The said tube is preferably open at one end to atmosphere and at the other
" end communicates with the rotatably mounted ball. It is preferably in the form of a series
"of limbs, each substantially parallel to the longitudinal axis of the instrument so that a
35 "comparatively long length of continuous tube can be accommodated in a comparatively
" small compass such as the usual type of fountain pen casing. The end of the tube remote
"from that end which is open to atmosphere conveniently communicates with the ball by
" way of a duct which is of the same diameter or cross sectional area as the internal diameter
" or cross sectional area of the tube or is smaller."
40 He then refers to a number of illustrations embodying his invention, describing the reservoir
shown in Figs. 1 and 2 as " a capillary tube" ; he states that viscous ink should be used in
all of them" so that a continuous liquid vein is formed communicating with the ball."
The claims said to be infringed, Claims 1, 2, 3, 7 and 9, are in the following terms: "(1). An
" instrument of the said type in which the ink reservoir for the ball is constituted by a capillary
45 "tube.
"(2). An instrument according to claim 1 in which the tube is open to atmosphere at one
"end and the other end communicates with the ball.
"(3). An instrument according to claim 2 in which the tube communicates with the ball
" by way of a duct of the same or smaller cross sectional area or diameter than the tube."
50 "(7). An instrument according to any of the claims 1 to 6 in which the tube is constituted
" by a duct formed in a body."
208
"(9). An instrument according to any of the foregoing claims when charged with a viscous
" or semi-fluid ink."
Before turning to the many questions, which arise I must complete rehearsal of the relevant
facts.
Both patents were assigned to the Plaintiff Martin and licences under them were by him 5
granted to the Plaintiff Company.
The company's pen first appeared on the English market in the spring oj 1945. It was
made in accordance with Fig. 1 in Specification 573, the reservoir consisting of a fourfold
copper tube having an internal diameter of 2 inm, or rather less. One of these is Exhibit P.~.
Certain difficulties were encountered in the' mass production of this article, but nevertheless It 10
had an immediate and resounding success. It was suggested that this was due to the fact

that fountain pens were then in what our rulers would have us call" short supply", but this
cannot account for the sales achieved. Imitation is always the sincerest form of flattery, and
the fact that the Plaintiffs' pen filled a long felt want is abundantly proved by the fact that,
whereas the" Biro" had no predecessors, it has had a great number of followers. I was 15
supplied with a list of no less than twenty-five makes of ball-pointed pens put on the market
within the last two years, all of which are said to rely against leakage on the principle which
is the basis of Biro's invention. .
The first of these rival pens made its appearance in the spring of 1947.' With that pen
I am not here concerned, though an order made against its manufacturers figures in the 20
threats action.
The Defendants' pen, which was the second in the field, was put on the market in September,
1947. It had by way of reservoir a single straight plastic tube having a bore between 2 and
2.5 mm. and open to atmosphere at its base.
In January, 1948, the Plaintiffs in effect adopted this device and produced a straight 25
reservoir of plastic material (Exhibit P.5) with a bore of about 2.5 mm. At the same time
they produced a cheaper instrument called the" Biro Minor" (Exhibit P.l), having a similarly
sized duct acting as reservoir. More recently the Plaintiffs produced this model with a
reservoir consisting of a plastic tube doubled on itself and currently the reservoir of their
pens is of similar shape. 30
The Defendants on their part have produced one pen called" The Four Year Pen ", the
reservoir of which has a substantially larger bore (about 8 mm.) and which, as is now admitted,
does not infringe either patent.
No pen constructed in accordance with 571 has ever been put on the market, but it is
admitted that a pen could be constructed in accordance with it that would be effective in the 35
sense that it would not leak.
In fact it appears to me that the principle behind both pens is exactly the same. The fact
that in 571 the reservoir is coiled horizontally to the barrel, whereas in 573 the coils are
longitudinal, seems to me to make no difference to the effective principle, which, however, if I
read the specification aright.jhe inventor himself had not grasped at the time when the specifi- 40
cations were framed. I think, for instance, that in the case of 571 he supposed (wrongly) that
when the pen was held with the nib upwards the ball would so repose in its seating as to
create an airtight closure and that this was at least one of the reasons why the ink would not
flow down the reservoir. Again, in 573 I think he attributed the like result to some capillary
attraction which he thought the tube exerted on the ink. 45
In fact the principle involved is now well recognised, and there was no dispute about it.
This is that, if a tube with a narrow top and a wider bottom be filled with liquid up to the
top and then held with its wider end downward, the liquid (within certain limits) will not
fallout of the tube, by reason of the fact that the free surface or meniscus at the top, being
narrower and having therefore a steeper curve, is stronger than the meniscus in the wider end 50
at the bottom and that in effect the former will hold up the latter. So in the "Biro" pens
the clearance betwen the ball and its housing, which acts as the upper meniscus, being very
209
much smaller than the diameter at the base of the reservoir, will hold the ink up against the
ball and prevent it falling out at the base. It is common ground that this principle will
operate effectively with a clearance at the ball of not more than 0.06 mm. (or 60 microns) and
a reservoir of any bore than does not exceed 3.5 mm., though preferably it should be somewhat
5 smaller.
In effect this is the principle which has been applied both to the Plaintiffs' and to the
Defendants' pens and, indeed, apparently to a number of other pens of this type which have
since appeared on the market. All of them have a diameter at the ball clearance of some-
thing in the nature of 5 to 10 microns-a micron is 1-I,OOOth of a millimetre-while the
10 internal diameter of the reservoir at its lower end is somewhere between 2 mm. and 3 mm.
The real questions here involved are whether the inventor has effectively described his

device so as to be entitled to a monopoly for it. It is, as I understand it, not essential for an
inventor, in order to obtain a valid patent, to grasp, still less 'to explain, the' principles behind
his invention, but, of course, an inventor who does not understand the subject himself may
15 very easily fail to describe it adequately.
My first task is to construe the specifications.
Now like canons of construction apply to specifications as to any other written instrument.
(See Lord Esher's speech in Nobel's Explosives Coy. v. Anderson, 11 R.P.C. p. 523). Plain
language must be given its plain meaning, and clear words in a claim must not, be tortured
20 into an unnatural meaning by importing passages from the body of the specification. (See
Lord Russell's speech in Electrical & Musical Industries, Ld. v. Lissen, Ld., 56 R.P.C. p. 41,
1. 34). The claims also must be construed without an eye on the alleged infringer's acts.
(So said .Greene, L.J., in R.C.A. Photophone, Ld. v. Gaumont British Picture Corporation,
53 R.P.C. at p. 202, 1. 16.) On the other hand, it is right to construe a claim with an eye
25 benevolent to the inventor and with a view to making the invention work-this is an applica-
tion of the old doctrine ut res magis valeat quam pereat-and it is illustrated in Nobel's case
at p. 524; and, where the language of a claim is obscure or doubtful, the doubt may some-
times be resolved by referring to words in the body of the document to explain it. This is
known as the dictionary principle. (See Lord Haldane's speech in British Thomson-Houston
30 Coy., I.4. v. Corona Lamp Works, Ld., 39 R.P.C. p. 67, 1. 44). All these observations are
indeed truisms.
Turningthen to 571, the argument on' construction concerned chiefly the words in Claim 1,
repeated by reference in Claim 9, " after following an extended path ". .
It is said by the Plaintiffs that these merely mean that the path which the vein of ink
35 follows constitutes the extension of the feed channel from its start at the ball till it reaches
the air intake, and they point to the words at 1. 126 on p. 2 which I have already read and
which speak of an extension of the feed channel.
The Defendants, on the other hand, .say that, in order to give these words any, or any
adequate, meaning, they must be a reference to the fact that in all the embodiments of the
40 invention the conduits are shown as either coiled or helical or twisted in some spiral, and that
the meaning of these words is that the conduits must not be straight, but must follow a path
longer than that which they would take if they passed direct from the ball to the air intake.
They point to the fact that at 1. 30 on p. 3 the reservoir is described in so many words as being
" a coil of small section " and argue that on a fair reading of the document it is clear that the
45 inventor supposed, whether rightly or wrongly, that there was some virtue, beyond mere
added area of the contents, in twisting the reservoir; for instance, that the force of gravity
would have less effect upon it, and there would be more resistance to the shock caused to
the column of ink by dropping the pen.
I have carefully considered these rival views and have come to the conclusion that the
50 Defendants' construction is the right one. The words are no doubt capable of either meaning
and I am, in my judgment, entitled, in order to interpret them, to look at " 571 " before its
amendment.· In doing so, I find these passages' at 1. 60 ofp. 1 and, again, at 1. 72: " According
"to the present invention an instrument of the said type is provided in which the ink
210
" reservoir is formed by one or more conduits starting at an air intake and, after following an
" extended path, leading into the feed channel or cavity for said ball" ; and (1. 72) "To this
" end, the conduit constituting the reservoir is of helical or other similar shape or arrangement
" following an extended path from a corresponding air intake to said feeder."* These have
been struck out of the amended specification, but seem to me to show that the author used 5
the words in the sense attributed to them by the Defendants. The words appear in the first
and primary claim and seem to me to signify something more than an indication that the
conduit begins at the ball and ends at the air intake. Whether the inventor was right or
wrong in supposing that there was any virtue in twisting or turning the conduit seems to me
to matter not at all. It is the direction he gave which matters and that, as it seems to me, 10
is a direction to follow a twisting path of some sort, though not necessarily exactly as his
various figures show.

I feel the force of the Plaintiffs' argument that so to construe the claim tends to make it
vague and uncertain, because the inventor does not in any way limit or define the degree of
crookedness which he postulates, but it seems to me that these words on the Plaintiffs' view 15
might just as well be omitted altogether. I cannot regard them as mere surplusage.
As to 573, controversy centres round the words " a capillary tube" and there has been a
remarkable, and to me an unexpected, conflict of evidence on this subject. I should have
expected a term of art, such as this clearly is, to be recognised by men of science as having
a certain or defined meaning, but that appears far from being the case. Even the origin of 20
the term is doubtful. It may originate in the fact that the phenomenon known as capillary
attraction was first observed in connection with tubes which had a very narrow internal
diameter, not larger than one into which a hair could be inserted, and which were therefore
already called capillary tubes, this name being therefore given to the phenomenon when
observed. On the other hand, it may be that the phenomenon of capillary attraction was 25
first observed in the case of fibres or wicks and was therefore called capillary because it was
supposed that the hairy nature of these substances exerted an attraction, and that the adjective
was transferred to certain tubes when it was observed that they produced a similar
phenomenon, namely, that of raising a liquid above its own level when dipped in it, and that
therefore capillary tubes originally meant those which exhibited the capillary phenomenon 30
in an easily observable degree.
The views put forward as to the meaning of these words may be summarised as follows:
A capillary tube is (1) a tube having an inner diameter so small that only a hair or a bristle
can be passed through it. This connotes an internal diameter of not much over 1 mm.;
perhaps 1.5 mm. may be taken as the maximum; (2) it is a so-called "thick-walled" tube!' 35
that is to say, a tube having walls the sum of which is greater in cross-section than the internal
diameter of the tube; (3) it is merely a small tube, the diameter of which may vary according
to the connection in which the tubing is to be used; but in connection with fountain pens it
signifies a very small or hairlike tube as in (1) ; (4) it means by custom or convention any size
of tube having an internal diameter between 0.5 mm. and 3.5 mm. or perhaps at the outside 40
4 mm. ; (5) it means a tube having an internal diameter small enough for the phenomenon of
capillary attraction to be easily observed.
As to the first of these, evidence was given by 'Professor Finch, a Fellow of the Royal
Society and holder of the Chair of Applied Science in the London University. I cannot doubt
that he was right when he said that to a man of science a capillary tube is a tube whose 45
bore may properly be described as hairlike. He said that to depart from this definition
inevitably resulted in confusion. He based himself on a celebrated article on "capillary
" attraction" contributed by .James Clark Maxwell to the Encyclopaedia Britannica. This
was subsequently revised by the third Lord Rayleigh and contains these words in the 11th
Edition: "Capillary Action. A tube the bore of which is so small that it will only admit 50
" a hair (Latin capilla) is called a capillary tube. When such a tube of glass, open at both
" ends, is placed vertically with its lower end immersed in water, the water is observed to rise
* The specifications as printed at pp. 195 et seq, ante, do not show the unamended forms, as the amend-
ments were made before grant.
211
Vol. ,LXVI.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.8.
"in the tube, and to stand within the tube at a higher level than the water outside. The
"action between the capillary tube and the water has been called capillary action, and the
"name has been extended to many other phenomena. . . ."
It was pointed out to me that the latest (the 14th) edition of the Encyclopaedia has the
5 following: "Capillary Tube. A tube of small diameter in which a liquid will ascend on
" account of the action of surface tension (q.v.) being greater than that of gravity." I observe
that in this edition the article on capillary action has had its title changed to "Surface
"Tension". This is what I may call. the functional definition of the words, on the lines of
No. (5) above.
10 The Professor describes this as an American blunder and pointed out quite truly that this
is not a definition at all, the phenomenon of capillary attraction occurring and being observable
in tubes of any size.

As to definition No. (2), the " thick-wall" definition, he explained that in practice tubes of
very fine bore (truly capillary, in his view) are frequently made with thick walls in order to
15 provide sufficient resistance for the purposes for which they are used and that out of this has
grown the tendency to call all thick-walled tubes capillary. He describes this as mere laxity
and neither party ultimately supported this definition. Professor Finch agreed that he has
often heard tubes having a diameter larger than he would allow described as capillary tubes,
and said it might even extend to tubes having a bore up to 5 mm., though he considered such
20 extensions quite illegitimate. The largest bore which he would admit was 1.5 mID.
The third definition was supported by Mr.. Gill, the eminent patent agent, who said that
capillary tubes meant small tubes, but that the degree of smallness depended on the art with
which they were connected. He had for the purposes of testifying read through a large number
of specifications of fountain pens, in which the words" capillary" or "capillary attraction"
25 or "capillary tubes" were used, and he demonstrated by reference to them that tubes so
described were of extremely fine bore. Accordingly he would not admit that in connection
with fountain pens any tube could be properly described as capillary whose bore exceeded at
the most 2 mm. He agreed that in other arts larger bores might be so described and said
that this went up to 6 mm. or more.
30 Exceptions to Mr. Gill's statement as to the use of the words in pen specifications are to
be found in two specifications whose author is the same Mr. Biro. These are Nos. 564,172
and 564,173. It seems to me not insignificant that in No. 564,172, a patent at one time
relied on by the Plaintiffs as protecting the ball point of their pens, the phrase occurs at p. 2,
1. 34: "The cross-section of said conduit c is just large enough to allow the passage of ink,
35 "that is to say, that it may be given a capillary nature, so that a constant charge of liquid
" will be maintained by adhesion within said conduit c." ; and also at 1. 80 on the same page:
"In the embodiment of figures 7 and 8, the writing instrument also comprises, as mentioned
"hereinbefore, a general feed conduit c which may be capillary or otherwise." ; and at p. 3,
1. 10 : "the thick or dense ink charged in the reservoir b is derived by gravity to the conduit c.
40 "which will permanently contain a full charge due to the capillary or other suitable structure
"thereof." The words here seem to be used not in a dimensional, but a functional sense.
The fourth definition was that favoured by the Plaintiffs.
The witnesses supporting it were, first, a Dr. Fehling, who said that by custom or convention
a capillary tube has come to mean a tube which has an internal diameter not above 3.5 mm.
45 or at the most 4 mm. I do not impugn either the honesty or the candour of Dr. Fehling, but
his qualifications to speak on this subject seem to me inadequate. He holds a German degree
in engineering from the University of Berlin and no English qualifications. He came to this
country in 1938, but the only English experience to which he testified was as consultant to
the Plaintiffs in and from the year 1945 and research done in that capacity. He is thus neither
50 really independent, nor really qualified to expound words which are, after all, English.
The Plaintiffs in addition called a Mr. Yarnold. He is a Doctor of Philosophy and in
Holy Orders. He holds a Master's degree in science from Cambridge University and has
been for some years a lecturer in physics at the Nottingham University. He said that in his
212
No.8.] REPORTS OF PATENT, DESIGN, AND TRADEMARK CASES [Vol. LXVI.
Martin and Mites Martin Pen Coy, Ld. v. The Selsdon Fountain Pen. Coy. Ld.
experience he had found that tubes with a bore ·up to J mm., and sometimes uE..JQ 4 mm.,
were spoken of as capillary tubes. He had never heard of a tube over the latter diameter so
described.
Beyond this oral testimony each side produced documentary evidence. First comes the
Encyclopaedia Britannica, to which I have already alluded. Secondly came a volume of the 5
Philosophical Transactions of the Royal Society of the year 1809, in which is found a paper,
read by one Dr. Iurin, dealing with capillary attraction and speaking repeatedly of capillary
tubes. Beyond the fact that this expression is of a respectable antiquity, I get no help from
this, for there was no means of telling what the size of these tubes was nor why the author
so described them. Thirdly came a large number of publications conveniently set out in a 10
document which I have caused to be marked" P.18". These consist, first, of three scientific
textbooks, secondly, of publications of the Institute of Petroleum and The British Engineering

Standards Association, thirdly, a catalogue of the Exhibition of the Physical Society and,_
lastly, of a number of catalogues of commercial makers of scientific instruments advertising,
among other things, capillary tubes for sale. 15
A study of these publications convinces me that they provide considerable support' for
the Plaintiffs' contention. The internal diameters of the capillary tubes either mentioned in
the text books or offered for sale by the instrument makers go down to 0.5 mm., but do
not, except in the instance I am going to mention, rise above 4 mm. There seems to be
no doubt that a person who ordered a range of capillary tubes from a scientific instrument 20
maker in England within the last ten years would obtain a range of tubes varying in size
between those limits. Two makers refer to the "thick wall" definition already rejected.
The exception to the rule is provided in a work on the standard methods for testing petroleum
and its products for the year 1947, where in a suggested table of viscometers at p'. 484
what is called capillary diameter of the viscometer is taken up as high as 6.3 mm, This 25
figure does not appear in the editions of the same 'work for earlier years, but I think there
can be no significance in that, the evidence unanimously being that there has been no
change in the meaning attributed to these words over the last ten years.
This, with the possible exception of a document headed Wembley Glass Tubing and Rod",
II
which I have failed to follow, is the only documentary support for the statement made by 30
Mr. Gill -and Professor Finch that in certain connections a tube might have an internal
diameter above f1. mm, and still be called capillary. In truth it seems to me that a certain
tube in the viscometer has come to be known as the capillary tube, and by a loose use
of language -it is still so called even though in certain large examples of the instrument
it may exceed a size to which the word is commonly applied. 35
On the evidence I hold that to the man of science a capillary tube is properly a hairlike
tube of a very small bote, not above 1.5 mm., but that these words are sometimes used
in a functional sense and have in the realms of commerce come to have a somewhat
extended significance and mean no more than a tube of small bore, which for ordinary purposes
does not go above 3.5 mm.. 4b
What then is the meaning which they had for this inventor in this specificationv : It is
clear that what he was trying to describe was a tube which would be effective to hold
up the ink. in the reservoir of a fountain pen, and hold it in a continuous vein so as to
keep in contact with the ball at one end and not leak at the other. I cannot avoid the
_conclusion that in using this word he meant to indicate a tube of whatsoever diameter 45
that would be effective for the purpose he required, and that he was here under the
impression that the results which he had observed were due to capillary attraction. He
thus used the words in what I have called their functional sense and meant a tube of such
a size that it would hold up the column of ink by capillary attraction. .
This view I deduce from 573 alone, but it does, I think, obtain some support from the 50
same author's specification No. 561,472 already mentioned.
Having dealt with the questions of construction, it seems to me most convenient, though
it is, I am told, not logical, to deal next with the questions of infringement, which in this
213
case depend on the answers given to the preceding question. Assuming then fer the
moment that the patents are valid, have they been infringed?
Now as to 571, both claims said to be infringed rest, in my judgment, on a continuous
vein of ink held up' by the combination of two features, namely, the twists in the reservoir
. 5 and its smallness. No attempt has ever been made to put a pen on the market which
follows or resembles the figures which exemplify this invention. It is true that it is now
agreed that a. pen on this model would work, but it would work on the principle before
explained and not 00 that imagined by the inventor, who, as it seems to me, when he made
this claim did not think in terms of a straight tube. As is now known, the principle
10 applies equally to a straight tube as to a crooked one, .but it has been often said that a
defective claim cannot be enlarged by showing that the inventor might have made a
larger or bolder claim to monopoly. (See Nobel's Explosives Coy. v. Anderson, supra, at

top of p. 128.) If he chooses to limit his claim, he cannot complain of something which
is outside it, even though it might be within it if he had described his invention in different
15 or wider terms. In my judgment, the Defendants' pen does not infringe this claim, because
it does not cover a straight tube.
It is said that the latter is nevertheless a 'mechanical equivalent of the tubes exemplified
in 571. That it rests on the same principle is true; but I do not think that the inventor
realised that. I cannot' say that the extended path described was in the inventor's eyes an
20 inessential which can be left out, nor do I find that the Defendants' pen is a mere colourable
imitation of 571. I must judge the importance or otherwise of any given part by the
language of the specification and not by the facts as now known. (See Marconi v. British
Radio Telegraph and Telephone Coy., £d., 28 R.P.C. p. 217, 1. 39, and R.C.A. Photophone,
Ld. v. Gaumont-British Picture Corporation, Ld., & Anr., 53 R.P.C., at p. 197, 1. 26.)
25 As to 573, the question of infringement turns on whether the Defendants' tube can properly
be described as a capillary tube. If it can, the Defendants' pen exactly fits the words of
Claims 1, 2, 3 and 9.
It is said by the Defendants that here also the inventor was thinking in terms of curled
and not of straight tubes; but the difference here is that there is no direction. which amounts
30 to a mandate not to make the tube straight. It must only be capillary.
Having regard to my view of the meaning of this term, I am of opinion that the Defendants'
tube is a capillary tube in the sense in which that word is used in the Plaintiffs' specification.
It is a small tube with a diameter of less than 2.5 mm. and for that reason effective to
hold up the ink against the ball of the pen. I therefore hold that there is infringement
35 of this patent.
The validity of the patents is first attacked on the grounds of ambiguity and insufficiency.
The difference between these two is clearly stated by Lord Hanworth (Master of the Rolls),
quoting Luxmoore, J., in No-Fume, Ld. v, Frank Pitchford & Coy., Ld., 52 R.P.C., at p. 236:
"Insufficiency is directed to the issue whether the description is sufficient to enable those
40 "persons to whom the specification is addressed to understand how the subject matter of
"the patent, if it is an .article to be manufactured, has to be made, or, if it is a process
"or method, how it is to be worked. Ambiguity is directed to the issue whether the
" invention is sufficiently desc-ribed and ascertained so as to enable the public to understand
. "the scope of the monopoly granted by the Letters Patent".
45 571 is said to be. bad on both these grounds, by reason qf the words already discussed.
It is argued that the words "extended path", if construed as I construe them, are no
sufficient description of the invention so as to enable the public to understand its scope,
or the workman to manufacture the pen.
I see no force in this. The inventor has explained that you must .curl the path of the
SO ink about in some such way as his illustrations show and he does not limit himself to the
exact convolutions shown, There is nothing ambiguous here, nor, in my judgment, is the
workman in any difficulty, for the exact nature of the convolutions is not critical. I
214
As to 573, it is said to be ambiguous because the words "capillary tube" are too vague
and indeterminate. I reject this argument, which, in my view, would only succeed if
I held as a matter .of construction, which I do not, that a capillary tube either could not
be defined at all or signified a tube whose internal diameter might exceed the critical
figure of 3.5 mm. If the workman were in doubt as to the meaning of the word, he 5
can by looking at the drawings see that the tube must be of a size which may be contained
fourfold within the barrel of a pen. This is about 8 mm.; so that no tube above about
2 mm. will fit. Common sense will tell him that a tube of 1 mm. or less will not hold
enough ink to constitute an effective reservoir. If he be still in doubt, he may order a
range of capillary tubes from the instrument makers and will be supplied with tubes of a 10
bore from 0.5 mm. to 3.5 mm., any of which will serve the purpose.
As to insufficiency, it is said that no direction is given to the workman on three points:

(a) size of ball, (b) size· of clearance round ball and (c) size of reservoir,
Now it seems to me that in the No-Fume 'case there was far less indication on the matter of
detail to the workman than is given here. The workman can discover a suitable ball 'by 15
trial and error and in fact all makers of these things recently have adopted a ball with
a diameter of 1 mm., that having proved empirically to be the most convenient size to
use with a viscous ink, because it makes a trace of the right thickness. Similarly with
the ball clearance, the workman will arrive by experiment at the degree to which the. ball
must protrude from the housing in order to form part of a practical writing instrument and, 20
of course, he must see that the ball does not fallout. I shall return to this matter in
another connection, but it seems to be no objection on the score of insufficiency. Lastly,
the size of the reservoir is sufficiently indicated in 571, and in 573 depends, again, on the
interpretation of the word "capillary" and, on my view about this already expressed, there
is no insufficie.n~y.. - 25
The next attack is on the score of inutility, this word being used in its artificial sense
to signify that the patent does not fulfil its promise, which is to provide a pen which
writes adequately and for a long time and does not leak.
It is agreed that the working of the principle of the '''Biro'' pen depends upon the
relative sizes of the ball clearance (which must not exceed 60 microns) and the bore of the 30
reservoir, which must not exceed 3.5 mm. The attack consisted in an attempt to show
that, consistently with the claims, a pen could be, made which would write and would yet
have a ball clearance larger than the maximum.
The Plaintiffs argued that as a practical matter a pen was not a commercially saleable
article unless it would write when held at a slope and not at right-angles to the paper, that 35
this made it necessary that a fairly large proportion of the ball should protrude from the
housing in order to make a trace, and that, given these postulates, no ball could be made
safely to reside in the housing if the gap between the two much exceeded 10 microns.
The Defendants, undoubtedly, in order to prove this point, must (a) increase the size of
the ball beyond 1 mm. and (b) thrust the 'ball further into the housing than is done in 40
either the Plaintiffs' or the Defendants' pen, and I am not satisfied that under those
conditions they could produce a satisfactory writing instrument. It would probably write
very thickly if held almost at right angles to the paper. In my judgment, I am not bound
to assume that the manufacturer will be entirely devoid of common sense when making
the pen. His object is to make a pen that writes satisfactorily and I see no reason why' 45-
he should go out of his way to fail.
It is said that the decision of the Court of Appeal in Norton & Gregory, Ld. v. Jacobs
(54 R.P.C. 271) shows that, if an inventor puts his claim so widely as to cover methods
ineffective for producing the promised result, his claim is bad. Be it so. I do not find
that element in these claims. There is nothing to indicate that the ball clearance should 50
o~ ma~ be above 60 micro!?'s a~d if, a~ I hold,. the wor~an, following the directions given
him, WIll reach a result which IS effective, I think that IS enough to overcome the objection
of inutility. -
215
.. Next ~t is said that there was no invention here or, in other words, that the patents
lack subject matter. 571, say the Defendants, depends on the coiled tube, and if, as the
Plaintiffs now say, there is nothing in this, there is no invention. As to 573, say the
Defendants, the use of capillary tubes in connection with fountain pens has been well
5 known for years.
In my judgment, there is nothing in these points. It is true that no new or unknown
principle is involved, but the combination which produced the result was one which no one
had thought of before. The fact that after the event the device seems obvious has no
weight when one considers that it solved a problem to which many had sought but none
10 previously had found a solution. (See Non-Drip Measure Coy., Ld. v. Strangers, Ld., 60
R.P.C., at p. 142, 1. 38 : per Lord Russell.)

Next it was said that there was no novelty. Now this, as it seems to me, is a very
bold thing to say when an invention has been as successful on the market as this. It has
obviously filled a long felt want and that alone is cogent evidence that it was novel.
15 It was admitted that no successful ball-pointed pen preceded it. I hold that there was
clearly novelty.
Next it is said that there was anticipation by certain prior specifications. These are all
paper anticipations, it. being admitted that no ball-pointed pen had ever previously appeared
on the British market. They must therefore satisfy a very strict test.
20 Most relied on were two patents of the years 1934 and 1935, taken out by a Frenchman
called Laforest and numbered 411,016 and 423,135, which for this purpose may be treated
as one. These were not practical instruments. The patents have been allowed to lapse.
In my judgment, they do not constitute anticipations of the "Biro" pen. They do not
disclose the doctrine of the continuous vein of ink in the narrow reservoir open to atmosphere.
25 -Indeed, the main ink reservoir in each .case is not open to atmosphere and air is introduced
by a narrow tube let down into the middle of it.
As to the other suggested anticipations, Wright, No. 2,939 of .1911 and Weiller, of 1942
(a Swiss patent), are merely devices for ball points and do not set out to deal with the
question of the ink feed or reservoir. Copeland, No. 19,028 of 1911, has not a narrow
30 reservoir, while Foster, of 1916 (a U.S. patent), is not a ball point pen at all. Lastly.
Biro's patent No. 512,218 is one of those piston pens which, as it seems to me, work
on the very reverse of the principles of the Plaintiffs' invention.
I tum now to the threats action, which I can deal with shortly. The infringement action
with which I have just dealt was the second launched by the Plaintiffs. There was an earlier
35 one -in respect of the "Bell" pen, which, as before stated, preceded the "Selsdon" pen
on the market. That action was ripe for trial in July, 1948, but on the eve of the hearing
the Plaintiffs came to a composition with their opponents, under which the latter agreed
to take a licence and in effect not further oppose the action. As a result the Plaintiffs, in
the absence of opposition, had no difficulty in satisfying the judge that they were entitled
40 to the injunction for which they asked. Thereupon Mr. Coit, the 'Managing Director of
the Plaintiff Company, decided to make this success the occasion of what he called a general
warning to the trade. This was intended to warn off the competitors then beginning to
appear in some numbers (as Exhibit P.I0 shows), though by no means so numerous as they
afterwards became. It is a thoroughly disingenuous document and is in these terms: "The
45 "Biro Pen. The Biro pen is fully protected by several patents. We believe that it is
"imlpossible to make a satisfactory ball-pointed pen without infringing one or more of
"these patents. In 1947 proceedings for infringement were commenced against C.B. Pro-
"jections (Engineering), Ltd., of Cranleigh, Surrey, in respect of the manufacture and sale
"by them of the' Bell ' p~n and. on July 6th, 1948, the High ~ourt of Justice_gr~~ted an
50 "injunction and costs against this company, who had meanwhile become a subsidiary of
"Thomas de La Rue & Co., Ltd.
216
Martin and Miles Martin Pen Coy, Ld. v. The Selsdon Fountain Pen Coy. Ld.
" A licence has now been granted to Thomas de La Rue & Co., Ltd., and C.B. Projections
'~(Engineering), Ltd., under all Biro Patents, in consideration of their paying. royalties on
.
" all ball-pointed pens and refills made or sold by them or by any firm under their control.
"We hereby give notice that we shall take steps to protect our rights against any firm
" or company other than the above who manufacture or who handle any ball-pointed pens." 5
In my judgment, this was clearly a threat against all those, whether manufacturers or
dealers, who dealt in ball pointed pens. The point about the action already taken was to
suggest (falsely) that the validity of the patents had been tested in the courts and that
therefore there was no answer in law to the threatened proceedings.
It was suggested that there was here no threat to "any person", because no one in 10
particular was named or indicated. I do not think this point will 'stand scrutiny.. All

the witnesses for the Miles Martin 'Company who were questioned on this point agreed that
the Selsdon Company, amongst others, were aimed at.
Having regard, however, to my decision in the infringement action, it is plain that .the
defence of justification must succeed, except in so far as the" Selsdon Four Year Pen" 15
is included in the threat. In my judgment, it clearly is; the threat was in respect of "all "
ball-pointed pens and the" Four Year Pen" comes into that category. It is admitted that
this pen does not infringe and, therefore, the action, so far as it goes to that pen, must succeed.
Judgment for the Plaintiffs in the infringement action with the usual relief and one-half
the costs of the action, a stay of the injunction being granted provided the Defendants gave 20
notice of appeal within 21 days; judgment for the Plaintiffs (with costs) on the counterclaim
in that action; judgment on the cross-action for the Plaintiffs therein, without costs, for
a declaration to be made in form to be settled by Counsel. Certificates of validity were
given in regard to both patents. A certificate for three Counsel was refused.
(64979) Wt. 8235A-3735 1050 5/49 D.L. .,

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193

IN THE HIGH Couar OF JUSTICE-eHANCERY DIVISION.

Before MR. JUSTICE V AlSEY.

25th January, 1949.

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Patent-s-Action for infringement of two pate,nts-Construction-Infringement-Equivalents

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Figure 1 is a view of one form of the writing instrument, partially in section so as to

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4. Improvements in writing instruments as claimed in Claims 1 or 2 wherein the conduit

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In the embodiment of Figs. 3, 4, 5 and 6 the reservoir b is also formed by lengths or

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Johnston summed up.e-Jnfringement is proved, the only question is as to the meaning

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No.8.] REPORTS OF PATENT, DESIGN, AND TRADEMARK CASES [Vol. LXVI.

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(64979) Wt. 8235A-3735 1050 5/49 D.L. .,

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