Later decisions that cite Baldwin & Francis Ltd v Patents Appeal Tribunal
May 14. Lorp Morron or Henryton (read by Lord Somer- vell of Harrow). My Lords, the question for decision in this House is whether there is or is not any error of law on the face of the record of the Patents Appeal Tribunal (Lloyd-Jacob J.) in the present case. That tribunal reversed interim and final decisions of the superintending examiner (Mr. E. T. Vincent acting for the Comptroller-General of Patents) whereby, in opposition proceedings under section 14 of the Patents Act, 1949, he ordered that there should be inserted in the third and fourth respondents' letters patent No. 703,630 a specific reference to the appellants' letters patent No. 658,823. The first and second respondents were not represented at the hearing of this appeal and I shall hereafter refer to the third and fourth respondents as '' the respondents. "' 29 (1878) 4 App.Cas. 30. 30 [1957] 1 Q.B. 574, 590. A.C. AND PRIVY COUNCIL. This appeal has taken an unusual course, and in order to state the matters to be considered by this House it is necessary to set out the history of the case in some detail. I shall first state the relevant provisions of the Patents Act, 1949. They are as follows: By section 14: ''(1) At any time within three months from "" the date of the publication of a complete specification under this "" Act, any person interested may give notice to the comptroller "of opposition to the grant of the patent on any of the following grounds:— .. . (g) that the complete specification does not 'sufficiently and fairly describe the invention or the method by which it is to be performed; . . . (2) Where any such notice is given, the comptroller shall give notice of the opposition to the applicant, and shall give to the applicant and the opponent an opportunity to be heard before he decides on the case. . (4) An appeal shall lie from any decision of the comptroller under this section.'' By section 9: '' (1) If, in consequence of the investigations 'required by the foregoing provisions of this Act or of proceedings under section 14 or section 33 of this Act, it appears to the comptroller that an invention in respect of which application 'for a patent has been made cannot be performed without sub- stantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant's complete specification by way of notice to the public unless within such time as may be pre- "" scribed either—(a) the applicant shows to the satisfaction of ""the comptroller that there are reasonable grounds for contesting "the validity of the said claim of the other patent; or (b) the ""complete specification is amended to the satisfaction of the comptroller. . . . (3) An appeal shall lie from any decision or "" direction of the comptroller under this section."' By section 85: '' (1) Subject to the provisions of this Act "' with respect to Scottish appeals, any appeal from the comp- '* troller under this Act shall lie to the Appeal Tribunal... . ""(7) Upon any appeal under this Act the Appeal Tribunal may "' exercise any power which could have been exercised by the 'comptroller in the proceeding from which the appeal is "'brought. . . . (9) Rules made under this section shall provide "' for the appointment of scientific advisers to assist the Appeal ''Tribunal upon appeals under this Act and for regulating the 'functions of such advisers; and the remuneration of a scientific '' adviser appointed in accordance with such rules shall be '* defrayed out of moneys provided by Parliament. (10) An appeal 46é BaLpwin & Francois Lip. 0. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. 678 IE, IBE) (03) 1959 BaLpwin & Francois Lrp. v. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. HOUSE OF LORDS [1959] ''to the Appeal Tribunal under this Act shall not be deemed to '' be a proceeding in the High Court."' By section 87 (1): '' An appeal shall lie to the Court of '* Appeal—(a) from any decision of the Appeal Tribunal on an 'appeal under section 33 or section 42 of this Act where the '* effect of the decision is the revocation of a patent; (b) from any 'decision of the Appeal Tribunal under section 55 of this Act; ''(c) with the leave of the Tribunal, from any decision of the 'Tribunal under section 14 of this Act, where the effect of 'the decision is the refusal of the grant of a patent on the "ground specified in paragraph (d) or paragraph (e) of sub- "section (1) of that section."' The effect of the provisions of sections 9 (3), 14 (4), 85 and 87 is that no appeal lies to the Court of Appeal from the decision of the Patents Appeal Tribunal in the present proceedings, that the Appeal Tribunal is an inferior tribunal, and that the only remedy of persons aggrieved by a decision of that tribunal is by way of order of certiorari. [His Lordship stated the facts and continued: ] Parker L.J., in a judgment with which the other Lords Justices concurred, stated the contention of counsel for the appellants as follows ?: "" Mr. Graham, on behalf of the appellants, puts his contention "in this way. Before the tribunal can decide whether there is "a substantial risk of infringement, it must construe the rival "specifications. The construction of a written document is a "matter of law. Reading the decision of the tribunal (so he says) "it is clear that the tribunal must have misconstrued the speci- "fications, and accordingly there is an error of law on the face "of the record. 6 "It is clear that proceedings such as these are in no sense "by way of appeal. The court can look, and look only, at the ""reasoned decision, and at such other documents as can fairly "be said to form part of the record. If no reasoned decision "'is given, the error of law, if error there be, will not be detected. 'The face of the record (as Lord Sumner put it in Rex v. Nat '' Bell Liquors Ltd.*) was then ' the inscrutable face of a sphinx.' "'In the ordinary case, where, as here, what is called a ' speaking '""" order ' is made, the error, if error there be, takes the form of ' the misconstruction or misapplication of a statute or regulation. 1 [1959] 1 Q.B. 105, 110; [1958] 2 [1922] 2 A.C. 128, 159; 938 2 W.L.R. 1010; [1958] 2 All E.R. TLR. 541. 368. A.C. AND PRIVY COUNCIL. "This case, so far as I know, is the first case where it is said "that the error consists of the misconstruction of some other '""document. Logically, however, if that document does form "part of the record and the decision on its face shows that the "tribunal has misconstrued it, I do not see why certiorari will ""not lie. It is an error of law, albeit one different from that "" sometimes found.""' My Lords, Mr. Graham's argument in this House was to the same effect, and I entirely agree with the passage which I have just quoted. The learned Lord Justice then went on to hold that the two specifications formed part of the record but found it unneces- sary to determine whether or not the decision of the superin- tending examiner also formed part of the record. He then pointed out that in order to determine whether either of the specifications had been misconstrued it was necessary for the court to decide what the right construction was. The documents dealt with technical matters of science, and technical terms were used. Where technical words were used in a document they were prima facie used in a technical sense and evidence could, and indeed must, be given to enable the court to understand the meaning of the language used. The Lord Justice was satisfied that the court could not construe the specifications without being informed by evidence and, that being so, the application failed in limine because the court in such proceedings was not entitled to look at the evidence given in the proceedings or to receive new evidence on affidavit. My Lords, I fully appreciate the difficulty felt by the Divisional Court and the Court of Appeal, and I agree that in cases where an order of certiorari is sought on the ground of error of law on the face of the record, the court is not entitled either to look at the evidence given in the proceedings or to receive new evidence. There are, however, other means whereby the meaning of technical words may be ascertained. For instance, counsel are sometimes ready to agree that well-known technical words have a particular meaning. In the present case the House was greatly assisted by an analysis of claim 1 of the appellants' specification No. 658,823, which was prepared by the appellants for the use of the Court of Appeal and accepted as correct by counsel for the respondents. Moreover, the court has power to appoint assessors under section 98 of the Supreme Court of Judicature (Consolida- tion) Act, 1925. It would, indeed, be regrettable in present times, when certiorari lies to so many tribunals dealing with scientific matters, 679 H. L. (E.) 1959 BaLtpwin & Francis Lip. v. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. 680 BL. (e) 1959 BALDWIN & Francis Lp. 0. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. HOUSE OF LORDS [1959 | if the courts were precluded from considering whether there was an error of law on the face of the record because they did not know the meaning of certain technical terms. Your Lordships heard considerable argument as to what documents did or did not form part of the record in the present case. Mr. Graham submitted that the record included at least the decision of the superintending examiner, the notice of appeal to the Appeal Tribunal, the decision of the Appeal Tribunal and the two relevant specifications, and your Lordships have looked at all these documents de bene esse. I am content to assume that they all form part of the record, for, even on this assump- tion, I do not find any error of law on the face of the record. The vital passage in the decision of the superintending examiner is as follows. Speaking of the respondents' specification No. 703,630 (they were the applicants before him) he said: '"T am satisfied that there is resistance, be it resistance U or "the resistance of winding 2, through which current is injected 'by secondary winding 12, and this resistance is connected, by "" switch 14, on the dead side of the circuit-breaker 6. The "current arises at the secondary winding 12, and the fault circuit '"" comprises the lines 7, 8, 9 and the fault to earth. Accordingly, "' the injection of the current is achieved by all the components " disposed between the winding 12 and the lines 7, 8, 9, namely, "the resistance U, the winding 2 and the switch 14. I find no " difficulty in reading this arrangement on to the phrase in claim 1 'of specification 658,823, 'by means of a resistance ' whether "it be resistance U or the resistance of winding 2. As a result, "I find that the invention described in applicants' specification '* 703,630 cannot be performed without substantial risk of infringe- ""ment of claim 1 of opponents' specification 658,823.' Now, the analysis of claim 1 of this specification, to which I have already referred, states that ''The claim includes four 'alternatives and is equivalent to four separate claims rolled into "one.'' It then sets out the four alternative claims, identifying them by the letters (A), (B), (C) and (D), and it is said by counsel for the appellants that the reasoning of the superintending examiner applies directly to alternative claim (D). I think that this igs so. I now turn to the decision of the Patents Appeal Tribunal. It is short and I find it necessary to set it out in full. When the tribunal refers to '' the applicants '' or to '' the appellants '' he is, of course, referring to the present respondents. A.C. AND PRIVY COUNCIL. '" By this appeal the applicants for letters patent No. 703,630 "seek a reversal of two decisions given by Mr. E. T. Vincent " (superintending examiner, acting for the Comptroller-General) "dated June 15, 1956, and August 31, 1956, and ask that their "patent may be sealed without either amendment or the in- ""sertion of a specific reference to letters patent No. 658,823. "The hearing officer came to the conclusion that the per- '"" formance of the applicants' invention would involve substantial 'risk of infringement of the cited letters patent, the material "claim of which reads as follows: ' An earth leakage protective '"* control system for electric motors, cables or other apparatus 'operating on polyphase A.C. in which the reclosing of a "circuit breaker or contactor under earth fault conditions is """ prevented by a lock out relay energised by rectified A.C. """ which is, or is derived from current injected through the """ fault circuit by means of a neutral point inductance or resist- """ ance, or a resistance connected on the dead side of the circuit """ breaker or contactor.' '"The general similarity of the applicants' construction to "" apparatus covered by this claim is not and cannot be disputed. '"Tt is an earth leakage protective control system for loads opera- "ting on three-phase A.C. and is designed to prevent by relay "action the reclosing of a circuit breaker which has been opened "on an earth fault occurring. The relay for such reclosing is '" electrically energised through a resistance by current derived '"from the mains supply. The characteristic of the opponents' 'claim which it is contended does not appear in the appellants' 'construction is that which specifies that the operation of the '' relay is to be by rectified A.C. passing through a resistance. It 'is conceded that the relay is operated by current, and that a 'resistance is in circuit but it is urged that the current which 'passes through the relay is not rectified A.C. This, on the '"face of it, would appear to be a simple matter of technical '' sionificance susceptible of ready proof by evidence. The '' decision proceeds upon the basis that the presence of rectifier '*4 in the circuit which energises the relay necessarily provides '' rectified current, as indeed it must, but holds that the current '« "injected through the fault circuit ' is provided by the second- ''ary winding 12 and passes through a resistance, another 'winding 2, a switch 14, a power line through the fault to 'earth and so back to 12, thus specifying a circuit for the '' current which does not include any rectifier. The appellants' '"argument, as I understand it, proceeds upon the basis that if, A.C. 1959: 44 "é 'ec ' ' 681 H. L.' (B.) 1959 BALDWIN & Francois Lrp. v. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. 682 Abd 1959 BALDWIN & Francis Lrp. v. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. HOUSE OF LORDS [1959] "« contrary to their view, any part of their apparatus can be said 'to inject current through the fault circuit, that can only be '' possible through the circuit specified by the hearing officer as ''just set out, and in consequence, no rectification of the alter- 'nating current is required or provided. Neither the evidence 'filed nor the decision contain matters which would justify me ''in holding that this contention may not be well founded and '*as the substantiality of any risk of infringement depends upon ''a finding that the contention is ill-founded, I find myself 'unable to support the decision. ''The direction that a reference in the form prescribed by ''rule 85 must be inserted in the application before sealing is "* therefore reversed."' _ My Lords, I must now analyse this decision to see whether it contains, on its face, an error of law, and I do so assuming that for this purpose I am entitled to look at all the documents which are said by Mr. Graham to be part of the record. The tribunal first sets out the whole of claim 1 of specification No. 658,823. He then, down to the words '' mains supply,'' makes certain observations on specification No. 703,630. These are not criticised by counsel for the appellants. The next passage, down to "' is not rectified A.C.,'' is strongly criticised by counsel for the appellants. They say that it entirely misstates the argument presented to the tribunal. That may be so, and it is a fact that a vacation intervened between the argument and the decision, but a misstatement of counsel's argument is not an error of law. Still less is it an error of law which appears on 'the face of the record. The next sentence is not and could not be relied upon as containing an error of law, and the same observation applies to the next sentence, which briefly describes the basis of the decision of the super- intending examiner. Then follow two sentences containing one statement which does, I think, result from a consideration of the construction of the relevant specifications. That statement is that the substantiality of any risk of infringement depends upon a finding that an argument addressed to the tribunal by the then appellants (the present respondents) was ill-founded. Mr. Graham contends that this statement shows that the tribunal, when he wrote his decision, must have forgotten the tenor of the argument and must have omitted to notice that claim 1 of the appellants' specification includes alternative (D). He says that the decision of the superintending examiner was based entirely on the risk of infringement of alternative (D); A.C. AND PRIVY COUNCIL. consequently the argument before the tribunal was directed entirely to the question whether performance of the respondents' inven- tion would or would not infringe alternative (D); the argument has twice been misstated by the tribunal, who makes no reference to alternative (D); and the concluding statement by the tribunal reveals an error of law, for the substantiality of the risk of infringement does not depend upon the matters mentioned by the tribunal. The tribunal must have misconstrued specification No. 658,823 by omitting to notice that alternative (D) was included in claim 1. My Lords, I cannot draw this conclusion from anything that appears on the face of the record. It is true that the decision of the tribunal contains no reference to alternative (D), and that I should have expected the argument before the tribunal to concentrate on the risk of infringing alternative (D); but it does not appear on the face of the record that the tribunal ever heard any argument on this point, and the omission of any reference to alternative (D) may be due to the fact that the tribunal did not consider that there was any substantial risk of infringement of that alternative, and therefore directed his attention to other possibilities of infrmgement. If the present proceedings had been an appeal from the tribunal's decision, it would have been the duty of this House to hear argument and evidence directed to the question whether there would or would not have been any substantial risk of infringement of alternative (D), if the respon- dents' invention were put into operation; but the legislature has not thought fit to give a right of appeal in this case, and the tribunal's omission to deal with the question just stated does not amount to an error of law on the face of the record, whether or not the record includes the documents already mentioned. For these reasons I would dismiss the appeal with costs. Lorp Rem. My Lords, I agree that this appeal should be dismissed, and I only add some observations because I would base my decision on reasons different from those adopted by the Court of Appeal. Procedure by way of certiorari is available both where there has been '' excess of jurisdiction '' (which is not a very adequate description) and where error of law appears on the face of the record. But there is this difference between these classes of case: in the former the court can be informed of the whole circumstances, in the latter it cannot, and this case admittedly belongs to the latter class. The appellants can only succeed if it appears on the face of the record that the 683 1S I BD, (08!) 1959 BALDWIN & Francis Lrp. v. PATENTS APPEAL TRIBUNAL. Lord Morton of Henryton. 684 Hae es 1959 BALDWIN & Franois Ltp. v. PATENTS APPEAL TRIBUNAL. Lord Reid. HOUSE OF LORDS [1959 | tribunal has erred in law. The question what constitutes the record and whether or how far it is permissible to look beyond the order under review is one of great importance, but one on which I find it unnecessary to express any opinion in this case. I shall therefore assume, without deciding, that this record includes all the documents which the appellants maintain that it does include—not only the decision of the tribunal but also the decisions of the superintending examiner and the specifica- . tions Nos. 658,823 and 708,630. The question which the examiner and the tribunal had to decide was whether the invention described in the latter speci- fication could be performed without substantial risk of infringe- ment of claim 1 of the former specification. That is in itself a question of fact, but it cannot be answered until the meaning of the relevant parts of the two specifications has been deter- mined, and the construction of documents is a matter of law. If the record showed that the tribunal had wrongly con- strued the former specification I should regard that as an error of law appearing on the face of the record, and therefore I think it necessary to examine the documents said to form the record. Before doing so, I must deal with an important matter. With what knowledge or equipment is a court entitled to examine a document? A judge is supposed to know the law, the English language and such facts as are common knowledge. If he refers to authorities or dictionaries or other works dealing with these matters he can safely do so because his general knowledge en- ables him to check and appreciate them. But if without assist- ance he attempts to handle highly technical matters he may easily go astray. Some fairly simple technical matters can nowadays be considered to be common knowledge, and I would not attempt to draw the line—it may alter from time to time. In this case some of the terms used are simple enough but some are certainly not. So what is a court to do if on the face of a record there are technical terms which cannot be understood without expert assistance? There may be cases where a very little assistance is all that is necessary, and I would think it unfortunate if such a strict rule were laid down that the mere presence of some technicality is enough to prevent a court from proceeding further in the absence of evidence to explain it. Technicalities crop up in a great variety of cases and, when the parties are not in dispute about them, they are often ex- plained without evidence. Counsel give explanations and by doing so they are not giving anything away: if they were not s A.C. AND PRIVY COUNCIL. in agreement evidence would be led. But in a case where it is not competent to lead evidence counsel could not, in my view, properly be asked to help in this way unless there is some other way for the court to get the necessary information. If his client's interests might suffer by his giving such explana- tion counsel is quite entitled to withhold it, and the court could not proceed on information given by one side only. But there do appear to be methods by which a court can go some way in acquiring technical information without evidence, for example, by means of an assessor. If the court finds that there is genuine dispute and real doubt about any technical matter, then I do not think that it can proceed farther without evidence. But the relevant technicalities in this case are not in dispute—I mean relevant for the purpose of examining those parts of the tribunal's decision which are said to exhibit an error of law. So I think that I must make 'that examination in light of the explanations which have been given by counsel. Claim 1 of the appellants' specification contains four alter- natives. That is apparent from the language and structure of the claim. The error in law alleged is that the tribunal mis- construed the claim and left out of account the fourth alternative. This is the alternative on which the examiner based his decision and which a fairly simple explanation aided by the diagrams in the specifications shows to be the only one at all closely resembling the respondents' invention. Of course, I express no opinion whether or not full examination would disclose any real resemblance. Parts of the decision are not very easy to follow, but there seems to be no doubt that in his decision the learned judge who was the tribunal did not mention or allude to this fourth alternative. He dealt chiefly with another of the alternatives. In the end the point for decision appears to me to be this: can it properly be inferred from the terms of his decision that the learned judge misconstrued claim 1? He set out the claim in full in his decision and, if there had been any obligation on him to set out all his reasons, silence as to this alternative might have afforded ground for such an inference. But he was not bound to set out his reasons in full, and all the indications are that he was well aware of this fourth alternative. It had been dealt with by the examiner and had been, we were informed, the main subject of argument before him. There is nothing to indicate that he had decided in his own mind that he ought 685 H. L. (B.) 1959 BALDWIN & FRanNcIs Lp. 0: PATENTS APPEAL TRIBUNAL. Lord Reid. 686 ES oe Cai.) 1959 BaLpwin & Francis Lip. v. PATENTS APPEAL TRIBUNAL. HOUSE OF LORDS [1959 | not to or would not consider it. In these circumstances, it does not seem to me to be likely, far less to be clear, that his failure to deal with this alternative in his decision was caused by any error of law on his part. And that is sufficient to dispose of this case. Lorp Tucker. My Lords, in this case the appellants sought to quash by certiorari a judgment of the Patents Appeal Tribunal dated January 17, 1957. The application to the Divisional Court was on the ground that the Patents Appeal Tribunal '"' was '" acting in excess of jurisdiction and without jurisdiction and its '""judgment and decision was wrong in law and bad on the face '"'of the said decision."' It was clear from the outset that there was no excess or lack of jurisdiction and there can be no doubt that the statute having given no right of appeal it is of no avail to allege that the decision was wrong in law. The sole remaining ground, there- fore, was that the decision was bad on its face, and this at once presents the problem of what is the face of the decision. The appellants sought to refer, in addition to the written judgment of the tribunal, to their patent specification No. 658,823, the respondents' patent specification No. 703,630 and the decision of the superintending examiner from which appeal had been brought to the Patents Appeal Tribunal, on the ground that these documents formed part of the ''record'"' of the tribunal and could therefore be looked at. Your Lordships decided to look at these documents de bene esse before giving any decision as to their admissibility. Your Lordships also heard from counsel for the appellants a detailed explanation of the meaning of the specifications and of the questions at issue on the appeal. These explanations counsel for the respondents was unable to accept as he was quite properly standing on his submission that nothing could be looked at outside the judgment or, in the alternative, that these documents did not form part of the record of the tribunal. My Lords, I agree with those of your Lordships who, having looked at these documents, have come to the conclusion that there is nothing to be found therein to show that the judgment contains an error of law. It accordingly became unnecessary for your Lordships to decide whether it would have been permissible to act upon these documents if they had disclosed that the judgment was erroneous in law, and I therefore desire to empha- sise that there is nothing in your Lordships' decision in the A.C. AND PRIVY COUNCIL. present case that can be quoted as any authority as to the meaning of the word " record '' in this context or as to whether the court can or will look beyond the actual order or decision in the case of a '' speaking order'' to discover whether error in law exists or not, or what documents constitute '' the record "' if the court orders the record to be brought before it. These questions may require decision at some future date. When that time arrives it may be necessary to consider whether the word "record '' in relation 'to certiorari to quash for error on the face means anything more than the order or decision as recorded. It is well settled that in the case of a non-speaking order or judgment it is not permissible to look beyond the record which in the language of Lord Sumner in Rex v. Nat Bell Liquors Ltd.* is "' the inscrutable face of a sphinx.'' Is there a difference when the order speaks but speaks with the ambiguous voice of the oracle? This may some day call for decision. In this connection I desire particularly to reserve for future consideration certain obiter dicta on this subject made in the Court of Appeal in Rez v. Northumberland Compensation Appeal Tribunal. I am not to be taken as casting any doubt on the actual decision in that case, which I think was clearly right. Nor are my reservations to be read as applying to certiorari in general. They are confined solely to certiorari to quash on the ground of error in law on the face of the recorded order or decision. Cases of excess or lack of jurisdiction properly understood, as explained by Lord Sumner in Rex v. Nat Bell Liquors Ltd.,*° are clearly distinguishable, although much con- fusion has arisen from failure to observe the distinction. My Lords, subject to these reservations, I agree that this appeal should be dismissed. Lorp SomEerRvELL OF Harrow. My Lords, I agree with the opinion delivered by my noble and learned friend, Lord Tucker. The present case shows how important the issue as to what con- stitutes the face, on which error must be found, may be. I have looked at a number of ancient and modern cases on certiorari and am satisfied that the point is a difficult one which should be left to be decided after full argument if and when it arises. Lorp Denninc. My Lords, in the case for the appellants, which is submitted to this House, an order for certiorari is sought 3 [1922] 2 A.C. 128, 159; 38 4 [1952] 1 K.B. 838; .[1952] 12 T.L.R. 541. T.L.R. 161; [1952] 1 All E.R. 122. 5 [1922] 2 A.C. 128. 687 H. L. (E.) 1959 BaLtpwin & Francis Lrp. v. PATENTS APPEAL TRIBUNAL. Lord Tucker. 688 Ea. (5) 1959 BaLDWIn & FRAnNcIs LTp. 0. PATENTS APPEAL TRIBUNAL. Lord Denning. HOUSE OF LORDS [1959 | upon the ground that there is an error of law on the face of the record, and on other grounds. When certiorari is sought upon such a ground, evidence is not as a rule admissible. The error must appear on the face of the proceedings without the aid of extrinsic evidence. But what is the '' record '' for this purpose? It is not confined to the formal record of the proceedings such as is kept by a superior court of record, which used to be enrolled on parchment in Blackstone's day and is filed at the Central Office in our day. Certiorari goes to all inferior tribunals, not only to those which are courts of record, but also to those which are not; and not only to those which keep a formal record, but also to those which do not. When certiorari issues to any of these tribunals, there must be brought before the Queen's Bench not only the formal order of the tribunal but also, as the old writ said, '' all things touching "the same "'; and this includes the reasons for the decision when the tribunal gives them. This goes back as far as the time of Holt C.J. In 1702 in Ryslip Parish v. Hendon Parish,*® a case where justices had ordered a poor man to be removed from Ryslip to Hendon, he said: "' Where the justices of peace do give '" a special reason for their settlement, and the conclusion which 'they make in point of law will not warrant the premises, there "we will rectify their judgment: but if they have given no reason "at all, then we will not ravel into the fact.'' The court would not compel a tribunal to give its reasons if it did not wish to do so: but if it did so, it became part of the record then, just as it does today under section 12 (8) of the Tribunals and Inquiries Act, 1958. Your Lordships have been invited now to determine what documents are to be brought up in the case of certiorari to an appellate tribunal. Do they include the decision at first instance? To answer this question I have done as Earl Cairns L.C. did in Walsall Overseers v. London and North Western Railway Co.? I have gone back to the old days when quarter sessions sat as an appellate tribunal on appeal from justices in civil matters. When the King's Bench issued a certiorari to quarter sessions, it was the invariable practice for the documents to include, not only the order of quarter sessions who had heard the appeal, but also the order of the justices who had heard the case at first instance, and also any other document which was recited or referred to by quarter sessions in terms which showed that it was the basis of 6 (1702) Holt 572. 7 (1878) 4 App.Cas. 30. A.C. AND PRIVY COUNCIL. the decision. The principle was well stated in a case in 1732 concerning a poor rate which had not been made part of the order of quarter sessions but had been sent back to the parish officers. 689 Jel VbE (G91) 1959 BaLpwIn & Lord Raymond C.J. said: '' A certiorari goes to remove the order, Ppanors Lev. "and for what? Why, to see whether it be good or not, and how '"" can we judge whether the rate be good or not, unless we see it. '""I have been for some time of opinion that when a certiorari "to be removed that may set the thing in a true light. I do not '""mean every matter of fact, for that is impossible; but how can 'we know whether this rate be good, unless it be returned.'' And Probyn J. made the pertinent comment: '' To what end is ""a certiorari granted, if it can only remove the order, and that "on which it is grounded cannot appear '': see Rex v. Uttoxeter (Inhabitants).§ '* That on which it is grounded '' always included the decision at first instance. ' This rule was not confined to cases where the quarter sessions stated the facts specially for the opinion of the court. It extended to all cases where they gave their reasons, even without stating a case. There are many cases to be found where on certiorari the Court of King's Bench had before them the reasons given by the justices at first instance, as well as the reasons given by quarter sessions on the appeal; and the King's Bench considered the two together so as to see whether an error of law was disclosed on the face of them. So it was in the days of Holt C.J. (see Rea v. Alverston®), and of Lord Hardwicke (see Rex v. Bourn (Inhabitants) *°) and Lord Mansfield (see Rex v. Upton Gray (Inhabitants) 1"). I am here speaking only of orders made by quarter sessions on appeals in civil matters. I am not speaking of convictions by justices in criminal matters at first instance: for they always were on a special footing. Before Jervis's Act the conviction itself had to contain everything. It had to set out the information, the evidence and the adjudication, as I explained in Rex v. Northum- berland Compensation Appeal Tribunal.'* And in such gases, of course, the King's Bench would not look at anything outside the conviction—see Rex v. Liston *; not even at the information itself to show a variance—see Rex v. Cashiobury Justices. But in orders on appeals it was different. The court always looked at 8 (1732) Cunn. 28n.; 1 Sess.Cas. 11 (1783) Cald.Mag.Cas. 308. Ke Bal 63: 12 [1952] 1 K.B. 388, 348. 9 (1698) Holt 507. 3.(1798) 5 TOR. 261). 10 (1735) Burr.S.C. 39. 4 (1823) 3D. & R. 35. oe OF PATENTS APPEAL TRIBUNAL. " goes to remove orders cum omnibus ea tangen, everything ought Lord Denning. 690 HOUSE OF LORDS [1959 | H. L. (E.) the decision at first instance to see if there was a variance, as 1959 Lord Hardwicke did in Rex v. Bourn (Inhabitants).* Now turning to modern cases, it will be seen that, in our day, BaLDWIn & 2 } Francis Lrp. too, the courts have proceeded on the footing that there should tore be included in the record, not only the formal order, but all those pices documents which appear therefrom to be the basis of the decision —that on which it is grounded. Such as the claim for compensa- vere be"® tion in the Northumberland case,!® the report of the medical specialist in Gilmore's case17 and the medical certificates in Reg. v. Head.1® Is it really to be supposed that the Crown in those cases made concessions which it was not bound to make and could have successfully resisted the issue of certiorari? None of the counsel before your Lordships suggested it. Nor did they refer to the arbitration cases which are very different, because certiorari does not lie to arbitrators. There is no '"record'' to be considered, only the award. There is no reference to "' all things touching the same.'' But even there, the courts will look at documents which appear from the award to be the basis of the decision (see Landauer v. Asser,!® as explained in Champsey Bhara & Co. v. Jivraj Balloo Spinning and Weaving Co. Ltd.?° and D. S. Blaiber & Co. Ltd. v. Leopold Newborne (London) Ltd.*?). Applying these principles, I think the decision of the superin- tending examiner should be treated as part of the record. It seems to me plain that, in order to know the ground of the decision of the Patents Appeal Tribunal, it is necessary for the court to have before it the decision of the superintending examiner. I can think of no document more closely '' touching the same."' Furthermore, the Patents Appeal Tribunal itself recites the decision of the superintending examiner and refers to it in terms which show that it is the very basis of the tribunal's decision, in that it is the basis from which all the reasoning of the tribunal stems. It is true that the tribunal does not confirm the examiner's decision. It reverses it. But that can make no difference. Whether confirmed or reversed, the decision is part of 15 (1735) Burr.§.C. 39, 40. 19 [1905] 2 K.B. 184, 191; 21 16 [1951] "1° K.B. Tily TI9s1] 1 TER. 40. T.L.R. 270; [1951] 1 All E.R. 268; 20 [1923] A.C. 480, 487; 39 T.L.R. (C.A.) [1952] 1 K.B. 338, 253. 17 [1957] 1 Q.B. 574. 21 [1953] 2 Lloyd's Rep. 427. 18 [1958] 1 Q.B. 182, 138; [1958] 2 W.L.R. 617; [1958] 1 All E.R. 679. A.C. | AND PRIVY COUNCIL. 691 the record. So also with the specifications. They are the very H. L. (E.) basis of the decision. 1959 But when your Lordships turn to consider the documents ' i igwnke ; BaLpwin & which thus form the record, there is an initial difficulty. They Francrs Lr. are full of electrical technicalities. When counsel offered to pene explain them, the High Court rejected his offer, saying ??: ''.. . APPEAL '"we do not go into the technical details because, if we did, we Tae ""should not understand them.'' When the case reached the Lord Denning. Court of Appeal, counsel did embark on an explanation, but the court seem to have regarded his efforts as evidence which, on an application of this kind, it was not permissible for them to receive. '"' We cannot construe the specifications,'' they said,?° "without being informed by evidence, and, that being so, the '"' application for an order for certiorari must fail in limine."' My Lords, whenever the meaning of words arises, however technical or obscure, then, unless there is some dispute about it, it is common practice for the court to inform itself by any means that is reliable and ready to hand. Counsel usually give any necessary explanation: or reference may be made to a dictionary, which may be a general dictionary or even a technical one. If the subject-matter is too difficult to be resolved by such means, the court can always call in aid an assessor specially qualified to explain it, see section 98 of the Judicature Act, 1925, and this has been done from time to time, see, for instance, Mercer v. Denne *4 and Hsso Petroleum Co. Ltd. v. Southport Corporation.*> The ' one thing that the court ought not to do is to refuse jurisdiction in a case because it does not understand the technical terms employed in it. Scientists and engineers are entitled to have their rights enforced and their wrongs redressed as well as anyone else: and the court must possess itself of whatever information is necessary for the purpose. Some judges may have it already because of their previous experience. Others may have to acquire it for the first time. But in either case the information they glean is not evidence strictly so called. When an assessor explains the technicalities, he does not do it on oath, nor can he be cross- examined. And no one ever calls the author of a dictionary to give evidence. All that happens is that the court is equipping itself for its task by taking judicial notice of all such things as it ought to know in order to do its work properly. 22 [1957] R.P.C. 465, 468. 25 [1956] A.C. 218, 222-293; [1956] 23 [1959] 1 Q.B. 105, 113. 2 W.L.R. 81; [1955] 3 All E.R. 864. 24 [1905] 2 Ch. 538, 544; 21 T.L.R. 760. 692 H. L. (E.) 1959 v. PATENTS APPEAL TRIBUNAL. Lord Denning. BALDWIN & Francis Lp. HOUSE OF LORDS [1959 | In the present case your Lordships did have the benefit of explanations by counsel and the point at issue appeared clearly enough. The appellants own a patent for an electrical device. It is numbered 658,823. The specification contains a claim defining the scope of the invention claimed by them. It includes four alternatives and is equivalent to four separate claims rolled into one which were conveniently identified as alternatives (A), (B), (C) and (D). The respondents seek to obtain a patent for a similar electrical device. Their application is numbered 703,630. The appellants objected to this patent being granted to the respondents because they said that, if it was performed, there was a substantial risk of it infringing their patent No. 658,823. The matter came before the superintending examiner at the Patent Office. He held that, if the respondents' invention No. 703,630 were performed, there was a substantial risk that it would infringe No. 658,823 by infringing alternative (D), but no risk of it infringing alternative (A), (B) or (C). So he directed that there should be inserted in the respondents' patent a special reference which was to be in these words: '' Reference has been directed "in pursuance of section 9, subsection (1), of the Patents Act, "1949, to Patent No. 658,823.'' The respondents appealed from this decision to the Patents Appeal Tribunal. The tribunal reversed the decision of the super- intending examiner and held that no special reference should be inserted. The judgment makes no reference to alternative (D) at all. It speaks as if the only alternative in question was alter- native (B). It takes alternative (B) as '' the characteristic '' in dispute; and finds that, as there is no substantial risk of infringing alternative (B), the decision of the superintending examiner must be reversed. I believe that this was apparent to some of your Lordships as soon as you had studied the decision of the tribunal in conjunction with the decision of the superintending examiner: and when you pressed Mr. Tookey upon it, he was constrained to admit the force of it. He, thereupon, to use his own words, lifted the veil and felt the better for it. '' The judge has taken the wrong '' alternative,'' he said. '' He has taken alternative (B) whereas "he should have taken alternative (D). Our contentions were "never based on alternative (B) but on alternative (D). The '' only explanation we can suggest is that, at the end of the argu- "ment, the judge was in our favour, but that, owing to the time '' which elapsed before he came to write his judgment, he took the A.C. AND PRIVY COUNCIL. ' ' wrong alternative.'' Mr. Levy, who followed Mr. Tookey on the same side, made it doubly clear that the argument before the tribunal was based on alternative (D) and not on alternative (B) 693 Hw L. Gs) 1959 BALDWIN & at all. No one suggested that there was any risk of alternative Pranois Lap. (B) being infringed. But Mr. Tookey declared that the decision itself was correct. It was inconceivable, he said, that the judge had overlooked alternative (D). The judge must have considered it and found that there was no substantial risk of it being in- fringed. But he failed to mention it in his written reasons. If it were permissible to speculate on what the judge had in mind, I would agree that that is the probable explanation of what happened, but where I differ is, that I do not think it is permis- sible to surmise or speculate upon it. We have only the written reasons of the judge to go upon, and we cannot presume that he went by any other. It has long been decided that '' when a "" reason is assigned as the foundation of a judgment, all presump- "tion or intendment that the court went upon better grounds is '" excluded '': see Burn's Justice of the Peace, 30th ed., vol. V, p. 374. That statement rests on the authority of Lord Mansfield bimself, supported by Willes and Buller JJ., who sat beside him, see Rex v. Upton Gray ** and if it is correct, as I think it is, it forbids us from presuming that the judge took alternative (D) into account. Excluding, therefore, all presumption or intendment, it appears to me that the written decision of the tribunal is based on what was, in the circumstances, an extraneous consideration (namely, that there was no substantial risk of infringing alternative (B) ) and fails to take into account a very relevant and indeed vital consideration (namely, whether there was any substantial risk of infringing alternative (D) ). Is that an error of law? I have no doubt that it is: and it is an error of such a kind as to entitle the Queen's Bench to interfere. There are many cases in the books which show that if a tribunal bases its decision on extraneous considerations which it ought not to have taken into account, or fails to take into account a vital consideration which it ought to have taken into account, then its decision may be quashed on certiorari and a mandamus issued for it to hear the case afresh. The cases on mandamus are clear enough: and if mandamus will go to a tribunal for such a cause, then it must follow that certiorari will go also: for when a mandamus is issued to the tribunal, it must 26 Cald.Mag.Cas. 308. v. PATENTS APPEAL TRIBUNAL. Lord Denning. 694 H. L. (£.) 1959 BALDWIN & Francis Lip. Vv. PATENTS APPEAL TRIBUNAL. Lord Denning. HOUSE OF LORDS [1959 } hear and determine the case afresh, and it cannot well do this if its previous order is still standing. The previous order must either be quashed on certiorari or ignored: and it is better for it to be quashed. I need not, I think, refer to the cases on mandamus, except perhaps to mention the judgment of Lord Reading C.J. in Ker v. London County Council.27, But I must prove the point about certiorari. I can do it by several cases. In Board of Education v. Rice ?* the Board of Education, in coming to their decision (that the local authority had not failed in their duty), took into consideration the wrong question and failed to take into the consideration the questions which had been raised for their determination. In Rex v. Pontypridd County Court Registrar 7° the Registrars regarded £400 as the maximum compensation and failed to consider whether it was adequate. In Rea v. Northumberland Compensation Tribunal,*° the Tribunal, in assess- ing compensation for loss of employment, took into account only Shaw's service with the hospital board and failed to take into account his whole service in local government. In Reg. v. Fulham, Hammersmith and Kensington Rent Tribunal, Ex parte Hierowski ** the Tribunal, in reducing the rent, took into account afresh the reasonableness of the amount charged, which was an extraneous consideration, as they should only have had regard to the change of circumstances. In Reg. v. Medical Appeal Tribunal, Hx parte Gilmore? the Tribunal, in assessing com- pensation for industrial injury, took into consideration only the injury to the left eye and failed to take into account the prior injury to the right eye. In Reg. v. Head** the Secretary of State, in ordering the girl to be detained, failed to consider whether it was required for the protection of others. In Reg. v. Liverpool Justices ** the justices, in making the adoption order, failed to consider whether there were special circumstances justi- fying it. In all those several cases it was held or accepted that certiorari lay to quash the decisions. In a case in the Privy Council, Seereelall Jhuggroo v. Central Arbitration and Control 20ST LOLS] 2K Be 4660 4ton St 80 [1951] 1 K.B. 711; (C.A.) [1952} T.L.R. 329. 1 K.B. 338. 28 [1909] 2 K.B. 1045; 25 T.I.R. $1 [1953] 2 Q.B. 147; [1958] 2 795; (C.A.) [1910] 2 K.B. 165; 26 W.L.R. 1028; [1953] 2 All E.R. 4. T.L.R. 422; (H.L.) [1911] A.C. 179; 82 [1957] 1 QB. 674; [1957] 2 27 T.L.R. 878. W.L.R. 498; [1957] 1 All E.R. 796. 29 (1948) 64 T.L.R. 78; [1948] 1 33 [1958] 1 Q.B. 182, 188. All E.R. 218. 34 [1959] 1 W.L.R. 149; [1959] 1 All E.R. 387. A.C. AND PRIVY COUNCIL. 695 Board,** the principle was accepted but certiorari was refused H. L. (E.) because the Board were held not to have taken extraneous 1959 matter into account. In some of those cases it has been said that the tribunal, in Beira falling into an error of this particular kind, has exceeded its ke jurisdiction. No tribunal, it is said, has any jurisdiction to be Pens influenced by extraneous considerations or to disregard vita] TRIBUNAL. matters. This is good sense and enables the court of Queen's Lord Denning. Bench to receive evidence to prove the error. But an excess '— of jurisdiction in this sense is very different from want of juris- diction altogether which is, of course, '' determinable at the "commencement, not at the conclusion of the inquiry '' (see Reg. v. Bolton **). Whereas an excess of jurisdiction is deter- minable in the course of or at the end of the inquiry. But allowing that a tribunal which falls into an error of this particular kind does exceed its jurisdiction, as I am prepared to do, never- theless I am quite clear that at the same time it falls into an error of law too: for the simple reason that it has '' not deter- '"mined according to law.'' That is, indeed, how Blackburn J. put it in Reg. v. De Rutzen.*' And the decision in the Northum- berland case ** itself shows that, even though no evidence is given, nevertheless if such an error appears from the documents properly before the court, or by legitimate inference therefrom, then certiorari may be granted to quash the decision: and the certiorari can properly be said to be for error of law on the face of the proceedings. It may be excess of jurisdiction as well, but it is certainly error of law. In the present case, it is, I think, a legitimate inference, from the documents properly before the court, that the tribunal, when it came to give its written and only decision, failed to take into consideration alternative (D), which was a vital matter for con- sideration. It was the sole ground on which the superintending examiner had decided the case: and, before reversing his decision, the tribunal ought to have considered it. The failure to take it into consideration is, I think, a ground on which certiorari may be granted. But should it be? The general rule is un- doubted that the issue of certiorari is a matter of discretion for the High Court. This was distinctly stated by the court of King's Bench in 1793 in Rex v. Bass *® and again in 1838 in Reg. v. Manchester & Leeds Railway Co.*° Since that time a 35 [1953] A.C. 151, 161. 38 [1952] 1 K.B. 388. 36 (1841) 1 Q.B. 66, 74. 39 (1793) 5 T.R. 261, 87 (1875) 1 Q.B.D. 55, 57. 40 (1838) 8 A. & EB. 413, 428. 696 H. L. (E.) 1959 BALDWIN & FRAnNcis Litp. v. PATENTS APPEAL TRIBUNAL. Lord Denning. HOUSE OF LORDS [1959 | subsidiary rule has been laid down to the effect that where the applicant is a party grieved, who has no other remedy, the court will grant it ex debito justitiae, see Keg. v. Surrey Justices *1; Reg. v. Manchester Legal Aid Committee.*? But if he is not a party grieved, or if, being a party grieved, he has another remedy, as, for instance, by appeal, then the discretion of the court remains intact to grant or refuse the order, see Rex v. Harman*; Rex v. Cambridgeshire Justices +4; and this is the ground on which I would uphold the decision in Davies v. Brice 22 My Lords, I have come to the conclusion that this is not a case in which certiorari should issue. The effect of a special reference under section 9 (1) of the Patents Act, 1949, is very limited. It is interlocutory in its nature. Even when made, it does not give the appellants any greater rights than they had before. It is more a detriment to the respondents than a benefit to the appellants. It serves as a notice to the public that there is a substantial risk of infringement. But it decides nothing as to whether there is in fact an infringement. That must still be decided in an action brought for the purpose. This was, I expect, the reason why Parliament did not think it a proper case in which to give a right of appeal to one side or the other. It left a person aggrieved to his other remedy—the new patentees could make the article and the old patentees could sue for infringement—and only then would they know for certain where they stood. And this, I must say, seems to me to be the proper remedy rather than to apply for a certiorari. I am prepared to assume that the appellants are persons aggrieved, but, as they have another remedy open to them, the court in its discretion should refuse a certiorari. I would add this too. When the appellants saw that the tribunal had overlooked alternative (D), they might well have gone back and pointed out the error. I have no doubt that the tribunal would then have dealt with alternative (D). It might indeed have made a different order, if it thought fit to do so. It used to be competent for quarter sessions to do this if the error was brought to their notice during the same sessions, see St. Clement's Parish v. St. Andrew's Parish, Holborn.4® 41 (1870) L.R. 5 Q.B. 466. 44 (1885) 4 A. & HE. 111, 128, 1924. 42° [1L052)82, 1O°B. Als O52 elapse T.L.R. 476; [1952] 1 All H.R. 480. 45 [1958] 1 W.L.R. 484, 442; 43 (1789) 2 Sess.Cas.K.B. 201. [1958] 1 All E.R. 671. 46 (1704) 6 Mod. 287; 2 Salk. 606. A.C. AND PRIVY COUNCIL. So, also, it might have been done by this tribunal if brought promptly to its notice. No more could be achieved by certiorari and mandamus. I do not know why the appellants did not do this, except perhaps that they did not think of it. At any rate, having regard to those courses which were open to the appellants, it is not, in my opinion, a case in which certiorari should issue. On this ground, therefore, I would dismiss the appeal. One word more. It was suggested that certiorari should be limited in view of the statutory facilities which now exist for appeals on law. But I would remark that it was only last year, by section 9 of the Tribunals and Inquiries Act, 1958, that these new statutory facilities were introduced and they only apply to a limited number of tribunals. There still remain a considerable number of tribunals and inquiries where there is no appeal: and in most of these cases Parliament has expressly provided that reasons shall be given with the very object that they should be subject to control by certiorari. Hence the reference to "' the record '' in section 12 (8) of the Act. In any case, the Act does nothing to limit the scope of certiorari, and I should be sorry to see so beneficial a remedy cut down or limited at this point in time. There is nothing more im- portant, to my mind, than that the vast number of tribunals now in being should be subject to the supervision of the Queen's courts. This can only be done if the remedy by certiorari is maintained in the full scope which the great judges of the past gave to it. Any anxiety about an undue extension of the remedy is fully met by the knowledge that, in cases where there is a right of appeal, the courts may in their discretion refuse the order. When there is no right of appeal, this historic remedy has still a valuable part to play: or at any rate, it should have, if we wish any longer to ensure that the rights of the people are determined according to law. Appeal dismissed.