W. Comer Petheram, C.J.
1. This is a proceeding under Section 24 of Act XV of 1859 for the purpose of obtaining a declaration that no exclusive privilege to manufacture sugarcane mills according to a specification has been obtained under a patent dated 10th February 1874. The rule for the purpose of this application was obtained in the month of May last, and was returnable within twelve days from date of issue, but from that time the matter has, for various reasons, stood over until the present time.
2. The patent in respect of which this enquiry comes before us is, as I said just now, dated the 10th February 1874, and consequently it will expire on the 10th February 1889, that is to say, in about three weeks from this date, so that, in case there is no application for the renewal of this patent, the specification under enquiry will come to an end in three weeks, and the whole of this enquiry and the whole of the time and money which has been spent upon it will have been useless, unless the consequences of the enquiry were for some reason one which would not be affected by the expiration of the patent.
3. The matter coming before us in that way, three preliminary objections are taken by Mr. Woodroffe to our going into the enquiry, for the purposes of the Act, to ascertain whether this is a valid patent by reason of want of novelty, or whether the specification itself is so by reason of the provisions of the Act not having been complied with.
4. The preliminary objections which Mr. Woodroffe has taken are Section first, that the matter is res judicata in the sense that there has been before this another application of the same kind in respect of this very patent which was decided in favour of the patentee, and that there has been a second trial in which this matter was in issue, and was also decided in favour of the patentee. The second objection is that the person who appears upon this record as the petitioner is not the petitioner at all, and that his name has only been used for the purposes of the petition, which has been presented in the interests of and really by a gentleman of the name of Neil Fox, who is the person actually interested in the matter, and that the petition is really his petition, and that Mr. Neil Fox is not in a position to institute these proceedings and to carry them through, because he is the licensee of the patentees here. He holds a license from them under which he manufactures the very machines in question, and,, therefore, so far as the petition is concerned, he is estopped from denying the validity of the patent. The third and last objection which was taken by Mr. Woodroffe is that this proceeding is barred by limitation, such an application as this being within the 178th article of the second sehedule of the Limitation Act and the time beginning to run from the date when the patent was granted.
5. We do not think it necessary to say anything whatever with reference to the first and third of these objections. They are objections on which a great deal might be said on either side, but we do not think it necessary to express any opinion as to the law with reference to them or as to the validity of those objections with reference to this case, because, in our opinion, the second objection taken by Mr. Woodroffe, coupled with the evidence which we have had before us, as to the nature of the interests of the various parties to this application, is fatal to the further maintenance of this application.
6. Mr. Woodroffe undertakes, in the first instance, to show that this application is really an application by Mr. Neil Fox, and that that being so he is precluded, by his position as licensee of the invention, from challenging the soundness of the patent, and, in support of that view, he cites the case of Clark v. Adie L.R. 2 H.L. 425. That was a case in which Mr. Clark was attempting to challenge the patent which had been obtained by Mr. Adie and Mr. Clark was in the same position which, Mr. Woodroffe alleges, Mr. Neil Pox occupies in this case; in other words, he had agreed with the patentee to manufacture machines which were the subject of the patent under a license from him, and to pay a royalty for all such machines, the consideration for the royalty being that the patentee agreed with the licensee that he would take no proceedings for the infringement of the patent; and in that case the Lord Chancellor uses these words: 'The appellant is a licensee, who has taken a license to work a patent granted to the respondent Mr. Adie, a patent which is dated the 30th October 1866, and which subsequently became subject to a disclaimer and memorandum of alteration by Mr. Adie of 10th August 1870, Therefore as between the appellant, the licensee, and the respondent Mr. Adie, the patentee (whatever strangers might have to say as to the validity of this patent), the question of validity must be taken as that which the appellant is unable to dispute. So far as he is concerned, he must stand here, admitting the novelty of the invention, admitting its utility, and admitting the sufficiency of the specification.' These words of Lord Cairns are perfectly general as to the position of a licensee. He there states the law to be, that a person who occupies that position and has undertaken to manufacture machines as being the subject of an invention which has been patented, and so to make a profit out of the patent, must be taken as having admitted the validity of the patent, and as being a person who cannot, as between himself and the patentee, dispute the validity or novelty of the invention or any other circumstances which go to make a valid patent.
7. Therefore it seems to us that this case establishes the position, and that is what we should have expected it to do, because it does not seem there could be any doubt what the law would be, that a person who occupies that position and makes a profit out of the patent cannot afterwards, as between himself and the patentee, say that this thing is invalid as against the world. So that, taking the law from that case, it follows that if Mr. Woodroffe succeeds in showing that this is a proceeding instituted by Mr. Neil Fox, and for his benefit, and if he establishes that Mr. Fox is a licensee of this patent under the patentees, who are the respondents in this rule, he is precluded from questioning it, and that therefore this rule must be discharged on that ground.
8. Several cases have been cited by Mr. Hill on the other side, but what those cases deal with is the question of the rights and powers of a licensee after the license has expired, or when it has been repudiated, or when it has terminated in any way; and what they have decided is this, that, although a man may hold the position of a licensee atone time, if that license has expired by effluxion of time, or has come to an end for any reason, he is at liberty to challenge the patent. But in this case we do not think that these authorities have any application, and for this reason, that both Mr. Mylne and Mr. Neil Fox himself, in the affidavits filed in this ease, swear that at the time when these proceedings were instituted he, Mr. Neil Fox, held a license to work this patent. Therefore we have his own statement and the statement of one of the patentees that this license was existing at that time, and as he only could have terminated it, and has not done so, it is clear that when this proceeding was instituted Mr. Neil Fox did hold the position of licensee, and if it appear that this proceeding is his it must fail for that reason.
9. The person who appears as the petitioner is a Mr. Moses, and it was apparent from the record itself, and also from the affidavits and from the admissions made to us by the counsel for the petitioner, that it was doubtful whether Mr. Moses had any real interest in the matter, and whether it was not Mr. Neil Fox who was, as a matter, of fact, really interested in it. Fortunately Mr. Moses has been called, and he has told us his own story, and having heard his story I am bound to say that he has on the whole stated it with candour. It does not seem to me that he has concealed any of the real facts and circumstances from us ; and having heard him, and believing his story, I have not the slightest doubt that this application is really an application for and on behalf of Mr. Neil Fox, and that Mr. Moses has nothing to do with it, except in the matter, of costs. The story which Mr. Moses tells us is a straightforward one. He says: 'I am a coolie contractor. It was my intention to extend my business, and having heard from Mr. Neil Fox that there was a possibility of sugarcane mills coming into the market which would be successful as a rival to the sugarcane mills of Messrs. Thomson and Mylne, I told him that I should like to add sugarcane mills to the rest of my business.' Some months afterwards Mr. Moses heard that Mr. Fox had taken these proceedings, that he had retained solicitors, that he had got together information, and that the matter was proceeding; but he also heard that it was not convenient that the proceedings should go on in the name of Mr. Neil Fox, because he was the licensee, and thereupon Mr. Moses says that be at once volunteered that his own name should be used. Now, I said just now, I thought Mr. Moses was candid in giving his account of the circumstances, but I do not think that remark is quite applicable to this statement of his, because it is doubtful whether Mr. Moses at once volunteered that his name should be used. Having regard to the nature of the interest he was to have in the patent, and having regard to the fact that he had never seen Mr. Roger's sugarcane mill, it does not seem likely that he would have volunteered the use of his name. It seems more likely that the suggestion that his name should be used came from some one else. However, in the result, he did allow his name to be used as the petitioner. He also said that he was to find a portion of the expenses, and he did contribute Rs. 1,000 to the expenses by a cheque on the Delhi and London Bank. However that may be, the fact still remains that Mr. Neil Fox was the person who was really interested in the matter, who bad instituted these proceedings in pursuance of a threat which he had made some time before, and ha was the person who took the most active part altogether; and even supposing that Mr. Moses and Mr. Rogers had some interest in this matter, and were under some agreement with Mr. Fox by which the profits, if there were any, were to be shared between them all, still the fact that they associated Mr. Fox with them in this matter is in itself sufficient to make it impossible that this proceeding could succeed, because as to a third of the interest in this venture it belongs to a person whose mouth is shut and who cannot challenge this patent, Under these circumstances we must deal with this application as if Mr. Fox's name appeared as the petitioner, at all events jointly with Mr. Moses, and if we do so, it will be clearly our duty, within the doctrine of the case of Clark v. Adie, to say that this petition could not be maintained, because one of the petitioners and the most active of them being a licensee his mouth was closed in such a way that he was not in a position to dispute the validity of the patent. Under these circumstances, as I said before, I think we must hold, at all events, that--Mr. Neil Fox, who was interested in this matter as a joint petitioner with the person whose name appears on the record as the petitioner, being a licensee and as such is estopped from challenging the validity of the patent--this rule must be discharged with costs on scale No. 2.
10. One other word as to the advisability of our taking the course we have done. I have to say that we do this, because, whatever the merits may be, and whether this is the best patent or whether this invention has any novelty, and whether this is a patent which might have been got rid of years ago, all these matters stand where they were, and no harm is done. This patent will come to an end in three weeks' time, and the patentees have put it on record that they have no intention of making an application to renew it. This rule, therefore, as I said before, will be discharged with costs.