UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LBBLARY fees wliitmi is LETTERS PATENT FOR INVENTIONS. f ABSTRACT OF REPORTED CASES EELATINQ TO (^A (BRINGING THE CASES DOWN TO THE END OF THE YEAR 1883). BY T. M. GOODEVE, M.A. Of flic Ijuicv Temph\ Barrlstir-at-Lan\ LONDON: HENRY SWEET, 3, CHANCERY LANE, Sato f itMifjIjcr. C. F. MAXWJ3LL, MELBOUENE AND SYDNEY. 1884 I-RJXTED EV C. F. ROWORTH, BREAM S UUILblNGS, CHA.NXERY LAXE. 2Si CONTENTS. PAGES PATENT CASES 1—510 PEIVY COUNCIL CASES 511—583 APPLICATIONS 584— G04 INDEX 605 Errata vi. yi ERRATA. p. Go, Leiuliug. For " Q. B." read—" K. B." r. 109, lines, i^or " usuaUy " maZ—" usefully." P. 12G, marginal reference. Fvr " 10 Q. B." read—'' 8 Q. B."' P. loo, line 14 from bottom. For " plaintiff covenanted to pay defend- ant " read—" defendant covenanted to pay plaintiff." P. 157, line 8. For " expressed" read — " imi^ressed." P. 383, marginal reference. Fvr " 4 Ch. D." read—" 6 Cli. D." LIST OF CASES. A. PAGE Adair v. Young 1 Adams v. N. B. Eail. Co 3 Adie V. Claa-k 3 Allen r. Eawson 10 Amies v. Kelsey 13 Amoiy r. Brown 14 Arkwriglit r. Nightingale. ... 14 , Eex V 15 Arnold V. Bradbury 17 Axmauu v. Lund 20 B. Bacon v. Spottiswoode 21 V. Jones •' 23 Badisclie Anilin und Soda Fabrik v. Levinstein 24 Bailey v. Eoberton 26 Bainbridge v. Wigley 30 Baird v. Neilson 30 V. Moule's Co 182 Barber v. Grace 31 Barker v. Shaw • 32 Barrett v. Vernon 33 Bateman v. Gray 34 Batley v. Kj^nock 36 Beard v. Egerton 39 Beeston v. Ford 42 Bentley v. Fleming 42 Bergmann v. Macmillan 43 Besseman v. Wright 44 Betts & Stocker, Eegina v. . . 44 r. Menzies 45 V. Clifford 52 V. Neilson 52 V. Do Vitre 58 V. Gallais 61 Betts V. Wilhnott 61 Bewley v. Hancock 62 Bickford r. Skewes 63 Birch V. Mather 64 Bloxam v. Elsee 65 Booth v. Kennard 68 Boulton & Watt y. Bull 70 Bovill V. Moore 74 V. Pimm 76 V. Keyworth 79 V. Iladley 81 V. Goodier 82 V. Crate 83 V. Smith 84 v. Hitchcock 84 V. Finch 85 Bowman v. Taylor 86 Bridson v. M'Alpine 87 V. Benecke 88 British Dynamite Co. v. Krebs 88 Brook V. Aston 94 Brown v. Annandale 96 Brunton v. Hawkes 97 Bush r. Fox 99 C. Caldwell v. Vanvlissengen ... 101 Campion v. Benyon 103 Cannington i\ Nuttall 104 Carpenter v. Smith 109 Cartwright v. Eamer 112 Chambers v. Criehley 112 Chanter v. Leese 112 V. Dewhurst 113 v. Johnson 114 ChoUet I'. Hoffman 115 Vlll LIST OF CASES. PAGE Clark V. Kein-ick IIC V. Fergusson 116 r. Adie 117 Cocki-aue v. Smetliiirst 124 Collard v. Allison 125 Cook V. Pearce 126 Copeland v. "NYebb 127 Cornisli v. Keene 127 Crane v. Price 131 Crofts V. Peach 134 Croll V. Edge 134 Crompton v. Ibbotsou 135 Crosskill v. Every 136 Crossley r. Beverley 136 V. Derby Gas Co 138 r. Potter 138 r. Stewart 140 V. Dixon 141 V. Tomey 142 Cm-tis V. Cutts 143 • V. Piatt 144 Cutler, Eex r 152 • , Eegina v 153 V. Bower 155 B. Dangerfield v. Jones 156 Davenport v. Eicbard 157 V. Jopson 158 V. Goldberg 158 v. Eylands 159 Dawr. Eley 160 Do la Piue v. Dickenson 164 Dorosne v. Fairie 168 Dixon V. Lond. Small Arms Co. 170 J )obbs r. Penn 174 DoUond V. 175 Dudgeon r. Thomson 176 DunnicM r. Mullet 181 E. PAGE Edgberry r. Ste^Dhens 181 Edison Telephone Co. v. India Pubber Co 182 Electric Telegraph Co. v. Nott. 183 r. Brett 184 EUiott I'. Turner 188 EUwood V. Christy 189 Elmslie r. Boursier 190 Else, Eext' 190 E. Feather V. The Queen 191 Felton V. Greaves 193 Einnegan v. James 194 Fisher v. Dewick 195 Flower v. Lloyd 196 Forsyth v. Piviere 197 Fox V. Dellestable 198 Foxwell V. "Webster 198 V. Bostock 200 Frearson v. Loe 204 G. Galloway v. Bleaden 207 Gamble v. Kurtz 209 Gardner v. Broadbcnt 210 Gibson v. Brand 211 GiUett V. AVilby 213 V. Green 213 Goucher v. Clayton 214 Greaves v. E. C. EaiL Co 215 Grover & Baker Sewing Mach. Co. V. Millard 216 H. Hall r. Conder 216 V. Jarvis 217 Ilulsoy V. Brotherhood 218 LIST OF CASES. IX Ilaucook c. Bewley Harmar v. Playne . . Harrison v. Anderstou Eoundi-y Co Harwood v. Gf. N. Eail. Co. . . Hassall r. Wright Hastings v. Browu Haworth v. Hardcastle Hayne v. Maltby Heath v. Unwin. . . . 233, 234, V. Smith Heugh V. Chamberlaiu Higgs V. Goodwin Hill V. Thompson Hills V. Laming V. London Gas Co V. Evans r. Liverpool Gas Co Hinks V. Safety Lighting Co . . Hoffman v. PostiU Holland v. Fox Hohnes v. L. &N. AV. KaH. Co. Holste V. Robertson Honiball v. Bloomer Hornblower v. Boulton Horton r. Mabon Househill Co. v. Neilson . . . . Hnddart v. Grimshaw Hull f. Bollard Hullett V. Hague rAUE 219 219 221 224 229 229 231 232 235 238 239 240 241 244 244 248 251 252 255 257 258 260 261 263 263 265 266 268 268 Jones v. Pearce 269 V. Berger 271 V. Lees 272 Jordan v. Moore 272 Jupe r. Pratt 274 K. Kay V. Marshall 276 Lang V. Gisborno 278 Lawes v. Purser 279 Lewis I'. Davis 280 V. Marling 281 Lister r. Leather 283 V. Eastwood 289 Losh V. Hague 289 M. M'Cormick v. Gray. . Macfarlane v. Price Mackelcan v. Eennie Macnamara v. Hulse Manton v. Parker . . Marsden v. Saville Foundry Co Mathers v. Green. . . . Met calf, Eex v MiU, Eegina r Milligan v. Marsh , . Minter v. Wells .... V. Williams . . V. Mower. . . . Morewood v. Tupper Morgan v. Fuller. . . . V. Seaward . . Morris v. Branson . . Mullins V. Hart .... Muntz V. Yivian .... V. Foster .... Murray r. Clayton . . Street 292 294 294 296 297 297 298 299 299 301 302 303 304 304 306 307 311 311 311 312 314 N. Needham v. Oxley 318 Neilson r. Thompson 319 V. Harford 321 Newall V. Wilkins 325 i\ Wilson 325 — c. Elliot 326, 329 Newton v. Grand June. Eail. Co. 332 LIST OF CASES. PAGE Newton V. Yuiielier 334 Nickels v. Hnslaui 336 Nobel's Explosives Co. v. Jones, Scott & Co 337 Noton v. Brooks 341 Nnnn v. D'Albnquerquc .... 341 0. OlcUiam V. Long-mead 342 Ormsou v. Clarke 342 Otto V. Linford 343 Oxley V. Holden 350 P. Palmer v. Cooper 3o3 V. Wagstaffc 353 Parkes v. Stevens 355 Patent Bottle Envelope Co. v. Seymer e 358 Patent Marine Inventions Co. V. Chadbui-n 3G0 Patent T^-j^jc Founding Co. r. Eieliard 860 . V. Walter 361 Patterson v. Gas Light and Coke Co 362 Penn v. Bibby 366, 371 V. Fernie 371 V. Jack 371, 372 Piddiug V. Franks 373 Piggott V. Anglo-American Tel. Co 373 Piatt V. Else 374 Plimpton i\ Malcuimson .... 374 f. SpiUer 380 Potter V. Pan- 388 Poiipard V. FardeU. 390 Pow V. Taunton 391 Price's Patent Candle Co. r. Bauwen's Patent Candle Co. 392 Printing and Numerical Pegis- tering Co. v. Sampson 393 E. PAGK Ealston v. Sniitli 395 Eenard v. Levinstein 400 Eoberts v. Heywood 402 EoUins V. Hinks . , 404 EoUs V. Isaacs 404 Eusbtou V. Crawley 405 Eussell r. Cowley 406 V. Ledsam 408 S. Saunders v. Aston 410 Savory v. Price 411 Saxby r. Clunes 411 V. Easterbrook 415 V. Hennett 416 V. Grloucester Waggon Compamy 417 Seed V. Higgins 418 Sellers v. Dickinson 423 Skeeban v. Great Eastern E ail- way Company 425 Simpson v. HoUiday 425 Singer Manufacturing Co. v. AVilson 429 Smith V. L. & N. W. Ey. Co. 429 V. L. & S. W. Ey. Co. 431 V. G. W. Ey. Co 432 r. Neale 433 V. Scott 433 r. Buckingham 434 Spencer v. Jack 434 Stead V. Williams 437 V. Anderson 439 Steedman v. Marsh 441 Steiner v. Heald . . . . , 441 Stevens v. Keating 443 Stocker v. Eogers 445 Stoner v. Todd 446 Sturtz V. De la Eue 448 Sugg V. Silber 449 Swinborne v. Nelson 450 Sykes r. Howarth 451 LIST OF CASES. XI T. PAGE Talbot r. Laroclie 452 Taylor v. llaro 153 Templeton v. Macfarlane .... -153 Tetley v. Eastou 451 Thomas v. Foxwell 459 V. Hunt 4G2 V. "Welch 463 Thompson v. James 465 Thorn v. Worthing Eiuk Co. 465 Townsend v. Haworth 467 Trotman v. Wood 468 Turner v. AVinter 470 U. United Telephone Company v. Harrison and Othei-s 472 V. Vavasseur v. Krupp 483 Vidi V. Smith 484 Von Heyden v. Neustadt .... 485 W. PAGE Walliugtun r. Dale 487 AYalton v. Totter 488 V. Bateman 490 V. Lavater 491 AVatson v. Pears 494 Wegmann v. Corcoran 494 Wheeler, Eex v 497 AA^iite V. Fenn 499 V. Toms oOO Whitton V. Jennings 500 Williams v. Nash 500 Willis V. Davison 501 AVood V. Zimmer 502 AVren v. AVeild 503 AVright V. Hitchcock 504 Y. Young V. Fernio 507 PRIYY COUNCIL CASES. A. PAGE .\d.ur(1881) 580 AUan(1867) -559 Aiibe (1854) 540 B. BakeweU (1802) 546 Ball (1879) 576 Baxter (1849) 533 Berrington (1852) 559 Berry (1850) 534 Belts (1862) 548 Blake (1873) 576 Bodmer (1838—40) 520 (1849) 532 (1853) 539 Buvill (1863) 551 Bridson (1851) 536 C. Cardw-eU(1856) 543 Carpenter (1854) 539 CaiT (1873) 574 Claridge (1851) 535 Clark (1870) '. 567 Clifford (1867) 500 L>. Derosiie(1844) 525 Downton (1839) 517 E. I:rard(183o) 511 Electric Telegrapli Co 554 F. Foarde(1855) 541 G. PAGE GaUoway (1843) 521 Goviclier (1865) 556 H. Hardy (1849) 531 Heath (1853) 538 Herbert (1867) 560 Heurtcloup (1836; 511 Hills (1863) 549 Hornby (1853) 538 Hougliton (1871) 569 Hughes (1879) 577 Hutchinson (1861) 546 J. Johnson (1871) 570 and Atkinson (1873) . . 574 Jones (1840) 519 ^^ (1854) 541 K. Kay (1839) 516 Kollman (1839) 518 L. Lancaster (1864) 555 Lee (1856) 543 Lowe (1846) 528 (1852) 537 PRIVY COUXCIIL CASES. Xlll M. PAGE Mallet (18G6) 558 Markwick (1860) 543 McDougal (1867) 563 Mclnnes (1868) 563 Milncr (1854) 541 Morgan (1843) 524 Muntz (1846) ^ 530 N. Napier (1861) 545 (1881) 579 Newton (1861) 544 (1862) ..... 547 Noble (1850) 535 Normand (1870) 564 Normandy (1855) 542 Norton (1863) 553 Patterson (1849) 532 Perkins (1845) 526 Pettit Smith (1850) 533 Pinkus (1848) 528 Pitman (1871) 571 Poole (1867) 561 E. PAGE Eoberts (1839) 517 Eussell (sec Wliitehouse) .... 514 Euthven 578 S. Saxby (1870) 565 Sclilumberger (1853) 537 SiUar (1882) 581 Simister (1842) 521 Soames (1843) 523 Soutlxwortli (1837) 513 Stafford (1838) 515 Swaine (1837) 513 T. Trotman (1866) 556 W. Westrupp and Gibbins (1836) 512 A\niiteliouse (cited as Eussell's) (1838) 514 Wield (1871) 572 Wiuan (1872) 573 Woodcroft (1841) 521 (1846) 526 Wriglit (1837) 514 (1839) 518 (1843: 524 APPLICATIONS. A. PAGE Adamson (1856) 589 Aslienhiirst (1853) . 586 B. Bailo}' (1872) 600 Bates and Eedg-ate (1809) 594 Blamoud (1861) 592 Brandies (1853) 587 Brotliertou (1867) 593 C. Cobley (1862) 592 Cutler (1839) 585 D. Daines (1856) 587 Bering (1879) 603 Dyer (1812) 584 F. FarcLuliarson (1872) 598 Fox (1812) 584 G. Getliing (1874) 601 Green (1857) 590 H. Ilan-ison (1874) 001 Henry (1872) 598 Hersoe and Suiyth (1866) 593 Horsley and Knighton (1869) 595 J. PAGE Johnson (1877) 602 (1878) 002 L. Lowe (1856) 588 M. Manceaux (1870) 596 McKean (1859) 592 Mitchell (1867) 593 Morey (1858) 591 E. Eussell (1857) 589 S. Scott and Young (1871) 597 Sharp (1840) 585 Sheffield (1872) 599 Simpson and Isaacs (1853) . . 586 Somerset and Walker (1879) . . 604 Spence (1859) 591 T. Tolhausen (1866) 592 Tolson(1856) 587 V. Vincent (1867) 593 W. Wirth(1879) 603 Y. Yates (1869) 596 LIST OF ABBREVIATIONS. A. & E Adolplius & Ellis' Reports. B. & Ad Barnewall & Adolplius' Eeports. B. & Aid Barnewall & Aldersou's Eeports. B. & C Baruewall & Greswell's Eeports. Beav Beavan's Eeports. B. & S Best & Smith's Eeports. Biug. N. C Bingliam's New Cases. B. & P., N, E Bosauquet & Puller's New Eeports. Brod. & Bing Broderip & Bingham's Eeports. Bull. N. P Buller's Nisi Prius. Camp Camphell's Eeports. C. B Common Bench Eeports. C. B., N. 8 Common Bench Eeports, New Series. Car. & K Carrington & Kirwan's Eeports. Car. & P : . . Carrington & Payne's Eeports. C. L. E Common Law Eeports. CI. & F Clark & Finnelly's Eeports. Coop. Ch. Ca Cooper's Chancery Cases. Cr. M. & E Crompton, Meeson & Eoscoe's Eeports. Dan. & L Danson & Lloyd's Eeportf^. Dav. P. C Davies' Patent Cases. De Gr. F. & J De Gex, Fisher & Jones' Eeports. De G. & J De Glex & Jones' Eeports. De Gr. M. & G De Gex, Macnaghten & Gordon's Eeports. De G. J. & S De Gex, Jones & Smith's Eeports. Dowl. & Ey Dowling & Eyland's Eeports. Dr. & S Drewry & Smale's Eeports. E. & B Ellis & Blackburn's Eeports. E. B. & E Ellis, Blackhm-n & Ellis' Eeports. E. & E Ellis & ElHs' Eeports. Eq. Eep Equity Eeports. Ex. Eep Excheqiier Eeports. Giff Giffard's Eeports. H. Bl H. Blackstone's Eeports. H. & M Hemming & Miller's Eeports. H. L. Ca House of Lords' Cases. Holt, N. P Holt's Nisi Prius Cases. H. & N Hurlstone & Norman's Exchequer Eeports. XVI LIST OF ABBREVIATIONS. Jolms Johnson's Eeiiorts. J. & H Johnson & Hemniing's Eeports. Jm\, N, 8 Jurist, New Series. K. & J Kay & Johnson's Eeports. L. J., Ch Law Journal Eeports, New Series, Chancery. L. J.. Q. B Do. do. Queen's Bench. L. J., C. r Do. do. Common Pleas. L. J., Ex Do. do. Exchequer. L. E., App. Ca The Law Eeports, Appeal Cases. L. E., Q. ]^. D Do. Queen's Bench Division. L. E., Ex Do. Exchequer. L. E., Ch. D Do. Chancery Division. L. E., Cli Do. Chancery Ax^peals. L. E., Eq Do. Equity Cases. L. E., C. P Do. Common Pleas. L. E., P. C Do. Privy Council Cases, L. E., H. L Do. House of Lords. L. T Law Times Eeports. L. T., N. S Do. New Series. Marsh Marshall's Eeports. Mac. & (j Macnaghten & Gordon's Eeports. M. il' Gr Manning & Grainger's Eeports. M. & W Meeson and AVelsby's Eeports. Mer Merivale's Eeports. Moore, P. C. Moore's Eeports of Cases in the Privy Council. Moore, P. C, N. S. . . Do. do. do. New Series. Myl. & Cr Mylne & Craig's Eeports. N. E The New Eeports. Pari. Eep Parliamentary Eeports. Pliill Phillips' Eeports. Euss Eussell's Eeports. Euss. & ]M Eussell & Milne's Eeports. Ey. & M Eyan & Moody's Eeports. Scott, N. E Scott's New Eeports. Stark. E Starliie's Eeports. Taunt Taunton's Eeports. T. E Term Eeports. T}T Tyrwhitt's Eeports. Yes Yesey's Eeports. Webs. E Webster's Eeports of Patent Cases. W. E The Weekly Eeporter. Y. & C Y'ouDgo &■ Collier's Eeports. PATENT CASES. Adaie v. Young. [a.d. 1879. L. E., 11 Cli. D. 13G; 12 Cli. D. 13.] Practice in Patent Actions — Stai/ of Proceedings — User of Invention — Injunction. Action to restrain tlie infringement of a patent of 5th April, 1867, No. 1027, to IF. Adair, for " improvements in pmnps." The action was originally brought against Young, the captain of a ship, in which certain pumps, alleged to be an infringement of the patent, had been fitted. But Wallace 8f Co., the makers of the pumps, were subsequently added as defendants. Injunction granted by Bacon, V.-C. Defendants gave notice of appeal, and Wallace 8^ Co. moved to stay proceedings pending the appeal. Motion refused with costs. On appeal, the Court of Appeal (Jessel, M.R., Baggallay, Bram- well, L.J J.), directed that the appeal should be advanced, and stayed proceedings. Costs to be costs in the appeal. Per Jessel, M.R. — If the plaintiff by means of the account ii Ch. D. learns the names of all the customers of Messrs. Wallace (^ Co., ^" there can be little doubt that, as is usual in such cases, he will at once commence proceedings against them, and there is danger that the defendants, if ultimately successful, may find in the meantime that their business has been ruined. At the same time it is not reasonable that the plaintiff, who may prove ultimately to be in the right, should be delayed for a long period in taking the account. Appeal of Wallace Sf Co. dismissed with costs. Order for an injunction against Young affirmed by the Court of Appeal (Cotton, Brett, L.JJ., James, L.J. dissentiente), although it appeared that there had been no user in this country of the pumps in question. Per Cotton, L.J. — Is the master a person who, if he uses the 12 Ch. D. invention on board the ship, is liable to an action ? I think there ^' is no doubt that he is. If an agent uses a patented invention he is G. B 2 Adair v. Younci, liable, and the master of a ship is not a mere agent ; he has a possession of a particular nature, and is not a mere servant of the owners. I do not give any opinion as to whether there has been such a user as would subject the master to an action for damages, but I thiuk we must come to tlie conclusion that there has been such an intention to use the pumps as to lay sufficient ground for an in- junction to restrain the infringement of the plaintiff's patent rights. 12 Ch. D. p^>^. Brett, L.J. — A distinction has been attempted to be made between using the pumps and using the invention ; but I cannot see any such distinction. It is said he (the master) was bound to have the pumps on board, and would be liable if he put to sea without them ; that they were necessary to make the equij)ment of the ship complete, and that therefore the having them on board was using them. Since the master had no power to say whether he would have them on board or not, he cannot, in my opinion, be said to use them unless he used them as pumps. If they are so used, that is a user by him ; but in this case he never did so use them within British waters, and, in my opinion, therefore, he never did infringe the patent. If, then, the master had ceased to be master before the writ issued, I think he would have been free from all liability. But he is still in possession of the ship, and intends to command the ship, and the ship is intended to be used as a ship, and he has not re- ferred to the owners, but stands merely on the ground that he has not hitherto used the invention. It is clear, then, that if he is not restrained he will use it, and I am of opinion that on this ground the injunction must be sustained. ^~9q'^' ■^<'^' James, L.J. — I think that an injunction ought not to be granted against a man unless he has done something which he ought not to have done, or permitted something which he ought to have prevented. Now, a master who comes on board ought not to be answerable on the ground that when he takes the command there is on board a pumj) wdiicli infringes a patent. He does not, owing to his qualified possession, become at once an infringer. He lias no power to take a pump out of a ship, he had nothing to do with putting it there, and he was not wrong in allowing it to remain there, for he could not lawfully remove it. An injunction, therefore, can only bo granted on the principle of quia timet, and in applying that piinciple, I think it would be a right exercise of the discretion of thp Oourt not to grant an injunction against a Adair v. Y(1ung. 3 master who has done nothing ^Tong, when there is no difficulty in finding and suing the owner of the ship In my judgment the injunction ought to he discharged. Adams ^^ The North British Railway Company. [A.D. 1873. 29 L. T., N. S. 367.] Practice in Patent Suits — Rights of an Agent for Patentee. Suit to restrain from infringing a patent of 5th Sept. 1867, No. 2,520, to A. V. Neidon, for " improvements in safety valves for steam hollers" (a communication from abroad). It appeared, on the hill, that plaintiff was general agent for the owners of the patent. Wickexs, V.C, refused an injunction. Demurrer, for want of equity, allowed, with costs, including costs of the motion. Per LoKD Selborne, L.C. — This hill is not one to obtain the profits and royalties merely ; it in fact alleges that there has been infringement, and asks for damages for the infringement, and an injunction to restrain future infringement. It is a patentee's bill, and it is filed by a man whose only right is against his own princi- pals. There is nothing to constitute the plaintiff an assignee of the patent. Adie v. Clark. [A.D. 187G. L. E., 3 Ch. D. 134 ; L. E., 2 App. Ca.. 423 ; 46 L. J., Ch. 598.] Construction of Specification — Estoppel of Licensee. Suit for specific performance of an agreement. It appeared that plaintiff, P. Adie, had obtained a patent on 30th Oct. 18G6, No. 2,796 (amended by disclaimer), for "improvements in means and machinery for clipping horses and other animals," and that defendant had agreed to become a licensee under the patent. In 1874, plaintiff obtained a decree for specific performance of the agreement and for an account. On taking the account, plaintiff sought to surcharge defendant with the sale of 34,534 horse- clippers, on the ground that they were made in accordance with the apparatus patented. The patent was for a horse-clipper, and the specification, as amended by disclaimer, showed a horse-clipper formed of a metal plate springing from a handle and terminating in a comb upon which a second plate of steel, having tapered cutting teeth, was pressed by screws. The cutter-plate was made to oscillate from side to side by a second handle, and in doing so it clipped or cut away all the hair which had been passed through the teeth of the comb. The comb could be raised somewhat above the skin by b2 4 Adie v. Claek. means of an extra plate attaclied to the under sui'face of the comb- plate, and then the hair would not he clipped quite so closely. The specification described the improvements by reference to draTving-s, wherein the plate forming the comb was called AA, and was referred to in the following sentence : — "Aj\. represents the body of the machine made generally of steel ; F, one side of A, made either straight or curved, being cut into teeth pointed like a comb in the parallel portions, and being worked into tapered cutting teeth behind these points." Then it stated that the teeth of the comb projected beyond the cutter points so as to prevent the possibility of cutting the skin, and described the attachment and working of the cutter-blade B, showing two handles marked H, H, one attached to the comb-plate A, and the other attached to the cutter-plate B by a so-called lever. The final sentence referring to this construction was : — " The short end of the lever works in a slot in B, and by moving the handles H, H, to and from each other lateral motion is given to the plates A and B, and to the cutters which cut both ways, clipping all that comes between them, the thickness being regulated by the thickness of A, or increased when desired by an extra comb E fixed on underneath, shown only in Fig. 1." In the drawings, Fig. 1 represented a side view of the instni- ment, showing the comb-plate F, with the cutter-plate B above it, and an extra comb-plate E fixed underneath. Fig. 2 represented the instrument in plan, and showed a small length of the comb- plate, the lines indicating the teeth of the comb being apparently parallel. The saw-shaped teeth of the cutter-plate overlaid the comb-plate so that very little of the comb was visible, and there were as many saw-teeth in the cutter as there were teeth in the comb. Claim : — " I would have it understood that I do not confine myself to the precise details shown and described, as these may be varied ; but what I do claim is, the application of a number of small shears clipping hair to any required length, the protection afforded by means of the comb points in front, and the guidance given to the hair by means of the said comb points." The defence was, that the clippers sought to be sm^charged were not within the patent, and that the specification would not bear the moaning put upon it by plaintiff. In order to suppoii the con- struction contended for by defendant certain documentary evidence was put in, consisting of descriptions of American patents deposited in the Patent Office in London, and also certain prior specifications Adie v. Clark. 5 of Engliah patents, the object being to tie dowu the claim of in- vention to the exact parallelism of the teeth of the comb, and to the additional plate for the pm'pose of cutting hair at different lengths. Bacox, V.C, disallowed the sm-charge, and i^laintiff ajDpealed. On appeal, the documentary evidence above referred to was again tendered by defendant. Plaintiff objected to its reception, but the Com-t of Appeal (James, L.J., Mellish, L.J., Baggallay, J.A.) ad- mitted it de bene esse, and, after hearing argmnents, reversed the decision of the Yice-Chancellor, giving plaintiff the costs of. the appeal, and also the costs in the Court below, James, L.J., said that the Court had come to the conclusion that 3 Ch. D. the clippers sought to be sm'charged were identical in design and '^' construction with the clippers patented by plaintiff, although modi- fied in some of the details so as to insure greater ease in worldng. And in respect of the documentary evidence above mentioned, his Lordship observed — " Of course it is said that as licensee it is not competent to the defendant to dispute the validity of the patent, and it is admitted, therefore, that the documents cannot be used directly to show want of novelty. But they are made available and used in this way. A licensee is entitled to show the limits of the patent, and that he is outside those limits. And in construing a patent this is always to be observed, that you will construe it as that it shall be a valid and not a void patent. If you construe this patent one way, then the documents show the patent is bad for want of novelty, and you ought therefore to construe it so as to protect it from that con- clusion. " The counsel for the plaintiff objected to the admissibility of this evidence, but as it had been admitted and acted on by the Yice- Chancellor we admitted it de bene esse. We think, however, that we ought to give our decision on the objection, and we are of opinion that the evidence is clearly inadmissible for the pm-pose of construing the specification of the particidar patent before us. " The admissibility was put on some expressions in the judgment of the learned judges in the case of Trotman v. Wood (16 C. B., N. S. 479) relating to Trotman's anchors. They are only dicta, because no such evidence was acted on in that case. It was never meant by the learned judges, and it cannot be effectually contended that there is any iDrinciple to be applied to the construction of specifications which differs from that applicable to the construction of every m-itten instrument whatever You assume that a 6 Adie i\ Clakk. patentee would not he so absurd as to claim that which he knew, and that which he knew everybody else knew, to be old, and you would, if possible, avoid that absurdity, if by any legitimate con- struction of the words used you could do so. " "\^Tiat was really attempted to be made out was this :— A great pai-t of that which is covered by the patent is old, and therefore bad ; some little part is new, and therefore good ; the Court will confine the patent to that which is new and good. That device ^^•ill not succeed. A licensee cannot, under any pretence whatever, bring his licensor into litigation as to the novelty of any part of the patent." (L. E., 2 App. Ca. 423). Appeal to the House of Lords, when the decision of the Cornet of Appeal was affirmed, and the appeal was dismissed with costs. 2App.Ca. Fer Lord Cairns, L.C. — The appellant is a licensee who has P- ^-^- taken a licence to work a patent granted to the respondent Therefore, as between the appellant, the licensee, and the respon- dent 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 inven- tion, admitting its utility, admitting the sufiiciency of its specifi- cation ; but, on the other hand, he is of com-se entitled to have it ascertained what is the ambit, what is the field, which is covered by the specification as properly construed ; and he is entitled to say : " Inside of that field I have not come ; so far as I have worked I have worked outside the limit which is covered by it, as properly construed, and therefore I am not bound to make any of those payments which are stipulated in my licence as payments to be made for working the patent." In this respect the appellant, the licensee, stands here upon the same issue as would arise between a patentee and an alleged infringer upon the question of the fact of infringement. 2App. Ca. The two particulars in which Clark'' s manufactm*e is said to p. 42G. (ji^er from that of the patentee are these : — It is said, in the first place, that the teeth of the comb of the clipping instrument made mider the letters-patent should be exactly mathematically parallel, and that the top or end of the teeth should be square, and it is said that the instrument manufactm-ed by the appellant has not the teeth so parallel, and that they are pointed instead of being made in that square-topped manner in which the patent provides that its manufacture shoidd be made. Adie v. Clark. 7 The other iioint in which it is said that the manufactm-e of the licensee differs from that of the patentee is this : it is said that in the patent article a provision was made according to the specifica- tion, that an additional plate should he put on the lower part of the comb for the pm-pose of raising the comb from the skin of the animal to be clipped, and in that way regulating the length at which the hair of the animal should be clipped ; and it is said that in the manufacture of the appellant there is no provision for varying in that way the length at which the hair shoidd be clipped. In the first place, I will consider the question as to what was called in the argument the parallelism of the teeth. The only sentence of the specification which, in speaking of the teeth, uses the term " parallel " is this :— " F, one side of A, made either straight or curved, being cut into teeth pointed like a comb in the parallel portions." I do not for the present look at the drawing, but I dwell merely upon the words that I have read, and, reading these words, it appears to me that it would be impossible, as a matter of construc- tion, to say that this patentee has claimed, or that he would claim, a parallelism of the teeth. It is c[uite true that he uses the word " parallel," but he explains in the clearest way that he used it in a popular and not in the mathematical sense. His Lordship fm-ther criticised the language of the specification, and then referred to the cbawing, Fig. 2, which showed the teeth only so far as they projected beyond the cutting-teeth which covered them, the ends being, in that part, represented as parallel to each other. TiuTiing also to the exhibit of one of the clippers made by the appellant, the licensee, he said : — I find that his exhibit comes up exactly to the description which is contained in the specification. Although it may possibly be that upon a strict mathematical examination some divergence from absolute parallelism might be detected, still, popidaiiy speaking, and to the eye, they are per- fectly parallel at the upper two-thiixls of the teeth. It appears to me that it woidd be utterly impossible, assuming this to be a vahd patent, and the proceedings to be taken against an alleged infi^inger for manufactming an instrument such as I hold in my hand, that that infringer could be allowed to say,— " I have not infringed the patent, because by the application of a minute and mathematical test it will be found that there is not an exact and complete parallelism at the upper part of these teeth near the points." 8 Adie v. Clark. 1 App. Ca. The other question appears to me to be even more simple than ^' ^' ' this. His Lordship then read the second sentence quoted in the account of the invention, and proceeded : — The appelhmt alleges that he has not fixed on any extra comb, and therefore has not worked under this patent. But that is at once answered by observing that what is here spoken of is in the alternative. There are two things which may be done— you may work the patent by making an instrument having a fixed degree of thickness, a fixed point at which the haii' is to be cut off, if that is the com-se you prefer. If that suits the business which you have in hand, you accomplish it by making the comb A of the thick- ness which you desire. But there is another com-se which you may take. You may desire to increase the length at which the hair is to be cut, and if you so desire, you are then to put on an extra comb E. But the one alternative is a subject of the patent just as much as the other .... Therefore, again using the test of an action against an infringer, it would be impossible to imagine that an infringer, Avho in other respects had followed the manufac- tm-e pointed out in the specification, could exempt himself from liability by saying, "I did not desire to increase the thickness, and I did not increase the thickness by the use of any extra comb." 2 App. Ca. His Lordship then referred to the question of the admissibility ^' '^'^^" in e\T.dence of certain specifications of prior patents, and con- tinued : — My Lords, it is sufficient for this pm-pose to say that, having attentively considered the parts of those specifications which it was suggested to your Lordships had a bearing upon this case, I have arrived at the conclusion that they are not of any weight to control what appears to me to be the necessary and legitimate con- struction of the particular specification which yom* Lordships have to consider .... I am bound to say that I arrive without hesita- tion at the conclusion that there is nothing in the specification which rests the merits of the invention upon a parallelism of the teeth of the comb, and there is nothing on the proper construction of the specification which enables either a licensee or an infringer to say that, provided lie does not use the extra comb which is spoken of, he does not infringe the patent. Lord Hatherley had come to the conclusion that the appellant was really driven to rest his case upon narrowing the effect of Adie' 8 patent to such an extent as to enable him to say in substance that he had not worked under it. His Lordship then referred to Adie v. Clark. 9 the claim of the patentee — pointing out the statement that the precise details might be varied — and continued : — He says, " What I do claim is the application of a number of small shears, clipping hair to any required length " — that is one thing ; " the protection afforded by means of the comb-points in front " — that is the next thing ; " and the guidance given to the hair by means of the said comb-points." It is perfectly impossible, as it seems to me, in a common- sense construction of these words, to say that he has limited his claim to the j)arallel portions of the comb, and to the placing of an additional block, in order to vary the thickness of the hair which might have to be cut. Whatever may be the length to which the principle on which 2 App. Ca. Foxicell v. Bostock (4 De Gr. J. & S. 298) was decided has been carried, it seems to me that it would be a very extraordinary con- struction of letters patent to say that the Court would take care to steer a patentee clear of all those rocks which are ahead of patentees in consequence of previous inventions, by the simple assmnption that it was impossible that he could mean to claim those things which had been already invented ; and, therefore, you must reduce his claim to a minimum, as long as you find anything to reduce it to — you must reduce it to those things which had never been in- vented before, and so hold, on the construction of the present patent, that you have reduced it to the parallelism and the sub- stitution of additional blocks for the purpose of cutting hair at different lengths. It appears to me to be perfectly plain that we must construe these letters patent in a simple way, as the patentee has chosen to explain them himself in framing his claim. He has told you what he claims, namely, those things which I have read. It seems to me that you cannot confine the claim to that which the licensee, because it suits his purpose, wishes to confine it to, any more than you could have done that in the case of an infringer, if this had been an ordinary action for infringement. Lord Blackburn. — In construing the specification, we must 2 App. Ca. construe it like all written documents, taking the words and seeing ^' what is the meaning of those words when applied to the subject- matter ; and in the case of a specification which is addi'essed not to the world at large but to a particular class, for instance, skilled mechanicians, it is material for the tribunal to put itself in the position of such a class, namely, skilled mechanicians, and to see what the words of the specification mean when applied to such a subject as skilled mechanicians would know, and [as the tribimal 10 AuiE V. Clark. has now, by the admission of e\idence or otherwise] put itself in a position to understand, and then to say what the words of the specification mean when applied to such a subject-matter. For that pm-pose I am not at all prepared to say that the other patents and specifications would not in the present case be admissible evidence When it is attempted, as it certainly was, in the argimient before us [I do not know Avhether the Yice- Chancellor went so far as that], to say that inasmuch as these specifications show, or are alleged to show, that matters which ujDon a fair con- struction of the specification are claimed by the patentee, were old at the time that the patent was taken out, and were generally kno^^oi to be old, therefore the specification must be so construed as not to include them ; that seems to me to be both contrary, as far as I know, to the coiu'se of decision and contrary to principle. If, when you say that you can show that a thing was old at the time the patent was granted, you are to construe the specification as not intending to claim that, because such a claim would be suicidal and foolish, it would be a recipe for saying that you shall never upset a patent at all for want of novelty. I do not think, my Lords, that that could possibly be done. Allen v. Eawson. [A.D. 1845. 1 C. B. ooL] Property of Inventor in Suggestions by his Servant — Comparison of Specifications — Novelty of Invention — Evidence of Infringement. Case for the infringement of a patent of 14th Feb. 1840, No. 8,387, to T. li. Williams, for " improvements in the manufacture of felted fabrics." Pleas: 1. Not guilty. 2. That the patentee was not the true and first inventor. 3. That the invention was not new. Issue. The patent related to the manufacture of felt. Hitherto, in forming a layer or hat of wool to be subjected to the operation of felting, the practice had been to throw the wool, as taken from the carding machine, upon a hollow perforated cylinder. By ex- hausting air from within the cylinder, the wool, so projected, was caused to adhere and collect itself in a layer upon the sm^face. The invention of Williams related to the formation of this hat in a different manner. The carded wool was taken direct from the carding engine, and received between two endless revolving aprons running at the same sm^face speed, and the sliver was caused to deposit itself layer over layer upon the upper apron, until a suffi- cient quantity had been accimiulated. The felting or hardening Allen v. Rawson. 11 was effected by passing the hat between a double tier of parallel rollers, each upper roller lying in the hollow between two adjacent lower rollers, and therefore pressing on two surfaces instead of one. The upper rollers were weighted, and diiving gear was arranged for giving the rollers a reciprocating rotatory motion, but with a progressive motion added thereto, so that, on the whole, the lat was carried in a regular manner from end to end. This produced felting in a longitudinal direction, and, in order to increase the action, a system of diagonal felting was superadded. For this pur- pose, the cloth was fed into a second machine, similar to the first, except that the rollers which supplied the hat to the machine were placed diagonally to the feeding apron, and moved at a higher speed, whereby the cloth was fed upon the apron in a series of folds, arranged diagonally to the axes of the felting rollers, and the pressure took place in lines across the material. The specifica- tion described the machinery by reference to drawings, and in particular showed an arrangement for contracting the length of the machine, by causing the upper apron to rmi to and fro in parallel lines between tightening rollers placed one above the other at each end of the machine ; or otherwise, by using several aprons, forming a compoimd apron. It further described an arrangement of longitudinal guides for keeping the aprons distended. Claim : " I claim the application of the double apron or aprons, or com- pound aprons, and rollers, for the production of hats, as herein described, from the long sliver, and the different means herein described for keeping these aprons, together with the bats, in a smooth and even condition." Also : " I claim the improved posi- tion of the rollers in the felting machine, for producing the double contact of each tier of rollers, and the combined reciprocating and progressive motion of these rollers, as well as the manner in which this motion is produced, as applied to the felting machine, and also the method of diagonal or cross felting, as effected by the feeding rollers as herein described." There was a further claim relating to the use of soap and water in conjunction with rollers, as to which an objection was taken, but not sustained. At the trial defendant put in evidence (as anticipatory of the invention of diagonal felting) the specification of a patent of 4th April, 1838, No. 7,608, to W. A. Robertson, for a method of felting diagonally by rollers, where the hat was passed longitudinally over a series of fixed semi-cylinders, and was hardened by the pressure of a large heavy rolling cylinder, which moved over the material sometimes longitudinally, and sometimes diagonally at an angle. 12 Allen v. Eawson. It further appeared tliat one Shuc, a workman in tlie employ of a company of wliicli Williams was a member, liad suggested the use of the compound apron ; and that one 31ilner, a workman in the same employ, had suggested the use of the longitudinal guides, both of which improyements were claimed. The alleged infringement consisted in the adoption of machinery for hardening, which was substantially the same as that specified, except that defendant substituted a drmn for the revolying apron. Erle, J., directed the jmy : — I take the law to be that if a person has discoyered an improyed principle, and employs engineers, agents, or other persons to assist him in carrying out that principle, and they, in the coiu^se of the experiments arising from that employment, make valuable disco^-eries accessory to the main principle, and tending to carry that out in a better manner, such improyements are the property of the inventor of the original improved principle, and may be embodied in his patent; and, if so embodied, the patent is not avoided by evidence that the agent or servant made the suggestions of the subordinate im- provement of the primary and improved principle. The learned judge fm-ther said : — That the improvement of S/iaw was but a more convenient mode of carrying out the principle of the patentee, and that Milner's guide was one of those subordinate improve- ments, helping to carry out the general principle, which the patentee had a right to adopt. That the mode of diagonal felting described in WiUiamH's specification was substantially different from that described in Iioherfson''s specification, and that Wiiiiams's claim was for the means by which the object was attained. And he left it to the jmy to say whether the substitution by defendant of the drum for the revolving apron was a colom-able difference only, and a substantial infringement of WiUicnm's patent. Verdict for plaintiff. Eule for a new trial — on the grounds of misdirection by the learned judge, and that it was not left to the jury to say whether the present patent and that of Robertson were the same as to the method of diagonal felting— refused by the Comi of Common Pleas. Per CoLTMAN, J.— On looking at the judge's notes, it appears that there was no evidence given to show that the two patents were the same ; and standing as the question did nakedly on the two specifications, the construction of them, according to the authority of Neihon v. Harford (8 M. & W. 806), was for the judge, and not for the jury. We think, therefore, there is no groimd for a rule on this point. Allen v. Rawsox. 13 Eiile nisi for a new trial on the ground that the patentee had no right to claim the improvements of Shaw and Milner as part of his invention, discharged by the Court of Common Pleas. (Tindal, C.J., Maule, Cresswell, Erie, JJ.) Per Tindal, C.J. — The real question is, whether or not the im- i C.^B. provements suggested by Shaw and Milner were of such a serious P' and important character as to preclude their adoption by Williams as part of his invention. It would be difficult to define how far the suggestions of a work- man employed in the construction of a machine are to be con- sidered as distinct inventions by him, so as to avoid a patent, incorporating them, taken out by his employer. Each case must depend on its own merits. But when we see that the principle and object of an invention are complete without it, I think it is too much that a suggestion of a workman, employed in the com^se of the experiments, of something calculated more easily to carry into effect the conceptions of the inventor, should render the whole patent void. It seems to me that this was a matter much too trivial and too far removed from interference with the principle of the invention to produce the effect which has been contended for. Amies v. Kelsey. [A.D. 1852. 22 L. J., a B. 84.] Practice in Patent Actions — Inspection hefore declaring. Action for the infringement of a patent. (Bail Court.) This was an application under stat. 15 & 16 Yict. c. 83, s. 42, for an order for inspection of defendant's machinery and apparatus employed in a manufactiu-e which plaintiff alleged to be an in- fringement of his patent. It appeared that plaintiff had issued a writ in the action, but had not delivered the declaration. Crompton, J., was of opinion that the affidavits in support of the application were insufficient, and discharged the rule, but said :— I see no reason for limiting an inspection under the statute to the period after the declaration. There is no such limi- tation in the enactment, which is general and applicable Avhenever an action is pending, as an inspection may frequently be desirable or necessary for the purposes of declaring. His Lordship added: — I think that an inspection ought not to be granted entirely as of coiu'se, and without the party applying for it showing at least that it is material and really wanted for the purposes of the cause. ( 14 ) Amoey v. Brown. [a.d. 1S69. L. E., 8 Eq. 663 ; 38 L. J., Ch. 593.] Practice in Patent Suits — Averment of Novelty. Siiit to restrain from infringing a patent of 6tli Feb. 1867, No. 331, to C. E. Brooman (a communication from abroad). The bill stated tlie grant of tbe patent for an invention of a new method of manufacturing pearls, but contained no express allega- tion of novelty. Defendant, who appeared in forma pauperis, objected that the pleading was defective. James, Y.C, overruled the objection, and said: — The allega- tion of the grant and the production of the letters patent throw upon the defendant the onus of disputing the novelty, and, there- fore, I consider the bill sufficient without it. But even if such an averment had been necessary, I should not have allowed the defendant to take advantage of a mere technical objection of that sort, but I should have allowed the hearing to stand over until the defect had been remedied. Aekweight v. Nightingale. [A.D. 1785. Dav. P. C. 37 ; 1 Webs. E. 60.] Sii^lciency of Siiccif cation — To ivJiorn it is addressed. Case for the infringement of a patent of 16th Dec. 1775, No. 1,111, to R. ArJitrrifjIif, for " certain instruments or machines which would be of public utility in preparing silk, cotton, flax, and wool for spinning." The patent related to improvements which form the foundation of the present mode of spinning cotton by machinery. At the trial five witnesses deposed that they had made the machine from the specification alone. Lord Loughborough directed the jury : — There is no matter of favom' can enter into consideration in a cjuestion of this nature. The law has established the right of patents for inventions ; that law is extremely wise and just. One of the requirements is that a specification shall be enrolled, stating the nature of the invention : the object of which is, that after the term is expired the public shall have the benefit of the invention, but without that condition is complied \Aath, the patentee forfeits all the benefit he derives under the Grreat Seal. There are many objections that may be taken to patents, but the only objection in this case is, that the specification is not so intelli- gible that those who are conversant in the subject are capable of x^RKWRiGnT r. Nightingale. 15 understanding it, and of perpetuating the invention wlien the term of the patent is expired. The clearness of the specification must be according to the subject-matter of it ; it is addressed to persons in the profession having skill in the subject, not to men of ignorance ; and if it is understood by those whose business leads them to be conversant in such subjects, it is intelligible. Verdict for plaintiff. Rex v. Arkweight. [A.D. 1785. Day. P. C 61 ; 1 Webs. E. 64.] Noveltji of Invention — Sufficiency of Specification — Master and Servant — dhlig'ation in Specifying— Prior Publication of Part of the Invention in a Booh. Sci. fa. to repeal the same patent. The specification stated : — • That the invention, as drawn in a plan, was composed of the following particulars. No. 1. A beater or breaker of seeds, in which a wheel with teeth, by acting upon a lever raised the hammer, the lever being moveable upon a centre. No. 3. A feeder or piece of cloth with wool, flax, &c., spread thereon as in the drawing. (The drawing showed a roll without any central roller or axis.) No. 4. A crank and connecting rod for giving a vibrating motion to the comb which discharged the cotton from the carding cylinder. No. 5. A carding cylinder Avith fillet cards. No. 6. EoUers fixed to a wooden frame, the contents of No. 5 going through, became of the proper size. (This combination formed the well-known drawing rollers for drawing out or elon- gating the sliver of cotton. The two rollers were figured as of unequal size, but it was nowhere stated that the surface speed of one pair was different from that of the other pair.) No. 7. A cylindrical box for twisting the contents of No. 6. No. 8. A box, having a roller and bobbin inside for twisting the contents of No. 6. No. 9. A spindle and flier, being fixed to No. 6, for twisting the contents thereof. A bobbin (shown on the spindle) for communicating by a band with No. 10 at a conical or regu- lating wheel which moved the bobbin quicker or slower as required. No. 10. A spindle with pulleys, and a conical or regulating wheel, which being fixed to No. 6, worked No. 7, No. 8, or No. 9, T/iere was no sej)arafe claim. At the trial, one Hayes deposed that he had made the drawing rollers in 1767, that in 1769 he made them like those used by de- fendant ; one was fluted wood with an iron axis, the other the same, only covered with leather ; that one Kay, a clockmaker, from 10 Eex v. Arkwright. WarriiKjIon, made liim a small model. Tlien Kai/ deposed that, before tlie patent, he got the model from Hayes and showed it to defendant, who took him into his employ, whereupon he worked at the discovery foimd out by himself and Hayes. It appeared that the crank and connecting rod were invented by one Hargreaves, and were publicly used in 1773. It further appeared, although the specification was silent on the subject, that Nos, 3, 4, 5 were the material parts of a carding machine, and that Nos. 6,7, 10 referred to a ro^dng machine. BuLLER, J., directed the jmy : — It is clearly settled as law, that a man, to entitle himself to the benefit of a patent for a monopoly, must disclose his secret, and specify his invention in such a way that others may be taught by it to do the thing for which the patent is granted ; for the end and meaning of the specification is to teach the public, after the term for which the patent is granted, what the art is ; and it must put the public in possession of the secret in as ample and beneficial a way as the patentee himself uses it. This I take to be clear law, as far as it respects the specification ; for the patent is the reward, which, under the Act of Parliament, is held out for a discovery ; and, therefore, unless the discovery be true and fair, the patent is void. If the specification, in any part of it, be materially false and defective, the patent is against law, and cannot be supported. It has been truly said by the counsel that if the specification be such, that mechanical men of common understanding can compre- hend it, to make a machine by it, it is sufficient ; but then it must be such that mechanics may be able to make the machine by following the directions of the specification without any new in- ventions or additions of their own. Here is a specification that states ten different instrmnents. Is there anything Avhich states that these parts are for two machines, and how they are composed ? About that the specification is totally silent. What is there in it that can lead you to say you must make use of three things for one of the machines and three for the other, and which three for one or the other ? And even were it so, what is to become of the other four ? If those are of no use, but to be thrown in merely to puzzle, I have no difficulty in saying, iipon that ground alone, that the patent is void ; for it is not that fair, full, true discovery which the public have a right to demand from an individual who gets so great a reward as a monopoly for foiu'teen years together. As to the other points, they are two ; first, whether it is a new Rex v. Arkwright. IT invention ; and, in the next place, whether it was an invention Dav. P. C. made by the defendant. As to No. 1, that is stated to be a beater or breaker of seeds, Dav. P. C. husks, &c., and a finer of the flax, hemp and other articles, which ^' are to be prepared for dressing, in which is a wheel with teeth, which, by acting upon a lever, raises the hammer, the lever being moveable upon the centre. Now this, it is said, is not stated by the specification to be joined to anything else, and therefore it must be taken to be a distinct thing. It is admitted that it is not a new discovery, for Emerson's book was produced, which was printed a thii'd time in the year 1773, and that is precisely the same as this. Upon the part of the defendant there is no contradiction, and therefore I will pass it over, without going over the rest of the evidence, as clear that it is not new. As to Hayes and Kay, there is no contradiction at all to the ^''^'*'- ^- ^• evidence they have given, namely, that they (the rollers) were made before, and used in the different ways I have stated to you, and that the defendant got the secret from them. If upon any point you are of opinion with the prosecutor, you will find a verdict for him. Yerdict for the Crown. Rule for a new trial refused by the Com-t of King's Bench. Per Lord Mansfield. — It is very clear to me, upon your own iWebs.R. showing, that there is no colour for the rule ; the ground of it is, j)^^_ p_ q if there is another trial, you may have more evidence. There is P- 1^3. no surprise stated, no new discovery, but upon the material points in question you can give more evidence. A verdict has been found, which is satisfactory to the judge, and now you desire to try the cause again, only that you may bring more evidence. There is not a colour for it. Arnold v. Bradbury. [A.D. 1871. L. E., 6 Ch. 706.] Bufficiency of Specification — Practice as to granting Issues — Suhject-matfer of a Patent. Suit to restrain from infringing a patent of 5th March, 1860, No. 600, to J. H. Johnson, for " an improved rufSe and sewing machine " (a commimication from abroad). Defendants admitted the infringement, but contended that the patent was invalid, and that its invalidity was apparent on the face of the specification. The answer stated : — " "We are advised and submit that what is in fact claimed by the specification is the producing by machinery results which were before obtained b}- hand, but without any 18 Arnold v. Bradbury. limitation as to tlie kind of macliineiy tliat may be used, and that tlie claims made by the specification are not the subject of a patent, and are so wide and general as to render the patent void." The patent related to machinery for producing ruffles or frills and gathered work. The gathers in a fabric were fed on by mechanism without being " whipped " or scratched by a pointed instriunent, as when formed by hand. The fabric was thereby uninjured. The mechanism for gathering might be used in com- bination with a sewing machine. The gathered material was stitched, either by hand or by the sewing machine, to some plain fabric. The specification stated : — " The said invention relates to an improved ruffle, frill, or gathered fabric, and to the machinery for making the same. The apparatus used in producing this ruffle or gathered fabric consists of a peculiar mechanism for gathering and feeding one of the fabrics operated on, which peculiar mechanism is used in combination with a sewing machine, the latter being modified to receive the additional mechanism." Then followed a description of the machine, and of the mode of using it, accompanied by drawings, whereof one showed " a sufficient portion of a sewing machine to illustrate its operation." Claims: 1. The production by machinery^ of ruffles, frills and gathered work, and the simultaneous attachment of the same to a plain fabric by means of a single series of stitches, which serve both to confine and stitch the gathers, and also to secure one fabric to the other. 2. The production by machinery at one operation of gathered work, which is simply gathered and secured on itself by stitches. 3. The combination of mechanism for forming ruffles, plaits and gathering with the mechanism of a sewing machine, for the pur- pose of simultaneously gathering fabrics, and attaching the same by stitches to another fabric, or for the purpose of making gathered work which is simj)ly gathered and secured on itself at one operation. WiCKEXS, V.C., directed that the question of granting issues should be postponed to the hearing. On appeal, the Lord Chan- cellor reversed this decision, and du'ected issues. Per Lord Hatherley, L.C. — I am of opinion that I cannot determine this case in the mode in which it is sought by the defendants to be determined, from a simple inspection of this specification A claim must be very large and very vague indeed to justify any Court in saying that it is impossible to sustain a patent based upon it. Arnold v. Jjradbury. 19 It is a singular fact, and one whicli creates a difficulty on the part of the defendants, that no case has heen cited from our English law hooks of any claim heing held to he too large on account of the greatness of the claim, independently of the external evidence. The case of Jordan v. Moore (L. E,., 1 C. P. 624) was, perhaps, the nearest. That was a case where a person claimed in one part of the claim " an iron frame for vessels in combination with a certain arrangement of wood forming a lining either without or within this iron frame," and in another part of the claim he spoke of " the iron frame as herein described." It was held that, by using the two forms of claims, he showed that he intended the first to be more general than the second ; and that his object was in the first to make a general claim to every ship constructed with an iron frame, and which was lined within or without with wood. Therefore the Com*t, having evidence before it that there had existed ships with iron framings similar to that which the plaintiff claimed, held that the claim was too large. I am invited to consider the first head of claim as a general claim of all machinery that ever may be invented hereafter, which can perfonn the operation which is here described. But the in- ventor introduces the claims by saying that his object is to state what he considers novel in his invention. He does not say that he is going to distinguish it from all possible future inventions of other people I read the first claim thus : the inventor claims the production, by machinery, of that which has not been done by machinery before. He says he has invented an improved rufile and frill, and he states in what the improvement consists, and he describes the machinery — he does not call it improved machinery — by which it is produced ; and he says, " I claim the producing of this by machinery, of which machinery I have given full details." The second head of claim is this : " The production by machinery G Ch. at one operation of gathered work, &c." Mr. Asfon says, that ^' ' must be bad. I cannot come to any such conclusion. I cannot tell that the ruffle produced in this way, so as to be free from scratches, is not more durable and more elegant in its appearance than one which is subject to that defect. If the inventor produces a machine, and dispenses with a process which is avowed to be injurious, I cannot, in the absence of evidence, take upon myself to say that would not be the subject-matter of a patent. The third head of claim is : " The combination of mechanism for forming ruffles, &c. with the mechanism of a sewing machine, c2 20 Arnold v. Bradbury. for the purpose, &c." Mr, Asfoii objects that the patentee has not described the mode in which it is done, therefore either it is a thing so simple that it requires no explanation, and is not the subject-matter of a patent, or if it is not simple, he has not shown how it is to be done. The answer to this objection is, that it is simple enough when you have got the plaintiff's machine to apply to a semng machine. The patentee gives you a drawing sho^^ing how it is done ; and the reason of the simplicity of the combination is, that he has invented a machine which is so easily combined with a sewing machine, that a simple drawing is sufficient to explain it. It is unfortunate that the case has been brought on in this way. When the issues are tried, it may turn out, as in Jordan v. Moore, that, after all, there have been previous inventions so similar to those of plaintiff, that the patent is invalid ; but that is no ground for my holding it to be per se too large. I think, therefore, all I can do on the present occasion is now to direct the issues which are asked. AxMANN V. Lund. [A.D. 1874. L. E., 18 Eq. 330 ; 43 L. J., Ch. 655.] Injunction — Threatening Legal Proceedings — Estoppel of Licensee. Suit to restrain defendant from threatening legal proceedings for the infringement of a patent. It appeared on the bill, that, in 1864, defendant obtained a patent for improvements in manu- factming jewellery, and entered into partnership with plaintiff for working the patent. In 1868 plaintiff and defendant obtained a further joint patent for improvements in the same manufacture. In 1873 the partnership was dissolved. Defendant then issued circulars, addressed to customers of plaintiff, which made no dis- tinction between the two patents, and threatened legal proceedings for the infringement of an assumed patent right, being in the form adopted and jointly issued dvu-ing the existence of the partnership. Plaintiff now denied the validity of the patent of 1864. Injvmction granted. Fer Malixs, V.C. — As to whether the patent is valid or invalid, I give no opinion ; that is not the question before me. If it is valid at all, the defendant is entitled to restrain any person from manufacturing any article covered by it. If, on the other hand, it is invalid, he has no right to use these threats to the public, which are calculated, not only as to the plaintiff, but as to every- AxMANN V. Lund. 21 body else, to destroy business. Many persons would immediately cease selling an alleged patented article rather than run the risk of being cbawn into a litigation wliich might be of a very serious character As regards the actual notice issued by the defendant, the terms of it are, in my opinion, wholly unjustifi- able. There are two patents ; and though after the dissolution both partners had an equal right to use the patent of 1868, no distinction was drawn between the two patents in these notices. It remains to be considered whether the plaintiff has conclusively bound himself to admit the validity of the patent. Now, im- doubtedly diu"ing the continuance of the partnership, the plaintiff had by contract, as licensee, according to Crossky v. Dixon (10 H. L. Ca. 293), precluded himself from disputing the validity of the patent. . . . But after its expiration he became at liberty, just as much as the rest of her Majesty's subjects, to dispute its validity, subject, however, to be answerable in damages, in case the defendant establishes the validity of the patent in any proceedings against the plaintiff. The defendant declines to undertake to take proceedings at law to establish the validity of his patent, and I retain the opinion I expressed in RoUins v. Hinlis (L. R., 13 Eq. 355), that as he will not follow up tlie rights he asserts, by pro- ceeding to establish the validity of the patent, he ought to be restrained from circulating threats. Bacon v. Spottiswoode. [A.D. 1839. 1 Beav. 382.] Practice in Patent Suits — Injunction— Account — Principles ivliichguide the Court. Suit to restrain from infringing a patent for improvements in the common Argand gas-bm^ier. Bill filed in 1835. After the bill was put on the file, plaintiffs did not move for an interlocutory injunction ; but, upon the answers coming in denying the validity of the patent and the infringement, they filed a replication and went into evidence. It appeared that defendants, who represented a gas company, had made no profits by the sale of the burners, wliich had been supplied to their customers at the manufacturer's prices. At the hearing plaintiffs failed to make out a clear title. On the close of the argument. Lord Langdale, M.R., said : — i Beav. The bill alleges that the defendants have sold and used, it being ^' ' ' the fact that they have sold for no profit, and it not appearing that they have used otherwise than by fm^nishing the burners to 22 Bacon v. Spottiswoode. tlieii- customers. I am not prepared to say, that altliougli the defendants have sold the burners without profit, yet that they have not derived a collateral profit from the use of them by their customers ; that ease, however, is neither alleged by the bill nor is it proved. I am of opinion that, even if the plaintiffs are entitled to an injunction, they are not entitled to an account ; and that they are not now to be deprived of an injunction, because they have not applied for one at an anterior stage. On the next day his Lordship delivered judgment, dismissing the bill with costs, and said : — When a cause of this kind is brought to a hearing, it is for the purpose of having an injunction made perpetual, or continued duiing the legal right of the plain- tiff under his patent ; and it appears to me, that, however unusual the circumstance may be, the plaintiff is not precluded fi'om asking for an injunction by the fact of his not having applied for it on interlocutory motion. The plaintiff, if he omits to move for an injunction at an early period of the cause, first shows that he does not consider the injunction as immediately necessary for the protection of his interest, and next imposes upon himself the obligation of making out a clear and unexceptionable title at the hearing. I think that at the hearing of the cause the Court has to look at the facts produced in evidence, for the purpose of considering whether a perpetual injunction should then be granted. On an interlocutory order, it has to look at the facts produced in evidence, for the purpose of considering whether an injunction should be granted till the right can be tried or further investigated. It is truly said, that where a patent has been granted, and there has been an exclusive possession of some duration under it, the Court may interpose its injunction, without putting the party previously to establish the validity of his patent by an action at law ; but this interposition must nevertheless dej)end, to a considerable extent, on the circumstances of the case and the nature of the defence. The Court is not bound to grant an injunction, merely because a patent has been granted and exclusively enjoyed for some time ; and when the case is brought to a hearing, I apprehend that the plaintiff ought to show his title clearly, and that if he fails in that, and has not previously obtained an injunction, he will not be allowed to use the facts proved in the cause, as evidence of a prima facie case gi"sdng him a right to fm'ther delay, for the pm'pose of enabling him to establish more satisfactorily the legal title upon which alone his equity is founded. ( ^^ ) Bacon v. Jones. [A.D. 1839. 4 Myl. & Cr. 433.] Practice in Patent Suits — Lijunction — Account. Suit to restrain from infringing the same patent. The bill was filed in 1835, and, as in the previous suit, plaintiff did not apply for an injunction, hut filed a replication and Avent into evidence. The Master of the EoUs dismissed the hill with costs, the judgment in Bacon v. Sjwttisicoode deciding this suit also. Appeal, in Bacon V. Jones only, dismissed by the Lord Chancellor with costs. Per Lord Cottexham, L.C. — The iiu-isdiction of this Court is i M. & C. founded upon legal rights : the plaintiff coming into this Court on ^' the assumption that he has the legal right and the Court granting its assistance on that gromid. "When a party applies for the aid of the Court, the application for an injunction is made either dming the progress of the suit, or at the hearing ; and in both cases, I apprehend, great latitude and discretion are allowed to the Court in dealing with the application. When the application is for an interlocutory injunction, the Court may at once grant the injunction, simplkiter, without more — a course which, though perfectly competent to the Court, is not very likely to be taken where the defendant raises a question as to the validity of the plaintiff's title ; or it may follow the more usual, and, as I apprehend, more wholesome practice, in such a case, of either granting an injunction, and at the same time directing the plaintiff to proceed to establish his legal title, or of requiring him first to establish his title at law, and suspending the grant of the injunction until the result of the legal investigation has been ascertained, the defendant in the meantime keeping an account. Which of these several coui'ses ought to be taken must depend entirely upon the discretion of the Court, according to the case made. When the cause comes to the hearing, the Court has also a large latitude left to it, and I am far from saying that a case may not arise in which, even at that stage, the Court will be of opinion that the injunction may properly be granted without having recourse to a trial at law Again, the Coiu't may, at the hearing, do that which is the more ordinary course ; it may retain the bill, giving the plaintiff the opportimity of fu'st esta- blishing his right at law. There remains a third coui'se, the pro- priety of which depends on the circumstances of the case, viz., that of at once dismissing the bill. ( 24 ) Badische Anilin und Soda Fabrik v. Levinstein. [A.D. 1883. L. E., 24 Ch. D. 156; 52 L. J., Cli. 704.] Sufficiency of Specification — Evidence of Infringement — Chemical Equivalents. Action for tlie infringement of a patent of 25tli Fehniary, 1878, No. 786, to J. H. Johnson for " improvements in the production of coloiu'ing matters suitable for dyeing and printing." Defendant pleaded: — (1) that the specification was insufficient; (2) that he had not iirfringed. Issue. The patent related to the production of certain new red and l)ro"v\ii coloiu'ing matters, which came into great request, and were obtained by means of " sulpho acids of oxyazo-naphthaline." At the hearing, the objections to the sufficiency of the specifica- tion were of a technical kind : — (1) one of the substances employed being " naj)hthy-lamine," it appeared that there were two kinds of naphthy-lamine distinguished by the prefixes "Alj)ha" and " Beta," one discovered about 1861, and described in books on chemistry, the other discovered in 1876, and but little known at the date of the patent. Evidence was given that if the specification dealt with the material of 1876, it was insufficient. "\Yhereupon Peaksox, J., ruled that he should read the specification as referring to the first discovered compound, and that it was sufficient on that view. (2) Another objection related to the use of fuming sulphuric acid in carrying out the invention, as to which Pearsox, J., re- ferred the matter to Professor Hoscoe, who reported that he had carried out the j^rocess described in the specification successfully, whereupon the learned judge overruled the objection. When the defendant was under examination, he stated that he w^as working under a secret process, the publication of which might do him an irreparable injury if the patent should eventually turn out to be bad. Pearson, J., continued the trial for several days without re- quiring the defendant to disclose his process, but eventually the learned judge called upon the defendant either to discover the secret process or to submit to an adverse judgment. Whereupon the trial was continued with closed doors, and the process was made known to the Court, no one being present except the professional ad^asers of the parties. Judgment for plaintiffs with costs, including the costs occasioned l:)y the employment of Professor Hoscoe. 21 Ch. D. Per Pearsox, J. — I think I was entitled, whether the parties ^^' ■ liked it or not (and they did not assent or dissent from it), in this Badische Anilin und Soda Fabrik v, Levinstein. 25 case to send the questions to Professor Roficoe, which I did, not to decide any issue in the case, but to get from him that information which would enable me to decide what is before me. There are two principles which, as deciding the question of 24 Ch. D. infringement, I shall have to bear in mind ; one is this : that in ^' these chemical cases where a patentee has made some discovery in chemistry, any person may afterwards use for the same purpose chemical equivalents, which were not known to be chemical equiva- lents at the time the patent was taken out. His Lordship then referred to the observations of Williams, J., and Parke, 13., in JJmcin V. Heath (2 "Webs. P. 302, 314), and continued: — But there is another principle no less important, and that is this : — that where a patent is taken out for a process for arriving at a known result (I mean a result known before the patent is taken out for the process simpliciter), any other person may take out a patent for another process, or may use another process without taking out a patent, without any infringement of the pro- cess first taken out. But when a patent is taken out for a new result not known before, and there is one process described in the patent which is effectual for the pm-pose of arriving at that new residt at the time when the patent is taken out, the patentee is entitled to protection against all other processes for the same result, and no person can, without infringing upon his patent, adopt simply a different pro- cess for arriving at the same result. His Lordship referred to Jupe V. Pratt, and HouschiU Co. v. NeUsoii (1 Webs. P. 146, 685). Now, bearing these cases in mind, I really have to consider whether Mr. Levinstein's secret process comes under the first principle — a new discovery of a chemical equivalent, or whether it comes under the second principle — whether it is simj)ly a dis- covery of a new process, if it be a discovery at all, to 25roduce the same result which is patented. The result at which I arrive is this : the processes employed by 24 Ch. D. Mr, Levinstein are processes deserving of great praise; but they P- ^''^^ are simply processes which produce exactly the same results from the same materials which are produced by this patent. The same object is pursued, the same materials are employed, the same result is attained. I cannot do otherwise than come to the conclusion that these are merely processes, that they are not a new invention differing from the patent, but are in reaHty the manufactm^e of the sulpho acids of oxyazo-naphthylamine by a process differ- ing in some respects from the process employed according to the 26 Badische Anilin und Soda Fabrik v. Levinstein. patent. I must, therefore, decide the second issue in favour of the plaintiffs. Bailey and Othees v. Roberton. [A.D. 1878. L. R., 3 App. Ca. 1055.] Novelty of Invention — Variance between Complete and Provisional Specifi- cations — Infringement. Proceedings in Scotland to restrain the infringement of a patent of 27th June, 1866, No. 1,707, to H. MecUock and W. Bailey, for "improvements in preserving animal substances." The main defences were (1) that the invention was not new. (2) Yariance between complete and provisional specifications. (3) Specification insufficient. (4) No infringement. Issue. The patent related to the preservation of meat, and the pro- visional specification stated : — " We dissolve the ordinary com- mercial gelatine in boiling water, using about 2 lbs. of gelatine to 10 lbs. of water. We then add, while hot, a volume equal to the volume of solution of gelatine of a solution of bisulphite of lime (CaO, 2 SO 2) .in water of about the specific gravity 1070. While the solution of gelatine and bisulphite of lime is still warm and liquid, we coat the substance to be preserved with it, either by dipping the substance into it, or by brushing it over with two or three coats of the solution." The complete specification stated : — " The manner in which our said invention is performed is as follows : — We employ a solution hereinafter distinguished as solution No. 1, being a solution of bisulphite of lime (CaO, 2 SOo) in water of about the specific gravity of 1050, which we find preferable to that of 1070. We sometimes form a solution hereinafter distinguished as solution No. 2 by dissolving the ordinary commercial gelatine in boiling water, using from 1 part to 2 parts of gelatine in 10 parts of water, and adding 10 parts of solution No. 1." " Solution No. 2 is adapted for coating animal substances in- tended to be preserved, such as joints of meat, &c." The specification went on to describe the method of applying solution No. 2, and further of making other solutions named solution 3 and solution 4 respectively, into each of which solution No. 1 entered as a component part. The methods of applying solutions 3 and 4 were also described. The claims were (1) the use of solution No. 1 for preserving animal substances. (2) The preservation of joints of meat, animals from which the skin or feathers have been removed, fish, and hides Bailey and Others v. Koberton. 27 by means of solution No. 2, in manner hereinbefore described. There were other claims relating to solutions 3 and 4. At the hearing it appeared that the infringement charged was the use of a solution of bisulphite of lime in preserving meat. The respondent relied on prior publication of the invention by a provisional specification of 8th January, 1861, No. 46, filed by W. Rattray for improvements in preserving organic substances, which stated : — " My invention consists, first, of a mode of pre- serving animal and vegetable matters by impregnating them with an aqueous solution of sulphurous acid." The specification de- scribed the mode of applying the solution, and continued : — " My invention consists, secondly, of the use of the alkaline and earthy sulphites in packing preserved animal and vegetable matters in cases, and I introduce these sulphites, either diy or in solution, into a ease with the preserved matters." At the hearing before the sheriff substitute the pursuers admitted prior public user of Rattray^s invention in the manner described in his provisional specification, but not otherwise. The sheriff substitute pronounced in favoiu" of the pursuers, granting an interdict. On appeal, the sheriff held that the patent was invalid, and reversed the interlocutor. On further appeal the Court of Session pronounced that the patent was invalid, and gave costs to the defenders. On appeal from this judgment, the House of Lords varied the form of the interlocutor so far as to declare that the patent was valid, but held that it had not been infringed, and gave costs to the respondent. Per Lord Oairns, L.C. — The first question in this case thi'oughout 3 App. Ca. has appeared to me to be : — What is the meaning of the provisional ^' specification in this case ? What is the invention which is described in that provisional specification ? That is the foundation of the whole claim of the aj)pellants I cannot for a moment doubt .... that the invention which those who wi'ote out the provisional specification conceived they had made was not an invention merely of the chemical application of bisulphite of lime to animal substances, such as meat and fish, but was a mode of applying a coating or film to the outside of animal substances, which coating or film was to consist of gelatine, or some substance of the same kind mixed with a solution of bisulphite of lime. My Lords, of course it would have been possible, if it had been in the mind of the mventor to have said : — What I have invented is this : I have discovered the great advantage of bisulphite of 28 Bailey and Others v. Eoberton. lime as applied to the surface of animal substances, Lut I find it cannot be conveniently applied without some medium in which it is to be placed for the piu-pose of making it adhere to the animal substances, therefore I claim to use it in a medium consisting of gelatine, and to put it on in that way. He might have done that, but that I repeat is not what has been done. 3 App.Ca. His Lordship then discussed the language of the specification ^' ^' with reference to solutions (1), (2), (3) and (4), and said: — My Lords, it appears to me, that if you are to read this complete specification as making a claim to the independent and separate use or solution No. 1, you, at once, are obliged to arrive at the con- clusion that there is no mode pointed out in the specification of how that solution No. 1 is to be applied. If the complete specification does not set up No. 1 as a solution to be used separately, pure and simple, then the complete specifi- cation will be in accordance with the pro\dsional specification, and the patent may be, for ought I know, a perfectly valid patent. But if, on the other hand, the complete specification claims the solution No. 1, and the use of it, separately as an invention, pure and simple, then indeed the appellants may be able to show that the respondents have infringed that use. But they can only do so by claiming an invention through the medium of the complete specification which is not mentioned in the provisional specification, and as to the mode of exercising or applying which they cannot in that specification point out any claim or any information given to the public. If the claim of the complete specifications to the use of solution No. 1, that is, bisulphite of lime, piu-e and simple, then it seems to me that the appellants at once fall into the danger of ha%T.ng been anticipated by the use which was admitted to have taken place in the case of Rattray. On this point, I am obliged to admit entirely the justice of the Cjuestion put by Lord Shand in the Com-t below. 3App. Ca. Says Lord Shaxd : — "Suppose that Rattray after his patent were p. 10G7. ^Q ^Jq what he is admitted to have done before, what answer could he give to these patentees, if they are right, who say that there is secured to them by their complete specification the absolute user of the solution of bisulphite of lime, pure and simple." My Lords, he could have no answer. It would be nothing for him to say. Oh, yes, I use it, but I use it only in such a way. They woidd reply, look at our complete specification. "We have said nothing as to the way in which it is to be used. We have claimed it for the preservation of animal substances. You are using for the Bailey and Others v. Rorerton. 29 preservation of animal substances, and, therefore, you are infring- ing oiu- patent. But if he did this before the patent was issued, then the patent, according to the construction, is open to the charge of want of novelty. That is the whole of the case; but I am extremely anxious not to assent to any form of inter- locutor, which absolutely pronounces this patent to-be invalid. . . . If a limited construction be put ujion it, a con- struction which would make it in accordance with what I hold to be the meaning of the provisional specification, I see no reason, and I do not think it necessary to decide that question, why it may not be a valid patent. Lord Blackburn, after referring to the introduction of a com- 3 App. Ca. plete specification in the time of Uueen Anne, said : — Then came ^' the Statute of 1852, which introduced a fm-ther amendment. It enacted, that when persons went to apply for letters patent they should deposit a provisional specification. That provisional speci- fication describes the invention in terms very different from those in which the final specification described it. In this case, instead of saying, " it shall particularly describe and ascertain the natm-e of the invention, and in what manner the same shall be performed," all that the statute says, is that in the provisional specification which the applicant leaves with the law officer of the Crown when he applies for a patent, he shall state the nature of the invention — no more than that ; and then, when the law officer of the Crown, to whom it is referred, has looked at it, and finds it does state the nature of the invention, but thinks the natiu'e of the invention as stated is too large, or too vague, he may require him to amend it ; but, if not, then he grants a certificate to use the patent publicly, without at all thereby making a present of the discovery to the public .... I cannot but think that when the nature of an invention has been described in the pro^isional specification in the way which has been mentioned, if something were found out during the six months to make the invention work better, or with respect to the mode in which the operation is to be performed — a thing which is very likely to happen — still the nature of the invention remains the same, and it is no objection that in the complete specification, which comes afterwards, the invention or application is described more particularly, and in more detail, or even if it be shown that there has been more discovery made, and so as to make the invention which is described in the provisional specification really workable. If nothing more is done than that, I think it is good ; but as soon as it conies to be more than that, and the patentee says, in 30 Bailey and Others v. Roberton. the provisional specification, I describe my invention as A., and in the complete specification he says, I hereby describe A. and also B., then, as far as regards B. it is void, because the letters patent were granted for the invention that was described in the pro- visional specification, and do not cover the invention that is described in. the other. 3 App. Ca. On the whole, it strikes me that the result is this, that if there be an infringement of this invention as described in the full specification, it is an infringement of a part which is not within the natm'e of the invention as described in the pro\asional specifica- tion ; and if it be a part, moreover, of the specification, there is a failm-e to specify the means of doing it, and there is a want of noA'elty. Upon all these thi-ee grounds — and I think any one of them shoidd be sufficient — I think the judgment of the Court below should be affirmed. Bainbridge v. Wigley. [A.D. 1810. Pari. Eep. 197.] False Suggestion. Case for the infringement of a patent of 2nd April, 1803, No. 2,693, to W. Bainbridge, for " certain improvements in the flageolet or English flute, whereby the fingering will be rendered more easy, and notes produced that never were before produced." At the trial it appeared that the instrument had been greatly improved, but that only one new note was produced. Lord Ellexborough said : — That this was fatal to the patent, the con- sideration on which it was granted not being truly set forth. The patentee had stated that, by his improvements, he gave new notes, when in fact he had given but one new note. Baird and Others v. Neilson. [A.D. 1842. 8 CI. & P. 726.] Agreement hy Licensee — Estoppel. Appeal from a decree of the Court of Session. It ajipeared that, in 1830, appellants obtained a licence from respondent, J. B. Neihon, to use his patent of 1st October, 1838 {Scotland), for the application of the hot blast in smelting iron, and thereupon proceeded to manufactm'e iron according to a certain process resembling that of the patentee. Disputes, and eventually litiga- tion, arose between the parties, and it was agreed in 1833, that, in consideration of a sum of money to be paid by appellants, both parties should withdi-aw from litigation, and that a royalty of Is. per ton should l.>e paid l)y appellants for all the iron made by p. 741. Baird and Others v. Neilson. 31 tliem according to the mode they had before adopted, or by auy other mode within the patent. The agreenaent not being carried out, respondent instituted a suit to compel the performance of it. Appellants instituted a cross suit to suspend ]oroceedings, on the ground that the j)i'ocess of smelting by heated air, as used by them, did not fall within the patent. The Court of Session held that, after the agreement, this defence coidd not be set up. On appeal to the House of Lords, decree affirmed, with costs. Per Lord Campbell. — What is the ground of the suspension ? 8 CI. & F. The only real ground alleged is that the ase that has been made of the hot air has not been according to the patent. There is no denial of their having used hot air ; there is no denial that it has been used in the same manner as it had before 1833 ; but it is simply an allegation, and comes to this in substance, that it is not a use of hot air coming within the patent, but the very object of the agreement was to put an end to that question, and on the construction of the agreement I am of opinion that there is no ground at all for the suspension. Barber v. Grace. [a.d. 1847. 1 Ex. E. 339 ; 17 L. J., Ex. 122.] Evidence of Infringement — Two modes of doing the same thing. Case for the infringement of a patent of 8th March, 1836, No. 7,017, to W. Bates, for " improvements in the process of finishing hosiery and other goods." Plea : Not guilty. And several other pleas. Issue. The specification stated : — " My invention consists in submitting hosiery and similar goods to the finishing process of a press heated by steam, hot water, or other fluid in the manner hereinafter men- tioned." The specification then described the apparatus by re- ference to drawings, and showed pressing boxes, having flat sides, which were filled with steam from a boiler, and were brought together by the ram of an hydraidic press. If preferred, screws or other well-known means might replace the hydraulic press, and hot water might be used in the place of steam. Claim : " The submitting of hosiery and similar goods to the pressiu'e of hot boxes or surfaces heated by steam, water, or other fluid, as above described." At the trial, it appeared that the alleged infringement consisted in pressing goods between cylindrical revolving rollers heated by steam. Pollock, C.B., directed the jury : — That they ought to find for defendant on the issue of not guilty, unless they were of p. 344. 32 Barber v. Grace. opinion tliat the use of rollers was a mere colourable evasion of the patent. His Lordship also expressed an opinion that it was not. Yerdict for defendant on the issue of not guilty, and for plaintiff on the remaining issues. Rule nisi for a new trial discharged by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, Eolfe, BB.) 1 Ex. E. Per Pollock, C.B. — This is obviously a discovery based upon a discovery. Pollers were adopted two or tlu-ee years after boxes had been made the subject of a patent. "Were the Court to hold that rollers are included in this patent, the eif ect of it wotdd be that, if the party could have kept his process a secret in point of fact, and have given the public nothing but what they could gather from the specification, he might have had the exclusive use of rollers, under the protection of the law, for fourteen years, and at the end of that period the public would be wholly ignorant that rollers were capable of being used, and had been used, for such a process, or that they were the object of a patent Upon looking at the description given of the machine, rollers are not in the most remote degree suggested as capable of being used. The figure represents an hydraulic press, by which two boxes heated by steam or hot water are made to meet, and between them the goods are to be placed. The pressiu-e, as was observed by my brother A klersoii dm^ing the argument, is to be continuous and not momen- tary, as it is in the case of rollers. It was contended by the plain- tiff's counsel that the term " boxes " includes rollers. A roller is a box in one sense of the word, but not, I think, in the sense used here. I am of opinion that rollers are not included in the specifi- cation. Per Parke, B. — It seems to me — and I ovm. I feel not the least doubt about it — ^that this specification does not claim a general mode of applying hot surfaces to knitted fabrics, but that it is merely for the particular machine described in the specification, and that that pai-ticular machine has not been pirated by the defendant. Barker and Harris v. Shaw. [A.D. 1823. Holroyd, Pat. 60.] Master and Servant. "In BfO'l-er and Ram's v. Shaw (Cor. Hoboyd, J., Lancaster, 1823), which was an action for the infringement of a patent for an improved manner in making hats, one of the plaintiff's men {Thomas Walmsley), whom they called as a witness, proved that Barker and Harris v. Shaw. 33 he himself invented the improvement which was the subject of the patent, whilst employed in their workshop. The plaintiffs were therefore held not to be the inventors, and were non-suited." This case appears to have been cited under the name Barber y. Walduck (1 Car. & P. 567). But note, that there is a patent of 26th July, 1821, No. 4,574, to T. BarJcer (of Oldliaw, county Lan- caster) and J. R. Harris, for "improvements in clearing fm-s and wools, used in the manufactm-e of hats, from kemps and hairs." Barrett v. Vernon. [A.D. 1877. 25 W. E. 343.] Evidence of Infringement. Action to restrain the infringement of a patent of 2nd Sej^t. 1868, No. 2,708 (amended by disclaimer), to J. Adams and H. Barrett, for " an improved stopper for bottles containing aerated or gaseous liquids." The patent related to a stopper for bottles containing aerated liquids, which was kept in its place by the pressure of the enclosed gas. No fastening of any kind was required. The specification described the invention by reference to draw- ings, and showed the stopper, formed of an elongated cylindrical plug of heavy wood (say lignum ritce) of greater specific gra%ity than water. The plug was of sufficient length to reach above the neck when in its place, and it had an india-rubber collar or washer round the part inside the bottle. There was a recess into which the washer was compressed during the insertion of the stopper into the bottle. It is the custom to place bottles in an inverted position while they are being fiUed with aerated liquid, and thus the heavy plug sank: by its own weight into the neck of the bottle, and was in position for being forced outwards by the pressui-e of the gas contained within the bottle as soon as the operation was completed. The washer then came into close contact with the neck, and the bottle was closed as effectually as if it had been corked and wired in the ordinary manner. The end of the plug farthest from the washer came outside the bottle, and if it were pushed back, the liquid might be poured out. Claim : — " The peculiar construction of stopper for bottles con- taining aerated or gaseous liquids, as hereinbefore described and shown in the accompanying drawing." At the hearing it appeared that the alleged infi'ingement con- sisted in working under a patent of 1874, No. 1 08, to W. J. Vernon. The stopper here adopted was a plug of light wood, ha^-ing an G. D 84 Barrett r. Vernox. india-nibber washer resembling that of plaintiff, and caused to sink in like manner by attaching to it a heavy metal clip which could be removed after the bottle had been filled. The specification in effect described the closing of inverted bottles by a plug of less specific gravity than water, but having a weight or closing device arranged'.-so as to be temporarily applied to the stopper dming the filling of the bottle. Judgment for plaintiff, and injunction granted with costs. Per Bacon, V.C. — I have to consider what is the meaning and intent of the patent. It was to overcome an existing difficulty. It was to stop a bottle by means of a certain heavy suitable material, and to stop it so that when the water is introduced into the bottle the plug would sink into the neck of it. The defendant has made a stopper, which performs identically the same office — first, by dint of the plug, by w^hich he squeezes it into the bottle, the collar or india-rubber washer being flexible ; and then, by means of a clip or contrivance of some sort, he holds it down in such a position as that it can perform the office of the plaintiff's invention. In my judgment there has been a clear invasion of the plaintiff's patent. Bateman and Moore v. Gray. [A.D. 1853. 8 Ex. E. 906 ; 22 L. J., Ex. 290 ; Macroiy's P. 0. 93.] Evidence of Infringement — Novelty of Invention — Defective Pleading. Case for the infringement of a patent of 18th Jan. 1848, No. 12,032, to J. F. Bateman and A. Moore, for " improvements in valves or plugs for the passage of water or other fluids." Pleas : 1. Not guilty. 2. That plaintiffs were not the true and first inventors. 3. That the invention w\as not a new manufactiu'e. Issue. The patent related to a method of cbawing off water from the mains in streets. For this pm^pose a light baU valve, either formed of, or coated with, india-rubber, was fitted inside an opening in the main pipe, and w^as forced up against its seat by the pressm-e of tlie Waaler, so as to close the opening. A key, in the form of a hollow tube or stand-pipe, was locked by means of a catch to a socket in the valve-box, and w-as depressed b}' a screw, so as to force the ball valve downwards and allow the water to escape through the pipe. The specification described the apparatus by reference to drawings, and showed the method of applying and withdrawing the key. Claims (in substance) : — FirsL The application for the purpose of drawing off water of a valve of less specific gravity than water, Bateman and Moore v. Gray. '^5 constructed of, or coated with, vulcanised india-rubber, or other elastic material, and which closes by the pressm-e of the water. Second/ 1/. The application for similar purposes of a globular valve of the same or greater specific gravity than water, which, without mechanical aid, will close by the pressm-e of the water. Third I//. The opening of valves by means of a key or tube, so applied as to force the valve open against the pressure of the water, and through which key or tube the fluid escapes, such tube being attached to the box of the valve without the aid of a screw. At the trial, it appeared that the alleged infringement consisted in the use of a stand-pipe fitted with a ball valve and india-iaibber seating, the valve being opened by a spindle inside the stand-pipe. It further appeared that both a stand-pipe and ball valve were well known before the date of the patent. The plaintiff, Bateman, was called as a witness, and he stated that his invention consisted in the three different matters described in the specification, and that he did not claim them separately. Martix, B., directed the jury :— If a person takes an invention Macr^ of this kind and makes one like it, that is an infringement. It is my duty to tell you that the law will not permit a person to take an article that has been patented, and to give a substitute in place of it, for the purpose of effecting the same end, by the use of equivalents, using the skill and knowledge which he may possess to evade the patent. If you believe that the defendant's instru- ment, though he might have employed skill and knowledge upon it, was taken substantially from the plaintiffs, and that what he has produced is nothing more than a substitution of other and equivalent means for producing the same end, even though the means employed might be better than those of the plaintiffs, it is my duty to tell you that is an infringement of the patent. If that w^ere not the law no patent would be safe. It seems to me that the true construction of the specification is, Macr. that the patent is for an improved method of opening valves and ^' plugs for the passage of water. In my judgment, the claim is for the entire apparatus altogether, for the purpose of getting water from the main It is for you to ask yourselves Avhether the invention, as specified— that is, the ball valve ^ith the external adjuncts— was invented by the plaintiffs in the year 1848. The jury found that each of the three separate parts was old, but that the invention was for the combination, and that it was new and useful. Yerdict for plaintiffs. Eule nisi for a new trial, on the ground of misdirection, dis- D 2 p. 911, f36 Bateman and Moore v. Gray. cliarged by the Court of Excliequer. (Pollock, C.B., Alderson, Piatt, Martin, BB.) 8 Ex. E. Per Pollock, C.B. — It appeared at the trial, that, on the exa- mination of one of the plaintiffs, he stated that his invention con- sisted of a combination of certain machinery, each portion of which was old, but (as the jury found) the combination itself was new ; and it was admitted on all hands to be very useful. It was contended that the claim in the specification was, that of the three parts of the machinery therein mentioned, each was new ; and that the invention claimed was not (as the plaintiffs contended it was) the combination, which alone the jury found to be new. This point was argued before us, and we are disposed to think there is much weight in the objection to the validity of the speci- fication on this point. But we do not think it necessary to decide this question, because it does not arise on the present pleadings. The only issues on the record are the infringement (about which there is no doubt) and the novelty of the invention. We think that what was the invention was a question for the jury, and that the production of the specification did not conclude it. It was evidence to be considered by the jury, but no more, that the plaintiffs had so described their invention. But it may be, even if the defendant's construction be the true one, that the invention was new as a combination, and yet the description of it in the specification erroneous. Now here the jmy have clearly found the invention to be that of a new combination of old parts ; and if this be so, the real and true objection which was open to the defendant was that the plaintiffs had not complied with the con- dition in theu- patent, by truly and correctly describing it in the specification which they had filed. But this could only be taken advantage of by a plea to that effect. There was no such plea upon the record, so that the defendant cannot now avail himself of this objection. Batley v. Kynock. [a.d. 1874—75. L. R., 19 Eq. 90, 229; L. E., 20 Eq. 632; 44 L. J., Ch. 89, 219, 665.] Practice in Patent Suits — Inspection — Particulars of Breaches — Practice as to Costs under 15 (fc 16 Vict. c. 83, s. 43. Suit to restrain from infringing a patent of 4th October, 1865, No. 2,542, to J. and J. F. Jones, for improvements in cartridges for breach-loading fire-arms. The patent related to the manufacture of central-fire cartridges. Batley v. Kynock. 37 The specification described tlie improvements as consisting in a combination of pai-ts : — First, a tube or case of paper, cotton, wood pulp, &c. ; then, a metal head, having a cup or chamber formed in one piece therewith, for the reception of a percussion cap ; then, an anvil placed within the cap, for receiving the blow of a piston and causing the ignition of the fulminate. The anvil did not fill the cap, but gave passage along its sides for the flame to reach the body of the cartridge. The specification contained fifty-five figures, showing the construction of the ^cartridge, the forms of anvil, and the attachment of the head and cup. The claims, fifteen in number, related to the mode of making and arranging the several parts of the cartridge. (1) Plaintiff applied for an inspection of defendant's manu- 19 Eq. factory. Bacox, V.C, refused an order, and said : " I find that the charge made by the plaintiff is that the cartridges, the right of manufacturing which is A^ested in him exclusively, have been imitated and copied by the defendants ; and if that fact can be made out, tlie plaintiff's case is clearly established. The mode of making that out is by examination of the cartridges ; the means by which they have been made, whether by a machine or a hammer, or a screw, cannot signify in the least if the cartridges of the defendants, when made, are made upon the principle of the patent claimed by the plaintiff. I must take it, upon the evidence before me, that there is no allegation by the plaintiff that the inspection is necessary for the purpose of his suit ; and it is alleged by the defendants, and not contradicted, that no such necessity exists. I cannot, therefore, order the inspection. The costs will be costs in the cause." (2) Plaintiff having delivered particidars of breaches, charging infringement by the making and selling of cartridges (whereof one was made an exhibit), having cases and metal heads, together with cups or chambers formed as described in the specification, defen- dants moved for further and better particulars. Bacox, V.C, 19 Eq. refused the motion, with costs, and said : " Here the very thing in P' " "" dispute, which is no bigger than one's thumb, and is not a com- plicated machine, is made an exhibit. "What ground therefore is there for the objection as to insufficiency of the particulars, when a plaintiff produces the exhibit, and says, ' I hold in my hand the very article by which you infringe ? ' It would be only hampering the plaintiff to compel him to specify minutely the particular portions of his specification alleged to have been infringed ; and I am of opinion that the defendants, by the pleadings and par- 38 Batley v. Kynock. ticulars of breaclies, have liacl full, fair and sufficient notice of the case intended to be raised against them." 20 Eq. (3) The trial of the issues was fixed for 19th Fehruanj, 1875, and briefs were delivered. On 12th Febniari/, 1875, plaintiff obtained the common order at the Rolls, dismissing his bill with costs. Among the items in the defendant's bill of costs were charges for drawing particulars of breaches, and having the same settled by coimsel, which the taxing master had allowed, also charges for the payment of scientific witnesses, and for the construction of a model, which the taxing master had allowed on a reduced scale. Plaintiff took out a smnmons, that it might be referred to the master to review his taxation in respect of the above items. The first objection was founded on the common law rule adopted in accordance with stat. 15 & 16 Yict. c. 83, s. 43, by which it is enacted, that the " plaintiff and defendant respectively shall not be allowed any costs in respect of any particular, unless certified by the judge before whom the trial was had to have been proved by such plaintiff and defendant respectively, without regard to the general costs of the cause, &c." The master had allowed the charges relating to the particulars of breaches as being properly costs of the suit, inasmuch as the defendants, by reason of the coiu'se taken by the plaintiff in dismissing his own bill, had no oppor- timity of applying for a certificate. Plaintiff also contended that the charge for scientific witnesses should be further reduced, in accordance with the common law rule, or disallowed altogether, and that the charge for a model should be struck out. 20 Eq. Per Bacon, Y.C. — With regard to the rule at common law,. p. 63o. J (-.f^j-^j^Qf; regard that rule as binding upon this Court. Upon the first point, I cannot say that the master, in refusing to disaUow the defendants' costs of preparing their defence, was wrong, on the ground that the Act of Parliament has said that neither party shall be allowed costs imless the same are certified by a judge. Here the state of circumstances contemplated by the statute never did, and never could, arise. The case referred to at common law {Honihall v. Bloomer, 10 Ex. 538) has no application to the present. There the action was brought into Com-t, and when it came to be tried, the plaintiff found he had no case, and elected to be non-suited. In the present case, up to the moment when the plaintiff chose to dismiss his own bill, the defendant was bound to be on the qui rive, and to be prepared with every sort of defence he could lawfully use. That authority has no application to the case before me. Batley v. Kynock. 89 His Lordsliip discussed tlie several items of charge, and concluded by saying : The master has ajiplied his discretion to the subject, and in no one particular do I find that I can disturb his con- clusion. Beard v. Egerton. [A.D. 184(5—49. 2 Car. & K. 6G7 ; 3 C. B. 97 ; 8 C. B. 165; 15 L. J., C. P. 270 ; 19 L. J., C. P. 36.] Pleading, demurrer — Imported Invention — Title of Patent — Sufficiency of Specification — Obh'gatio7i in Specifying, Case for the infringement of a patent of 14th August, 1839, No. 8,194, to M. Bernj (a communication from a foreigner residing abroad) , for " a new or improved method of obtaining the spon- taneous representation of images received in the focus of the camera ohscuraJ'' The declaration alleged that M. Berry was the true and first inventor of a new manufacture within this realm, to wit, &c. Pleas : 5. That one Ba guerre invented the method which was the subject of the patent; that one JViepce practised the invention in France; that Baguerre and Niepce were aliens; that they retained M. Berry as their agent, to procure letters patent in his own name, upon trust for their use and benefit ; that M. Berry was no otherwise, than as aforesaid, the true and first inventor, whereby the letters patent were void. 10. That the title of the patent was *' a new or improved method, &c.," and that therefore the patent was void in law. 12. That the specification was insufficient. Demiu-rer to pleas 5 and 10. Joinder in demurrer. Judgment for plaintiff by the Coui't of Common Pleas. (Tindal, C.J., Cresswell, Erie, JJ.) During the argument it was objected that the title was bad, as 3 C. B. not showing whether the patent was taken out for a new manu- P' facture, or for a new or an improved method, of producing kno"s\Ti results — whether the patentee meant to claim entire novelty for his invention, or to limit his claim to some improvement in an old method. But Cresswell, J., said : If part of the method be new, so as to produce a result that, as a whole, is new, surely it may be called a new or improved method. If the method be altogether new, may it not be properly called an improved method ? They seem to be convertible terms. Per TixDAL, C.J. — The cases decided before stat. 21 Jae. 1, c. (3, 3 C. B. prove that grants by the Crown to persons avIio have brought any P" new trade within the realm were good at common law. (See the 40 Beard v. Egerton. Case of Monopolies, Noy, R. 178, and tlie Clothicorkers of Ipswich^ Godbolt, 252.) And the exception contained in tlie 6th section of the statute was made in affirmance of the common law, in- troducing no other alteration than the restriction, in point of time, for which such grants might extend. And, further, the case of Edgehemj \. Stephens (1 Webs. R. 35), which was decided long after the statute was passed, is an express authority that the statute " intended to encourage new devices useful to the kingdom, and whether learned by travel or by study is the same thing." It was argued that, to come within the statute, the person who takes out the patent should be the meritorious importer, not a mere clerk or servant or agent to whom the communication was made by the foreign inventor. No authority is cited for such distinction. We see no reason or principle which should prevent an alien amy, if the Crown thought proper, from receiving such a grant, either in his ovm name, or in the name of another in trust for him. In the case of Chappel v. Purday (14 M. & W. 318), the Court, in theii' judgment, assume it to be clear in point of law that a foreigner may hold a patent, if the Crown chooses to grant it to him. [The learned judge here referred to a portion of the judgment delivered by Pollock, C.B., in the case cited, which was the follow- ing : Under stat. 21 Jao. \ , c. 3, against monopolies, the 6th section, which leaves as they stand at common law all the letters patent, for fourteen years, of new manufactures granted to the first inventors, it has been decided that an importer is "vvithin the clause, and if the manufactiu'e be new in the realm he is an inventor, and may have a patent, though he is not the assignee of the foreign inventor, and though he may be a foreigner himself, if the Cro"WTi chooses to grant him a patent. The authority for this is to be found in Edgchcrry v. Stephens, 2 Salk. 447.] As to the 10th plea, we think the objection to the title of the patent is answered by reference to the decided cases of Neilson v. Harford (8 M. & W. 806) and Nickels v. Ilaslam (7 M. & G. 378). The action now came to be tried on the remaining issues, the issue on the sufficiency of the specification being that on which the case turned. The patent related to the so-called Daguerreotype process, con- sisting in the following operations :— 1. The silver surface of a plate was cleansed with dilute nitric acid, dried by powder of poimce, and lightly rubbed with cotton wool. 2. The surface was Beard v. Egerton. 41 rendered sensitive to the action of light by exposing it to the vapour of iodine. 3. It was transferred to the camera, and re- ceived the impression of an image. 4. The latent picture was developed by the vapour of mercury, 5. It was finally washed with a weak solution of hyposulphite of soda, and became fixed. The specification stated : — " The first part of the operation may be done at any time. This will allow of a number of plates being kept prepared up to the last slight operation. It is, however, considered indisjjenmhic, just hefore the moment of using the plates in the camera, or the reproducing the design, to put, at least once more^ some acid on the plate, and to rub it lightly with pounce, as before stated." The specification further stated : — " After this second operation is completed, the plate is to be passed to the third operation, or that of the camera ohscura. Whenever it is possible, the one operation should immediately follow the other ; the longest interval between the two should not exceed one hour." At the trial it apj)eared that no picture could be taken if the plate were washed with acid after exposure to ih.Q iodine vapour. Wilde, C.J., was of opinion that the specification was bad, as directing acid to be applied just before the moment of using the plates in the camera, and directed a verdict for defendants on the issue on the 12th plea. Verdict for plaintiff on the other issues. Leave reserved. Rule nisi to enter a verdict for plaintiff on the issue as to sufficiency of the specification made absolute by the Court of Common Pleas. (Wilde, C.J., Maule, Cresswell, Coltman, JJ.) Duiing the argument Maule, J., said : — " If so much nicety of 8 C. B. description were required, it would be impossible to draw a speci- ^' ' fication at all. It is enough if it be so explicit as to enable a man of ordinary competent skill, and willing to learn, to perform the operation. "A competent workman must be taken to know the known pro- 19 l. J. perties of iodine, of silver, and of nitric acid, or else the specification P' ^^' should have included a statement of the properties of each of these substances. " If you describe in a specification two ways of doing a thing, and by one way it cannot be done, the specification is bad." Also, in reply to counsel, Cresswell, J., said : — " The judge is to state what the specification orders to be done, and the jury are to say whether it would produce the result." Per Wilde, C.J. — It is to be observed that, when the plate is s C. B. not intended to be used immediately (and where it has previously P- -^^- 42 Beard v. Egerton. been partiallj^, but uot entirely, prepared for the iodine), this Last application of acid is still to precede the second operation. It is plain that the patentee did not intend any separate operation to intervene between the application of iodine and the introduction of the plate into the camera. This, we think, is the fair construction of the language of the specification ; and although there may, at first sight, be some appearance of obscmity in it, we think that is cleared away by a consideration of the whole, and that it is suffi- ciently plain to be understood by an operator of fair intelligence. Beeston v. Ford. [A.D. 1830. 2 Coop. Ch. Ca. 58.] Practice in Patent Suits — Long Enjoyment of Patent. Per Lord Lyndhurst, L.C. — There may be considerable doubt as to the validity of a patent ; still, if there has been a long exclu- sive enjoyment, the doctrine of the Court is that an injunction shall go to protect the patent, imtil the question of its validity is duly determined at law. • Bentley v. Fleming. [A.D. 1844—45. 1 Car. & K. 587; 1 C. B. 479.] Experimental User of Machine hefore Patent granted. Case for the infringement of a patent of 21st December, 1841, No. 9,207, to W. C. Thornton, for " improvements in machinery for making cards for carding cotton," &e. Pleas : 1. Not guilty. 2. That plaintiff was not the true and first inventor. 3. That the invention was not new. Issue. At the trial it appeared that, some five or six weeks before the grant of the patent, the inventor had lent the machine in question to one N., in order that he might try whether it would set the teeth of cards. The machine was placed in N.'s room in a mill, and men were constantly going backwards and forwards to and from the room. It also appeared that the machine had been in complete working order for some weeks before it was lent to N. It was contended on behalf of defendant : (1) that the patent was avoided by the public use of the machine in a public room before the grant. (2) That a machine which was in complete working order for a long period before the grant was not the sub- ject of a patent. Cressvs^ell, J., overruled both these objections, and said : — " There is no evidence that the machine was given to N. for the Bentley v. Fleming. 43 purpose of liis giving it publicity. The evidence merely is, that Thornton lent the machine to N., in order that he might discover whether it was worth while to take out a patent for it, or not. " And as to the second objection : — You cannot contend that if a man were to keep his invention shut up in a room for twenty years, that circumstance merely would deprive him of his right to obtain a patent for it." Verdict for plaintiff. The report in the C.B. series refers to a miscarriage in recording the verdict. Bergmann V. Macmillan. [A.D. 1881. L. E., 17 Ch. D. 423.] Account as between Assignee of Profits and Licensees. Action for an account of profits made by the licensees of a patent, and for the appointment of a receiver. It appeared that A. MacmiUan, the defendant, had invented an improvement in umbrellas, whereupon J. C. Robertson, on 2nd May, 1878, entered into an agreement with Macmillan to provide funds, and assist in working the invention, on condition of receiving one-half share in the profits of a proposed patent to be taken out by the inventor. On 8th Maij, 1878, MacmiUan obtained a patent for the inven- tion, and on 6th Juhj, 1878, he appointed W. Willeringham and H. Klinker, trading as W. K. ^ Co., sole licensees of the patent. On 18th Oct. 1878, Macmillan assigned one moiety of his then existing share of profits to Robertson, who thereupon, on the same daj^ assigned his interest under the patent, by way of mortgage, to the plaintiff. Notice of the agreement of 2nd May, 1878, and of the two deeds of 18th Oct. 1878, was given to W. K. 8^ Co. It further appeared that Macmillan had made other assignments of shares of the profits, but those assignees were not made parties to the action. The defendants to the action were Macmillan and W. K. 8^ Co., and the evidence showed that no profits had been made by the sales under the licence. Fry, J., said that he could not dii'ect an account of profits which 17 Ch. D. were non-existent. And, as to fvitui-e profits, he thought there ^' was no reason for supposing that, if there shoidd be any, they woidd not be paid by the defendant, and he could not grant a mere quia timet injunction or receiver. 44 Bergmann v. Macmillan. His Lordship dismissed the action with costs as against W. K. 4' Co., and observed : — I do not for one moment say that a person who has obtained an assignment of a share of profits is not entitled to an account of profits from the person by whom they are payable. But in my judgment, in order to avoid multiplicity of actions, the accoimt must be taken once for all in the presence of all the parties interested. Besseman v. Wright. [A.D. 1858. 6 W. E. 719.] Consideration for a Licence. Action to recover 5,000/. on an agreement for the use of a certain patent. Crompton, J., at chambers, refused to give leave to defendant to plead " That the patent was void, because it was of no use, and was not new." Rule nisi for leave to add this plea discharged by the Coiu't of Queen's Bench. (Lord Campbell, C.J., Erie, Crompton, JJ.) Per Crompton, J.— In Chanter v. Leese (5 M. & ^Y. 698), the bargain was for an exclusive right, which could not be given, but here the plaintiff only says, as against me you may use this patent ; but he says nothing as against the rest of the world. Regina v. Betts and Stocker. [a.d. 1850. 15 q. b. 540 ; 19 l. j., q. b. 531.] Sci. fa. — Joinder of Co-Patentees as Defendants. Sci.fa. to repeal a patent of 30th Dec. 1844, No. 10,449, to W. Betts and A. S. Stocker, for improvements in the mode of stopjDering bottles. The writ stated the grant of the patent to defendants, and suggested that they did not invent the supposed invention, and were not the true and first inventors thereof. Plea : (in abate- ment) by defendant Betts, that Stocker had assigned all his interest in the patent to Betts before the writ was sued out, and had not since any interest therein. Greneral demurrer, and joinder. Judg- ment of respondeat ouster by the Court of Queen's Bench. (Lord Campbell, C.J., Patteson, Coleridge, Erie, JJ.) Per Lord Campbell, C.J. — This plea is clearly bad. The Crown has a right to call upon those who obtained the i^atent to show why it should not be cancelled. If the proceeding is, in any instance, an abuse of process, application may be made to the Court for its summary interference. ( 45 ) Betts v. Menzies. [A.D. 1857—62. 3 Jur., N. S. 357; 8 E. & B. 923; 1 E. & E. 990, 1020; 10 H. L. Ca. 117 ; 27 L. J., Q. B. 154 ; 28 L. J., Q. B. 3G1 ; 30 L. J., Q. B. 81 ; 31 L. J., Q. B. 233.] Practice in Patent Suits— Injimction after long Enjoyment of Patent— Evidence of Prior PuUication— Misdirection of Judge — Novelty of Invention — Manufacture for Sale hefore the Patent. Suit to restrain from infringing a patent of IStli Jan. 1849, No. 12,415, to W. Betts, for " a new manufacture of capsules, and of a material to be employed therein, and for other purposes." The patent related to a method of ]3lating lead with tin, in imitation of tinfoil. For this purpose, ingots of lead were cast in plates about 30 inches long, 3 inches wide, f inch thick. These strips were reduced by rolling to about i inch in thickness. The tin was also cast and rolled into strips about ^V^h the thickness of the lead, and of equal breadth therewith. A strip of tin was then folded over a strip of lead, so as to cover it completely on both sides, and the compound strip was passed between rolls, and subjected to a very considerable pressure. The two metals united perfectly by molecular cohesion, and their relative thicknesses were preserved diu'ing any subsequent lamination by rolling between polished rolls. When the material was reduced to the substance of tinfoil, the lead remained perfectly coated with tin, and the siu-face had a brilliant metallic lustre. If preferred, the lead could be coated on one side only. After describing the process of manufacture, and the precautions necessary for success, the speci- fication stated : — " For the manufacture of capsvdes the material so prepared is cut into discs of the required size, and the manufacture is conducted as described in the specification of a patent of 16th March, 1843, No. 9,665, to J. T. Betts. I am aware that it has been proposed to cover lead with tin, by applying the tin, when in a state of fusion, to the lead when adequately heated, but the adhesion of the two metals in my new material is produced by the agency of mechanical pressure." Claims : — 1. " The manufacture of the new material, lead com- bined with tin, on one or both of its sm-faces, by rolling or mechanical pressure, as herein described. 2. The manufacture of capsules of the new material of lead and tin combined by mechanical pressure, as herein described." Defendant contended that the invention had been anticipated by a prior patent, viz., that of 4th Mai/, 1804, to T. Dohhs, No. 2,761, for " a new aiiicle of trade, which I denominate Albion Metal, and 46 Betts v. Menzies. which I apply to the making- of cisterns, linings for cisterns, covering and gutters for buildings, boilers, vats, cofhn fumitui'e, worms for distillers, and such other things as are required to be made of a flexible, a wholesome, or a cheap metallic substance." The specification stated : — " I take a plate or ingot of lead and a plate of tin, of ecjual or miequal thicknesses, and laying them together, their surfaces being clean, pass them between the rolls of a flatting or rolling mill with what is technically temied a hard pinch, so as to make the metals cohere. If after the first passage the plates do not sufficiently cohere, I pass them a second or third time or more between the rolls, until a sufficient degree of cohesion is produced. After a plate of lead had been coated on one side T\ith tin, it might, if desired, be doubled with the lead side inwards and rolled as before, so as to produce a plate of lead coated on both sides with tin. N.B. It will be useful, if not necessary, to have the rolls and the metals hot when the cohesion of the metals is to be effected by their passage between the rolls." Injunction granted, plaintiff to proceed forthwith to a trial at law. Per Wood, V.C. — As to enjoyment, there never was a clearer case than the present. It has been long undisputed, and it is clear, on the defendant's own evidence, that it is still a very valuable enjoyment. I think that if a man sits down, and takes out a patent from his OAMi conjectures, without ever having tried the experiment set forth in it, that will not invalidate a subsequent patent taken out and practically worked, especially when it turns out that the method described by the earlier patent is practically useless. Take, for instance, the electric telegraph. Many ingenious persons have talked of the means of communicating between two places by electricity, and had discussed the mode of carrying out that idea before Messrs. Wheahtone and Cooke showed a practically useful way of doing it. So, if we look into the Century of Inventions, by the Marquis of Worcester, there are many hints there, and many theories broached, which have since suggested inventions, the subjects of patents, to ingenious men who have lived since the publication of that book ; but those patents are good. Such a publication as that will not suffice to invalidate a subsequent patent which is capable of being actually worked to a usefid purpose. I do not know whether Dohhs ever made the thing or not ; but even had he done so, upon the sole ground of the long possession and enjoyment which the plaintiff has had in his invention, he must liave protection. The law of this Court is, tliat where the Betts v. Menzies. 47 patentee has had long enjoyment, there he sliall liave an injunction to protect his rights until trial, even although his rights under liis patent be doubtful ; much more ought he to have the injunction here, when I have considerable doubts whether the fact of Bohhah patent woidd affect the plaintiff's rights. Action at law in piirsuance of the order of the Court. Pleas : 1. That plaintiff was not the true and first inventor. 2. That the invention was not new. 3. That the specification was insufiicient. Issue. At the trial defendant gave in evidence the specification of the patent of 1804, No. 2,761, to T. Dobhs. It appeared that there had been no actual user of metal made under Dohbs's patent, but defendant relied upon the comparison of the two specifications, as showing that plaintift^'s process was not new. Evidence was given on both sides as to the practicability of producing plaintiff's metal by following only the instructions given in Dohbs'H specification. Whereupon, Lord Campbell, C.J. asked the jmy, " Wliether by the specification of Dobbs, or anything done under it, there was made known to the world the process in the specification of the plaintiff." The jury having hesitated for some time, he finally asked them, " whether they thought that a person of ordinary skill, reading Dobbs's specification, and ha^dng no other informa- tion on the subject, could at once proceed to make Bettsh metal." The jmy answered in the negative, whereupon the learned judge directed them to find for plaintiff on the issues upon the first and second pleas. Plaintiff had also a verdict on all the other issues. Rule nisi for a new trial on the ground of misdirection, made 8 E. & B absolute by the Court of Queen's Bench. (Lord Campbell, C.J., ^' Wightman, Crompton, JJ.) Per Lord Campbell, C.J. — The Avay in which I first left it to § E. & B. p. 937. the jmy was, I think, right : whether by Dohbs's specification, or anything done under it, the process described in the plaintiff's specification was made known. Now, I think that though a mode of coating the lead with tin was described in each specification, yet if the plaintiff's specification described a new modus operandi, that would be a proper subject for a patent. I think that the test which I finally proposed was defective. That was a proper test only upon the question whether Dohbs's specification was good or bad. But the specification might be bad, and yet might disclose enough to show that what the plaintiff specified was not a novelty. New trial of the same action. The pleadings were the same as before. Defendant again put in evidence the specification of a 48 Betts v. Menzies. patent of 14tli May, 1840, No. 2,761, to T. Dohhs. It now ap- peared that, owing to some unforeseen delay in obtaining the patent, plaintiff had niannf actm-ed a quantity of capsules according to his invention, but tliis was done by his own workmen under strict injunction that none should be sold, and none were sold until after the patent had been granted. Witnesses also deposed that the patented material had been publicly used before 1849. The scientific evidence went to the same points as in the previous action, and was entirely contradictory on the one side and on the other. Erle, J., left it to the jiuy to say whether the invention was new, and he pointed out that Dohhs's specification comprised lead coated with tin by mechanical pressiu-e ; tliat the plaintiff's specifi- cation was not confined to any one particular proportion of lead and tin ; and that the defendant was entitled to a verdict if the jury were of opinion that Dohhs's specification was sufficient to enable a competent person to produce the material subsequently patented by the plaintiff, or that the material had been both pro- duced and used, or sold in public before 1849. The jury found that the new material had been made by pressm'e prior to the plaintiff's patent, but had not before then been publicly used or sold by a manufacturer in the way of his business. Yerdict for plaintiff. Leave reserved. 1 E. & E. Rule nisi to enter a verdict for defendant, on the grounds : — ^" ■ ■ 1. That plaintiff had manufactured large quantities of the capsules for sale before the date of the patent. 2. That plaintiff's invention, or some material part thereof, was included in Dohhs's specification. 3. That the specification was defective in not stating the proportions between the two metals. 4. And in not distinguishing the new from the old — or for a new trial on the ground of misdirection, on the question raised as to the sufficiency of the specification in respect of the proportions of lead and tin, and that the verdict was against the evidence. Rule to enter a verdict for defendant made absolute by the Couii of Queen's Bench (Lord Campbell, C.J., Wightman, Erie, Crompton, JJ.), and rule for a new trial enlarged until after the judgment of the Court of Error on the pre^•ious points. 1 E. & E. Per Lord Campbell, C.J. — Upon the first point my opinion is ^' ■ clearly in favour of the plaintiff. I quite agree that if you look at the 6th section of the Statute of Monopolies, it abolishes monopolies altogether, and that there was no power in the Cro^vn after that statute passed to grant monopolies, except with the conditions that are imposed by the Betts v. Menzies. 49 reservation ; but the reservation wliicli must be relied on here is this, " which others at the time shall not use." Now others had not used this before the patent was granted. It was used only by the inventor, the patentee himself; for the use of it by the servants and mechanics whom he employed, must be considered his use ; and therefore it was not used by others. But still, if it could be shown that the effect was really to extend the term of the monopoly, that would be fatal. But Mr. Hindmarch has entirely failed in showing that, because any person might have used this manufacture lawfully until the patent was sealed and the foiu^teen years had begun to run, there was a period of more than fourteen years diu'ing which the monopoly existed. That period was not in the slightest degree exceeded. I come now to the next objection. Notwithstanding Dohbs's patent, I am of opinion that it would have been open for another discoverer to have found out certain proportions in which the tin and lead might have been applied to each other, and a new mode of operating, whereby a beneficial result might be obtained. It seems to me that the proportions were not considered as uniformly essential, and that the patentee, by his specification, gives the pro- portions for the manufacture of the material for the capsules only ; intimating, as I think very plainly, that where it was to be applied to other purposes, those proportions might infinitely vary. He claims as his invention the uniting these surfaces by rolling or other mechanical pressure. That is disclosed, and most am^ily, by JDobbs ; and therefore I find that the plaintiff claims what Dnbhs had before described. On that ground I think that the patent is bad. The other judges concurred. Error brought from the Court of Queen's Bench. Judgment i e. & E. affirmed by the Court of Exchequer Chamber. (Pollock, C.B., P- ^'^-^• Williams, Willes, Keating, JJ., Martin, Bramwell, Channell, BB.) Per Williams, J. {dissenfiente).—! think that the judgment of i E^.^^^^- the Court of Queen's Bench ought to be reversed. It appears to P" me that although Dobba made public his notion that lead and tin might be usefully combined into a new material by mechanical pressure, yet inasmuch as he did not make known, or know, by what means that notion could be carried into efiPect, he, in fact, made no discovery, and was no inventor at aU. I have yet to learn that the publication of a notion that a certain useful art may be discovered, without any information or knowledge of the means G. E 50 Betts v. Menzies. of discovery, is to preclude a subsequent first inventor of tliose means from taking out a patent for tlie entire art. WiLLEs, J,, conciu'red in tliis judgment. lOH. L.C. Error was then brought in the House of Lords, The judges ^' ■ were summoned, and Pollock, C.B., Wightman, Williams, Byles, Blackbm^n, JJ., and Wilde, B., attended. The Lord Chancellor proposed the following questions to the learned judges : — 1. Does it appear, on a comparison of the two specifications, that a material part of Bobbs's specification is claimed by Betis in his specification ? 2. If so, can the Court pronounce Betts's patent to be void, simply on the comparison of the two specifications, without evi- dence to prove the identity of the inventions, and also without evidence that Bobbs's specification described a practicable mode of producing the result, or some part of the residt, described in Beits' s patent ? There was some difference of opinion in the answers given to the first question, but all the learned judges concurred in answering the second question in the negative, Wilde, B., saying : — " The Com-t can pronounce two identical descriptions to pourtray two identical inventions ; but when the descriptions are different, the identity in substance of the two inventions is a matter to be established by extrinsic evidence." Ordered. — That the judgment of the Court of Exchecpier Chamber be reversed, and that the judgment or rule of the Court of Queen's Bench, so far as it orders that the verdict obtained in the said Court be set aside and a verdict entered for the defendant instead thereof, be also set aside. 10 II. L.C. Per Lord Westblry, L.C. — The answer of the learned judges p. 152. , . . . JO to the second question involves two conclusions which are extremely material to the patent law. One is, that even if there is an identity of language in two specifications, and (remembering that those specifications described external objects) even if the language is verbatim the same, yet if there are terms of art foimd in the one sjjecification, and also terms of art found in the other specification, it is impossible to predicate of the two with certainty that they describe the same identical external object, unless you ascertain that the terms of art used in the one have precisely the same signification and denote the same external objects at the date of one specification as they do at the date of the other. In all cases Avhere two docimients profess to describe an external thing, the identity of signification between the two documents Betts v. Menzies. 51 containing the same description must belong to the iiro\ince of evidence, and not to the province of construction. I pass on to tlienext conclusion, whicli is also of great importance loH.L.C. to the law of patents, because it results from that opinion that an P' antecedent specification ought not to be held to be an anticipation of a subsequent discovery, unless you have ascertained that the antecedent specification discloses a practicable mode of producing the result which is the effect of the subsequent discovery. Here we attain at length to a certain, undoubted and usefid rule The effect of that opinion I take to be this, if your Lordships shall affirm -it, that a barren general description, probably containing some suggested information, or involving some specidative theory, cannot be considered as anticipating, and as therefore avoiding, for want of novelty, a subsequent specification or invention Avhich involves a practical truth, productive of beneficial results, unless you ascertain that the antecedent pubHcation involves the same amount of practical and usef al information. Now it will be evident, upon a comparison of these two speci- fications, that the one was a mere general suggestion, while the other is a specific, definite, practical invention. It is possible that a suggestion, such as that contained in the one, may lead to the discovery of the invention contained in the other. But it is this latter alone which really does add to the amount of useful know- ledge ; it is the latter alone which, by its practical operation, confers a benefit upon mankind within the meaning of the patent law. In the present case, there was not only no evidence to show that that which is contained in Dohhs's specification was capable of practical operation, but in reality that conclusion was negatived by the verdict of the jury. Therefore, my Lords, concurring, as I entii-ely do, in the conclusions which have been arrived at by the judges in answer to the second question, it results, as a necessary consequence, that the decision of the Com^t of Queen's Bench and of the Com-t of Exchequer Chamber ought to be reversed. Per Lord Wexsleydale. — I am clearly of opinion that the lOH.L.C. mere production of Bohbs's patent, in which he makes public his P" notion that lead and tin might be usefully combined in a new material by mechanical pressure, v/ithout any statement or proof how that object could be attained, and a practical residt secured, is insufficient to show that he had made a prior discovery, which was in law an invention ... I entirely agree with Mr. Justice Williams and Mr. Justice Willes in their opinion given in this e2 52 Betts v. Menzies. case, tliat the mere publication of a notion that a pai-ticular article might he made, without any information or means of knowledge communicated to the public, does not prevent a subsequent first inventor of those means from taking out a patent. Betts v. Cliffoed. [a.d. I860. IJ. &H. 74.] Practice as to Costs ivhere a Suit is abandoned — Three Counsel alloiued. Suit to restrain from infringing the same patent. Motion for injunction ordered to stand over till after the trial of an action at law which was then pending, nothing being said about costs. Plaintiff abandoned his original action against defendants, and began a new one, which resulted in a verdict for defendants on the validity, and for plaintiff on the infringement. A ride for a new trial was afterwards refused by the Com-t of law. The bill was finally dismissed with costs, for want of prosecution. In taxing defendants' costs the master allowed the costs of opposing the motion for injunction, and the costs of bringing into Comi a third counsel, who had been retained at law in the previous actions on the patent. On appeal, the master's decisionwas upheld. Betts v. Neilson. [a.d. 1868—1871. 12 L. T., N. S. 489; 6 N. E. 221 ; 34 L. J., Cli. 537; 37 L. J., Ch. 321 ; 40 L. J., Cli. 317 ; 3 De G. J. & S. 82 ; L. E., 3 Oh. 429; L. E., o H. L. 1. Evidence of Infringement — Evidence of Prior Puhlication — User of Patented Article — Sufficiency of Specification — Statement of Proportions — Suhject- rnaiter of a Patent — Practice — Account, or Damages, but not both. Suit to restrain from infringing the same patent by the user of certain capsules for covering the corks of bottles. The defences raised were — (1) prior publication of the invention by Dohbn's patent of 1804, No. 2,761 ; (2) prior user of iho, inven- tion ; (3) that the specification was bad in not stating the propor- tions of lead and tin ; (4) that the manufacture of capsules from the patented material was not the subject-matter of a patent ; (5) denial of the infringement. As to the infringement, it appeared that defendants were the managers of Messrs. Tennant, brewers, in Scotland, and obtained capsules from a manufactory near Nuremberg. Plaintiff produced proof by a workman who was employed in the said manufactory, and saw the capsules made by a process not distinguishable from the patented process. On analysis, the proportions of lead and tin were found to differ from those stated in the patent. Defen- Betts v. Neilson. o3 dants commonly sold the capsuled bottles to persons in Glasgow, but in some instances tbey sent tlie same to England, on tlieir own account, for exportation. Injunction granted, witli account and inquiry as to damages. ■Wood, Y.-C, said : — The capsules were in use for the very 6 N. R. puqoose for which they were invented. I can well conceive a case ^' " in which there would be no user in England, as, for instance, foreign tools, infringing an English patent, packed up in boxes and lying inert, or transhipped in com-se of transit in an English harbour. The case here is more like that of a railway carriage with patent wheels moving from Scotland into England, in which case the moment the carriage passed the border there would be user of the patent in England. On appeal to the Lords Justices, judgment affirmed, with 3 De G-. J. & &. p. 82. costs. Per Turner, L. J. — The liquid comes into this country in bottles, having upon them the patented article, or an article opera^ting in precisely the same way, and so closely resembling the patented article that the use of it in Englandwovl(\. be an infringe- ment of the patent. I cannot say that the retaining upon the bottles when they are in this country the article so applied to them abroad does not constitute a use of the article in England. The case of Caldicell v. Vanrlisscngen (9 Hare, 415) may be in some respects distinguishable from the present, but I think that it disposes of the present question. The distinction attempted to be drawn between that case and the present is this, that in that case there was an active use of the patented article ; and here it is said, and I have no doubt truly said, that the use of the patented article is passive and not active. But it does not appear to me that the question whether the user is active or passive can have any bearing on the question whether the patented article is used or not. On fmiher appetil to the Lord Chancellor, judgment affii-med, 3 Ch. with costs. Fer Lord Chelmsford, L.C— I am of opinion that Dohhs's specification was not such a publication of the invention patented by the plaintiff as to invalidate his patent. But the defendants say, that there is a great body of evidence to prove a use of the invention long prior to the date of the plain- tiff's patent. If the evidence which I am about to examine establishes the fact that lead coated with tin by mechanical 54 Betts v. Neilson. pressure, and capable of useful application, lias upon any occasion been manufactured openly, not by way of experiment, but in the course of business, altbougb not a single piece of the material was actually sold, I should hold that Beits' s patent was invalidated. His Lordship then proceeded to examine the evidence, and held that the defence on this groimd entirely failed. 3 Ch. Jje then continued : — The infringement of a patent is a tort^ and all persons who are in any way acting towards it are jointly answerable. If, then, the mere presence of the capsuled bottles in England amounts to a user of the plaintiff's invention, Messrs. Tcnnant, who sent the beer into England, are parties to the in- fringement, whether they derive profit from this course of trans- mission or not. I do not appreciate the distinction which was pressed upon me in argimient between the active and passive use of a thing, and the difference suggested on that ground between this case and that of CaIdiccU\. VanvUssengen (9 Hare, 415). ... It is the employment of the machine or the article for the purpose for which it was designed which constitutes its active use ; and whether the cap- sules were intended for ornament, or for the protection of the contents of the bottles upon which they were placed, the whole time ihej were in England they may be correctly said to be in active use for the very objects for which they were placed upon the bottles by the vendors. ... In my opinion there was an active use of the capsules by those who first placed them upon the bottles, and by those who had them in their possession afterwards, ^^ith the power of either continuing or removing them. His Lordship then examined the objection to the decree, on the ground that it ordered an account and also an inquiry as to damages, and stated that he should hold the decree of the Yice- Chancellor to be right in this respect. 5 H. L. Appeal to the House of Lords. The patent expired on 13th !'■ ^- Jan. 1868, and the judgment of the Lord Chancellor was given on 8th Feb. 1868. By the expiry of the patent the in- junction fell to the groimd. There remained only the demand for damages, and the question of costs. Decree varied by striking out the order for an account, otherwise affirmed. Appeal dismissed, with costs. Per Lord Westbury. — The question of user was argued at some length, but I think unnecessarily. The user which is admitted to have been made by the appellants of these foreign capsules is this, that, after having applied them to their bottles of Betts V, Neilson. 55 beer, they have, in some cases, sent the bottles so capsuled to their agents in England for exportation from England. As soon as the bottles passed the border there was a user of the 5 H. L. capsules by the appellants, and the capsule was performing its ^' proper fimction during the whole time of the transit of the bottles through England, and their remaining in England until they were exported. This amounts, it is true, to an evanescent or infinite- simal matter, but still it is, to a certain extent, an injmy to the respondent, and it is probably a reason which prevented the respondent from selling as large a number of capsules as he would have done but for this user by the appellants. I am, therefore, my Lords, obliged to submit to your Lordships that there is here evidence of a user of a patented article prejudicial to the patentee, which is sufficient in itself to justify and support the injunction and the direction as to damages ; and it is not necessary to enter into the inquiry as to the extent to which this has been done, it being clearly proved, and in fact admitted, that it has been done to a certain extent, and in a manner that must have been injmious to the patentee. In ordinary cases of pirated patents in England, Courts of Equity 5 H. L. have been in the habit, where there is a difficulty in obtaining ^' ' proof, of granting a limited order of access and inspection of the machinery possessed, or the manufacture carried on, by the indi- vidual who is charged with the piracy. The opportunity of doing that is not enjoyed by the respondent here by reason of the locality of the foreign manufacture. But the opportunity of describing the actual process pui'sued there was possessed by the appellants to the full extent, and they might have entirely rebutted the prima facie evidence given by the respondent, if it was in their power to do so, by producing conclusive proof that the process of the foreign manufactm-e was substantially different from the process described in the respondent's patent. That, however, they have not done, nor have they assigned any satisfactory reason for not having done so. The objection to the validity of the patent, on the ground of want of novelty, rests, first, on an old patent of Dohhs, which was granted in 180-1. Youi' Lordships came to the decision that if you took Dohhs' s specification in the one hand, and Beits' s specification in the other, you could not upon a comparison of the two j^er se, arrive at the conclusion that the one anticipated the other. The point, therefore, has been conclusively settled by your Lordships' 56 Betts v. Neilson. , House, that the invention of tlie one, taken per se, did not forestall or anticipate the invention of the other. 5H.L. I -sxiil merely note for a moment some little difficulty that appears to have been felt about an opinion I expressed in the case of m/k V. Evans (31 L. J., Ch. 457), as to what it was necessary to find in the anterior publication. My opinion was that the ante- cedent process, if it be relied upon as forestalling the second, must be so clearly and distinctly described, that those who read it, bringing to it competent mechanical skill, would be enabled to work it out to the same result as that arrived at by the process contained in the subsequent patent. Lord Lyndhurst {Houschill Co. V. Neilson, 1 Webs. E. 718, n.) required for the anterior descrip- tion of the machine that it should be distinctly and clearly described in a manner corresponding with the description in the specification. Now that being the obligation lying upon those who appeal to a prior patent as having already given to the world the necessary and useful information which is contained more fully in the subse- quent patent, the appellants have sought to discharge themselves of that obligation by bringing two descriptions of evidence — one, the evidence of scientific witnesses, who, taking up in the years 1866 and 1867, when they were examined, the specification of Dobbs, have tried to work it in such a manner as to produce results substantially identical with the material of Betts, and therefore to prove that, in reality, it forestalled Betfs's discovery. The other consists of evidence applicable to the fact of there having been in reality a prior user of Betts's process anterior to the patent. I must say that when we come to examine the scientific evi- dence, I think I never met with a case where I was more pained to observe the manner in Avhich the efforts of the men examined had all been directed, after their minds were fully informed of Bctts's invention, to endeavour to strain the description of Dobbs, so as to include in the application made of Bobbs's design and Bobbs's processes, something which should approximate to the invention of Betts. Upon the e\ddence I have desiderated, but have been unable to find proof that by the process of Bobbs, with- out anterior lamination, which belongs to Bctts's invention, there has been produced a material substantially identical with Betts's material, and capable of similar application. We pass on to the other evidence which has been given of prior user. It appears that the proof of prior user has been reduced by Bett« v. Neilson. 57 tlie present appellants to what took place at four mills. The whole of this evidence was gone through by the Vice- Chancellor, and also by the Lord Chancellor. I entirely concur with the observations made by both those learned judges, namely, that the evidence was not to be relied on. That plain and distinct proof which might have been given, if the truth was so, is wholly wanting. My Lords, that brings us to the consideration of the last two 5 H. L objections to this patent. If, it is said, a particular detailed pro- ^' cess be claimed, the claim is defective and void, for the proportions of the ingredients used are not given. Now, in the first place, certain proportions are given by Betts in his patent, and they con- sist in the relative thickness of the lead and tin. The lead he takes by preference at a thickness of one-fourth part of an inch ; the tin he takes by way of preference at a twentieth part of the thickness of the lead— that would be the eightieth part of an inch. But he assigns these relative proportions not as things which are in themselves imchangeable, but as being the best for the pm^pose which he dq^ired to accomplish, and they are given rather as illus- trations of the mode of user of the process, than as certain definite termini which could not be exceeded or diminished either on the one side or the other. I find, therefore, no objection to the validity of the patent on this ground. Nor is it at all customary with Courts of Justice to allow objections to the wording of a patent such as these when the patent has stood for a long period of time the test of inquiry. The last objection to the patent is one of a very material ^H-L. character ; it is this : that after having described the process and the material, and claiming the material as the result of the pro- cess, so that the material is not claimed independently of the pro- cess, nor the process independently of the product, the specification concludes with a claim of the manufacture of capsules out of the material. But the manufacture of capsules out of the material would be one purpose only to which the material could be applied ; and if a claim to the material can be substantiated by the patent, the specification of a particular user of it, comprehended in the general user claimed, cannot for a moment be accepted as a ground for vitiating the patent. I have only fiu'ther to observe that the decree of the Com^t below directed not only an inquiry as to damages, but also an accoimt of profits. The two things are hardly reconcileable, for if you take an account of profits, you condone the infringement. I therefore think, my Lords, that we were right in calling upon the respon- 58 Betts v. Neilson. dent's counsel to elect between the two wliicli he would adopt. He has adopted the inquiry as to damages, and the other, the account of profits, must be struck out of the decree. But that ought not to alter the result of this appeal, and I trust therefore that your Lordships will concm' in the motion I have to make, that this appeal should be dismissed, with costs. Betts v. De Vitre. [A.D. 1865-73. 34 L. J., Cli. 289 ; 37 L. J., Ch. 325; 42 L. J., Cli. 841 ; 11 Jul-., N. S. 9 ; L. E., 3 Cli. 429 ; L. E., 6 H. L. 319.] Practice in Patent Suits — Account or Damages, hut not loth — Personal Liahility of Directors of a Company for Infringement — Costs — -Destruction of Articles made in Infringement of a Patent. Suit to restrain from infringing the same patent, brought against Wimskursfs Metal Foil Company, and its directors. The case was tried by the Court without a jury, on the issues of validity and infringement, both of which were found for plaintiff, who prayed an account and inquiry as to damages. , Wood, Y.C, granted the injunction with the usual account, but (following the decree of Lord Westbury, L.O., in Hilh v. Evans, 31 L. J., Ch. 457), allowed plaintiff to proceed at law for damages if he chose to waive the account. Subsequently, however, it was discovered that the decree di-awn up in Hills v. Evans dii-ected " an account of profits made by the defendant by infringing the plain- tiff's patent, and of such other compensation as was fit to be awarded to the plaintiff in respect of such infringement." Whereupon his Lordship ordered an account, together with inquiry into damages, and granted the injunction with costs. 34 Ch. The order contained the following clause : — " That an inquiiy p. 291. s]iould be made whether the defendants, or any of them, had in then- possession or power any or what articles made in violation of the plaintiff's patent ; and that all articles which should be certified to have been so manuf actro-ed and to be in the possession of the de- fendants, or any of them, should be destroyed in the presence of the persons named, being the managers and solicitors of the plaintiff." 1 1 Jul-. Application was then made for costs as between solicitor and 1'^- client, and that the directors should be made personally liable for the same. Eull costs refused, but the directors held personally liable. 11 Jur. Per AVooD, Y.C. — As regards the point about the defendants ^' ' being made personally Hable for the costs, I really have no doubt on the subject It is perfectly novel to me to hear it dis- Betts v. De Vitke. 59 cussed wliethcr or not a corporation may sanction their directors, who have undertaken, by theii' direction, to do something wholly illegal, such as the infringement of a patent, or the cutting down of a whole wood, which would be exactly the same thing in effect. .... This Court has always been in the habit of holding, tliat anybody who takes part in a wrong of this description is liable to be restrained from committing the wrong and is answerable. Al- though the form is to restrain the company, their servants and agents, I apprehend that every one of those agents might, if doing an actual wrong, be made a defendant to the suit, and personally and individually be made to pay the costs of it ; and it is no justifi- cation for him to say that his master ordered him to do it. Grene- rally speaking, the wrongdoers are persons in that rank of life that it is not thought worth while to make them personally liable. It is no answer to say, because I did it on behalf of a limited com- pany I am not to be made responsible. The case being distinctly stated and proved, I have not the least doubt that the decree must be against the defendants, both as to the injunction and account, and that they must be decreed personally to pay the costs. I see no ground for exempting them from any possible penalty which the law may impose. His Lordship then recapitulated the proceedings which had taken place in Betts v. Ifoizics, by stating that the judge gave his certi- ficate at the trial that the right had come in question, and the verdict then was with the plaintiff ; that after the judgment of the House of Lords, the Court of Queen's Bench directed a new trial, which, however, did not take place, in consequence of a compro- mise between the parties ; and continued : — That being the only certificate I have, I think, regard being had to the purport of the stat. 15 & 16 Vict. c. 83, s. 43, which is, that where there is a wil- ful act against the rights of a patentee after he has obtained a verdict, and the certificate of a judge that his title came in ques- tion, all the world must be taken to know that if they infringe the patent, they infringe it with a liability for costs, I say, that being the meaning of the Act of Parliament, I have not enough before me here to direct these costs to be paid as between solicitor and client. On appeal to the Lord Chancellor, decree afiii'med, and a23peal 3 Ch. dismissed, with costs. P* ^'^^' Per Lord Chelmsford, L.C. — The alleged infringement of the plaintiff's patent took place in the company's works, and in the course of the performance of the proper duties in which the work- 60 Betts v. De Vitre. men were engaged. Those wlio have the control of the working are responsible for the acts of their subordinates, and it is not sufficient for them to order that the work shall be so done that no injury shall be occasioned to any third person. That, of course, must be avoided, whether orders to that effect are given or not ; but the directors were bound to take care that their orders were obeyed, and if there was a violation of them, whether openly or secretl}', they are liable for the consequences. ^ ^j ]-'' Appeal to the House of Lords. The decree of Lord Chelmsford, L.O., was the same as that pronounced in Betk v. Neihon (L. E.., 3 Ch. 429). In March, 1871, the House of Lords varied the decree of the Court below in the latter case by striking out the double order for an account and inquiry as to damages, and put Mr. Bctts to his election between the two. On 26th Jan. 1 872, the solicitors for appellants informed the solicitors for respondent that they coidd no longer dispute the validity of the patent or its infringe- ment, and that they woidd withdi\aw the appeal and pay the costs up to that time, if respondent would consent to abandon the double claim to an account and damages, and would elect between the two ; and that otherwise they should apply for the costs occasioned by his refusal. This proposal was not accepted, and the case went on ; but appellants adhered strictly to their proposition, and stated the same to their Lordships. Decree appealed from varied, with special directions as to costs. Per Lord Cairns. — As I understand the order in Neilson v. Bettf^, if it decided anything it decided this, that, not by reason of any pecidiarity in that particidar case, not by reason of the inquiry as to damages being sufficient for that particular case as distin- guished from other cases, but on the general principle that the recent power given to the Court of Chancery to grant an inquiry as to damages (see 21 & 22 Vict. c. 27, ss. 2, o), was not intended to be superadded to, and could not coexist with the old relief ad- ministered by the Cornet of Chancery of granting an inqtiiry as to profits ; upon that ground yom- Lordships decided that the decree in that case should be varied ; and, my Lords, that is a ground which applies not to that case alone, but to every case of an infringement of a patent. The decree must be varied in the way it was varied in Neilson V. Betts. The only other question is. What is to be done with regard to the costs ? It was brought home to the mind of the respondent that after the decision in Neilson v. Betts there was no longer anything to be argued in this case, or anything which your Bett8 V. De Vitre. 61 Lordships could attend to or listen to for a moment. The offer was then fairly made to reimburse all expense the respondent had in- curred up to that time, and from that time forward it became, not a question of what the Court below had done, but a question of misconduct on his part in maintaining the defence to an appeal which, when it was narrowed to this one single point, he no longer ought to have maintained. My Lords, on this groimd, which stands high and cby from the infringement of any rule of your Lordships' House, I entirely concur in the motion made by my noble and learned friend that in this ease, according to the offer made by the appellants, they should pay the costs of the appeal up to 2Gth Jan. 1872, and from that date the costs of the appeal should be ordered to be borne by the respondent. BeTTS V. GrALLAIS. [A.D. 1870. L. E., 10 Eq. 392.] Practice in a Suit where the Patent has expired. Suit to restrain from infringing the same patent, for an account, and compensation in damages. Bill filed on 8th Jan. 1868. The patent (extended for five years) expired on 13th Jan. 1868. No application had been made for an interim injunction. The validity of the patent was admitted. Bill dismissed, with costs. Per James V.C. — I am of opinion that this bill cannot be sustained. I agree with every word which fell from Yice-Chan- cellor Wood in J)avenj)ort v. Rylands (L. E., 1 Eq. 302). But I think he never intended to give countenance to such an application as this, where the patent expired a few days after the bill was filed ; and the plaintiff must have known it was utterly impossible he could have obtained any equitable relief before the patent expii-ed. At the time .of filing this bill there was a mere claim for damages. Betts v. Willmott. [A.D. 1870—71. 18 W. B. 946; L. E., 6 Ch. 239.] Evidence of Infringement. Suit to restrain from infringing the same patent. Plaintiff complained that defendant, a retail chemist, had sold a bottle of RinimeVs toilet vinegar, having a capsule similar to those manu- factured under the patent. It appeared that plaintiff had capsule manufactories abroad, and he could not say that the capsule in question had not been made and sold by liis own house in Paris. 62 Bett.s v. Willmott. James, V.C, dismissed tlie bill, witliout costs, neither side lia-sdng, iu his opinion, so conducted themselves as to become entitled to costs. Appeal from this decision dismissed, with costs. 6 Ch. Pf>-LoRD Hatherley, L.C. — When a man has purchased an P" " ^' article he expects to have the control of it, and there must he some clear and explicit agreement to the contrary to justify the vendor in saying that he has not given the purchaser his licence to sell the article, or to use it whenever he pleases as against himseH. I am of opinion that, if the plaintiff cannot show that he has not himself sold the very article, the use of which he now seeks to prohibit, he cannot succeed by way of injunction in this Court any more than he would in an action at law. Bewley v. Hancock. [A.D. 1855. 6 DeG. Mac. & G. 391.] Construction of Agreement to work certain Patents — Sicbject-matter of a Patent. Suit to obtain a declaration that a patent of 29th July, 1848, No. 12,223, to C. HancocJ;, for " improvements in machinery for giving shape and configui-ation to plastic substances," was subject to the trusts of a deed of 21st Jan. 1846, executed in piu'suance of an agreement of 31st May, 1845, made between plaintiff , defendant, and two other persons, who were all interested in certain patents relating to the manufacture of gutta percha, whereby it was agreed that all patents thereafter taken out by any of the parties " in relation to the preparation and application of gutta percha or the manufactiu'e of any articles therefrom," should be assigned to trustees, and held for their common benefit. Stuart, V.C, made the decree as prayed. Appeal dismisssed by the Lord Chancellor, with costs. Per Lord Cranworth, L.C. — I do not doubt the accui'acy of the proposition maintained at the bar, that there may be a wide distinction between a patent for the invention of any useful article of commerce, and a patent for the invention of machinery by which such an article may be manufactured. A discovery that the mixture of two or more simple substances in certain definite pro- portions will form a compound substance valuable for medical or other qualities, would afford a good ground for a patent. A dis- covery of some machinery whereby such a mixtui'e may be more quickly or more effectually accomplished, might be the foundation of another patent, and instances might be almost indefinitely multiplied. When, however, we look at the subject-matter of this patent, it is plain that such a distinction never could be supported. Bewley v. Hancock. 63 Looking at the specifications of the patents clearly inclufled in the agreement, it appears that they all, or almost all, describe as part of the invention the machinery by which the proposed manufacture is to he accomplished. The defendant, however, contends that his patent is not within the agreement, because it is not a patent for the application or manufacture of gutta percha, but of plastic substances generally. This, however, is a distinction which it is impossible to maintain. The discovery had relation to the application and manufacture of articles from gutta percha, though it may be that it also had reference to the application and manufacture of articles from other substances. So far as it relates to gutta percha it is within the agreement, and so far as it relates to any other substances the defendant's rights are saved by the decree. BiCKFORD V. SkEWES. [a.d. 1837—39. 1 Wobs. E. 211 ; 2 Coop. Ch. Ca. 59 ; 4 Myl. & Cr. 498 ; 1 Q. B. 938 ; 8 L. J., Cli. 188 ; 10 L. J., Q. B. 302.] Practice in Patent Suits — Injunction — Action at Law— Sufficiency of Specification. Suit to restrain from infringing a patent of 6th Scj^t. 1831, No. 6,159, to W. Biclford, for " an instrument called the miner's safety fuse." Injunction granted. Order for action at law. Fer Shad WELL, Y.C. — An order that the plaintiff shall under- 2 Coop, take, in case it shall tm-n out that he is "UTong, to compensate the p. 59. defendant for injury in stopping his manufactory, is not usual. Dec. 1838. An application being made to compel plaintiff to proceed to 4 M. & C. trial at an early date, Lord Cottenham, L.C, refused to make any ^' . order, and said : — If the patentee has been long in possession the Coiui: will not look into the title, but will give credit to it until displaced by a trial at law, and will put the plaintiff upon pro- ceeding to trial and exercise absolute control over the parties, according as they may or may not do that which the Court has directed. Action at law. Plea : That the specification was insufficient. Issue. The patent related to the manufactm-e of a /ksp, formed of several strands of flax, hemp, &c., and enclosing within the interior a small core of gunpowder. The gunpowder was fed in by a fimnel at the point where the strands were twisted into a cord. The specification stated : — " I manufactm-e flax, hemp, cotton, or 64 BicKFORD V. Skewes. other suitable materials, spun, twisted, and countered, and other- wise treated in the manner of twine spinning and cord making, by means whereof I embrace in the centre of my fuse a small portion, or compressed cyKnder or rod of gunpowder, or other proper com- busfible matter, prepared in the usual pyrotechnic manner of fire- w^orks for the discharging of ordnance." At the trial, it appeared that gunpowder was, in fact, the material used by plaintiff ; one witness, however, expressing an opinion that detonating powder would answer, but not so well as gunpowder. It w\as objected that the specification was bad, as referring to other combustibles besides gunpowder, when gunpowder alone could be used ; and also that the words " flax, hemp, cotton, or other suitable material, spun, twisted, &c.," were too vague, and might extend to materials which would not give effect to the invention, it being in evidence that glass fibres might be spun, but could not be employed for making the cord. Coleridge, J., left it to the jury to say, upon the evidence, whether the specification in its several parts sufficiently exjolained the invention. Yerdict for plaintiff. Leave reserved. Eule nisi for a new trial discharged by the Coui-t of Queen's Bench. BmcH V. Mather. [a.d. 1883. L. E., 22 Ch. D. 630 ; 52 L. J., Cli. 292.] Practice as to Interrogatories. Action to restrain the infringement of a patent. The particulars of objections alleged prior user of the invention at certain works, naming them, but gave no further information. Plaintiff applied for leave to administer interrogatories to defen- dant, asking for the names and addi-esses of the persons who were alleged to have used the invention at the places referred to in the particulars, and also whether the machines in question were in existence. The Eegistrar at Manchester allowed the interrogatories, and defendant appealed, when Chitty, J., afiirmed the order of the Eegistrar, the costs to be costs in the cause, and referring to Finnegan v. James (L. E., 19 Eq. 72) and Crossley v. Tomey (2 Ch. D. 533), said : — It seems to me that these two decisions are binding on me. I may state further, that in both those cases the defendants were requii-ed to answer interrogatories, notwithstand- ing the existence of the right, which was conceded in Finnegan v. James, of either party to require particulars of breaches or objections. ( 65 ) Bloxam v. Elsee. [a.d. 1825—27. 1 Car. & P. 55S ; 9 Dowl. & Ey. 215 ; 6 B. & C. 169 ; 3 L. J. (O. S.) Q. B, 93.] Master and Hervant — Assignment hy operation of Law — Dravn'ngs called in aid of Description — Variance hettceen Title and Specification — False Suggestion. Case for the infringement of two patents, yiz., of 20tli April, 1801, No. 2,487, for "an invention of maldng paper in single sheets, witliont seam or joining, from 1 to 12 feet and upwards wide, and from 1 to 45 feet and upwards in length," and of 7th June, 1803, No. 2,708, for improvements and additions to the machine described in the first patent, each to J. Gamhie. By stat. 47 Greo. III. c. 131, the grants were enlarged, on condition that the patentee should enrol a fm-ther specification containing all improvements made in the machine (see No. 3068,* specification enrolled bj H. and S. Fourdrinier, and J. Gamhie), and subject to the proviso, that if the patent should at any time become vested in or in trust for more than five persons, otherwise than by devise or succession, the pri\alege should cease and determine. Plea : Not guilty. Issue. The patents related to the invention of a machine for making paper, which afterwards became the type of machinery in use at the present day. The specification of the patent of 1801 described the invention by reference to cbawings, and showed an endless sheet made of copper wire (replacing the wire nioidds used in making paper by hand) and supported by wooden rollers. A film of liquid pulp was continuously supplied to this copper sheet, and carried on thereby till it passed between two brass pressing cylinders, which squeezed out the water, and so far dried the film of paper that it was capable of being at once rolled in a continuous sheet upon a light wooden roller. The specification stated :— "On both sides of the copper sheet are seen copper clasps, affixed at equal distances, and the said sheet is bordered on both sides with eel-skins, cut into strips or ribands." This edging to the endless web determined the width of the paper. There was also a descrip- tion of a machine for pressing the recently made paper by passing it on to an endless cloth and compressing it by a roller. The specification of the patent of 1803 stated :— " Instead of limiting the breadth of the piece by the facing or edge of eel- skin attached to the edge of the cii'culating piece (or web), I do limit the said breadth by two gauges, one on each side, consisting of pieces of wood." The gauges were then described. The specifica- tion enrolled under the Act of ParHament (No. 3068 *) stated :— n F 66 Bloxam v. Elsee. " The width of the paper is determined by two pieces of wood, set edgeways upon the web." It went on to describe the dimensions of the pieces (which were about 4 feet in length), and the adjust- ment of them. One was placed over the web on each side thereof, and an endless strap carried on revolving pulleys ran between the guide and the web at the same surface velocity as the web. Additional guides and straps were placed underneath, so as to grasp the web and prevent the liquid pulp from running over its edge. The machine described in the final specification w\as greatly imj^roved in construction, and was competent to manuf actm-e paper of var;y^ng widths. At the trial, it appeared that Gamble had obtained his know- ledge from one Didof, an alien enemy, whose trustee he was at the time of taking out the patent. Also that the improvements men- tioned in the third specification were made by one Bonhin, an engineer, employed by the patentee and his partner for the purpose of bringing the machine to perfection. It was objected that im- provements so made were not the invention of the patentee, and could not be claimed as such ; but the objection to the patent on this grormd seems to have been disregarded. (Hindm. p. 26.) It further appeared, on the evidence of Mr. Donldn, that the machine described in the first specification woidd work to one width only, and it was objected that the first and subsequent grants were therefore void for false suggestion. It also appeared that, upon the banki-uptcy of the patentee in 1810, his creditors, exceeding five in number, had proved under the commission, and an objection was taken on this ground, but was overrided. An objection being further raised that the patent was void as being held in trust for an alien enem//, Abbott, C.J., said: — "I shall reserve that point." The specification contained references to French words, e.g., " vice of i))'emion " for " adjusting screw,'' ^^centimetres'' for ^^ inches;" but it appeared that although these terms would not be understood by English mechanics, yet that a skilful workman could construct the machine by the aid of the drawings annexed to the specifica- tion, and his Lordship observed: — "An inventor of a machine is not tied down to make such a specification, as, by words only, would enable a skilful mechanic to make the machine, but he is allowed to call in aid the drawings which he annexes to the specification ; and if, by a comparison of the words and drawings, the one will explain the other sufficiently to enable a skilfid mechanic to perform ilie work, siu-li a specification is sufficient." Bloxam r. Elsee. 67 His Lordship then left it to the jiuy to say whether the invention was useful, and whether the defendant had infringed ; and further observed that by the 6th section of the Act of Parliament the final specification was to be taken as a substitute for the former specifica- tions, and if good (which it was) that would cure all defects and omissions in the former ones. Verdict for plaintiff. Leave re- served. Eule for a new trial on the gromid that the patent was void, as being vested in trust for more than five persons, refused by the Com-t of King's Bench. (Abbott, C.J., Bayley, Hoboyd, Little- dale, J J.) Fer Abbott, C.J. — I am clearlv of opinion that the proviso can 9 I^. & E. *' , T). 219* be construed only as applying to acts of the parties by which the interest in the patent shall be divested, and does not apply to an assignment by operation of law, which is the effect of a commission of bankruptcy. The assignees represent the bankrupt by operation of law, and therefore a transfer of the interest in the patent to assignees is not, in my opinion, within the meaning of the clause. Eule nisi for a new trial granted on the remaining objections taken at the trial, but made absolute, on the ground that the patent was void for false suggestion. Per Abbott, C.J. — I think one of the objections which has 6 B._& C. been taken in this case is valid, and must prevail, and consequently ^' it is not necessary to give any opinion upon the others. By the patent it appears that the patentee had represented to the CroA^'n that he was in possession of a machine for making paper in single sheets, without seam or joining, from one to twelve feet and upwards wide, and from one to forty-five feet and upwards in length. Upon this representation the patent is granted. The consideration for the grant is the invention of a machine for making paper in sheets of width and length varying within the limits designated. If any material part of the representation was not true, the consideration has failed in part, and the grant is con- sequently void, and a defendant in an action for infringement has a right to say that it is so. If the representation be (as I think it is) that paper of various widths may be obtained from one and the same machine, I must look to the evidence to discover whether the patentee was possessed of a machine, or of the invention of a machine, capable of accomplishing this object. And, imfortunately, the evidence shows that he was not. The patentee was at the time possessed of one machine, and one only, and this adapted to one degree of width, and one degree only. And he was not then r2 68 Bloxam v. Elsee. possessed of any metliod by wliich different degrees of widtli miglit be manufactured by that macliiue, or by any other. If the first machine had been capable of working at different degrees of "width, though chimsily and imperfectly, the latter machine would have been an improvement of it ; but as the first, whether considered as existing actually or in theory, was wholly incapable of this, the latter machine does not in this respect furnish an improvement of anj'thing previously existing, but an addition of some new matter not existing or known at the date of the first patent, and which, nevertheless, is therein represented as existing or known, and which cannot but be considered an important part of tTie re- l^resentation then made, and of the consideration for the grant. If the first grant was void, the subsequent grants by the patent and by the statute must fall to the ground, as ha\ing nothing to support them. I think myself compelled therefore to yield to this objection. If, however, the law in this respect should not be in the opinion of my learned brothers that which I own it has appeared to me to be, still there must be a new trial, because the question ought to have been left to the jmy. ^ '^9 ^^' I ^^0 ^ot think it necessary to give any opinion on the point about the alien. Booth v. Kennaed. [a.d. 1856—57. 1 H. & N. 527 ; 2 H. & N. 84 ; 26 L. J., Ex. 23, 305.] Suhject-matter of a Patent — Novelty of Inverdion — Claim too large. Case for the infringement of two patents, viz., of 12th Nov. 1850, No. 13,334, and of 8th May, 1852, No. 14,116, each to G. R. Booth, for " improvements in the manufactm-e of gas." Plea 8 : That the alleged invention or inventions were not, nor was either of them, the subject of a patent. Issue. The patent of 1850 related to the manufactm-e of gas fi-om oil. The oil was projected directly upon the incandescent sui'face of a retort, and the soot which formed and impeded the conversion into gas was burned out at intervals. The patent of 1852 related to the manufacture of gas direct from seeds containing oil. One a2:)paratus described was a per- forated vessel for holding the material, the whole being enclosed in a retort heated by a furnace. Claim : " The making gas direct from seeds and matters herein named, for practical illumination, instead of making it from oils, resins or gums, which had been previously extracted from such substances." Pollock, C.B., directed the jury : — That the invention com- Booth v. Kennard. 69 prised in the patent of 1852 was not tlie subject-matter of a patent. Verdict for defendant on 8tli issue, so far as it related to the patent of 1852. Error on bill of exceptions to this direction. Judgment of venire de novo by the Court of Exchequer Chamber. (Cockbiu-n, CJ., Coleridge, Wightman, Erie, Williams and Crompton, JJ.) Per CocKBtiRN, C. J.— We all think that the direction of the i H^& N. Lord Chief Baron %^'as erroneous, and that there must be a venire de novo. The patent claims the making gas directly from seeds and other oleaginous substances, instead of making it from oils. By this means the patentee gets rid of one of two processes. Pre- viously to the date of the patent, gas had been obtained by a par- ticular apparatus from oils, which were first separated from the substances containing them by pressure. The patentee has dis- covered that the first process may be dispensed with. That is a useful invention, and the patent is sustainable if the invention is new. New trial of same action. Pleas: 1. Not guilty. 2. That plain- tiff was not the true and first inventor. 3. That the invention was not new. 6. That the specification was insufiicient. 8. As to patent of 1852, that the invention was not a new manufactm^e. Issue. At the trial, defendant put in e\ddence the specification of a patent of 12th Feb. 1829, No. 5,771, to E. Heard, wherein the patentee claimed the distilling of gas from a variety of substances, and inter alia, " from beech-nuts, or mast, cocoa-nuts, and all others abounding in oil." Pollock, C.B., directed a verdict for defen- dant on the issues as to novelty and sufficiency of the specification of the patent of 1852. Yerdict accordingly. Leave reserved. Rule nisi to set aside the verdict, and enter a verdict for the plaintiff, discharged by the Court of Exchequer. Per Pollock, C.B. — We think that Heard's specification clearly 2 H._ & N. shows that as a general fact (viz., making gas direct from seeds P" and other oily matters) the invention was not new, and it was decided in Bmh v. Fox (5 H. L. Ca. 707) that where the want of novelty appeared distinctly from documents or written instruments, such as a prior patent or specification, it was for the Court to take notice of the identity of the two supposed inventions, and the want of novelty therefore in the second. That Heard had discovered and had communicated to the world that gas might be made direct from nuts and other oily and fatty substances, appears to us to be quite clear from his specification enrolled. We think that it was 70 Booth v. Kennard. not necessary to submit this to the jiuy, and take their opinion on it. It is, we think, the plain meaning of the written document, and we think it is for the Coui"t to construe it ; and as this is part of the invention claimed by the plaintiff in his second patent, we think that the plaintiff's invention is so far not new, and therefore that the invention as a whole cannot be claimed as new. We are also of opinion that the claim is too large, and cannot be supported. It is a claim to make gas direct from seeds — not in any mode pointed out in the specification, but generally. After the publication of HearcVs specification, no patent could be taken out for the process generally, though a patent might be taken out for a particular method of doing it. We think the plaintiff's second patent was not for any particular method of doing it, but for the doing of it by any method ; and we think that even if it had been new (which it turns out not to be), such a mode of specifying and claiming the invention cannot be sustained as a good specification. BOULTON AND WaTT V. BULL. [A.D. 1793—99. 2 H. Bl. 463; 3 Ves. 140; Dav. P. C. 162.] Sufficiency of Specification — Draiving or Model not essential — Suhject-maiier of a Patent — Practice in Patent Sicits — Injunction. Suit to restrain from infringing a patent of 5th Jan. 1769, No. 913, to J. Watt, for " a new invented method of lessening the consumption of steam and fuel in fire-engines." The term of the patent was extended by stat. 15 Greo. III. cap. 61, to a period of twenty-five years. Injunction granted. Action at law in the Court of Common Pleas. Plea : Not guilty. Issue. The patent related to the invention of a separate condenser for steam-engines, at that time called firc-emjincs. Pre^-iously, the practice had been to admit steam and cold water alternately into the cylinder of a steam-engine, and a great waste of fuel was the result. The invention of Watt consisted in condensing the steam in a separate vessel, and in keeping the cylinder as hot as the steam which entered it. The specification did not describe the actual construction of an engine, but stated : — " My method of lessening the consumption of steam, and consequently fuel, in fire- engines, consists in the follomng principles. First. That vessel in which the powers of steam are to be employed to work the engine, whicli is called the cylinder in common fire-engines, and which I call the steam-vessel, must, during the whole time the engine is at work, be kept as hot as the steam that enters it. (1) By enclosing BOULTON AND WaTT V. BULL. 71 it ill a case of wood or other materials that transmit heat slowly ; (2) by surrounding it with steam or other heated bodies ; (3) by suffering neither water nor any other substance colder than steam to enter or touch it dimng that time. Secondly. In those engines that are to be worked wholly or partially by condensation of steam, the steam is to be condensed in vessels distinct from the cylinders, though occasionally communicating with them. These vessels I call condoisers, and whilst the engines are working they ought to be kept as cool as the air in the neighbourhood by the application of water or other cold bodies. Thirdlij. "Whatever air or other elastic vapour is not condensed by the cold of the con- denser, and may impede the working of the engine, is to be drawn out of the steam- vessels or condensers by means of pumps wrought by the engines themselves or otherwise." There was no drawing annexed to the specification, nor was there any separate claim. At the trial, it appeared that the title of the Act of Parliament for extending Watt's patent, was " An Act for vesting in James Watt, engineer, &c., the sole use and property of certain steam- engines, commonly called fire-engines, of his invention," &c. The jury found that the specification was sufiicient to enable a mechanic acquainted with fire-engines to construct an engine capable of producing the effect of lessening the consumption of fuel and steam upon the principle invented by Watt. Verdict for plaintiffs, subject to a case stated for the opinion of the Court of Common Pleas. The questions for the opinion of the Court were — (1) Whether the patent was good in law, and continued by the Act of Parliament above mentioned ; (2) AVhether the above specification of plaintiif, James Watt, was, in point of law, sufficient to support the patent. The main objection was that the patent was for a principle. The Court was divided, and no judgment was given. Eyre, C.J., and Pooke, J., supported the patent, but Heath and Buller, JJ., were of opinion that there ought to be judgment for defendant. During the argument Dollond''s patent for rendering the object- glasses of telescopes achromatic was referred to, and Buller, J., said : — " The objection to DoUoiuVs patent was, that he was not the inventor of the new method of making object-glasses, but that Dr. Hall had made the same cliscoveiy before him. But it was holden, that as Dr. Hall had confined it to his closet, and the public were not acquainted with it, Dollond was to be considered as the inventor." Fer EooKE, J. — As to the objection of the want of a drawing or Dav. P. C. p. 188. 72 BOULTON AND WaTT V. BULL. model, that at first struck me as of great weight. But I have satisfied mj mind thus : infringement or not is a question for the jiuy ; in order to decide this case they must understand the nature of the improvement or thing infringed. If they can understand it ■v^'ithout a model I am not aware of any rule of law which requires a model or drawing to be set forth, or which makes void an in- telligible specification of a mechanical improvement merely because no drawing or model is annexed. Dav. P. C. Per BuLLER, J. — The very statement of what a principle is ^* ' proves it not to be a ground for a patent. It is a first ground and rule for arts and sciences, or, in other words, the elements and rudiments of them. A patent must be for some new production from those elements, and not for the elements themselves. Dav. P. C. This brings us to the true foundation of all patents, which must P" ^^^' be the manufacture itself, and so says the statute (21 Jac. I. c, 3). "Wliether the manufacture be with or without principle, produced by accident or by art, is immaterial. In most of the instances of the different patents mentioned by my brother Adair, the patent was for the manufacture, and the specification rightly stated the method by which the manufacture was made ; but none of them go the length of proving that a method of doing a thing, without the thing being done, or actually reduced into practice, is a good foundation for a patent. Per Eyre, C.J. — It was admitted in the argument at the bar that the word '■'■ manufacture'^ in the statute (21 Jac. I. c. 3) was of extensive signification, that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice. Let us j)ursue this admission. Under things made we may class, in the first place, new compositions of tilings, such as manufactures in the most ordinary sense of the word ; secondly, all mechanical inventions, whether to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making we may class all new artificial manners of operating ^vith the hand, or with instrmnents in common use, new processes in any art producing effects useful to the public. In the list of patents with which I have been furnished there are several for new methods of manufacturing articles in common use, where the sole merit and the whole effect produced are the sa-sdng of time and expense, and thereby lowering the price of the article and introducing it into more general use. Now, I think these methods may be said to be new manufactures. BOULTON AND WaTT V. BuLL. 73 An improper use of tlie word ^^ jviiiciple" in the specification set Dav. P. C. forth in this case has, I think, served to puzzle it. Undoubtedly ^' there can be no patent for a mere principle : but for a principle so far embodied and connected with corporeal substances as to be in a condition to act and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent. Now this is, in my judgment, the thing for which the patent stated in the case was granted, and this is what the specification describes, though it miscalls it a principle. It is not that the patentee has conceived an abstract notion that the consumption of steam in fire-engines may be lessened, but he has discovered a practical manner of doing it, and for that practical manner of doing it he has taken his patent .... If upon the true construction of the statute there may be a patent for a new method of manufacturing or conducting chemical processes, or of working machinery so as to produce new and useful effects, then I am warranted to conclude that this patent was in its original creation good. The substance of the invention is a discovery that the condensing the steam out of the cylinder, and protecting the cylinder from the external air, and keeping it hot to the degree of steam heat, will lessen the consumption of steam. This is no abstract principle, it is in its very statement clothed with practical application ; it points out what is to be done in order to lessen the consumption of steam. It can hardly be supposed that a workman capable of constructing a fire-engine would not be capable of making such additions to it as should be necessary to enable him to execute that which the specification reqiiires him to do. This difficulty is put an end to, because the jmy have found that a workman can execute the improvement in consequence of the specification. Some machinery, it is true, must be employed, but the machinery is not of the essence of the invention, but incidental to it. Supposing the difiiculty upon the patent itself and the specifica- tion to be got over, the Act of Parliament remains to be considered. The objection, stated in the strongest manner, would amount to this, that the Act continues a patent for a machine when, in fact, the patent is for a process. The specification calls a method of lessening the consmnption of steam in fire-engines a jjruiciple, which it is not ; the Act calls it an engine, which perhaps also it is not ; but both the specification and statute are referable to the same thing, and when they are taken with their correlative are perfectly intelligible. Upon the wider ground I am therefore of opinion that the Act has continued this patent. p. liO. 74 BouLTOx AND Watt V. Bull. A narrower ground was taken in the argument, wliioli was to expound tlie word " engine" in the body of this act, in opposition to the title of it, to mean a method : and I am ready to say, I would resort to that ground, if necessary, in order to support the patent, ut res magis vnleat qnam pereat. 3 Ves. Upon motion. Lord Loughborough, L.C, directed another action at law, and refused to dissolve the injunction, or to impose any terms in bringing the action, saying : — " I cannot put the patentees upon the acceptance of terms that, upon collateral reasons, they think may be disadvantageous to the exercise of the right of ichich thcij are in full possession; neither can I put them out of possession upon the difference of opinion of the Coiui. It is of notoriety that this fire-engine has been erected in many parts of the country with great advantage." For the second action, see Hornhlower v. Boulton (8 T. R. 95). BOYILL V. MOOEE. [A.D. 1815—16. 2 Coop. Ch. Ca. 56 ; Dav. P. C. 361 ; 2 Marsh. E. 211.] Inspection of Macliinery — Sufficiency of Specification — Obligation in Specifying — An Improvement must be distinguished — A Patent for a new com- bination of oldi^arts is valid. Suit to restrain from infringing a patent of 24th April, 1811, No. 3,434, to J. Brown, for " a machine for the manufacture of bobbin lace or twist net." Order for a trial at law and an inspection. Per Lord Eldox, L.C. — There is no use in this Coui't directing an action to be brought, if it does not possess the power to have the action properly tried. The manufactory of the defendant is carried on in secret The e\ddence of the piracy at present, is the bobbin lace made by the defendant. The witnesses say that this lace must have been manufactured by the plaintiff's machine, or by a machine similar to it in principle. This is ob\'iously, in a great measure, conjecture. No Court can be content Avith evidence of this description. There must be an order that plaintiff's Avitnesses shall be permitted, before the trial of the action, to inspect the defendant's machine, and to see it work. C. Action at law in pursuance of the order of the Com't. Plea : Not guilty. Issue. The patent related to a method of interlacing and twisting the longitudinal or warp threads, and the diagonal or bobbin threads in lace weaving. The specification stated : — " My invention consists, as represented by the drawings hereto annexed, and as BoviLL V. Moore. 75 hereinafter described." Then followed a description of the entire machine. There was no separate claim. At the trial, it appeared that np to the point at which the bobbin in Bronii's machines travelled round a longitudinal thi'ead to form the twist, the operation was the same as that in previous machines, but beyond that point it was different. It was therefore contended that the patent should have been for an improvement only, and not for the entire machine. It fm-ther appeared that a contrivance used in the patented machine for preventing entangle- ment of the threads had not been described in the specification. GriBBS, C. J., directed the jury : — In point of law, it is necessary that the plaintiff should prove that this is a new and useful invention, in order to entitle himself to the present action, — that, I think, he has satisfactorily done. The next question is, whether the specification woidd enable a workman of common skill to make the machine. Upon the evidence adduced to you, I think there is no doubt it would. There is another consideration respecting the specification, which is also a material one, and that is, whether the patentee has given a full specification of his invention, not only one that will enable a workman to construct a machine answering to the patent, but one that will enable a workman to construct a machine answerable to the patent to the extent most beneficial within the knowledge of the patentee at the time. If Mr. Broicn, since he obtained his patent, has discovered an improvement, he may apply that improvement, and his patent will not be affected by his using his own machine in that improved state ; but if at the time when he obtained his patent he was apprised of this more beneficial mode of working, and did not by his specification communicate this more beneficial mode of working to the public, that will have been a fraudulent concealment from the public, and that will render his patent void. If you think that he has invented an engine which consists of a perfectly new con- formation of parts, though all the parts were used before, yet he will be entitled to support his patent for a new machine. If a combination of a certain number of parts existed up to a given point before, and Mr. B)vicn's invention sprung from that point, and added other combinations to it, then I think his specification, stating the whole machine as his invention, is bad. You will say, first, whether you think there is any fraudident concealment in the specification, and next, if there was not, whether you think he has, in his specification, described an invention to a greater extent than 2 Marsh p. 211. p. 214. 76 BoviLL V. Moore. the proof goes to establisli. If lie inadvertently did not state tlie whole in his specification, he must answer for his inadvertence ; but it might he a subsequent discovery. The jury found, that the combination of the parts up to the crossing of the threads was not new. Yerdict for defendant. Eule for a new trial refused by the Court of Common Pleas. (Gibbs, C.J., Dallas, Park, JJ.) Marsh. Per Dallas, J. — As to the law, it is quite clear that if the invention set up be an addition, the patent must be for that addition only, as in the case of the invention of a particular movement of a watch. Per Park, J. — The law was most fully and most correctly laid down to the jiuy by his Lordship. Nor is this new doctrine ; for in Pe.v V. Pise (Bull. N. P. 76), Mr. Justice Buller held that the patent must not be more extensive than the invention, and, there- fore, that, if the invention consisted of an addition or improvement only, a patent for the whole machine was void. BoviLL V. Pimm and Rands. [a.d. 1856. 11 Ex. E. 718.] Novelty of Invention — Construction of Specification — Evidence of Infringement. Case for the infringement of a patent of 18th Aug. 1846, No. 11,342, to G. II. BovilJ, for "improvements in manufactm'ing wheat and other grain into meal and flom\" Pleas : 2. That plaintiff was not the true and first inventor. 3. That the invention was not a new manufacture. 4. That the specification was insuffi- cient. 5. Not guilty. Issue. The patent related to the use of a blast of air thi'OAMi between millstones in grinding fiom-. In the old system of grinding wheat between millstones, a large quantity of the finest flour was produced on first crushing the grain ; but this flour did not at once pass away, and was, in fact, continually reground with the unreduced particles before it was discharged at the edge of the running stone. It followed, not only that the flom* was overground, but also that it became heated to such an extent that its cpiality was deteriorated. The patentee closed the eye of the running stone, and sent a blast of air, under pressure, into the cavity at the centre of the stones ; this blast passed thi"ough the space between the stones and carried away all the finest particles of meal as soon as they were formed. Thus the stones performed their legitimate function of grinding only the unreduced particles, the grist being discharged in a cool state and ready for immediate dressing. The specifi- BoviLL V. Pimm and Rands. 77 cation sliowed tlie method of closing tlie eye of the running stone by a plate of iron or leather, and of introducing a blast of air into the central cavity. Another mode of carrying out the invention was also described, which consisted in the application of a set of ventilating screw vanes, placed in an air chest at the centre of the running stone, and sucking down a current of air for sustaining a similar blast. The wheat, as well as a quantity of air, passed through the ven- tilating screw, which virtually replaced the separate plate and blower used in the primary combination. If preferred, the ven- tilator might be placed in the bed stone. Claims : 1. Closing the eye of the running stone, and combining therewith a blast of air, above the pressure of the atmosphere, at or near the centres of millstones, so that the ^Dressure of the air is sustained to carry out the meal from between the grinding surfaces, as produced. 2. The application of ventilating screws or vanes for blowing and sustaining the necessary blast of air between the grindnig sm-faces of millstones, as herein described. At the trial, defendants put in evidence the specification of a patent of 30th Ajn-il, 1844, No. 10,165, to E. Gordon, for a like invention. Here a blast of air was set up by a revolving fan, and the current was discharged at the eye of the bed-stone. The eye, however, was not closed. The alleged infringement consisted in the use of an apparatus constructed according to a patent of 19th Bee. 1851, No. 13,867, to C. Rands, who left a circidar chamber in the centre of the stones, and placed therein a revolving fan with radial arms, which forced a blast of air from the centre outwards. Pollock, C.B., directed a verdict for plaintiff on all issues except the 5th ; on that for defendants. Leave reserved. Eule nisi to enter a verdict for plaintiff on the 5th issue dis- charged by the Court of Exchecpier ; and rule for a new trial, on the ground that the verdict was against the evidence, suspended till the result of an appeal (if any) was kno\vn. Per Pollock, C.B. — After this patent of Gordon, no one could ii Ex. R. claim exclusively the use of a fan (and certainly not the fan used ^' ' by Gordon, creating currents of air perpendicular to the axis of the fan in motion), or the introduction of a current of air (above the pressure of the atmosphere) at the eye of a millstone by means of such a fan. The next patent is that of the plaintiff and an attempt was made to show that the first part had been infringed. 78 BoviLL V. Pimm and Rands. It was argued by the plaintiff's counsel that the first part of the plaintiff's invention was performed by the second, and that the ventilating screw, by dri^dng the air in one direction, viz., inwards, and thereby preventing it from escaping, was, in fact, " a closing of the eye," We think it is really an abuse of language to call what is done in the second part of the invention a " closing of the eye," because the air is compelled to go in one direction only ; but the claim to close the eye in the plaintiff's specification must be understood to mean closing it actHalhf, physically, and in the manner shown in the dra^dng ; and if it be said that the first claim in the plaintiff's specification as to " closing the eye," does not refer to the drawing, and may therefore include closing the eye (if in any sense that can be called closing), the answer is, that Gordon has done that before ; his current of air as much closed the eye as Bovill's, and the patent would therefore be void for claiming an invention already published by another. The question then remains, is the invention of the defendant Bands within the second part of the patent and specification of the plaintiff ? . . . and we are of opinion that it is not. 11 Ex. E. It appears to us that, where a suliject is not new, as this certainly was not, viz., "the cooling of substances undergoing the process of grinding," (which had been long known to be a desideratum in grinding, and to effect which various contrivances had been adopted, and several, if not many, patents had been taken out), any patent taken out for a method of performing the operation is substantially confined to that method, and cannot be extended to other methods obviously different, because they involve some common principle applied to the common object, and may apparently be described by the same general phrase. Boi'iWs invention can be described, no doubt, in terms so vague and general as to include Bands s method, but then, also, it would include Gordon's, v>'hose patent was taken out some years before. We think that the patents, as they appear before us, are respectively independent original improvements. ] 1 Ex. R. "WTe think the claim of invention in the action must be considered as the claim which the plaintiff is legally entitled to make ; and then the question between the parties arises on the plea of not guilty, -which also raises the question as to the extent of the Queen's grant to the plaintiff, and to what extent that goes and how much it embraces ; in other words, what is the true meaning and con- struction of the specification ? We think this is a question of law where the facts are not disputed. If the verdict be entered for the plaintiff by the Court of Appeal, p. 740. BoviLL V. Pimm and Rands. 79 then tlie rule for a new trial will Ijg made absolute, but in tbe meantime it must stand over. BoviLL V. Keywoeth and Seely. [a.d. 1857. 7 E. & B. 725.] Suhjed-matter of a Patent — Sufficiency of Specification — Evidence of Infringement. Case for tlie infringement of a patent [in part disclaimed) of 5tb June, 1849, No. 12,636, to G. II. Boril/, for " improvements in mannfactiu-ing wheat and other grain into flom\" Pleas: 1. Not guilty. 4. That the invention was not a new manufacture. 6. That the specification was insufficient. Issue. The patent related to an improvement of great value to millers, which consisted in the combination of a blast of air between the millstones used in grinding corn, with an exhausting apparatus attached to the chamber in which the stones were enclosed. The exhaust-pipe carried away the dust or stive into a separate chamber, where the same was deposited, and the finely-ground flour fell into its proper receptacle. The top stone was fixed, and the lower one rotated. The specification stated : — " I introduce a pipe to the mill-' stone case from a fan or other exhausting machine, so as to carry off all the warm dusty air blo^^^l through between the stones to a chamber. And this part of my invention relates only to sucking away ihe j^lenum of dusty air forced through the stones, and not to employing a sufiicient exhausting power to induce a ciu'rent of air between the millstones, without the blast, this ha^ang been before practised." Claims (as amended by disclaimer) : 1. Pixing the top stone, and causing eiu-rents of air either by exhaustion or pressure to pass between the grinding sm-f aces of millstones when the top stone is so fixed, and the introduction of the ventilating pipes in the stones, as herein described. 2. Exhausting the dusty air, when the same has been blown through the grinding siu-faces of the millstones, from the cases or chambers receiving the meal as herein described. At the trial, it appeared that the alleged infringement consisted in the use of apparatus similar to that specified, except that the lower stone was fixed, and the upper one rotated. Defendants gave in evidence the specification of a patent of 11th Feb. 1846, No. 11,084, to A. V. Newton, for cba-wing a current of air between the stones by an exhausting apparatus. Yerdict for plaintiff. p. 735 80 BoviLL V. Keywoeth and Seely. Rule nisi to enter a verdict for defendants or for a new trial discharged by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, Wightman, Erie, JJ.) E.^& E. J^cr Lord Campbell, C.J. — The whole of the plaintiff's process, if the combination be new, is certainly the subject of a patent ; and so woidd the part (No. 2) be, if taken separately, for " exhausting the air from the cases of millstones, combined with the appKcation of a blast to the grinding sui'faces," as they introduce very important " improvements in manufacturing wheat and other grain into meal and flour." The combination of the exhaust with the blast so as to carry off the warm dusty air blown througli between the stones to a chamber above, while the pure flour, in a dry con- dition, without the stive, descended into a chamber below, added to the quantity and imj^roved the quality of the flour produced in grinding. Still, if the specification does not point out the mode by which this part of the process is to be conducted, so as to accomplish the object in view, it would be the statement of a principle only, and the patent would be invalid. But we are of opinion that the s]3ecification, on the face of it, cannot (as contended) be pronounced, in point of law, to be bad in this respect, and that the e\ddence adduced at the trial shows it to be quite suflicient. The specification says : — " In can-ying out the second part of my invention when working mill- stones with a blast of air, I introduce a pipe to the millstone case from a fan or other exhausting machine, so as to carry off all the warm dusty air blown through between the stones to a chamber, as hereafter described. And this part of my invention relates only to sucking away the plotum of dusty air forced through the stones, and not to employing a sufficient exhausting power to induce a ciuTent of air between the millstones without a blast." The exhaust produced by the pipe or fan is to be proportioned to the p/ciiuni caused by the blast, care being taken not to introduce the incon- venient current of air, against which a caution is given. How can a judge take upon himself to say that this may not be enough to enable a workman of competent skill to construct the machinery ? According to the evidence, the specification was abundantly sufficient for this purpose. The plaintiff contends that his patent, as explained by the speci- fication, was originally for four sej^arate and independent inventions, and that No. 2, in the amended specification, must be considered a separate and independent invention as if the patent had been granted for this alone. Tlie defendants contend, on the contrary, BOYILL V. KeYWORTII AND SeELY. 81 that the patent was granted for one process comprising several suc- cessive and connected parts, the use of fixed upper millstones being one of them. We do not think it necessary to give any positive opinion upon this question, for, su.pposing the patent to he for a combination, consisting of several parts for one process, we are of opinion that the defendants are liable in this action for having used a material part of the process which was new for the same purpose as that mentioned in the specification, although they did not at the same time use all the parts of the process specified. The defendants admit that they used the part of the process (No. 2) as described in the specification ; and they rest their defence on the fact that they did so only in a mill with a rotating upper millstone. But if the fixed upper millstone Avere clearly described by the plaintiif, in the statement and diagram to be found in his specification, as part of the combination for which he took out his patent, as No. 2 is a material part of the combination and was new, we are of opinion that they cannot lawfully use No. 2 for the same purpose by substituting a rotating upper millstone for a fixed upper millstone, or by resorting to any other equivalent for any other separate part of the process specified. This case seems to us to be governed by Lister v. Leather (8 E. & B. 1004), and therefore there ought to be judgment for the plaintiff. BoviLL V. Hadley. [A.D. 1864. 17 C. B., N. S. 435.] Practice as to Certificate for Costs. Case for the infringement of the same patent (extended for five years). At the trial a compromise was made upon terms that there should be a verdict for 40.s., and costs, in'fh all mual certificates. The certificate of the judge, under stat. 15 & 16 Vict. c. 83, sect. 43, given in a former trial of Bovill v. Kcijicorth, was then handed in to Erie, C.J., who endorsed on the record a certificate whereby plaintiff became entitled to full costs. Eule nisi to deprive plaintiff of full costs made absolute by the Court of Common Pleas. (Erie, C. J., Williams, Willes, Byles, JJ.) Per WiLLES, J. — The compromise put an end to the ease. The plaintiff could not have full costs under stat. 15 & 16 Yict. c. 83, sect. 43, without iDutting the record and the certificate in the foimer action in evidence. G 2 p. 195 ( 82 ) BOYILL V. GOODIER. [A.D. 1865—67. L. E., 1 Eq. 35; L. E., 2 Eq. 195; 35 L. J., Ch. 174, 432; 36 L. J., Ch. 360.] Practice in Patent Suits — Issues — Novelty of Invention — Prior Publication — Amendment of Particulars of Objection. Siiit to restrain from infringing the same patent (extended for five years) . The answer raised the questions of novelty, prior user, sufficiency of specification, and infringement; hut the Court refused to direct issues. Eephcation filed, when plaintiff applied for par- ticidars of objections to he relied on at the hearing. Eomilly, M.R., refused the application, and said that this decision must not he taken to aj^ply to cases where issues had heen granted ; in such cases he had himself ordered particulars of objections to he fui'nished. Eq.^ Hearing of the suit. . It appeared that after plaintiff had re- covered judgment against Keyivorih, in the previous action, he proceeded against other infringers, all of whom submitted. In 1863, the patent was extended for five years. Defendant now sought to prove the invalidity of the patent by reason of the expiration in 1860 of a certain French patent; but the Court refused to entertain the objection on the ground that it had not been raised by the pleadings. It appeared that three prior French patents, alleged to have anticipated the invention, had been described in a book deposited in the library of the British Museum and sold by a bookseller in London before the date of the patent. These patents were not in evidence in BoviU v. Keyu-orth (7 E. & B. 725). Injunction granted, and issue at law directed as to novelty only ; defendant to deliver, within seven days, particulars of objections to be relied on at the trial of the issue. 2 Eq. Per Lord Bomilly, M.B. — The history of the plaintiff's inven- tion is an instance of the troubles which, in the present state of the law, await a successful inventor. The patent in question was taken out by the plaintiff in June, 1849. Since then he has been engaged in constant and expensive litigation up to 1863, when the patent was prolonged by the Privy Council for five years. This, however, has not produced any termination to the litigation, of which the present suit is an instance. Much of this is incidental to the nature of things. The claim of having made an invention is not to preclude others from using an old process and old machines ; nor ought the fact that one person who has infringed the patent was ignorant of the want of novelty, to preclude another person BOVILL V. GOODIEE. 83 from slioAving that the invention had before been known and "been in use. . . The consequence is that, in almost every instance, the patentee has to establish his case from the beginning against any fresh person who chooses to impugn the patent and to contest its validity. His Lordship here stated his opinion that the French patents differed essentially from that of the plaintiff, and expressed his concurrence with the judgment in Bovill v. Kcyifovth (7 E. & B. 725). He then proceeded :— I am of opinion that I cannot properly compel the defendant to submit to the decision of the Court of Queen's Bench, or to acquiesce in any opinion I may have formed. He was no party to the suit of Bovill v. Keyicorth, he is not bound by the proceedings in that case, and many cases are on record where, after the plaintiff has established the validity of the patent in one case, it has been decided to be invalid in a second. I think myself bound by the authorities to dii-ect an issue to try whether the plaintiff is the first and true inventor of the processes described in his specification. I direct no issue as to the utility of the invention, or as to the sufficiency of the specification. Trial of the issue of novelty in the Common Pleas. New trial 36 L. J. of the same issue, directed by the Master of the Eolls. Defendant ^- ^^°- now applied for leave to deliver fm-ther particulars of prior user and publication of the alleged invention. Order made by Lord Eomilly, M.R., who said :—" The object was that the real facts should be put in issue, and no technical difficulties should be allowed to obstruct this. If any new facts were discovered, they might be brought forward; but not by surprise, and on giving proper notice to the other side. The defendant might deliver new particulars within a fortnight. Costs to be costs in the cause." Bovill v. Crate. [A.D. 1865. L. E., 1 Eq. 388.] Practice tuhere there cire several Infringers— Laches— Interlocutory Injunction refused. Suit to restrain from infringing the same patent (extended for five years). It appeared that plaintiff was aware of the infringe- ment in August, 1864, but did not file a bill until July, 1865. Also that eighty-nine persons had combined together for the purpose of infringing plaintiff's patent. Interlocutory injunction refused on the ground of delay. Account ordered. The costs to be costs in the cause. G 2 84 BoviLL V. Crate. 1 Eq. Fcv Wood, Y.C. — I do not think the plaintiff is put in so great ^" ■ a difficulty as he alleges with reference to filing bills. He might take this course : — After getting information of case after case of infiingement, he miglit select that which he thought the best in order to try the question fairly, and proceed in that case to obtain his interlocutory injunction. He might write at the same time to all the others who were hi siinili casii, and say to them : "Are you willing to take this as a notice to you that the present case is to determine yours : Otherwise, I shall proceed against you by way of interlocutory injunction ; and if you do not object on the ground of delay, I do not mean to file bills against all of you at once. Am I to understand that you make no objection of that kind ? If you do not object, I shall file a bill against only one of you." I do not think any Court could complain of a patentee for taking the course I am suggesting. BoviLL V. Smith. [a.d. 1866. L. E., 2 Eq. 459.] Practice in Patent Suits — Discovery. Suit to restrain from infringing the same patent (extended for five years). The bill stated a variety of proceedings, both at law and in equity, in which plaintiff had obtained perpetual injunctions and recovered damages against infringers, and charged that the defences as to prior user and failure of novelty relied on by defend- ant were identical with some of those already disproved, as woidd appear if discovery were made. Accordingly, plaintiff inteiTogated defendant as follows : — 1. Who does defendant allege to have been the true and first inventor ? 2. "When, where, and in what manner does defendant allege that plaintiff's invention, or any part thereof, was publicly used before the date of the patent ? Defendant de- clined to answer fully, and plaintiff excepted. 2 Eq. Wood, Y.C, overruled the exceptions, and said that the plaintiff ^'' ' was not entitled to inquire generally into the way in which the defendant shaped his case, though he might have asked if his process was the same as that used by A. B., or any one person specifically named, who had been a defendant in some former suit. BoviLL V. Hitchcock. [A.D. 1868. L. E., 3 Ch. 417; 37 L. J., Cli. 223.] Practice as to Trial by Jury in Patent Suits. Suit to restrain from infringing the same patent (extended for five years). Application, that certain questions of fact might be BoviLL V. Hitchcock. 85 tried by the Court witli a special jury, refused by Lord Eomilly, M.R. On appeal to the Lords' Justices, decision affirmed. Fer Lord Caikns, L. J. — If the Court thinks it best that a ques- tion should be tried before a jury, a jury can be had ; but if, in the opinion of the Court, a trial without a jury is preferable, neither party can claim a jiuy as a matter of right. BoVILL AND AnOTHEE V. FiNCH. [A.D. 1870. L. E., 5 0. P. 523 ; 39 L. J., C. P. 277.] DivisiUUtij of Qrant of Patent after Prolongation. Case for the infringement of the same patent (prolonged for five years) . The declaration stated the grant of the patent for England in June, 1849, the prolongation of the term, and the filing of a disclaimer. Pleas : 14. As to the infringement after prolongation, averring the grant and expiration of separate patents for England, Scotland, and Ireland, the prolongation by new letters patent, and that the letters patent for Scotland were and always had been void by reason of prior public user in Scotland* 15. A similar plea alleging that the Scotch patent was void on account of prior user in England. DemmTcr, and joinder. Judgment for plaintiffs by the Court of Common Pleas. (Keating, Montague Smith, Brett, JJ.) Per Montague Smith, J. — The new letters patent set out in the 5 C. P. plea recite the three separate original grants for England, Scotland, and Ireland respectively ; and it thus appears that the original English letters patent were granted in June, 1849, and the Scotch and Irish in Mai/, 1853. The plea does not aver that the public user in Scotland was before the date of the original English patent, nor does it in any way impeach the validity of that patent. It must be taken, for the purpose of the demurrer, that the original Scotch patent is bad for want of novelty, and the question raised is, whether the prolongation of the three original tenns, which is contained in one and the same letters patent mider the Great Seal of the United Kingdom, is void altogether as to all three countries, by reason of such prolongation being so contained in the same letters patent, or whether the grant is divisible, and may be sustained so far as it extends the term of the English patent. It has no doubt been decided that letters patent are wholly void where part of the invention claimed is not new, on the principle * By the operation of stats. 15 & 16 Viot. cap. 83, and IG & 17 Vict. cap. 115, sect. 7, the new letters patent were i^ealed with the Great Seal of the United King- dom, and had effect throughout Scotland and Ireland. 80 BoYiLL AND Another v. Finch. stated by Pakke, B., in Morgan v. Seaicard (2 M. & W. 544), viz., tliat " the consideration for the grant is the novelty of all ; and the consideration failing, or, in other words, the Cro^vn being deceived in its grant, the patent is void." See also Hill v. Thompson [2 Taunt. 375), Brunton v. Hatches (4 B. & Aid. 541). The distinction between these decisions and the present case is, tliat in them the want of novelty in a part of the invention affected the grants throughout their whole territorial limit ; whereas in the present case it only affects the grant so far as Scotland is concerned. We do not, however, deem it necessary to decide what would be the effect of tlie want of novelty in one kingdom in the case of an original grant for the three kingdoms under one seal, because we think this grant of an extended term in the three original patents is di\dsible. We think, notwithstanding, that the new letters patent are in one instrument, they ought to be regarded as granting three separate prolongations of three distinct patents ; and that as a con- sequence, although the prolongation may be invalid as to the Scotch grant, by reason of the want of novelty in Scotland at the time of the original letters patent, it may be good as to tlie English grant ; or, in other words, that the grant for each country may stand or fall by itself. There being nothing to show any want of novelty, or other failure of consideration for the j^rolongation of the term of the English patent, or that the Cro"\vn was deceived in any way as to that patent, we think the judgment on this demurrer should be for the plaintiffs. Bowman v. Taylor and Others. [a.d. 1834. 2 Ad. & E. 278; 4 L. J., K B. 58 ; 1 Webs. E. 292.] Estoppel of Licensee. Covenant. The declaration, after setting out so much of the recitals in the deed as stated that plaintiff had invented certain im- provements in looms, and had obtained letters patent for the same, stated that plaintiff had agreed with defendants to let them use the said invention on certain terms. Pleas : 1. Setting out the patent, and averring that the invention was not new. 2. That plaintiff was not the true and first inventor. 3. That no sufficient sjiecifi- cation was enrolled, whereby the patent became, and was at the time of making the indenture, void and determined. Demurrer, and joinder. Judgment for plaintiff by the Court of King's Bench. (Lord Denman, C.J., Taunton, Patteson, Williams, JJ.) Bowman v. Taylor and Others. 87 Fer Lord Dexman, C.J. — The plaintiff contends that these pleas are bad because the defendants are estopped by their deed from pleading them. It is answered, as to the first plea, that it is not inconsistent with the deed ; but we think it is so, and if not, that it is no defence. So, as to the second plea, the answer is the same as that just given. The third plea puts a fact in issue in dii'ect contradiction to the recital of the deed. Bridson v. McAlpine. [A.D. 1845. 8 Beav. 229.] Practice in Patent Suits — Tnjanctivn. Suit to restrain from infringing a patent of 26th Maij, 1838, No. 7,653. Action at law. Verdict for plaintiff, and tender of bill of exceptions. Motion for injunction ordered to stand over until bill of exceptions disposed of. Account in the meantime. Per Lord Laxguale, M.R. — Where an injunction is asked to restrain the infringement of a patent, the Court has occasion to consider : — First, the validity of the patent ; and, secondly, the fact of the infringement. Where those two facts are established, it is within the power, as it is the duty of the Court, to grant the in- junction. There are many cases in which it is not clear either that the patent is legally valid or that it has been infringed. It depends on the degree of doubt which exists on these questions whether the Court wiU grant the interim injunction. In such cases it will cautiously consider the degree of convenience and inconvenience to the parties by granting or not granting the injunction. These things are to be carefully considered : the right between the parties is a legal right, and being a legal right, this Coui't, in cases where the matter is doubtful, is naturally anxious to obtain the decision of a cornet of law, where the matter is properly cognizable, before it interferes to prevent a party exercising his prima facie rights. According to the doubt which may exist in the mind of the Coiu-t upon the facts, and according to the degree of inconvenience to the parties, the Court, not thinking fit to grant the injunction at the time, may take one of several courses : it may either refuse to grant the injimction simply, or it may refuse it on the terms of the party imdertaking to keep an account, or it may direct the motion to stand over, on the terms of the plaintiff proceeding to a trial at law. When it has been determined that the plaintiff must first establish his right at law, the Com't does not generally interfere with the mode of trying the legal question, though in some instances it may requii-e 88 Bridson v. McAlpine. the parties to make the necessary admissions of fact in order to facilitate the trial. . . I must, however, qualify this by saying that in cases of overwhelming mischief the Court has authority to inter- fere at any time. Bridson v. Benecke. [A.D. 1849. 12Beav. 1.] Fradice in Patent Suits — Injunction refused for Belay. Injunction to restrain from infringing the same patent, re- fused on the ground of delay. It appeared that plaintiff discovered the alleged infringement in Jan. 1848, but did not file a bill until 30th Dec. 1848. Per Lord Laxguale, M.E. — I think that a party coming for the assistance of this Court to protect a legal right, not absolutely esta- blished against the party who is alleged to have infringed it, ought to come at an early period. . . The iide of this Court is very strict, that you must apply in proper time. The British Dynamite Co. and Others v. Krebs AND Others. [a.d. 1875 — 79. Not reported.'\ Si'£iciciici/ of Sjjecifcatioii — An appendant Claim to somethin() old icill not vitiate a Patent. Suit for the infringement of a patent of 7th May^ 1867, No. 1,345, granted to W. E. Nenion, for " improvements in explosive com- pounds and in the means of igniting the same." (A communica- tion from abroad by A. Nohel.) The defendants denied the novelty of the invention, and the sufficiency of the specification. The specification stated : This invention relates to the use of nitro-glycerine in an altered condition, which renders it far more practical and safe for use. The altered condition of the nitro- glycerine is effected by causing it to be absorbed in porous im- explosive substances, such as charcoal, silica, paper, or similar materials, whereby it is converted into a powder, which I call ch/namite or Nobel's safety powder. By this absorption of the nitro-glycerine in some porous substances it acquires the property of being in a high degree insensible to shocks, and it can also be burned over fire without exploding. The aforesaid safety powder or dynamite is exploded : — Firat, when under close or resisting confinement, by means of a spark or any mode of ignition used for firing ordinary gimpowder. British Dynamite Co. v. Krebs. 89 Second, without or during confinement by means of a special fulminating cap, containing a strong charge of fulminate, which is adapted to the end of a fuse and is strongly squeezed to the latter for the pm-pose of more effectually confining the charge so as thereby to heighten the effect of the detonation. Third, by means of an additional charge of ordinary gunpowder, the explosion of the latter will cause the dynamite to go off even when it is only partially confined. Claim : I claim, as the invention secured to me by letters patent as aforesaid, the mode herein set forth of manufacturing the safety powder or d}Tiamite herein described, and also the modes of firing the same b}^ special ignition as herein set forth. At the trial it appeared that a silicious earth found in Germauij, and known as laifieignhr, would absorb the liquid nitro-glycerine far better than any other substance, and yet retain its condition of powder. This earth was first calcined and then reduced to powder, after whicli. it formed the principal ingredient used in the manuf ac- tui'e of dynamite. Mr. Orlando Webb, the manager of some slate quarries in Wales, was called on behalf of the plaintiffs, and deposed that he and his workmen had made dynamite from the specification in 1867. That he first absorbed the nitro-glycerine by powdered slate, using the cuttings from the slate machines, but that he found this material not sufficiently absorbent, and he therefore mixed the slate powder with brick dust, when considerably more liquid was taken up. Fry, J., gave judgment for the plaintiffs with costs. On appeal, the Court of Appeal (Jessel, M.R., James, Thesiger, L.JJ.) reversed the order of Fry, J., and dismissed the action with costs. Per Jessel, M.K. — I have said before, and I repeat it, that although, on the one hand, a judge must not be astute to defeat a patent ; on the other hand, he must not extend a patent so as to cover that which was not then discovered. Referring to the specification, his Lordship said : — It is quite clear to my mind that there is nothing there to indicate that the tiling itself is to be reduced into the form of what is ordinarily called a powder, or that it is to be pulverized, because you would not talk of converting a powder into a powder. It does not appear to me that this specification is sufficient, espe- cially when you consider that what was actually used is this, which appears to be a subsequent discovery. As far as the evidence goes, there is a kind of earth called keiseUjuhr — earth composed of the 90 British Dynamite Co. v. Krebs. organic remains of very minute shells or diatomacea?. These minute shells coagulated together make a kind of earth. It is a silicious earth. This silicious earth they seem in practice to calcine and then to reduce into powder, and then they pour the glycerine uj)on it, and that makes the dynamite. I cannot find anything of that kind described here. His Lordship further discussed the specification, and continued : — It was then suggested that, although insufficient, an ordinary workman would coi-rect it, but, as I have said, following in that resjiect many judgments, you must give an ordinary workman something to correct it with. This is a new material and a new invention altogether, and he could only correct it by experiment, and that is not the meaning of a patent. You are not to tell a man to make an experiment, but to tell him how to do the thing. If I take up this patent, I certainly shoidd begin by taking some stick of charcoal. I should no doubt take some form of silica. I should take paper in its ordinary state. I should not take a very highly-glazed paper, because I should laiow that that would not absorb very well, but I should take what is ordinarily called blotting paper or paper that is not highly glazed, and I should try the experiment. It might be that when I found my silica, or my stick of charcoal, or my paper would not produce the result, I might try fmiher experiments, and see that something more was required to be done. I might possibly break up my charcoal, or tear up my paper, or even pound my silica. I do not think I shoidd calcine it ; I should most likely try something else besides flint, and I shoidd say, " That is not the right form of silica ;" but whatever I did woidd be experimental, and not the knowledge of a workman ... It seems to me that on that point the speci- fication is insufficient. Per James, L.J. — I am of opinion that the patentee has not in the specification given any practical direction by which, without experiment, and a good deal of experiment, anybody would have arrived at the residt of taldng up that C[uantity of nitro-glycerine which is the object of the invention, which woidd still be practi- cally explosive and yet be practically safe. He has not, I think, given any directions by which anybody could make what he him- self has made, a material or a thing out of keisehjuhr. I cannot help thinking myself that if, after this article had been patented by Mr. Neidon at the suggestion of Mr. Nohel, somebody else had for the first time found out the real merits of calcined Jiciselgu/tr, and made dynamite out of that, that would not have been in any British Dynamite Co. v. Krebs. 91 sense of the word an infiingment of Mr. Nouion's patent, that would have been as distinct as in that case of the particular oxide of iron which was referred to, namely, in the case of Ililh v. Evans (31 L. J., Ch. 457). It would have been a discovery really of a material, not charcoal, not silica, not paper or any similar material, not a porous unexplosive substance, but it would have been the discovery of a matter so very material that it would not have been an infringement of the patent. However that may be, I am of opinion that the patentee has not here given those directions which he was boimd to give, by which anybody could have made a practical, useful commercial article, and woidd not have been misled by being told the materials out of which, as it appears to me, a i)ractical commercial article could not be made, such as, for instance, silica or paper. Upon that part of the case I agree with the Master of the EoUs that the description is insufficient. I also agree that in this case the patentee, by his specification, has certainly made a very distinct and independent claim, an absolute claim to an invention to a mode of igniting by means of a special fulminating cap, containing a strong charge of fulminate, which is adapted to the end of a fuse, and is strongly squeezed to the latter for the pm-pose of more effectually confining the charge, so as thereby to heighten the effect of the detonation. Whether that is a sufficient description of the invention, it is not necessary to say, but beyond all question " a special fidminating cap containing a strong charge of fidminate, which is adapted to the end of a fuse " was not a novelty at the time this patent was taken out. It appears to me, therefore, that the patent fails upon both those grounds. On appeal to the House of Lords, the order of the Coiu-t of Appeal was reversed, and the order of Fry, J., was restored, with costs to the appellants. Per Earl Cairns, L.C. — In determining whether the specifica- tion is sufficient, the first thing is to ascertain what the invention is. This is a question of construction, and the construction of the specification is for the Court, to be detennined like the construction of any other written instrument, the Comi placing itself in the position of some person acquainted with the siuTOunding circum- stances as to the state of art and manufactm^e at the time, and making itself acquainted with the technical meaning in art or manufactm-e, which any particular word or words may have. 92 British Dynamite Co. v. Krebs. Wlien tlio natiu'e of the invention is thus ascertained by the Court as a matter of construction, the Court has then to enquire whether the manner in which the same is to be performed, is sufficiently described in the specification to the comprehension of any workman of ordinary skill in the particular art or manufacture, and this the Court can best do by the evidence of workmen of that description, and by the evidence of what workmen of that description have actually done under the patent. Now, I cannot doubt that, looking to the description of the invention as separate from the description of the way in which it is to be performed, we have the nature of the invention sufficiently and intelligibly described. The nitro-glycerine is no longer to continue in a liquid or fluid state. It is to be sucked in, taken up, or absorbed by some porous unexplosive substance, and the absorbing substance and the absorbed liquid are thence to be in the form of a powder, which may or may not be kept in a state of confinement as a charge, and which may be ignited in the manner afterwards mentioned. But then, it is said, there is no sufficient description of the manner in which the invention is to be performed ; you are not told, it is said, what quantity of the liquid is to be absorbed. You are not told whether the various absorbing substances will absorb equal or unequal quantities of the liquid. You are not told what quantity is the best to use either of the liquid or of the absorbing substance. You are not told to what extent the pulverization is to be carried. AVith regard to these objections, I should be disposed to say, even were there no evidence in the case, that they did not appear to me to be objections, the force of which I should be prepared to admit. "When you speak of a porous substance absorbing a fluid, if the porous substance is in one piece, you naturally expect that the absorption will continue up to the point when the porous substance can hold no more ; and, when the porous substance is to continue a powder, the act of absorption itself will show the point at which the absorption must stop, lest the absorbing substance shoidd become, not a. powder, but a paste. So also as regards the choice of the porous substance. Ordinary knowledge of the properties of the substance will show what sub- stance will pulverize most conveniently and what substance will absorb best. But it is unnecessary to pursue this further, because the matter is one which must be detennined, as I have already said, by evidence. British Dynamite Co. v. Krebs. 93 Or/roirlo Wehh was a witness called by the appellants. It is admitted, in the case of the respondents, that he may be regarded as a skilled and experienced witness. Orlando Wchb states that in 1867 his attention was drawn to this specification, and that he made dynamite under it. Neither he nor his workmen had any difficulty in making it. He made it first of all with slate dust, that is, with the pulverized slate from the cutting machines. He found it took too large a proportion of slate dust to take up a suffi- cient quantity of dynamite ; on that he tried brick dust, and found that it took up considerably more. The result of using slate and brick dust was this — it produced some very good dynamite. The scientific witnesses called by the appellants speak to the sufficiency, in their opinion, of the directions in the specification ; but what is more material is, that I find no workman whatever, skilled or unskilled, produced on the part of the respondents, who states that he has been or would be misled by the specification, or unable to make dynamite by following its directions. I therefore come to the conclusion that there is no insufficiency in the specification. The second question is as to the extent of the claim . . . The specification concludes thus : — " I claim as the invention secured to me the mode herein set forth of manufacturing the safety powder or dynamite herein described, and also the modes of firing the same by special ignition as herein set forth." I will assume that the modes of firing by special ignition, or some of them, were known before the date of the patent, and therefore that if the patentee claimed them as independent inven- tions (inventions, if I may use the expression, in gross), his claim would be too large and his patent void. But is that Avhat he here does or means to do ? It is to be observed that the mere manufacture of an explosive substance such as dynamite would not per se have constituted an invention, or, at all events, a useful and practical invention which could be protected by a patent. An explosive substance like dynamite would be of little or no utility imless there were the means of bringing to bear upon it a method of detonating explosion which woidd be at once economical and easily applied ... I look upon the means of explosion, even assuming them to be kno-^Ti as applicable to other substances, to be part and parcel of the invention which the patentee was bound to give to the public as a complete invention, and I understand him to claim these means of explosion only as part and parcel of this invention. He does not, as it seems to me, claim the means of explosion in 94 British Dynamite Co. v. Krebs. gro88, but only as appendant to dynamite, and he would not be allowed under this patent to claim them for any other purpose. In other words, he claims in the first claim the dynamite, the substance itself, and in the second claim the only mode of using the dynamite mth which he was at the time acquainted. It is possible that, having stated the means by which the d}Tiamite could be exploded, he might have omitted his second claim and contented himself ^dth the first. But the second being, as it seems to me, merely a claim to the user of that which is included in the first, I cannot think that the patent should be avoided by the introduction of that which is merely useless. Brook v. Aston. [a.d. 1857. 8 E. & B. 478; 27 L. J., Q. B. 145; 28 L. J., Q. B. 175.] Suhjed-matter of a Patent — New use of an old Machine. Case for the infringement of a patent of 23rd Feb. 1856, No. 473, to C. Brook and J. Hirst, for "improvements in finishing yarns of wool or hair, and in the finishing of woven fabrics." Pleas : 3. That the invention was not new. 4. That it was not the working or making of any manufactm-e for which letters patent coidd by law be granted. Issue. The specification stated: — "This invention has for its object an improvement in finishing yarns of wool or hair, and consists in causing >/arns of wool or hair, whilst distended and kept separate, to be subjected to the action of rotatory beaters or biu'nishers, by which such yarns will be burnished or polished on all sides." Then followed a description and drawings of the machinery, sho^^dng the manner in which the threads were distended and kept separate, and were passed over a revolving circular brush, on their way to some rapidly-revolving beaters or burnishers, which gave smoothness to their surface. Claim : 1. " Causing yarns of wool or hair, whilst distended and kept separate to be subjected to the action of rotatory beaters or burnishers, whereby the fibre is closed and strengthened, and the surface effectually polished." At the trial, defendant put in evidence the specification of a patent (in pai-t disclaimed) of 25th Nov. 1853, No. 2,745, to ?F. L. Brook and C. Brook, for certain improvements in finishing cotton and linen yarns, and in the machinery connected there- with. The specification stated — " Our improvements relate, first, to a method of finishing cotton and linen yarns by the appli- cation of friction, produced by a peculiar combination of hori- Brook v. Aston. 95 zontal bruslies with revolving beaters or burnishers, the yams being extended from end to end, instead of being dressed in the hank or skein, by which means a more perfect adhesion of the fibre mth smoothness and a glace effect is produced. The yams or threads are wound upon a roller at one end of the machine, and pass through the operation of sizeing, as in common use, and thence to the finishing end of the machine." Lord Campbell, C. J., left the case to the jury. Yerdict for plaintiff. Leave reserved. Eule nisi to enter a nonsuit, on the ground that the invention was not new, and was not the subject of a patent, made absolute by the Com-t of Queen's Bench. (Lord Campbell, C.J., Coleridge, Wightman, JJ.) Per Lord Campbell, C.J. — It may well be that a patent may be 8 E. & B. valid for the application of an old invention to a new purpose ; but to make it valid, there must be some novelty in the application. Here there is none at all. We may suppose that the specification of 1853, instead of extending to cotton and linen yarns, had been confined to cotton yams only. Could, in that case, a new patent have been supported for applying the same process precisely to linen threads? It is clear it could not. In all the cases in which a patent has been supported, there has been some discovery, some invention. It has not been, as in this case, merely the application of the old machinery, in the old manner, to an analogous substance. That cannot be the subject of a patent ; and this patent claiming it is void. Per Coleridge, J. — I am of the same opinion. It is admitted tliat the mere application of old machinery is not the subject of a patent. We must, therefore, look to the specification to see what novelty is claimed. Beading the plaintiff's claim, and then reading the former specification, we find the processes the same in principle and detail. The threads are kept separate, and are operated on in the same way; the only difference being that one is appHed to cotton and linen only, and the other to wool and hair. Error brought in the Coiu't of Exchequer Chamber. (Cockbiu-n, 28 L. J., C.J., Williams, Crowder, Willes, JJ., Martin, Bramwell, Watson, ^-fj.^^ Channell, BB.) Judgment affirmed. Per CocKBURN, C.J. — Our duty is to look to the two specifications, and, construing them in the best manner, to see whether the second involves any infringement of the first. I am of opinion that it does. The second patent includes every material portion of that which was the subj ect-matter of the first. Mr. Bovill has argued on the assmnp- tion that the sizeing process, which is omitted in the second patent, 96 Brook v. Aston. was an essential part of the first. But I cannot look upon it in that light. . . . There is a filace appearance produced on the linen and not on the wool. But the main purpose, which is to give strength to the matter operated on, is the same in both. . . The polish is no essential part of the patent. Per Martin, B. — The question is, whether there was any e"sddence to go to the jury at the end of the plaintiff's case. ... I quite conciu' in the judgment of the Court of Common Pleas in The Patent Bottle Envelope Company v. Sci/mer (28 L. J., C. P. 2^), that the application of a well-known tool to work previously untried materials, or to produce new forms, is not the subject of a patent. When a machine is well kno\\ai it becomes, in fact, a tool. I am therefore of opinion that the application of this machinery to woollen yarn is not the subject of a patent. Per WiLLEs, J. — I am of the same opinion. The machinery is admitted to be the same in the two patents ; the thing operated upon in each is the same or similar, the one being vegetable, the other animal fibre. The modus operandi is the same, namely, by friction, and the result aimed at is the same — the improvement of the thread or yarn, to be produced by the friction of the brushes or beaters. The two patents are, in my opinion, for similar, if not for identical purposes. Per Bramwell, B. — The two specifications are substantially identical. Doing to wool identically the same thing which has been done to linen or cotton is not, in my opinion, a new manufacture. Brown v. Annandale & Son. [A.D. 1842. 1 Webs. E. 433.] Scotch Patent invalidated hij inior Pnhlic User in England. Appeal to the House of Lords from the Coiut of Session of Scotland. The appellant (the pursuer in the Court below) had obtained letters patent in Scotland for improvements in the manufactm-e of paper, and he instituted proceedings against the respondents (the defenders in the Court below) for infringement of the patent. At the trial. Lord Mackenzie admitted evidence to prove prior public user of the invention in England. Verdict for the defenders. Bill of exceptions as to the admissibility of evidence of prior public user in England disallowed by the Coui't of Session. Interlocutor of Court of Session affirmed, and appeal dismissed with costs. Brown v. Annandale & Son. 97 Per Lord Brougham. — The case of Roehuclc v. Stirling (1 Webs. E. 451, n.), appears to me perfectly to decide this case. The Court of Session had dismissed the suit, hecanso it appeared that the process in question was known to and practised by different persons in England This House adjudged, " That the inter- locutors complained of be affirmed, for other reasons as well as the reasons specified therein." Per Lord Campbell. — I entirely concur in the decision ; I think it is perfectly right ; and, if it has been res Integra, I should have so decided. . . . My opinion is, that the law was quite correctly Laid do^Ti by this House in the year 1774. Brunton V. Hawkes. [A.D. 1820—21. 4 B. & Aid. 541.] Failure of Novelty in part of an Invention renders a Patent void. Case for the infringement of a patent of 26th March, 1813, No. 3,671, to T. Brunton, for " improvements in the manufactui-e of ships' anchors, windlasses and chain cables." Plea : Not guilty. Issue. The patent related to three separate improvements. 1. Ships' anchors. — Heretofore each arm of an anchor had been separately welded to the shank. The specification described a different manufacture. The two arms were formed in one piece, having a conical opening in the centre, through which the shank was passed, the coned end of the shank being welded to the arm- piece. The patentee relied, for strength, on the impossibility of ch-awing a thick conical piece of iron through the smaller aperture of a conical opening into which it was fitted. 2. Chain cables. — Here each link was oval, and was stayed across the centre by a pin, the ends of which spread out so as not to pierce and weaken the link. 3. Windlasses. — This improvement was unimportant. At the trial, it appeared that the plaintiff's method of construct- ing anchors had been applied before the date of the patent to the construction of ache or ^;?«sAroo;« anchors used in mooring stationary light- vessels, but was new as applied to the anchors of ships. The alleged infringement related to the improvement in chain cables, which was of great value. Abbott, C. J., left it to the jmy to say whether the inventions both as to the chain and anchor were new and useful, and the jury found in the affirmative. Verdict for plaintiff. a. H 98 Brunton v. Hawkes. Rule nisi for a new trial, on tlie ground that the patent was void for want of novelty in one head of invention, made absolute by the Court of Queen's Bench. (Abbott, C.J., Bayley, Best, JJ.) 4 B. & A. Per Abbott, C.J. — I think that so much of the plaintiif 's inven- p. 550. . . . tion as respects the anchor is not new, and that the whole patent is therefore void. The mode of joining the shank to the flukes of the anchor is to put the end of the sliank, which is in the form of a solid cylinder, through the hollow and conical aperture, and it is then made to fill up the hollow, and to unite itself with it. Now, that is precisely the mode by which the shank of the mushi'oom anchor is united to the mushi-oom top. It is, indeed, the mode by which the different parts of the common hammer, and the pickaxe also, are united together. Now, a patent for a machine, each part of which was in use before, but in which the combination of the different parts is new, and a new result produced, is good ; because there is a novelty in the combination. But here the case is perfectly different ; formerly three pieces were united together ; the plaintiff only unites two ; and if the union of those two had been effected in a mode unknown before, as applied in any degree to similar purposes, I should have thought it a good groimd for a patent ; but, un- fortunately, the mode was well kno"\vn, and long practised. I think that a man cannot be entitled to a patent for uniting two things instead of three, where that union is effected in a mode well kno\\Ti and long practised for a similar pm-pose. It seems to me, there- fore, that there is no novelty in that part of the patent which affects the anchor ; and, if the patent had been taken out for that alone, I should have had no hesitation in declaring that it was bad. . . . It is quite clear that a patent granted by the Crown cannot extend beyond the consideration of the patent. The King could not, in consideration of a new invention in one article, grant a patent for that article and another. . . . The consideration is the entirety of the improvement of the three things ; and, if it tm-ns out that tliere is no novelty in one of the improvements, the consideration fails in the whole, and the patentee is not entitled to the benefit of that other part of his invention. 4 B. & A. Per Best, J. — The consideration to induce the King to grant the p. ao8. patent was the statement made by the plaintiff in his petition, that there had been three inventions, when, in fact, there had been only two. The imited consideration on which the whole grant was made is therefore void ; and, consequently, the grant itself is void. I am therefore of opinion that there ought to be a new trial. ( 90 ) Bush v. Fox- and Others. [A.D. 1852. 9 Ex. E. 651 ; 23 L. J., Ex. 257 ; 25 L. J., Ex. 251 ; Macrorj^'s P. 0. 152 ; 5 H. L. Ca. 707.] Novelty of Invention — Puhlication hy Specification of prioT Patent. Case for the infringement of a patent of 21st Sej^t. 1841, No, 9,094, to W. Bush, for " improvements in the means of, and appa- ratus used for, building and working under water." Plea 3 : That the invention was not a new manufacture. Issue. The patent related to the use of a hollow cylinder or caisson, divided horizontally into compartments, and employed for construct- ing foundations under water. The lowest chamber formed a diving- bell, from which water was excluded by air under pressure, and there were trunks or passages, provided with valves, for the pui'pose of affording access to the lowest chamber without much loss of compressed air. The specification described the caisson, with its air-pimips and valves, by reference to drawings, and explained the manner in which the materials excavated were raised from one compartment to another, as well as the filling up of the shell with concrete when sunk to a sufficient depth. Clahn : — The mode of constructing the interior of a caisson in such manner that the workpeople may be supplied with compressed air, and be able to raise the materials excavated, and to make or construct foimdations and buildings as above described. At the trial, it appeared that the alleged infringement consisted in the use of hollow cylinders or piles, acting on the principle of excluding water by compressed air, and forming, when sunk and filled with brickwork and concrete, the foundations for the piers of Boc/i ester Bridge. Each cylinder was closed by a cover at the top and was built up in lengths, so that one end rested on the bed of the river, and the other end remained above the surface of the water. This construction made it, in effect, a species of elongated diving-bell into w^hich air was forced by pumps, so as entirely to exclude the water. Two small chambers, provided with valves, and called air-locks, were attached to the cylinder cover, whereof one was for the passage of the workmen, and the other for the raising of the materials excavated. Defendants put in evidence the specification of a patent of 20th Oct. 1830, No. 6,018, to Lord Cochrane for a similar invention, consisting of a cylinder filled with compressed air and provided with an ante-chamber and valves for -the entrance and exit of the work- men. The specification stated :—" My invention consists in an h2 100 Bush v. Fox and Others. apparatus for compressing air into, and retaining tlie air so com- pressed within, the interior capacity of subterranean excavations, sinkings, or mines, in order that the additional elasticity given to the included air may counteract, in part or wholly, the tendency of superincumbent water, or of such superincumbent earth as is ren- dered semi-fluid by admixtm-e with water, to flow by gravitation into such excavations. And which apparatus, at the same time that it is adapted to retain the said included air in a state of com- pression in order to prevent or diminish the influx of water or of semi-fluid earth, is also adapted to allow workmen to carry on their ordinary operations of excavating, sinking, and miaing, and to allow a ready passage to and from the said space." Plaintiff was called, and admitted that what defendants had done at Rochester Bridge was the same as Lord Cochrane'' s inven- tion, except that Lord Cochrane'' s worked on land, and defendant's worked in water. Pollock, C.B., said: — "If that is the only difference, I am of opinion that the cause is at an end." Another witness having given evidence to the same effect, the learned judge directed the jury : — " I think a man cannot, if he has applied an old invention, or part of an old invention, to a new purpose, obtain a patent for such an application. Now, if the construction of this caisson is to be looked upon as old, and the object of the patent is for applying it to a new j)urpose, that is not a manufacture. Both the plaintiff and the other witness emphatically say that the inven- tion consists in the application, and not in the novelty of the thing itself ; in other words, that the only novelty is in the application of the apparatus. I think that a patent cannot be taken out for such an application." Verdict for defendants on third issue ; the juiy discharged as to the other issues. Error on bill of exceptions to the above direction. In the course of the argument, Maule, J., said : — "Assuming that the machine itself is old, the learned judge held that the mere new apphcation is not a new manufacture, and therefore not the subject of a patent, and my present opinion is, that on the evidence he was right in so directing the jury." Judgment affirmed by the Coiu't of Exchequer Chamber. (Cole- ridge, Maule, Cresswell, Erie, Williams, Crompton, JJ.) 5H. L.C. On appeal to the House of Lords, the judges were summoned, p. 707. ^y]^gj^ Alderson, Martin, Bramwell, BB., Coleridge, Wightman, Erie, Cresswell, Williams, Crompton, and Crowder, JJ,, attended. The question proposed for the learned judges, was, whether, looking at the record, the direction given by the Lord Chief Baron was right Bush v. Fox and Others. 101 in point of law. Answered in the affirmative, the judges being all of one opinion. Judgment for defendants in error, with costs. Per Lord Cranworth, L.C— From the time that I understood ■'3H.L. C. what the facts of this case were, I really have entertained no doidat whatever upon the question whether or not the direction of the Lord Chief Baron was right. I am not, indeed, clear that the Lord Chief Baron might not have gone much further, and that, even if there had not been any evidence at all, he might not have directed the jury to find for the defendants ; because, I think, it was for the Court to compare the two specifications together, and comparing the two together, it appears to me perfectly clear that the material part of the plaintiff's invention was involved in the invention of Lord Cochrane. The evidence of the plaintiff himself and a witness having been given, the Lord Chief Baron said, that if the jury believed that evidence, the invention was not an invention of any manner of new manufacture ; it was not new at least in the material part of it, the mode of putting up the caisson so as to supply the workmen with air. My Lords, I entirely conciu^ in the opinion which the learned judges have, without any hesitation, given to yom- Lordships, that that direction was perfectly right, and, consequently, that there is no foundation for this proceeding in error. Caldwell v. Vanvlissengen and Others. [A.D. 185L 9 Hare, 415 ; 21 L. J., Cli. 97.] Practice in Patent Suits— Aliens restrained from Infringing an English Patent in England. Motion for injimction to restrain defendants, who were subjects of the King of Holland, from using on board their ships, within the dominions of England, a screw propeller made according to an English patent assigned to plaintiff. Injunction granted. Per TuR>'ER, Y.C.— It is part of the duty of this Com-t to 9 Hare, protect property pending litigation ; but when it is called upon to exercise that duty, the Com-t requires some proof of title in the party who calls for its interference. In the case of a new patent, this proof is wanting : the public, whose interests are affected by ■ the patent, have had no opportunity of contesting the validity of the patentee's title, and the Comi therefore refuses to interfere until his right has been established at law. But in a case A^•here there has been long enjoyment imder the patent (the enjoyment, of course, including use), the public have had the oj^portimity of 11. 424. 102 Caldwell v. Vanvlissengen and Others. contesting the patent ; and the fact of their not ha\dng done so affords, at least prima facie^ evidence that the title of the patentee is good ; and the Court therefore interferes before the right is established at law. I take the rule to be universal, that foreigners are in all cases subject to the laws of the country in which they may happen to be. 9 Hare, It is to be Considered, then, what are the laws of this country ^' " ' vAiYL reference to the rights of patentees. According to our laws and constitution, the Crown, I apprehend, has at all times exer- cised a control over the trade of the country. Anterior to the statute 21 Jac. 1, c. 3, it assumed to exercise that control to a very prejudicial extent, by the creation of monopolies ; and in the great " Case of Monopolies " (11 Rep. 85a), such an exercise of its powers was held to be illegal ; but it was at the same time held that the Cro"\VQ had power to grant, as a recompense for any new invention, the exclusive right to trade on it for a reasonable period. What was to be considered as a reasonable period does not aj)pear to have been settled. By the statute of James, it was fixed at four- teen years ; and thus, as explained by Lord Coke, in his Com- mentaries on the statute, in the Thii-d Institute, the statute did not create, but controlled, the power of the Cro^vn in the granting of patents. Patentees therefore have always derived and still derive their rights, not from the statute, but from the grant of the Cro^vTi. And, imdoubtedly, this grant gives to the grantee a right of action against persons who infringe upon the sole and exclusive right purported to be granted by it. Foreigners coming into this country are, as I apprehend, subject to actions for injimes done by them, whilst here, to the subjects of the Cro^vn. T^Tiy, then, are they not to be subject to actions for the injury done by their infringing upon the sole and exclusive right which I have shown to be granted in conformity with the laws and constitution of this country? And if they are subject to such actions, why is not the power of this Couri, which is fomided upon the insufficiency of the legal remedy, to be applied against them as well as against the subjects of the Crown ? It was said that the prohibitory words of the patent were addressed only to the subjects of the Cro\\ii ; but these prohibitory words are in aid of the grant and not in deroga- tion of it ; and they were probably introduced at a time when the prohibition of the Crown could be enforced personally against parties who ventiu-ed to disobey it. The language of this part of the patent does not, therefore, appear to me to alter the case. ( 103 ) Campion v. Benyon. [A.D. 1821. 6 B. Moo. 71 ; 3 Brod. & Bing. 5.] Title too hinje— Novelty of Invention — Obligation in Specifying. Case for the infringemeut of a patent of 13tli Apri/, 1813, No. 3,682, to B. Campion, for " an improved metliod of making and manufacturing double canvas and sail-cloth, with hemp and flax, or either of them, without any starch u-hatcverr Plea : Not guilty. Issue. The patent related to a manufacture of sail-cloth with double warp threads. Each warp thread was composed of two yarns, first untwisted, and then twisted into a single thread of double size. No starch was used in the process. The specification stated : — "I do hereby describe and ascertain the nature of my said invention and the manner in which the same is to be performed as follows ; that is to say, my new and improved method of making double canvas and sail-cloth icithout any starch whaterer, consists in," &c. Then followed a description of the process. There was no separate claim. At the trial, it appeared that double sail-cloth had been made without starch before the patent. It was objected that the patent was void, by reason that plaintiff claimed to make sail-cloth without starch, which had been done before. Dallas, C.J., left the case to the jury. Yerdict for plaintiff. Eule nisi to set aside the verdict and enter a nonsuit made absolute by the Court of Common Pleas. (Dallas, C. J., Park, Bur- rough, Richardson, JJ.) Per Dallas, C.J. — With respect to patents, every patent being 3 B. & B. a monopoly, that is, an infringement of public right, and having for its object to give the public warning of the precise extent of the privilege conferred on the patentee, the Com-t (without going into the controversy whether it is politic that such privileges should be con- ferred or not) , is bound to require that such warning should be clear, and accurately describe what the inventor claims as his own. If the instrument contain an ambiguity on a material point, that is a ground on which it may be avoided altogether. From the time I first read this patent do^vn to the present day, I thought that the object of the patentee was to make cloth without starch. Then as to the specification, if that be different from the patent, the whole is void ; if it coincides, it is open to the same objection as the patent. 104 Campion v. Ben yon. "WTietlier we look to the patent or the specification, I have no doubt that the claim of the plaintiff is too extensive ; it is not con- fined to an improved method of weaving the cloth or twisting the threads, but also comprehends another mode of proceeding which is not a new discovery. Cannington v. Nuttall. [A.D. 1871. L. E., 5 H. L. 205; 40 L. J., Cli. 739.] Evidence of Infringement — Comhination of Parts. Suit to restrain from infringing a patent (in part disclaimed) of 7th May, 1866, No. 1,297, to A. Focheron, for "improvements in the manufactiu'e of glass." The cause was tried before the Master of the Rolls and a jury on the issues of novelty and infringe- ment. Yerdict for plaintiff. Application for a new trial refused. On appeal, Giffard, L.J., ordered a new trial on the groimd of misdirection. On fiu"ther appeal to the House of Lords, order discharged and judgment of the Coiu-t below affkmed, ■v\ith costs of the motion before the Lord Justice. The patent related to a method of melting glass without the use of pots. Prior to this invention, a glass furnace or kiln consisted of a hollow truncated cone of large dimensions, ha^ang in its interior space a low cove'red chamber provided with a series of separate flues or chimneys placed around it. A fire-place occupied the centre of the inner chamber or dome, and caves or air-passages extended tlu'oughout the subterranean area, and gave a supply of air to the furnace. A nmnber of fire-clay pots, for holding the glass, were placed inside the dome ; one pot standing in the space between two adjacent flues. The heated gases from the fire smTOunded the pots, and passed through the flues into the main chimnej^ formed by the external cone. The floor of the fm^nace was called a siege or hank. As the pots were quite close to the central fire, they were exposed to the danger of being cracked by currents of cooler air passing through the fire-bars ; or they might yield from the too intense heat of the flame. The fracture of a pot caused the most serious difficulties. The provisional specification stated : — " My invention consists in the suppression of the fire-clay pots or crucibles in general use, and placing the materials to be melted in the oven or kiln itself." The complete specification stated : — " My imj^rove- ments consist in the suppression of the fire-clay pots or crucibles hitherto in use, and i)i plaei)\(i the materials to be fused or melted within the fui'nace itself, the usual inner form of the lower part of Cannington v. Nuttall. 105 which is modified by doing away mth the sieges or banks, and the general levelling of the bottom. The lateral sides are constructed of a hollow form, in such wise that a current of refrigerating or cooling air may be made to circulate around and prevent any excessive heating of the sides which are to retain or enclose the materials in fusion." The di-awings showed (1) a basin or tank for holding the materials, (2) two gratings or fu^e-places situated on opposite sides of the tank, (8) air spaces or channels surrounding the tank on all sides and allowing the free circulation of air. There was no separate claim. The patentee subsequently filed a disclaimer which stated : — " "Whereas I have been ad\-ised that the specification may be held to claim generally the suppression of the fire-clay pots and the placing the materials to be fused within the furnace itself, and, as I do not wish to make any such extended claim to invention, but desire to limit my claim to the forming the sides of the tank or chamber, containing the glass-making materials, hollow, in such mse that a cui'rent of refrigerating air may circulate and prevent any excessive heating of the sides whicli retain or enclose the fused materials, I, for this reason wish to disclaim and do hereby disclaim all parts of the said specification which claim the suppression of the fire-clay pots, and placing the materials to be fused in the furnace itself." The verbal alterations were then specified, \-iz., the substitution of " have reference to,^^ for " consiHt i)i," also of " to placinfj,'^ for " in placing,'' and after the words " levelling of the bottom " the intro- duction of the words '■^ to ichich separately I mahe no claim; but according to my invention,'' whereby the last passage read thus : "but according to my invention the lateral sides are constructed," &c. The alleged infringement consisted in the use of a furnace con- structed according to a patent of 15th July, 1867, No. 2,075, to F. D. Nuttall, for improvements in the construction of glass fm-naces wherein the patentee described the objects of his invention as being, (1) to economise fuel, (2) to obtain any desired temperature, (3) to render the most important parts of glass makers' furnaces more dvu-able. The specification showed, (1) a tank ydih. a fire-place on either side thereof, (2) air tubes passing through the flame from each fire, and supplying heated air for the more perfect combustion of the gases, (3) narrow air passages, conveying air from the cave along either side of the tank, and at the back of the fire-bridge, for admix- ture with the current passing through the air tubes at points just above the bridge. It was apparent that the air passing along these passages would be heated, and also that it would pro tanto cool the sides of the tank. 106 Cannington V, Nuttall. In dii'ecting the jury, the Master of the Rolls said : — " If a per- son takes well-known processes from a great number of sources, and a great many inventions, and adapts them all together to a perfectly new combination, for a perfectly new purpose, their previous use is not, in my opinion, an anticipation of the patent. Mr. Branmell has pointed out that the most ^adnerable part of the tank would be that which lies between the hot fused mass in the tank and the furnace which created the heat, and that the great object was to make some interval there by which the heat could not be communi- cated through to the tank, and by that means allow the glass, when in a state of fusion, to escaj)e. That appears to have been the principal object of PocJieroii's invention." Then the learned judge described it, and said fmiher : — " Everyone of those things sepa- rately is anticipated by these patents, but that does not, in my mind, prevent the validity of a patent for then- combination." H. L. In moving the judgment of the House of Lords, Lord ^' ' Hatherley, L.C, said: — "It is qiute apparent, my Lords, that the cooling thing, the current of air, was nothing new — it is as old as the fables of ^sop — it is as old as the man blowing his soup in order to make it cool. But so it is with every invention — the skill and ingenuity of the inventor are shown in the application of well- knoAvn principles. Few things come to be known now in the shape of new principles, but the object of an invention generally is the applying of well-known principles to the achievement of a practical result not yet obtained. And I take it that the test of novelty is this : Is the product which is the result of an apparatus for which the inventor claims letters patent, effectively obtained by means of your new apparatus, whereas it had never before been effectively obtained by any of the separate portions of the apparatus which you have now combined into one valuable whole for the purpose of efPecting the object you have in \iew ? " What the respondent has done is this : he has not carried the hollow all round the tank, but he carries up, by means of what is technically called a split bridge, a space between the fire and the tank. Cei-tainly there is not the same circular belt of air which there appears to be in PocJieroii's invention ; but, at the ^n^dnerable points, the air is supplied and is running up, and it is performing the very purpose for which in PocJieroii's patent air is introduced. Now, my Lords, I apprehend that in that point of view it is a plain infringement of PocJieroii's patent. I apprehend the point is this, that if you find the air applied at the most vidnerable point, where it is most wanted for the purpose of cooling, the mere circumstance that it is not done in exactly the same way, or that it is not carried Cannington v. Nuttall. 107 all round, does not touch the question of the infringement of the essence of the invention. If the same object is attained by the same process which is here introduced, and introduced for the purpose of attaining it, then I apprehend that the infringement has taken place." Fcr Lord Westbury. — The object of the patent was to secure 5 H. L, an apparatus which should consist of three principal ingredients or P* ^^°' parts. A tank first, instead of the pots ; then the fire placed laterally to the tank instead of immediately beneath it. Then the third and principal part of the apparatus was this — the forming of a channel all around the tank, in order that the atmospheric air might circulate freely. These were the three principal objects which were to be united together, and the apparatus resulting from the union of the three was the improved apparatus to be used in the manu- facture of glass. Now, the only thing that appears to have been regarded by the patentee as a new discovery (apart from the apparatus) was the application of the external aii' to the sides of the tank. It was a discovery, certainly, but it was a thing for which independently of the other apparatus, probably no patent could have been obtained. . . . The refrigerating effect of the air upon the sides of the tank was not a thing for which, per se, a patent could be claimed; but an apparatus so constructed as to bring into operation that particular property of the external atmospheric air, so as to produce a most useful effect, constitutes an invention to which the merit of novelty attaches, and for which a patent may be taken out. The invention consisted in the things I have mentioned. All these things were embodied by Mr. Poc/ieron in his original specification, and they are well described in very few words in the provisional specification. I come now to the original specification under the patent, and I 5 H. L. must confess that I think it was a very unnecessary amount of nervous timidity with regard to this specification which led to the disclaimer. It is impossible to read the original specification, before the dis- claimer, without observing that the object is to describe an apparatus or combination. It is the apparatus, the machine, the combination of the separate parts, which is the subject of the invention, and which constitutes the merit of the discovery. Originally Mr. Pocheron had said that his improvements consisted in the suppres- sion of the fire-clay pots, and in placing the material to be fused or ' melted within the furnace itself. That preposition " //i" apj)ears to have led to some misapprehension, and accordingly it was the cause of the subsequent disclaimer. 108 Cannington v. Nuttall. Here I must pause for a moment, because, unfortunate!}', the Lord Justice did not observe where the disclaimer begins, and he has confounded the introductory part, or the reason for the disclaimer, with the disclaimer itself. . . . What the Lord Justice did, was this : He read as part of the disclaimer, and as belonging to the disclaiming part of the amended specification, the foUo'wing words : " I desire to limit my claim to the forming of the sides of the tank or chamber, containing the glass-making materials, hollow, in such wise that a current of refrigerating air may circulate and prevent any excessive heating of the sides which retain or enclose the fused materials." These words limiting the claim are, when rightly understood, no more than this : the patentee says, " In the introductory part of my specification there are two things which, I think, are erro- neously represented as part of the invention, but the remaining third thing is correctly represented as a discovery, and is part of the invention." Then, if the Lord Justice had observed what that discovery was, namely, tJie introduction of the atinospl/eric air, he would at once have been conducted in his mind to the mechanical arrangement made for the purpose of effecting that object, and he woidd have found that mechanical arrangement to be a part of the entire combination, a part of the whole furnace or kiln, which is described in both the original and amended specifications as the improved fm-nace or kiln, which is the subject of the patent, and is, in point of fact, the discovery of the patentee. If the matter had originally been carefully examined, it would have been seen from the very natm-e of the thing itself that the merit of the invention must lie in the improved kiln or fiu-nace, constituted mainly of the three integral parts that I have described, and which are all brought into correlative action for the purpose of getting a better manufactm^e of glass. In the three taken together, and not in any one of the three taken separately, lies the utility, and lies the novelty of the inven- tion. I have now only to advert for a moment to the question of infringement. Say the counsel for the respondent, "You are greatly mistaken in supposing that we have the same object as you have. Your combination has for its object the keeping cool the material portion of the furnace or kiln, the combined machine, which would be liable to bo destroyed by heat. Ovu' combination, on the con- trary, is intended to intensify the heat. These channels which you describe as an imitation of your channels have nothing at all to do A\'ith refrigeration. They conduct the atmospheric aii- in a heated state to the top of the fm-nace, and then they inject oxygen by Cannington v. Nuttall. 109 means of the heated atmosplieric air into the products of comhustion. That has the effect of greatly augmenting the intense heat of the fm-nace below, and usually consumes the smoke and vapour of the furnaces." I do not mean to deny that that may possibly be an improvement upon the appellant's combination. But we all very well know that if you are obliged to adopt a combination of machinery which originally is directed to one purpose, before you can make it minister to another and additional purpose, the user of it for this additional purpose is an infringement of the patent which first introduced that combination, and we find this sort of infringement to be substantially admitted in the argument. Mr. JF'fZ/.s'/'c;- says, "In conducting the air thi-ough my channels in order to make it arrive at the top of the furnace, and then projecting it into the mass of vapour and flame that I find there, I cannot deny but that in that process I do pro tanto cool the sides of the fm-nace." But then we find that the sides are cooled just where the cooling process is required. If there had been no intention to pirate the invention these channels for the air might have been conducted behind the furnace, or they might have been brought in at an eleva- tion above the sides of the tank, but instead of that we find that the channels are placed exactly where refrigeration is required. There can be no doubt that there is refrigeration ; and there can be no doubt that if there be any merit in the respondent's discovery, it is a super-addition to the merit of the appellant's discovery, it is a thing added to the process of the appellants, it is a thing effected by means of the combination and arrangement made by the appellants. It embodies the appellants' apparatus, and therefore becomes in law a piracy of his invention. Carpenter v. Smith. [a.d. 1841-42. 1 Webs. E. 530 ; 11 L. J., Ex. 213 ; 9 M. & W. 300.] Public Use of an Invention. Case for the infringement of a patent (in part disclaimed) of 18th June, 1830, No. 5,880, to J. Carpenter and J. Young, for " improvements in locks." Plea 3 : That the invention was not new as to the public use thereof in England at the time of the grant. Issue. At the trial, it appeared that several years before the date of the patent, a model of a lock, similar to plaintiff's, was brought from America, and that seven and a half dozens of locks were then made 110 Carpenter v. Smith. from this model by a manufactiu'er in Birmingham, presumably for export to America. Also that a lock, similar to plaintiff's, had been in use for sixteen years on a gate belonging to one JDavies, and adjoining a public road, ^^.-ol^/'"^' Lord Abinger, C.B., directed the juiy : — It is required as a condition of every patent that a patentee shall set forth in his specification a true account and description of his patent or inven- tion, and it is necessary in that specification that he should state what his invention is, what he claims to be new, and what he admits to be old ; for if the specification states simply the whole machinery which he uses, and which he wishes to introduce into use, and claims the whole of that as new, and does not state that he claims either any particular part or the combination of the whole as new, why then his patent must be taken to be a patent for the whole and for each particular part, and his patent will be void if any particular part turns out to be old, or the combination itself not new. nYebs.E. J think what is meant by ''publicise and exercise^^ is this : A P- y34. . . . . man is entitled to a patent for a new invention, and if his invention is new and useful, he shall not be prejudiced by any man having invented that before, and not made any use of it, because the mere speculations of ingenious men, which may be fruitful of a great variety of inventions, if they are not brought into actual iise, ought not to stand in the way of other men equally ingenious, who may afterwards make the same inventions and apply them. A great many patents have been taken out, for example, upon suggestions made in a very celebrated work by the Marquis of Worcester, and many patents have been derived from hints and speculations by that ingenious author. But yet, as he never acted on them, as he never brought out any machines whatsoever, those patents are good. (So that the meaning of " public use " is this — that a man shall not, by his own private invention, which he keeps locked up in his own breast, or in his own desk, and never communicates it, take away the right that another man has to a patent for the same invention. . . . Now ^^ public use " means this — that the use of it shall not be secret, but public. . . . Therefore, if a man invents a thing for his own use, whether he sells it or not — if he invents a lock and puts it on his own gate, and has used it for a dozen years, that is a public use of it. Here you have an article, manufactured by an English manufac- tui'er and sold ; and in my opinion if it was sold even for the assumed purpose (of which there is no legal evidence) of being sent Carpenter v. Smith. Ill to America, I cannot but tliink that would be a destruction of the novelty of the plamtiff's invention. . . . Where a model is sent to a workman who sells seven and a half dozen, and sells them at a certain price, I must say I think the invention was used and publicly exercised. Yerdict for defendant. Eule for a new trial, on the ground of misdirection, refused by the Court of Exchequer. (Lord Abinger, C.B., Alderson, Griir- ney, BB.) It being objected that the mere manufacture or use of an invention by an individual who may himself have discovered it, even in such a manner that a particular portion of the public in his particular locality may have access to it, without its being sold or brought into the market, does not constitute a public use or exercise of the invention, Aldekson, B., said: "How, then, do you get over the case of the invention for which a patent was avoided, because it had been previously published in a book (a) , the principle being that it could be appropriated by anybody, because it had already been given to everybody." During the argument counsel quoted the summing-up of Patteson, J., in Jones v. Pearce (1 "Webs. R. 124), to the effect that, " if the wheel was used openly in public, so that everybody might see it, and the use had continued up to the time of talcing out the patent, undoubtedly that would be a ground to say that the invention was not new." Whereupon Alderson, B., said : " That is the very same principle of law as was laid down by my Lord in the present case ; the only restriction I shoidd put upon it would be, that it need not appear that the machine was used up to the time of taking out the patent." Fer Alderson, B. — I have not the least doubt that that is the iWebs.R. right construction of the law which my Lord has put upon it. Public use means a use in public, so as to come to the knowledge of others than the inventor, as contradistinguished from the use of it by himself in his chamber. How, then, can it be contended that the lock which has been used in public b}^ Mr. Da lies for so many years, is a new invention. If the plaintiff's doctrine is correct, it would follow that, if Mr. Davies were to change his lock to another gate, he would be liable to an action for the infringement of the plaintiff's patent. The case of Lewis v. 3IarUng (10 B. & C. 22), went to the very extreme point of the law. Per Lord Abinger, C.B. — I was coimsel in Leuis v. Marling (a) Dr. Bretvster''s Kaleidoscope. 112 Carpenter v. Smith. and in Jones v. Pcarce, and I recollect that those cases proceeded on the ground of the former machines being, in truth, mere experi- ments, which altogether failed. The public use and exercise of an invention means a use and exercise in public, not by the public. I have always entertained the same opinion on the subject. Cartweight v. Eamer. [a.d. 1800. Cited 14 Ves. 131, 136.] Test of Sufficiency of Specification. Per Lord Eldox. — The question is, whether the specification be such that a mechanist can make the machine from the description there given. The patent is to be considered as a bargain with the public, and the specification therefore is to be construed on the same principle of good faith as that which regulates all other con- tracts. If therefore the disclosure be such that the invention can be communicated to the public, the statute is satisfied. Chambers v. Crichley. [A.D. 1864. 33 Beav. 374.] Estoppel. Suit to restrain from infringing a patent. It appeared that, in 1862, defendant assigned all his share in the patent to plaintiff. He now insisted that the patent was invalid. Injunction granted. Per IloMiLLY, M.E. — I do not intend to express my opinion as to the validity of the patent. I will assume, for the piu'pose of my judgment, that it is worth nothing at all. But this is certain, that the defendant sold and assigned that patent to the plaintiff as a valid one, and having done so, he cannot derogate from his own grant. Chanter v. Leese and Others. [a.d. 1838—39. 1 Webs. E. 295; 8 L. J., Ex. 58; 9 L. J., Ex. 327; 4 M. & W. 295 ; 5 M. & W. 698 (in Ex. Cli.).] Consideration for a Licence, Assumpsit. The declaration stated that by an agreement which recited that plaintiif was possessed of certain patents, plaintiff licensed defendants to use the same on payment of an annuity of 400/. Pleas : 2. That the invention of an improvement in fm-naces was not new, whereby the patent became void. 3. That the said improvement was not invented by plaintiff, whereby the patent Chanter v. Leese and Others. 113 became void, as plaintiff well knew. Demurrer to 2nd and 3rd pleas, and joinder. Judgment for defendants by the Court of Exchequer. Fer Lord Abixger, C.B. — The declaration is founded on the 4M.&W. contract, and nothing but the contract. ... In the present case it P' does not appear to the Com-t that the defendants ever accepted or enjoyed any part of the patents which were the consideration of their agreeing to pay 400/. a year to the plaintiff, nor that the sum they so agreed to pay can in any manner be apportioned among the different patents which they might have had, the possession of all and each being an entire consideration. The plea, therefore, impeaching that consideration, is a good plea to avoid the whole contract as it appears on the record. Error brought in the Com-t of Exchequer Chamber. Judgment affirmed. Per TiXDAL, C. J.— Here it is plain that the enjoyment of all the 5M.&W. six patents is the consideration for every part of the defendants' promise, and that the annuity to be paid is neither apportioned by the contract nor ca^Dable of being apportioned by a jury. . . . We see that the consideration is entire, and the payment to be made by the defendants is entire ; we see also a failure of the consideration, which, being entire, by failing partially, fails entirely; and it follows that no action can be maintained for the money. Chanter v. Dewhurst and Another. [a.d. 1844. 12 M. & W. 823 ; 13 L. J., Ex. 198.] Licence valid without Seal. Assumpsit to recover a sum of money due under a licence not under seal, granted by j)laintiff to defendants for the use of a patented furnace. Plea : Kon asaumpseruut. Issue. At the trial, defendants put in evidence the letters patent granted to plaintiff, wherein all persons were strictly commanded not to " make use or put in practice the said invention, without the license, consent, or agreement of the said J. Chanter (the patentee) his executors, administrators or assigns, in writing, under his or their hands and seak," &c. ; and it was objected that the licence, not being under seal, was void. Aldersox, B., refused to nonsmt. Verdict for plaintiff. Leave reserved. Eule nisi to enter a nonsuit discharged by the Court of Exche- quer. (Pollock, C.B., Parke, Alderson, Eolfe, BB.) Dming the argument Aldersox, B., said : — '' To grant a hcence not under seal 114 Chantee v. Dewhurst and Another. may be a contempt of the Crown, but does not exempt the man to ■whom it is granted, and who derives a benefit from it, from paying the price of it." And again : — " The letters patent say that no one shall make, use, or put in practice the invention, which does not apply to the case of a party buying a patent article in a shop and using it." ^"?^;'"^^^" P*^'' Parke, B. — The doubt in this case arises, not because it can P- 826. I'll . be considered necessary to have a licence under seal to use every patent article that may be sold in a shop, but because we have to consider whether the plaintiff could give the power to use the article in question without complying with the terms of the letters patent as to the mode of granting it. It is difficult to give effect to all the words of the patent. Per Alderson, B. — The j)laintLff permits the defendants to make the machine for themselves, and to use it for themselves, and in my opinion a licence for this piu^pose need not be under seal. Chanter v. Johnson and Another. [A.D. 1845. 14 M. & W. 408; 14 L. J., Ex. 289.] Written Licence, addition of Seal to — Evidence — Stamp. Assumpsit. The declaration stated that defendants were in- debted to plaintiff in 33/. for the licence to use a furnace made according to certain patents, whereof plaintiff was owner. Plea : JSfon assumpseriDit. Issue. At the trial, plaintiff tendered in evidence a document, piu'port- ing to be a licence from plaintiff to defendants, for the use of the patented fm-nace, in consideration of the pa;yanent of 33/. The document was under seal, but not stamped, and was given as in pursuance of defendants' application for a licence in writing. WiGHTMAN, J., was of opiuiou that this document was a deed, and was inadniissible without a stamp ; he, however, refused to nonsuit, but reserved leave to defendants to move to enter a nonsuit ; and proof ha-ving been given of the supply of the furnace to and its use by defendants, plaintiff had a verdict, damages 33/. Rule nisi to enter a nonsuit, or for a new trial on the ground of misdirection. It was contended that, the document in question having been rejected, plaintiff had proved no written licence, and defendants were entitled to a new trial. Eule made absolute for a new trial by the Court of Exchequer ; it being ascertained that the learned Judge, at the trial, had not reserved leave to enter a verdict for the plaintiff, if the document was receivable in evidence. Chanter v. Johnson and Another. 115 Per Parke, B. — The contract of the defendants was to pay the itM.&W, plaintiff a certain snni for a licence in writing, and I do not see any evidence of that contract having been waived or altered, and another substitnted for it. But then the licence was rejected at the trial for want of a stamp, and the question, therefore, arises whether any stamp was necessary. The defendants say the instrument is a deed and ought to be stamped as such ; but that is not so ; it does not purport to be sealed and delivered as a deed ; it rather resembles an award, or a warrant of a magistrate, which, though under seal, are not deeds. Chollet v. Hoffman. [a.d. 1857. 7 E. & B. 686; 26 L. J., Q. B. 249.] Validity of Assignment luithoiit Registration — Notice of Ohjedions. Case for the infringement of a patent of 12th JHoi'. 1850, No. 13,338, to U. Masson. The declaration alleged that the patent was duly assigned to the plaintiff. Plea 6 : That the patent was not assigned as alleged. Issue. At the trial, it appeared that the assignment had not been registered pursuant to stat. 15 & 16 Yict. c. 83, s. 35. The notice of objections raised no question as to the validity of the assignment. Lord Campbell, C.J., directed a verdict for defendant on the 6th issue. Rule nisi for a new trial, on the groimd of misdirection, dis- charged by the Court of Queen's Bench. (Lord Campbell, C. J., Wightman, Erie, Crompton, JJ.) Per Lord Campbell, C. J.— The stat. 15 & 16 Vict. c. 83, s. 35, 7 E & B. .p. G94. provides that, till the entry of assignment has been made m the register of proprietors, the grantee of the letters patent " shall be deemed and taken to be the sole and exclusive proprietor thereof." Therefore, if Masson had sued for the alleged infringement, he must have been deemed and taken to be the sole person who had a right to sue ; and an issue upon any jplea denying his title must have been found in his favour. But the defendant could not be liable to be sued at the same time for the same infringement by the grantee and by the assignee of the letters patent. We, at present, give no opinion upon the question whether and how far the entry of the assignment, when made, will refer back; but supposing that it might refer back to the execution of the indenture, till the entry is made no legal interest passed by the indenture, and nothing beyond a right to have the title completed. The only other point made by the plaintifi was that the defendant I 2 116 CnoLLET V. Hoffman. was precluded from insisting on the want of registration of tlie assign- ment, because it was not specifically mentioned in his notice of objections. The requirements of the late statute, as to notices by the defendant, are clearly confined to notices affecting the validity of the patent. Clakk v. Kenrick. [A.D. 1843. 12 M. & W. 219.] Pleading after Disclaimer. Case for the infringement of a patent, part of the title of which had been disclaimed. Defendant obtained leave from Aldersox, B., at chambers, to plead certain pleas as to the validity of the patent before and after disclaimer, but the Court of Exchequer (Parke, Grumey, Rolfe, BB.), struck out the pleas relating to novelty and subject- matter before disclaimer. Per Parke, B. — The effect of the statute is to render the dis- claimer, when made, part of the patent and the specification. The plaintiffs from the moment of the disclaimer become patentees of the undisclaimed part, and the defendants ought not to be allowed to plead that the whole original invention was not new, and also that the undisclaimed part was not new. Claek V. Feeguson. [A.D. 1859. 1 Giff. 184.] Practice in Patent Suits — Recent Paterd. Suit to restrain from infringing a patent of 12th April, 1859, No. 910, to W. ClarJi, for " an improved safety block, to be used in lowering ships' boats." It appeared that plaintiff, before specif jdng, agreed with defend- ants that they should manufacture the patent block. An improve- ment was then suggested by one Nash, a foreman of defendants', and plaintiff was requested to insert the same in his specification, as well as to share the profits of the patent with defendants. Plaintiff declined the proposal, whereupon Nash applied for and obtained a patent for his improvement. The alleged infringement consisted in working under Nash's patent. The bill described the plaintiff as " an officer in her lyiajesty's ship Gladiator, now on service," whereupon the Court refused to compel him to give secimty for costs. Injunction granted until further order. Clark v. Ferguson. 117 Per Stuakt, V.C. — This is not a case in which the phiintifE's i Giff. title is disputed. The litigation has been occasioned by the plain- ^'' tiff's refusal to embody his plan with the alleged improvement made by the defendants' servant. ... It is not a mere matter of course, because a patent is recent, to call on the patentee to establish his rights at law before he can obtain relief in this Court. It is in the discretion of the Court to require a plaintiff to assert his rights at law or otherwise, according to the natm-e of the case. Clark v. Adie. [a.d. 1873. 21 W. E. 456, 764.] Injunction — Rights of a Licensee. Motion to restrain defendant from issuing circulars interfering with plaintiff's right, as licensee, to the free sale of certain horse- clipjDcrs. It appeared that defendant was patentee of an improved form of horse-clipper, and that he agreed by letter to licence plaintiff to work under his patent. Pending the settlement of certain disputes as to collateral matters, defendant issued circulars to customers of plaintiff, threatening legal proceedings if they pur- chased horse-clippers without certain distinguishing marks thereon. Injunction granted. On appeal, motion dismissed by the Lords Justices, with costs. Per James, L.J. — The trade of a licensee of a patent is not to be stopped pending the settlement of disputes as to certain collateral matters. Clark v. Adie. [A.D. 1873—1875. L. E., 10 Ch. 667 ; L. E., 2 App. Ca. 315; 45 L. J., Ch. 228; 46 L. J., Cli. 585.] Evidence of Infringement — Sub-combination of Parts. Suit to restrain from infringing a patent of 22nd Oct. 1869, No. 3,076, to J. R. Grayson, for "improvements in apparatus for clipping or shearing horses." The specification described the instrument or clipper by re- ference to drawings, and showed a flat guide or comb-j)late with a straight edge, like a musical-box comb, the points of the teeth being tapered so as to be raised a little above the under sui'face. A thin plate of steel, with V-shaped cutters, traversed to and fro over the comb, being guided by stems working in rectangular slots cut parallel to its edge. The drawings showed the cutter-bar in plan and section, the latter view representing it as somewhat arched or 118 Clark v. Adie. conyex in the middle, so as to take its bearing only at the edges. The specification, however, did not allude by any words of descrip- tion to this peculiarity of form. The two handles of the chpper ■were pivoted on a strong stem, set in a square hole in the comh- plate, and secured by a nut on the screwed end of the stud ; one of these handles worked the cutter, and the other took its bearing at the rear of the comb-plate, and was capable of being set and clamped in different positions to suit the convenience of the operator. At the end of the working handle a sliding block was pivoted, ha^dng slots corresponding with those on the cutter, and the cutter was con- nected with the block by two short pins. Each guiding stem was fixed to the comb at one end, and was screwed at the other end, so that the adjustment between the cutter and the comb could be re- gulated by means of nuts and washers. By the removal of the nuts on the stems and stud the instrmnent could be readily taken to pieces. Claim : " The general arrangement, construction, and combina- tion of parts, whereby I am enabled to construct an apparatus for clipping and shearing horses and other animals, in such manner that the apparatus may be adjusted to nmnerous angles or positions to suit the varying surface of the animal, and whereby the shearing or clipping may be regulated to the exact extent required, without shaving the hair too closely and without injimng the animal, leav- ing a smooth surface without marks, the apparatus being capable of being taken to pieces and adjusted for sharpening or renewing the cutter-bar, or for other purposes, all substantially as herein specified and shown." It appeared tliat plaintiff had bought Gratjsonh patent, in order to free himself from any interference in respect of a horse-clipper made by himself, but not patented, and which incorporated the arched cutter-bar, the movement thereof parallel to the line of the comb, and the substitution of strong stems secm-ed by nuts and washers instead of being screwed into the comb-plate, but which did not resemble Graysoii's instrument in other respects. The alleged infringement consisted in the making of horse-clippers in exact imitation of those brought out by Clark as above stated. Bacon, Y.C, granted an injunction. On appeal, the bill was dismissed with costs. (James, Mellish, L.JJ.) 10 Ch. Per James, L.J. — The claim of Grayson is in the most general P' *^'^' terms, and it has obviously been so framed in order to escape the danger which might be lurking in some existing machine or patent, if any thing or any part or parts more definite or more limited had been claimed. [His Lordship then read the above claim, and said Clark v. Adie. 119 it was obvious tliat Clark's instrument did not answer that descrip- tion.] Nor is it so pretended ; "but it is alleged that, althougli the general arrangement, construction, and combination of parts have not been copied, there is a subordinate combination — part of the entire combination — which has been transferred from Graijson to Clark, and that under the supposed doctrine of Lider v. Leather (8 E. & B. 1004) the plaintiff is entitled to treat as an infringe- ment the use of that subordinate combination. Now, upon the authority of that case, it has been strongly lo Ch. contended before us, that whenever there is a patent for a com- P* bination, that patent gives protection, not indeed to every distinct thing that enters into the combination, but to every combination, arrangement, and aggregate of two or more of those distinct things, even although such subordinate combination is not expressly or impliedly claimed in the specification. This, in our opinion, is so startling a violation of every principle of patent law, that we doubt whether we could f oIIoav any authority short of the House of Lords in applying such a doctrine. A patent for a new combination or arrangement is to be entitled lo Ch. to the same protection, and on the same principles, as every other P" patent. The patent is for the entire combination, but there is, or may be, an essence or substance of the invention imderlying the mere accident of f onu ; and that invention may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination. The principle is really very plain, as it seems to us. A com- lo Ch. bination or accumulation of three improvements is a totally distinct P- ^' ' thing from a combination or accumulation of two of them — as dis- tinct as a partnership of A., B., and C. is from a partnership of A. and B. If a man really wants to patent not only the whole but something less than the whole of what he calls " a new arrange- ment, construction, and combination of parts," he must clearly show that he claims that something less — of course perilling his patent if that something less is not a novelty. But it appears to us that even if Lister v. Leather were the true exposition of the law, and had the full meaning and extent for which the i^laintiif's counsel had contended, it wovdd be impossible to apply that case to the case before us. Combination and subordinate or partial combination are terms really not applicable to such improve- ments in such an apparatus as that now before the Com't. The " general arrangement, construction, and combination " is not a com- 120 Clark v. Adie. biiication in any sense except that in whicli every one of the several improvements may be said to combine with every other in making the machine a better one. Parva componere magnis : take a screw steamship in which the whole locomotive apparatus is one which by means of fuel set on fire under a boiler full of water at one end sets in motion a screw at the other end. Improvements may be made in every part of that apparatus, but it would be absurd to talk of a combination of an improved steam generator, of an improved arrangement for economizing the steam, and of an improved method of attaching and moving the screw. So here it appears absurd to talk of a combination of the means of adjusting the handle of the cutter with the other parts. As to the supposed subordinate combinations, there is, no doubt, in Graysonh patent a combination of the teeth of the comb made parallel and cut like a musical-box comb, with the angular cutter made like that of a reaper, because they are combined to effect a clean sharp cut. But there is no combination between them and the arched or convex cutter-bar, or between them or the latter and the parallel motion on the strong fixed stems. They are all im- provements, but they are distinct improvements for distinct pur- poses, as much as those in the case supposed of a marine steam engine. To examine particularly the things which are supposed to be taken from Grayson by Clarlx, the convex or arched cutter-bar is really not to be found anywhere in the -uT-itten specification, and, although it may be found in the drawings, it was clearly no part of the invention which was present to the mind of the inventor ; or, if it was, he has wilfully omitted to describe a material part of his invention. And it is found, so far as it is found in Graysonh patent, in immediate connection with the angular cutter and the non-angular comb teeth, neither of which is transferred to Clark. Again, the strong fixed stems cannot be brought into any con- ceivable sub-combination of parts. They have their own inde- pendent function of making the whole machine stronger and less likely to get out of order. . . . As jiu'^ouen, giving oiu- verdict on that which is, after all, a question of fact, we find that Acne's clipper is not a piratical appropriation of Grayson's invention, and consequently we hold that the plaintiff's bill ought to have been dismissed with costs. Appeal to the House of Lords. The appellant contended that there had been infringement of Grayson's patent in four particulars, viz., (1) In the use of fixed Clark v. Adie. 121 stems whicli could not be sliaken loose. (2) In applying nuts and washers to the top of the fixed stems above the cutting-plate, so as to adjust the friction, (3) In forming the cutter-plate in an arch, and thereby rendering it elastic. (4) In the mode of communicating motion to the upper or cutting-plate, so as to bring it to the true line of cutting. And in order to support the allegation of infi-inge- ment, it was argued that although the respondent had not copied the whole of the apparatus patented, yet that he had taken so much of that which was the pith and marrow of it, as to make up a subordi- nate integral part of the invention, and that by taking such a sub- ordinate integer, which was in itself matter of protection, he had infringed the patent. Their Lordships affirmed the decision of the Lords Justices, and dismissed the appeal with costs. Lord Cairns, L.C, referred to the patent as being for " improve- ments in apparatus for clipping or shearing horses," and commented on the specification generally. He also read a passage from the provisional specification, and continued : — My Lords, that being upon the face of it a specification claiming 2App. Ca. this improved apparatus, or instrimient, as a whole, you have then to consider in what way woidd a patent for an apparatus of this kind be infringed ? One mode of infringement would be a very simple and clear one, the infringer woidd take the whole instrument from beginning to end, and would produce a clipper made in every respect like the clipper described in the specification. About an infringement of that kind no question could arise. The second mode would be one which might occasion more difii- culty. The infringer might not take the whole of the instrument here described, but he might take a certain number of parts of the instrument described ; he might make an instrument which in many respects might resemble the patent instiimient, but would not resemble it in all its parts. And there the question would be, either for a judge or for any tribunal which was judging of the facts of the case, whether that which was clone by the alleged infringer amounted to a colourable departiu-e from the instrimient patented, and whether in what he had done he had not really taken and adopted the substance of the instrument patented. But there is a third way in which it is possible to conceive an infringement of a patent of the kind to which I have referred. Inside the whole invention there may be that which itself is a minor invention, and which does not extend to the whole, but forms only a subordinate part or integer of the whole. Now, again, that 122 Clark v. Adie. subordiuate integer may be a step, or a number of steps in the whole, which, is or are perfectly new, or the subordinate integer may not consist of new steps, but may consist of a certain number of steps so arranged as to form a novel combination within the meaning which is attached by the patent law to the term " com- bination." Suppose that in a patent you have a patentee claiming protection for an invention consisting of parts which I will de- signate as A, B, C, and D ; he may at the same time claim that as to one of those parts, D, it is itself a new thing, and that as to another of those parts, 0, it is itself a combination of things which were possibly old in themselves, but which, put together and used as he puts together and uses them, produce a result so new that he is entitled to protection for it as a new invention. In a patent of that kind the monopoly would or might be held to be granted, not only to the whole and complete thing described, but to those subordinate integers entering into the whole which I have described. But then, the invention must be described in that way ; it must be made plain to ordinary apprehension upon the ordinary rules of construction, that the patentee has had in his mind, and has in- tended to claim protection for those subordinate integers ; and, more- over, he is, as was said by the Lords Justices, at the peril of justi- fying those subordinate integers as themselves matters which ought properly to form the subject of a patent of invention. Now, what is the subordinate integer which is said to be pro- tected by this patent, and which it is said that the respondent has taken ? It is described as consisting of four different matters, vi2;., in the first place, what have been called the fixed stems, springing from the under or comb-plate, which cannot be shaken loose ; in the second place, the nuts and washers applied to the top of these fixed stems, above the cutting-plate, so as to adjust the friction ; in the third place, the shape of the cutter-plate made in an arch, by which the bearing of the cutter-plate upon the comb-plate is better adjusted ; and foiu-thly, the mode of communicating the motion to the upper or cutting-plate, so as to bring it to the true line of cutting. Before I refer to the first, second, and foiu'th of these items, I wish to observe upon the third, namely, the question of the arching of the cutter-plate. I have read with great care the specification of Grayson, and there is not a word in the letterpress of that specification, from beginning to end, which refers in any shape or form to the arching of the cutter-plate, or to any advantage to be derived from that arching. Clark v. Adie. 123 His Lordsliip proceeded to consider a suggestion tliat the arcTied form of the cutter-plate was designed in order to bring into play- elasticity as produced by the arching, and pointed out that the cutter-plate was adjusted and fitted to a solid rigid bolt at the back thereof, which restrained any elastic yielding. He then continued: — Therefore I am compelled, in the fii'st place, to put aside altogether this idea of the advantage of the elasticity of the cutter-plate as an afterthought, which was in no way present to the mind of this patentee. It may be an advantage — I say nothing as to that — but if it is an advantge, it is an advantage which subsequent practice and experiment has brought to light, and it is not an advantage which appeared to suggest itself to the mind of this patentee when he made this specification. His Lordship here referred to the remaining three items, which might be said to produce the combination ; and after remarking that each of these items was not, in itself, a new invention, but an old step well known in the making of a clijiper, he further said : — I have read and re-read with the greatest anxiety the specification in the present case. I cannot find from begiiming to end of it any sentence or any number of sentences, as to which, by any reasonable interpretation, you can say that they make a claim to a subordinate combination of these particular items as constituting in itself a novelty, a new manufacture ; a thing to be protected by the patent. Per Lord Hatherley. — The case of Seed v. Higgins (8 H. L. 2App. Ca. Ca. 550), is one which I have always thought exceedingly illustra- tive of the great difficulty which patentees are put to. . . . There the plaintiff was put to this extraordinary difficulty ; he first claimed an improvement by using centrifugal force in the winding of bobbins ; he then found that having been anticipated as to the use of centrifugal force, he could only claim in respect of a certain weight which was moved by centrifugal force in a given position, and he disclaimed all except that weight. When another person sought to substitute what was a mechanical equivalent for the weight (it was not applied exactly in the same place, or the same position, but the effects were almost the same), the Court came to the conclusion that the disclaimer itself showed that the plaintiff was only claiming the exact thing which was left open to him by the numerous other patents which had been taken out for the appli- cation of centrifugal force ; and that although the defendant had come as near as could be convenient to an infringement, yet that he had not actually violated or infringed the patent, because the p. 332. 124 Clark v. Adie. patent must be confined very strictly to what was expressed in it — that is to say, very strictly to the application of the weight there mentioned. 2 App. Ca. P(,y Lord Blackburx. — The next thino' as to which there is said 13 '6'6S to be an infringement is the plate being made with a curve, so that it is elastic. . . . Now we have to look at Grayson'' s patent in order to see whether that merit is claimed in any part. It is admitted that throughout the whole of the letter-press there is never an allusion to any ciu-ved or elastic plate at all ; but in one of the figures No. 2, in profile, there does appear a curved plate, and it is said that the fact that there appears a cuiwed plate upon that figure is enough to indicate that in the descrij)tion of his invention Grayson described that ciu'ved plate, and claimed it as part of his invention. Now I Avill not stop to incpiire how far a mere picture may be a description of an invention, and help the letter-press. It may be so to some extent — how far I do not stop to inquire. But iqjon that drawing there is represented a curved plate with a ciu'ved bolt attached to it in a way which, if it were carried out according to the drawing, would prevent the elasticity. . . . Whatever you may say about the pictm-e being part of the description, and so bringing the cm'ved plate within your invention, when the only drawing which shows a curved plate shows that curved plate in a position in which it would not give elasticity, it seems to me to be quite plain that you cannot say that the advantage resulting from a cmwed plate was contemplated as being included in the invention at aU. Cochrane v. Smethurst. [A.D. 1816. 2 Coop. Ch. Ca. 57; 1 Stark. E. 205.] Title of Patent too large — Practice in Patent Suits. Suit to restrain from infringing a patent of 3rd March, 1813, No. 3,657, to Sir T. Cochrane, for "an invented method of more com- pletely lighting cities, toT\Tis, and villages." The patent related to a glazed street lamp, having an eduction chimney for the escape of vitiated air, together with pipes or aper- tures for conducting a supply of air directly to the flame. The principle was that of ArgancVs lamp. The specification stated : — That the object of the invention woidd be more clearly imderstood by contrasting the construction of the present street lamps ^^dth lamps proposed to be formed according to the principles and adap- tation of the improvements. 2 Coop. Injunction refused by Lord Eldon, L.C, who directed an action P" '^^* at law, and said that the rule of the Court was that an injimction Cochrane v. Smethurst. 125 should not be granted, unless the Com-t entertained no douht re- specting the validity of the patent. His mind here was far from satisfied. It rather inclined against the plaintiff. If it inclined as much in his favoui', he, nevertheless, would not say that the injunc- tion ought to go. He had considerable difficulty about the specifi- cation. He would grant no injunction until the result of the action was seen. Action at law. Plea : Not guilty. Issue. i Stark. At the trial, Le Blanc, J., directed the jury :— The patent ^" ' ''" cannot be sustained. The plaintiff has obtained his patent, not for an improved street lamp, but for an improved method of lighting cities, towns, and villages ; but from the specification it appears that the invention consists in the improvement of an old street lamp, by a new combination of parts known before. The patent, therefore, is too general in its terms ; it should have been obtained for an improved street lamp, and not for an improved mode of lighting cities, towns, and villages. Plaintiff nonsuited. CoLLARD V. Allison. [a.d. 1839—40. 4 Myl. & Cr. 487.] Practice in Patent Suits where Possession of Patent has been disturhed. Suit to restrain from infringing a patent for an improvement in the manuf actui-e of pianofortes. The patent had been in existence for twelve years. Defendant disputed the validity of the patent, and stated facts to show that the possession imder it had not been imdisturbed. Lord Lax\gdale, M.R., refused to grant an injunc- tion, and directed an action at law. On appeal, order affirmed. Per Lord Cottenham, L.C. — For the purpose of protecting the 4 M. &C. right imtil the trial should have been had, I ought to have very ^' satisfactory evidence of exclusive possession. Now, I find here that certain manufacturers state that they abstained from making pianofortes in this manner out of respect for the plaintiffs, as having a patent; while other manufactui-ers again say that they have always made them in this manner. Which of these statements is true I am not called upon to decide ; but the discrepancy does throw sufficient doubt on the case to prevent my interfering by injunction. The result is, that this case, in my opinion, wants that evidence of exclusive possession upon which Lord Eldon acted in Hill v, Thompson (3 Meriv. 622), and that there is so much doubt as to the novelty of what is claimed, and as to the validity of a patent for 126 CoLLAED V. Allison. siieli a manufactiu'e, that I do not feel that I ought to interfere. It is obvious, however, that the question should he immediately tried. Cook v. Peaece. [A.D. 1843—44. 8 a B. 1044, 1054 ; 12 L. J., Q. B. 187 ; 13 L. J., Q. B. 189.] Title of Patent. Case for the infringement of a patent of 22nd Fch. 1840, No. 8,392, to W. Cook, for " improvements in carriages." Plea 6 : Setting out the specification, and averring that the title was too large, wherehy the patent became void. Issue. The patent related to a method of fixing folding shutters in carriages, and w^as applicable to the fitting of a certain class of shutters, having three hinged folds, which closed up and were known in the trade as German shutters. As to the 6th issue, the jmy found : — That the invention was not an invention of improve- ments in carriages generally, but of certain improvements in adapt- ing German shutters to those carriages only in which German shutters were used, and whether or not, &c. Yerdict for plaintiff on remaining issues. The special verdict was argued in the Court of Queen's Bench. (Denman,. C.J., Williams, Coleridge, Wight- man, J J.) Judgment for defendant. Per Lord Denman, C.J. — We are unable to distinguish Cochrane V. Smethurst (1 Stark. P. 205) from the present case, or to discover any reason why, if the patent in tliat case were vitiated by being too general in its terms, this patent can be sustained. Error brought in the Exchequer Chamber. (Tindal, C.J., Colt- man, Erskine, Maule, JJ,, Parke; Alderson, Curney, Polfe, BB.) Judgment for plaintiff nan obstante veredicto. Per Tindal, C.J. — The words " improvements in carriages " do not necessarily import " in all carriages," but may be held to be satisfied by an invention of improvements in some carriages only. . . . The mere vagueness of the title appears to us to be an objec- tion which may well be taken on the part of the Crown before it grants the patent, but to afford no ground for avoiding the patent after it has been granted. If such title did not agree with the specification when enrolled, or if there had been any fraud practised on the Crown in obtaining the patent with such title, in those cases the patent might undoubtedly be held to be void. Peferring to Cochrane v. Smethurst, his Lordship fm-ther said : — If it were to be considered as having the autliority of a case which liad been discussed fidly in the Court above, and liad received a Cook v. Pearce. 127 determination there, it would "be at least open to tlie ol)servation that the extreme generality of the title far exceeds that now under consideration ; hut that case was never moved in the Com-t of King's Bench, and it is impossihle not to see, from the other ohjec- tions taken at Nisi Prius to the patent, some of which were unanswerable, that it would have been useless to have carried the case further. The authority of that case cannot, therefore, be rated higher than that of i\(i opinion of the learned judge who tried the cause. . . . We think, therefore, that, as in the present case, no more is objected than mere vagueness and generality in the title of the patent ; without any evidence leading to the inference of fraud upon the Crown, or prejudice to the public, enough has not been shown to avoid the patent. CoPELAND V. Webb. [A.D. 1862. 11 W. E. 134.] Practice in Patent Suits— Tivo Patents for the same Invention. Suit to restrain fi^om infringing a patent. It appeared that both plaintiff and defendant had severally obtained patents for the same invention, and defendant claimed to be working under his own patent. Interlocutory injunction refused. Account ordered. Per KiNDEKSLEY, Y.C. — This is a case which I should certainly have sent to be tried by a coiu-t of law if the recent statute (25 & 26 Yict. c. 42, s. 1) had not prevented my doing so. It appears that both plaintiff and defendant have obtained patents for doing precisely the same thing. It is not, therefore, for this Com-t to interfere and prevent either of them from doing what he had a right to do by the act of the Crown. I certainly shall not grant any injunction in such a case as this upon an interlocutory applica- tion. If the defendant's patent cannot stand with the plaintiff's, then the plaintiff ought to take steps to set it aside, which he might do by scire facias. Cornish and Sievier v. Keene and Another. [A.D. 1835—36. 1 Webs. E. 501 ; 3 Bing. N. C. 570 ; 6 L. J., C. P. 225.] Subject-matter of a Patent— Novelty of Invention— Evidence of prior PuUication — Evidence of sufficiency of Specificution — Prior Experiments. Case for the infringement of a patent of 17th Jan. 1833, No. 6,366, to R. W. Sievier for " improvements in the manufacturing of elastic fabrics, applicable to various pm-poses." Pleas : 3. That the invention was not new. 4. That it was not an improvement in 128 Cornish and Sievier v. Keene and Another. manufactiu'iug elastic fabrics applicable to useful purposes. 5. That the specification was insufficient. Issue. The patent related to the manufacture of elastic cloths, by inter- weaving strands of ordinary india-rubber. The specification stated : — That the invention comprised three objects, the third being to produce cloth of cotton, flax, &c., in which should be interwoven elastic strands of india-rubber. These strands were first covered by winding filaments tightly round them by an ordinary covering machine, and were then arranged as warp threads and stretched to their utmost tension. Additional warp threads of cotton, flax, &c. w^ere combined with the india-rubber strands. The cloth was then woven in the ordinary manner. It was next subjected to the action of heat , whereby the india-rubber contracted and became elastic, the non-elastic threads forming a limit beyond which extension was impossible, and the relative admixtm^e of materials detennining the degree of elastic pressiu-e. There was no separate claim. iWebs-E. TiNDAL, C.J., directed the jmy : — I think, upon the specification, p. 502. very little question arises, because not only persons of skill and science read it, and say that it was intelligible to them to make the manuf actm^e from, but also two or three witnesses were called who actually made it without any instruction but the specification. No person was called who stated that he could not understand it, or had been misled by it, or incm'red expense in endeavoming to copy or imitate it, or stated that he w^as imable to understand what was meant by it. 1 Webs-E. It is a circumstance in the case that the cloth is found useful for p. 506. sm-gical pm'poses. The patent, however, is not taken out for that pm'pose, and it woidd not be sufficient, in order to maintain the patent on the ground of its being an improvement, to show that it W' as an improvement in surgical eases for bandages only, because the patent is not confined to that ; but they must prove also that it is generally an improvement with respect to the general uses of that fabric or manufactiu-e which was intended. 1 Webp.R. We are now approaching the real question in contest ; that is, p- 507. whether it is a new discovery of which the patentee was the first inventor, or whether it was known and practised in England before, and at the time of obtaining the patent in question. . . . Sometimes it is a material question to determine, w^hether the party who got the patent was the real and original inventor or not ; because these patents are granted as a reward, not only for the benefit that is conf en-ed upon the public by the discovery, but also to the ingenuity of the first inventor ; and although it is proved that it is a new dis- Cornish and Sievier v. Keene and Another. 129 covery so far as the world is concerned, yet if anybody is able to show that the party who got the patent was not the man whose ingenuity fii'st discovered it, that he had borrowed it from A. or B., or taken it from a book that was printed in England, and which was open to all the world, then, although the public had the benefit of it, it would become an important question whether he was the first and original inventor. It will be a question for you to say, whether, upon the evidence that you have heard, you are satisfied that the invention was or was not in public use and operation at the time the letters patent were granted. A man may make experiments in his own closet for the purpose i Webs.E. of improving any art or manufacture in public use ; if he makes these experiments and never communicates them to the world, and lays them by as forgotten things, another person, who has made the same experiments, or has gone a little further, may take out a patent, and it will be no answer to him to say that another person before him made the same experiments, and therefore that he was not the first discoverer of it : because there may be many discoverers starting at the same time, many rivals that may be running on the same road at the same time, and the first who comes to the Crown and takes out a patent, it not being generally known to the public, is the man who has a right to clothe himself with the authority of the patent and to enjoy its benefits. On the part of the plaintiffs the evidence is, as it necessarily must be, of a negative character. You cannot prove a negative strictly — you can only do so by exhausting the affumative instances of it, by calling persons who have never heard of it or seen it; and the more those persons are in the way of hearing of it or seeing it, if it had existed, the stronger is that exhausting evidence, if I may so call it, in its effect and value with the juiy. His Lordship then discussed the question of novelty, and refer- ring to the specification of a prior patent of the plaintiff dated 1st Dec. 1831, he fui'ther observed : — They (the defendants) say that this specification, if you look at it is in effect a declaration to all the world of this so-called new discovery, which is the subject of the patent of January, 1833. Undoubtedly if you could show under the hand of the plaintiffs i "^^J^-^- or anybody's hand that the secret had been publicly commimicated to the world, which was intended to be covered by the subsequent patent, there is an end of that patent ; if the world had been in- formed by this specification of the colour, fabric, and manufacture which is intended to be effected by the subsequent patent, the 130 Cornish and Sieyier v. Keene and Another. 1 Webs.R. p. 517. 1 Webs.E. p. 519. subsequent patent must fall to the ground, otlierwise a man would liave nothing to do but to take out patent after patent when the former lias nearly expired, and so afterwards procure to kimself an unlimited privilege. If it was generally known and practised, and not merely as a matter of experiment and trial kept secret by the party, and thi'own away as the result of that which was of no use to the public, the patent is gone ; or if the defendants have shown that they prac- tised it and produced the same result in their factory before the time the patent was obtained, they cannot be prevented by the subsequent patent from going on with that which they have done. Verdict for plaintiffs. Eule nisi to enter a nonsuit on the groimd that the invention was not the subject of a patent, and for a new trial on the grounds that the verdict was against the e\ddence, and that since the trial defendants had found a patent of 14th Nov. 1832, No. 6,334, to J. V. Dcsgrande for a like invention, discharged by the Coiut of Common Pleas. (Tindal, C.J., Graselee, Yaughan, Bosanquet, JJ.) Per TiXDAL, C.J. — The first objection is that the invention is not the subject-matter of a patent. . . . The question, therefore, as to this point is, does it come under the description of " any manner of new manufactiu'e " which are the terms employed in the Statute of James. That it is a manufacture can admit of no doubt ; it is a vendible article produced by the hand of man, and of all the instances that would occm* to the mind when inqiuring into the meaning of the terms employed in the statute perhaps the very readiest would be that of some fabric or texture of cloth. . . . The use of elastic threads or strands of india-rubber, pre^dously covered by filaments wound round them, was known before ; the use of cotton or other non-elastic material was also kno^ai before ; but the placing them alternately side by side together as a warp, and combining them by means of a weft, when in extreme tension and deprived of their elasticity, appears to be new ; and the result — ■s-iz., a cloth, in which the non-elastic threads form a limit up to which the elastic tlireads may be stretched, but beyond which they cannot, and therefore cannot easily be broken — a]3pears a production altogether new. It is a manufacture at once ingenious and simple. It is a web combining the two qualities of great elasticity and a limit thereto. The second objection to the verdict is, that it is against the evidence. . . . The question raised for the jmy was this : whether the various instances brought forward by the defendants amounted Cornish and 8ievier v. Keene and Another. 131 to proof that, at the time of taking out the patent, the manufacture was in puUic use in England ; or whether it fell short of that point, and proved only that experiments had been made in various quarters, and had been afterwards abandoned. This question is, from its nature, one of considerable delicacy ; a slight alteration in the effect of the evidence will establish either the one proposition or the other, and the only proper mode of deciding it is by leaving it to the jury. "We see no reason to be dissatisfied with the conclusion at which they arrived. "With respect to the third ground upon which the rule was obtained, without entering into the question whether the invention for which the patent in dispute was taken out was or was not described in the specification of Dcsgrande, we think it sufficient to observe, that this specification was not enrolled till May, 1833, whereas the article made under the plaintiffs' patent was publicly made and sold upon the London market, to a very large extent, in March and Ajml of the same year. And although the specification of Sicvier's patent was not enrolled till July, 1833, we think the mere fact of the enrolment of Besgrande's specification after the plaintiffs' patent was sealed, and his discovery known upon the market, does not of itself, alone, afford any proof whatever of the want of novelty in the manufactm-e made under the plaintiffs' patent. Crane v. Price and Others. [A.D. 1840—42. 4 M. & G. 580 ; 1 Webs. E. 377 ; 12 L. J., C. P. 81.] Subjed-matttr of a Patent—Novelty of Invention. Case for the infringement of a patent of 28th Sept. 1836, No. 7,195, to G. Crane, for " an improvement in the manufactm-e of iron." Pleas : 3. Setting out the specification, and averring that the said improvement was not a new manufacture within the statute. 5. Stating the grant of an existing patent to J. B. Neihon, and averring that the user of the hot blast as described was a user of Neihon's invention, whereby the patent was void. Issue. The patent related to the use of anthracite or stone coal, in con- junction with a hot-air blast, for the smelting of iron. The speci- fication stated that the preferable temperatiire for the blast was 600° Fahr. Claim: "The appHcation of anthracite or stone coal, combined with the using of hot-air blast in the smelting and manufacture of iron." TiNDAT., C.J., was of opinion that there war nothing to leave to k2 p. 40S. 182 Crane v. Price and Others. the jiuy, and dii-ected a verdict for plaintiff, subject to a special case. After argmnent, the Com-t of Common Pleas directed a verdict for plaintiff on all issues, except the 5th ; on that for de- fendants ; and notwithstanding such verdict gave judgment for plaintiff. (Tindal, C.J., Erskine, Coltman, Maule, JJ.) I'^^'cts.R. Per TixDAL, C.J. — The question becomes this, whether — ad- mitting the using of the hot-air blast to have been known before in the manufactm-e of iron with bituminous coal, and the use of anthi-acite or stone coal to have been known before in the manu- facture of iron with the cold blast, but that the combination of the two together (the hot-air blast and the anthracite) was not known before in the manufactm^e of iron — such combination can be the subject of a patent. We are of opinion, that if the result produced by such a com- bination is either a new article, or a better article, or a cheaper article to the public than that produced before by the old method, such combination is an invention or manufacture intended by the statute, and may well become the subject of a patent. There are numerous instances of patents which have been granted where the invention consisted in no more than the use of things abeady known, the acting with them in a manner already known, the producing those effects already kno^\Ti, but producing those effects so as to be more economically or beneficially enjoyed by the public. It will be sufficient to refer to a few instances, in some of which the patents have failed on other groimds, but in none on the objection that the invention itself was not the subject of a patent. The learned judge then referred to HaWs patent (1 Webs. E. 97), Beromeh patent (1 Webs. E. 152), ^^7/'^ patent (3 Meriv. 629), BanieW s patent (Grodson, Pat. 274), and continued: — TWebs.R. It was objected, in the course of the argument, that the quantity or degree of invention was so small, that it could not become the subject of a patent; that the person who had j)rocured a licence to use the hot-air blast under Neihon^s patent had a full right to subject to that blast coal of any natui-e whatever, whether bitu- minous or stone coal If the invention be new and usefid to the public it is not material whether it be the result of long experiments and profound research, or whether of some sudden and lucky thought, or of mere accidental discovery. The Case of Monopolies {Dareij v, AUw, Noy, E. 173) states the law to be, " that where any man by his own charge or industry, or by his own wit or invention, doth bring a new trade into the realm, or any engine tending to i\\e furtherance of a trade that p. 410. Craxe v. Price and Others. 133 never was used before, and that for the good of the realm, in such cases the king may grant to him a monopolj^-patent for some reasonable time." If the combination now under consideration be, as we think it is, a manufacture witliin the Statute of James, there was abimdant evidence in the cause that it had been a great object and desideratum, before the granting of the patent, to smelt ironstone by means of anthracite coal, and that it had not been done before ; indeed, no evidence was called on the part of the defendants to meet that which the plaintiff brought forward. With respect to the issue raised by the 5th plea, it is impossible to find any substantial or real distinction between the hot-air blast and the machinery and apparatus described in Neilson's specifi- cation, and that described and referred to in the plaintiff's. On the 5th issue, therefore, we think the verdict should be entered for the defendants. Then arises the question whether the plaintiff is or is not entitled to judgment notwithstanding the verdict upon the 5th issue. Undoubtedly, if the second patent claims, as part of the invention described in it, that which was the subject-matter of a patent then in force, it would be void But in this case there is an express disclaimer as to any part of the invention of the use of the hot-air blast which was covered by Neihoii's patent. The specification expressly says :— " I take the whole of the invention already well known to the public, and I combine it ■svith something else." It was further argued that, in point of law, no patent can be taken out which includes the subject-matter of a patent still rvmning and in force. No authority was cited to support this position ; and the case {Lems v. Davis, 3 C. & P. 502) which was before Lord Texterden, and in which he held, that where an action was brought for an infringement of improvements in a former patent granted to another person, and still in force, the plaintiff must produce the former patent and specification at the trial, affords a strong inference that the second patent was good. The case also of Hanner v. Playne (11 East, 101) is a clear authority to the same point ; and upon reason and principle there appears to be no objection. We think that judgment must be given for the plaintiff. ( 134 ) Crofts v. Peach. [A.D. 1836. 2 Hodge E. 110.] Inspection. Case for tlie infringement of a patent for making lace by macHnery. Bule, to compel tlie production of a specimen of lace made by the patent niacliine, refused by the Court of Common Pleas. (Tindal, C.J., Park, Vaugkan, Bosanquet, JJ.) Per Tindal, C.J. — The object of tkis application is to ascertain tke evidence wkick the plaintiffs will produce at the trial. The defendants may plead that the invention is not new, if that is the fact. The specification gives the necessary information. Croll v. Edge. [a.d. 1847—50. 9 c. b. 479 ; 19 l. j., c. p. 261.] Variance between the Title and Specification. Case for the infringement of a patent of 7th March, 1844, IN^o. 10,096, to A. A. Croll and W. Richards, for " improvements in the manufacture of gas for the pm'pose of illumination, and in apparatus used when transmitting and measuring gas." Pleas : 2. Non concessit. 4. That the specification was insufficient. G. That the invention specified was another and a different in- vention from that for which the patent was granted, whereby the patent became void. 7. That the invention was not an improve- ment in the manf aeture of gas. Issue. The patent related to improved methods : — (1) of manuf actming gas ; (2) of setting and heating retorts ; (3) of making retorts by pressing clay into moidds ; (4) of measuring gas. At the trial, it appeared that the specification as enrolled recited a patent for " improvements in the manufacture of gas for the purpose of illumination, and in apparatus used therein and when transmitting and measming gas ;" and it was contended, on behalf of the defendant, that the insertion of the words " therein and " extended substantially the grant of the Crown, whereby the patent was rendered void. Verdict for defendant on 4th, 6th, and 7th issues ; the juiy discharged as to the other issues. Leave reserved. Pule nisi to enter a verdict for plaintiff discharged by the Comi; of Common Pleas. (Maule, Cresswell, "Williams, Tal- fourd, JJ.) Fer Maule, J. — The patent was properly described in the declaration as a patent for " imj^rovements in the manufacture of Croll v. Edge. 135 gas for the purpose of illumination, and in the apparatus used when transmitting and measuring gas." No specification appeared to have been enrolled of any patent with that particular title ; but a specification was enrolled, reciting the grant of a patent with a title somewhat similar to that mentioned in the declaration, but with the additional words "therein and," interpolated between " used " and " when." The insertion is slight as to the number of words, but it adds most materially to the meaning of the sentence, and extends substantially the grant of the Crown. The title did not profess to comprehend improvements in any 9 C. B. apparatus used in making gas. The patentees, in representing to the Crown the natm^e of the invention which they had discovered, did not give the Crown notice that they claimed the exclusive use of any apparatus for making gas When the body of the specification is looked at, one main part of the patentees' claim consists of what may be, and probably is, a new mode of manufactui-ing clay retorts — an apparatus used in the manufacture, and not in the transmitting and measuring of gas. . . . No patent at all has been granted to them for that. It seems to us that they have specified for a more extensive and a different patent from that which was granted to them. "We therefore think the specification insufficient, and that the objection properly arises on the 6th plea. Probably, non concessit, or the 4th plea would equally raise the defence, if the 6th plea were not enough for the purpose. Ceompton V. Ibbotson. [A.D. 1828. Dan. & L. 33 ; 6 L. J. (0. S.), K. B. 214.] Specification had for misleading. Case for the infringement of a patent of 1st Nov. 1820, No. 4,509, to T. B. Crompton, for "improvements in drying and finishing paper." The specification stated : — " My invention con- sists in conducting paper by means of a cloth against a heated cylinder, which cloth may be of any suitable material, but I prefcv it to be made of linen warp and woollen weft." At the trial, one of plaintiff's witnesses admitted that as to the conducting mediimi he had tried several things, but he was not aware that anything would answer the purpose except the material which the patentee said *'he preferred." Bayley, J., nonsuited plaintiff. 136 Crompton v. Ibbotson. Eiile nisi to set aside the nonsuit refused by the Court of King's Bench. (Lord Tenterden, C. J., Bayley, Holroyd, Littledale, JJ.) Per Lord Te]s"terden, C.J. — The patent was obtained for the discovery of a proper conducting medium. The plaintiff found after repeated trials that nothing would serve the purpose except the cloth described in his specification, yet he says that the cloth may be of any suitable material, and merely that he prefers the particular kind there mentioned. Other persons, misled by the specification, may be induced to make experiments which the patentee knows must fail ; the public therefore has not the full and entire benefit of the invention — the only ground on which the patent is obtained. In Turner v. Winter (1 T. R. 602), a patent was held void on the groimd of an ambiguity in the specification like the present. Croskill v. Evory. [A.D. 1848. 10 L. T. 459.] Practice in Patent Suits' — Separate Proceedings against Infringers. Suit to restrain from infringing a patent of 8th Sept. 1841, No. 9,082, to W. Ci'ossJiiil, for " improvements in machinery for rolling and crushing land." It appeared that plaintiff had abeady brought two separate actions against infringers, and had in each ease established the validity of his patent. Lord Langdale, M.R., nevertheless ordered an action at law, saying that he did not think he could bind the defendant by proceedings which had taken place between the plaintiff and other parties. Crossley v. Beverley. [A.D. 1829. 3 Car. & P. 513 ; 7 L. J. (0. S.), K. B. 127 ; 9 B. & C. 63 ; 1 Euss. & M. 166 n. ; 1 Webs. E. 106.] VaJiditij of Patent ivhere Improvements are made hefore specifying — Sufficiency of Specification — Extent of Protection by Injunction. Case for the infringement of a patent of 9th Dec. 1815, No. 3,968, to S. Clegg, for an "improved gas apparatus," Plea : Not guilty. Issue. The patent related to apparatus for " extracting inflammable gas by heat from pit coal, tar or other substance from which gas or gases capable of being employed for illumination can be extracted by heat." It also related to a irater-meter for measimng the supply of gas. The meter was formed of a hollow wheel, di\dded into chambers, and partly immersed in water. The flow of gas fiUed one chamber while another was being emptied, and caused the Crossley v. Beverley. 137 wheel to rotate ou its axis, so as to record and measiu-e the quantity of gas which passed through the apparatus. At the trial, it appeared that gas could not be made from oil by the plaintiff's apparatus, although oil would produce an inflammable gas. The inventor, Mr. Ckgg, was called, and stated that he had invented some of the mechanical parts which were described in the specification at times subsequent to the date of the patent, but that during this interval he had in his mind a general idea of the whole apparatus. It was objected that the gas-making apparatus was in- complete for want of a condenser. Lord Tenterden, C.J., said : — lu reading this specification it is clear that the words " other substance " coupled with the words " pit coal and tar," mean other substance ejusdem generis. . . . One must understand this person to speak of things which were known and used at the time. He could not possibly mean oil gas ; it had never been used, because of the great expense ; and this man must really have had the spirit of prophesy, to have f oimd out that oil gas ever was to be employed in lighting the streets. ... A workman who was capable of making a gas apparatus would know that he must put in a condenser. The specification does not tell you to leave it out. There is nothing in that. Verdict for plaintiff. Rule for a new trial, on the ground that the specification was for an invention differing from that for which the patent was granted, refused by the Comi of King's Bench. (Lord Tenterden, C.J., Bayley, Littledale, JJ.) Per Lord Tenterden, C.J. — It appeared very clearly, that, 9 B. & C. although Mr. Clegg had resorted to several contrivances for per- ^' fecting the gas-meter, they were all founded upon the same prin- ciple. The objection now raised comes to this, that if a party applying for a patent has in his mind a certain invention, and afterwards, and before the time allowed for disclosing his inven- tion, makes an improvement upon it, that shall invalidate the patent. No authority for that assertion has been quoted, and I am at a loss to know for what reason a patentee is allowed time to disclose his invention, imless it be for the purpose of enabling him to bring it to perfection. If, in the intermediate time, another person were to discover the improvements for so much of the machine, the patent would not be available. Per Bayley, J. — I think that the objection ought not to pre- vail, for it is the duty of a person taking out a patent to commu- nicate to the public any improvements he may make upon his invention before the specification has been enrolled. 188 Crossley V, Beverley. 1 R. &: M. Suit to restrain from infringing the same patent. It appeared ^' ' ^' that . the patent was about to expire, and that defendant had piratically manufactured a large stock of the patented gas-meters, ready to be thrown on the market as soon as the monopoly was at an end. Lord Lyndhurst, L.O., granted an injunction to restrain the sale of such meters both before and after the term limited by the grant of the patent. Crossley v. The Derby G-as Company. [A.D. 1829—38. 4 L. J., Cli. 25 ; 1 Webs. E. 119 ; 3 Myl. & Cr. 428.] Practice in Patent Suits — Extent of Protection granted to a Patentee. Suit to restrain from infringing the same patent. It appeared that the bill was filed on 28th JYod. 1829, and that the patent expired on 9th Dec. 1829. Injunction granted by the Vice- Chaneellor, who directed the account to be canied back for six years from the date of filing the bill. On appeal, decree affirmed with costs. 4 L. J. Per Lord Brougham, L.O. — It was objected that the Court P- 26. would not interfere just on the eve of the expiration of a patent and grant an injunction which would only last a week. The point has never yet been decided ; but I am of opinion that the Coui't would interfere, even after a patent has expired, to restrain the sale of articles manufactm'ed previous to its expiration, in infringement of a patent right ; and that a party would not be allowed to prepare for the expii-ation of a patent by illegally manu- facturing articles, and immediately after its expiration to deluge the market with the produce of his piracy ; and thus reaping the reward of his improbous labour in making it. The Com-t would, I say, in such a case restrain him from selling them even after the expiration of the patent. The report in Myl. & Cr. refers to matters of computation in carrying out the order of the Court. Crossley and Others v. Potter and Others. [A.D. 1853. Macrory's P. C. 240.] Subject-matter of a Patent — Sufficiency of Specification — Parol Evidence of Patentee. Case for the infringement of a patent of 28th Dec. 1842, No. 9,573, to T. Thompson, for "improvements in weaving figured fabrics." Plea '6 : That the specification was insufficient. Issue. The patent related to aj)paratus for inserting and withdrawing the wires used in weaving terry fabrics. The specification stated : — Crossley and Others v. Potter and Others. 180 "The operation will be better understood by reference to tlie accompanying drawings, which represent ^xo-^s of a loom for icecwing coach lace. It then described the mechanism as applied to weaving coach lace," and went on to say, "I do not intend to confine myself to narrow goods only, as this improved means of weaving may also he adapted to the production of carpets ^ Claim (in substance) : The weaving of terry fabrics by means of tags or wires attached to moveable arms, such arms being shifted at intervals and made to introduce and withdraw the wires. At the trial, it appeared that a loom, made as specified, could not be adapted for the weaving of carpets by a mere widening of the parts ; also, that a carpet loom made by plaintiffs according to the patent had certain parts (alleged to be well known) added thereto, in order to make it available for carpet weaving. At. the close of plaintiff's case, Pollock, C.B., was of opinion that the action was not maintainable, if, upon the evidence as it then stood, the jury should find that the invention, as specified, was not capable of coming into practical use for the weaving of carpets. To guide the jmy the learned judge proceeded to discuss this evidence, observing :— " The truth appears to me to be this, that the patent Mac. P. C. is very much like what has often been attempted, viz., to take out P- 2^^- a patent for a principle, which the law will not allow. Any man who takes out a patent must take it for a manufacture. It is very true that patents are continually taken out for what are called methods ox processes ; but the real object of the patent, the real end that is secured by the statute, the matter that is alone mentioned in it capable of being made the subject of a patent, is a new manu- factm-e ; and everybody who takes out a patent under the name of a process, really takes it out for that which is the result of the process, for the thing that is manufactured, or the process by which it is produced. Whatever principle you liave invented or applied, you must have it embodied in some machine or manufacture dis- tinctly, in order that other ingenious and enterprising members of the community may distinctly know what it is they are prohibited from doing. This patent is taken out for the making of coach lace, carpets and velvets of all sorts, and it must be competent to do all and every part of that work by the means stated in the specification : otherwise the patent is not good. " A patent for an invention which is merely to obstruct every subsequent improvement, which is to step in and prevent the exer- cise of the ingenuity of mankind and the introduction of other in- ventions adapted to the particular subject to which the invention may be applicable, cannot, in my judgment, be supported." 140 Crossley and Others v. Potter and Others. The jiiiy consulted together, but did not agree, and the case proceeded. The patentee then was examined, and was asked what the inven- tion was for which he had taken out a patent. Question objected to ; but the learned judge ruled that it was admissible, and said : — " The specification shows the invention that is specified, but there must be some mode of getting at the fact of what the invention really was. The specification cannot be conclusive evidence when it may be fraudulently prepared." It then appeared that Thompson was the inventor of a loom for weaving coach lace, and knew nothing about carpet weaving. Before specifying, he sold the patent to other parties, who drew the specification, and described the machinery as being applicable to the weaving of carpets as well as of coach lace. Pollock, C.B., directed the jmy: — The direction I shall give you is simply that, if you believe the evidence of Mr. Thompson, your verdict should be for the defendants, who have merely used in carpet weaving something like what is described in the specifi- cation. In my mind the safest course for patentees to adopt in framing their specifications is, instead of including everything, to confine themselves specifically to one good thing ; and a jiuy will always take care that, if it be a real invention, no man, under colour of improvement, shall be allowed to interfere with that which is the offspring of their genius. Verdict for defendants. Crossley v. Stewart. [a.d. 1863. 1 N. E. 426.] Practice in Patent Suits — Discovery. Suit to restrain from infringing a patent for the manufactui-e of looms. Plaintiffs interrogated defendant as to the sums of money received by the sale of looms made in infringement of the patent, and required discovery as to the names and addresses of the persons to whom such looms had been sold. It appeared by the answer that looms had been sold to persons residing at Leipsic, but no information was given as to their names and addresses. The answer being excepted to, "Wood, Y.C, said that the answer sought might lead to imjDortant discoveries by the plaintiffs in regard to the infringement of their patent. The interrogatory must be answered, except, of course, as to looms, manufactured in foreign counties, and sold to persons residing there. ( 141 ) Crossley and Others [Appellants) v. Dixon [Respondent). [A.D. 1SG3. 10 II. L. Ca. 293 ; 32 L. J., Ch. 617.] Estoppel of Licensee, Suit to restrain from infringing certain patents. Appeal from an order of tlie Lords Justices. It appeared that respondent agreed verbally with appellants to be supplied by them with carpet looms constructed according to certain patents of which they were owners, and to pay royalties for the use of the inventions incor- porated therein. Eespondent afterwards used other carpet looms, upon which appellants claimed a royalty as embodying the patent inventions ; and this user constituted the infringement complained of. Respondent denied — (1) that the agreement amounted to a licence ; (2) that the patents were valid ; (3) that there had been any infringement. Wood, Y.C, made a decree in favour of appellants, directing an inquiry only on the question of infringe- ment. The Lords Justices retained the decree, but ordered the appeal to stand over till after appellants had brought " any action they might be advised." On appeal to the House of Lords, the decree of the Yice-Chancellor was affirmed, with a verbal alteration limiting the declaration under that decree, and the order of the Lords Justices was discharged, with costs Per Lord Westbury, L.C. — The agreement subsists at the lOH.L.C. present moment, and the respondent is using the machines which he so bought, and is recognizing his relation as licensee of the appellants by paying the appellants the royalty, a payment that can be attributed to nothing but the patent rights, in respect of which these machines have been constructed. Now the first contention on the part of the respondent is this, that, notwithstanding that relation continues, he is at liberty to deny the title of the appellants to the ownership of the inventions for the use of which he is thus paying a royalty. "W"e are all very well aware that that is a proposition inconsistent with the law, as it would be equally inconsistent with the ordinary reason and good sense of mankind. But then it appears that the respondent has obtained from a different quarter other machines which are appa- rently, according to the evidence, identical in construction and principle with the machines supplied to him by the appellants. And in respect of the user of these latter machines, it is contended, on the part of the respondent, that he is at liberty to affiiin that those machines are no invasion of the plaintiff 's patent ; first, be- cause he denies the validity of the patent ; and secondly, because he 142 Crossley and Others v. Dixox. affirms that the machines are different in construction and principle from the machines so made and supplied to him by the appellants. Now, my Lords, assuming that the second set of machines is identical in construction with the first, it Avould he impossible to hold that the obligation not to deny the appellants' patent right would not extend to the second set of machines so long as he con- tinues to use the first set of machines, which is the fact at present. That is equally a question of law, and a question of ordinary principle. 10H._L.C. The whole decree (of the Yice-Chancellor) is of course founded upon the continuance of the existing relation of licensor and licensee ; for it is an idle distinction which is attempted to be set up by the respondent that he made an agreement and did not take a licence. In the instruments, to which he is a party, made between himself and those persons who are defendants in the action at law, he describes this very agreement as being a licence. But that licence being the foundation of the claim, and being of com-se determina- ble by the respondent at pleasiu-e, if he chose to put an end to that licence, it follows that the present appellants, if he continues to use the machines, must treat him only as a person infringing their patent right. I would, therefore, submit to your Lordships that this general declaration ought to have been qualified by the intro- duction, after the words "the defendant is not entitled," of some such words as these, " whilst he continues to use the machines bought of the plaintiff under the agreement, or duiing the con- tinuance of the agreement between the defendant and the plaintiffs." But that alteration ought not, as I humbly submit to your Lordships, to affect the question of costs. Crossley v. Tomey. [A.D. 1876. L. E., 2 Ch. D. 533.] Interrogatories — Particulars of 'prior Use. Suit to restrain from infringing a patent granted to plaintiff for improvements in water gauges. Plaintiff interrogated defendant : — 6. Whether or not he was manufacturing and selling water gauges identical in all material respects with those patented ; and requiring him to set forth in what respect the gauges sold by him differed from those described in the specification of the patent. 1 1 . Ivequiiing him to set foiih the names and addresses of the persons by whom, and the dates when, and the places where, the invention had been used and practised before the date of the patent. Defendant replied, as to the 6th interrogatory, that " it was Crossley v. Tomey. 14;j impossible, without ocular demonstration, to show in what x^ar- ticulars the water gauges made and sold by him differed from those described in the plaintiff's specification ; " and as to the 11th inter- rogatory, he declined to fm^nish the information required. Plaintiff excepted to these answers, and Malins, V.C, overruled the exception to the 6th interrogatory ; but, acting on the authority of Flnncgan v. James (L. R., 19 Eq. 72), his Lordship required defendant to set out the names of some of the persons alleged by him to have used the, invention prior to the date of the patent. Curtis and Others v. Cutts. [a.d. 1839. 8 L. J., Ck 184; 2 Coop. Ch. Ca. 60.] Practice in Patent Suits where Enjoyment of Patent is not exclusive. Suit to restrain from infringing a patent for making wire cards. Ux parte injimction granted by the Yice-Chancellor, who declined, on the coming in of the answer, to dissolve the injunction. The answer denied the novelty of the invention and the enjoyment under the patent, which had been in force for nearly fourteen years, but admitted the infringement, and alleged that the specification was imperfect and fraudulent. On appeal, injunction dissolved, with liberty to bring an action. Lord Cottenham, L.C, said : — The bill does not state such a 8 L. J. _ 1 Q1 case as to justify the granting of an injunction. . . . The answer P* disputes the vahdity of the letters patent, and states that the alleged invention is not new, and that the specification is imperfectly set forth ; on the other hand, the plaintiffs contend that there has been a long possession and enjoyment under the patent. This Com^t gives credit, no doubt, to long enjoyment under letters patent, imtil it is proved that they are bad ; but then there must be not only enjoyment, but exclusive enjoyment imder them. {mn V. TJwmpson, 3 Meriv. 622.) . . . The allegations in the answer negative the exclusive enjoyment claimed by the plaintiffs. I think the right course is not to restrain the defendant, but to give the plaintiffs the opportunity to try the question at law. Here the report is the following : — " The rule upon which the 2 Coop. Court acts in granting an injunction where the validity of the patent alone is disputed, requii-es not merely that there shall have been possession and enjoyment under the patent, but that such possession and enjoyment shall have been imdistm^bed and exclusive. Here the answer negatives an exclusive possession of the privilege to make the machines. It states that since the patent was granted, persons not claiming under the patent have manufactured machines 144 Curtis and Others v. Cutts. upon the principle sought to be protected by it. There is an end, therefore, of the case of exclusive possession and enjoyment." The injunction granted by the Vice- Chancellor must be dissolved. Curtis v. Platt. [a.d. 1863. SL. T., N. S. 657; 33 L. J., C. P. 255; 11 L. T., N. S. 245; 35 L. J., Ch. 852; L. E., 3 Ch. D. 135 n ; L. E., 1 H. L. 337.] Sufficiency of Particulars of Objections — Practice as to Costs where an Action is abandoned — Evidence of Infringement — Mechanical Equivalents. Suit to restrain from infringing a patent of 10th JVov. 1854, No. 2,393, to J. Wain, for improvements in " mules." The pai-ticulars of objection alleged — (1) prior user of the invention by certain specified persons, and by others who were not specified ; (2) prior user by thiiieen persons or firms, from a.d. 1825 downwards, giving merely the places of residence of the persons referred to ; (3) prior publication in books, &c., with a general reference. 8 L. T. Wood, V.C, ordered defendant to furnish better particulars under ^' the second and third heads only, and said that as to the first point, the Court would know perfectly well how to protect the plaintiff from the effect of a surprise. As to the second point, he was quite clear that the particulars ought to be amended. The object of ha\'ing these statements reciprocally f m^nished by the jDarties, was that each might know what were the particular instances of breach, or of prior user, or publication, on which the other intended to rely. He felt sure that in this case the defendant would be able to give with more precision the date of user and the place of use of the machines to which they referred, and so far as these facts were concerned, they were bound to give the plaintiff all the information they themselves had. On the third point, they must, instead of giving a general reference, state the particular work or document, and the volume of that work in which the alleged prior publication was to be found. Costs to be costs in the cause. 33 L. J. The report refers to the allowance of costs in preparing for the P' ^^■'" trial of an action for infringement of the same patent, where plaintiff discontinued before issue joined, and^^ithout ha\ing given notice of trial. The master refused to allow the defendant any of the costs of preparing for trial. Rule nisi for the master to review his taxation, discharged by the Court of Common Pleas. (Willes, Byles, Keating, JJ.) 11 L. T. The report carries on the history of the suit. The patent related ^' ^^^' to improvements applicable to mules constructed according to a patent of 12th Od. 1849, No. 12,805 to R. Lokin and W. H. CuETis V. Platt. 145 Rhodes, and tlie object of the invention was to effect certain clianges in the action of the mule without the intervention of an eccentric boss, and rods and levers, as described in the patent of Lakiii and Rhodes. The specification described the apparatus by reference to .drawings, and showed a solid shaft, running completely thi'ough a hollow shaft, called a change shaft, on which were cams intended to be rotated at certain periods. The solid shaft was the driver, and at the extreme end of it was placed a catch or clutch-box made in two halves, one half being attached to a spiral spring, and capable of sliding along the solid shaft but revolving with it, the other half being keyed to the hollow shaft. The action of the spring brought the two halves together, and the hollow or cam shaft would thereby rotate until they were separated. The intervals of separation or rest were produced by the pressure of a sliding pin, moving in a hole bored through the boss of one half of the clutch- box, and sufficiently long to disengage the diiving half when pushed against it. A disc or plate at the back of the driven half of the clutch-box was provided with two projecting circrdar inclines, intended to press the loose pin sufficiently to liberate the clutch-box. This plate had a large opening or slot in the centre to admit the hollow shaft, and could be moved vertically up and do^m through a small space by the action of a lever arm. The pin was shown in the drawing as resting on the lower incline, and forcing the clutch-box out of gear. The motion of the carriage then depressed the plate, and the pin fell off the incline, whereby the spring brought the two halves of the clutch-box together, and the cam shaft rotated, until the pin came upon the upper incline, and brought it to rest. After an interval the lever raised the plate, and the action was renewed. Claims : 1. The novel construction, combination, and applica- tion of mechanism, as hereinbefore described, whereby one half of the clutch-box, hereinbefore and in the said specification of Lakiii and Rhodes described, or any mechanical equivalent tJierefor, is connected with and acts upon cams for effecting changes in the action of the mule, direct, and without the intervention of such eccentric boss, and rods, levers, or other mechanical agents combined therewith, as are described by Lakin and Rhodes, in their said specification. 2. The arrangement and combination of the lever described, and the parts connected therewith, for causing the catch box to be put into gear, and also the means or mode described of giving motion to the change shaft. It should be noted that the mechanism of the clutch-box, and of an incline with a pin for disengaging its two halves, was part of the G. L 146 Curtis v. Platt. patent of Lal:h\ and Rhodes, whose specification showed the change shaft, on which were fitted two halves of a chitch-box. To the half which revolved loose an eccentric box was fixed, and there was a sliding pin passing through the boss. During the revolution of the clutch-box this pin was brought against a fixed incline, and was forced outwards against the driving half of the clutch-box so as to press it away from engagement -svith the other half. The alleged infringement consisted in the use of machinery con- structed according to a patent of 13tli April, 1860, No. 922, to J. PInff, for a method of giving intermittent motion to the cam shaft of mules. In this apparatus one half of a clutch-box rode loose upon the cam shaft, and the other half was capable of sliding on the shaft, but revolved with it. To this latter half was affixed a plate, ha^dng upon its face a number of recesses (four being shown), which gave the required changes. At the end of each recess was an incline, A pin at one end of the arm of a rocking lever, actuated by a timabler, entered the recess, and ran up the incline as the shaft rotated. One half of the clutch-box was pressed against the other half by a spiral spring, which held the two parts together until the pin came upon the incline and separated them by the pressure caused thereby. The cam shaft then stopped in a definite position, determined b}^ the end of the recess, and did not rotate again until the action of the tumbler withdrew the pin and allowed it to fall into the next recess, and to set up another period of rotation. 3 Cli. D. The cause now came on for hearing, when Wood, V.C, sitting without a jury, found on the fifth issue — viz., whether defendant had infringed the patent of Wain — in favour of defendant, and on the remaining four issues as to the validity of the patent in favom* of plaintiff. At the time of the trial, no portion of the judgment of Wood, Y.C., was reported. Some extracts from the judgment of the Yice- Chancellor are now, however, appended in a note to Adie v. Clark (L. R., 3 Ch, D. 1'34), fi'om which the following paragraphs are selected : — Per Wood, Y.C. — I agree with an observation made in the com'se of the argument, that, on the question of infringement and evasion of a patent for a new object, the Court will scan the process very narrowly, and necessarily give greater weight to any evidence which there may be that this other process for effecting the same object is simply colourable, instead of being a bona fide new invention. Where the thing is wholly novel and one which has never been achieved before, the machine itself which is invented necessarily p. 135, n. CuRTi8 /'. Platt. 147 contains a great amount of novelty in all its parts, and one looks very narrowly and very jealously upon any other macMnes for effect- ing the same object, to see whether or not they are merely colourable contrivances for evading that which has been done before. When the object itself is one which is not new, but the means only are new, one is not inclined to say that a person who invents a particular means of doing something that has been known to all the world long before has a right to extend very largely the interpretation of those means which he has adopted for carrying it into effect. Because, otherwise, that would be to say that the whole world is to be precluded from achieving some desirable and well-known object, which everybody has had in view for years. In such a case it may be said that the means taken are simply mechanical equivalents for the means previously ado]3ted for arriving at the same object. One looks more jealously at the claims of inventors seeldng to limit the rights of the public at large for effecting that which has been com- monly kno^vn to all the world long ago. Of coiu-se no patent can be taken out for effecting this as anew object, but only for effecting it by a new means. What those means may be, and what is the extent of a claim which the patentee has a right to insist upon as to those means, is often a matter of much difficidty. Of course the Court would take care whether the patentee has put in the words or not, that no person shall be allowed to sub- stitute a mechanical equivalent or a chemical equivalent, as the ease may be, for doing the same thing without the shghtest degree of invention on the part of the person who substitutes it, or any benefit whatever to be derived from that apparently new mode. ... I think it extremely important to follow the rule laid down in Seed v. Iliggins (8 H. L. Ca. 550), that if you find a sj^ecific mechanical improvement claimed, then you must hold the person strictly to that particular mechanical device which he has claimed for effecting the object he had in view ; and if he says it is to be done in one precise and particular way, to that precise and i)ar- ticular way he must be held ; and those who have bona fide emploj^ed a different system and a different way must not be held to have infringed. I have several times and purposely used the word "escapement," because the analogy was present to my mind. There are escape- ments for clocks and watches almost innumerable, and all of them must have a very great resemblance, and yet many of them have been patented. Everything in the shape of an escapement must ex ri termini consist in prpsenting to and withdrawing fmm con- l2 p. 247. 148 Curtis v. Platt. tinuoiis motion sometliing which arrests or allows that continuous motion. That, of course, is what it is here, the presentation and withcbawing of a known instrument, the inclined plane and pin (I am taking these to be known, and they are not in question before me) ; and if I hold this to be an evasion, I must hold every new escapement that may be invented for a clock or a watch to be in some kind an evasion of any previous patent for an escapement. Appeal to the Lord Chancellor, on motion by plaintiff, to alter the finding on the fifth issue, or for a new trial, with cross motion by the defendant as to the remaining issues. Decree affii'med ; appeal dismissed with costs ; cross appeal, by consent, dismissed mthout costs. 11 L. T. Per Lord "Westbury, L.C. — For the efficient agency of this machine {a mule) it has been found necessary that there should be a shaft with cams upon it, and it has also been foimd necessary that there should be some means of an-esting the shaft, staying the shaft once or twice, or even four times, during a single rotation, thereby producing breaks or pauses for spaces of time in the rotatory motion of the shaft. These pauses or breaks have been at various times attempted to be produced in various ways. Mr. Hobcrfs had one mode, namely, by the operation of a wheel mth spaces. That proving not adequate to the end, another mode was discovered of breaking the rotatory motion, producing pauses in the rotation by the operation of a clutch-box. The application of that to the shaft was made, as far as I am informed, in the first instance by the patent of Lakin SLTidMhodes. Mr. Wai)i then applied himseK to what he denominates " an improvement upon the patent of Laliin and Rhodes.''^ Now it has been vigorously contended before me, that I am not to take Mr. Wain^s invention as he himself describes it, and that I ought not to allow him to be limited to his own description of its being an im- provement ; that I ought to take his invention as containing in itself a new and original principle. I cannot so take it. I must take Mr. Wahi's patent as being specific mechanism, directed to a certain end that was previously well known, directed to facilitate a certain result, the benefit of which had long been discovered, directed to produce in a more simple and easy manner a particular operation of the clutch-box, which was itself only a means to an end. I cannot but think that in patents of this description the doctrine of mechanical equivalents is not by any means applicable. The thing itself is nothing more than a particular agent for attaining a certain end, and if Mr. Wain was entitled to a patent for the particular agency by winch he effected, in a more convenient manner, the Curtis v. Platt. 149 opening and shutting of the clutch-box, any other person is on the same principle entitled also to a patent for the moans of effecting the same residt, provided those means are not a colourable evasion of Mr. Wabi's patent, or provided those means do not embody Mr. Wain's patent with an improvement. Mr, Wain's desire was to bring the clutch-box into action more li L. T. than once during the rotation of the shaft. At a short distance from ^' one of the discs of the clutch-box he put a plate upon the solid shaft, which plate was not fixed as the plate in Lakin and RJiodes' patent, but admitted of being moved upon the shaft vertically up and down. On that plate he raised not one incline, which Zfl'Av';^ oii^di RJwdes had done, but two inclines. Upon this plate he in like manner, as in the case of Lahin and li/iodcs, causes a moveable pin to rotate, but it' does not rotate always in the same circle, but rather in the arcs of two circles, the circle being varied by the vertical elevation of the plate, which I have already described. The pin is brought into operation upon the clutch-box twice by the means of two inclines. It is, in truth, nothing in the world more than a new arrangement of original elements, all of which were to be found in the patent of Lakin and Rhodes. Its merit consists in that new arrange- ment. I consider, therefore, the pin, the incline, and a plane which inclines uj)on it, to be common elements, out of which any inventor was at liberty to make or construct a machine at the time when Wain's patent was granted, and of necessity, therefore, at the time when Piatt's patent was granted. Mr. Piatt, although to a certain extent he avails himself of the same elements, yet puts them in a different combination, he makes their effect upon the clutch-box different, and he makes the residt different. It has been m^ged upon me that Mr. Wain's invention is capable of, or might be made to produce, a result co-extensive and co-equal with Piatt's invention. If it is so, all I can say is that Mr. Wain has not given to the world the benefit of a description of the mode by which they may be effected. I think it a very material thing, as the Vice-Chancellor also did, that, in comparing the two things together, the result and the work done by Piatt's patent are double, and if double, doubly more beneficial than the work done by Wain^s patent. Now the mode in which Mr. Platt effects the end desired has been by putting upon the shaft a rotating plane, which is bodily connected and joined on to the proximate disc of the clutch- box. Upon this rotating plane Mr. Platt has also put the inclines, which were matters of common knowledge, but instead of having one incline, as in Lakin and Rhodes' patent, instead of having two 150 Curtis v, Platt. mclines as in Wcthi's, he lias foiu' inclines. He divides tlie circle in foiu' portions or arcs, and one incline is in eacli arc of that cu'cle. Mr. Platfs modus operandi is this : — he arrests the rotatory motion of the plane by insertion of a projection at the end of the arm of a lever, which lever moves up and down, so as to present the arm which stops the rotatory motion of the plane successively. Being arrested, the pressure produced overcomes the lateral pressure of a helical spring coiled roiuid the shaft, and the action of that spring being overcome, the pressm^e withdraws the disc of the clutch-box. "When the pin is released the rotating plane resumes its rotatory motion, and there is produced a withdrawal of one disc of the clutch-box from the other four times, and the withdrawal by a force, by a combination of agents, and by a repetition of agency, which are different altogether from the force, the combination, and the agency of Wahi's. It is said that is a colom-able difference, because it is precisely the same thing whether you make the pin rotate upon a plane, or whether you make the plane rotate upon the pin. Now it is very well to cut off the case fi'om all the differentia, and to present the case in that generic form without the specific differences that exist between the two agents ; but this is a case of specific difference. It is the case of a particular mechanical combination ; it is the case of certain well-know^n things being put together in such a manner as to produce the same result, and it is impossible for me to say that the combination which Mr. Platt has made is substantially the same combination that Mr. Wain has made. 3 Ch. D. If the invention be, as I have already described, nothing more ^' ' "' than a pai-ticular means to attain to a given result which is ceiiainly well known, then the invention is for the means, and you can no more prevent the invention of one distinct set of means being inter- fered with, you can no more say that it interferes with the inven- tion of another, than you could say originally that there ought not to be patents granted for the invention of distinct means to an end. I would illustrate it familiarly by this example. If we suppose a patent for a ladder to go down a pit, that patent may be made to comprehend all ladders, whether constructed of wood or of iron, or of hemp or of wire, but if another man invented a mode of letting men down the pit by a rope and pulley, it would be impossible to say that the one means of attaining that particidar end was to be regarded as identical with or comprehended in the other. It is extremely desirable that when a beneficial idea has been started by one man he should have the benefit of his invention, and CuETis V. Platt. 151 that it should not be curtailed or destroyed by another man simply improving upon that idea ; but if the idea be nothing in the world more than the discovery of a road to attain a particular end, it does not at all interfere with another man discovering another road to attain that end, any more than it would be reasonable to say that if one man has a road to go to Brighton by Croydon, another man shall not have a road to go to Brighton by Borlxing. They are roads and means of attaining the end, and unless you can prove that one is a colourable imitation of the other, or unless you can prove that one bodily incorporates the other, ^dth merely an addition, it is impossible to say they shall not be co-existent subjects of contemporaneous patents. ... I find in Piatt's what I consider to be the elements of original thought, taking the materials before him and combining them for a particular pm-pose. I find in Wain's also the same elements of original thought, and the inventive faculty of the one has led him to one combination and the inventive faculty of the other has led him to another combination which cannot, in my opinion, be confounded with the first, and, therefore, I cannot hold that Platfs invention is in any matter whatever to be regarded as the same thing in the eye of the law as Wain's. I must therefore entirely affirm the judgment of the Yice-Chancellor. On appeal to the House of Lords, the decree was affirmed, and 35 L. J. the appeal dismissed with costs. A cross appeal was also, by con- ih.L. sent, dismissed without costs. P- ^^^■ At the hearing a preliminary objection was taken that an appeal on the fifth issue, viz. whether the respondents had been guilty of infringement, was not permissible under the provisions of stat. 21 & 22 Yict. c. 27, s. 3 ; but Lord Chelmsford, L.C, said : — The Court of Chancery knows no distinction between orders founded on questions of law and those upon matters of fact ; and the words of the third section applying generally to any orders made upon an application for a new trial, and there being nothing in the fifth section which can be considered as creating any distinc- tion between the different kinds of trial, whether A\dth or without a jmy, the regular coui'se of appeal in both cases must equally be open to both parties, and therefore the present appeal is not in- competent. His Lordship then discussed the question of infringement, and expressed his opinion that the decree ought to be afiirmed. Per Lord Cranworth. — It was said that Wai)t claims not only his own specific mechanism but also " any mechanical equivalent therefor." And every part of Piatt's machine is, it was said, if not 152 Curtis v. Platt. identical witli, at all events only a meclianical equivalent for Wahids macliinery. There are, however, two answers to this argument. In the first place, the claim as to mechanical equivalents, according to the fair construction of the specification, relates only to the clutch-box ; and, secondly, the principle which protects a patentee against the use by others of mechanical equivalents is inapplicable to a case like the present, where the whole invention depends entirely on the particidar machinery by means of which a well- kno^\Ti object is attained. If, indeed, the mechanical equivalent used was merely a coloiu-able variation of that for which it was substituted the case might be different ; but here I see no ground for holding that any parts of Ph/ffs contrivances are mere colour- able variations from those patented by TFain. Eex v. Cutler. [A.D. 1816. 1 stark. E. 354; 1 Webs. E. 7G,«.] Novelty of Invention. Sci. fa. to repeal a patent of 6th Jan. 1815, No. 3,873, to J. Cutler, for " improvements applicable to fire-jilaces, stoves, &c." The patent related to a mode of feeding the fire in an ordinary open grate, by a supply of coal from below. The contrivance con- sisted in placing a coal -box with a moveable bottom below the grate and raising the bottom by means of a rack and pinion, so as to bring up the coals. The specification stated : — " My invention doth consist in constructing fire-places and stoves in such manner that the fuel necessary to support combustion shall be given to the part in com- bustion at the lower part of, or beneath the same." At the trial, it appeared that, before the patent, two manufac- tiu'ers had publicly exhibited stoves in which the fuel was raised up from below. In one of these a deep grate, filled vaih. coals, was raised gradually above the level of a door or screen, and the com- bustion of the fuel was limited to the exposed portion of the grate. Lord Ellenborough was of opinion that the principle on which the two grates were constructed was identical with that described in the terms of the specification, which was for a mode of supphdng fuel from below, and there was nothing predicated in the specifi- cation of raising the fuel from below the grate ; it was merely for elevating a supply of fuel from below, and that the defendant had confined himself, by thus summing-up the extent of his invention, to the benefit of this principle. Yerdict for the Crown. ( 153 ) Eegina v. Cutlek and Others. [A.D. 1847—9. 14 Q. B. 372, n; Macrory's P. C. 124.] Novelty of Invention — Misdirection by Judge — Suhject-matter of a Patent. Set. fa. to repeal a patent of 6tli JVor. 1841, No. 9,140, to J. Cutler, for "improvements in the construction of tlie tubular flues of steam boilers." Suggestions : — 9. That the invention was not new ; 10. That it was not the working of any manner of manu- faetirre ; 12. The like of the part thii^dly claimed ; 13. The like of the part fourthly claimed ; 14, That the invention was of no use ; 15. That the specification was insufficient. Traverse. Issue, The patent related to the manufacture of welded iron tubes. The specification stated : — " I take a strip of hammered iron or steel, bevil the opposite edges, and bend it into a cylindrical shape. At the mouth of the fui^nace I place the end of a draw bench, upon this bench I place two stops, and against these stops a die, or dies, or a pair of grooved rolls of the required size for the tube, A mandril is then passed thi-ough the die or the groove of the rolls." It went on to say that the tube was then heated to a welded heat, and was drawn either through the dies or grooved rollers, while supported within by the mandril. Another mode was by hammering on a mandril, and afterwards drawing through dies or grooved rollers as before. The next part of the invention was a mode of coating an iron tube, made as described, with a tube of copper or brass ; but the specification stated : — " I do not claim the making coated tubes as above described, this part of my invention relating to the application of coated tubes in constructing tubular flues for steam boilers." The manufacture of the several tubes, either coated or otherwise, was described by reference to cb-awings. Claims : 1. The mode of welding iron or steel tubes by drawing through dies or grooved rolls on mandrils. 3, The apjilication of either iron or steel tubes, when coated with copper, brass, or other alloys of copper, in the construction of tubular flues of steam boilers, 4. (In substance) the application of welded iron or steel tubes, drawn through a circular hole or die, or between rollers, and over a mandril for the like purpose. At the trial, evidence was given that the mode of making tubes by cb-awing through dies over a mandril was impracticable. The mode by drawing between grooved rollers and over a mandril had not been tried, but witnesses stated that in their judgment it was not practicable. Defendants called evidence in contradiction. 154 Regina v. Cutler and Others. Macr. P. Lord Denman, C.J,, directed the jmy : — There is an objection taken to the first part of the invention as claimed hy the patentee, that it is stated that the tubes may be made either by drawing them through dies or between grooved rollers ; and it is said that the dies -will not produce the effect. But, m my opinion, if either of these modes is ^practicable, and if it is proved to be useful and new, as to this part of the invention it seems to me that the patent will be good ; and you are to form yoiu" opinion on the evidence — is it usef id, is it new ? "With regard to the third and foui'th claims, in which the defen- dant claims the application of tubes on the construction of tubular flues, it appears to me that he has no right to take out a patent for the mere application of particular things to any particular purpose. If he had made a new combination, that might have been a new discovery, and a proper subject for a patent; but I think Lord Abinger\s illustration is a striking one, and applicable to the present case — " It is like sweeping a carpet of a new manufacture with an old broom." If he had introduced a new article which required the application of a new principle to the production of it, that might have formed a subject of a patent, but the mere application of a thing which existed before does not appear to me to be a subject of a patent. And, in general terms, I think that the application of an article to produce any particular residt, the party having no claim either to the mode of producing the article, or to the mode of applying it for attaining that result, forms no ground for a patent. The jury fomid that the whole of the invention was new and practicable. Verdict for defendants. Rule nisi for a new trial on the ground of misdirection made absolute by the Court of Uueen's Bench. (Lord Denman, C.J., Coleridge, Wightman, Erie, JJ.) 14 Q. B. Per Lord Denman, C.J. — The fifteenth suggestion was that the p. 3<2, n. specification did not particidarly ascertain and describe the nature of the invention. The hammers to be applied to the iron tube are described, and on the bench are to be placed two stops, for dies or a pair of grooved rolls. A mandril is then pressed through the dies, or between the grooves of the rolls. On the trial, there was evidence that the grooved rolls would not do the work here assigned to them ; and, in commenting on this part of the case, I told the jury that if either of those methods were proved to be satisfactory, the patent might be good, notwithstanding the imperfection of the other. Regina v. Cutler and Others. 155 The case of Lewis v. Marling (10 B. & C. 22), had been quoted as establishing that doctrine. But, on examination, the Court there only said that the claim of some part of a machine which turned out to be useless did not vitiate a patent. This is very different from describing a part of a machine as capable of co- operating in the work, when, in fact, it is incapable, even though at the same time other means are described, which might be effec- tually employed. For the reader of the specification, reljang upon it, might use the former in constructing his machine, which would fail of its purpose from being too accurately made according to the patentee's instructions. The ride must, therefore, be absolute for a new trial. Second trial of the same action. The pleadings were the same as before. WiGHTMAx, J., directed the jmy to find for the Crown on the 10th, 12th, and 13th issues, and said : " The 3rd and 4th claims raise questions of law, whether what was claimed was a manufac- tui'e within the meaning of the statute, or was not a claim for any pai-ticidar process or manufacture, but for an application of certain matters. Now I entertain a strong opinion on this question, as to whether a mere application can be the subject of a patent ; for when once you have got a material you may apply it as you think fit." Yerdict accordingly. No further proceedings were taken. Cutler v. Boaver. [a.d. 1848. 11 q. b. 973; 17 l. j., q. b. 217.] Pleading — Demurrer — Estoppel — Consideration for a Licence. Covenant on an indenture by which plaintiff covenanted to pay defendant a sum of money for the piu-chase of one moiety of a patent of 6th Nor. 1841, No. 9,140, to J. Cntkr, for improvements in the tubidar fines of steam boilers, the recitals of the deed stating the grant of the patent, and also the grant, by another indenture, of an exclusive licence to defendant to use the same. Defendant pleaded in several pleas that plaintiff was not the fii'st inventor, that the invention was not new, and that the specification was insufficient, and the patent void. Replication : cdoppel., by the indentm-e of licence. Greneral demurrer, and joinder. Judgment for plaintiff by the Com-t of Queen's Bench. Fer Lord Denman, C.J. — Many cases were cited upon the ques- ii Q. B. tion estoppel, but we think it unnecessary to give any opinion on ^" ^^' that question, as an objection was taken to the pleas of the de- 156 Cutler v. Bower. fendant, wliicli we tliink must prevail ; and wliicli, consequently, renders any question as to the validity of the replication im- material. The defence proposed to be set up by the pleas is failure of con- sideration : that the patent is invalid, and that the defendant is not bound by his covenant to pay the money, which appears by the deed to be the purchase-money for a patent which, it is said, turns out to be worthless. But it appears to us that there are two decisive objections to this defence. The first is, that there not ha^^ng been any eviction, the consideration does not wholly fail. . . . And in the next place, the supposed defence could only be available in case the covenant upon which the action was brought was a dependent covenant, to be performed only if some condition is observed by the other party ; but in this case the covenants of the plaintiff relating to the patent, and that of the defendant for payment of the pm^chase-money, are wholly independent of each other ; and each party may recover against the other for a breach of their respective covenants. There is no plea of fraud or eviction. Dangerfield v. Jones. [A.D. 1865. 13 L. T., F. S. 142.] 'Novelty of Invention — Utility essential — Evidence of Infringement. Suit to restrain from infringing a patent of 5th March, 1864, No. 561, to W. Dangerfield, for " an improved mode of and apparatus for bending wood for the handles of walking sticks, umbrellas, and other pm-poses." The specification stated : — " The invention consists principally in a novel mode of applying heat to the wood for the piu-pose of softening the fibres, and then bending the stick and securing it by a clamp." It then described the apparatus (by reference to di^a wings) as being a vice for holding a stick, placed close to a hollow mandiil, round which the bending took place. A jet of gas was lighted inside the mandril, the heat of which set the fibres of the wood, so that the bending became permanent. The stick was, in the first instance, softened by moist sand, and was secured in situ on the mandril by a strip of steel. Claim : " The application of a flame of gas or other combustible fluid, for softening the fibres of the wood while being bent, in combination with a clamping apparatus for securing the wood until its fibres are set." Defendants denied the validity of the patent, and alleged that they had themselves, before the patent, adopted a mode of bending Dangerfield v. Jones. 157 sticks round a solid mandril by the aid of a strip of steel and a jet of gas, the difference being that the flame i;)layed outside the steel band instead of inside the mandril. Wood, Y.C, granted an injunction and account, and said : — When it is stated that, because wood is bent by coachmakers and others in a variety of ways by the application of heat, you cannot have a patent for the application of heat to the bending of walking sticks, that is the same sort of reasoning which was expressed ineffec- tually upon the Cornet with reference to an invention for an improve- ment in navigation. It was said that the operation of a propelling power by presenting a screw surface to the action of water was nothing new, that it was like the action of a windmill with reference to the wind. That reasoning, however, did not succeed. If, having a particular pm-pose in view, you take the general principles of mechanics, and apply one or other of them to a manufactiu'e to which it has never been before applied, that is a sufficient ground for taking out a patent, provided that the Com-t sees that that which has been invented is new, desirable, and for the public benefit. A mere trifling matter or a thing of no value will not do, inasmuch as the whole theory of the patent law is based upon the assumption that it is something of real value. You must show that you have invented something useful — a new and useful improvement in manufacture. Davenport v. Richard. [a.d. i860. 3l. t., n. s. cos.] Practice in Patent Suits — Long Enjoyment of Patent. Suit to restrain from infringing patents of 13th JYov. 1851, No. 13,809, to W. Smith, IF. BicJcinson, and T. Feake, and of 9th Dec. 1856, No. 2,916, to T. Peake, for improvements in the manu- facture of chenille. It appeared that the patentees were the first to manufacture chenille by machinery. The first patent was assigned to jDlaintiff on 2nd June, 1852, and the assignment was not registered. An objection that the title was incomplete was over- ruled, stat. 15 & 16 Vict. c. 83, s. 35, not taking effect imtil 1st Oct. 1852. Wood, V.C, granted an injunction, with order for an action at law, and said that wherever there was a reasonable jjrinui facie case of infringement, the length of time for which the patentees had had the exclusive enjoyment of the invention, as in the present case for nine years, influenced the Court in granting an injunction. The specifications, as he conceived, were sufficiently precise, but that was a question of law which would be open for consideration hereafter. ( 158 ) Davenport v. Jepson. [A.D. 1862. 1 N. E. 173, 307.] Practice in Patent Suits — ■Injunction — Inspection. Suit to restrain from infringing the patent of 1851, No. 13,809. Injunction granted by Wood, Y.C. On appeal, order afiinued. Per Knight Befce, L.J. — Though the motion before the Yice- Chancellor was only an interlocutory application, yet it was im- possible to forget the recent Act of Parliament (25 & 26 Yict. c. 42) prohibiting this Court from sending cases to be tried by a Coiu't of Common Law, and consequently the defendant was en- titled to have the question of the validity of the patent raised, even on this interlocutor}^ motion. After an analysis of the evidence, his Lordship said that, in his opinion, there was a valid patent which had been infringed, and that there was a case for an injunction. Per Turner, L.J. — After much consideration, I have arrived at the conclusion that the Act (25 & 26 Yict. c. 42) has not deprived this Court of any of its powers. It simply declares that this Court should not send away any case to be tried elsewhere. The powers of this Court are not limited by the Act, nor its procedm-e affected, yet to say that to grant injunctions on interlocutory motions in patent cases was no longer right, was to limit the powers of this Court and to alter its procedure. The order made by Wood, Y.C, on motion in this cause is extracted verhat'un in 1 N. R. 307, and provides, i)ifcr alia, for the mutual inspection of machinery by plaintiff and defendant. Davenpoet V. Goldberg. [A.D. 1S65. 2 H. & M. 282.] Practice in (jranting issues in Pate7it Suits — Long EnjoTjment of Patent. >Suit to restrain from infringing the same patent. It appeared that in 1860 plaintiffs filed a bill against a person named Riehard for infringing their patent. An action at law was ordered, and plaintiffs were nonsuited by Hill, J., on the ground that the speci- fication was insufiicient ; the nonsuit was set aside by the Coiu-t of Queen's Bench, and plaintiffs signed judgment and obtained a decree. Afterwards, in 1862, plaintiffs filed a bill against Jepso)i, when a decree was made for a perpetual injunction. In the present suit, defendant put in issue everything which had been contested in Davenport v. Jepmn. On motion for a special jury to determine certain disputed ques- Davenport v. Goldberg. 159 tions of fact, Wood, V.C, refused to grant issues on the questions of novelty and invention, but put the plaintiffs to prove the infringement before a jury, and said : — No person is entitled to come here and say, " I raise such and 2H. &M, such a question and ask for a jvay ex debito jusfiticv,'^ although there ^' are certain classes of cases in which the course of the Coiu-t is, if the matter be new, not to decide important disputed questions of fact without the assistance of a verdict. . . . On the question of infringement, it appears that the matter is so doubtful that the plaintiffs did not venture to press their motion for an interlocutory injunction, and I must therefore take it that there is such a bond fide contest of fact on that point that I ought to send that question to a jiuy if the defendant desire it. The case is reduced to this : that the plaintiffs have had thirteen years' user of this patent, twice disputed, and their right in each ease established — once at law, and once in this Coiu-t. ... In what position would a patentee be placed if he is to try his right ab initio against every separate infiinger in infinitum ? That cer- tainly is a view of his rights which has never been adopted by this Court. If the defendant thinks he can get rid of the patent, he had better proceed by scire facias to repeal or annul it : if he does not choose to take that course, but simply disregards it and stands on his defence, I must take the validity of the patent as already sufficiently established against him. Davenport v. Rylands. [a.d. 1865. L. E., 1 Eq. 302; 35 L. J., Ch. 204.] Practice in Patent Suits — B((mages — Full Costs. Suits to restrain from infringing the same patent. The bill sought an injunction, an account of all chenille manufactm-ed by plaintiff's process without licence, and an inquiry as to damages. It appeared that the bill was filed on 8th Nov. 1864, and that the patent expired on 13th Nov. 1865, before the hearing. Wood, Y.C, granted an inquiry as to damages, with costs, and said : "I was somewhat impressed with the notion that in order to award damages at the hearing, the Com-t must have jurisdiction to grant an injunction. But I think that would be a narrow construction to put upon this beneficial Act (21 & 22 Vict. c. 27). I think the sound view of the whole case is, that I ought to exercise the jm'is- diction granted to me by the Act, that I ought to consider myself as having had jurisdiction at the time the bill was filed for the purpose of ultimately giving relief pursuant to the Act, and therefore I shall 160 Davenport v. Rylands. dii-ect an inqiiliy as to what damage the plaintiff has sustained ; and I shall give the plaintiff the costs up to the hearing." The inquiry will he in the form " what damage the plaintifE has sustained," and not "what damage if any" he has sustained, as it would he in a trade mark. There is this difference between the case of a trade mark and that of a patent ; in the former case the article sold is open to the whole world to manufacture, and the only right the plaintiff seeks is that of being able to say, " Don't sell any goods under my mark." He may find his customers fall off in consequence of the defendant's manufacture ; but it does not necessarily follow that the plaintiff can claim damages for every article manufactured by the defendant, even though it be under that mark. On the other hand, every sale without licence of a patented article must be a damage to the patentee. Application was then made for costs as between solicitor and client under stat. 15 & 16 Yict. c. 83, s. 43, which was opposed on the ground that the validity of the patent had not been in issue. Wood, Y.-C, granted the application, and said : — " The statute provides that the plaintiff shall have his full costs, unless the judge shall certify that he ought not. There are many circumstances under which it might be improper that the plaintiff shoidd have costs. The judge may think the first action to have been collusive, or he may think the case an improj^er one. Many instances may be suggested ; but the object of the enactment w^as to prevent patentees being put under the necessity of bringing repeated actions to determine their rights after the principle has been once established." Daw v. Eley. [a.d. 1865. 2 II. & M. 725 ; L. E., 1 Eq. 38 ; L. E., 3 Eq. 496 ; 36 L. J., Ch. 482.] Discovery — Admissibility of Evidence under Notice of Objections — Breach of Injunction — French and Eufjlish Patents for the same Invention. Suit to restrain from infringing a patent of 4th SepL 1861, No. 2,203, to F. E. Schneider, for " improvements in cartridges for breech-loading fire-arms, and in the machinery for manufacturing the same." The bill interrogated defendants, requii'ing : — 5. A de- scription of all machines similar to plaintiff's made or used for six years before the date of the patent. 6. Asking for the names and addresses of all persons to whom they had sold breech-loading cart- ridges since 1st Jan. 1855, together with prices. 8. Hequiiing a statement of the size of the wire used in making their breech- Daw v. Eley. 161 loading cartridges, with the names of the persons from whom and the places from which they had purchased such ^\vce, from Jan. 1855, to the present time. Defendants denied the novelty of the invention, and set forth that they had used a machine somewhat similar to that specified, hut had discontinued the user before the date of the patent. They submitted that they were not bound to answer the interrogatories. Plaintiff excepted to the answer, but Wood, Y.O., over-ruled all the exceptions, with costs, and said : — " Is the defendant in a patent 2H. &M. case obliged to set out all the machines he has used before the date ^' of the patent ? The discovery is either wholly immaterial to the issue or else it is a defence for want of novelty. . . . Are you entitled to ask them the names of the witnesses whom they" intend to produce to establish their case ? There is no valid distinction betAveen that question and the interrogatory which has not been answered in this case. The 8th interrogatory is out of all rule. The plaintiff has no right to inquire into the defendants' case Avith intent merely to get at an answer to the question, ' How are you prepared to prove your case ? ' " At the hearing defendants tendered evidence of prior user not i Eq. specified in the particulars of objection, the excuse being that such P' ^^' evidence had not come to their knowledge until after the cause was in the paper. Wood, Y.C, refused to admit the evidence, and said : — " The statute is plain, and the objection to its admission is substantial and not merely technical. I cannot conceive any more beneficial enactment than that contained in stat. 15 & 16 Vict. c. 83, s. 41, which directs that the place and the manner of the alleged prior user must be stated in the particulars of objections on which the defendant means to rely at the trial, but goes on to provide that, although it cannot be done in the com^se of the trial, it shall be competent for a judge at Chambers to allow the particulars to be amended on such terms as he shall think fit. In Rcncwd v. Lcvimtciu (13 W. R. 229) I gave the defendant leave, on payment of the costs occasioned by the application, to amend his particulars of objection, as the lesser of the two evils, being of opinion that I might do the plaintiffs themselves considerable injmy if I were to refuse the application to amend, and thus occasion the expense and inconvenience of an application for a new trial. All I can do now is to shut out this evidence, leaving the defendants to make such application as they may be advised." The report carries on the history of the proceedings in this suit. 3 Eq. The patent related, inter alia, to the formation of a cartridge G. M 162 Daw v. Eley. liaving a recess or eliamlDer at the rear end for the reception of a percussion-cap. The cap was filled up with an anvil, formed of a short length of grooved wire, and was fired by the blow of a hammer. The anvil was supported by the base of the recess sufficiently for the ignition of the detonating charge, and the flame passed along the grooved sides of the anvil, and entered the body of the cartridge through an opening in the base of the recess. The drawings annexed to the specification showed a percussion-cap having an anvil with four grooves placed inside it, and showed also the construction of a cartridge with the chamber for the reception of the cap. The specification stated : — " It is not essential that the an%dl should be cylindiical, or that it should have four longitu- dinal cuts or grooves formed in it, as shown, as it may be formed of other transverse sections, so long as it is made to fill as nearly as may be the cap, and has cuts or grooves formed in it." Olahn: 1. The manufactm-e of cartridges described with reference to figs. 3, 4, &c. (distinguishing the figures) . It appeared that in 1855 a central-fire cartridge was invented by one Potfet, a Frenchman, but was not patented in this country. Pottefs anvil consisted of a thin plate of metal placed inside a percussion-cap received into a recess at the base of the cartridge. The case came on for hearing in Nov. 1865, when Bacon, Y.C, was of opinion that plaintiff's patent was not invalidated by reason of Pottefs invention, and gave judgment for plaintiff. The decree for an injunction was drawn up on 27th Jan. 1866. About this date proceedings were instituted in France by defen- dants for the pur]t:)ose of annulling a French patent of Feb. 1858, granted to F. E. Schneider, for central-fire cartridges, and upon which invention the English patent was foimded. In Feb. 1866, Schneider's patent of 1858 was annulled by the tribunals in Paris, and in June, 1866, an aj)peal from this decision was dismissed by the Superior Court. On 24th March, 1866, a patent for improvements in central-fire breech-loading cartridges was granted to W. T. Eley (No. 880). The specification stated: — "This invention relates to improvements in central-fire breech-loacling cartridges, according to which an anvil is placed in the percussion- cap of the cartridge in tico or more parts, by means of which the flame from the percussion powder passes between the several pajrts of the anvil, as well as round the sides, before escaping through the hole in the centre of the chamber." The drawing showed an amdl formed of two thin strips of metal with pointed ends, placed in juxtaposition \^itliin Daw v. Elfa-. 168 the cap. The backs of the strips, which were in contact, were somewhat rounded, and there was abundant passage for the flame of the detonating powder. Plaintiff now moved to commit defendants for a breach of the injimction of 1866. Defendants put in evidence an official copy of the judgment of decheance of the French patent in 1866, and the judgment of rejection of appeal by the Superior Court. Motion refused, with costs. Per Wood, Y.C. — The French patent of Schneider, and all rights 3 Eq. under it, are gone, and if it is identical with the English patent, it follows, as a necessary residt, that the English patent is gone also. It comes, then, simply to the consideration of the two patents. . . . Because certain parts of the English patent are identical with the French patent, it does not follow, as a necessary result, under stat. 15 & 16 Yict. cap. 83, sect. 25, that, when the French patent is determined, the rest of the English patent which is not identical is void also. The effect of that section is to strike out of the English patent that which, up to a certain time, the foreign patent has covered, but ceases any longer to cover. Upon the question of identity, I have no doubt. No difference can possibly be drawn between the two things, which in every single part, as it appears to me, are identical. That being so, it does appear to me that the injunction terminates here from the moment that the French Court decides that the French patent has come to an end, from default in payment of the annual fee, which is necessary in order to keep it up. The patent is determined in France, and being identical, with that granted to Schneider in this coimtry, the term has come to an end here also. That being so, it is of comparati\'ely little importance for me to consider whether or not there has been an actual infringement by the defendants. As in Seedy. Higgins (8 H. L. Ca. 550), where the plaintiff was confined very narrowly to his exact specification, in consequence of the anterior invention of another ; so here Schneider, in consequence of Pottefs previous discovery, must be confined to very narrow limits — viz., that of securing the anvil by the parti- cular mode in which he has described it. In Seed v. Higgins, the application of centrifugal force, almost identically in the same way, except that it was applied below the point at which it had been applied by the plaintiff, was held not to amount to an infringement of the jDlaintiff's patent on the ground of the necessity of confining the plaintiff most narrowly to the particular method as limited by the disclaimer. m2 164 Daw v. Eley. 3 Eq. ■ The defendants have now taken Pottefs anvil and douhled it, and in doing so they have not pursued the plaintiff's course of action, but have deliberately rejected it. It appears to me that they have hit on a process by which they arrive at the same result ■without bringing themselves within those narrow limits to which the plamtiff must be confined. . . . Upon the special merits, infringement or no infringement, this is not a case in which I ought to commit, or make an order equivalent to committal, by making the defendants pay the costs of this motion. De la Eue and Others v. Dickenson and Others. [A.D. 1857. 7 E. & B. 738 ; 3 K. & J. 388.] Evidence of Infringement — Subject-matter of a Patent — Sufficiency of Specifi- cation — Practice in Patent Suits — Discovery. Suit to restrain from infringing certain patents, viz., of 17th Ilarc/i, 1845, No. 10,565, to^. /////and W. Be la Rue, and of 19th Dee. 1849, No. 12,904, to W. De la Bite, for " improvements in the manufacture of envelopes." Action at law in pursuance of order of the Court. Pleas : 1. Not guilty. And as to first patent : 4. That the invention was not the subject-matter of a patent. 5. That the specification was insufficient. And like pleas as to second patent. Issue. The specification of the first patent stated the invention to con- sist : — (1) In improved machinery for cutting paper for the making of envelopes ; (2) in arranging machinery for folding over the flaps of envelopes ; and it described the folding machine (about which the contest arose) by reference to drawings. The envelope, or hlanh, was first creased by being pressed by means of a plunger into a hollow box, the platform at the bottom of which was lifted or depressed, as required. The specification stated that thus far the general character of the machine was not new. On the sides of the box were four folder flaps, shaped like the flaps of the envelope, but somewhat smaller in size. The plunger was so arranged that two opposite sides moved out of the way after the creasing, and allowed the folders to press down and fold two of the flaps ; the same thing was then done with the two remaining sides of the plunger and the corresponding flaps, and the operation was complete. The folders came down in succession, each being moved somewhat in advance of its neighbour, so as to imitate the folding of an envelope bj^hand. Claim : " The so arranging machinery that the flaps of envelopes may bp folded thereby as described." De la Rue and Otheks v. Dickenson and Others. 1G5 The specification of the second patent described one part of the invention as consisting in apparatus for applying to the flaps of an envelope the gum or cement necessary for causing three of the four flaps of the envelope to adhere together. The apparatus consisted of an endless revolving apron mounted on rollers, and running in one part of its course below the sm-face of some liquid gum in a reservoir. The apron was thus wetted Avith gum, and an instru- ment, having projecting sm'faces of the size and shape of the parts of the flaps requiring to be gummed, dropped upon the apron, took away some gum, and transferred it to the envelope. Claim : " The application of gmn or cement to the flaps of envelopes by apparatus acting in the manner of surface printing, in contradistinction to the application of gum or cement direct from a fountain." At the trial, it appeared that the alleged infringement consisted in folding and gumming envelopes according to a patent of 28th Feb. 1849, No. 12,493, to A. F. Remond. It appeared that defend- ants' plunger was furnished with f oiu' inclined planes, placed imder- neath its edges at different angles to the horizon. As soon as the plunger had creased the envelopes it was raised up, and foiu- jets of air blew the flaps inward ; the plunger now descended, and the inclined planes acted successively on each flap in the right order, so as to complete the folding, after which the envelope was discharged from the bottom of the box instead of from the top, as in plain- tiffs' machine. As to the gumming, the case was, that defendants used an instrument with projecting surfaces, corresponding to the parts of the envelope requiring to be gummed, but they dipped the same directly into liquid gum, instead of deriving the supply from the surface of an apron. Lord Campbell, C. J., directed the jury : — That there might be an infringement of the first patent by an appa- ratus for folding the flaps of envelopes, although the paper was not held down during the operation. Also, that a mode of applying gum to the flaps of envelopes after the manner of surface printing might be an infringement of the second patent, although the printing instrument took the gum directly from the reservoir. His Lordship also ruled that the questions of infringement were for the jmy ; and that there was sufficient evidence to go to the jury. The jmy stated that, in their opinion, the folding machine and gumming apparatus of defendants were imitations of plaintiffs two inventions. Verdict for plaintiffs. Leave reserved. Eule nisi for a new trial discharged by the Cornet of Queen's. Bench. (Lord Campbell, C.J., Coleridge, Erie, JJ.) Per Lord Campbell, C. J.— After carefully considering the speci- 7 E & B. p. 753. 166 De la Rue and Others v. Dickenson and Othee.s. fications, we tliink that tlie claim in eacli is for described means of conducting a useful process, resulting in a valuable manufactiu-e ; and that the specification shows distinctly what portions of those means are claimed as new, and what portions are allowed to be old. The defendants contend that the judge, at the close of the plaintiffs' case . . . ought to have determined by his o"^ti authority that there had been no infringement. We consider, however, that the doctrine contended for is contrary to principle, would render it impossible to administer the law of patents, and is by no means to be deduced from Unicin v. Heath (5 H. L. Ca. 505), or any of the other decisions referred to. There may well be a case where the judge may and ought to take upon himself to say that the plaintiff has offered no evidence to be left to the jmy to prove infringement, as if there were a patent for a chemical composition, and the evidence was that the defendant had constructed and used a machine for combing wool. But if the evidence has a tendency to show that the defendant has used substantially the same means to obtain the same result as specified by the plaintiff, and scientific witnesses have sworn that the defendant actually has used such means, the question becomes one of fact, or of fact mixed with law, which the judge is bound to siibmit to the jmy. There can be no doubt that such e^adence was adduced by the plaintiffs. The defendants, therefore, are confined to the contention that the verdict was against the evidence. The plaintiffs fold the flaps in succession by folding instrmnents most ingeniously actuated by cams. The defendants likewise use folding instruments, inserted in the inverted box of the plunger ; and the stroke of the descending plunger, making these folding instruments, called projections, touch the different flaps in succes- sion, folds them finally in the same manner, although not in the same order. Whether the two modes of folding by the cams and the plunger be essentially different or substantially the same, we tliink was a pure question of fact for the jury, and we cannot say that the jury were wrong in the conclusion at which they arrived. The folding being a material part of the plaintiffs' process of manufacturing envelopes, it is not necessary to determine whether their claim extended to the rest of the process, and Avhether the two modes of delivery of the perfect envelopes above and heJoiv be essentially different or be substantially the same : but we would observe that, generally speaking, as the manufacture which is the De la Rue and Others v. Dickenson and Others. 167 result of the process invented and patented is the ultimate object in view, the purpose of the patent laws is to protect all that is new in this process, if it be described, although not expressly claimed. With respect to the patent of 1849, for gumming the envelopes, the jury expressed a clear opinion that the defendants' was a coloiu'- able imitation of the plaintiffs', and we think that this conclusion was fully warranted by the evidence. The great argument of the defendants was that they did not take the gum from an intermedianj surface, and that their process of gumming could not properly be called " surface printing." But we are of opinion that the defend- ants might be guilty of infringement without using an intermediary surface, and that, without what is strictly called " surface printing," they might apply gum to the flaps of envelopes by opera- tions acting ill the manner of surface printing, in contradistinction to the application of gum dii^ect from a fountain containing the gum. While the action was pending defendants put in an answer to 3 K. & J. plaintiffs' interrogatories, which sought for an account of all i' envelopes and envelo^^e-making machines in defendants' possession, as well as discovery as to the purchase or hii-e of such machines, and as to the stock of envelopes made therewith. Also an account of the sales of such envelopes, and of the quantity of envelopes sold by the defendants, and of the profits made by the defendants by the use of the said machines and by the sale of the said envelopes. Defendants admitted the possession and use of such machines, but denied infringement, and submitted that they were not bound to answer f m-ther. Exceptions were taken to the answer, but Wood, Y.C, ordered 3 K. & J. them to stand over till the hearing, and said : — " The rule on which P* "" the plaintiffs rely, that a defendant electing to answer must answer fully, is no doubt a rule sufficiently well-established. ... In a patent case, if the plaintiff once establishes the fact of an infringe- ment, his right to a decree involving full discovery of all matters of the natm-e of those here inquired after is clear ; everything, therefore, showing, or merely tending to show, the fact of infringe- ment must, of eom'se, be set forth in the answer, to the full extent of the interrogatories. But here all the discovery required by the interrogatories in question assumes the fact of infringement, and will be obtained under the decree at the hearing, as a matter of course, provided the fact of infringement be then established. While, on the other hand, if the fact be not established at the 168 De la Rue and Others v. Dickenson and Others. hearing, the whole of the discoveiy required will be utterly imma- terial." Derosne v. Fairie. [a.d. 1835. o Tyr. 393 ; 2 Cr., M. & E. 476; 1 Webs. R. 154.] Sufficiency of Specification — Title of Patent. Case for the infringement of a patent of 29th Sept. 1830, No. 6,002, to C. Derosne, for " improvements in extracting sugar and sj-ruj)s from cane juice and other substances containing sugar, and in refining sugar and sjrrups." Pleas : 3. That the specification was insufficient. 4. That no specification was enrolled. Issue. The patent related to a process for freeing syrup or sugar from colouring matter by filtration through charcoal. The specification stated : — " The invention consists in a means of discolouring syrups of every description by means of charcoal produced by the distilla- tion of bituminous schist us alone, or mixed with animal charcoal, or even of animal charcoal alone." It then described the operation, and the precautions to be observed. It further referred to juices or liquids " tchich had been bohed for extracting the sugar," and con- cluded by stating : — " The carbonization of bituminous schistus has nothing particular ; it is produced in closed vessels, as is done for producing animal charcoal, only it is convenient before the carboni- zation to separate from the bituminous schistus the sulphurets of iron wliich are mixed with it." At the trial, it was admitted that the patentee, who was a foreigner, had incorrectly used the word " baked," when he should have said "before crystallization" — i.e., before the process was completed. He had also used the word " discolour " in the sense of depriving of coloiu" — " decohrer.'^ But the objections raised on these grounds were not pressed. It was not, however, made clear upon the evidence whether bitmninous schistus was or was not capable of being purified from the srdphurets of iron with which it was admixed, so as not to impart coloiu* to the solution. Lord Abinger, C.B., directed the jury to find for plaintiff or defendant according as they were of opinion that the description of bitu- minous schistus was sufficient or insufficient, so that all the world could or could not use it. Yerdict for plaintiff. Leave reserved. Rule nisi to enter a nonsuit, on the grounds, (1) of a variance between the title and specification (the title being for extracting and refining sugar, and the specification referring only to the removal of the colour) ; (2) that the specification was insuificient. Rule made absolute by the Com-t of Exchequer for a new trial on Dp:rosne v. Fairie. 169 the second ground of objection. (Lord Abinger, C.B., Parke, Bolland, Alderson, BB.) Per Lord Abinger, C.B. — One objection to the plaintiff's speci- 5 Tyr. fication is rested on the ground that it does not set forth that ^' '^°^- double process which one would expect from the title of the patent. . . . We do not think that the question necessarily arises at present, or that it calls for an ultimate decision, because we think, on consideration, that the double process or both the branches of the invention mentioned in the patent are sufficiently described in the specification. The word " improvements" was relied on as being in the plural number, but that is of no consequence, because the plaintiff may mean every part of his process to be treated as an improvement, forming together a series. Upon the main point, however, that respecting the bituminous 5 Tyr. schistus, nothing that I have heard has removed my original P" impression that there was no evidence to show that this process, carried on with bituminous schistus in combination with any iron whatsoever, would answer at all. The plaintiff has himself de- clared that in that bituminous schistus which he himself furnished, the whole iron was extracted, and it appears that it was admitted by counsel that the presence of iron would not only be disadvan- tageous but injmious. ... I am therefore of opinion that, without considering whether or not the patent would be avoided by the patentee's keeping secret the means requisite to extract the iron from the bituminous schistus, he has not shown in this case that what he has described in the patent could be used as so described, without injiuy to the matter going through the process. Under all the circumstances, we think the plaintiff ought to have given some evidence to show that bituminous schistus, in the state in which it is found and known in England, could be used in this process with advantage ; and as he has not done that, the defendant is entitled to a nonsuit ; but at the same time, as it is alleged that the plaintiff may, on a new trial, supply the defect of proof as to the schistus by other evidence, we are desirous that the patent, if a good one, should not be affected by our judgment, and think it right to direct a new trial. Per Alderson, B. — A specification must state one or more 5 Tyr. methods which can be followed, for the pm^pose of accomplishing ^" and carrying into effect the invention. One of the methods stated in this case is the application of a filter, composed of charcoal, formed by the distillation or carbonization of bituminous schistus. 170 Derosne v. Fairie. It must, therefore, be sliowu that the purpose will be accomplished by following that method. . . . Certainly if any admission was made that the presence of iron would be a detriment to the operation, without confining that admission to its being a less perfect mode of exliibitiug the experiment than would otherwise be the case, that undoubtedly would be a ground for a nonsuit. Dixon v. The London Small Arms Company. [A.D. 1875-70. L. E., 10 a B. 130 ; L. E., 1 Q. B. D. 384 ; L. E., 1 App. Ca. 632; 44 L. J., Q. B. 63 ; 46 L. J., Q. B. 617.] Infringement hy Sale for the Public Service — Bights of the Crown. Case for the infringement of several patents relating to the manu- facture of rifled fire-arms. Referred to an arbitrator, who stated a case for the opinion of the Court of Queen's Bench, It appeared that plaintiff was managing director of a company engaged in the manufactui-e of the Martini-Henry rifie under ceiiain patents. Defendants were also engaged in manufacturing fire-aims, and they tendered for the supply, for the public service, of several thousand Martini-IIenry rifles, upon terms {inter alia) that the contractors should be protected by the War Department against patentees in the manufacture of the arms to be contracted for. This tender was accepted by the Secretary of State for War, and the rifles were made and delivered accordingly. It was conceded that such manufacture and sale would have infringed the plaintiff's patent rights had the rifles been consigned otherwise than for the use of the Crown. The question raised was, whether plaintiff was entitled to recover against defendants for the infringement. Judgment for plaintiff by the Court of Queen's Bench. (Cockburn, C. J., Mellor, Lush, Ai-chibald, J J.) ro Q. B. Per Cockburn, C.J. — The Crowoi is not before the Court, as was r- ^'^^^ the case in Feather v. The Queen (6 B. & S. 257). This is a case in which subject and subject are before the Court as litigants. One subject complains of his right having been invaded, which the other most imdoubtedly has invaded, unless it has been done by a lawful command of the Crown. It is said that this is a matter which the Cro-wTi has power to authorize. That might be the case if the party manufacturing the article were the servant or the immediate agent of the Crown, and not an independent contractor ; but here the defendants are independent of the Cro^vn — they are not called upon to enter into this contract if they do not please ; it is their o^\ti act, and at their own option ; and on these grounds I think they ought to pay the patentee compensation for the use of his invention. Dixon v. The London Small Arms Company. 171 Per Mellor, J. — I was party to tlie judgment in Feather v. The Queen, and I may say that no member of the Court ever contem- plated the extension of that doctrine beyond the limit there Laid down. Per Lush, J. — The claim set up by the defendants is a right to infringe a patent and manufacture the patented article for their own profit, in order to enable them to sell the article when so manufactured to the Government. That is, I think, beyond the scope of the privilege which the Crown enjoys. Per Archibald, J. — These proceedings are not against the lo Q. B. Crown ; if they were they Avould be governed by the case of ^' Feather v. The Queen (6 B. & S. 257) ; but these are proceedings against a company who infringe the plaintiff's patent right, in order to carry out the contract to supply and deliver these rifles to the Crown. It is said that a part of the contract is, that they are to be suj)plied on the tenns that the defendants are to be protected against the patentee. I do not myself consider that the indemnity is a part of the contract which is referred to in the special case ; but even if it were, it would make no difference. That is a thing the Crown cannot do. No doubt, if this contract stipiilated that these persons were to be employed as servants of the Crown at a salary or wages, just as if they were in the workshop of the Crown, that would be a different case. The rifles then would be manufactured by the Crown, and there would be a substantial difference between such a contract and the present, for this contract might have been performed by supplying articles manufactured long before the date of the contract. I do not think this case falls within the principle of Feather v. The Queen ; and I quite agree that there is no ground on which we ought to extend the principle of that decision. Appeal from the judgment of the Court of Queen's Bench. iQ.B.D. Judgment reversed, and entered for defendants by the Court of P* Appeal. (Kelly, C.B., James, Mellish, L.JJ., Grrove, J.) Per James, L.J. — It appears to me that Feathers. The Queen iq.b. B. was decided upon principles impossible to be questioned, and that P* ^^^' that case is now a binding authority. It has been settled in all ■ kinds of cases that what a person may lawfully do himself he may lawfully do by his attorney, his bailiff, his contractor, his agent, his servant, his workman ; and it is a sufficient plea in certain cases that the thing was done by the authority, at the request, or on behalf of the person who had a legal right to do it. Almost every great work in this country is done by contractors, who act under the authority of the bodies who have received authority from Par- liament to do what is required to be done. 172 Dixon v. The London Small Arms Company. If it be the ease, as it appears to me to be the case here, that what was done was done by the authority, and the express authority, for the use and for the benefit, of the Crown, it is, in my mind, merely saying that it was done by the Crown. The Crown has done it by such person or persons, in such a way and under such circumstances as the officers of the Crown thought fit to do it. 1 Q.B.D. Fer Mellish, L.J. — I think oiu- diiference with the Court below ^' '■ arises partly upon the construction of the contract itself. Some of the learned judges seem only to have looked at the printed part of the contract, without considering that it refers to a schedule, and that the most material parts of the contract are really contained, not in the printed part, but in the ^^Titten schedule annexed to it. In the Avritten schedule, when we look at the contents of it, it is plain the Crown was to provide the steel tube and the stock for each rifle, and that then the contractor was to manufacture the steel tube and the stock into a perfect Martlni-Ucnry rifle, which was to be inspected during the process of manufacture by the Crown's officers at the particular place where it was to be manu- factured. Therefore it plainly was a contract to manufacture certain articles for the pui'poses of the CrowTi. Now if the Cro-^ii has the right to have the patented articles manufactured by its servants, has it not the right to have them manuf actui'ed by entering into a contract with a contractor ? . . . If a railway company employs a contractor to do any one of the nmnerous works which the railway company are authorized to do by Act of Parliament, there is no doubt at all that the contractor may justify doing the act under the authority of the railway com- pany. . . . The act of the contractor, expressly authorized by the contract, is the act of the employer, just as much as the act of a servant is the act of his master. Therefore, when the Queen em- ploys these defendants to manufacture her stocks and barrels into these Martini-Henry rifles, that is really, in point of law, the act of the Queen herself, and the contractor may justify, just as the servant may justify. 1 App. Ci). Appeal to the House of Lords, when the judgment of the Court ^' ' of Appeal was reversed, and the judgment of the Court of Queen's Bench was restored. No costs given. 1 App. Ca. Pot' Lord Cairns, L.C. — The result of the whole is this ; what I p. 644. j-jjj^y ^^Y the raw material for the barrel, the steel tube, is supplied by the Grovemment at a certain price ; the butt or stock of the rifle is supplied by the Government at a certain price ; all the other components of the arm have to be provided or made (for the Dixon v. The London Small Arms Company. 173 contract is consistent with either view) by the contractors. The whole component parts have to be inspected from time to time by the officers of the Government. They have the right from time to time to reject any part of the arm while in the course of manu- facture which is not consistent with the contract and the specifica- tion ; and when the whole is, to use the technical term, " assembled," when all the pieces of the arm are put together, then if it complies with the specification, and in that case only, it is to be taken over and accepted by the Grovemment, and the property in it is to pass to the G-overnment, and, on the other hand, the price is to be paid for the article to the contractors. The question then has to be asked: — "During this process, what is the position of the person who is called the contractor ?" He is clearly not a servant of the Crown. That was not contended. There is no contract of service whatever between him and the Crown. He is not an officer of the Crown engaged in the service of the Crown. Is he, then, an agent of the Crown? I cannot find any ground whatever for contending that the contractor is an agent of the Crown. He is a person who is a tradesman, and not the less a tradesman because he is engaged in works of a very large and extensive character; he is a tradesman manufactm-ing certain goods for the purpose of supplying them according to a certain standard which is laid before him as a condition on which the goods will be accepted. During the time of the manufactvu-e, the property, at all events in that which concerns the present case, namely, the property in the lock, or the breech action of the rifle, is not the property of the Cro\\Ti. The materials are not the materials of the Crown. If the respondents make the lock them- selves, the materials are provided by the respondents, and the respondents work upon those materials, not as the agents of the Crown, but as conducting their own work and theii- own manu- factures for the purpose of supplying the complete arm. I can find here no delegation of authority— no mandate from a principal to an agent ; I find here simply the ordinary case of a person who has undertaken to supply manufactured goods, who has not got the goods ready manufactured to be supplied, who has to make and produce the goods in order to execute the order which he has received. I find him engaged in that work on his own account up to the time when the article is completed, and handed over to, and accei)ted by, the person who has given the order. I, therefore, arrive at the conclusion that there is not here, on the part of the respondents, that whieli amounts in any way to tlie 174 Dixon v. The London Small Arms Company. character or status of an agent, a servant, or an officer of tlie Cro"s\Ti. If so, tlie respondents are not mtliin the exception which the case of Feather v. The Queen (6 B. & S. 257), decided to exist in letters patent ; and, if they are not within that exception, it woidd be impossible that the Crown could communicate to them a privilege which was only a privilege attaching upon the Crown itself, and upon those who might be the agents, servants, or officers of the Crown. DoBBS V. Penn. [a.d. 1849. 3 Ex. E. 427.] Novelty of Invention — Subject-matter of a Patent. Case for the infringement of a patent of 30th Jiow, 1838, No. 7,716, to 7F. Dobhs, for " improvements in the construction of racks and pulleys for window blinds." Pleas: 1. That plaintiff was not the true and first inventor. 2. That the invention was not new. 3. That it was not the working of any manner of manu- factui'e. Issue. The patent related to a method of adjusting the tension pulley of a roller window blind by means of a screw clamp capable of sliding along a so-called box or case, which was, in fact, a slit tube. The specification described the contrivance by reference to dra"vvings, and also the method of forming the slit tube by drawing a strip of thin metal through the hollow frustum of a cone, and afterwards through a di'aw-2:)late. Claim : " The making such boxes or cases by -means of di'awing strijDS of thin metal thi'ough a cone and tlu^ough a di^aw-plate, and the adaptation of tubes so made as boxes or cases for the slides of bell-pulls and other usefid purposes ; and further, the contrivance for fixing the stud of the pulley by means of a clamp and screw as above described." At the trial, defendant gave in evidence the specification of a patent of 15th Jan. 1810, No. 3,293, to T. BayJey, for the apphca- tion of a screw (instead of a rack and spring) to the moveable slide in sliding pulleys for window blinds, closely resembling that of plaintiff, and consisting of a grooved frame, having a sHde inside the groove, with a small covering plate, called an escutcheon, out- side, the two pieces being clamj^ed to the frame by a screw cany- ing on its spindle the tension pulley of ih^ window blind. The specification stated : — " I sometimes make my sliding pulleys ^dthout an escutcheon.^'' An objection was raised that the application of cb•a^\^l metal tubes to the "cases " of window blinds and other useful pui'j)oses DoBBS V. Penx. 175 was not subject of a patent. Patteson, J., left the case to the jury. Yerdict for plaintiff. Rule nisi for a new trial made absolute by the Court of Exchequer. Per Paeke, B. — Two objections were made by my brother 3 Ex. R. Talfourd ; one was, that the mode of making the slides of di'awn P' metal could not be the subject of a patent, on which it is unneces- sary for us to say anything ; for the other which was that part of the alleged invention was not new, is, we think, insuperable. If the escutcheon be absent, the invention of Bayky differs from the plaintiff's in no one respect, except in the mode of attaching the screw to the slide by means of a nut, which is quite immaterial. "We think there must be a new trial, as the part of the invention which relates to the screw is not new. DOLLOND V. " [A.D. 1776. Cited 2 H. Bl. 470, 487 ; Pari. Eep. 182 ; 1 Webs. E. 43.] First Puhlisher of an Invention, Case for the infringement of a patent of 19th April, 1758, No. 721, to J. BoUond, for "a new method of making the object-glasses of refracting telescopes." The patent related to the construction of an achromatic object-glass, formed by the union of lenses of crown and flint glass respectively ; whereof the crown glass lens was convex, the flint glass lens concave. The refractive power of the crown lens exceeded that of the flint lens, but its dispersive power (called rf/)'fl'»^?6<7/i'y) was less. The specification stated: — "There remains a difference of refraction by which the image is formed, without any difference of refrangibility to disturb the vision. The radii of the surfaces of each of these glasses are likewise so propor- tioned as to make the aberrations or errors which proceed from the spherical surfaces of these glasses respectively equal, and being contrary, they destroy each other." At the trial, it was proved that one Dr. Hall had made such glasses in 1720, but had not disclosed the secret. The patent was supported. In referring to this case, Buller, J., said: — "The objection to 2 H. BI. Bollond's patent was that he was not the inventor of the new P* •*'"• method of making object-glasses, but that Dr. Hall had made the same discovery before him. But it was holden that as Dr. Hall had confined it to his closet, and the public were not acquainted with it, Bollond was to be oonsidered as the inventor." p. 244. ( 176 ) Dudgeon v. Thomson and Another. [a.d. 1877. 30 L. T., N. S. 244 ; L. E., 3 App. Ca. 34.] Practice in Patent Actions — Interlocutory Injunction — Disclaimer — Evidence of Infringement — Mechanical Equivalents. Proceedings in Scotland to restrain the infringement of a patent of Tth March, 1866, No. 699, to G. T. Bousfield, for ''improvements in apparatus for expanding boiler tubes." A communication from America by R. Dudgeon. An interdict, confirmed by the Comi of Session in 1873, was granted at the suit of Dudgeon, restraining the defendant Thomson from infringing the patent. Shortly after the decision in Scotland, and in an action between the same parties upon the same patent, brought in England, plaintiff moved for an interlocutory injunction until the hearing, which was granted by Jessel, M.R., who said : — 30 L- T. " The Court can grant an injunction before the hearing where the patent is an old one, and the patentee has been in long and undistiu-bed enjoyment of it ; or where its validity has been esta- blished elsewhere, and the Court sees no reason to doubt the pro- priety of the residt ; or where the conduct of the defendant is such as to enable the Court to say that, as against the defendant himself, there is no reason to doubt the validity of the patent. I shall grant the injunction asked for on all these grounds. The patent is eight years old, as old as the patent in Betts v. Menzies (3 Jur., N. S. 357), where it was said that where the patentee has had long enjoyment he shall have an injunction to protect his rights until trial, even although his rights under his patent be doubtful. It has been urged that the question of novelty was not raised in Scot- land, or was not decided, but that must have been because a plea of want of novelty was not put in ; or, if put in, was waived. I cannot regard the decision of the Coiu*t of Session on a patent for the United Kingdom as the decision of a foreign Com-t. Besides, the defendant Thomson was not in the ordinary position of an infringer asserting want of novelty, for he was the proiDrietor of a subsequent patent, which has been decided to be an infringement of the plaintiff's patent, and so is in a worse position than an ordinary defendant who might have acted ignorant ly." Eeturning to the proceedings in Scotland : On 29th April, 1874, the defender Thomson obtained a patent, No. 1,430, for a new or improved expander for boiler tubes. On 28th May, 1875, the pm^suer Dudgeon disclaimed a part of liis patented invention, and brought a new action for infringement Dudgeon v. Thomson and Another. 177 against the same defender. The Court of Session refused to allow a second interdict, but granted process for a breach of the first interdict, which had, as appears above, been granted before disclaimer. The Court of Session finally held that no infringement had been committed. Appeal to the House of Lords, who ruled that the first interdict could not be enforced after disclaimer, but nevertheless affirmed the interlocutors appealed from, and dismissed the appeal' with costs. The patent related to a method of expanding the ends of boiler tubes, and fitting them into holes in the flue sheet. The specifi- cation stated : — "The principle of the invention is to expand the tube by rolling the metal by the application of pressure rollers to the interior of the tube, so that the metal is extended by rolling, in contradistinction to the old system of driving it outwards by hammering." The expanding apparatus consisted of a tapering screwed plug which carried a block. A longitudinal slot, similar to that in a drill spindle, was cut along the plug, and a feather on the block worked in this slot, whereby the block rotated with the plug in all positions. The block carried expanding rollers which operated on the inner surface of the tube, and the rollers were pushed out radially so as to enlarge the tube by screwing the block towards the thicker end of the tapering plug. Or the rollers might be set at a small angle to the axis of the plug, in which case the block would work its way into the tube by the screw-like action of the rollers, and the screw-thread on the plug coidd be dispensed with. The claims in the original specification were reduced by dis- claimer to the following single claim, viz., " the combination in an expanding tool of the following implements, viz., the rollers, roller-stock, and expanding instrument, these thi'ee operating in combination substantially as set forth." The specification of the patent of 1874, No. 1430, on which the charge of infringement was founded, described an apparatus having an internal central roller " preferred to be nearly cylindrical " (and which appears to have been made cylindrical in practice), carrying three conical expanding rollers. The expanding rollers were kept in their place by two flat discs held at a certain distance by cylindrical tie bolts, each roller lying between a pair of adjacent tie bolts. It was arranged that the expanding rollers should have their axes somewhat inclined to the G. X 178 Dudgeon v. Thomson and Another. axis of the central ejdincler, whereby, on rotating the instrument, it aclyanced into the tube by the bite of the rollers themselves. The specification stated : — *' The novelty consists in making the central roller parallel, and having the expanding rollers placed at an angle and tapered or conical, and being long enough to expand the tube by the angular frictional rolling action of the outer rollers, without expanding these rollers." In truth, the rollers did not expand, but a rolling cu'cular wedge entered and enlarged the tube. Lord Cairns, L.C. — After observing how extremely irregular it was in those who were engaged in this proceeding in Scotland to suppose that after the disclaimer the question of enforcing the old interdict could be entertained by the Court, said that nevertheless their lordships were willing, in mercy to the parties, to consider the question of infringement, and to determine it by way of review of the determination of the Com-t of Session. His Lordship then pro- ceeded to discuss the language of the specification, and continued : — Under the statement that the "three instrumentalities are all that are absolutely essential to the construction of the roller," one of the instrumentalities being the tapering plug, or its equivalent, as so defined, you have implied this further statement — that the tapering plug, or its equivalent, as so defined, is absolutely essential to the invention. 3 App. Ca. The point which gave the characteristic to the whole, and which he (the patentee) justly called a point absolutely essential to his invention, was the tajiering plug acting as an expander, driving out those cylindrical rollers placed around the plug, and thus pro- ducing that which must have been the desideratum in this invention, a heavy, continuous forcible pressiu-e against the inside of the tube for the purpose of expanding it. 3 App. Ca. Plis Lordship then considered the instrument charged as an in- ^' * fringement, and said : — They (the respondents) do not in any way expand or drive out their cylinders from the centre. They have no tapering plug, and in that sense have no expanding instru- ment. They have not their rollers fixed in radiating slots, so that they would be capable of being expanded — that is to say, di'iven outwards. But what they have is this : They have what I have termed a fasciculus of rollers ; but their three rollers, in place of being three parallel perfect cylinders, are tapering cylinders placed together, and the centre of their tool is not a tapering plug, but is itself a centre cylinder. . . . The whole is worked, not by way of pressing out the cylinders against the tube, but as a complete Dudgeon p. Thomson and Anotiiek. 179 wedge inserted into the tube, having- the contour of a wedge and expanding the tube, flattening out the tube by working its way into the tube like a rotating wedge. There used to be a theory in this country that persons might in- 3App. Ca. fringe upon the equity of a statute. If it coidd not be shown that they had infringed the words of a statute, it was said that they had infringed the equity of the statute ; and I know there is, by some confusion of ideas, a notion sometimes entertained that there may be something like an infringement of the equity of a patent. My Lords, I cannot think there is any sound principle of that kind in our law ; that which is protected is that which is specified, and that which is held to be an infringement must be an infringement of that which is specified. But I agree that it will not be the less an infringement because it has been coloured or disguised by additions or subtractions, which additions or subtractions may exist and yet the thing protected may be taken notwithstanding. My Lords, when I look at that Avhich the respondents have in this case done, and the article which they have sold, it appears to me to be a different article from the article specified. It is, no doubt, a cognate invention ; it aims at accomplishing the same pur- pose ; it uses, no doubt, friction rollers, but it has not that thing which the patentee has chosen (I have no doubt for proper reasons) to describe as one of the characteristic features of the invention, and which, as it seems to me, he might almost have said was the characteristic feature of his invention, because, as it seems to me, it was that without which his invention would have been abso- lutely nil. Lord Blackburx, after referring to the cpiestion of infringe- 3App. Ca. ment, said: — The phrase " coloiu-ably " is very apt to mislead in these cases. If part of the property in the invention be really taken, there is an infringement, however much that may be dis- guised or sought to be hidden. If that is detected by the patentee, and if what is taken is really part of his property given to him by the letters patent, he has a right to proceed against the infringer, however ingeniously the colours may have been contrived to try to conceal the fact that there has been a taking of part of the pro- perty. But for all that, it is not correct to say that doing any- thing that answers the same object is necessarily an infringement of the specification ; we must look at what is shown in the speci- fi.cation. It may be that the question arises whether the particular thing is or is not within the specification. . . . AMi ether it is for the n2 p. 53. 180 Dudgeon v. Thomson and Another. interest of one side or tlie other, I apprehend the duty of the Court is fairly and truly to construe the specification, neither favouring the one side nor the other — neither putting an unfair gloss or construction upon the specification for the pui'pose of saving a patent if it is said that the patent is void, nor putting an unfair gloss or construction upon it in order to extend the patent and make it take in something which you may think was an un- handsome taking of the fruits of his invention from the patentee, if it is not really an infringement of the patent. 3App. Ca. The real question upon the merits is. What is the true con- struction of this specification as it stands ? I have already pointed out that the words of condition have nothing about claiming. You may have a perfectly good specification without the word " claim " or the thing " claim " in it at all, but nevertheless a clauning clause is commonly inserted at the end of a patent, and that is of immense importance in enabling us to construe the specification, and to see, looking at the whole specification, whether a thing is included in it or not. 3 App. Ca. My Lords, I think, after the disclaimer, there can be no reason- able doubt in the construction that what is meant by " the expanding instrument " is that which was previously called in the earlier part " a tapering plug or its equivalent, by whose action the rollers are forced outwards in the tube." . . . But when we take, as I appre- hend we are entitled to take, the old specification before the dis- claimer in order to see what it means, that becomes still clearer. I say we are entitled to take it, for the object of a disclaimer is merely to take out and renounce part of what had been claimed before, and it would vitiate the new specification if by striking out that part you gave an extended and larger sense to what is left, so as to make it embrace something which it did not embrace before. I do not think that is clone here. His Lordship then discussed the language of the specification, and arrived at the conclusion that the patentee claimed a combina- tion of three instrumentalities, one of which was the tapering plug, which had the effect of forcing the outer rollers asunder. He finally observed: — It seems to me that he claims that [combination] and nothing more than that, and the respondents have done what they had a perfect right to do : having avoided that combination they have produced the same thing by other means, which there was nothing to prevent them from doing. p. 55. ( 181 ) DUNNICLIFF AND BaGLEY V. MaLLET. [A.D. 1860. 7 C. B., N". S. 209; 29 L. J., C. P. 70.] Validity of Assic/nmcnt of Part of a Patent. Case for the infrmgement of a patent of lltli June, 1850, No. 13,122, to J. D. Dunnicl{f and J. W. Baglcy, for "improvements in lace and other weavings." The declaration recited the grant of the patent, and certain indentures of assignment whereby the interest in one portion of the patent became wholly vested in plaintiffs. Plea in abatement: Non-joinder of other parties jointly interested with plaintiffs in a distinct portion of the patent. Judg- ment for plaintiffs by the Com-t of Common Pleas. (Erie, C.J., Crowder, Byles, JJ.) Per Erle, C.-J. — The main question is, whether an assignment 7 a B. of part of a patent is valid. I incline to think that it is. It is " every day's practice for the sake of economy to include in one patent several things which are in their nature perfectly distinct and severable. It is also every day's practice by disclaimer to get rid of part of a patent which turns out to be old. Being, there- fore, inclined to think that a patent, severable in its natui'e, may be severed by the assignment of a part, I see no reason for holding that the assignee of a separate part which is the subject of infringe- ment may not maintain an action. Fer Crowder, J. — I see no reason to doubt that an assignment of a separate and distinct part of a patent is valid. No authority has been cited to the contrary, and in practice these assignments are common. Assuming, then, that the plaintiffs are legally assignees of a part of this patent, the question is, whether it is competent to them to sue alone in respect of an infringement of that part. I am of opinion that it is. Edgeberry V. Stephens. [2 Salk. 447; 1 Webs. E. 35.] First Importer of an Invention. " A grant of a monopoly may be to the first inventor by the 21 Jac. I. ; and if the invention be new in EngJamI, a patent may be granted, though the thing was practised beyond the sea before ; for the statute speaks of new manufactiu-es within this realm ; so that if they be new here, it is within the statute ; for the Act in- tended to encourage new devices useful to the kingdom, and whether learned by travel or study, it is the same thing. Agreed by Holt and Pollexfen." ( 182 ) Edison Telephone Company v. India Rubber Company. [A.D. 1881. L. E., 17 Oil. D. 137.] Practice in Patent Actions — Amendment of Particulars of Objections. Action to restrain the infringement of a patent for telephone transmitters. "Writ issued oth Mar. 1880 ; statement of defence and particulars of objections delivered in June, 1880. Issue joined and hearing fixed by consent for loth Mar. 1881. On 26th Feb. 1881, defendants took out a summons for leave to deliver amended particulars of objections, which summons was adjourned into Court. It appeared that the additional instances of prior publication sought to be inserted in the particidars only came to the knowledge of plaintiffs' solicitors on 2-lth Feb. 1881. Bacox, y.C, granted the application on terms, and said : — " The case of Feiin v. Bibbi/ (L. E., 1 Eq. 548), I dare say, was rightly decided upon the facts before the Court then, and the argument then m'ged, but I cannot adopt that as a rule regulating the practice in patent cases. The order must be made in the very terms of the order in Baird v. Moulc's Fatent Earth Closet Company (M. E., 3 Feb. 1876), putting in a month instead of six weeks for the period within which the plaintiff is to elect whether he will discontinue or not. Defendants must pay the costs of this appli- cation, and the case will stand over generally, mth liberty to either party to apply." The order in Baird v. MouIe\s Fat. Earth Closet Co. is given in a note to the present case at page 139 L. R., 17 Ch. D., and is the following : — Let the plaintiff, Avithin six weeks fi'om the date of this order, elect whether he will discontinue this suit, and if the plaintiff shall elect to discontinue this suit, and shall give notice thereof to the defendants within six weeks from the date of this order, refer it to the taxing master to tax the defendants their costs up to and including the 23rd Feb. 1875 [delivery of the original particulars of objections], and to tax the plaintiff's costs of this suit subse- quently to the said 23rd Feb. 1875, to the date of this order, and the taxing master is to set off the costs of the plaintiff and of the defendants to be so respectively taxed, and to certify to which of them the balance after such set-off is due. And let such balance be paid by the party from whom to the party to whom the same shall be certified to be due. And if the plaintiff shall not give notice to the defendants of his discontinuance of this suit within the time aforesaid, let the defendants be at liberty to add to the Edison Telephone Co. v. India Rubber Co. 183 particulars of objections wliich have been akeady delivered by the defendants the following fui'ther objections to be relied on by the defendants at the hearing of this cause, viz., &c. The Electric Telegraph Company v. Nott. [A.D. 1846—7. 11 Jur. 273; 2 Coop. Ch. Ca. 41 ; 4 C. B. 462; 16 L. J., 0. P. 174.] Practice in Patent Suits — Injunction — Considerations which guide the Court — Particidars of Infrimjement. Suit to restrain from infringing three several patents — viz., of 12th June, 1837, No. 7,390 ; of 21st Jan. 1840, No. 8,345, to W. F. Cooke and C. Wheaistone, each, in substance, for improve- ments in giving signals at distant places by means of electric cm'rents ; and of 8th Sept. 1842, No. 9,465, to TT. F. Cooke, for a like invention. Injunction refused, with leave to bring an action at law. On appeal to the Lord Chancellor, order affirmed. Fer Lord Cottenham, L.O. — I have not departed from the 2 Coop, principles laid down by any of my predecessors, that where the application to the Court is to protect and assist a legal right, it becomes the Court to be extremely cautious in administering its equitable jmisdiction by way of injunction ; and that such caution is requisite for two reasons ; first, because if the legal right ulti- mately fail, or if the acts complained of tm-n out to be no violation of the legal right, the Court then has interfered without any authority whatever, the authority being merely derivative from the legal right, and in aid and protection of it; secondly, and principally, because in this Cornet there is no comparison between the evil of an error in refusing an injunction, and the evil of an error in granting an injunction. In ordinary cases an injunction, if improperly granted, causes infinitely more mischief to the defendant than the delay of granting an injunction can possibly cause to the plaintiff. ... In cases of this description, it became the Com-t to be extremely cautious, and, as a general rule, the Court ought not to give its aid to the legal right by injunction, unless satisfied — the legal right being disputed — that in the result such legal right would be established, or— the legal right not being disputed— that the acts complained of were a ^delation of it. The doctrine as to the Court declining to interfere in general imtil the legal right is established, is open to one exception. The exception is this : that where a patent has existed for some time, and there has, diuing this time, been a user imder the patent, it 184 The Electric Telegraph Co. v. Nott. is au assei-tion of a title against all tlie world. If, diu-ing this time, the patent has been exclusively enjoyed, it is strong corroborative evidence of the validity of the patent. The Court has in such case assumed the validity of the patent. The Court has acted as if the patent were valid, supposing that there was nothing else in question but the validity of the patent — no question of infringement. The Court has given so much sanction to the right asserted by the patent as to aid and protect it, till the patent be proved to be invalid. Three separate actions at law were then brought, one on each patent. It appeared that the alleged infringement consisted in the use of an apparatus combining the several inventions. Rule nisi for particidars in writing of the alleged infringements discharged by the Coui-t of Common Pleas. (Wilde, C.J., Coltman, Cresswell, Williams, JJ.) Costs to be costs in the cause. J?cr Wilde, C.J. — It may be impossible for the plaintiffs to point out which of the several heads of the invention they charge the defendant with having imitated ; it may be that the invention consists in the combination only. Seeing, therefore, that that which is required must necessarily very much embarrass the plain- tiffs, and not being satisfied that there is any probability of sui^rise on the defendant for want of it, or that they do not possess an adequate amount of information on the subject, though I entertain no doubt as to the power of the Court to grant it, I am of opinion that this is, at all events, not a case for the exercise of that power. The Electric Telegraph Company v. Brett and Little. [a.d. 1851. 10 c. b. 838 ; 20 l. j., c. p. 123.] Evidence of Infringement — Limitation hy Title of Patent — Construction of Specification — Infringement hy pirating part of an Invention — Suhject- matter of a Patent. Case for the infringement of a patent of 12th June, 1837, No. 7,390, to W. F. Coolie and C. Wheatsfone, for " improvements in giving signals and sounding alarums in distant places by means of electric currents transmitted through metallic circuits^ The declaration recited the patent, and certain indentm'es of assignment of the same to plaintiffs, and alleged that defendants had used and counterfeited the invention. Pleas: 1. Not guilty. 12. That the invention was not a new manufactm-e within the statute. 14. That it was not an improvement in giving signals through metallic circuits. And other pleas putting in issue the title of plaintiffs. Issue. Electric Telegraph Co. v. Brett and Little. 185 The patent related to the so-called Five-needle Telegraph appa- ratus, which was tried on the Great Western Railimy, but was speedily abandoned, and gave place to other systems founded upon it. The specification described the apparatus by reference to drawings, and showed it to consist of five galvanometer needles, mounted on horizontal axes upon a board, and having twenty letters of the alphabet arranged thereon in a lozenge-shaped figui'e. The needles were caused to deflect either to the right or left, heticeen stops, by the agency of electric currents, which were directed by suitable keys, and the convergence of any pair of needles upon a letter indicated that such letter was being signalled. The method of arranging the conducting wires, batteries, and recording apparatus was explained, and was substantially that which has existed ever since. The apparatus required six separate conducting wires, viz., one for each of the five needles, and a sixth, or return wire, to bring the current back to the primary station. The specification stated : — " That, if required, duplicates of the same apparatus were to be provided at any intermediate places between the two termini, where simultaneous and like signals were required to be given." It then described the arrangement of the conducting wires, and stated that the apparatus before the operator, as well as the duplicates at the distant and intermediate places, would all exhibit the same signals at the same time. Claims : 1. "We wish it to be understood that we make no claim to the application of the multiplying coils of conducting wires herein described (meaning thereby the galvanometer coils and mag- netic needles), but the improvement in the adaptation of magnetic needles for giving signals consists in disposing the needles in vertical planes with fixed horizontal axes ; making them heavier at one end than the other, so that they hang perpendicularly ; and limiting the angidar motion by stops against which the needles may rest in suitable inclining direction for pointing out on a vertical dial the signification of the signals." 2. (In substance.) The com- bining several needles so as to give signals by determinate angular motions. 5. (In substance.) The improvement whereby tlie complete apparatus for gi\dng signals and sounding alarums, as described, may have duplicates of such apparatus at intermediate places between the two ends, all such duplicates operating simul- taneously with each other. At the trial, it appeared that the alleged infringement consisted in working under a patent of llthFeh. 184:7, 'No. 11,676, to A. Brett and G. Little, for improvements in electric telegraphs. In defendants' 186 Electric Telegraph Co. v. Bkett and Little. apparatus, a lig-lit di-sdded ring magnet was suspended on a fine centre parallel to a flat reel of coiled conducting wire, and was made to swing a little either to the right or left by electric currents, properly directed, and passing through the coil. In the act of swinging, the ring pushed indicating needles, centred on pivots, also to the right or left, and produced a result resembling that given by an ordinary galvanometer coil and needle. The signals consisted in combinations of movements of the indicating needles, to the right or left, and in this way a telegraphic communication could be kept up by a single wire, while intermediate stations could both send and receive signals. It having been discovered by Stcinheil, subsequently to the year 1837, that a return wire was unnecessary, and that the earth would complete the circuit, de- fendants used no return mre, but buried the ends of short lengths of wire, at opposite termini, in the ground, and in this way worked with a circuit, part only of which was metallic, the remainder being the substance of the earth itself. "Wilde, C.J., left the case to the jmy, who found : — 3. That the magnetic ring and indicator used by defendants was a different in- strument from plaintiffs' needles. 4. That the sending of signals to intermediate stations was plaintiffs' invention. 5. That the angular motions of needles in vertical planes and on horizontal axes in combination with stops was the invention of plaintiffs. Yerdict for plaintiffs. Leave reserved. Rule nisi for a new trial, or to set aside the verdict on these find- ings, discharged by the Com-t of Common Pleas. (Wilde, C.J., Maule, Cresswell, Talfoui'd, JJ.) Per Cresswell, J. — The first objection was, that the patent of the plaintiffs being described in the title as an " Invention of im- provements in gi^'ing signals and sounding alarums in distant places, hy means of electric currents transmitted through metallic circiiit.s." . . . No infringement had been made by the defendants, or, indeed, could be made, as long as the circuit they used was not metallic throughout, but to a substantial extent non-metallic. Now the patentees, by their specification, do not make any claim to metallic circuits. What they claim is improvements in giving signals by means of electric currents transmitted through metallic circuits, and the improvements, as appears by the specification, consist entirely in the methods and instruments for using the electric current. The circuit used by the defendants is metallic in all that part which operates in giving signals, and it is no con- dition necessary to the existence of the improvements that the Electric Telegraph Co. v. Brett and Little. 187 circuit sliould be metallic in any other part than that v/hich eon- tains the coils, and operates on the needles. It appears to us reasonable to hold that a claim for a patent for lo C. B. improvements in the mode of doing something by a known process P- ^^i. is sufficient to entitle the claimant to a patent for his improvements, when applied either to the process as known at the time of the claim, or to the same process altered and improved by discoveries not kno"\vn at the time of the claim, so long as it remains identical with regard to improvements claimed, and their application. The second objection was, in substance, that the plaintiffs' patent was for a system of giving signals by means of several wires and . converging needles pointing to letters, whereas the defendants had used one wire, and had made signals by counting the deflection of a needle or needles, which was found by the jury to be a different system from that of the plaintiffs. This objection appears to us to be founded on a wrong construction of the specification, which, we think, shows the patent not to be for a system of giving signals, but for certain distinct and specified improvements comprehending those now in question, the system being described only for the piu-pose of explaining the improvements claimed. Another objection was, that the breach in the declaration, being that the defendants had used and counterfeited " the invention " of the patentees, was not supported by evidence of the use or counter- feiting of part only. But on looking at the specification, which explains what the invention is, it appears to consist of nine specified improvements ; and the declaration, in speaking of the said inven- tion, is to be considered as if it charged the using, &c. , of the said nine improvements, and is sufficiently proved by showing that one of them has been used. With regard to the objection as to the claim to the verdict (on the issue of not guilty) regarding vertical needles, on considering the finding of the jury Avith regard to defendants' instrument (find- ing 3), in conjunction Avith the claim in the specification, it may be doubtful whether the plaintiffs can claim the verdict on this ground. But it appears to us that the use of duplicate apparatus at inter- mediate stations, which the jury have found a new invention, and which was undoubtedly used by the defendants, entitles the plaintiffs to retain their verdict. It was insisted also that the giving of duplicate signals at inter- lo c. B. mediate stations was not the proper subject of a patent, being an P- S^^- idea or principle only, and not a new manufactm'e. But we think that the patentees not only communicated the idea or principle that 188 Electric Telegraph Co. v. Brett and Little. duplicate signals might bo given, but showed how. it might be done, i.e., by a duplicate apparatus at each station ; and that tliis is a fit subject of a patent. If, as was mentioned on the argument, the defendants have in- termediate stations to send as well as to receive communications, it is a very important improvement, for which the inventors may probably be entitled to a patent, though they may not be entitled to use it, imless by the licence of the patentees of the less perfect invention on which their own is grounded. Elliott v. Turner. [a.d. 1845. 2 C. B. 446, 462, n. ; 15 L. J., C. P. 49.] Misdirection hy JwJije— Construction of Specification. Covenant on an indenture of licence by plaintiff to defendant for the manufacture of buttons according to a patent of 14th Dec. 1837, No. 7,508, to W. ElJioft. The issue was, whether certain buttons made by defendant were made under the licence. At the trial, it appeared that the specification stated : — " The third part of my invention being the application (to the covering of buttons) of such fabrics only wherein the ground or face of the ground thereof is produced by a warp of soft or organzine silJi, such as is used in weaving satin and the classes of fabrics produced therefrom." Coltmax, J., directed the jury :— That unless the silk were organzine, it was not within the patent. Verdict for defendant. En^or brought on bill of exceptions to this ruling. Judgment of venire de novo by the Court of Exchequer Chamber. (Parke, Alderson, Eolfe, Piatt, BB., Patteson, Williams, Coleridge, Wight- man, JJ.) Per Parke, B. — The word or, in its ordinary and proper sense, is a disjunctive particle, and the meaning of the term ''soft or or- ganzine " is, properly, either one or the other ; and so it ought to be construed, unless there be something in the context to give it a diif erent meaning, or imless the facts properly in evidence, and with reference to which the patent must be construed, should show that a different inteiToretation ought to be made. The learned judge should not have told the jury ahsoluteJy that soft and organzine silk were the same ; he should have stated that the words were capable of being so construed if the jmy were satisfied that at the date of the patent only one description of soft silk, and that organzine, was used in satin weaving ; but other-s^dse, that the proper and ordinary sense of the words was to be adopted, Elliott v. Turner. 189 and tlie patent held to apply to every species of soft silk, as well as to organzine silk. Second trial of the same action, and verdict for plaintiff. Ellwood and Others v. Christy and Others. [a.d. 1864—65. 17 C. B., N. S. 754 ; 18 C. B., N. S. 494 ; 34 L. J., C. P. 130.] Assignment hy Executors lefore Registrativn of Probate — Account. Case for the infringement of a patent for an improved hat or helmet for hot climates. Plaintiffs also prayed a writ of injunction and account. It appeared that plaintiffs claimed under an assign- ment by the executors of the patentee under the circumstances fol- lowing : — On 3rd Dec. 1862, probate of the will was granted ; on 5th Feb, 1863, the executors assigned the patent to plaintiffs ; and on 10th April, 1863, they registered the probate, but delayed to register the assignment until 14th April, 1863. At the trial, it was submitted that the executors had no title to convey at the time of making the assignment (see stat. 15 & 16 Vict. c. 83, s. 35), and that plaintiffs could not maintain the action. Ekle, C. J., overruled the objection. Verdict for plaintiffs. Leave reserved. Ride for a new trial refused by the Court of Common Pleas. (Erie, C.J., Byles, Keating, JJ.) Per EiiLE, C.J. — There is nothing whatever in this point. If the 17 C. B. plaintiffs had commenced their action before they had completed P- '*^ • their title, by registering the probate, the case woidd probably have been different. Motion for a rule, in the terms of that granted in Walton v. Lavater (8 C. B., N. S. 162), for an account " of all profits of which the plaintiffs have been deprived by means of the infringement in the declaration mentioned," and for payment of the same. Ride made absolute for an account of profits made by defendants by means of the infringement, from the date of registration of the assignment. Per Williams, J. — It does not appear from the report of Walton is c. B. v. Lavater that the Coiu-t absolutely sanctioned the amended form P- ^^^• of ride. The matter was not contested. Per WiLLES, J. — We do not decide that the plaintiffs coidd not recover in the cause any damages they may have sustained. All we decide is that such damages can only be recovered at the hands of a jury, and not by means of an account taken before the master under stat. 15 & 16 Viet. c. 83, s. 42. ( ifo ) Elmslie v. Boursier. [A.D. 1869. L. E., 9 Eq. 217 ; 39 L. J., Ch. 328.] Infringement hy Imjiortation and Sale of Patented Articles. Suit to restrain from infringing a patent for the manufacture of sheet tin. It appeared that defendant had consigned to a London agent several parcels of tinfoil, manufactured in Paris, according to the patented invention. Decree for injunction, and account as prayed, with an inquiry as to damages, and the costs of the suit ; foUo^vdng the decree in Bctfs v. Neihon (L. E., 3 Ch. 429). But see the judgment of the House of Lords in Betts v. Neihon (L. R., 5 H. L. 27), where the decree for an account and inquiry as to damages was made alternative. Per James, Y.C— The plaintiff has, hy a lawful grant from the Crown, under the statute, obtained the right to "make, use, exercise, and vend " his invention within the United Kingdom in such manner as he thinks fit ; and the right to have and enjoy " the whole profit, benefit, commodity, and advantage accruing and arising hy reason of the said invention." Now, one of the most useful of inventions is that of a process by which a common article may be made more economically than it was made before. It would be a short mode of destroying " every profit, benefit, commodity, and advantage" which a patentee could have from such a thing, if all that a man had to do was to get the thing made abroad, import it into this country, and then sell it here in com- petition with the English patentee. I am of opinion, in this case, that the obtaining from abroad and selling in this country an article manufactm^ed according to the specification of a patent, is a violation of the pri^dleges granted by the letters patent. Rex v. Else. [A.D. 1785. Bull. N. P. 76; Dav. P. 0. 144.] Novelty of Invention. Set. fa. to repeal a patent of 29th Oct. 1779, No. 1,235, to A. Else, for "a certain new manufacture of lace, called French or wire-ground lace, which is much stronger than any hitherto in- vented." The specification stated the invention to be " mingling a fine thread of silk or other such material with thread, flax, hemp, cotton, which has usually been worked in a stocking-frame, which addition gives strength, firmness, nnd durability to tlie work. The Rex v. Else. 101 manner of working tlio same is sueli as is common in making open KorJc.'^ There was no separate claim. At the trial it appeared that prior to the patent, silk and cotton thread had been used together and mixed upon the same frame for making Lace. Defendant's counsel admitted this to he the fact, but said he could show that the mixed thread w^as inadequate for making lace. BuLLER, J., said:— It wiU be to no pm^pose. The patent claims the exclusive liberty of making lace composed of siUc and cotton tlii-ead mixed, not of any particular mode of mixing it ; and therefore, as it has been proved that silk and cotton thread were before mixed on the same frame for lace in some mode or other, the patent is clearly void. Verdict for the Cro-u'n. Feather (suppliant) v. The Queen. [a.d. 1865. G B. & S. 251 ; 35 L. J., Q. B. 200.] Right of the Crown to tise a Patented Invention. Petition of right, alleging that suppliant, R. B. Feather, was grantee of a patent of 26th Nov. 1852, No. 884 (in part disclaimed), for an invention of improvements in the construction of ships, and that the commissioners for executing the office of Lord High Admiral of the United Kingdom had infringed the patent right, by the construction and use of a ship for the service of the CroTVTi called the Enterprise, to the damage of the suppliant of 10,000/. The Crown, after setting out the patent, specification, and dis- claimer, demurred to the petition of right. Judgment for the Crown, in the Comi of Queen's Bench. (Cockbmni, C. J., Crompton, Blackburn, Mellor, JJ.) The patent was in the usual form, and contained, inter alia, the clause that the letters patent should be " taken, construed, and ad- judged in the most favourable and beneficial sense for the best advantage of " the patentee. There was also a proviso, on the part of the Crown, that "if the said R. B. Feather, his executors, ad- ministrators, or assigns, should not supply or cause to be supplied for our service all such articles of the said invention as he or they shall be required to supply by the officers or commissioners ad- ministering the department of our service for the use of which the same shall be required, in such manner, at such times, and at and upon such reasonable prices and terms as shall be settled for that purpose by the said officers or commissioners requiring the same, that then and in any of the said cases these our letters patent, and all libprties and advantages whatsoever hereby granted, shall & 1!)'2 Feathkiv' r. Tuk Queen. iiltci'ly cease, (leicriiiiiie, and Ix'eoiue void, aitytliiiiy ]ier<'luljDforo eoiitaiiied lo sAvas only declaratory of the common law, and theses grants of monopoly in respect of inventions arc not by force of the statute, l)ut by virtu(> of tlio prerogative. They are, therefore, subject to the rul(> of construction applicable to ffrants of this nature. It appears to us that thi' assumption of a contract between the Crown and the patentee is altogetlier fallacious. The grant of the patent is simply an exercise of the prerogative, in which — the ground on which alone the grant of a monopoly is justifiable being tliat the invention shall be made available to the public — the Crown annexes as a condition of tlie grant that the true nature of the in- vention, and the maniun- in whicli it can \)v used, shall be fully and mireservcdly discloscnl. . . . Willie it was admitted tiiat the ellect of th(> statement that the grant proceeded on the " ct^rtain knowledge and mere motion" of the Crown, which words are said to authorize a more liberal con- struction of a Ivoyal grant, was neutralized by the concomitant statement tluit it was made on the petition of the grantee, which recital would call for the more rigorous construction, it was insisted that the concluding clause of the letters patent— namely, that such letters patent are "to be taken, construed, and adjudged in the most favom-able and beneficial sense for the best advantage of the grantee " — was strong enough to show that the stricter rule of con- struction usually prevailing with reference to grants from the Crown ou"ht not to be applied to patents for invention. AVe, how- ever, think that this clause ought not to have this effect. Wo think its true i>ur|iose and effect is that pointed out by Mr. Jlind- iiiiirc//, in iiis valuahle work on ])atents, pp. 7'J, To, namely, that Feather v. Tpie Queen. 193 of preventing the want of certainty which ordinarily exists in the description of an invention in a patent, prior to the specification, from avoiding the grant for uncertainty. Another argument arising on the terms of the patent was founded on the clause which provides that the patentee shall supply the patented article, if required, for the service of the Crown, upon reasonable terms, which provision it was contended necessarily implied that the Crown could not itself have manufactured or pre- pared the article. "We think that to give this clause by implication the operation for which Mr. Bovill contended, would he directly to violate the rule of construction, which, according to the authorities, should he applied to grants from the Crown, and which prohibits any effect being given by implication, adversely to the Crown, beyond what is clearly expressed in the grant. The infringement of a patent right constitutes a tort or wrong, in the proper sense of the term ; and, as no wrongful act can be alleged against the Crown, we are of opinion that, even if our decision on the first question had been in favour of the suppliant, a petition of right to the Crown would not be open to him as a means of redress. Felton v. Greaves. [a.d. 1829. 3 Car. & P. 611.] Sufficiency of Specification — Title of Patent too large. Case for the infringement of a patent of 28th June^ 1827, No. 5,512, to J. Felton, for " a machine for an expeditious and correct mode of giving a fine edge to knives, razors, scissors, and other cutting instruments." Plea : Not guilty. Issue. The specification stated : — " My invention consists in a machine for sharpening various cutting instruments by passing their cutting edges backward and forward in the angle formed by the intersec- tion of two or more circular files, in manner explained." Then followed a description and drawing, which showed two parallel circular files, with alternate ridges and hollows, the ridges of one fitting into the recesses of the other ; the ridges only being files. The specification went on to say : — " The cylinders may be of steel or any other suitable metal or hard material." Claim : " The machine hereinbefore described for the purposes aforesaid." At the trial, it appeared that the machine was useful in the sharpening of knives, but that when used for giving an edge to scissors one of the rollers ouo^ht to be smooth ; also, that if Titrke// 194 Felton v. Greaves. stones were used f(3r both rollers, tlie maeliine coiild be applied for sliarf)ening scissors. Lord Tenterden, C. J., said : — The specification describes both the rollers as files, and on reading it with attention I cannot find that the scissor sharpener is described as having the two rollers different. It appears to me, therefore, that the specification is in- sufficient, as it nowhere states that the rollers for scissors must be one rough and the other not. With respect to constructing the rollers with Turl-ey stone, I cannot find that it is anywhere stated in the specification that Tarlicij stones, used on both sides, will do for scissors. Plaintiff nonsuited. FiNNEGAN V. James. [A.D. 1874. L. E., 19 Eq. 72 ; 44 L. J., Ch. 185.] Practice in Patent Suits — Particulars of Breaches ; and of prior User. Suit to restrain from infringing a patent. Plaintiff filed inter- rogatories requiring defendants to set forth particulars specifying the names and addresses of the persons by whom, the places where, the dates at, and the manner in which plaintiff's invention was alleged to have been used before the date of the patent. De- fendants having declined to furnish the requii-ed particulars, plaintiff filed exceptions. At the hearing, defendants submitted that they ought not to be compelled to put in a further answer until particulars of breaches had been delivered. Jessel, M.R., allowed the exceptions, and said that he saw no reason why the practice as to fui^nishing particulars should be con- fined to cases in which the Court directed issues. In his opinion, the practice at law ought to be followed as closely as circumstances would admit. By analogy, the plaintiff in equity ought either to state in his bill the particulars of the breaches complained of, or to deliver along with his bill a ^vritten statement of such particulars. The defendant, on the other hand, ought to set forth in his answer the particulars of objection on which he relied. The exceptions would be allowed ; but the plaintiff must deliver particulars of the breaches complained of, and the defendants would have fourteen days from the time of such delivery to put in a fiu'ther answer. Costs to be costs in the cause. ( 195 ) Fisher v. Dewick. [A.D. 1838. 4 Bing. N. 0. 706 ; 7 L. J., C. P. 279 ; 1 Webs. E. 264 ; Cited 8 Q. B. 1056.] Notice of Objections — Title of Patent. Case for the infrmgement of a patent of 31st Dec. 1831, No. 6,208, to W. Snenth, for "improvements in machinery for the manufacture of bobbin net-lace." The defendant delivered a notice of objections, under stat. 5 & 6 Will. IV. cap. 83, sect. 5, stated in the most general terms — e.g. : 4. " That if any part [of the im- provements] were new, the same was useless and unnecessary, and not the ground of any patent at all." 6. " That the said improve- ments, or some of them, had been publicly and generally used long before the granting of the said letters patent." Rule nisi to rescind an order for better particulars discharged by the Com-t of Common Pleas. (Tindal, C.J., Park, Yaughan, Coltman, JJ.) Per Tindal, C.J. — The object of the statute was not to limit the defence, but to limit the expense to the parties, and more particularly to prevent the patentee from being upset by some un- expected tm^n of evidence. Under the 5th section, therefore, it was intended that the defendant should give an honest statement of the objections on which he means to rely. . . . The present par- ticulars are so vague that they can scarcely have been furnished with any other object than to mislead. For instance, the objection that if any part be new, the same is useless and unnecessary : the defendant should have pointed out what part. That the improve- ments, or some of them, had been used long before : the defendant should have pointed out which. If he would, in the Scotch phrase, condescend upon the parts to which he objects, there would be an end of the difficulty. The objections next came before Tixdal, C.J., at Chambers, on a summons for further amended particidars, but the questions raised were unimportant. (1 Webs. R. 551, n.) The report in the Q,. B. series contains the following observation made by Pollock, A.Gr., in the course of his argmnent : — In Fisher v. Deicich, tried before Coltman, J., the patent was 8 Q. B. for improvements in machinery for making bobbin net-lace. Sir J. Campbell, for the defendant, objected that the title misdescribed the subject-matter, the invention being only for making a spot during a particular part of the process, and being useless where that addition was not wanted ; and he said the title should have been '' for a mode of making spots in bobbin net -lace." But the learned o2 19G Fisher v. Dewick. judg-e said : — " Is the invention applicable to anything but the making of bobbin net-lace, and is it not an improvement ? " and he overruled the objection ; and the Court of Common Pleas sup- ported his ruling ; Tindal, C.J., observing that it could not, without great refinement, be said tliat the invention was not an improvement in the manufacture of boljbin net-lace. 1'lowek v. Lloyd. [a.d. 187G. 45 L. J., Gh. 74G ; L. E., G Ch. D. 297 ; 20 Sol. J. 8G0.] Particulars of ohjedions — Judgment obtained hy Fraud — Appeal. Action to restrain the infringement of a patent for a method, of printing on tinned sheet iron. The defence was that in the patented process the colours were transferred to the metal in a dri/ state, whereas defendants obtained impressions by means of damp stones in a manner commonly known and practised in England before the date of the patent. The notice of objections stated {inter alia) that defendants would insist upon such other defences as were or might be mentioned or referred to in, or admissible under, any part of the statement of defence. 45 L.^J. Bacon, V.C, made an order for further and better particulars ; requiring the defendants to state " the names and addresses of the persons by whom, and the places where, and the dates at, and the manner in which," the process of damp printing upon metal plates had been publicly practised in England before the date of the patent, and that in default thereof no evidence of prior publication in relation thereto should be given by defendants at the trial of the action. From this order defendants appealed, when the Court of Appeal (James, Mellish, L.JJ., Baggallay, J.A.) were of opinion that whatever might have been the practice hitherto as to the particulars required to be furnished, they could not go beyond the words of stat. 15 & 16 Yict. c. 83, s. 41, and varied the order by requiring defendants to state the place or places at or in which, and in what manner, the process of printing upon tin by direct impression, by means of damp stones, referred to in the statement of defence, was known or publicly practised in England before the date of the patent. 20 Sol. J. In pursuance of this order, defendant delivered particulars alleging prior user by three persons, whose names and addresses were given, and by other persons in BirniingJiam and London respectively. Summons for better particulars. Order made. p. 717. p. 8G0. Flower v. Lloyd. 197 Per Field, J. — If the defendants know that these processes have been used by other persons in London and Birmingham besides those specified, they must know the persons by whom they have been used, and must give better particuhars. ... If they can give no further information, the words in question are useless and too indefinite, and must be struck out. Motion by plaintiffs, pursuant to special leave, for re-hearing, 6 Ch. D. Avith fresh evidence, of an appeal upon which judgment had been ^' given by the Court of Appeal. It appeared that Bacox, V.C, had granted an injunction in this action, and that the Comi of Appeal had reversed his decision, on the ground that there was no evidence of infringement. Plaintiffs now produced affidavits from workmen who had been in defendants' employ, tending to show that parts of the process con- stituting the alleged infringement had been fraudulently concealed from an expert sent down by the plaintiffs to make an inspection. The Coui^t of Appeal (Jessel, M.E., James, BaggaUay, L.JJ.) were of opinion that they had no jurisdiction to re-hear the appeal, and refused the motion. Per James, L.J. — I agree with what has been said by the Master 6 Ch. D. of the Eolls, that in the case of a decree (or judgment, as we call it P- 30L now) being obtained by fraud there always was power, and there still is power, in the Courts of Law in this country to give adequate relief. But that must be done by a proceeding putting in issue that fraud, and that fraud only. You cannot go to your adversary and say, " You have obtained the judgment by fraud, and I will have a re-hearing of the whole case," until that fraud is established. The thing must be tried as a distinct and positive issue. Forsyth v. Riviere. [A.I). 1819. Cliit. Prerog. Cr. 182.] Priority of Invention. Case for the infringement of a patent of 11th April, 1807, No. 3,032, to A. J. Forsijth, for giving fire to artillery and fire- arms. Verdict for plaintiff. Abbott, C. J., held that if several simultaneously discover the same thing, the party who first communicates it to the public is entitled to the benefit of it. ( 198 ) Fox V. Dellestable. [A.D. 1866. 15 W. E. 194.] Practice in Patent Suits — Accovnt. Suit for the iufringement of a patent of 6tli April, 1852, No. 14,055, to E. Fox, for " improvements in umbrellas," which, con- sisted in making umbrellas A\dth ribs in the shape of a trough or channel, the frames being known as " paragon " frames. It ap- peared that the plaintiff had paid 300/. as damages to a prior patentee named Holland for infringement of his patent for an invention which was in part covered by plaintiff's subsequent patent. The bill asked for a declaration as to the validity of the patent as the ground of an account. Per Malins, Y.C. — I have no hesitation in concluding that, although the patent has expired, if the bill was pre\dously filed, the plaintiff is entitled to an account if the Court sees a proper case for it. No doubt a man may make an invention which is partly covered by an existing patent, but he cannot use it without the licence of the patentee. He may wait for the expiration of the patent, and take out one himself if his invention be novel, and that patent Avill be valid ; but the invention must be something novel and im- portant. Here the whole was perfectly invalid on the old patent, and there was nothing to justify it. If it had not expired, and I was now called upon to decide upon its validity, I should be bound to declare the original patent invalid. His Lordship then held that the coui'se taken was unjustifiable, and dismissed the bill with costs. FoxwELL V. Webster. [A.D. 1863. 2 Drew. & Sm. 250; 4 De G. J. & S. 77.] Practice in Patent Suits — Consolidation of Suits against different In/ringers. Suit to restrain from infringing a patent (in part disclaimed) of 16th Oct. 1852, No. 413, to C. T. JmUdns, for " improvements in machinery or apparatus for sewing or stitching." It appeared that plaintiff was assignee of the patent, and that he had filed 134 bills against separate defendants. Four motions were now made by four groups of defendants, amounting in the whole to seventy-seven, the substance being that the suits should be consolidated, and that either one suit selected by plaintiff should be prosecuted, and pro- ceedings in the remainder stayed, or else that the validity of the patent should be tried once for all, and the time for answering be FoxwELL V. Webster. 199 enlarged, eacli defendant reserving liis own defence on the ground of non-infringement. Kixdersley, V.C, dismissed the motion, hut without prejudice to any application after answer, with a view to regulating the course of the proceedings, and said: — Now this 2 D. & S. is the position of the patentee, if he were to hring together in any one suit any numher, even more than one defendant, and any one defendant were to ohject that he ought not to he mixed up with the others, the objection would he successful, for a patentee has no right to join as defendants any numher of persons infringing, not even two. Now here the plaintiff has filed 134 hills against 134 different persons, who, he alleges, are infringing ; and it is said. How can it he necessary to file so many hills ? ... It is a settled rule of this Coui't that if a person wishes to obtain an injunction he must not sleep upon his right ; he must come to the Court speedily ; and if in this case the plaintiff had proceeded against one or more of the persons alleged to be infringing, and had abstained from filing bills against the others, his remedy by in- junction against them would have been prejudiced. It would be in vain for him to say that he was waiting the result of a trial against some others. The fact that there are 134 suits does not affect the duty of each defendant to answer the interrogatories addressed to him, and which will or may give the plaintiff the benefit of a decree. . . . The defendants have come too soon. On appeal. Lord "Westbury, L.C, suggested :— That the de- 4 De G. fendants should file affidavits stating their objections to the validity ^\ gi. ' of the patent, and gi\ing full information of every machine made, used, or sold by them, and whence obtained, and when used, and full discovery of the profits derived therefrom, undertaking also to pay a royalty in respect of each machine, if the validity of the patent and its infringement should be established. This com'se was agreed to, on condition that defendants would furnish verified models of every machine so made, used, or sold by them respec- tively. His Lordship then made an order directing an issue as to the validity of the patent (certain defendants being selected as representatives), the result to be binding on plaintiff and all parties to the motions. The trial to take place by consent before his Lord- ship without a jury. All particulars of objections to the patent under stat. 15 & 16 Yict. c. 83, s. 41, to be delivered within a fortnight. ( 200 ) FOXWELL V. BOSTOCK. [A.D. 1864. 4 De G. J. & S. 298.] Sufficienaj of Specification— OhUgation in specifying where the Patent is for an improved Machine — Validity of Disclaimer. Trial before Lord Westbury, L.C, without a jviry, and under the order made in the previous case, of the issue as to the validity of plaintifE's patent. The patent related to a form of sewing machine, wherein a single shaft with tkree cams upon it gave the thi-ee principal movements— viz., 1. The movement of the needle; 2. The movement of the shuttle ; 3. The feed-motion of the cloth. And it was the dis- position of these three cams upon one shaft which formed the invention. The specification stated :— " My invention relates to an improved arrangement and combination of machinery for semng or stitching by a needle and shuttle, and of regulating the supply of thread so as to keep it at a proper tension, with a means of enabling the mechanism to accommodate itself to different thicknesses of thread." It then proceeded to describe the machine by reference to drawings, Figs. 1, 2, 3, giving side and front elevations and a plan of the entire machine, and showing the action of the cams. It also de- scribed the regulation of the supply of thread of different thicknesses, and the construction of a spring-presser for holding down the work. The drawings were incomplete. Claim : " The combination and arrangement of the various parts of machinery for sewing or stitching with the use of a needle and shuttle, the methods of regulating the supply of thread to the needle and shuttle, the arrangement of accommodating the machinery to the different thicknesses of the thread or silk, and the means of pre- venting the material rising or missing the stitch when different thick- nesses present themselves." On 15th April, 1853, i^laintiff, D. Foxicell, being assignee of the patent, filed a disclaimer and memorandum of alteration, in which the several drawings were amended and corrected, so as to form sufficient drawings for the specification. The description of the machine was amended, as was also the description of the three subordinate improvements— viz., the method of supplying the thread, the arrangement for different thicknesses, and the means of preventing the material rising. But the amended claim was : " I claim as new and of my invention the combination and arrangement of the various parts of machinery for sewing and stitching, mth the use of a needle and shuttle." FOXWELL V. BOSTOCK. 201 An objection was taken that the patent was bad, on account of a variance between the provisional and complete specifications ; but Lord Westbury, L.C. thought the objection removed by disclaimer, and that, speaking generally, the provisional and complete specifica- tions ought not so to differ that the nature of the invention described in the one should be materially different from that described in the other. His Lordship then proceeded to give judgment, and said : — 4 De G. The patent was granted for " improvements in machinery or p.' 305." apparatus for sewing or stitching," and by the original specification they were described as consisting of " an improved arrangement and combination of machinery for seicing or stitchiiuj by a needle and shuttle ; " and also, separately, of means for regulating the supply of the silk or thread, for accommodating the machinery to different thicknesses of thread or silk; and, thirdly, for preventing the material rising, or the missing of the stitch. Then those three last-mentioned operations and the machinery for effecting them are treated in the original specification, and also by the disclaimer, as separate improvements, and as not forming part of that combination of machinery which is the principal subject of the patent. That patent and the original specification and disclaimer all assimie this as being the case, and treat these three separate arrangements as being some- thing which may be excised and eliminated without prejudice to the rest of the invention. But as the rest of the invention is the com- bination of machinery, those three parts could not have formed part of that combination, for if they had done so they could not have been disclaimed ; unless, indeed, the patent and the original speci- fication had treated them both as separate inventions, and also as integral parts of the combination, which is not pretended by the plaintiff to have been the case ; and if it had been pretended could not have been maintained. The consequence, then, is this : — That the combination of machinery now described in the amended specification is different from the combination of machinery described in the original specification, and for which the patent was granted. The question then arises — Is the patent void, or is the disclaimer void ? And to this question it is not easy to find an answer. There is no express enactment in stat. 5 & 6 Will. 4, c. 83, that the disclaimer, if it transgresses the statutory limit, by extending the exclusive right, shall be void to all intents and purposes ; and unless it be so, it must remain enrolled with and always accompany the letters patent in the specification. It might be proper to hold 202 FOXWELL V. BOSTOCK. tliat the disclaimer is inoperative for the excess only, where that excess is clearly distinguishable ; and this is the course which I have been most anxious to take in the present case. But I have found it impossible so to do. It is, in my judgment, clear that the mechanical arrangements for effecting the auxiliary inventions are left intentionally in their corrected and amended form, as integral parts of that combination of machinery to which the patent, by the operation of the dis- claimer, is intended to be confined. The result is, not only that the combination in the amended specification is different from the combination in the original specification, but also that there is no specification remaining of that invention for which the patent was granted. But there is another and more material objection to the sufficiency of the specification. The patent is for " improvements in machinery or apparatus for sewing or stitching," and the specification describes the invention as consisting in " an improved arrangement and com- bination of machinery for sewing or stitching by a needle and shuttle." The words, " improved arrangement,'' or " improved com- bination,'" indicate the nature of the invention. But it is the duty of the patentee particularly to describe and ascertain his improve- ments in his specification, for it is the improvements which constitute the invention. The plaintiff's counsel contend that this is done by the drawings and the description of the cbawings ; but the cba wings and the description thereof exhibit and describe an entii^e machine, and the composition and working of its several constituent parts, without in any manner indicating where the improvement lies, or in what it consists. It must follow that an accurate knowledge of the construction of .all needle and shuttle machines, which were known and used in England at the date of this patent, is necessary, in order to discover the differences and novelties that existed in this improved combination. The law requii-es that the specification should be intelligible to a workman of ordinary skill and informa- tion on the subject. A new combination or improved arrangement of machinery, therefore, should be so described as that a person of ordinary knowledge on the subject may be able at once, on reading the specification, to perceive the invention, and the manner in wliich it is to be performed. It is not sufficient to say that a person pos- sessed of all the knowledge existing at the time of the patent on the subject of sewing machines, will discern the improvement. That is more than the law requires. The difficulty of the plaintiff arises entii'ely from the character FOXWELL V. BO8TOCK. 203 which he has thought fit to give to his alleged invention, and the manner in which he has described it. His counsel had no difficulty at the bar in describing his improvement. They stated it to consist of an arrangement of three cams on one shaft, by the direct action of which the three principal motions in a needle and shuttle machine — viz., the needle movement, the shuttle movement, and the feed movement — are effected ; and the plaintiff's evidence was directed to show that this arrangement formed the novelty and utility of the patent. But this clear and simple statement is not to be found anywhere in the specification. The argument is, that this is not necessary where the patent is for a combination. But I think that both on principle and authority it is most necessary that the specification should ascertain the improvement when the patent is for an improved — that is, for a new — combination. If a combination of machinery for effecting certain results has 4 Do G. preAuously existed and is well known, and an improvement is after- ^- ^^• wards discovered, consisting, for example, of the introduction of some new parts, or an altered arrangement in some particular of the existing constituent parts of the machine, such improved arrange- ment or combination may be patented ; but it would be contrary to the spmt of the patent law and of the decided cases to perinit a patent to be taken out for a new combination, and the whole machine to be described and specified as a new invention, without in any manner distinguishing or marking the improvement by the introduction or addition of which the improved arrangement or the improved combination is in reality produced. The term, " coni- hination of machinery ^'' which has become a favourite form of words with patentees, is nothing but an extended expression of the word " machined It is the word " machine " ^vrit large ; and as a patent for an improved machine, in the specification of which the improve- ment was not particularly stated and described, would hardly be attempted to be supported, so neither in my judgment can the patent for an improved arrangement or combination be supported, in the specification of which there is nothing to distinguish the new from the old. It is true that the case of Harmar v. Playne (11 East, 101) was held to be an exception to this rule, but exceptio prohat regulam. In that case a patent was taken out for a machine; the inventor afterwards discovered an improvement, and he took out a second patent for an improved machine, and in the specifi- cation of that second patent he described the whole machine, without distinguishing the improvement ; and the objection was that the specification was insufficient, and the patent bad ; but 204 FOXWELL V. BOSTOCK. inasmuch, as in the second patent he had recited the first patent, and the specification under it, it was held that that recital being in immediate comparison with the new specification, furnished in gremio of the new patent the means of distinguishing the new from the old. I must therefore lay down the rule, which is consistent with and in reality a mere sequence from the decided cases, that in a patent for an improved arrangement or new combination of machinery, the specification must describe the improvement and define the novelty otherwise and in a more specific form than by the general description of the entire machine ; it must, to use a logical phrase, assign the differentia of the new combination. This obligation flows directly from the condition of the patent ; it is part of the condition of the patent that the specification shall particularly describe and ascertain the invention. With that condition this specification, in my judgment, fails to comply. If the disclaimer were treated as void, and the case were remitted to the original specification, I should be of opinion for the same reasons that that also was insufficient. I must therefore declare that the specification of this patent is insufficient, and that the patent is void in law. His Lordship then ordered a stay of proceedings in all the causes, with costs against plaintiff, including the costs of the order, with liberty to defendants in the other causes to move to dismiss the respective bills against them for want of prosecution. Frearson v. Loe. [a.d. 1878. L. E., 9 Cli. D. 48.] Action to restrain the infringement of two patents, \nz., of 12th Juii/, 1870, No. 1,97 J, for "improvements in screws and screw- drivers, and in machinery for the manufacture of screws ; " and of 1st June, 1875, No. 2,005, for like subject-matter, the grantee of each patent being the plaintiff, J. Frearson. Defendant delivered a statement of defence and counter-claim, whereby he claimed the right to use the screws and machinery com- plained of, and expressed his intention to do so as soon as he was able to perfect the said machinery and work it at a profit. Subsequently, the counter-claim was struck out, and defendant amended his statement of defence, denying the novelty and utiHty of the invention, and that it was the subject-matter of a patent. Defendant firrther pleaded that he was not infringing, and never Frearson v. Loe. 205 had infringed the plaintiff's alleged patents or either of them. Issue. The patent related to a method of forming the nick in the head of a screw so that it should not extend completely across the flat surface. The length of the nick was less than the diameter of the flat head, and the necessary hold of the screw- driver was obtained by deepening the central portion of the nick, or sometimes- by using two or more crossed nicks set at an angle to each other. In this way the tendency of the head of the screw to give way under the action of the screw driver was diminished. Claims: 1. Making one or more curved nicks in the heads of screws, the said nick or nicks being of greatest depth at the centre of the head and terminating within the edge of the head substan- tially as and for the piu-pose hereinbefore described, and illustrated in figs. 1 to 8. 3. Making a conical recess in the centre of the heads of screws substantially as and for the purpose hereinbefore described in figs. 5 — 12. There were five other claims relating to parts of the invention, but they may be passed over. At the trial defendant admitted that he had made a small quan- tity of screw blanks (in all about 2 lbs. in weight) according to the patents of 1870 and 1875, but said that this was for the pur- pose of experiment and not for sale. The machine employed was also experimental. Defendant relied on anticipation of the invention by a patent of 27th Feb. 1867, No. 550, to A. V. Neidon, for "improvements in screws and bolts." This specification pointed out that when screws were made with the ordinary slotted heads, the screw driver was apt to slip out of the nick and wear away the shoulders, and described the invention as being intended to remedy that defect. To this end screws were made " with a central hole in the head end (instead of the nicks heretofore used) to receive a driver in the form of a plug, which takes better hold for turning the screw." The specification fmiher stated that " the lower part of the driver is by preference made square, but this shape is not absolutely necessary, and any other shape, even a round driver, can be used. It will be observed that the perforations in the screws or bolts are slightly taj)ered, that is, they are a little narrower at the bottom than they are at the top, to give the driver a better hold upon the inner surface of the per- foration." After hearing evidence, the Master of the Rolls granted an 206 Frearsox v. Loe. injunction witli costs, and ordered defendant to deliver up to plaintiff or destroy any of the machinery upon which infringement was charged. 9 Ch. D. j>(>y Jessel, M.R. — It does not follow that, because an inventor thinks he has invented more than he has in fact, and describes the advantages of his invention, and some of those advantages arise from an old portion of the invention, it may not still be a good patent, provided that the invention as claimed is so limited as to fail to cover the actual thing in use, while it covers some of the ad- vantages mentioned ; in such a case it may still, no doubt, be a good patent. 9 Ch. D. JJis Lordship then discussed the question of novelty, especially with reference to Neidoiis. patent of 1867, as to which he said : — It appears to me that if you take the first part of it, inasmuch as you have a circular hole, it is not an anticipation of Frearson^s invention ; and if you take the second portion for a tapering screw- driver, it is not an anticipation, because it is not the same contrivance, and has not the same advantages as Frear son's. His Lordship further considered the question whether, after the evidence given of anticipation of the substance of Frearsoii's invention, the residue left was sufficient to be worthy of a patent, and said : — You have taken away a considerable part when you show that making the nicks to terminate within the edge of the screw-head is old. Still you must consider that the new portion of the invention is the sub- ject of some invention, and it is very difficidt to measm'e how much invention is required to effect the object aimed at. That is the first consideration ; and, in the next place, you must consider whether there is any advantage attending the use of the residue in question, for that is always an important element of consideration. In other words, supposing you strike out of the description so much of it as was anticipated, you have to consider whether there would still be sufficient left, having regard to the advantage to be gained by it. I think there would. 9 Ch. D. I now come to the next point in the defence — namely, that ^' '^' there is no infringement. Now, I am not aware of any suit or action in the Comi of Chancery which has been successful on the part of a patentee -with- out infringement having been proved ; but, in my opinion, on principle, there is no reason why a patentee should not succeed in obtaining an injunction without proving actual infringement. I think so for this reason. Where the defendant alleges an intention to infringe, and claims the right to infringe, the mischief done by Freaeson v. Loe. 207 the threatened infringement of the patent is very great, and I see no reason why a patentee should not he entitled to the same pro- tection as every other person is entitled to claim from the Cornet from threatened injury where that threatened injury Avill be very serious. ... Of course it must he plain that what is threatened to he done is an infringement. His Lordship then discussed the language of the statement of defence, and continued : — If the threatened act so claimed as of right is proved to constitute an infringement of the plaintiff's patents — and I consider it is proved— that, in my opinion, would he a ground for granting an injunction. His Lordship finally considered whether the making hy the defendant of screw blanks (in all not more than 2 lbs.) according to the patented inventions amounted to an infringement, and observed : — No doubt if a man makes things merely by way of bond fde 9 Ch. D. experiment, and not with the intention of selling and making use of the thing so made for the purpose of which a patent has been granted, but with the view of improving upon the invention the subject of the patent, or with the \iew of seeing whether an im- provement can be made or not, that is not an invasion of the exclusive rights granted by the patent. Patent rights were never granted to prevent persons of ingenuity exercising their talents in a fair way. It does not appear to me, when I consider the circumstances under which the defendant made these alleged experiments, that I ought to treat this as coming within the ride which prevents mere experiments being subject to the liability of action being brought against those who make them, and to the costs of an injunction being granted against them. Galloway and Another v. Bleaden. [a.d. 1839. 1 Webs. E. 52LJ Novelty of Invention — Prior experimental User. Case for the infringement of a patent of IHth Aug. 1835, No. 6,887, to E. GaUoicay, for " improvements in paddle wheels for pro- pelling vessels." Pleas : 3. That the invention was not particu- larly described by the specification. 4. That the invention was not new. Issue. The patent related to a mode of constructing the floats of paddle wheels so as to lessen their concussion -with the water, and to diminish the di-ag of water behind the wheel. Each float was formed of a series of narrow bars placed at an angle to the radius 208 Galloway and Another v. Bleaden. of tlie wlieel and arranged in a cycloldal ciu've. This curve was traced out by a point in the circumference of an imaginary circle, centred on the paddle shaft, and rolling on the surface of the water. The specification stated:— That the bars forming a paddle float would in this way enter the water at the same point, or very nearly so, whereby the amount of displaced water would be diminished, and the loss of power as well as the concussion consequent upon the use of the common radial float would be obviated. It fuiiher de- scribed the invention to consist in affixing the portions of floats or paddles according to the arrangements herein described. At the trial, Mr. Field, the engineer, deposed that in 1833 he had made a model of a paddle wheel with divided floats placed in a cycloidal curve, and had exhibited the same at the Admiralty ; that he had fitted a small steamer on the Thames with such a wheel; that it had answered well, but was taken off after a few weeks' trial ; that in 1835 he had constructed an apparatus for experi- menting with various paddle wheels, chiefly cycloidal wheels ; that the experiments went on from April till July, 1835, no secrecy whatever being observed ; on the contrary, persons were invited to come and see the trials. 1 Webs.R. Tindal, C.J., directed the juiy :— If there is a want of clearness P- ^-'^- in the specification so that the public cannot afterwards avail them- selves of it ; much more, if there is any studied ambiguity in it, so as to conceal from the public that of which the patentee is, for a term, enjoying the exclusive benefit, no doubt the patent itself would be completely void. . . . The question on this point is for you, and that is, whether it is such a fair and clear statement, that a person with a competent degree of knowledge on the subject-matter to which the patent relates, would be able to make that which the plaintiff now enjoys the exclusive privilege of. The main point in this case is, whether this improvement was new as to the public use and exercise thereof in England. ... A mere experiment, or a mere course of experiments, for the pm-pose of producing a result which is not brought to completion, but begins and ends in uncertain experiments, is not such an invention as should prevent another person, who is more successfid and pm-sues with greater industry the chain in the line that has been laid out for him by the preceding inventor, from availing himself of it, and having the benefit of it; therefore the main point in this case is, whether all that is allowed to have been done by Mr. Field rested in experiment, and imsuccessful experiment, not conducted to its full result, or whether it was a complete discovery of that which now forms the subject-matter of the patent. Verdict for plaintiffs. ( 209 ) Gamble v, Kurtz. [A.D. 1846. 3 C. B. 425.] Evidence of Infringement — Novelty of Invention. Case for the iufringement of a patent (in part disclaimed) of 14th Blarch, 1839, No. 8,000, to J. C. Gamble, for " improvements in apparatus for the manufacture of sulphate of soda, muriatio acid, chlorine, and chlorides." Pleas : 1. Not guilty. 2. That the plaintiff was not the true and first inventor. 3. That the in- vention was not new. Issue. The patent related to the manufacture of sulphate of soda. The specification described the apparatus by reference to drawings, and showed two decomposing chambers a, a, placed upon opposite sides of a central or finishing chamber b, but connected therewith by short passages. The operation consisted in placing equal weights of common salt and sulphuric acid in the chambers a, a, and ex- posing the material to a regulated temperature, which liberated a quantity of muriatic acid gas. The partially decomj)Osed residuum was then pushed into the retort b, and roasted at a high tempera- ture, until its conversion into sulphate of soda became complete. Receivers were also arranged for the condensation of the muriatic acid gas. The specification stated: — "Instead of the brick furnaces hitherto employed I have found that iron retorts may be advantageously substituted." Claim : — " I do not claim the exclusive use of iron retorts, but I claim as my invention iron retorts worked in con- nection with each other as above described. I claim the use of receivers so arranged that the acid can pass from one to the other." At the trial, it appeared that before the patent the common prac- tice had been to use a single chamber only. But evidence was adduced of the user at Berwick of two chambers connected by an inclined spout about twelve feet long, through which the material was passed from one to the other for the final roasting. Similar evidence was given of prior user at Mane/iester. Defendant also put in evidence the specification of a patent of 13tli Oct. 1830, No. 7,208, to T. Luf/ci/c/ic, for an apparatus to be used in making sulphate of soda, consisting of a decomposing chamber with two floors on a different level for the two stages of the operation. The alleged infringement consisted in the use of two chambers, one of iron, the other of brick, connected by an opening, through which the materials were transferred from the one to the other. Verdict for plaintiff on all issues except the second and third, as G. i' 210 (jtamble v. Kurtz. to wliicli the jiiry found : — That the alleged invention of the use of two chambers, with separate fm^naees, was not new, but that the plaintiff's mode of connecting them was new. Leave reserved. Eule nisi to enter a verdict for defendant on second and third issues made absolute by the Coui't of Common Pleas. 3 C. TJ. Per CoLTMAX, J. — We are clearly of opinion that the verdict for ^' ^^^' the plaintilf on the issue of not guilty must stand. . . . The material of which the chambers are composed not being of the essence of the invention, the patent right might be invaded though the chambers used by the defendant were not of the material men- tioned in the plaintiff's specification. The other question depends upon what is the true nature of the plaintiff's claim as an inventor. It was contended that he claimed the use of two retorts in connection with the whole of the apparatus for condensing the mmiatic acid gas. But the w^ords of the speci- fication are "in connection with each other." . . . We can give no other meaning to this than that the plaintiff claimed, as part of his invention, the use of two chambers wdth separate furnaces, worked in connection with each other, so that the materials might be de- composed in one, and then removed to and roasted or finished in the other. The jury ha\dng found that the evidence did not establish this claim, the verdict on the special finding must be en- tered for the defendant. Gardner v. Broadbent. [A.D. 1856. 2 Jur., N. S. 1041.] Affidavit of Title in Patent Suits— Becent Patent. Suit to restrain from infringing a patent. Motion to dissolve an ex 2J(^(i'fe injunction. It appeared that plaintiff had bought the patent, and his affidavit merely stated that the patent had been duly recorded, and that he believed it was valid. The patent had run for little more than a twelvemonth. Stl'aiit, V.C, dissolved the injimction with costs, but without prejudice to the bringing of an action, and said : — When the plaintiff applied for an injunction, his affidavit ought to have stated clearly and distinctly that he believed that the patentee, from whom he pm-chased the patent, was the original and true inventor, and that he believed that the invention had not been practised at the time the patent was granted. That was necessary, because the injunction asked for was to protect a legal title, which legal title ought to be sworn to, and the facts supported before the Court. . . . There was no law of this Court which prevented a patentee by the recency of his patent from apply- Gardner v. Broadbent. 211 ing for an injunction ex parte ; and he wished it to be understood that the law of the Court was that laid down by Lord Eldon in the case of The Universities of Oxford and Camhridrje v. Richardson (6 Yes. 689). Gibson and Campbell v. Brand. [A.D. 1842. 1 Webs. E. 627 ; 4 M. & G. 179 ; 4 Scott, N. E. 844 ; 11 L J., C. P. 177.] Evidence of Infringement — Novelty of Invention — Ohh'gation in Specifying — • Infringement by Sale of Patented Articles — Patent for a Process. Case for the infringement of a patent, of 19th Nor. 1836, No. 7,228, to J. G. CampheU and J. Gibson, for " a new and improved process or manufaetm-e of silk, &c." The declaration alleged that defendant had directly and indirectly w?f/f('?, iised, and put in practice the said invention. Pleas : 1. Not guilty. 2. That plaintiffs were not the true and first inventors. 3. That the invention was not new. Issue. The patent related to a method of preparing and spinning silk waste in combination with wool or flax. The specification stated eight heads of invention, e. g. — 1. Discharging the gum from silk waste. 2. Dyeing the material. 4. Spinning silk waste of long fibre in combination with flax of the same length of fibre. 6. The application of the improved process to the throstle machine on the principle of the long ratch for spinning silk waste. 7. Certain improvements in the throstle machine whereby its utility is augmented in spinning silk waste. Claim : " We restrict our claims to the eight general lieads of invention before mentioned, all of which we believe to be new, and of great public utility." At the trial, evidence was adduced contradicting the novelty, both of the process and of the machinery. It fm-ther appeared that defendant had ordered silk waste to be spun by certain pai-ties in England, by a process similar to that patented, and had received and sold the silk so spun. TiNDAL, C.J., directed the jury : — A man may publish to the iWebs.E. world that which is perfectly new in all its uses, and has not before ^' been enjoyed, and yet he may not be the first and true inventor ; he may have borrowed it from some other person, he may have taken it from a book, he may have learned it from a specification, and then the Legislatm-e never intended that a person who had taken all his knowledge from the act of another, from the labom's and assiduity or ingenuity of another, should be the man who was to receive the benefit of another's skill. . . . Tf would not be suffi- p2 212 Gibson and Campbell v. Brand. cient to destroy this patent to show that learned persons in their studies had foreseen or had found out this discovery that is after- wards made public, or that a man in his private warehouse had by various experiments endeavoiu-ed to discover it and failed, and had given it up. Then the defendant objects to the specification. All that I mean to leave to you is the question of fact that is raised for your deter- mination, namely, whether it is so worded, and such explanations are given in it, that a person of a sufficient degree of understanding on the particular subject could carry the provisions of the specifi- cation into effect, and obtain the proposed result. The specification ought to be so clearly worded as to lead without any doubt or difficulty to that result, because it is the price that the man who takes out his patent pays to the public for their being so long kept out of the enjoyment of the commodity or manufacture that is protected ; the price he pays is, that he will lodge such an account of his o\nx discovery and invention as will enable the public at the expiration of the fourteen years to have as free and um^eserved use of the invention as he himself. If the defendant has sold an article of exactly the same fabric, made in the same manner as that for which the patent was taken out, such sale may be considered as a using of the invention within the terms of the declaration. The jmy found for plaintiffs on all issues except the second and third, and as to these the finding was : — That the invention was not new, but was an improved process, and not a new combination. Eide nisi to enter a verdict for defendant on the second and third issues made absolute by the Com-t of Common Pleas. (Tindal, C. J., Coltman, Erskine, Cresswell, J J.) Per Tindal, C.J. — The proof that an order had been given by the defendant, in England, for the making of silk by the same process as the plaintiffs', which order had been executed in England, is enough to satisfy the allegation in the declaration— that the de- fendant made, used, and put in practice the plaintiffs' invention — though the silk was, in fact, made by the agency of others. 4 M. & G. It is not necessary, on this occasion, to go into the question ^" * whether or not a patent can be supported for a process only. If the specification were properly prepared, it probably might be con- sidered a fit subject for a patent. Lord C.J. Eyre seems to be of that opinion in Boulfon v. JBiiIl (2 H. Bl. 493). I confess I feel it impossible to apply the language of the speci- fication otherwise than to a substantive claim to an invention of a Gibson and Campbell v. Brand. 213 new macliine, or a new combination of tlie parts of an old maeliine ; the jury, however, have hy their special finding negatived both, . . . and, upon the evidence, I see no reason to be dissatisfied with that finding. Fer CoT.TMAX, J. — I am not prepared to say that a new process may not be considered a manufacture within the meaning of the statute 21 Jac. I. c. 3. Per Cresswell, J. — A party who obtains a patent is bound 1-^^^**' clearly to define in his specification what it is he claims to be his p. 890. invention, in order that the public may know with certainty what they may or may not do without incurring the risk of an action for an infringement of the patent. GiLLETT AND ANOTHER V. WiLBY. [A.D. 1839. 9 Car. & P. 334 ; 1 Webs. E. 270.] Evidence of Infrimjement — Practice as to Certificate for Costs. Case for the infringement of a patent of 21st Bee, 1836, No. 7,26B, to S. Gillett and J. Chapman, for "improvements in cabs." Plea 2. That the alleged improvements were not new. Issue. At the trial, it appeared that the specification described five improvements, and it was contended tliat plaintiffs were bound to show that all of them had been imitated, but Coetman, J., directed the jury : — The plaintiffs must make out to your satisfaction that the whole of the improvements were new, and that some of them have been pirated. It is not necessary that they should all have been used, but they must be shown to be all new ; and if they are all new, and the defendant has infringed any one of them, it will be sufficient to support the action, and it is not necessary that he should have infringed them all. Verdict for plaintiffs. There being a plea that the invention was not new, the judge certified under stat. 5 & 6 Will. 4, c. 83, s. 3, that the validity of the patent came in question. GiLLETT v. Green. [A.D. 184L 7 M. & W. 347 ; 1 Webs. E. 271 ; 10 L. J., Ex. 124.] Practice as to Certificate for Costs. Case for the infringement of a patent, where after verdict a certificate was given by the judge under stat. 5 & Will. 4, c. S'-i, s. 3. On the trial of a second action for infringing the same patent, the above certificate was put in evidence, but no application was made to the judge to certify under stat. 3 & 4 Yict. c. 24, s. 2, that the action had been brought to try a right. 214 GiLLETT V. GrREEN. liule to tax plaintift' Hs treble costs refused by tlie Coui-t of Exchequer. (Parke, Alderson, Gfurney, Eolfe, BB.) Per Parke, B. — It is said that the Lord Chief Baron has still the power of certifying ; but that is not so : the statute expressly dii-ects that the plaintiff shall not recover costs where the damages are under 40.s., unless the judge shall '■'■immediately aftericards certify " that the action was brought to try a right, &c. It may even be a question whether the judge coidd grant the certificate after another cause had been called on. GoucHER V. Clayton and Others. [A.D. 1864—65. 11 Jur., N. S. 107, 4G2 ; 34 L. J., Ch. 239.] Estoppel — Construction of Specification — Evidence of Infrinyement. Suit to restrain from infringing a patent (extended for three years) of 25th Nov. 1848, No. 12,343, to J. Gouchcr, for "a machine for thi-ashing corn and other grain." The patent related to an improved fonn of beater in thrashing machines. The specifi- cation stated : — " I construct a thrashing machine with grooves or channels in the surfaces of the beater, such grooves or channels being of suitable dimensions to allow the corn and Btraw to lodge therein and pass through, without being injured by the sm-faces between and by which the corn is beaten out and separated." The drawing showed the beater, constructed of six longitudinal bars, supported on arms or spokes, so as to form an open cylindiical frame. Each bar was of iron, bound round with iron wire in a spiral, the spaces between the convolutions of the -^ire forming the grooves or channels on the bar. The specification went on to say : — " I prefer that the roof should be perforated, so as to admit of the passage of grain and chaff." Claim : " My invention of a thrashing machine, in which the surface of the beaters is grooved or channelled, and the roof perforated, as above described." It appeared that in 1854 plaintiff took proceedings at law against a certain firm, Clayton 8^ Co., for infringing his patent. The firm submitted to a judgment in the action, and took a licence for five years (afterwards extended to seven years) to work under the patent. The present suit was instituted in 1864 against the same firm, but two new partners had entered the firm after the judgment at law. Defendants raised the issues of want of novelty and insufficiency of the specification. An objection was taken that defendants were estopped, both as having been licensees, and by reason of the judgment at law, from disputing the validity of the patent. GoucHEif V. Cj.ayton and (Jthek.s. 215 "Wood, V.O., said that lie tlioug-lit the defendants were not ii Jur. estopped from denying the validity of the plaintiff's patent, and in P' any case he could not prevent the defendants, who were not parties to the action at law, from setting up this defence. A supplemental bill was also filed, and it appeared by the answer that defendants had sold two thousand of plaintiff's beaters since the expiration of the licence, and that many of them had been exported to Austria. Defendants also denied their liability to pay a royalty on any beaters supplied by way of renewal to thrashing machines. At the hearing, "Wood, Y.C, decreed an account of all beaters furnished by defendants by way of renewal and for exportation, and said : — It appears to me that what the plaintiff really claims is an improved beater for thrashing machines. . . . He has not described the perforation of the roof as his invention, but all he says is, that he prefers the perforated roof. The defendants have made a number of these beaters without 1 1 Jm-. reference to any machine, to supply the foreign market in Austria. It was not contended that that had been done under the licence ; but the argmnent has been upon the authorities, that the making of parts of an invention in this country, and the exportation of those parts, do not constitute an infringement of a patent for a com- plicated machine, because those single parts do not make the machine — the patented article — and the making of those parts in itself is lawful. . . . That might be so in those cases where the whole patent was for a new combination of machinery, every part of the machinery being old. In the case I have before me the beater is the whole thing claimed, as I have held on the construction of the patent; and therefore the making of the beater is a distinct and plain invasion of the patent, and in that respect the plaintiff will be entitled to an account. Greaves v. The Eastern Counties Railway Company. [a.d. 1859. 1 e. & e. 961 ; 28 l. j., q. b. 290.] Practice as to Costs. Case for the infringement of a patent. Notice of trial was given and countermanded, whereupon defendants, after notice, entered a suggestion, and signed judgment. On taxation, the master disallowed all items relating to the particulars of objections which had been duly delivered under stat. 15 & IG Yict. c. 83, s. 41. 216 Greaves v. Eastern Counties Railway Co. Ride nisi for tlie master to re-vdew liis taxation made absolute by the Coiu't of Queen's Bench. (Lord Campbell, C.J., Erie, Crompton, Hill, JJ.) Pfr Lord Campbell, C.J. — The defendants here would be clearly- entitled, under the statute of Gloucester, to the costs of preparing these particulars and evidence in support of them. Then is there anything in stat. 15 & 16 Vict. c. 83 to deprive them of these costs ? I think not. Sect. 43 applies only to cases where there has been a trial : where there has been no trial, as in the present case, the law stands as it did before. The Grover and Baker Sewing Machine Company v. Millard. [A.D. 1861—62. 8 Jur., N. S. 713.] Estoppel of Licensee. Suit to restrain from infringing a patent of 10th Ang. 1852, No. 14,256 to E. J. Hughes, for " improvements in se-s\ing machines." Defendant, who was a licensee of the patent under plaintiff, withdi'ew from the jurisdiction of the Court, without answering the bill, whereupon plaintiff obtained an order to make the bill^;ro confesso. At the hearing, it appeared that plaintiffs had after the filing of the bill, failed to support the validity of the patent in an action at law ; nevertheless, Wood, Y.C, on the authority of Smith v. Scott (6 C. B., N. S. 771) and Woton v. Brooks (7 H. & N. 499), granted a perpetual injunction with costs, and made the decree absolute. Hall v. Conder and Others. [a.d. 1857. 2 c. b., n. s. 22, 53; 26 l. j., c. p. 138, 288.] Breach of Agreement — Estoppel. Declaration for breach of an agreement which recited that plaintiff had in rented a method for the prevention of boiler explosions and had obtained a patent for the same, and by which plaintiff made over to defendants one half of the patent. Plea 2. That the invention was wholly worthless and of no public utility, and was not new, and that plaintiff was not the true inventor thereof. Demurrer and joinder. Judgment for plaintiff by the Court of Common Pleas. (Cockburn, CJ., Cresswell, Williams, JJ.) Per Williams, J. — The plaintiff professed to have invented a method for the prevention of boiler explosions. R is not alleged p. 53. Hall v. Condek and Others. 217 that he was guilty of any fraud. . . . Why should we assume that the plaintiff meant to assert that the patent was indefeasible, and that the defendants purchased on that understanding, rather than that each knowing what the invention was, and having equal means of ascertaining its value, they contracted for the patent, such as it was, each acting on his own judgment ? We think that the latter was the true natm^e of the contract, and that there was no warranty, express or implied. . . . Here the plaintiff was capable of fulfilling all he had contracted to. The defendants might have had all they contracted to receive, and were therefore bovmd to pay. Error brought in the Court of Exchequer Chamber. (Lord - C- B. Campbell, C.J., Pollock, C.B., Coleridge, Erie, Wightman, J.J., Bramwell, B.) Judgment affirmed. Hall v. Jarvis and Boot. [A.D. 1822. 1 Webs. E. 100.] Suhjed-maiter of a Patent — Evidence of Infringement. Case for the infringement of a patent of 3rd Nor. 1817, No. 4,178, to 8. Hall, for " a method of improving every kind of lace or net." Plea : Not guilty. Issue. The patent was for burning off the superfluous fibres from lace or net without injuring the fabric. The patentee described a system of rollers for feeding on the lace, and passing it rapidly over a series of gas jets placed in a line underneath a chimney, which drew the flame of the gas through the meshes of the fabric, and removed the superfluous fibres. The chimney was required for creating a sufficient draught. The specification stated : — " I do not claim the exclusive use of any apparatus or combination of machinery, except in connection with and in aid of the application of the flame of inflammable gas to the piu'poses above described." At the trial it appeared that the flame of charcoal, paper, wood shavings, and common pit coal had been in use before the date of the patent for the pui-poses of singeing fibres from silk, cotton, or lace sleeves ; but for this purpose the articles had been placed on a wooden sleeve-board, and the flame had not been di*awn through the meshes by the aid of a chimney, but had been simj^ly projected upon the fabric by a pair of bellows, and it was objected plaintiff was not entitled to a monopoly of the use of gas flame. As to the infringement, it appeared that the defendant, Boot, had a gassing machine on his premises, where the gas-fittings had been tampered with, and gas had been consumed in excess of that required for lighting purposes. Also that lace left with defendants had been 218 Hall v. Jarvis and Boot. dressed and returned in tlie state to wliicli it would have been brought by the application of i^laintifiE's process. Counsel for defendants having stated that he should prove that the flame of charcoal or oil had been pre\'iously forced through the interstices of lace by a pair of bellows, Abbott, C.J., said :— " The proving that will not affect the question." His Lordship then said to the jury : — " There can be no doubt, gentlemen, your verdict must pass against both the defendants ; one of them has the pipe laid into the house." Yerdict for plaintiff. Halsey V. Brotherhood. Tad. 1879. L. E., 15 Ch. D. 514; 19Cli. D. 386; 49 L. J., Ch. 786; ^ 51 L. J., Ch. 233.] Slander of Title— Threatening Legal Proceedings. Action for damages, injunction, and general relief. The plaintiff was an engineer and the owner of a patent for improvements in steam engines suitable for steam launches ; the defandant was also the holder of patents for steam engines, and it was alleged in the statement of claim that the defendant had threatened the customers of the plaintiff with legal proceedings for infringement of defendant's patents if they dealt with the plaintiff. By the defence, defendant denied the validity of plaintiff's patent, and declared that he was holder of two prior patents for steam engines adapted for steam launches, and that the statements complained of had been made by him with entire bona fides. Issue. Plaintiff nonsmted, and action dismissed with costs. Per Jessel, M.E. — A man merely giving notice that his rights are being infringed,* believing that they are infringed, is not to be subjected to an action for giving that notice, and he is not to be subjected to an action even although he does not follow up that notice by bringing an action at law for the infringement. It appears to me that in the present case the plaintiff must make out, if he wants to maintain an action for damages, that the defendant has not been acting bond fide. If he wants an injunc- tion, he must make out that the defendant intends to persevere in making the representations complained of, although his allegation of infringement by the plaintiff is untrue. On appeal, the Court of Appeal (Lord Coleridge, L.C.J., Bag- gallay, Lindley, L.JJ.) affirmed the judgment of the Master of the Kolls. ( 210 ) Hancock v. Bewley. [A.D. 1860. Jolins. GOL] Ri(jMs of Joint Owners of a Patent — Acco)int. Suit to obtain an account of profits made by defendants in working certain patents relating to gutta-percba, which were vested by deed in trustees for plaintiff, together with defendant, Bewley, and two other persons. It appeared that plaintiff had, for several years, worked the patents on his own account, in competition with defendants. Wood, Y.C, dismissed the bill, and said :—" The plaintiff contends, as a general i)rinciple, that persons who are part owners of a patent are not individually entitled to work it on their q-vmi account, but are subject to render an account of profits in some shape to their co-owners ; and he says that the defendants ought to account for their profits, and ought not to be allowed to continue working the patents for their own benefit. There is much to be said on this side of the question . . . but the plaintiff is debarred by his own acts from raising the contention." Haemae v. Playne. [A.D. 1807. U Ves. 130 ; 11 East, 101 ; Dav. P. 0. 311.] Sufficiency of Sj^ecifcation — Practice in Patent Suits — Injunction. Suit to restrain from infringing a patent of 29th March, 1794, No. 1,982, to J. Hannar, for " improvements in a machine for raising a shag on woollen cloths, and cropping and shearing them." The patent recited that J. Hannar had obtained letters patent on 20th March, 1787 (Xo. 1,595), for an invention of a machine for raising a shag upon woollen cloths ; and, further, that he had in- A^ented considerable improvements in the said machine. It was admitted that the improvements so referred to were included in the descriptive part of the specification of the second patent, but that the nature thereof would only appear by comparison of the two specifications. On motion for injunction, Lord Eldox, L.C, ordered the hearing to stand over for the parties to agree upon a case to be stated for the opinion of a Covu't of law, and said : — I do not say that a case 14 Ves. might not exist, where possession might be distinctly proved, and ^' yet there might be such strong doubt Avhether the specification was not bad in law, that the Conrt would brevi manu interfere, and put an end to the injunction; and if I am to decide upon the inclination of my own opinion, where the practice is differently represented, and considerable doubt may be raised in argument, I think it is difficult to support this specification. . . . Andwhen Lord Mansfield 220 Hakmak v. Playne. said, in the case of Liardct v. Johnson (1 Webs. R. 53), that the meaning of the specification was that others might be taught to do the thing for which the patent was granted, it must be understood to enable persons of reasonable competent skill in such matters to make it ; for no sort of specification would probably enable a ploughman, utterly ignorant of the whole art, to make a watch. The question to be tried will be, . . . whether, a patent for a machine vnih. a due specification having been granted, and a subsequent patent being granted for improvements, it is competent in law to represent in the specification that the latter patent was granted, not for improvements, but for the machine ; carrying forward that idea, and describing the new invention as one entire machine ; not as imi^rovements, contradistinguished from the original machine. I adliere to the law as I stated it in the case of Carticnght v. Earner (cited 14 Yes. 131). The question for the opinion of the Court of King's Bench (Lord EUenborough, C.J., Bayley, Le Blanc, JJ.) was, whether the proviso in the letters patent of 29th March, 1794, had been duly performed by the enrolment of the specification thereof. Answered in the affirmative. Lord Ellenborough, C.J. said : — The difficulty which presses most is, whether this mode of making the specification be not calcu- lated to mislead a person looking at it, and induce him to suppose that the term for which the patent is granted may extend to pre- clude the imitation of other parts of the machine than those for which the new patent is granted, when he can only tell by com- paring it with some other patent what are the new and what are the old parts ; and if this may be done by reference to one, why not by reference to many other patents, so as to render the investi- gation very complicated ? 1 1 Eii'-t, I feel impressed by the observation of my brother Le Blanc, tliat the trouble and labour of referring to and comparing the former specification with the latter would be fully as great if the patentee only described in this the precise improvements upon the former machine. Reference, indeed, must often be necessarily made in these cases to matters of general science, or the party must carry a reasonable knowledge of the subject-matter with him, in order clearly to comprehend specifications of this natui'e. Cited, FoxiccU v. Bostock (4 De Q., J. & S. 298.) ii; ( 221 ) Harrison v. The Anderston Foundry Company. [a.d. 1876. L. R., 1 App. Ca. 574.] Sufficiency of Specification — Neio combination of old Parts, Appeal from au iuterlocutor of IStli Jan. 1876, by which the First Division of the Coiu-t of Session disallowed an exception to a direction to the jury given by the Lord President at a trial of a patent action brought by the appellant. The patent was dated 29th Oct. 1868, No. 3,310, and was granted to Q. Whyte and J. Wliyte, for "improvements in loom- weaving." The specification stated : — " Our invention consists in new or improved, simple, and most efficient modes of and arrangements of mechanism for actuating the set or sets of compound or multiple shuttle-boxes of looms for weaving striped, checked, and other ornamental or figm-ed fabrics." It proceeded to show the looms as divided into two main parts, viz., the check shuttle-box moving mechanism and the pattern mechanism. It further stated that although the new check shuttle-box moving mechanism {Numbers 1 to 29) had, so far, been only sliown and described as applied to a three shuttle-box loom, it was ecpially applicable for working a four, five, or six- shuttle box, and could be worked with the pattern mechanism of other check looms, while many of the improvements in the pattern mechanism {Numbers 30 to 62) might be applied to other pattern barrels and mechanism. In other words, the inven- tion comprised : — (1) the combination forming the check shuttle- box moving apparatus; (2) the combination for pattern machinery; whereof the two together formed a complete loom. Claims: 1. "The construction and arrangement of the parts of pattern mechanism, and a shuttle-box moving and holding mechanism as herein distinguished generally, for actuating the shuttle-boxes of power looms, all substantially in the new and improved manner herein described and shown in the drawings, or any mere modifi- cation thereof." Of the remaining claims it will suffice to say that the 2ud related to the check shuttle-box moving machinery, the 3rd and 4th to the pattern machinery. The direction of the Lord President was that the patent was void in law, and that the jmy should, therefore, retm^n a verdict for defenders. Plis Lordship was of opinion that the first claim failed bv reason that it contained no discovery or explanation of p. 577. 222 Harrison v. The Anderston Foundry Co. the novelty, but was simply a claim for the whole machine as shown in the drawings and described in the specification. "WTien the matter came before the First Division of the Com-t of Session, the Lord President said : — " No doubt a new combination of old parts to produce a new result, or to produce a kno^Ti result, in a more useful and beneficial way, may be a good subject-matter of a patent, but only under the conditions that the combination shall be claimed as a combination, and be so described as to show intelligibl}^ what is the novelty, and what the merits of the in- vention." And Lord Grifford said : — " The patentees have failed to tell the public what they truly claim as their invention. They should have said what they claimed and what they disclaimed. They should tell us what is new, and if they claim too much the patent goes." lApp. Ca. p^y Lord Cairns, L.C. — It is not disputed by the Court of Session that the second, third, and fourth claims, if new and useful, are sufiiciently expressed in point of form. In my opinion the fii'st claim is also sufficient in point of form. It is, as I read it, a claim for a combination ; that is to say, a combination of all the movements going to make up the whole of the mechanism de- scribed. It must, for the present at least, be assmned that this combination, as a combination, is novel ; that it is, to use the words of the Lord President, a new combination of old parts to produce a new result, or to produce a kno^n result in a more useful and beneficial way. It is not doubted that a combination of which this may be said is the subject of a patent. What, then, are the objec- tions to the first claim viewed as a claim for a combination ? The first is an objection said to be founded upon the case of FoxiccU V. Bodoch (4 De Gr., J. & S. 298), decided by the late Lord Westbury when Lord Chancellor. It is said to have been deter- mined in that case that where there is a patent for a combination there must be a discovery or explanation of the novelty, and the specification must show what is the novelty and what the merit of the invention. I cannot think that, as applied to a patent for a combination, that is, or was meant to be, the effect of the decision in Foxicell v. Bostock. If there is a patent for a combination, the combination itself is, ex necessitate^ the novelty; and the com- bination is also the merit, if it be a merit, which remains to be proved by evidence. So also with regard to the discrimination between what is new and what is old. If it is clear that the claim is for a combination, and nothing l)ut a combination, there is no infringement \mless the Harrison v. The Anderston Foundry Co. 22'J whole combination is used, and it is in that way immaterial whether any or which of the parts are new. If, indeed, it were left open on the specification for the patentee to claim, not merely the com- bination of all the parts as a whole, but also certain subordinate or subsidiary parts of the combination, on the ground that such sub- ordinate or subsidiary parts are new and material, as it was held that a patentee might do in Lktev v. Leather (8 E. & B. 1U04), then it might be necessary to see that the patentee had carefully distinguished those subordinate or subsidiary parts, and had not left it in dnhio what claim to parts in addition to the claim for combination he meant to assert. The second objection to the first claim in the present case was founded on the doctrine of LMcr v. Leather. In the present case, however, no question of this kind appears to mo to arise. The patentees claim, as I have said, for a combination under their first claim, calling it " the construction and arrangements of the parts of mechanism herein distinguished generally;" and in their second, third, and f oui'th claims they have specified the subordinate or sub- sidiary parts which they claim as novel, and the specification of these subordinate or subsidiary parts appears to me to exclude the possibility of a claim for any other parts as novel. The specification, therefore, appears to me ex facie to distinguish the new from the old, where it is necessary to distinguish the new from the old ; and to claim for a combination where it is claimed, in a manner which is suflicient for a combination of the kind described. Per Lord Chelmsford. — The claim of a combination or an-ange- i App. Ca. ment of parts of a machine, without more, is in itself a sufiieient description of a novel invention, i. e. of a combination of parts which have never been combined in the same manner before. The explanation of the novelty is to be found in the description of the arrangement of the parts in the body of the specification. Whether the combination claimed is new or not is a question of fact to be proved on a trial. Where a claim is clearly and distinctly made, there can be no necessity for a patentee to distinguish between what is claimed and what is disclaimed. It is enough to say in answer to Lord Gifford's suggestion that everything which is not claimed is disclaimed. The office of a claim is to define and limit with precision what it is which is claimed to have been invented, and therefore patented. In the construction of a specification, it appears to me that it ought not to be subjected to what has been called a benign interpretation, 2'24: Hakeisox r. Tue Anderston Foundry Co. or to a strict one. The language sliould he construed according to its ordinary meaning — tlie understanding of technical words being of coui'se confined to those who are conversant with the subject- matter of the invention — and if the specification is thus suflB.ciently intelligible, it performs all that is required of it. The patentee seems to me to have framed his specification in such a manner as to make it unobjectionable on the face of it. 1 App. Ca. LoKD Hath ER LEY referred to FoxwcUy. Bostock (4 De Gr., J. & S. ^'' ' 298), and said: — It was there held — and that, I think, was all that was held — that it is not competent to a man to take a well-known existing machine, and, having made some small improvement, to place that before the public, and say : " I have made a better machine. There is the sewing machine invented by so-and-so ; I have improved upon that. That is mine ; it is a much better machine than his." That will not do ; you must state clearly and distinctly what it is in which you say you have made an improve- ment. To use an illustration which was adopted, I think, by Lord Justice James in another case, it will not do, if you have invented a gridiron pendulum, to say : — " I have invented a better clock than anybody else," not telling the public what you have done to make it better than any other clock which is known. Har\vood and Another v. The Great Northern Railway Company. [a.d. I860. 2 B. & S. 194, 222 ; 11 H. L. Ca. 654 ; 29 L. J., Q. B. 193 ; 31 L. J., Q. B. 198; 35 L. J., Q. B. 27.] Suhjed-matter of a Patent — Keiv use of an old Thing, Case for the infringement of a patent of 16th March, 1853, No. 651, to C. H. Wild, for " improvements in fishes or fish- joints for connecting the rails of railways." Pleas : 1. Not guilty. 2. That the patentee was not the true and first inventor. 3. That the specification was insufficient. 4. That the invention was not new. 5. That it was not the subject-matter of a patent. Issue. The provisional specification stated : — "In securing the joints of rails it has been found advantageous to attach pieces of iron to each side of the rails by means of bolts and nuts, and such pieces of iron are commonly called fishes. My invention consists in forming a recess or groove in one or both sides of each fish, so as to reduce the quantity of metal at that part, and to be adapted to receive the square heads of the bolts which are thus prevented from turning round when the nuts are being screwed on." The specifi- cation described the invention by reference to drawings, and showed Harwood v. (treat Northern Kailway Companv. 225 the grooved fisli secm^ed by bolts and nuts at the joint of two rails, the bolts having square heads fitting into the recess, and the nuts being kept clear of the groove by means of a washer. Claim 1 : " The constructing fishes for connecting the rails of railways with a groove adapted for receiving the heads of the bolts or rivets employed for securing such fishes, and the application of such fishes for connect- ing the rails of railways in the manner hereinbefore described." At the trial, it appeared that before IVikl's patent the bolts for fish- joints had been made with squared necks or with squared heads fittmg into corresponding recesses, but had never been made with a groove along the outer siu-face for the double purpose of receiving the square heads of the bolts and of rendering the fish lighter for equal strength of metal. Also, that in the year 1847, a timber bridge of considerable span, known as the Hackney Bridge, had been constructed by Mr. Brunei on the 8outh Devon Railway. In this bridge horizontal beams of timber were laid from each pier and were united at the centre by scarf joints. Channel iron bars were laid underneath the beams along tlieir whole length and across the joints for the purpose of giving additional strength, and these bars were secured by bolts with square heads fitting into the groove of the channel iron. A piece of plate iron was also laid for some feet along the upper surface of the beams and covered the joint, being secured by the bolts which held the channel iron. It further appeared that in other timber bridges constructed by Mr. Brunei^ beams of timber had been laid horizontally upon each other, and that channel iron bars had been employed for strengthening such beams, being bolted along the under side by square-headed bolts passing through the beams and secured by nuts ; the groove of the iron bar effecting the double purjDose of preventing the heads of the bolts from turning round and of giving greater additional transverse strengtli with the same weight of metal. The jury found : 1. That the channelled irons upon railway bridges, independent of the Hackney Bridge, were used before the patent for the double pur- pose of obtaining increased strength and preventing the bolt-heads from turning round, but that they were not used for the purpose of fishing. 2. That the fastening of the scarf joint at the Hackney Bridge was a fishing of that joint, but that the use of the channelled iron arose from its being already there for fastening together the beams and the iron, and was not adopted by Mr. Brunei with reference to the special advantages in fishing contemplated by WihVs patent. Cockrurx, C.J., directed a verdict for plaintiffs. Leave reserved. 226 Harwood v. Great Northern Railway Company. Rule nisi to enter a verdict for defendants on the ground that the invention was not the subject-matter of a patent, or for a new trial on the ground of misdirection with respect to the use of grooved iron in the Hackney Bridge, discharged by the Court of Queen's Bench. (Cockburn, C.J., Hill, Blackburn, Crompton, JJ.) 2 B. & S. Per CocKBURX, C.J. — It appears to me that Wild was entitled ^' " ' ■ to take out a patent for his invention. It is true that the use of grooved plates of iron, with bolts with heads and screws, the heads of the bolts being fixed in the groove, had previously been applied to the pm^pose of connecting and fastening timbers placed vertically upon one another, or placed horizontally side by side. Wild, how- ever, proposed to apply the contrivance to what is called Jishing^ that is, the fastening timbers placed together in a wholly new and different position — viz., longitudinally, end to end, in contact with each other. 2 B. & S. Now, although the authorities establish the proposition that the ^' ' same means, apparatus, or mechanical contrivance cannot be applied to the same purpose, or to piu-poses so nearly cognate and similar as that the application of it in the one case naturally leads to the application of it when required in some other, still, the question in every case is one of degree, whether the amount of afiinity or similarity which exists between the two purposes is such that they are substantially the same ; and that determines whether the invention is sufficiently meritorious to be deserving of a patent. In this case I think the piu'pose for which these things had been used is sufficiently distinct to warrant us in holding that Wild's invention may be the subject of a patent. The second point is, whether by the previous user of this mechanical contrivance there has been an anticipation of Wild's invention, which prevents him from sustaining his patent. . . . On this part of the case the question is, whether the accidental use of a piece of machinery (forming part or the whole of a mechanical contrivance which may be applied afterwards to some ulterior purpose), without any intention of producing the result, is such a user of the invention as prevents a patent from being taken out by another person ; and this turns upon what is the meaning of stat. 21 Jac. 1, c. 3, s. 6. Clearly the statute means what others have invented, and used knoivingli/, for the same purpose for which the person who afterwards comes forward as the inventor, and obtains a patent, intends to use it. I go the length of sajang, that even if this had been done upon a railway, it would not have prevented a subsequent patent from being taken out. Harwood v. Great Northern Kailvvay Company. 227 Per Black BUKN, J. — It is now well established that a patent for 2 B. & S. a new combination of old things is good if the result be beneficial. P" It is also well established that the application of an old principle to what is practically the same object : as in the examples ordinarily given of scissors, which where first invented for cutting cloth, and afterwards used for cutting silk ; or a spoon, used for eating soup, and afterwards used for eating peas, in which it is plain there is no new invention, is not a matter for which a patent can be taken out. Between these two extremes — between the simple case of the scissors, and the case in which there is a combination of old matters brought together so as to make a most complicated machine, as that in Lister v. Leather (8 E. & B. 1004), and that in Potter v. Parr (2 B. & S. 216, ■;?.), it is difficult to draw the line and say where the invention commences. The real principle is laid dowTi by Lord Tenterdex in Brunton v. Haichcs (4 B. & Aid. 541), where I under- stand him to say, that it is a question as to the degree to which the thing has been done in a mode known before, as applied to a similar purpose. A man cannot be said to " «/.se" a manufacture in the sense in which the word must be understood in the statute of James, and as it would be ordinarily understood, when accidentally, and without any knowledge or intention, he produces that which, if it were knowingly and intentionally done, and for the purpose of trade, would be a manufacture. . . . Upon the finding of the jury, this invention of Wild has not been used in any sense which can be called the use of it as a manufacture. On appeal to the Court of Exchequer Chamber (Pollock, C.B., Channell, Wilde, BB., Williams, Willes, and Byles, JJ.), judgment reversed, and rule made absolute to enter a verdict for defendants upon the pleas denying the novelty of the invention and that it was the subject-matter of a patent. Per Willes, J. — In our opinion, quite independent of the use of the grooved iron for fishing in the Hackney Bridge, the use of grooves in pieces of iron for holding materials together by means of bolts and nuts had been given to the world, together with all its advantages, before the date of WikVs patent ; and Wild's alleged invention was a mere application of that old contrivance in the old way, to an analogous subject, without novelty or invention in the mode of applying such old contrivance to the new pm^pose. And an application such as this does not make a valid subject-matter for a patent. See Tetlei/ v. Easton (2 C. B., N. S. 706) ; Brook v. Aston (8 E. & B. 478, s.c.'in error 28 L. J., Q. B. 175.) q2 228 Harwood v. Great Northern Railway Company. On appeal to tlie House of Lords, tlie judges were summoned, and Williams, Blackburn, Keating, Shee, JJ., and Channell, Piggott, BB., attended. Two of the learned judges (^dz., Blackburn, Shee, JJ.) were of opinion that the verdict should be for plaintiffs, and that there should not be a new trial, but the remaining four judges were of the contrary opinion. Judgment of the Court of Exchequer Chamber affirmed, and appeal dismissed with costs. Per Lord Westbury, L.C. — The question is simply this: whether the channelled iron, which was undoubtedly a fish (and one of the objects of the channel was to receive the square heads of the bolts and prevent their turning), is not, in truth, substantially the same thing as a grooved plate with a recess hollowed out in its owTi plane, instead of a hollow being effected by flanges placed on either side of the plate. Regarding the patent as limited to a claim for fishes of a particular configuration, I cannot for a moment doubt that the channelled iron, having the same object, and being capable of the same application, substantially involves the fish-plate made with a grooved hollow in the manner which I have attempted to describe. Then, my Lords, the question is, whether there can be any in- vention in taking that thing which was a fish for a bridge, and having applied it as a fish to a railway. Upon that, I think, the law is well and rightly settled, for there would be no end to the interference with trade and with the liberty of adopting any mechanical contrivance, if every slight difference in the application of a well-known thing should be held to constitute ground for a patent. There is the familiar contrivance of the button to the button-hole taken from the waistcoat or the coat, which may be applied in some particular mechanical combination in which it has not hitherto been applied. But it would be an idle thing, if it were possible, to take a well-known mechanical contrivance and, by applying it to a subject to which it has not hitherto been applied, to constitute that application the subject of a patent to be granted as for a new invention. 1 1 IT. L.C. No sounder or more wholesome doctrine, I think, was ever estab- ^'' ^^~' lished than that which was established by the decisions referred to in the opinions of the four learned judges who concur in the second opinion delivered to your Lordships — namely, that you cannot have a patent for a well-known mechanical contrivance merely when it is applied in a manner or to a purpose which is not quite the same, but is analogous to the manner or purpose in or to which it has been hitherto notoriously used. Tlio channelled iron was npplipd in a Hakwood v. Gkeat Nokthekn Railway Comi'ANv. 229 manner that was notorious, and tlie application of it to a vei-tical fisli would be no more than the ajiplication of a well-known con- trivance to a purpose exactly analogous or corresponding to the purpose to which it had been previously applied. P^T Lord Cranm'ortii. — It is the mere application of an old iiH. L. c. contrivance in the old way to an analogous subject without novelty ^^' ^^'** in the application. Hassall v. Wright and Others. [a.d. 1870. L. E., 10 Eq. 509; 40 L. J., Ch. Ub.'] Bight to sue on a Licence before Registration. Suit to restrain from infringing a patent granted to defendant Wright. It appeared that on 5th Feb. 1867, TFr/r//// granted by deed an exclusive licence to plaintiff for the use of the invention. The deed was not registered (see stat. 15 & 16Yict. c. 83, s. 35) until May, 1870, after delivery of notice of motion in the suit. In Jan. 1870, Wright licensed other parties, who were made co-defendants in the suit, and their licence was not registered. A preliminary objection was taken that the non-registration of the deed of Feb. 1867, was a bar to plaintiff's right to sue. Malins, V.C, overruled the objection, and said : — It is quite 10 Eq. true that in the Court of Queen's Bench it has been decided that ^" °^^* where the assignee of a patent sues at law (before the registration of the assignment) for the infringement of the patent, a third person, not the grantor, he is unable to maintain his suit ; because the Act of Parliament says, that until the assignment is registered the original patentee must be deemed to be the owner of the patent. But even there the Court of Queen's Bench reserved the question of right as between the grantor and grantee ; they do not say there is no title, they assume that he may be entitled to maintain a suit on having his title perfected. That is the express language of Lord Campbell in gi'ving judgment, and he says it is not necessary to decide the question whether the registration relates back. I should say, under the circumstances here, it has relation back, and gives a title to the licensee ab i)iitio. Hastings v. Brown. [a.d. 1853. 1 e. & b. 450 ; 22 l. j., q. b. 161.] SuJJiciency of Specification. Case for the infringement of a patent of 21st Dec. 1844, No. 10,446, to C. Joh)istoiie, for " certain improved arrangements for 230 Hastings v. Bkown. raising skips' ancliors and otlier purposes." Plea 5. That the speci- fication was insufficient. Issue. The patent related to a windlass, the drum of which was grooved in a V form, the sides of the V groove being scalloped or recessed into a series of shell-like indentations which formed a hold for the links of a chain cahle. The specification stated : — " That the scallop shell was upon a new plan, intended to hold without slipping a chain cable of any size, as shown by the opening form of the scallop at the top and bottom of figm-e 2." The clrawing (figure 2) merely showed an indented Y groove. Claim: — "The new form of scallop shell (as shown in figure 2) in conjunction with the arrangements hereinbefore described." At the trial, it appeared that before the date of the patent no cable-holder was known which would hold chains of different sizes, and the invention claimed as a novelty was the application of a single windlass to different sizes of chain cable. It also appeared that a windlass, capable of holding a chain-cable of a given size, was not new. It was contended, on behalf of defendant, that the speci- fication was insufficient, it being doubtful whether the claim was for holding a chain of a given size, or for holding chains of different sizes. Lord Campbell, C.J., left the case to the- jury. Yerdict for plaintiff. Leave reserved. Rule nisi to enter a nonsuit made absolute by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, Wightman, JJ.) 1 E. & B. Per Lord Campbell, C.J. — It is clear that the patentee ought to ^' ^ ■ state distinctly what it is for which he claims the patent, and describe the limits of the monopoly. That is not done by this speci- fication. The claim is for an invention by which a single windlass may raise cables of different diameter, which is allowed to be a great improvement. But is that pointed out by the specification ? The words are, at best, equivocal. If he claims for a windlass that is fitted for one cable only, of whatever size, there is no novelty : and the %'ice of the specification is that it does not assert that more can be done by the invention. The title tells us nothing. The words of the specification are " a chain cable of any size." " A " applies to one only ; at all events, the phi-ase is capable of that meaning ; and the specification, if it be equivocal, is bad. I see nothing in the words, or in the drawing, that necessarily indicates the con- trivance to be for fitting more than one cable. You might make a "windlass according to the drawing which would do no more than that. The specification therefore is bad, and there must be a nonsuit. Hastingis v. Bkown. 2'il Fer Coleridge, J. — The law is admitted. If the specification upon a fair interpretation be equivocal, it is insufficient. . . . The specification does not say that the windlass, framed as described, will hold cables of different sizes : yet it is necessary to show that this was in the patentee's mind. If it was, the expression is strange. It is very doubtful whether the words could mean that ; but at all events they bear the other meaning equally well. Haworth V. Haedcastle. [A.D. 1834. 1 Bing. N. C. 182 ; 1 Webs. E. 480; 3 L. J., C. P. 311.] VtUity of Invention — Construction of Specification. Case for the infringement of a patent of lOtli April, 1823, No. 4,780, to W. Soufhu-orfh, for " an apparatus adapted to facihtate the di-ying of calicoes." Plea : Not guilty. Issue. The specification stated : " My invention consists in the applica- tion of certain machinery to perform the operation of hanging wet calicoes over a series of staves in a cbying-house, and of remo^dng the same after they have been dried ; " and went on to say, " I arrange the rails or staves near to the upper part of the drying- house." It then described the operation of hanging the cloths in loops upon rails, and of taking them up again, and referred to drawings which showed a travelling carriage containing the cloths and running on beams through the whole length of the drying - house. Claim (in substance) : The application of the machinery described for drying calicoes, which machinery is adapted by means of revolving and traversing cylinders situated over a series of stationary rails or staves arranged in ch-ying-houses in such manner that the calicoes may be caused to hang do^n in long loops upon the staves : the said machinery being adapted for taking up and removing the said calicoes after being dried. At the trial, it appeared that rails for drying cloths, similar to those mentioned in the specification, were in common use before the date of the patent ; also, that the machine failed in taking up certain cloths stiffened with clay. It was contended, on behalf of defendant, that the patentee had claimed the invention of the rails or bars, which were old, whereby the patent became void ; also, that the invention was of no use. Alderson, J., left the case to the jury. The jury found : — That the invention was new, and useful upon the whole, but that the machine was not useful in some cases for taking up goods. Yerdict for plaintiff. Leave reserved. Eule nisi to enter a nonsuit on the groimds (1) that the jury had negatived the usefulness of the invention to the full extent held 232 Hawokth i\ Hakdcastle. out in tlie specification, and (2) that the patentee had claimed the rails or staves, or, at any rate, the placing them in a tier in the upper part of the drying-room, discharged by the Court of Common Pleas. (Tindal, C.J., Park, Graselee, Bosanquet, JJ.) Fer TixDAL, C.J, — After stating that the machine was useful upon the whole, the expression that, in some cases, it was not useful to take up the cloths, appears to us to lead rather to the inference that, in the generality of cases, it is found useful. And if the jury think it useful in the general, because some cases occur in which it does not answer, we think it would be much too strong a conclusion to hold the patent void. "\Ye think that the patentee does not claim, as part of his inven- tion, either the "rails and staves," or the placing them at the upper part of the building. The use of the rails and staves for this pm'pose was proved to have been so general before the granting of this patent, that it would be almost impossible, a priori, to suppose that the patentee intended to claim what he could not but know would have avoided liis patent. . . . There can be no rule of law which requires the Court to make any forced construction of the specification, so as to extend the claim of the patentee to a wider range than the facts warrant; on the contrary, such con- struction ought to be made as will, consistently with the fair import of the language used, make the claim of invention co-extensive with the new discovery of the grantee of the patent. And we see no reason to believe that he intended under this specification to claim either the staves, or the position of the staves as to their height in the drying-house, as a i)art of his invention. Hayne and Anothee v. Maltby. [A.D. 1789. 3 T. E. 438 ; 1 Webs. E. 291.] . Esto'ppel. Declaration, for breach of covenant, setting out so much of the recitals of the deed as stated that plaintiffs were the assignees of a patent for a machine to be fixed to a common stocking-frame for making point-net, and averring that plaintiffs had granted per- mission to defendant to use one stocking-frame with the patent invention attached thereto. Pleas : 3. Setting out the patent, that no specification was enrolled. 4. That the invention was not new. 5. That it was not discovered by the patentee. Demurrer and joinder. Judgment for defendant by the Court of King's Bench. (Lord Kenyon, C.J., Ashurst, Buller, Grrose, JJ.) Per Lord Kenyon, C.J. — The plaintiffs, pretending to derive a Haynp: and Another v. MAi/nn'. 233 right under the patent, assigned to the defendant part of that right on certain terms ; and notwithstanding that the facts now disclosed show that they have no such privilege, they still insist that the defendant shall be hound by his covenant, though the consideration of it is fraudulent and void. But it is said the defendant is estopped in point of law from saying that the plaintiffs had no privilege to confer ; but the doctrine of estoppel is not applicable here. The person supposed to be estopped is the very person who has been cheated and imposed upon. Heath v. Unwin. [A.D. 1842—3. 10 M. & W. 684 ; 2 Webs. E. 216.] Sufficiency of Notice of Objections — Evidence of Infringement — Use of Chemical Equivalents. Case for the infringement of a patent of 5th April, 1839, No. 8,021, to J. M. Heath, for "improvements in the manufacture of iron and steel." Plea : Not guilty. Issue. The patent related to the use of carburet of manganese in the manufacture of cast steel. The specification stated : — " I declare the nature of my invention to be (4) the use of carbm^et of manganese in any process whereby ii"on is converted into cast steel. I propose to make an improved quality of cast steel by introducing into a crucible bars of common blistered steel, broken into fragments, or mixtures of cast and malleable iron, or malleable iron and carbo- naceous matters along with from one to three per cent, of their weight of carburet of manganese, and exposing the crucible to the proper heat for melting the materials, which are, when fluid, to be poured into an ingot mould in the usual manner." Claim (4) : " The employment of carburet of manganese in pre- paring an improved cast steel." Defendant, in his notice of objections delivered with the pleas, stated : (4) That the invention was not new, and was either icholly or in part used and made public before the obtaining the letters patent. Rule nisi, for further and better particulars, made abso- lute by the Court of Exchequer. (Lord Abinger, C.B., Parke, Gurney, Eolfe, BB.) Lord Abixger, C.B., on the authority of Fisher v. Deicich (4 Bing. lOM. &"W. N. C. 127), held that it was not sufficient to say that an alleged in- ^' vention was wholhj or in part made public before the obtaining the letters patent, but that it should be shown what part was so used. At the trial, it appeared that the object of the invention was to render cast steel more easy to weld and more malleable than it had 217. 234 Heath v. Unwin. Htherto been. Shortly after the enrolment of the specification, plaintiff proposed to substitute portions of coal tar and black oxide of manganese for the carburet of manganese, and sent to defendant, who was his agent at Sheffield, small parcels of these materials, to be called ^^ Heath'' s composition," and supplied to the manufacturers at a reduced rate. Defendant, however, soon ceased to act as agent for plaintiff, and began to manufacture cast steel with coal tar and black oxide of manganese. This was the alleged infringement for which the action was brought. It further appeared that carbui'et of manganese was formed by exposing a mixture of carbon and oxide of manganese to a high 2 Webs. R. temperature. Lord Abinger, C.B., said: — " The materials or ele- ments of carburet of manganese, as used by the defendant, being out of all proportion cheaper than the carburet itself, the use of such materials in the said composition is a new discovery or inven- tion, and not within the letters patent. Further, there is no sufficient evidence of the formation of carburet of manganese during the process adopted by the defendant — that is, of the use of carburet of manganese in the manufacture of steel within the meaning of the specification. Plaintiff nonsuited. Heath v. Unwin. [A.D. 1844. 2 Webs. E. 218; 13 M. & W. 583; 14 L. J., Ex. 153.] Evidence of Infringement— Use of Chemical Equivalents. Second action between the same parties for the infringement of the same patent. Plea : Not guilty. Issue. At the trial, it appeared that the invention enabled manufac-^ turers to produce malleable welding cast steel suitable for cutlery from low-priced British ii"on, which had not been done before ; that prior attempts to use oxide of manganese had failed, because the manganese caused the melting-pots to give way ; that as soon as plaintiff found out that the separate elements of carburet of man- ganese — viz., carbon and manganese — would answer as well as the compound substance, he supj)lied them in that form. Also, scientific chemists deposed that carburet of manganese was formed from carbon and oxide of manganese in the melting pot at a tem- perature below that at which steel fused ; and it was estimated that the ingredients used by defendant, as mentioned in the former case, gave about one-half per cent, of carburet of manganese for combiaa- tion during the fusion of the metal. "Witnesses for defendant deposed that black oxide of manganese Heath v. Unwin. 235 was commonly used for cleansing iron ores ; also, that they had used carbon with this oxide as an experiment, and occasionally in the course of trade, before 1839. Also, that crucibles for melting steel were made of clay and coke dust, so that carbon was always present when oxide of manganese was used. Parke, B., directed the jury:— If they (viz., two of the wit- nesses) used the oxide and carbon only by way of experiment, that woidd not affect the novelty of the invention; but if they used them in the regular com-se of their trade before the date of the plaintiff's patent, then his invention cannot be new. The jury found : That defendant had inf ringed ; and that, although he might not have used one per cent, of carburet, the words in the specification, from one to three per cent., gave a latitude as to the quantity to be used. Verdict for plaintiff. Eule nisi to enter a verdict for defendant on first issue made absolute by the Com't of Exchequer. (Parke, Alderson, Grurney, Eolfe, BB.) Per Parke, B. — It is quite clear upon the evidence that the 2 Webs. R defendant never meant to use the carburet of manganese at aU ; he ^' certainly never knew, and there is no reason to suppose that prior to this investigation anyone else knew, that the substance would be formed in a state of fusion ; and it is mere matter of speculative opinion (though after the verdict we must assume it to be a correct opinion) amongst men of science that it would, but it was clearly not ascertained, and still less was it a well-known fact. There was, therefore, no intention to imitate the patented invention ; and we do not think the defendant can be considered to be guilty of an indirect infringement, if he did not intend to imitate at all. (But see observations of the same learned judge in the next case.) Heath v. Unwin. fA.D. 1850. 2 Webs. E. 228 ; 12 C. B. 522 ; 5 H. L. Ca. 505 ; 16 L. J., Ch. 283 ; 22 L. J., C. P. 7 ; 25 L. J., C. P. 8.] Evidence of Infringement — Use of Chemical Ecjuivalents discovered after grant of Patent. Thii'd action between the same parties for infringement of the same patent. (Issue directed by the Coiui;- of Chancery.) Plea : Not guilty. Issue. At the trial, Cresswell, J., ruled (see pre\T.ous case) : — That the use of oxide of manganese and carbonaceous matter was not an in- fringement of the patent. Verdict for defendant. 236 Heath v. Unwin. Error on bill of exceptions to this ruling. Judgment of venire de novo by the Coiu^t of Exchequer Chamber. (Piatt, B., Wightman, Erie, Crompton, JJ.; dissentientihus Alderson, B., Coleridge, J.) 2T^>bs.R. Per Cromptox, J.— I think there was abundant evidence from ^' '^^' which the jmy might have found that the carburet was first formed in the crucible from the materials, so as to be in the distinct state of carbm-et before the use of it in the manuf actui'e of steel commenced, and that after its formation it was used as a carburet of manganese in the process of converting the iron into steel ; and I think from such a state of facts it was competent for the jury to find that the patent had been infringed by the defendant. 2 Webs. E. Per Erle, J. — I am of opinion that a patent for the use of a v--"^^- substance in a process is infringed by the use of a chemical equiva- lent for that substance, known to be so at the time of the use, if used for the purpose of taking the benefit of the patent and of making a colourable variation therefrom. If the patent w^as for the use of soda in a process, and, by subsequent analysis, sodium and oxygen were discovered to be the elements of soda, the use of sodium and oxygen in the patented process for the purpose of being equivalent to soda in that process, would appear to me to be an in- frino-ement, although the analysis of soda was subsequent to the patent. 2 Webs. E. Per Alderson, B.— There is no evidence that oxide of manganese !"• ^^°- and carbon were known to be, at the time of the specification— which time and not the time of the use is the material time to look at— exactly and under all circumstances an equivalent in chemistry to carburet of manganese. . . . The plaintiff did not then know it, nor did any one else then know it. If they know it now, it is in consequence of a new discovery alone, for which no patent has been taken out, and no specification enrolled. I apprehend that nothing is an equivalent now which would not have been one immediately after this specification was enrolled. The knowledge of the equiva- lents must be the knowledge of the world had before these experi- ments, now called infringements, were first made. Appeal to the House of Lords, when the judges were summoned for the puri^ose of stating their opinion on the following question (in substance) :— ^Vhether there w^as evidence for the jury of an in- fringement of the patent by the use of oxide of manganese and carbonaceous matter in the manufacture of cast steel? Crowder, Crompton, Williams, Erie, Cresswell, Wightman, JJ., and Piatt, B., answered in the affinnative ; and Maule, J., Pollock, C.B., Parke, Alderson, BB., answered in the negative. Heath v. Unwin. 237 Per Cromptox, J. — If a new process of wliicli tlie patentee and 2Webs. R. T) 299. all others were ignorant at tlie time of the specification is found out afterwards, the exercise of such new process may be an infringe- ment, provided it is substantially the same with or includes the patented invention. The knowledge or intention of the party infringing is now most 2Webs. Tl. properly admitted to be immaterial. Per Williams, J. — There is ample evidence that to melt together ^■^^^,^- ^• oxide of manganese and carbonaceous matter with steel and iron will serve as an equivalent for the melting together of carburet of manganese with steel or iron in producing the desired result. But there is no evidence that at the time of the patent and specification this was known to persons of ordinary skill in chemistry. And I fully agree with the doctrine which has been repeatedly laid down in the course of the discussion of this cause, that though the use of a chemical or mechanical substitute, which is a known equivalent to the thing pointed out by the specification and claimed as the inven- tion, amounts to an infringement of the patent, yet if the equivalent were not knoTVTi to be so at the time of the patent and specification, the use of it is no infringement. Per Cresswell, J.— The claim being general, and the evidence in suppoi^; of the action tending to show that the defendant had used carburet of manganese in the manufacture of steel by causing it to be first formed in the pot and afterwards mixed with the steel, I think the case is not one where an equivalent has been used, but the thing itself; and if the thing itself was used, although the defendant was not aware of it, he has still infringed the patent. Per Parke, B. — In delivering the judgment of the Court of Exchequer in a former stage of this case, I stated the opinion of the Court to be that there would be no indirect infringement if the defendant did not intend to imitate at all. That part of the judgment has been justly objected to in Stevens v. Keating (not reported as to this point), and no doubt we were in error in that respect. There may be an indirect infringement, as well as a direct one, though the intention of the party be perfectly innocent, and even though he may not know of the existence of the patent itself. The specification must be read as persons acquainted with the 2 Webs. E. subject woidd read it at the time it was made ; and if it could be P' ^^^• construed as containing any chemical equivalents, it must be such as are known to such persons at that time ; but those which are not knoT\7i at the time as equivalents, and afterwards are found to 238 Heath v. Unwix. answer the same purpose, are not included in tlie specification. They are new inventions. oll.L. C. Fcr Lord Craxworth, L.C— There is no evidence whatever ^' ^^°' tending to prove that, at the date of the patent, it was known to persons acquainted with the subject of manufacturing steel, that coal tar and oxide of manganese would he chemical equivalents for the carburet of manganese claimed by the plaintiff. Indeed, it is obvious that the discovery of such ecpiivalents was made after the use of the carbui-et, as a distinct metallic substance, had been some short time in operation. It was itself a most valuable discovery, and would have legitimately formed the subject of a new patent. On the short ground that the invention claimed is the use of a particular metallic substance — namely, carburet of manganese — in certain definite proportions, according to the weight of the steel under fusion, and that no such substance, nor any equivalent for it, known to be such at the date of the specification, was used by the defendant, I think that there was no evidence of infringement, and so that the ruling of the learned judge at the trial was correct. Heath v. Smith. [a.d. 1854. 3 E. & B. 256; 23 L. J., C. P. 166.] Prior User of the Patented Invention. Case, brought by the administratrix of the patentee, for in- fringement of the same patent (extended for seven years). Plea 4. That the invention was not new, but had been publicly used in England before the date of the patent. Issue. At the trial, it appeared that before the patent five firms had practised a process identical with that patented. The operation had been conducted openly by three of the parties, but secretly by the other two. All the five firms had sold the steel so manu- factured in the usual way of bu.siness. Erle, J., expressed his opinion that, if this evidence was believed, the invention was not new ; and, the truth of it being admitted, his Lordship du-ected a verdict for the defendant on the fourth issue, and for the plaintiff on the remaining issues. Yerdict accordingly. Eule nisi for a new trial, on the ground of misdirection, dis- charged by the Court of Queen's Bench. (Lord Campbell, C.J., Wightman, Erie, JJ.) 3 E. & B. Per Lord Campbell, C.J. — This was not a mere experiment ; a p. 270. perfect manufactured article was produced for profit by hundreds of tons. As to two of these firms, it appeared that they did not 273. Heath v. Smith. 239 disclose tlie metliod, but ttie other three firms made no attempt at concealment, but carried on the trade just like any other handi- craft by which bread was to be earned ; all the workmen and other persons successively employed knew of the method. . . . But it is said that, according to the judicial determinations, the user must be public. If we are to make this addition to the statute, has there not been a public user within the meaning of the w^ords ? Can a patent be granted for a manufacture which other people have used, not indeed in the market-place, but without any concealment whatever. If this user without concealment does not constitute a public use, what does? In Jones v. Pearce (1 "Webs. R. 122), there was a mere experiment ; in Leicis v. Marling (10 B. & C. 22), a model and specification had been shown, but no machine used ; in Morgan V. Scicard (2 M. & W. 544), the machine was privately made to be sent abroad. Does any one of these cases approach the present, where, during several years, the manufacture has been carried on for the piu'pose of trade, and the article sold to the public. Per Ekle, J. — As to secrecy, three of the firms practised no con- 3 E. & B. cealment whatever. That of itself is ground enough for discharging ^' the rule. I should, however, be disjDOsed to go further. If one party only had used the process, and had brought out the article for profit, and kept the method entirely secret, I am not prepared to say that then the patent would have been valid. But for the pui'pose of the present case, it is enough to say that there has been an user without any concealment. Lord Campbell, C.J., added : — I wish it to be clearly under- stood that if we had held this patent valid, the five firms would all have been liable to an action for exercising the invention -after the patent had been taken out. . . . Now see what that comes to. If any man makes a discovery and uses it without taking out a patent, and does not announce it by sound of trumpet or calling in the public as spectators, he must suspend the use of his discovery if another person subsequently makes the same discovery, and takes out a patent for it. That would be the consequence of the principle for which the plaintiff is driven to contend. Heugh V. Chamberlain. [a.d. 1877. 25 W. R. 742.] Assignment of Patent — Estoppel. Action for infringement of a patent. It appeared that plaintiff was the assignee of a patent for frilling machines taken out by 240 Heugii v. Chamberlain. defendant, Chamhcrlain. Subsequently to tlie assignment, Chamber- lain entered into partnership with Smitli, the other defendant, and the two partners commenced to make frilling machines under a patent of later date than that of plaintiff. The defendants delivered separate defences, and Smith put in issue the validity of plaintiff's patent. On motion to strike out this defence, it was held by Jessel, M. E., that defendant Smith was not estopped from impeaching the validity of the patent. HiGGs V. Goodwin. [a.d. 1858. E. B. & E. 529 ; 27 L. J., Q. B. 421.] Evidence of Infringement — Suhjed-matter of a Patent, Case for the infringement of a patent (in part disclaimed) of 28th April, 1846, No. 11,181, to W. Higos. Title (after dis- claimer), " Treating chemically the collected contents of sewers and drains in cities, towns, and villages, so that the same may be appli- cable to agricultural and other useful purposes." Pleas : 1. Not guilty. 3. That the undisclaimed part of the invention was not new. 4. That it was not the subject-matter of a patent. Issue. The patent related to a method of precipitating, by means of hydrate, of lime, the solid animal and vegetable matter held in suspension in sewage water. The specification described the arrange- ment of tanks and apparatus, and stated : — " For the pui-pose of precipitating the animal and vegetable matter contained in the sewage water, I prefer to employ hydrate of lime which, so far as I know, is the cheapest and most effective chemical agent for effecting this purpose." Claim : " The precipitation of animal and vegetable matter from sewage water by means of the chemical agent herein- before described." At the trial, it appeared that the alleged infringement was com- mitted by the Local Board of Health at Ritchin, who separated the greater part of the organic matter from sewage water by filtration, and afterwards deodorized the liquid by the admixtm^e of hydi-ate of lime. The refuse sediment was not sold, but was carted away by persons who were paid for removing it. Erle, J., directed the jury : — That if the chemical agent was applied with a knowledge that it would precipitate the matter left in the sewage water, the board must be considered to have applied it for that pm-pose, although their object was to deodorize, and not to precipitate ; and that they had, in that case, infringed the patent, although the greater part of the sewage matter had been separated by filtration HiGGs V. Goodwin. 241 from tliG water before the hydrate of lime was used. Verdict for plaintiff. Leave reserved. Eiile nisi for a new trial, on the grounds that the invention was not the subject-matter of a patent, and that there was no evidence of infringement. Diu'ing the argmnent. Lord Campijell, C.J., said : — " There may be a patent for producing by precipitation a saleable article, but if that be so, there is no infringement." Also Erle, J., said : — " The intention to produce a profitable matter is of the essence of a patent." Eule made absolute by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, Erie, Crompton, JJ.) Per Lord Campbell, C.J. — There is no evidence of infringement. E. B._& E. Per Cromptox, J. — As to the objection that the patent is void ^' '^ for want of novelty, I am much inclined to say that the patent may be supported. Here is a process producing a new result, that is, manure in a particular form. It can hardly be said that there cannot be a patent for that. Hill v. Thompson and Forman. [a.d. 1817—18. 8 Taunt. 375; 3 Mer. 622 ; 1 Webs. R. 232.] Practice in Patent Suits — Novelty of Invention — Evidence of Infringement, Suit to restrain from infringing a patent of 2Gth July, 1814, No. 3,825, to A, HiU, for "an invention of improvements in the smelting and working of iron." The patent related to a process of manufacturing bar ii'on, free from the defect of being cold short, by the use of lime. The speci- fication stated : — " And my improvements do further consist in the vse and application of Ume to iron, subsequently to the operations of the blast-furnace, whereby that quality in iron, from which the iron is called ' cold short,' is sufficiently prevented, and by which such iron is rendered more tough when cold." The proportions of lime, mine-rubbisli, and slags, to be admixed for the blast furnace, were then described, and the further treatment by lime in the refinery and puddling furnaces was detailed. The specification con- tained no separate claim, but again stated : — " I do fvu'ther declare that / have discovered that the admixtm-e of lime will sufficiently prevent that quality in iron from which the iron is called ' cold short,' and will render such iron more tough when cold ; and I do for this purpose add a portion of lime, to be regulated by the quality of the iron to be operated upon." An injunction until answer or fm-ther order having been obtained upon the filing of the bill, the defendants moved, on tlie coming G. R 242 Hill v. Thompson and Foeman. in of their answer, to dissolve tlie injunction, and filed ceiiain affida^its. Lord Eldon, L.C, dissolved tlie injunction, but ordered an action at law witli an account, and said that he doubted whether an injunction ought to have been granted in the first instance, unless the affidavits had stated more particularly in what the alleged infringement of the patent consisted ; and that it should have been shown to be by working in the precise proportions mentioned in the specification as being of the essence of the invention. That when in futiu-e an injunction is applied for ex parte on the ground of violation of a right to an invention secured by patent, it must be understood that it is incumbent on the party making the application to swear, at the time of making it, as to his belief that he is the original inventor ; for although, when he obtained his patent, he might very honestly have sworn as to his belief of such being the fact, yet circumstances may have subsequently intervened, or information been commimicated, sufficient to convince him that it was not his own original invention, and that he was under a mistake when he made his previous declaration to that effect. 3 ^er. jjis Lordship further said : — The principle upon which the Court acts in cases of this description is the following : Where a patent has been granted, and there has been an exclusive possession of some duration under it, the Court will interpose its injunction, mthout putting the party previously to establish the validity of his patent by an action at law. But where the patent is but of yester- day, and, upon an application being made for an injunction, it is endeavoured to be sho^vn in opposition to it that there is no good specification, or otherwise that the patent ought not to have been granted, the Court will not, from its own notions respecting the matter in dispute, act upon the presumed validity or invalidity of the patent, without the right having been ascertained by a previous trial, but will send the patentee to law, and oblige hun to establish the validity of his patent in a Court of law, before it ^^dll grant him the benefit of an injimction. At the trial at law {infra) the plaintiff succeeded, and moved to revive the injunction. Defendants having stated their intention to move for a new trial, the motion was ordered to stand over. Account as before. 3 Mer. Per Lord Eldo^', L.C. — In his direction to the jmy, the judge has stated it as the law on the subject of patents— first, that the invention must be novel ; secondly, that it must be useful ; and, thirdly, that th(> specification must be intelligible. I will go p. 62i. p. 629. Hill v. Thompson and Foeman. 243 fiirtlier, and say, that not only must tlie invention be novel and useful, and the specification intelligible, but also that the specifica- tion must not attempt to cover more than that which, being both matter of actual discovery and of useful discovery, is the only proper subject for the protection of a patent. And I am compelled to add that, if a patentee seeks by his specification any more than he is strictly entitled to, his patent is thereby rendered ineffectual, even to the extent to which he would l^e otherwise faii'ly entitled. On the other hand, there may be a valid patent for a new combina- tion of materials previously in use for the same piu-pose, or for a new method of applying such materials. But, in order to its being effectual, the specification must clearly express that it is in respect of such new combination or application, and of that only, and not lay claim to the merit of original invention in the use of the materials. Action at law in pursuance of the order of the Court. Plea : Not guilty. Issue. At the trial, it appeared that the alleged infringement consisted in the manufactm^e of pig-iron, by mixing cinders with mine- rubbish, and in the application of quicklime in the subsequent processes. But it also appeared that defendants did not work by plaintiff's specification, but used different proportions. E\ddence was adduced of the user of lime for making pig-iron from slags and mine-rubbish before the patent. Verdict for plaintiff. Eule nisi to enter a nonsuit made absolute by the Court of Common Pleas. In granting the rule the Court were of opinion that a book, Aikhi^s Dictionary, which lay open on the table during the trial, should be considered as having been made use of at the trial, both parties having referred to it. This book was published in 1807, and contained the following passage : — " Riuman says, that cast-iron, which by the common treatment would yield cold-short bar, may be made to afford soft malleable iron by fusing it with a mixture of equal parts of lime and scoria." Per Dallas, J. — This, like every other patent, must undoubtedly i Webs. R. stand on the ground of improvement or discovery. If of improve- P" "^■^' ment, it must stand on the ground of improvement invented ; if of discovery, it must stand on the groimd of something altogether new ; and the patent must distinguish and adapt itself accordingly. If the patent be taken out for discovery, when the alleged discovery is merely an addition or improvement, it is scarcely necessary to observe that it will be altogether void. His Lordship then proceeded to discuss tiie evidence and said : — r2 244 Hill v. Thompson and Forman. ^.E. The application of lime in some way, for tlie purpose proposed, instead of being a secret unknown before, was as public as it could be rendered by a work of extensive circulation ; and in every view of the subject, this claim had been more or less in actual use in this country, so that the present patent would in effect operate as an abrogation of vested and existing rights. . . . On this part of the case I mil only further remark, that if any part of the alleged discovery, being a material part, fail (the discovery in its entirety forming one entire consideration), the patent is altogether void; and to this point, which is so clear, it is unnecessary to cite cases. In every view of the subject, therefore, the claim to invention and novelty fails. Hills i\ Laming. [a.d. 1853. 9 Ex. E. 256 ; 23 L. J., Ex. GO.] Estoppel of Licensee. Declaration for breach of covenant in a deed which recited that plaintiff was grantee of certain patents for improvements in purifying coal-gas, and by which he had given permission to defendants to work the same on certain terms. Pleas: 1. That the said patents were not, nor was either of them, a good and valid patent. 2. That the inventions, &c., were not, nor was either of them, new. 3. That the plaintiff was not the first inventor of the alleged inventions. Demurrer, on the ground that defendant was estopped from questioning the patents. Joinder. Judgment for plaintiff by the Com-t of Exchequer. (Pollock, C.B., Parke, Alderson, Martin, BB.) Parke, B. said: — "The case is similar to that of Boicmaa v. Taylor (2 Ad. & E. 278)." Hills v. Thp: London Gas Company. [a.d. 1857—60. 27 L. J., Ex. GO; 5 H. & N. 312; 29 L. J., Ex. 409.] Misdirection hy Judge — Variance between Deposit Paper and Specification — Sufficiency of Specification — Subject-matter of a Patent — Title after Disclaimer. Case for the infringement of a patent (in part disclaimed) of 28th Nov. 1849, No. 12,867, to C. F. HiUs,i\\Q amended title being "an improved mode of pmifying coal-gas." Plea 1. That the invention was not new. Issue. The patent related to a method of purifying coal-gas from sulphuretted hydrogen. For this purpose sesqui-oxide of iron was mixpd v.'ith sawdust so as to boconic porous, and was placed uj)on Hills i\ The London Gas CoMrANV. 245 perforated shelves in a closed chamber ; the gas under purification was passed thi'ough the mixture, which arrested the sulphuretted hydi'ogen and formed free sulphur and water. Thus, Feg 0, + 3HS=2FeS + 3HO + S. As soon as the material had absorbed all the sulphiu'etted hydrogen which it could take up (or when it became black), a current of fresh air was drawn through the purifying chamber, whereby a second chemical change was effected. The black proto-sulpliide of iron became again the red sesqui-oxide, and sulphm* was deposited. Thus, 2 Fe 8 + 30 = Fco 0.J + 2 S. The material could be used some fifteen or twenty times before it became over-clogged with free sulphur. Claims (in substance) : 1. The purifj'ing of coal-gas from sid- phiu'etted hydrogen, &c., by " passing it through the precipifrded or hych'ated oxides of iron, from whatever soiu'ce obtained," and made into a porous material by being mixed with sawdust, &o. 2. Repeatedly renovating or re-oxidising the said purifying materials by the action of air, whenever they cease to absorb sul- phm-etted hydrogen, so that they may be used over and over again to pui'ify the gas. At the trial, defendants put in evidence the specification of a patent of 4th Nov. 1847, No. 11,944, to R. Laming, for improve- ments in piu*if\dng coal-gas, one part of which related to the use of carbonates of iron for this pm-pose. A witness deposed that the oxide of iron employed by plaintiff was formerly known as carbonate of iron, and was commonly sold under that name. Also that carbonate of iron could only be preserved in sealed vessels, as it changed to the hydrated sesqui-oxide on exposure to the air. Thereupon, Pollock, C.B., said that he was satisfied that the carbonate of iron described by Laming was the same substance as the oxide of iron referred to by the plaintiff, and directed a non- suit. Ride nisi for a new trial on the groimd of misdirection made 27 L. J. absolute by the Court of Exchequer. (Pollock, C.B., Martin, ^' Bramwell, Channell, BB.) New trial of the same action. Pleas : 1. Not guilty. 2. That 5 H. & N". plaintiff was not the true and first inventor. 3. That the invention Avas not new. 4. That the specification was insufficient. 5. That the invention was not the subject-matter of a patent. G. That the invention specified was different from that for which the patent was granted. Issue. At the trial, it appeared that all precipitated oxides of ii'on, which were necessarily artificial, were competent to absorb sul- 246 Hills v. The London Gtas Company. pliuretted liydrogen from coal-gas at ordinary temperatures ; but that the native hydrated oxides of iron could not be practically used for this purpose. Defendants relied on the specification of Lamiiiff's patent, already mentioned, where the material employed was cldoride of calcium, produced by decomposing mm'iate of man- ganese, iron, or zinc ; the specification stating : — " The oxides or carbonates which result are useful for the purification of the gas, and need not be removed." The defendants also put in evidence (1) the specification of a patent of 29th July, 1840, No. 8,577, to^.^. Croll,iov {inter alia) imjJrovements in pmifying coal-gas. The material employed for absorbing sulphuretted hydrogen was black oxide of manganese, which substance was renovated, from time to time, by roasting it in an oven at a red- heat. The specification stated : — " The same effect may be produced by the application of the oxides of zinc and the oxides of iron, and treated precisely in the same way as above described." It further appeared that the deposit paper, left with the law ofiicer, stated the fifth particidar of invention as being " for absorb- ing sulphuretted hydrogen, and other gases, into porous bodies, and renovating them again, either by heat or taking off the atmo- spheric pressure." The jury found: — That the whole invention, and each part, was new ; and that, whether aptly described in the deposit paper or not, it was the plaintiff's invention. Verdict for plaintiff. Rule to enter a verdict for the defendants on the sixth issue re- fused by the Court of Exchequer. (Pollock, C.B., Bramwell, Watson, BB.) H.^&N. Per Pollock, C.B. — The Queen's grant, in terms, includes the invention specified. It may be that the Attorn ey-Gleneral may say the Cro-RTi has been deceived in this matter, but I do not think any one else can. Per Wa'J'son, B. — The patentee made a mistake in stating for what he wanted ]iis patent, but in reality he wanted a patent for his invention ; it has been granted to him for that, and the title comprehends it. If, indeed, the jury had found either that when he applied for the patent he had not invented the thing specified, or that, in tiiith, he did not apply for it, a different question might have arisen ; but the jmy must be taken to have found that, although he has inaccurately or insufficiently described what he was asking for, in reality he was asking for a patent for this invention. Ride nisi to enter a verdict for defendants discharged by the p. 340 Hills v. The London Gtas Co.MrANv. 247 Court of Exchequer (Pollock, C.B., Bramwell, Watsou, Chanuoll, BB.), and rule for a new trial on the ground that the verdict was against the evidence also discharged. ("Watson, Bramwell, BB. ; disaentiente Pollock, C.B.) Pf>' Bramwell, B. — Upon the argument before us Mr. Grove 5 H. & N. has put forward a consideration not adverted to at the trial. He said: — It is true that Croll said oxides of iron, and it may be that he meant all oxides. Take it to he so, that is not such a statement as precludes invention and discovery by the plaintiff, because there are many oxides, the hydrated and anhydrous, the natm^al and artificial, some of which will, and some will not, answer the purpose; and, therefore, it is a matter of invention and experiment to see which will. . . . We concede to Mr, Grovels argument, that upon the mere comparison of these two instruments, Croll has not antici- pated the plaintiff, so as to preclude him, as a matter of law, from being the discoverer of this invention. The next question is upon the patent of Laming. Now Laming 5 H. & N. specifies for the use of chloride of calcium. . . . He claims chloride ^' of calcium, and says he uses it with the oxide of iron, Avhich is produced in the preparation of the chloride of calcium. . , . We cannot say, as a matter of law, that Laming anticipated the plaintiff. The question was left to the jury, and they have found a verdict for the plaintiff. The next objection was that the plaintiff's specification was in- sufficient on this ground. He says, " I use the hydrated or pre- cipitated oxides." It was said that included all hydrated oxides, and, inasmuch as some of the native hydrated oxides would not do, the plaintiff's specification was bad. ... It appears to us, upon looking at the specification, that the plaintiff uses those as equiva- lent expressions, because he says " hydrated or precipitated," and that oxide of iron may be conveniently " prepared " for those pur- poses, and so on ; and therefore it is obvious that when he uses that word "hydrated" houses it as synonomous with "precipi- tated ; " and consequently, when he speaks of using hycbated or precipitated oxides, he means such hydrated oxides as are pre- cipitated. Then it is said that the mere application of the hj^di'ated oxide of iron to absorb sulphm-etted hydi^ogen from coal-gas is not the subject of a patent, that property of it being previously well known. With that we do not agree. If a man were to say, " I claim the use of hydrated oxide of iron for the purifying of coal- gas," without saying how it was to be appKed, it is possible the 248 Hills v. The London Gas Company. objection miglit "be well foimded ; but here tbe plaintiff says, " I claim it in the manufactni'e of gas in the way I have described," and he shows how it may be used. Therefore this objection fails. So, in like manner, does the next, viz., that the renovation of the hydrated oxide of ii'on by exposure to the air, being well known previously, was not the subject of a patent — we deal with that in the same way. The sixth objection, that the title as amended by disclaimer is not such as to include the invention of the plaintiff, appears to me to be an imfounded one, and was not much pressed in the argument. Hills v. Evans. [A.D. 1861—62. 31 L. J., Ch. 457 ; 4 De G., F. & J. 288.] Evidence of Prior Puhlication — Sufficiency of Specification — Account or AUernative Action for Damages. Suit to restrain from infringing the same patent. Defendant relied on the patents of CroU and Laming before refeiTed to, and put in the specification of a patent of 12th June, 1806, No. 2,941, to E. Heard, for obtaining inflammable gas from pit coal. In- junction granted with costs. 31 L. J. Per Lord Westbury, L.C. — It is undoubtedly true as a pro- position of law that the construction of a specification, as the construction of all other written instruments, belongs to the Court ; but a specification of an invention contains most generally, if not alwaj's, some technical terms, some phi-ases of art, some processes, and requires generally the aid of the light derived from what are called sm-rounding circumstances. It is therefore an admitted rule of law that the explanation of the words or technical terms of art, the phrases used in commerce, and the proofs and results of the processes which are described (and in a chemical patent the ascer- tainment of chemical equivalents) — that all these are matters of fact upon which evidence may be given, contradictory testimony may be adduced, and upon which imdoubtedly it is the province and the right of a jury to decide. His Lordship then commented on the judgment of Lord Cr ax- worth, L.C, in Bush v. Fox (5 H. L. Ca. 707), and stated his conclusion, as borne out by the uniform practice at Nisi Prius, to be : — That although the construction of the specification clearly is matter of law, yet if there be two specifications to be compared in order to arrive at a question of fact, the right of cbawing the in- ference of fact from the comparison belongs to tlie jury, and is a Hills v. Evans. 249 question of fact and not a question of law. His Lordship eon- 31 L. J. tinned : — I was extremely desirous to ascertain in the com-se of the argument if any clear rule had heen laid down on the suhject of what shall he the nature of the antecedent publication which sliall be held sufficient to anticipate and to vitiate a subsequent patent on the ground of want of novelty. . . . The invention must be shown to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its fidl extent, will not prejudice a subsequent state- ment which is limited, accurate, and gives a specific rule of prac- tical application. The reason is manifest, because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the uses of mankind. It is the difference between the ore and the refined and piu'e metal which is extracted from it. . . . Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be a knowledge equal to that required to be given by a patent — viz., such a knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use. I have now to examine the general specifications, which, it is alleged, contain the plaintiff's invention. The first specification is that of Heard, and the patent was granted in the year 1806. The proposition of the patentee is that all oxides of iron possess an affinity for sulphiu'etted hydrogen ; he does not limit himself to " oxides of iron," for he says, " iron, manganese, zinc, copper, lead," &c. With regard to the greater number of these sub- stances, the proposition is clearly, from the evidence, untrue, and therefore there is here what I have denominated apparent generality, giving no specific knowledge, no practical rule of appli- cation, but fm-nishing suggestions which might give a direction to inquiry, from which inquiry a specific amount of practical infor- mation might possibly be elicited. That is not such information as will be sufficient to support a patent. It adds nothing to the real stock of practical knowledge of mankind, and ought not to derogate from the validity and the benefit of a subsequent in- vention. The next specification is that taken out by Mr. Civil in the year 1840. Mr. CroH says that the third part of liis invention consists 250 Hills v. Evans. .ill tlie application of black oxide of manganese to remove sul- phuretted hydrogen from coal-gas, and he describes a mode of restoring its purifying powers, by roasting it in an oven to expel the sulphm-. He proceeds to say that "the same effect may be produced by the application of the oxides of zinc and oxides of iron, and heated precisely in the way described." This, there- fore, is a proposition that " the oxides of iron," that is, " all the oxides of iron," may be applied in a manner which will admit of the same effect being produced. Now it is an admitted fact that that proposition is untrue ; it is a clear result, therefore, that the proposition woidd only mislead the individual who relied upon it. It requires further invention and discovery to modify and restrain it mthin the true limits of fact. I now come to the specification of Laming. The specification of Laming speaks of a particular agent in the purification of coal-gas — viz., chloride of calcium ; and it prescribes a mode of producing that purifying agent, which would leave a residuum in which woidd be found hydrated oxide of iron, the application of which is the patented invention of the plaintiff. With regard to this residuum all that Mr. Laming says, is — " In such cases the oxides or carbonates which result are useful for the purification, and need not be removed." His only proposition is that it is not detrimental to the use or agency of the chloride of calcium, but will rather assist and promote its operation. But that is a perfectly different thing from the discovery that the hydrated oxide of iron altogether superseded and rendered unnecessary the chloride of calcium. I cannot find in any one of these patents a clear, distinct, and definite indication of the admittedly beneficial discovery which was afterwards made by the plaintiff. The last subject of argument was, whether the plaintiff's specifi- cation was itself open to a similar objection, viz., in using words in a sense too general for the actual truth. The particidar words are in the plaintiff's specification, that he makes use of " hycbated or precipitated oxides," and it is said that " precipitated " is there opposed to " hydrated," and that there are some hydi-ated oxides that would not answer the pm-pose, and that therefore the plaintiff's specification is bad for too great generality, and for inacm-acy. . . . This objection was met in the Couii of Exchequer by treating the word " precipitated " as narrowing and correcting the generality of the word " hydi-ated." I prefer rather to rest upon the explanation, that if the word " hydrated " be taken by itself, and be considered as including more than " precipated oxides," it must still be confined Hills v. Evans. 251 to those hydrated oxides tliat are artificial, and there is no proof or suggestion that there is any known artificial hydrated oxide that will not answer the purpose. Upon every ground therefore I arrive at the conclusion that the plaintiff's patent must he held to have been conclusively established at law. I grant the injunction as prayed in the third paragraph of the prayer. Considering the case as falling altogether under the provisions of the Statute of 1852 (15 & 16 Vict. c. 83, s. 43), I direct the plaintiff's costs of the whole suit to be taxed as between solicitor and client, save that part of the bill which is founded on the agreement of November, 18G0, and except the costs of the application to the Lords Justices and the hearing before them, as to which I give no costs to either party. That will be the whole of the decree, unless the plaintiff prefers, instead of the account, to have liberty to bring an action at law for damages, which he may take in lieu of the account. If not, I direct the account as prayed. Hills v. The Liverpool Gas Company. [A.D. 1863. 9 Jur., N. S. 140 ; 32 L. J., Cli. 28.] Evidence of Infringement. Suit to restrain from infringing the same patent by the use of a certain natural product found in Ireland, and known as hog-ochre. It appeared that the substance in question contained a large pro- portion of native hydrated oxide of iron, and that, when applied to the purification of gas, it absorbed sulphuretted hydrogen, and could be revivified by the action of atmospheric air as described in plaintitE's specification. Wood, Y.C, granted an injunction, but the Lord Chancellor varied the order so as to restrain defendants from using bog-ochre in any other than its native or primitive state, and directed an account of all profits made by the user of such material in any other than its native state. Per Lord Westblry, L.C. — With many of the observations of ^ Jur. p. 14i. the Court of Exchequer in Hills v. London Gaslight Conipang (5 H. & N. 312), I cannot concur, but I do concur in the conclusion, that by the terms hydrated or precipitated oxides the plaintiff intends to denote such oxides only as were artificially prepared or obtained. But this is not the character of bog-ochi^e as it is pri- marily employed by the defendants. The ochre is used by the defendants as dug fi'om the bog, and even if it be a hydrated oxide of iron formed by precipitation, it is clear that it is a native, that is, a natm-ally formed oxide, and whilst used in that state must, by 252 Hills v. The Liverpool Gas Company. the very condition by whicli the plaintiff's patent was supported, he held not to he included in the plaintiff's specification. I cannot grant an injmiction to restrain the defendants from using hog-ochre in its natural state. The more material question still remains. The j)rincipal impurity from which it is desirable to cleanse the gas is sulphuretted hydrogen. . . . The plaintiff discovered that when the sulphm-et of iron is exposed to the atmosphere in such a manner as to cause the atmospheric air thoroughly to permeate and pervade the mass, the sulphur is driven off and precipitated, the iron is re- oxidised by taking up new oxygen from the air, and thus a new hydi'ated oxide is, by this application of a natural agent, artificially obtained. . . . This new oxide I hold to be an oxide artificially prepared and obtained, although it is the result of the natural properties of the air, because those properties are guided and directed to this end by human agency and design. ... I liold that whilst the defendants employ the hog-ochre in its natural state, they use a native oxide of iron, which, whether it be hydi-ated only, or hydrated and precipitated, is not within the plaintiff's patent, and no injunction can be granted against the use of it ; but when they use the ochre after it has been re-oxidised, they use a material which is within the plaintiff's patent, being an artificial hydi^ated oxide ; and this I restrain them from employing. HiNKS AND Son v. The Safety Lighting Company. [a.d. 1876. L. E., 4 Ch. D. 607; 46 L. J. Ch. 185.] Nuvelty of Invention — Sufficiency of Specification. Suit to restrain from infringing a patent of 28th Oct. 1865, No. 2,787, to James Ilinlis and Joseph Hinks^ for " improvements in lamps for burning paraffin oil and other volatile liquid hydro- carbons." The patent was for a so-called duplex lamp, and the specification stated : — " Our invention consists in the improvements hereinafter described in the burners of lamps for burning paraffin oil and other volatile licj^uid hydrocarbons, whereby two or more flat flames, or one circular, or nearly circular, flame may be produced by the use of two or more single flat wicks." It then described the burner by reference to drawings, wherein figures 1, 2, 3, 4, and 5 showed the duplex burner made up as follows : — (1) Two flat wicks in cases capable of being raised or lowered by a small pinion ; (2) a hood, called a cone or deflector, for concentrating a supply of air upon the burning wick. Two openings or slots were made in the top of this deflector, one corresponding to each wick, whereby two flat HiNKS AND k!50N V. SaFETY LIGHTING CoMPANY. 253 flames passed up tlu^ough tlie openings and gave tlie brilliant light of the lamp. A supply of air passed into the deflector through a perforated plate fonning the base thereof. Figures 6, 7, 8, 9, 10, and 11 showed burners similar to Argand burners, except that two flat wicks placed in curved Avick cases were substituted for the usual Argand wick and case, but none of these figures showed any opening in the outside case for the ad- mission of air to the flame, a blot which should have been removed by disclaimer. Claim : — Firstly, constructing the burners of lamps substantially in the manner hereinbefore described and illustrated in figures 1, 2, 3, 4, and 5 of the accompanying drawings— that is to say, the employment in the same burner of two or more flat or curved wick cases or holders, in which two or more flat wicks are placed so as to produce thereby two or more flat flames, or elliptical or nearly circular flames. Secondly, constructing the burners of the said lamps substantially in the manner hereinbefore described and illustrated in figures 6, 7, 8, 9, 10, and 11, of the accompanying drawings, whereby a circular flame is produced by the use of two single flat wicks. Defendants admitted the infringement, but alleged that the invention was not new, and that the specification was insufficient. It appeared that on 20th Sept. 1859, one Hahorsen obtained a patent in America, No. 25,506, for a lamp resembling that of plaintiff, with a double wick burner, a deflector casing, a perforated base for the acbnission of air, but with only one opening in the deflector for the flame to pass through. A volume of reports of the American commissioners of patents containing a drawing of JIaIrorscn''s lamp, together with a few words of reference, was de- posited in the Patent Office Library in London in 1861. It was also contended that the invention had been anticipated by a prior patent of one TT. Little (a.d. 1856, No. 912), who had con- structed a lamp for burning paraffin oil with a solid roimd mck enclosed in a tube, having a cover pierced by one round hole for the flame and with other openings for the supply of air. When two or more wicks were used, each wick was round, and its flame passed through a corresponding roimcl opening in the cover. Judgment for defendants, and bill dismissed with costs. Per Jessel, M.E. — I am anxious, as I believe every judge is 4 Ch. D. who knows anything of patent law, to support honest bond fide ^' inventors who have actually invented something novel and useful, and to prevent their patents from being overturned on mere 254 HiNKS AND Son v. Safety Lighting Company. teclmical objections, or on mere ca-\dllings with the language of the specification, so as to deprive the inventor of the benefit of his invention. This is sometimes called a " benevolent " mode of con- struction. Perhaps that is not the best term to use, but it may be described as construing a specification fairly, with a judicial anxiety to support a really useful invention, if it can be supported on a reasonable construction of the patent. Beyond that the "bene- volent " mode of construction does not go. It was never intended to make use of ambiguous expressions with a view of protecting that which was not intended to be protected by the patentee, and which has not been claimed to be so protected by him, whether or not it was an invention unknown to himself. It is for the patentee to tell the world that of which he claims a monopoly, to tell them, " You may do everything but this ; but this 3'ou may not do — this is my invention." With a view of getting this into a narrow compass, it has long been the practice of patent agents to insert in specifications the distinct claim of what they say is comprised in the patent, meaning that nothing else is com- prised, that everything else is thrown open to the public, or, to put it in other words, if a man has described in his specification a dozen new inventions of the most useful character, but has chosen to confine his claim to one, he has given to the public the other eleven ; and he has no right to be protected as regards any one of the other eleven, if he wishes to recall that gift which he has made by pub- lishing the specification. His Lordship then considered the novelty of the invention first claimed, and held that there had been an anticipation by Hakorsenh patent. But, in respect of the question of novelty, as affected by Little s patent, he held that plaintiffs' patent might be supported. 4 Ch. D. As to this, his Lordship observed : — On the one hand, it was said p- 6io. ^^^^ ^^^ never support a patent by substituting a round wick for a flat wick, as there is no invention in that. On the other hand, it was said, "Why not ? If it is a combination patent, the very essence of a combination patent is that it is a new combination of kno-^Ti parts, and, in fact, very few machines are now invented which contain any new part. . . . Where a slight alteration in a combination tm^ns that which was practically useless before into that which is very useful and very important, judges have con- sidered that, though the invention was small, yet the result was so great as fairly to be the subject of a patent ; and, as far as a rough test goes, I know of no better. Therefore, considering that Little's patent is said not to have HiNKS AND Son v. Safety Lighting Company. 255 been workable for any useful pur^wse, and that this is not only workable but has been worked to a great extent with a useful result, on this point my opinion is in favour of the plaintiffs, that there is sufficient in the substitution of a flat wick for a solid round wick to support the patent. Then a second point was taken as to the second burner, which was a very small affair indeed, and that was this : — The second bm-ner was badly drawn ; the drawing did not show where the air was to get in. Then comes the question, " How far am I at liberty to correct the specification? The specification does not tell me where the opening is to let in the air." It is said that although there is no opening in the drawing, yet a workman could correct the drawing by putting in the opening. I am not prepared to say that when you put yom' specification into the hands of a skilled workman he is to exercise invention to make a lamp useful ; that he is to correct it without being told anything to correct it by. This assumption was made, no dovibt, by the very eminent scientific gentleman who gave evidence, Mr. Bramwell. Of course he could do it; he would know how to do it, and where to do it, and everything else. The other scientific gentlemen did not deny that it was possible, but I take it that is not the meaning of the patent laws. When you have such a little trumpery invention as the second, the whole merit of which is very small indeed, if you are to tell people how to do things better, you must tell them in a proper way, without the exercise of any invention or much trouble ; and, in my opinion, this is not within the rule, and is badly specified. His Lordship then said that the judgment on the issues of novelty and sufficiency of specification would be for the defendants. Hoffman v. Postill. [A.D. 1869. L. E., 4 Ch. 673.] Practice as to Interrogatories in Patent Suits, Suit to restrain from infringing a patent for a brick-kiln. De- fendant filed interrogatories referring to certain specifications of prior patents — e.g., "Are not those sliding doors colourable varia- tions of, or a mechanical equivalent for, the divisions or walls with openings (as referred to in a specification mentioned) between each compartment in the kiln ? " " Is there not, therefore, in this arrangement a continual reciprocal action of the kilns or oven ? " By the 11th interrogatory the plaintiffs were questioned as to pro- ceedings taken by them in Saxony for the infringement of their 256 IIOFFMAX V. POSTILL. patent. Bj the 12tli interrogatory they were required to set forth a certain correspondence relating to their patent. By the 14th interrogatory to set forth descriptive particulars of the alleged infringements. Plaintiffs denied the similarity of the improve- ments referred to, and declined to answer more fully, or to give fiu'ther particulars of infringement. Exceptions over-ruled by James, Y.C. Appeal to the Lords Justices, when the order was discharged, except so far as it over-ruled the exceptions relating to the 11th and 12th interrogatories. 4 Ch. Per Selwyn, L.J. — A certain latitude must always be allowed ^'' ^ ' ' in seeking discovery, and accordingly we have examined these ex- ceptions Avith reference to the general rule, that the person who is bomid to answer miist answer fully. The fallacy of the argument which has been addressed to us is apparent, because it depends mainly upon these two propositions: — First, that wherever there is a question relating to a matter of fact, and that c[uestion is so stated as to refer to any of the subject- matters of a specification, or other ^-ritten document, then the plaintiffs are not bound to answer. I think that is eiToneous, . . . The second proposition consists in this, that the discovery sought relates exclusively to the case made by the plaintiffs against the defendant in this suit. If it could be shown that it was not material to the case of the defendant, then, of course, that would be a good objection to the interrogatory. But, in truth, the case of the defendant is, that the plaintiffs' patent is invalid, and every- thing that is material to show that is part of the defendant's case, and he is entitled to discovery as to all the matters of fact which are or may be material to his case. Taking, for instance, one of the questions, " Are not those shding doors, &c." It is, in my judgment, a question of fact whether they are mechanical equivalents for the other contrivance which is there mentioned. That being so, I think the defendant was entitled to an answer to that question. I will take one other instance, " Is there not, therefore, in this arrangement, &c." It is quite true, that the word "therefore," as used in that sentence, does connect the question with what is mentioned in the specification, but it is, nevertheless, a question of fact, and a question which, in my judgment, the i^laintiffs are bound to answer. 4 Ch. Per G-iFFARD, L.J.— The defendant has a right to ask all ques- V-^^^- tions which are fairly calculated to show that the patent is not a good patent, or that what the plaintiffs allege to be an infringe- Hoffman v. Postill. 257 ment is not an infringement. It is almost impossible, where you have antecedent publications in a book, or antecedent patents whieli are alleged to destroy the novelty of the succeeding patent, whether it be in examining the parties by interrogatories or in examining witnesses, to avoid the necessity of referring to those documents, and asking a variety of questions respecting them, some of which are more proper for the Court, but many of which are absolutely essential in order to enable the Court to come to a proper conclusion as to the legal effect of the different specifications. Holland v. Fox. [a.d. 1854. 1 C. L. E. 440 ; 3 E. & B. 977 ; 23 L. J., Q. B. 211, 357.] Particulars of Ohjedions — Account. Case for the infringement of a patent for improvements in manufacturing umbrellas. The particulars of objections delivered pursuant to stat. 15 & 1(3 i C. L. R. Yict. c. 83, s. 41, stated prior user of the invention "at Sheffield, Birmingham, and London.''^ E-ule nisi for further and better particulars made absolute by the Court of Uueen's Bench. (Lord Campbell, C.J., Coleridge, Erie, Crompton, JJ.) Per Lord Campbell, C.J. — We are all of opinion that this par- ticular is illusory. The names of persons are not required to be stated by the Act, but the manufactory or place where the invention has been used may be described by name or other description. The cause proceeded to trial, and plaintiff had a verdict with 3 E. & B. 40s. damages. Plaintiff then obtained a rule absolute in the first P" ' instance ordering defendant to account for all articles made in breach of the patent before and since the commencement of the action (see stat. 15 & 16 Vict. c. 83, s. 42). Pule nisi to discharge the above rule. It appeared on the affidavits that after the issuing of the writ a negotiation took place between the parties respecting a licence, and that in Jult/, 1853, defendant had notice to account for profits, but that he continued to use the invention and to make profits thereby until two days after the trial — Adz., 17th Dec. 1853, when he ceased the manufac- ture. Rule, so far as it ordered an account of profits, accruing after notice as above, made absolute by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, Erie, Crompton, JJ.) Per Lord Campbell, C.J. — All the loss which the plaintiff sus- 3 E. & B. tained prior to the commencement of the action, and all the loss for ^' which damages could have been given to him by the jmy, must be 258 Holland v. Fox. considered to be compensated by tlie sum, bowever small, wbicb tbey awarded to bim. Objection is made tbat we bave now no jurisdiction to order any aecoimt, tbe words of stat. 15 & 16 Yict. c. 83, s. 42, being, "It sball be lawful for tbe Com-t in wbicb sucb action is pending," and tbe defendant arguing tbat tbis action is no longer pending in tbis Court. But we tbink tbe action is pending till final judgment bas been pronoimced and entered up. . . . Tbe defendant baving ad- mitted tbat, after being cbarged witb tbe infringement of tbe plaintiff's patent, and after notice tbat be would be beld liable to account for tbe profits, be did make large profits by continuing to infringe tbe plaintiff's patent ; and as no part of sucb profits could bave been awarded by way of damages to tbe plaintiff, we tbink tbat tbe defendant may be considered as trustee of tbese profits for tbe plaintiff : and, as pai-t of our final judgment, we order tbat tbe defendant render an accoimt of tbese profits, and pay over tbe amount to tbe plaintiff. Holmes v. The London and Noeth- Western Railway Company. [a.d. 1852. 12 C. B. 831 ; Macroiy's P. C. 4 ; 22 L. J., C. P. 57.] Sufficiency of Specification — Novelty of Invention — The Specification must distinguish ivhat is Neiv. Case for tbe infringement of a patent of 28tb Jan. 1841, No. 8,818, to W. C. Harrison, for " an improved turning-table for railway purposes." Pleas: 1. Not guilty. 3. Tbat tbe invention was not new. 4. Tbat tbe specification was insufficient. Issue. Tbe patent was for a turn-table, constructed so tbat tbe weigbt of tbe load bore upon a central pin, instead of being supported by rollers at tbe edge of tbe table. Previously it bad been tbe practice to supj)ort tbe platform on a set of friction rollers placed near tbe peripbery, and tbere was a central pin, not bearing any part of tbe weigbt, but merely acting as a guide to keep tbe structure in its place. Tbe object of Harrison's invention was to diminisb tbe resistance of friction. Tbe platform was a rigid trussed table, and its wbole weigbt was tbrown upon a central pivot. Tbere was (1) an uj)rigbt post resembling a crane post and terminating in a pivot wbicb supported tbe table ; (2) a massive ring, called a roller case, encircHng tbe base of tbe post and carrying friction rollers ; (3) vertical suspending rods to attacb tbe roller case to tbe table ; (4) oblique struts or support arms carried from tbe ling to tbo outer edge of tbe table. Tbe specification Holmes v. London and North-Western Rail. Co. 259 described the wliole apparatus as constituting the invention, and stated that the oblique arms would transfer all the stress from the outer side of the plate through the arms on to the suspending rods, and bring the weight directly on to the top of the post, the effect being that the table would move very much more lightly and easily than with the rollers roimd the circle in the ordinary manner. Claim : " The improved turning-table hereinbefore de- scribed." At the trial, the defendants put in evidence the specification of a patent of 18th Dec. 1840, No. 8,745, to E. R. Handcock, which related to a turn-table pivoted on a central post. In this construction (1) a coned pivot threw the weight of the table upon an upright central post ; (2) a cylindrical shell or jacket encircled the post, and rotated on loose friction collars; (3) oblique stay bars were carried from the bottom of the jacket to points near the periphery of the table. The specification stated that the effect of these stay bars was to give a general support and stability to the platform. The patentee had, however, failed to see the importance of connecting the cylindrical jacket rigidly with the plate, and there was consequently no equivalent for the vertical suspending rods, and nothing analogous to a trussed beam. Jervis, C. J., dii-ected the jury : — I think you will agree with me that the pivot is old ; the radiating arms are old ; the roller case is the same as the bottom of the jacket m Ilandcock'' s tiu-n-table ; that the rollers are the same as the collars, or equivalent to them ; but that the suspending rods are new and useful, and that upon the evidence they are useful in equalising the pressm^e ; and therefore the combination of three old things and one new one. A, B, C, and D, forms a new quality E, therefore there will be a novelty. Verdict for plaintiff. Leave reserved. Eule nisi to enter a verdict for defendants on the first and fourth issues made absolute as to the fourth issue by the Court of Common Pleas. (Jervis, C.J., Maule, Williams, Talfom-d, JJ.) Duiing the argument on the sufficiency of the evidence of Mac. P. C. infringement, as to which no decision Avas arrived at, Maule, J., P* " said : — When a patent is for an improved implement of ordinary use, not for the manufactiu-e of a new substance, the question is whether the mere user of that implement would amount to an infringement. Suppose a patent for an improved carriage, and a gentleman buys a carriage of that improved construction, and drives it on the road, is he guilty of infringing the patent, when it tm-ns out that it was manufactured by a person who had not a license s2 260 Holmes v. London and North-Western Rail. Co. from the patentee ? Or, suppose a man di-aws a cork by a patent corkscrew, which he bought of some person who had no licence to manufactm-e corkscrews under the patent, is he infringing the patent ? It seems a different sort of thing. Or, suppose a man had a patent for a walking-stick, does a person buying such a walking-stick and walking with it, become guilty of a breach of the patent privilege ? 12 C. B. Fer Jervis, C.J. — The jury found that the post, the arms, and p. 8o3. eyer3-thing except the suspending rods was old. In order to make his specification good, either for an improvement of an old machine, or for a new combination, Harrison should have said: — "My principle is to suspend the revolving platform on a post, with braces, arms, and supports ; " and then going thi^ough Handcoch's patent and describing all that is old, he should have gone on to say — " To this I add suspending rods for the piu^pose of bringing the bearing on to the centre of the table." No one can read this specification without seeing that the patentee supposes the arms to be new, as well as the suspending rods. In short, that all is new except the table, the rails, and the catches, which, by means of the suspending rods, he converts into a new and improved suspended turn-table. That being so, he clearly does not, in my opinion, comply with the rule which requires the patentee distinctly to state what is new and what is old. In my judgment the specification is insufficient. 12 C. B. Per Maiile, J. — I am of the same opinion. All these parts are P" ^'^^^ described together without making any distinction between the one and the other ; all are described indiscriminately as comprising the invention. . . . The true meaning of the specification is that there is as much novelty in one part as in another. . . . No doubt Ilarrhon drew his specification without reference to Handcockh patent, and bond fide believing that the whole of what he was de- scribing was his own invention. Without looking out of the speci- fication, it appears to me to be manifest that the patentee claims as his invention the whole of what he is describing. And upon the evidence, and the finding of the jury thereon, it is equally plain that the whole was not his invention. HoLSTE V, Robertson. [A.D. 1876. L. K., 4 Ch. D. 9; 46 L. J., Cli. L] Expiration of Foreign Patent — Date of Grant — Practice in Patent Suits. Suit to restrain from infringing a patent for improvements in blast furnaces. It appeared that the patent was dated 17th Sept. HoLSTE V. Robertson. 261 1867, and was sealed on 17tli Dec. 1867 ; also that a foreign patent for the same invention had been taken out in Amtria on 13th Dec. 1867, and had expired in 1870. Defendant was not aware of this fact when the answer was put in, and he moved for leave to supplement his answer by raising the objection that the grant of the English patent was subsequent to that of the foreign patent, and that under the provisions of stat. 15 & 16 Vict. c. 83, s. 25, the English patent had expired in 1870. Jessel, M.R., refused the application with costs. Defendant appealed, and the Coui-t of Appeal (James, L.J., Baggallay, Bramwell, J J. A.), dismissed the appeal with costs. Per James, L.J. — I am of opinion that there is no ground for 4 Ch. D. this application. The words of the Act of Parliament are clear, ^" The grant of the patent takes efPect from the day on which it is dated. The 24th section says that when letters patent are issued as of any day prior to the day of the actual sealing, they shall have the same force and validity as if they had been sealed on the day as of which they are expressed to be sealed. Therefore, they must be held to have been granted on that day for all the purposes of the Act. HoNiBALL V. Bloomer. [A.D. 1854. 2 Webs. E. 199 ; 10 Ex. E. 538; 24 L. J., Ex. 11.] Novelty of Invention — Prior Public Use — Practice as to Certificate for Costs. Case for the infringement of a patent of 15th Aug. 1838, No. , 7,774, to IF. H. Porter (extended for six years), for "improve- ments in anchors." Plea : That the patentee was not the true and first inventor. Issue. The first paragraph of the particulars of objections was to the effect that the subject-matter of the patent had been made and sold by certain persons (therein named) at Liverpool, prior to the date of the patent. The specification stated : — " My invention relates to a mode of constructing the arms of an anchor, and applying them to the shank by means of an axis." The drawing showed the shank with two cheeks for receiving the arms, made of sufficient strength to hold a pin or axis, which was seciu-ed in situ by a split cotter. The end of the shank was marked a, the arms were marked d, the pin was e, and there were two horns or projections on the outside of each arm respectively marked /. The specification concluded by saying : — " I am aware that anchors have been made with arms capable of movement in the shank. I do not, therefore, claim the 262 HoNiBALL V. Bloomer. same generally." Claim : " The mode of constructing and com- bining the parts a, d, e,f, as above described." At the trial, one Logan was called, who deposed that in 1826 he had made an anchor identical in construction with Porter's anchor. That he sold the same for use in a steam- vessel called the William Euskisson, in the ordinary way of business, and that after ten years it was retm-ned to him by a certain steam-boat company. 2Webs.R. Marti>-, B., said :— " I think if that anchor of Mr. Logan's was P- -°^- sold in the regular way of business, although it tm^ned out a failure, as possibly it may have been, if it was sold in the regular way of trade or business, there is an end of your case, and this patent cannot be supported. " I think myself that if it was really an experiment, that if Mr. Logan had put this anchor, having invented or manufactiu^ed it, on board a steam-boat for the pm-pose of trying whether it would answer, and it did not answer, and then it was retm^ned on that ground, then I do not think that would interfere with the patent, but I do not imderstand that it was so. I imderstand that it was sold out and out, that it was sold and paid for, used a considerable time, and in all probability broken from the weakness of the toggle." Plaintiff nonsuited. The first particular in the notice of objections was thus proved, but defendant made no application to the judge for a certificate imder stat. 15 & 16 Vict. c. 83, s. 43. On taxation, the master allowed the costs of the witness called in support of the first objec- tion, as being part of the costs in the cause, but he refused to allow the costs of the remaining objections. Eule nisi for the master to review his taxation discharged by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, Piatt, BB.) During the argument Alderson, B., observed: — A case once occui-red before me, where I had, after the cause was over, to try a large number of issues for the mere pm-pose of costs. 10 Ex. R. Per Parke, B.— The 43rd section of this Act certainly causes P- ■^^2- considerable embarrassment, but it must be read according to the ordinary rules of construction, and according to the express words of the section, I think it perfectly clear, that the master cannot allow the costs of ihQ particulars without the judge's certificate. The enactment is express. . . . Where the case is brought to a conclusion without the verdict of the jury, it seems that the defendant, in order to obtain the costs of his particulars, must go on with evidence in support of them, so as to enable the judge to exercise his judgment upon the matter. ( 268 ) HORNBLOWER AND MaBERLY V. BOULTON AND WaTT (in error). [A.D. 1799. 8 T. E. 95; Day. P. C. 221.] Sufficiency of Bpecification. Case (being tlie sequel of the proceedings in Boulton and Watt v. Bull) brought by defendants in error, against plaintiffs in error, for infringement of James Watt's patent of 1769, No. 913. Plea : Not guilty. Issue. Yerdict for plaintiffs below, and judgment by the Court of Common Pleas. Error brought in the King's Bench. Judgment for defendants in error. Per Lord Kenyon, C.J. — The principal objection made to this 8 T. R. patent by the plaintiffs in error is, that it is a patent for a P' philosophical principle only, neither organized nor capable of being organized, and if the objection were well founded in fact it would be decisive; but I do not tliink it is so. No technical words are necessary to explain the subject of a patent ; as Lord Hardwicke said upon another occasion — There is no magic in words. The questions here are : — Whether, by looking at the patent, explained as it is by the specification, it does not appear to be a patent for a manuf actui^e ? and : Whether the specification is not sufficient to enable a mechanic to make the thing described ? The jury have not indeed answered those questions in the affirma- tive in terms, but they have impliedly done so by finding a general verdict for the plaintiffs below. By comparing the patent and the manufactm-e together, it evidently appears that the patentee claims a monopoly for an engine or machine, composed of material parts, which are to produce the effect described, and that the mode of producing this is so described as to enable mechanics to produce it. I have no doubt in saying that this is a patent for a manufac- ture, which I understand to be something made by the hands of man. HORTON V. MaBON. [A.D. 1862—63. 12 C. B., N. S. 437 ; 16 C. B., N. S. 141 ; 31 L. J., C. P. 255.] Buhject-matter of a Patent. Case for the infringement of a patent of 2nd Jan. 1851, No. 13,436, to J. Horton, for " improvements in the construction of gas-holders." Plea 3. That the invention was not a new manu- factiu'e. Issue. The patent related to a method of constructing the water cup, or hydraidic joint, which connects the several portions of a telescopic 264 HoRTON V. Mabon. gas-holder. Instead of forming tliis joint, or water trough, by riveting strips of phate iron to lengths of angle iron, the patentee employed lengths of rolled channel u'on which were cim'ed to the circidar form of the gas-holder. Claim 3 : " The mode herein shown and described of construct- ing the hydraulic cups or joints of gas-holders in which the top or bottom of the hydraulic joint or valve is formed of plates of iron made or bent into a cup shape, so as to admit of the joint being attached to the gas-holder without the necessity of employing angle iron and double sets of rivets." At the trial, it appeared that rolled channel iron was in common use before the date of the patent. Erle, C. J., directed the jui-y :— That the invention was not the subject-matter of a patent. Verdict for defendant. Leave reserved. Eule nisi to enter a verdict for plaintiff discharged by the Com-t of Common Pleas. (Erie, C.J., Willes, Byles, Keating, JJ.) 12 C. B. Per Erle, C.J.— This is in fact a claim for the application of ^' ^^^' double angle iron to the formation of hydraulic joints to telescopic gas-holders. Now, telescopic gas-holders were well known, hydraulic joints were well known, the double angle iron was also well known, and had been before applied to a great number of cognate purposes. In none of these was there any improvement. But it appears that those who had heretofore constructed telescopic gas-holders formed the hydraulic joints by riveting two pieces of angle iron to a plate which formed the top or bottom of the cup. It was perfectly apparent and palpable that double angle iron would answer the same pm-pose, and save two rows of rivets, and conse- quently much additional labom\ The whole claim of the patentee therefore amounts to this — he informs the manufacturers of gas- holders that by the use of an article well known in the iron trade much labour and expense may be spared. This clearly is not the subject of a patent. It is nothing more than the application of a laiown instrument to pm'poses analogous to those to which it had before been applied. This is not a claim for a new article, or for an improved article, but only for a cheaper way of using kno^n materials. 16 C. B. On appeal to the Court of Exchequer Chamber (Cockbum, C.J., ^'- ^^^- Crompton, Blackburn, Mellor, JJ., Martin, Channell, Pigott, BB.), judgment affirmed. iG C. B. Per CocKBURN, C.J. — We are all of opinion that the judgment P- ^^^- of the Court of Common Pleas ought to be affirmed. That which the plaintiff claims as part of his invention, is the substitution HoRTON V. Mabon. 265 of double angle iron for two pieces of single angle iron, in the formation of hydraulic cups or joints to telescopic gas-holders. Now, it was matter of general knowledge that the cups might be formed by riveting two pieces of single angle iron to a plate : and we agree with the Court of Common Pleas in thinking that the mere substitution of double angle iron — an article well known in the trade — is not an invention for which a patent can be granted. The Househill Company v. Neilson. [A.D. 1843. 1 Webs. E. 673 ; 9 CI. & F. 788.] Misdirection hy Judge as to imor Public User. Appeal to the House of Lords, from a judgment of the Coui't of Session in Scotland, disallowing a bill of exceptions tendered by appellants, who were defenders in the Coiu't below. The action was brought for the infringement of a Scotch patent for the application of the hot-air blast in smelting iron, granted to J. B. Neilson. At the trial, Lord Justice Clerk Hope directed the jury : — I state to you the law to be that you may obtain a patent for a mode of carrying a principle into effect ; and if you suggest and dis- cover, not only the principle , but suggest and invent how it may be applied to a practical result by mechanical contrivance and apparatus, and show that you are aware that no particular sort or modification, or form of the apparatus, is essential in order to obtain benefit from the principle ; then you may take yom- patent for the mode of carrying it into effect, and are not imder the necessity of describing and confining yourself to one form of apparatus. . . . You may generally claim the mode of carrying the principle into effect by mechanical contrivance, so that any sort of apparatus applied in the way stated will, more or less, pro- duce the benefit, and you are not tied down to any form. The principal contest was on Exception 11. In so far as the Lord Justice Clerk directed the jury, in point of law, that the proof of prior use of the patent invention (1) must be public, (2) must have been continued, not abandoned, (3) must have continued to the time when the patent was granted, not to the very exact period, but that it must have been known and used as a useful thing at the time. During the argument Lord Lyndhurst, L.C, observed: — If the iWebs. R. machine be published in a book distinctly and clearly described, ?• 'i^' "• corresponding with the description in the specification of the p. 710. 266 The Househill Company v. Neilson. patent, though it has never been actually worked, is not that an answer to the patent ? It is continually the practice on trials for patents to read out of printed books without reference to anything that has been done. And Lord Brougham said : — It must not be a foreign book, but published in England. Judgment reversed upon the eleventh exception, and affirmed upon the others. Venire de novo. No costs to either side. iWebs.E, Per Lord Lyndhurst, L.C. — I never heard it before questioned that the notorious public use of an invention before the granting of the letters patent, though it may have been discontinued, is sufficient to invalidate the letters patent. Per Lord Campbell. — When we come to the eleventh excep- tion, I most sincerely regret that we are bound to allow it. . . . To suppose there may have been a prior use of the invention, of the perfected invention, for which the letters patent are granted, and that such prior use, publicly known, will not vitiate the patent, ii it has been abandoned but a few weeks before the date of the patent, strikes us in this part of the country with astonishment. That certainly is not the law as we have ever understood it. HUDDART V. GrIMSHAW. [a.d. 1803. Day. P. C. 265 ; 1 Webs. E. 85.] Evidence of Infringement. Case for the infringement of a patent of 25th April, 1793, No. 1,952, to J. Hiiddart, for " a new mode of making great cables and other cordage so as to attain a greater degree of strength by a more equal distribution of the strain upon the yams." Plea : Not guilty. Issue. The patent related to a method of twisting yarns into a strand in such a manner that each separate yarn shoidd bear the same strain. Hitherto, it had been the practice to stretch a nimiber of yams side by side before twisting them into a strand, whereby some of the yams took one position and some another, those near the outside being in a state of tension while those in the inside were puckered up. The specification stated : — " The substance of this invention is the making of strands in which all the yarns shall be disposed in concentric eylindiical layers about a centre yarn. Each yarn is passed through a corresponding hole in a register plate. The holes are on the cu'cimiferences of concentric circles round a central hole, and the yarns are then passed through a cylindrical tube. The strand thus formed is drawn forward by a screwing motion through the tube." In this manner each yarn HuDDART V. Grimshaw. 267 was retained in tlie position determined by the register plate, and a strand was formed of a series of concentric layers under equal tension, each ready to bear its due share of any tensile strain. At the trial, Mr. J. liennie, the engineer, deposed that, upon experiment, a piece of the patent rope bore a load of seventeen and a quarter tons and broke all at once, whereas a piece of common rope of the same size bore only about eight and a half tons, and snapped on the outside first, and so on successively towards the centre ; he should have no difficulty in constructing the necessary machinery for making a rope upon Mr. Huddarfs plan by looking at the patent and specification. In order to prove the alleged infringement plaintiff produced a piece of rope made by defendant. Mr. Rennie dissected the piece of rope, and foimd the external yarn to be two inches longer than the strand, the second shorter than the first, the third half an inch shorter than the second, and expressed his belief that the rope in question had been made on Mr. Huddarfs method. Defendant called no witnesses. Lord Elleis^borough, C.J., dii-ected the jury : — There are com- iWebs. R. mon elementary materials to work with in machinery, but it is the ^' ' adoption of those materials to the execution of any particular purpose that constitutes the invention ; and if the application of them be new, if the combination in its natm*e be essentially new, if it be productive of a new end, and beneficial to the public, it is that species of invention which, protected by the King's patent, ought to continue to the person the sole right of vending ; but if prior to the time of his obtaining a patent, any part of that which is the substance of the invention has been communicated to the public in the shape of a specification of any other patent, or is a part of the service of the country, so as to be a known thing, in that case he cannot claim the benefit of his patent. Mr. Rennie says, I know of no other mode than Mr. Huddarfs for producing this effect, and in proportion as that is deviated from, the strands will be worse ; this piece of rope (the defendant's) exhibits to the eye that regular gradation of length in the different shells which he should expect to find in Mr. Huddarfs invention. I shoidd state that this is certainly what is called prhnci facie evidence of its having been made by that method, when one sees it agree in all its qualities ; when it is produced with a rope actually made upon Mr. Huddart's plan, it is prima facie evidence, till the contrary is shown, that it was made upon his method, and there- fore, supposing this patent in full force and a valid one, it is reasonable, fair evidence, in the absence of contrary evidence, to 268 HuDDART V. Grimshaw. presume that it was made tliat way. . . . Upon cross-examina- tion, he says it would he a lucky hit if such a rope was made without the perforated plate ; it could not he done otherwise than by chance. Yerdict for plaintiff. Hull v. Bollard. [A.D. 1856. 1 H. & N. 134 ; 25 L. J., Ex. 304.] Evidence admissible under Particulars of Ohjections. Case for the infringement of a patent for a mill-stone. Plea 2. That the invention was not new. Issue. The particulars of ohjections (stat. 15 & 16 Yict. c. 83, s, 41) stated : — " That the improvements, &c., were not new, and that the same had been generally kno"«Ti, and piiblichj used in corn-mills, for many years previously." At the trial, the defendant tendered evidence of prior user at certain mills in Cheshire. Martin, B., received the evidence. Plaintiff nonsuited. Pule nisi for a new trial, on the ground that this evidence was inadmissible, discharged by the Court of Exchequer. (Pollock, C.B., Martin, B.) Diu-ing the argument Pollock, C.B., said : — " The substance of the particulars is that the invention has been used generally all over England in corn-mills for grinding corn. It cannot be said that it does not in some degree point out both place and manner, though if there had been an application for better particvdars, I should not have held it sufficient." 1 H. & N. Per Pollock, C.B. — We are of opinion that if the evidence is within the literal meaning of the words of the particulars, however general the statement, the evidence should be received at the trial. If the particulars are too general, it is the business of the parties who mean to object to them to bring the case before a judge at chambers, and procure an order for better particulars. It is true that the statute (15 & IG Vict. c. 83, s. 41) contains a proviso that the i:)Iace or places at which the invention is alleged to have been used shall be stated, but that proviso does not prevent particulars, not containing such statement, from being available, if not objected to on that ground before the trial. Hullett v. Hague. [A.D. 1831. 2 B. & Ad. 370 ; 9 L. J. (O. S.) K. B. 242.] Novelty of Invention. Case for the infringement of a patent of 27th Nov. 1828, No. p. 137. HuLLETT V. Hague. 269 5,718, to W. E. Kneller, for " improvements in evaporating sugar." Plea : Not guilty. Issue. The patent related to a method of evaporating water from a solution of sugar, by blowing air into the liquid. The specification showed an apparatus consisting of a large horizontal pipe, placed near the surface of the liquid, from which a number of small 1)lowing tubes radiated downwards in different directions. Two things were described as essential to the invention — 1. That a stream of air should issue from each blowing tube at the same time. 2. That the ends should be all in the same horizontal plane, whereby the fluid would exert the same pressure at each orifice. At the trial, defendant put in evidence the specification of a patent of 9th May, 1822, No. 4,674, to R. Knight and R. Kirk, for a similar aj)paratus, consisting of a set of perforated pipes, coiled or otherwise, shaped and accommodated to the nature and form of the vessel. The pipes might be replaced by a shallow metallic vessel, in the nature of a colander. Verdict for plaintiff. Rule nisi to enter a nonsuit refused by the Court of King's Bench. (Lord Tenterden, C.J., Littledale, Parke, Patteson, JJ.) Per Lord Tenterden, C.J. — I cannot forbear saying, that I 2 B. & Ad. think a great deal too much critical acumen has been applied to the ^' construction of patents, as if the object was to defeat, and not to sustain them. It is evident that the object of the two patents is the same. But the mode of effecting that object is different. Jones v. Pearce. [a.d. 1832. 2 Coop. Ch. Ca. 58; 1 Webs. E. 121, 122.] Evidence of Infrinyement — Unsuccessful Experiments — Practice in Patent Suits — Injunction — Account. Suit to restrain from infringing a patent of 11th Oct. 1826, No. 5,415, to T. Jones, for " improvements in wheels for carriages." Motion for ini unction ordered to stand over till after trial of 2 Coop, action at law. Account in the meantime. Per Shadwell, V.C. — Where an undertaking by the defendant to keep an account will afford the Cornet ample means of doing justice to the plaintiff, should his legal right be established, the Court rarely grants the interim injunction. Action at law, in pursuance of the above order. Plea : Not guilty. Issue. The patent related to the application of the suspension principle to the wheels of carriages, whereby the weight pressing on the axle 270 Jones v. Pearce. ■was hung from the upper part of the rim of the wheel, instead of being supported by the spokes from below in the usual manner. This was effected by constructing the spokes or rods without shoulders or mortisings at the part where they entered the box or nave, which allowed them, on the least pressure from the revolu- tion of the wheels, to slip upwards into the nave. C/aitn : " Substituting suspending rods, made of iron or other suitable metal, in lieu of spokes, by which suspending rods I hang the weight or load from that part of the wheel which happens to be ui^pennost, and prevent any support by the rods under the axle-tree." At the trial, it appeared that a pair of wheels on the suspension principle had been made for Mr. Stridt in 1814, and applied to a cart used for carrying stones on the public roads. As to the in- fi'ingement, plaintiff's foreman deposed that he saw at defendant's premises a pair of gig- wheels, made like plaintiff's, on the suspen- sion principle. iWebs. R. Patteson, J., directed the jury : — If this wheel, constructed by ^' ' Mr. Struts s order in 1814, was a wheel on the same principles, and in substance the same wheel as the other for which the plaintiff has taken out his patent, and that was used openly in public, so that everybody might see it, and the use had continued up to the time of taking out the patent,* undoubtedly that would be a ground to say that the plaintiff's invention was not new. But if you are of opinion that Mr. Strutfs invention was an experiment, that he found it did not answer, and ceased to use it altogether, and abandoned it as useless, and nobody else followed it up, and that the plaintiff's invention, which came afterwards, was his own invention, and remedied the defects of Mr. Strutfs wheel, then there is no reason for saying that the plaintiff's patent is not good. It seems the defendant has constructed a wheel on the suspension principle ; that alone would not make it an infringement of the plaintiff's patent, because the suspension principle might be applied in various ways ; but if you think it is applied in the same way, as according to the plaintiff's patent it is applied, then the want of two or three circumstances in the defendant's wheel which are con- tained in the plaintiff's specification would not prevent his recover- ing in this action for an infringement of his patent. It would be quite a different thing if it was shown that the defendant had his * See observations on this direction in Carpenter v. Smith, ante, p. 111. Jones v. Pearce. 271 communication long before with Mr. Sfndf, and had taken up Mr. Sfnitfs invention, and had constructed something like it without any knowledge of the plaintiff's patent, and had actually borrowed it from Mr. Strutfs, which was good for nothing ; it would be the hardest possible thing to say that this was an infringement of the plaintiff's patent. In reply to a question from the jury, the learned judge further said : — The tenns of the patent are, " without leave or licence, make, &c." Now, if he did actually make these wheels, his making them would be a sufficient infringement of the patent, unless he merely made them for his own amusement or as a model. Verdict for plaintiff. J0NE8 V. Berger. [a.d. 1843. 5 M. & G. 208 ; 1 Webs.E. 544; 12 L. J., C. P. 179.] Sufficiency of Notice of Ohjections, Case for the infringement of a patent for improvements in manu- facturing starch. The notice of objections, under stat. 5 & 6 Will. 4, c. 83, s. 5, alleged :— 1. Prior publication in the specifi- cations of two patents (which were fully described) , but went on to say, " and also by other persons in other books and writings prior to the date of the said letters patent of Jones.'' 3. That the invention had been used before the date of the patent, " by persons engaged in finishing lace at Nottingham and elsewhere." Eule nisi to amend the above particulars made absolute by the Court of Common Pleas. (Tindal, C.J., Erskine, Maule, Cresswell, JJ.) Per Tindal, C.J. — Perhaps, on the whole, it is a more fair com- pliance with the Act if the defendant does specify in his notice what are the books and writings on which he intends to rely. With reg-ard to the third objection, I think if the words, " and 5 M. & G. elsewhere," are struck out, that there will be no objection to its ^' " present form. This case is distinguishable from Fisho- v. Deuick (1 Webs. E. 264). . . . The patent in this case is for making starch generally, and the notice of objections does limit the alleged user to a particular class of persons, namely, those engaged in the trade of lace-making, in a particular place — Nottingham ; and it is quite as open to the plaintiff as it is to the defendant to make inquiries in that place among that class of persons. But as the words " and elsewhere " are too general, and might mislead the plaintiffs, I think they should be struck out. ( 272 ) Jones v. Lees. [A.D. 1856. 1 H. & N. 189 ; 26 L. J., Ex. 9.] FJeading — Demurrer — Covenard in a Licence. Covenant. The declcaration, after setting out so miicli of tlie recitals in tlie deed as stated that i^laintiff had invented certain improvements in sluhhing and roving machines, and had obtained a patent for the same, averred that plaintiff had granted a licence to defendant to use the invention, and that defendant had covenanted not to make or sell any sluhhing or roving machines -svithout the invention applied thereto. Plea (in substance) : That the invention was worthless, by reason whereof defendant was unable to use or vend the invention, or to use the licence, wherefore he made and vended machines without the invention applied. Demurrer, and joinder. Dm-ing the argument, it was contended that the covenant was void, as being in restraint of trade. Judgment for plaintiff by the Court of Exchequer. (Pollock, C.B., Alderson, Bramwell, BB.) 1 H. & N. Per Pollock, C.B.— Oui' judgment must be for the plaintiff. P- 193. ^^^ ^^^^ .^ substantially a plea to the damages only. Then, with respect to the declaration, it would be a very mischievous decision if we were to hold that a contract Avhich, it may be presumed, was reasonable at the time it was entered into, might be construed as a contract in restraint of trade, because something more useful than the subject-matter of it had been invented, or the habits of society have changed. JOEDAN V. MOOEE. [A.D. 1866. L. E., 1 C. P. 624 ; 35 L. J., C. P. 268.] Sulject-matter of a Patent. Case for the infringement of a patent of 2nd Nov. 1849, No. 12,824 (extended for seven years), to J. Jordan, for "certain im- provements in the construction of ships." Plea 4. That the invention was not a manufacture for which letters patent could by law be granted. Issue. The patent related to the construction of ships mth an iron frame and an external covering of wood. The specification stated : — " For carrying out my first improvement, a suitable ii'on frame is to be constructed, to which an external covering of timber planking for the sides, bilges, and bottoms will be fastened by means of rivets, bolts, or any suitable fastening. I make no claim to the shape of the iron used in the frame, as it may be constructed Jordan v. Moore. 273 of angle iron, T iron, flat or bar iron, or iron of any suitable shape. The vessel may have one or more thicknesses of timber planking. " For carrying out my sLrth improvement, to construct an iron frame adapted to an external covering of timber planking for the sides, bilges, and bottoms, and for a timber keel, timber stem, and timber stern-post, I make an iron plate form the keel-plate, laid the whole length of the bottom of the vessel, and continued up the stem and stern. To this plate I fasten the keel, stem, and stern post, made of timber, as described (previously) . Across the keel- plate iron ribs are to be fastened, and floorings of iron are to be fastened to the ii'on ribs. On the top of the flooring I place the keelson, made with plate and angle iron, in the form of an inverted arch, to keep the ends of the vessel from drooping." The cbawings attached to the specification showed the construction of the frame- work, as covered with timber planking, described imder the sixth head. Claims: 1. " The construction of ships with an iron frame, com- bined with an external covering of timber planldng for the sid-es, bilges, and bottoms. 6. The construction of iron frames for ships adapted to an external covering of timber planking for the sides, bilges, and bottoms as described." At the trial it appeared that before the date of the patent the construction of ships with a combination of wood and iron was well known ; that frames partly of iron and partly of wood had been coated with iron ; and that iron coating had been placed on iron frames. Several specifications of prior patents were put in. Byles, J., left it to the jury to say whether at any time before the date of Jordan's patent any ship had been constructed with a complete iron frame, and an external coating of timber planking for the sides, bilges, and bottoms. Yerdict for plaintiff. Leave reserved. Eule nisi to enter a verdict for defendant, on the ground that the invention comprised under the first claim was not the subject- matter of a patent, made absolute by the Coiui of Common Pleas. (Erie, C.J., Willes, Byles, Keating, JJ.) Per Byles, J.— It was contended by the counsel for the defen- i C. P. dant that the expression, " iron frame," in the first claim, was not ^■ confined to an iron frame such as that specified in the sixth clami, but comprehended whatever might, according to the ordinary use of language, be called "an iron frame" for a ship. And on a careful consideration of the specification, we are of that opinion. G. T 274 Jordan v. Moore. . . . The first claim is, according to oiir construction, a claim for planking with timber any iron frame of a ship. Then arises the main question in the cause — iron and wood being both of them materials long used for the construction of the frame and coating of vessels — can the application of wooden planking to the iron fi-ame of a vessel (without any peculiarity in the nature of that planking) be the subject of a j)atent. "We think it cannot. It is not only the substitution of one well-known and analogous material for another, that is, wood for iron, to effect the same pio"- pose on an ii-on vessel, but it is the application of the same old invention — viz., planking with timber, which was formerly done on a wooden frame — to an analogous purpose, or rather the same pur- pose on an iron frame. In this view of the case the recent decision of the House of Lords in Harivood v. Great Northern Raihcay Com- pany (11 H. L. Ca. 654) appears to us to be in point, and decisive for the defendant. JuPE V. Pratt. [A.D. 1837. 1 Webs. E. 145.] Construction of Claim. Case for the infringement of a patent of 11th March, 1835, No. 6,788, to R. Jupe, for " an improved expanding table." Plea 3. Setting out the specification, and averring that it was insufficient. Issue. The patent related to the construction of an expanding table, made in segments, which opened out by diverging from one common centre, the intermediate space being filled up by the insertion of additional pieces or leaves. The specification contained twenty- three drawings, illustrating various methods of subdividing tables, and of moving the segments in grooved guides, which radiated from a centre ; and concluded by stating : — " I do not claim the various parts of the table separately ; nor do I confine myself to the precise manner of moving the sections of the surface of the table. But I declare that my invention consists in constructing the same so that the sections of which the unexpanded table is composed may diverge from a common centre, and the table be enlarged by inserting leaves in the openings caused by the divergence as herein described." At the trial, defendant called no witnesses, but it appeared that before the date of the patent, one Oillow had invented an expanding telescopic table which opened out in one line, the intermediate space being filled by leaves. The alleged infringement consisted in JuPE V. Pratt. 275 dividing a table into four parts, and applying GiUoiv's construction for expanding it. Verdict for plaintiff. Rule nisi for a new trial made absolute by tlie Court of Ex- chequer. (Lord Abinger, C.B., Bolland, Alderson, BB.) During the argument the case of Crosslei/Y. Bcrerle// was reierred iWets.R. to, the patent being for the first form of water meter used in measuring the supply of gas to private houses, when ALDERSoisr, B., said : — There never was a more instructive case than that ; I remember very well the argument put by the Lord Chief Baron, who led that case for the plaintiff, and succeeded. There never were two things to the eye more different than the plaintiff's invention and what the defendant had done in contravention of the patent right. The plaintiff's invention was different in form — different in construction ; it agreed only in one thing, and that was, by moving in the water, a certain point was made to open, either before or after, so as to shut up another, and the gas was made to pass through this opening; passing through it, it was made to revolve it (the wheel) ; the scientific men, all of them, said, the moment a practical scientific man has got that principle in his head he can multiply without end the forms in which that principle may be made to operate. The difficulty which will press on you is this : You cannot take out a patent for a principle. You may take out a patent for a principle coupled with a mode of carrying the principle into effect, provided you have not only discovered the principle, but invented some mode of carrying it into effect. But then you must start with having invented some mode of carrying • the principle into effect ; if you have done that, then you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as a piracy of yoiu' original invention. But then the difficulty that will press on you here is, that on the evidence there does not appear to have been any mode of carrying the principle into effect at all invented ■ by you. And, referring to the difficulty in the case of Watts' patent, his Lordship said : — It all arose upon the question whether the prin- ciple is not a new manufacture. The moment it was given out in the shape of a steam-engine, the Court held it was a new manufacture. I should entertain great doubt whether anything more is claimed here than an expanded table, and whether the contrivance is any part of the invention. t2 ( 276 ) Kay v. Marshall. [a.d. 1836—41. 1 Mvl. & Cr. 373 ; 2 Webs, E. 36 ; 1 Beav. 535; 5 Bing. N. C. 492 ; 8 L. J., C. P. 261 ; 8 CL & F. 245.] Practice in Patent Suits— Demurrer — Subject-matter of a Patent. Suit to restrain from infringing a patent of 26th Jult/, 1825, No. 5,226, to J. Kay, for " new and improved macliinery for preparing and spinning flax," &c. The patent related to a process of macerating flax and spinning it at a short reach when in a wet state. The specification, however, stated : — " My invention consists in new machinery for macerating flax, and in improved machinery for spinning the same." The drawing showed a set of cans, perforated for the admission of water, and placed in a trough of water before an ordinary flax- spinning frame. These cans were filled with rovings of flax, which were left to soak for several hours, and the wet sliver was then led between ordinary retaining and drawing rollers before being spun. The specification stating : — " I place the drawing rollers only two and a half inches from the retaining rollers, and this constitutes the principal improvement in the said spinning machinery." Claim : " What I claim as my invention in respect of new machinery for preparing flax are the macerating vessels and the trough of water ; and in respect of improved machinery for spinning flax, I claim the placing of the retaining and drawing rollers nearer to each other than they have ever before been placed, say, within two and a half inches from each other, for the purpose aforesaid." The bill stated the grant of the patent, and that plaintiff had duly enrolled a specification wherein he had described and ascer- tained the nature of his invention. Demurrer for want of equity. Shadw^ell, V.C, ordered the demurrer to stand over, with liberty to plaintiff to bring an action. On appeal to the Lord Chancellor, the order was discharged, and the demurrer oveiTuled. 2Webs.Pt. Per Lord Cottenham, L.C. — Upon the face of the bill the plaintiff alleges that he did by his specification do all that his patent required him to do. What follows is merely the claim, not intended to be any description of the means by which the invention is to be performed, but introduced for the security of the patentee, that he may not be supposed to claim more than he can support as an invention. It is introduced (particularly in the case of a patent for an improvement) lest the patentee should have inadvertently described something which is not new, in order to render his de- scription of the improvement intelligible. The claim is not intended to aid the description, but to ascertain the extent of what is claimed p. 39. Kay v. Marshall. 277 as new. It is not to be looked to as the means of making a macliine according to the patentee's improvements. If, therefore, the speci- fication as containing the description be sufficiently precise, it cannot be of any consequence that expressions are used in the claim which would be too general if they professed to be part of the description. Feigned issue at law in pursuance of the order of the Court. Yerdict for plaintiff, with an endorsement on the posfea to the effect that, before the patent, flax, hemp, and other fibrous substances were spun with machines with slides whereby the reach was varied according to the length of staple or fibre. That in cotton spinning the reach varied from seven-eighths of an inch to an inch and a quarter, in flax spinning from four to nine inches, and in worsted from five to fourteen inches. That before the patent it was not known that flax could be spun by maceration at two and a half inches. On application, Lord Langdale, M.K., stated a case for the opinion of the Coiu-t of Common Pleas, who (Tindal, C. J., Vaughan, Bosanquet, Erskine, JJ.) certified that plaintiff's patent was not valid in law. Per Tindal, CJ.— The patentee, in describing the new and 2Webs. improved machinery for spinning which constitutes one part of his patent, informs the public that he places the drawing rollers only two and a half inches from the retaining rollers, and that this constitutes the principal improvement in the said spinning machinery. Now, whether a patent can by law be taken out for placing the retaining rollers and the drawing rollers of a spinning machine (which machine was itself known and in use before), within two inches and a half of each other, imder the circumstances stated in the case, is the real question between the parties ; and we think it cannot. . , . The application of a reach of two and a half inches to the spinning of flax when in a state of maceration, by which the fibre of flax will not hold together beyond that distance, does not appear to us to be any new invention or discovery, but is merely the appli- cation of a piece of machinery, already known and in use, to the new macerated state of flax. . . . And if a patent taken out for that object, separately would be invalid, so also a patent taken out for an invention consisting of two distinct parts, one of which is the precise object, would be void also. ... If a part of what is claimed is not properly the subject of a patent, or is not new, the whole must be void. The case now came on to be heard on fm-ther directions, when R. 278 Kay v. Marshall. tlie bill Avas dismissed with costs. On appeal to the House of Lords, judgment affirmed with costs. 2 Webs. E. Per Lord Cottenham, L.C. — All the variation which the plain- ^" * tiff introduced into the ordinary spinning machine, which he claims as his invention, is fixing the rollers at two and a half inches dis- tance from each other. It is not, as was argued at the bar, one invention, \iz., the macerating of flax, and using flax so macerated with a particular machine. . . . Another mode has been adopted of macerating the flax. If the patent be good so far as the spinning machine is concerned, that is to say, if the plaintiff has a right to tell the defendants and all the rest of the world that they shall not use the common spinning machine with rollers at two and a half inches distance, then the existence of the patent deprives the defendants and all the rest of the world of the right of using the ordinary spinning machine in the form in which they had a right to use it before the patent was granted. That is not the object of the patent: if the plaintiff has discovered any means of using the machine^which the world had not known before, the benefit of that he has a right to secm-e to himself by means of a patent ; but if this mode of using the spinning machine was known before — and the endorsement upon the i)ostea states that it was known before — then the plaintiff cannot deprive others of having the benefit of that which they enjoyed before. My Lords, the endorsement upon the jjostea stating that the rollers had been used at a variety of distances, not precisely speci- fying two and a half inches, but stating that the distances had been made to vary according to the length of the fibre to be spun, appears to me to estabhsh a fact which of itself is conclusive against the plaintiff. Lang v. Gisborne. [A.D. 1862. 31 Beav. 133; 31 L. J., Ch. 769.] Evidence of prior Publication. Suit to restrain from infringing a patent for a self-registering target constructed in such a manner that an electric current should indicate the particular segment struck by the bullet. It appeared that four copies of a book by V. da MonceJ, published in France, and containing an accoimt of a like invention by one Be Brettes, had been sold in Bondoii before the date of the patent. One of these copies was pui-ehased for the library of the University of Cambridge, another had been sold to Professor Wheatstone. In- junction refused. Costs reserved. Lang v, Gisborne. 279 Per EoMiLLY, M.R. — I am of opinion that a publication takes 31 Beav. place when the inventor of any new discovery, either by himself or ?• ^^■^■ by his agents, makes a written description of it and prints it in a book and sends it to a bookseller's to be published in this coimtry. I am of opinion that it is not at all necessary to establish the fact that one volume of that book has been sold, for I think that as soon as an inventor informs the public of what his invention con- sists, and prints it in a book which he sends to a publisher to sell, from the moment that the book is exposed for sale in the book- seller's shop, there becomes, in point of law, a comi^lete publication of the invention. In my opinion, there is no difference between a foreign inventor and an English one, if, when the inventor is a foreigner, he publishes the book in a foreign language, and sends it over to a bookseller in this country for the purpose of being sold. I think that as soon as the work is offered for Seale in the public shop of a bookseller in this country, that becomes a publication of the inven- tion. . . . Here I have it proved that a public library in one of the large universities of England had actually bought the book. [His Honour then examined the evidence, and came to the con- clusion that De Brettes'' invention was identical with that of the plaintiff.] The real and only question in this cause is, whether the fact of F. du MonceVs book having been sent to this country and publicly exposed for sale in an ordinary bookseller's shop, and bought by several persons, and among others by a public library, amounts to a publication of the invention here ; because so long as it remained in France it was not a publication. I have already expressed my opinion that it was a publication of the invention. It follows that I cannot treat this as a valid patent. (See observations on this case im' Jessel, M.R., in Plimpton v. Malcolmson, L. R, 3 Ch. D. 561.) Lawes v. Pueser and Others. [a.d. 1856. 6 e. & b. 930; 26 l. j., q. b. 25.] Pleading — Demurrer — Consideration for a Licence. Action for money payable by defendants to plaintiff on accoimt of royalties under an agreement for the use of a certain patent. Plea: That the patent was void, and that defendants had a right to make and sell the articles without plaintiff's permission. DemuiTcr, and joinder. Judgment for plaintiff by the Cornet of Queen's Bench. (Lord Campbell, C.J., Coleridge, Wightman, Erie, JJ.) 280 Lawes v. Purser and Others. Ter Lord Campbell, C.J. — I am of opinion that the defendants, not demdng that they have used the invention under the agree- ment, cannot set up this defence. No fraud is alleged, no renunciation of the permission, warning the plaintiff that the defendants meant to claim to use the invention in their o"wti right, is averred. I think it would be contrary to all principle to hold this plea good. Per "WiGHTMAN, J. — It is clear that the agreement has been acted upon ; and the defence is that, the patent being invalid, there is, as it is said, no consideration ; but it seems to me that the defendants had, in fact, all that they bargained for. It may very well be that the discovery that the patent was invalid was only made at the time of the plea pleaded ; and it is clear to me that enjoyment by permission of the patentee, while the patent was supposed to be valid, is consideration. The point is very nearly the same as that in Taylor v. Hare (I B. & P. N. E. 260). J?er Erle, J. — It is my opinion that the defendants are bound by their promise, they having had the consideration they bar- gained for. Leavis and Another v. Davis. [a.d. 1829. 3 Car. & P. 502.] Subjpxt-matter of a Patent. Case for the infringement of a patent of 15th Jan. 1818, No. 4,196, to J. Lcicis, W. Leu-is and W. Davis, iov "improve- ments in shearing machines for shearing woollen and other cloths, the same being further improvements on a patent obtained by J. Leicis for an improved shearing machine, dated 27th Juli/, 1815." Plea : Not guilty. Issue. The patent related to a method of shearing cloth by a triangular steel cutting wire bent round a cylinder in the form of a spiral. The sj^ecification described the machine by reference to drawings, whereof one showed the cylinder and cutting wire adapted for shearing cloth from list to list. It also stated : — " A narrow strip of plush is fixed on the surface of the cylinder parallel to the cutting wire to answer the purpose of a bnish for raising up the wool which is to be shorn off the cloth ; or, instead of the plush, bristles may be inserted into the cylinder." There were flat springs and a steel bar for directing and pressing the cloth against the cutting edges. Claims: 1. "The application of the flat springs and bar for directing and pressing the cloth to be shorn against the cutting edges. 2. The application of the triangular steel -^-ire on the Lewis and Another v. Davis. 281 cylinder. 3. The application of a proper substance fixed on the cylinder to binish the surface of the cloth to be shorn. 4. The described method of shearing cloth from list to list by a rotatory cutter." At the trial, Lokd Tenterden, C.J., required the production of the previous patent of 1815. It appeared that the alleged infringe- ment consisted in making a machine with rotatory cutters for shearing from list to list, but that defendant had not infringed any of the first tlu-ee claims of the invention ; also that the old method of shearing from list to list was by machinery carrying shears. It fm^ther appeared that rotatory cutters for shearing lengthways, or from end to end, were not new at the date of the patent, and evidence was adduced to show that plaintiffs' improve- ments were usefid. Lord Tenteruex, C. J., dii^ected the jiuy : — It is not material whether a machine made under the patent of 1815 is useful or not, as it is shown that the plaintiffs' machine is highly useful. The case stands thus : it appears that a rotatory cutter to shear from end to end was known, and that cutting from list to list by means of shears was also kno\\Ti. However if, before the plaintiffs' patent, the cutting from list to list and the doing that by means of rotatory cutters were not combined, I am of opinion that this is such an invention by the plaintiffs as will entitle them to maintain the present action. Verdict for plaintiffs. In the ensuing term a rule for a new trial was moved for and refused. Lewis and Another v. Marling. [A.D. 1829. 4 Car. & P. 52, 57 ; 10 B. & C. 22 ; 1 Webs. E. 490 ; 8 L. J. (0. S.), K. B. 46.] Partial failure of Utility — Novelty of Invention. Case for the infringement of the same patent. Plea : Not guilty. Issue. At the trial, it appeared that when two or more cutting wires were fixed on the cylinder, the brush was not required and was not used. Also that, in 1811, a specification had been enrolled in America for a machine to shear cloth from list to list by rotatory cutters ; that a model of this machine was brought to England, and there ex- hibited to three or f om^ persons ; that workmen were emj^loyed to construct a machine from the American specification, but that no such machine was ever completed. Also that the manufacturer who p-^ p 282 Lewis and Another v. Marling. commenced to construct the American machine had become a pur- chaser of plaintiffs' machines. It was objected that the patent was void by reason of claiming the plush for raising the wool, which was useless. Lord Tenterden, C.J. over-ruled the objection. Yerdict for plaintiffs, with 200/. damages. 10 B. & C. E-ule for a new trial, on the grounds (1) that the brush was of no use ; (2) that shearing from list to list by rotatory cutters was not new, refused by the Court of King's Bench. (Lord Tenterden, CJ., Bayley, Parke, JJ.) 10 B. & c. Per Lord Tenterdex, C.J. — As to the objection on the ground that the application of a brush was claimed as part of the inven- tion, it does not appear that the patentee says the brush is an essential part of the machine, though he claims it as an invention. I agree that if the patentee mentioned that as an essential in- gredient in the patent article, which is not so, nor even useful, and whereby he misleads the public, his patent may be void ; but it would be very hard to say that this patent should be void because the plaintiffs claim to be the inventors of a certain part of the machine not described as essential, and which turns out not to be useful. Several of the cases already decided have borne hardly on patentees ; but no case has hitherto gone the length of deciding that such a claim renders a patent void, nor am I disposed to make such a precedent. I told the jiuy that if it could be shown that the plaintiffs had seen the model or specification, that might answer the claim of in- vention ; but there was no evidence of that kind, and I left it to them to say whether it had been in public use and operation before the granting of the patent. They found it had not, and I think there is no reason to find fault with their verdict. 10 B. & C. Ter Parke, J. — The patent is for several things, one of which P" ^'^ then supposed to be usefid is foimd out not to be so ; but there is no case deciding that a patent is, on that ground, void, though cases have gone the length of deciding that if a patent be granted for three things, and one of them is not new, it fails 'ui toto. The prerogative of the Crown as to granting patents was restrained by the Statute 21 Jac. I. c. 3, s. 6, to cases of grants "to the true and first inventors of manufactures, which others at the time of granting the patent shall not use." The condition, therefore, is, that the thing shall be new, not that it shall be useful ; and although the question of its utility has been sometimes left to a jury, I think the condition imposed by the statute has been complied with when Lewis and Another v. Marling. 283 it lias been proved to be new. . . . There was no evidence of the use of such a machine [as the plaintiffs'] before the grant of the patent, and there is no case in which a patentee has been deprived of the benefit of his invention because another also had invented it, unless he had also brought it into use. Lister and Donnisthorpe v. Leather. [a.d. 1858. 8 e. & b. 1004 ; 27 l. j., q. b. 295.] Evidence of Infringement — Protection of part of a neiv Combination — Sufficiency of Particulars of Objections. Case for the infringement of patents (each in part disclaimed) of 20th Marc/t, 1850, No. 13,009, to S. C. Lister and G. E. Donnis- thorpe, and of 2nd Feb. 1852, No. 13,950, to 8. C. Lister and T. Ambler, for " improvements in combing wool." Pleas (as to patent of 1850) : 1. Not guilty. 3. That plaintiffs were not the true and first inventors. 4. That the invention was not new. 5. That the specification was insufficient. And like pleas as to patent of 1852. Issue. The particulars of objections (see stat. 15 & 16 Yict. c. 83, s. 41) alleged prior publication of the invention by the specifications of divers patents, stating only the names of the patentees. On order for better particulars, defendant amended by further stating that the patents relied on had been granted " to plaintiffs and each of them respectively, between 1st Jan. 1840, and 20th March, 1850." At the trial Erle, J., ruled that this was not a sufficient compliance with the order, and refused to admit in evidence the specification of a patent granted to plaintiffs in 1849. The Court of Queen's Bench supported this ruling. The patents related to improvements on a patent of 25th Feb. 1846, No. 11,103, to J. Heibnann, for a new method of combing wool. According to ITcilmann's patent, the fleece of wool as fed into the combing machine was detached and broken asunder while being nipped or held either between bars or between a delivering roller and a guide plate. Each end of the portion was combed successively, the long and short fibres being separated ; the long ones being united into one sliver and the short ones into another, and so passed out ready for drawing and roving. The specification of the patent of 1850, No. 13,009, stated that one part of the invention consisted of improvements in arranging apparatus by which the mode of preparing wool by taking hold of, drawing out, detaching and strengthening by mechanical means, successive small quantities of fibrous material, as described hi a 284 Lister and Donnisthorpe v. Leather. p^e^do^ls patent of 1849 (No. 12,712), might be more advan- tageously carried into effect. It described the machine by refer- ence to drawings, and showed a series of gill combs for bringing forward the wool. A tuft was then drawn out by the nipping action of a bar upon an endless travelling apron and was cleaned by combing at one end. A porter brush detached the half-cleaned tuft and deposited it on a comb, which speedily became filled with wool ready to be drawn off and deposited in a cleaned state on a travelling apron, the noil and dirt being left on the opposite side of the comb. There was no separate claim. The specification of the patent of 1852 stated : " Fifthly, our invention relates to transferring wool from one set of carrying combs to another." It then showed an arrangement of link work, consisting of a short revolving crank and a reciprocating arm con- nected by a link, which was produced beyond its point of connection with the crank and carried a comb. By the revolution of the crank this comb swept to and fro through a given space, and lifted a tuft of wool from one fixed comb and deposited it upon another. Claim : — " The various improvements herein described in the pro- cesses of preparing and combing wool and other fibrous materials." At the trial, it appeared that plaintiffs had purchased Heilmann^s patent of 1846, and had amended the specifications (of 1850 and 1852) with the intention of disclaiming any portions of that inven- tion which might be contained therein. The alleged infringement of the patent of 1850 consisted in the transferring a half-cleaned tuft by means of a porter instrument on to a comb for the purpose of drawing it off and completing the combing according to plaintiffs' process. The alleged infringement of the patent of 1852 consisted in the use of a comb rotating on a cylinder which lashed into the feed dm-ing its ascent, detached a tuft, and deposited it on another comb by its descent dming each revolution. The patent of 1849, No. 12,712, was tendered in evidence under the notice of objections ; but Erle, J., refused to admit it, being of opinion that the amended notice before referred to was not a sufficient compliance with the order for better particulars. Verdict for plaintiffs. Eule nisi for a new trial, on twenty-one groimds of objection, discharged by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, AVightman, Erie, JJ.) 8 E. & B. Per Lord Campijell, C.J. — The object of the manufacture is to p- 1012. remove the noil, or dirt, and short fibres from wool, and to make Lister and Donnisthorpe v. Leather. 285 the long fibres into a sliver, from which the thread is spun ; and this object was originally effected by a lashing process, at first by hand, and then by a series of mechanisms improved by inventors ; then mth a nippnig process, instead of lashing invented by Heilmann in 1846 ; and his process was followed by improvements by other inventors down to the process claimed by the plaintiffs as their invention in 1850. ... In this process a tuft is detached from the lap of wool by nipping, and the tail half of the tuft is cleaned in detaching ; then this tuft is placed in such a position that by drawing off the head half is also cleaned and a good sliver is procm-ed. , . . The process combines five movements of the wool to be made in a certain order— viz., 1, carrying in ; 2, detaching ; 3, transferring ; 4, depositing ; 5, carrying out— each producing a certain change, and the total of the changes resulting in a product of a good sliver from uncombed wool ; and the mechanism combines all the subordinate mechanisms that make these movements in their order. The patent is for the whole combination of mechanism for performing the whole process as described in the specification. In respect of this invention {Heilmann'' s) two questions were 8 E. & B. raised, one of fact for the jury, that is : Was the plaintiffs' inven- P" tion, taken as a whole, substantially the same as Heilmann' s ? and one of law for the Com't, in respect of Heilmann's nipping process. With respect to the plaintiffs' invention being substantially the same as Heilmann's, the jmy saw the two machines, and thought them substantially different ; and we have also considered them, and do not think that the jury have come to a wrong conclusion. Moreover, if the two inventions are tested by their results, the evidence for the plaintiffs shows that their process would do more work in the same time than Heilniann's, in the ratio of 360 to 100 ; that the sliver produced by the plaintiffs was far superior, and the quantity of sliver from the same quantity of wool greater, and the cost of the production less. To this evidence of novelty should be added the remarkable price paid for the use of the plaintiffs' in- vention, which indicates a superiority, and therefore novelty. Then was there misdirection in respect of this issue ? The jury were told in the common form on this point that if the combina- tion, the subject of the patent, was new and useful, though each of the parts which entered into it were old, still the combination might be the subject of a valid patent. In this there was no mis- direction. The main point, both at the trial and on the argument, was, in 8 E-^& B. effect, a point of law upon an undisputed fact. . . . The substitution ^* 286 Lister and Donnisthorpe v. Leather. of nipping for lashing was an important part of the combination invented by Heilmann, and, as the plaintiffs took the nipping pro- cess, which was a subordinate combination included in and forming a new and material part of Heilmann' s whole combination, and used it in their combination, patented in 1850, and also in the im- provements thereon patented in 1851 and 1852, it was clear that those patents of the plaintiffs could not be used without an in- fringement of Hcihnnnn^s patent ; and this point was so ruled in the action of Heilmann v. Lister, in respect of the patent of 1851. It was proved on this trial to apply to each of the other patents ; and the defendant now asserts that each of these patents (viz., those of plaintiffs of 1851 and 1852) is void, contending — first, that a patent for a combination is, in effect, a claim that each part of that combination is new ; and, if any part claimed by a patent to be new is old, the whole patent is void. The answer is, that a patent for a combination is not a claim that each part thereof is new. On the contrary, each part may be old, and yet a new and useful combination of such known parts may be valid, as has often been decided. Even if the specification contained no disclaimer, it would be a question of construction whether the patent was void. But where there is either a disclaimer or an acknowledgment that a part is old, all ground for this objection is gone. The second argmnent was that, if a subsequent patent for a com- bination includes a part of an invention already protected by patent, it infringes on the property of another, and so is a violation of his right, and ought to be held illegal on account of his interest. The answer is, that the patent for an imj)rovement on an invention ah'eady the subject of a patent, if confined to the improvement, is not an infringement of the former patent. The use of the improve- ment with the former invention, during the existence of the former patent, without license, would be an infringement ; but with license, that also would be lawful, as is in constant experience. Indeed, the objection was carried to the extent that a patent for an in- fringement on a patent invention of the same patentee would be void ; but this rests only on the assumi^tion that the improvement cannot be distinguished from the invention on which it is made. The assertion that all patents for improvements on existing patents must be void, is obviously untenable. The third argument on this point, that a patent for an im- provement on a patent was void as contrary to policy, because it prolonged the monopoly granted by the first till the last expired, is already virtually answered. The monopoly in the second patent is Lister and Donnisthorpe v. Leather. 287 for the improvement only ; and the use of the former invention without the improvement is free at the expiration of the first patent. With respect to the issue on the infringement of the patent of 8 E- ^ -^• 1850, the evidence was that the defendant used Crnhtree''s machine in which a tuft was detached by a comb lashing into feed carried in by porcupine rollers, and was cleaned as to its tail half by carding surfaces. This part of the process was said to be sub- stantially diiferent from the part of the plaintiffs' process relating to the first half of the tuft. But with respect to the transferring the tuft, so half cleaned by a porter instrument, and placing it on a comb for carrying it out, the evidence for the plaintiffs was strong to show that this material part of the process used by the defendant was identically the same with that specified by the j^laintiffs in 1850 ; and that the combination of mechanism used by the defen- dant for performing this part of the process was substantially the same as that described in the plaintiffs' specification in 1850. The law was laid down that the plaintiffs' patent was for the whole combination, for the whole process as specified ; ■ but that the defendant might be guilty of an infringement with- out using that whole combination for that process. Objections have been raised to this part of the summing up in many shapes ; the substance of all being, that the taking of a part is either no infringement of a patent for a whole, or if it is, the patent for the whole is void unless every part is new. But all the points made for the defendant here were made and over-ruled in the three cases which decide that a patent for a whole combina- tion may be infringed by taking a part, provided it is a new and a material part, of the combination. His Lordship then proceeded to comment on the cases {Sellers v. Diekinson, 5 Ex. E.. 312 ; Neidon v. Grand Junction Raihcaij, 5 Ex. E. 331 ; Smith v. London and North-Western Raihcai/ Conipcoii/, 2 E. & B. 69) and con- tinued : — "We cite these cases at length because the principle in 8 E. & B. all is the same as that laid down to the jmy in the present case, ^' " ' and they establish that a valid patent for an entire combination for a process gives protection to each part thereof that is new and material for that process, without any express claim of particular parts, and notwithstanding that parts of the combination are old. With respect to the infringement of the patent of 1852 . . . the comb of the defendant rotated on a cylinder, and in ascending lashed into the feed and detached a tuft, and in descending deposited it on a carrying-out comb. The plaintiffs' comb per- 288 Lister and Donnisthorpe v. Leather. formed precisely tlie same action and witli the same effect. As to the last half of the process, namely, that relating to the head of the tuft, the variation of form was that the plaintiffs' comb did hy oscillation what the defendant's comb did by rotation with two semi- axial tiu^ns. The jury found for the infringement ; and we see no valid objection either to their finding or to the summing-up. Another ground for a new trial was the rejection of the office copy of the plaintiffs' specification in 1849 tendered by the defendant. After a summons, a judge made an order on defendant to give the names and dates of the specifications of the plaintiffs intended to be used, or that they should be excluded. The defendant then gave notice for all the plaintiffs' specifications between 1840 and 1850, and contended at the trial that this was a compliance with the order. The judge ruled that it was not. On this ruling we see no mistake of law. On appeal to the Court of Exchequer Chamber (Pollock, C.B., "Williams, Willes, J J., Martin, Bramwell, Watson, BB.), judgment affirmed. 8 E. & B. Fer Williams, J. — It was argued before us, on behalf of the ^' ■^°'^"^* appellant, that, if a patent be taken out for a combination of a, h, and c, it could not be infringed by using a combination of h and c only. We are of opinion that the answer to this inquiiy turns altogether upon what a, b, and c are, how they contribute to the object of the invention, and what relation they bear to each other. Cases may possibly be suggested where the use of b and c might not be an infringement of the patent ; but more easily cases may be put where the use of b and c woidd be an infringement of the patent. Whether in this case it was so or not would depend on the facts of the case, and may be more a question of fact for the jmy than of law for the Com-t of Appeal. But the facts are not before us, and we think the Court was right in deciding that the use of a subordinate part of the combination might be an infringe- ment of the patent if the part so used was new (by which we under- stand new in itself, or in its effect, not merely in its application) and material. And, referring to the patents of 1852 and 1853, his Lordship further said : — It may be that a combination is not distinctly and expressly claimed in either of these patents. But neither a claim nor a disclaimer is essential to a specification ; that which appears to be the invention, or part of it, will be protected, though there be no claim ; and those matters which manifestly form no part of the invention need not be disclaimed. ( 289 ) Lister v. Eastwood. [A.D. 1864. 9 L. T., N. S. 76(3.] Infringement hy User of part of a Comhinatlnii. Case for the infringement of two patents for combing wool, viz., of 20th March, 1850, No. 13,009, and of 24th Feb. 1851, No. 13,532. The cause was tried before Erie, C.J., when the jury found for the defendant. Rule for a new trial — on the ground of misdirection by the learned judge in telling the jury that, if defendant had taken a new and material part of plaintiff's combination, it was necessary that the part so taken should be used for precisely the same purposes in order to constitute it an infringement of the plaintiff's patent — refused by the Com-t of Common Pleas. Per Williams, J. — The Chief Justice proceeded to tell the jmy that in order to constitute an infringement the defendant must not only have taken a new and material part of the combination, but must also have applied it to a purpose similar or analogous to that which the plaintiff's combination was intended to effect. We are of opinion that this was a correct exposition of the law. It is true that in the judgment of the Coui't in Lister v. Leather (8 E. & B. 1004) this qualification of the doctrine was not superadded in express terms, but it appears to us to flow inevitably from the principles on which that doctrine was founded. LosH V. Hague. [a.d. 1838. 1 Webs. E. 200; 5 M. & W. 387.] Subject-matter of a Patent — Neiv use of an old thing — Certificate for Costs, Suit to restrain from infringing a patent (in part disclaimed) of 31st Aug. 1830, No. 5,989, to JF. Losh, for " improvements in the construction of wheels for cai'riages to he used on raihcays.^^ In- junction granted by Shadwell, Y.C, plaintiff undertaking to bring an action at law. Action accordingly. Plea 3. That plaintiff was not the true and first inventor. Issue. The specification stated : — " The spokes, the rims or felloes, and the tires of wheels constructed according to my improvements, are to be made wholly of malleable iron." Chiim 3 : " The making the wheels of carriages to be used on railways with wrought-iron spokes, having elbow bends at the outer ends to form feet, which ends are joined by welding either to a complete ring of wrought- iron, around which a hoop of wi"Ought-iron the is to be fixed, or G. u 290 LosH V. Hague. else to a hoop of wroiiglit-iron tire made of sufficient strength in manner hereinbefore described." At the trial, defendant put in e"\ddence the specification of a patent of 24th Sept. 1808, No. 3,169, to J". Pafon, for "improve- ments in the construction of wheels for carriages," which stated: — "1. Instead of making my wheels of wood I make the stocks or naves of wrought -iron. 2. In place of wood spokes I insert spokes made of wrought-ii-on. 5. I make the flli/s, or the external circle that the tire fixes on, of iron or other metal, and make them and the spokes of one solid piece, or fix the Jiih/s to the spokes with rivets, screws, and nuts." Lord Abiis-ger, C.B., directed the jiuy : — If a man claims by his patent a number of things, as being the inventor of them, whether they consist of improvements, or original inventions, and it turns out that some of them be not original and not improve- ments, his patent is void. The question you have to try on the originality of Losh's inven- tion is, not whether Pafon^s patent contains that perfect periphery which is required in this case, but whether wheels have been publicly made and sold on this principle ; if the wheels had been made and sold to any one individual, the public's not wanting them because there were no railways, their not being adapted to any particular use which at that time was open to the public to apply them to, makes no difference. It does appear to me that Mr. Losh claims a wrought-ii'on cii'cumference as part of the modus operandi of making his wheel. If you are of that opinion, if you think he substantially claims the wrought-iron periphery as part of his improvement, and you think that that wheel with the ^Tought-iron periphery has been made before, and made substantially in the same manner, the defendant wall be entitled to your verdict. The learned counsel has stated to you that Mr. Losh has taken out his patent to use his wheels on railways. He says the wheels made by Mr. Paion, or by the other workmen who were called as witnesses, were never applied to railways at all. That opens the question, whether or not a man who finds a wheel ready-made to his hand, and applies that wheel to a railway, shall get a patent for applying it to a railway. There is some nicety in considering that subject. iWebs.E. The learned judge then discussed the case of Hall v. Jarris P- 207. ^ Webs. Pat. Ca. 100), and continued : — That was the application of a new contrivance to the same purpose ; but it is a different LosH V. Hague. 291 thing when you take out a patent for applying a new contrivance to an old object, and applying an old contrivance to a new object — that is a very different thing. In the case the learned counsel put, he says, if a surgeon goes into a mercer's shop and sees the mercer cutting velvet or sillc with a pair of scissors with a knob to them, lie, seeing that, would have a right to take out a patent in order to apply the same scissors to cutting a sore, or a patient's skin. I do not quite agree with that law. I think if the sm^geon had gone to him and said, "I see how well your scissors cut," and he said, " I can apply them instead of a lancet by putting a knob at the end," that would be quite a different thing and he might get a patent for that ; but it would be a very extraordinary thing to say, that because all mankind have been accustomed to eat soup with a spoon, a man could take out a patent because he says you might eat peas with a spoon. The law on this subject is this : that you cannot have a patent for applying a well- known thing which might be applied to fifty thousand different purposes, for aj)plying it to an operation which is exactly analogous to what was done before. Suppose a man invents a pair of scissors to cut cloth with, if the scissors were never invented before, he could take out a patent for it. If another man found he could cut silk with them, why should he take out a patent for that ? I must own, therefore, that it strikes me, if you are of opinion that this wheel has been constructed by the persons who have been mentioned long before the plaintiff's patent, that although there were no railroads then to apply them to, and no demand for such wheels, yet the application of them to railroads afterwards by Mr. Losh will not give effect to his patent, if part of that which is claimed as a new improvement by him is in fact an old improve- ment, invented by other people, and used for other purposes. That is my opinion on the law, and on that I am bound to direct you substantially. Yerdict for defendant on third issue. After trial, the learned judge certified, under 5 & 6 Will. 4, c. 83, s. 3, as to the issues found, but not as to the objections. The master having in taxation allowed the defendant the general costs of the cause, and a rule being moved to show cause why he should not review his taxation. Parke, B., said :— The effect of the statute is to make the 5M.&W. T) 387 objections separate issues ; and the judge's certificate ought to have been as to the determination of each objection. As to the plaintiff's proportion of the costs of the objections, he may in strictness be entitled to six-sevenths of them, and you may take r2 292 LosH V. Hague. a rule to review the taxation to that extent if you think it worth while. It seems to me that the act makes no difference except as to the costs of co25}ang the objections; the costs as to the issues remain the same as before. No rule was taken. McCoKMicK V. Gray. [A.D. 1861. 7 H. & N. 25 ; 31 L. J., Ex. 42.] Evidence of Infringement — Novelty of Invention. Case for the infringement of a patent of 7th Dec. 1850, No. 13,398, to R. A. Broonuoi, for "improvements in agricultural machines" (a communication from abroad). Pleas : 1. Not guilty. 2. That plaintiff was not the true and first inventor. G. That the invention was not a new manufacture within the statute. Issue. The patent related to a form of reaping machine pro\dded with a gathering reel for bringing the straws into position, and having also holding fingers and a cutting blade. The specification stated :-^- " The fingers hold the straws from yielding with the lateral action of a cutting blade ; and for better accomplishing this object they are formed of a shape like a spear-head, which causes the straws to slide into the spaces between them, and, as the inclined edges of the roots of the fingers form an acute angle with the edge of the knife, the cutting through of the straws is sure to be effected by the reciprocating movement of the knife blade." A drawing attached to the specification showed the cutting blade, which was a strip of steel having serrated teeth formed either upon a straight or an indented edge. CI(ii)n : " The construction of reaping or grain cutting and gathering machines, according to the improvements described ; that is to say, the constructing and placing of holding fingers, cutting blades, and gathering reels respectively, as before described, and the embodiment of those parts as so constructed and placed, all or any of them in machines for reaping piu'poses, whether such machines are constructed in other respects as before described, or however else the same may in other respects be constructed." At the trial, it appeared that the alleged infringement consisted in making and selling knives or cutting blades similar to those of plaintiff. Defendant put in certain volimies of the Franklin In- stitute, containing the specifications of prior patents for imjDrovements in reaping machines. Verdict for plaintiff, subject to a case stated. The questions for the opinion of the Court were : — 1. Whether the publications referred to in the notice of objections entitled the defendant to a verdict on the second and sixth issues. 2. Whether McCoRMiCK V. Gray. 293 the making and selling by defendant of the knives or pieces of steel was an infringement of the patent. Judgment for defendant by the Court of Exchequer. (Pollock, C.B., Martin, Bramwell, Channell, BB.) Per Pollock, C.B.— I am of opinion that om- judgment ought 7 H. & N. to be for the defendant. I agree with the observation of my brother Martin that the plaintiff's invention is substantially an embodiment of the machine for cutting grain, mentioned in the 10th volume of the Fmnldin Institute, published in the year 1845. It seems to me that the description of that machine is sufi&cient to render the subject-matter of the plaintiff's patent not a new inven- tion ; at least, it shows that the j)laintiff ought not to have claimed each of the three materials— \az., the holding fingers, the cutting blades, and the gathering reels. ... The defendant having only maniifactm-ed a portion of the plaintiff's machine— viz., the cutting ^ade— it seems to me that he is not liable to an action for in- fringing the plaintiff's patent for a reaping machine. It may be that if a person made a reaping machine with a cutting blade like the plaintiff's, that would be an infringement of his patent ; but a blade is not, in my judgment, a machine, and the making it will do no harm to the plaintiff until it is adapted to a reaping machine. Per Martin, B.— If our judgment depended on the question 7 H. & N. whether the making by the defendant of the cutting blade was an P- ^ ' infringement of this patent, I should not be prepared at present to concm\ If a person invented a machine consisting of two parts, which formed the subject of a valid patent, and a manufacturer made one of those parts and put that into another machine of the same description, I am disposed to think that would be an infiinge- ment of the patent. However, it is not necessary to express an opinion on that point, because it is clear that this patent is void for want of novelty. Per Bramwell, B. — There is no difference between making a 7 H. & N. thing with one intent and another. If a man may do a thing, he P' may do it with whatever intent. If the blade is used in some machine not the same as that described in the patent, the patent is not infringed. I am satisfied that the defendant is entitled to a verdict on the plea of not guilty. Per Channell, B.— I do not understand that the patentee claims the invention of cutting blades simpUciter, but only when placed in a machine of this description. That being the construction which I put on the specification, it seems to me that there has been no infringement of the patent. ( 294 ) Macfarlane v. Price. [A.D. 1816. 1 stark. E. 199.] A Specification must distinguish the new from the old. Case for the infringement of a patent of 29tli Lee. 1808, No. 3,189, to M. 3[eGregor and W. 31acfarlane, for " improvements in umbrellas." Plea : Not guilty. Issue. The patent related to the construction of folding umbrellas, and the specification contained several dramngs, whereof one repre- sented the contrivance pirated, being a method of inserting a stretcher into a whalebone socket. There was no distinction di-aAvn as to what was new or what was old. Plaintiff nonsuited. Lord ELLENBORoroii, O.J. said : — The patentee in his specifi- cation ought to inform the person who consults it, what is new and what is old. He shoidd say, " My improvement consists in this," describing it by words if he can, or if not by reference to figures. But here the improvement is neither described in Avords nor by figures ; and it would not be in the wit of man, unless he were pre- viously acquainted mth the construction of the instrument, to say what was new and what was old. . . . Then it is said that the patentee may put in aid the figures ; but how can it be collected from the whole of these in what the improvement consists? A person ought to be warned by the specification against the use of the pai-ticular invention ; but it would exceed the wit of man to dis- cover from what he is warned in a case like this. Mackelcan V. Rennie. [A.D. 1862. 13 C. B., N. S. 52.] Sufficiency of Specification. Case for the infringement of a patent of 8th Scjyt. 1857, No. 2,338, to G. J. Mackelcan, for " improvements in floating docks." Plea : That the specification was insufficient. Issue. The patent related to the construction of a floating dock in- tended to be sunk sufficiently for the reception of a ship, and then floated so as to lift the ship out of the Avater. The pro^dsional specification stated: — "I construct a pontoon or vessel of iron framing sheeted over entirely with plate iron so as to form an air- tight chamber, subdivided into compartments." The complete speci- fication stated : — " Having in a provisional specification described the natm-e of my invention, I "svill now proceed particularly to describe the same;" and went on to explain the arrangement of Mackelcan v. Rennie. 295 parts and the method of employing the dock, but said nothing about its being constructed of iron. Claim : " The arrangement and combination of all the parts of my floating dock as represented and described." At the trial, it appeared that floating docks constructed of timber were well known before the patent, and that plaintiff's invention consisted in constructing such docks of iron. There being, however, no mention of iron in the complete specification, Erle, C.J., ruled that the provisional specification could not be prayed in aid for the purpose of supplying a defect in the complete specification, and plaintiff was nonsuited. Eule for a new trial, moved for by plaintiff in person, on the ground of misdirection, refused by the Com-t of Common Pleas. (Erie, C.J., Williams, Byles, Keating, JJ.) Plaintiff submitted that the drawings annexed to the specification sufflciently showed to the eye of an engineer that the structm-e was intended to be of iron, it being impossible that the geometrical lines employed • could have any other meaning. Per Williams, J. — The plaintiff in this case had obtained a 13 C. B. patent for " improvements in floating docks." In the com'se of the P* trial, it appeared that the construction of floating docks was not novel. The plaintiff then alleged that his invention did not consist in the construction of floating docks, but in the application of iron so as to form air-tight and water-tight chambers. The Lord Chief Justice was of opinion, that, inasmuch as there was no mention of iron in the complete specification, the plaintiff had not complied with the conditions of the letters patent by duly describing the nature of his invention, and in what manner it was to be carried into effect ; and accordingly he dii'ected a nonsuit to be entered. We are all of opinion that he was quite right in so doing. The complete specification, taken by itself, confessedly did not make any such claim as suggested. It has, however, been urged by the plaintiff, that, if it be read with the provisional specification, it will be found substantially to contain that claim. But even if the specification can be so read (which we do not admit) we are of opinion that it discloses no such claim, and therefore that the nonsuit was right. We think it right to add that it must not be inferred that the Court entertains an opinion that the alleged invention, even if it were appropriately claimed, could properly be the subject of letters patent. It is unnecessary on this occasion to give any opinion on that point, but we msh not to be supposed to sanction such a notion. ( 296 ) Macnamaea v. Hulse. [A.D. 1842. Car. & M. 471 ; 2 Webs. E. 128, n.] Novelty of Invention— Suffidency of Specification. Case for the infringement of a patent of 15tli March, 1837, No. 7,324, to R. Macnamara, for " improvements in paving roads." Pleas : 2. That plaintiff was not the true and first inventor. 4. That the specification was insufiicient. Issue. The specification stated : — " My invention consists in an improved method of cutting or forming stone or other suitable material, for paving roads;" and described the blocks by reference to figures, which showed that the upper sm^f ace of a block was rectangular, and that the sides were bevelled in two halves ; the angle of the bevel not being stated. Claim : " The mode of fonning stones to the figure shown for the pm^pose of producing better paving of roads as described." At the trial, defendant put in evidence the specification of a patent of 10th Nov. 1825, No. 5,287, to J. J. A. McCarthy, for pa\-ing blocks which had two bevels inwards and two bevels out- wards on the same side, one over the other, whereby it was apparent that plaintiff's block could be made from McCarthy' s block by cutting it into two halves along the angle of the bevel, and placing the pieces end to end. The alleged infringement consisted in the use of single bevelled blocks ; two of the defendant's blocks, when placed in juxtaposition, making one of the patented blocks. During the trial Lord Abinger, C.B., observed : — " Whatever objections the defendants may have given you notice of, they cannot go beyond their pleas. I apprehend that the statute does not make the notice of objections stand in the place of pleas. It will be for the jury to say whether any particular angle of the bevel is essential, or whether any angle whatever is useful or beneficial. If the specification leave it to experiment to determine what is the proper angle, it is not good ; but if any angle is a benefit, it will do." And his Lordship finally said:— "I think that the words ' any other suitable material ' include a wood pave- ment, though probably the plaintiff never contemplated it. . . . You can make the plaintiff's block by cutting McCarthy's block into two, and you can make the defendant's block by cutting McCarthy's block into fom-, and there is an end of the originality. I think so, and probably the juiy think so too." Verdict for defendant on the second issue : the jmy discharged as to the other issues. ( 297 ) Manton v. Parker. [A.D. 1814. Dav. P. C. 327; 1 Webs. R. 192, n.] Total failure of Utiliti/. Case for tlie infringement of a patent of 6th Ju///, 1803, No. 2,722, to J. Manton, for a "new invented hammer for the locks of fowling-pieces." Plea : Not guilty. Issue. The specification stated that the object of the invention was to let the air out of the barrel while ramming down the wad. For this purpose the part next the touch-hole was hollowed out so as to form a receiver and was perforated with a small hole ; also the seat of the hammer was grooved, " so as to let the air pass through but not the powder." The receiver thereby filled with powder, and the gun was less liable to hang fire. At the trial, it appeared, from experiments made in Com-t, that powder passed through the perforated lip as well as aii\ Plaintiff nonsuited. Thompson, C.B., said : — " The powder passes tlirough the same hole as the air. It seems to me, therefore, that the utility of this invention and the purpose of this patent wholly fail." Marsden v. The Saville Street Foundry and Engineering Company, Limited. [A.D. 1878. L. E., 3 Ex. D. 203.] Action to restrain the infringement of a patent granted to the plaintiif, Sarah Marsden. The statement of claim alleged that, prior to the grant of the patent, the plaintiff was in possession of the invention, the subject of the patent, which had been communi- cated to her (the plaintiff) by her late husband, II. R. Marsden of Leeds, and that the same was new as to the public use and exercise thereof within the Zhiited Kingdom. Demurrer and joinder, the objection being that the patent was void, the communication not having been made by a foreigner residing abroad. Pollock, B., allowed the demm-rer. Appeal to the Cowrt of Appeal (Jessel, M.R., Cotton, Thesiger, L.JJ.), when the judgment appealed from was affirmed. Per Jessel, M.P. — This is a mere exj)eriment. From the time 3 Ex. D. of the passing of the stat. 21 Jac. 1, c. 8, do^oi to the present P" ^°^' time, no one, so far as I know, has contended in a court of law, much less has any court of law allowed, the validity of such a con- tention as that a communication made in England by one British 298 Marsden v. The Saville Street Foundry Co. subject to another British subject can be patented by the receiver of the communication, so as to make the receiver the true and first inventor within the meaning of the patent laws. Mathers v. Green. [A.D. 1865. 34 Beav.lTO; L. E., 1 Cli. 29; 34 L. J., Ch. 298; 35L. J., Ch. 1.] Bights of Co-patentees. Bill for the purpose of enforcing plaintiff's rights in two patents— viz., of 20th Dec. 1861, No. 3,201, and of 31st Dec. 1861, No. 3,263, each granted to T. Green, W. Green, and R. Mathers, for " improvements in la"\vn mowing machines." Plaintiff alleged that the intention, at the time of taking out the patents, was that the three grantees should have a joint interest therein. This was denied by defendants, and there was conflicting evidence as to the facts. EoMiLLY, M.R., was of opinion that plaintiff was entitled to all such rights as flowed from his being one of three joint owners of each of the patents, and ordered defendants to account for one- third of any profits arising therefrom. On appeal to the Lord Chancellor the bill was dismissed with costs. 1 Ch. Per Lord Cranworth, L.C. — Where a grant of a patent has P' • been made to two or more as joint inventors, it is dangerous for any Coiu-t to allow one of the grantees to set up a title against the others, founded on mere parol evidence, or inference from doubtful contract. The grantee who, in such a case, claims an exclusive right ought to obtain written evidence on the subject. The right conferred is a right to exclude all the world, other than the grantees, from using the invention. But there is no ex- clusion in the letters patent of any one of the patentees. The inability of any one of the patentees to use the invention, if any such inability exists, must be sought elsewhere than in the letters patent. But there is no principle, in the absence of contract, which can prevent any persons not prohibited by statute from using any invention whatever. Is there, then, any implied contract where two or more persons jointly obtain letters patent that no one of them shall use the invention without the consent of the others, or if he does, that he shall use it for their joint benefit ? I can dis- cover no princij)le for such a doctrine. ( 299 ) Rex v. Metcalf. [a.d. 1817. 2 Stark. E. 2-49.] Variance behveen Title and Sjjecification. 8cL fa. to repeal a patent of 30tli Sept. 1816, No. 4,065, to J. Metcalf, for " a tapered hair or head brush." The specification stated : — " I cut hair in lengths about one inch and a quarter long, which I mix with my hands by shaking it together as unevenly as possible." It went on to describe the mode of attaching to the stock, by means of wires, the hairs so cut and mixed. At the trial, it appeared tliat the patented brushes had bristles of unequal lengths, mixed indiscriminately together. Scarlett, for defendant, suggested that by compressing the bristles in each tuft of hairs the effect would be to make them converge to a point, and that the brushes were known by the description " tapering " in the trade ; but Lord Ellenborough, 0. J., said : — Tapering means gradually converging to a point. According to the specification, the bristles would be of unequal length, but there would be no tapering to a point, which the description assumes. If the word " tapering " be used in its general sense, the description is defec- tive — there is no converging to a point. If the term has had a different meaning annexed to it by the usage of trade, it may be received in its perverted sense. At present, however, I cannot hold out any prospect that the difficulty arising from the grammatical consideration can be removed. After further evidence, which did not remove the difficulty, Lord Ellenborough advised the jury to find that it was not a tapering, but only an unequal brush. Verdict for the Crown. Eule for a new trial refused by the Court of King's Bench. Regina v. Mill. [A.D. 1850— Jl. 10 C. B. 379; 14 Beav. 312 ; 20 L. J., C. P. 16.] Admissibility of Disdaimer in Evidence — 'Title of Patent after Disclaimer. Sci. fa. to repeal a patent of 29th June, 1846, No. 11,266, to TV. Mill, for " improvements in instruments used for "sviiting and marking, and in the construction of inkstands." The patent was for a variety of improvements. Claims 1, 2, 3, 4, referred to pencils and penholders ; claim 5, to pens ; claim 6, to "a particular mode of notching pens;" claims 7 and 8, to instru- ments for marking devices, &c. ; claims 9, 10, and 11, to inkstands. 300 Regina v. Mill. After issue joined defendant filed a disclaimer, under stat. 5 & 6 Will. 4, 0. 83, s. 1, of the 5tli, 6tli, 7tli, and Sth claims of in- vention. At the trial, it appeared that the 6th claim of invention was not new ; but the disclaimer, excising that claim, was tendered in e\adence. Wilde, C.J., doubted whether it was admissible, and dii-ected a verdict for the Crown. Leave reserved. Rule nisi to enter a verdict for defendant, on the ground that the disclaimer was admissible in evidence, and sufficient, when admitted, to sustain the patent, made absolute by the Coui't of Common Pleas. (Jervis, CJ., Maule, Williams, Talfourd, JJ.) 10 c. B. Per Jervis, C.J. — I think that upon the true construction of ^" ^^^' stat. 5 & 6 Will. 4, c. 83, s. 1 , the disclaimer is to be read as part of the patent and specification, as from the time when the patent is granted. . . . Reading the disclaimer with the specification, we find that the defendant has obtained letters patent for three kinds of invention, upon which he founds eleven different heads of claim. Some of these turn out not to be new. These the defendant disclaims ; and, reading the disclaimer with the specification, it will appear that no claim is made in respect of those parts. But it is said that, if this be so, the patent is void, for the patent is granted for three things, and there is a specification which only covers two of them.* . . . But, assuming that the patent stands for the first five claims and the last three, it seems to me that the specification complies with the title. The title is " for improvements in instru- ments used in writing and marking, and in the construction of inkstands," and the specification, as amended by disclaimer, de- scribes improvements in instruments used in writing and marking — viz., pens and pencils, and improvements in the construction of inkstands. 10 C. B. Per Maule, J. — The principle of the enactment (5 & 6 Will. 4, P- ^^■'^- c. 83) seems to be this : where a patent is void for claiming too much, and the case is one which appears to the Attorney- Greneral to be proper for the exercise of his discretion in allowing a dis- claimer, the patent is not to be altogether avoided, but may be amended in the mode prescribed. In the exercise of this discretion great care ought to be, and no doubt is, taken that injustice be not done to thu-d persons, or to the public. The spirit of the Act seems to be this — that where there are objections that go only to a small and insignificant part of a patent, which, if sustained, would defeat it altogether, the patentee may * The special instruments for marking devices being omitted. Regina v. Mill. 301 relieve himself from the difficulty by a disclaimer. Then, inasmuch as a party against whom an action may have been brought for an infringement, may, by means of such disclaimer, be deprived of a good defence, that difficulty is met by the proviso. But, in the case of a scire facias, the proviso not applying, the general spirit of the enactment prevails, which is, that where a disclaimer has been allowed by the competent authority, and has been duly enrolled, it is to have the same validity as if it had formed part of the original specification. In srvV^/r/e/ffs the patentee is passive. The prosecutor complains of the badness of the patent ; all he wants is that it may be cancelled or amended ; and that may be a sufficient reason for excepting the case of a scire facias out of the proviso. Application for liberty to sue on a bond for securing costs to 14 Beav. defendant in the previous case. It appeared that the prosecutor P- ^^^* continued the proceedings after disclaimer by the patentee, and that he ultimately failed. Order made to give leave to bring an action on the bond to recover costs subsequent to the disclaimer. Per EoMiLLY, M.R. — I think that after the disclaimer the prosecutor was bound to know that the patent was good, and ought then to have discontinued the action. From that period he ought, therefore, to pay the costs in the action. MiLLiGAN V. Marsh. [A.D. 1856. 2 Jur., N. S. 1083.] Rival Claims of Invention. Motion for injunction to restrain defendant from using a patented invention, and from proceeding with an action brought against plaintiff's workmen for infringing his alleged patent. It appeared that in 1854 one Milligan, a British subject, residing at Lima, invented a method of making pianos easy of transport by dividing them into several pieces. At that time the son of one Marsh, a maker of pianofortes, was at Lima, and Milligan com- municated to him the pai'ticulars of the invention, and requested him to patent it in England on his {Milligan'' s) behalf. In Nov. 185-1, Marsh, jun., returned to England, and communi- cated the invention to his father, who thereupon patented it as his own independent invention, and brought an action for infringe- ment against parties who were making Milligan's pianos under his direction. Wood, Y.C, ordered the motion to stand over until after the trial of the action, and said : — The plaintiff ^\'ill have a full opj)or- tunity of defending that action, and if Marsh succeeds in the action, 302 MiLLiGAN V. Marsh. on the ground that the communication was not the foundation of the patent here, or not the foundation to such an extent as to pre- vent him fi'om being tlie true inventor of the patent taken out in his own name (for I have observed that, although the plaintiff's commimication were useless in itself and incapable of application, and althongh confidential, yet the defendant might use it in this way — it might set liim thinking, and lead to the discovery by him of a practical way of carrying out the idea, which he might lawfully patent for his own benefit) — in either of such cases the plaintiff's case would be at an end. There could, in that case, be no trustee- ship of that which the plaintitf says he invented, for it would timi out that he had invented nothing. The bill, I think, is not quite accurately framed in another re- spect, for it prays that, if necessary, Marsh may be declared to be a trustee of the patent for the plaintiff's benefit. The case made is, that this was an invention of the plaintiff communicated to the defendant. In such a case, the letters patent, being taken out by the defendant as for an original invention, are void ab initio, and in that case there is nothing of which the defendant can be declared to be a trustee. MiNTER V. Wells. [a.d. 1834. 1 Cr. M. & E. 505 ; 1 Webs. R. 127 ; 4 L. J., Ex. 2.] Suhject-matter of a Patent. Case for the infringement of a patent of 9th Nor. 1830, No. 6,034, to J. Miiifer, for " an improvement in the construction of chairs." The patent related to a reclining chair, the seat and back being constructed of two levers in combination, so arranged that a pressure on the back was counterbalanced by the weight on the seat, whereby a person could rest with the back at different inclinations. C/aitn : " The application of a self-adjusting leverage to the back and seat of a cliair, whereby the weight on the seat acts as a counter- balance to the pressui'e against the back of such chair as above described." At the tiial, it appeared that a self-adjusting leverage had not been before applied to the construction of chairs. Also a question arose as to whether a workman of the plaintiff's, named Sutton, was the real inventor. Alderson, B., directed the jury : — The plaintiff, in order to establish his right, must show that the invention is new and that it is useful, and that the specification is such that an ordinary workman could make a machine which MiNTER V. Wells. 803 would answer the purpose wliicli the patent was intended to accomplish. If Sutton suggested the principle to Mr. Minter, then he would ^"^32.^- ^• be the inventor. If, on the other hand, Mr. 3Iintcr suggested the principle to Sutton, and Sutton Avas assisting him, then Mr. Minter would be the first and true inventor and Sutton woidd be a machine, so to speak, which Mr. Minter uses for the purpose of enabling him to carry his original conception into effect. Verdict for plaintiff. Eule nisi to enter a nonsuit, on the ground that the patent was bad as claiming a principle in mechanics, refused by the Court of Exchequer. (Lord L>Tidhm'st, C.B., Parke, Alderson, Grurney, BB.) Per Lord Lyndhukst, C.B. — Every invention of this kind must include the application of some principle ; and here the application of the principle of the lever to the construction of a reclining chair constitutes the machine, the invention of which the plaintiff claims. He does not, as it is asserted, claim the principle in the summing-up of his specification, but he claims the invention of applying that principle in a certain manner and by cei-tain machinery. Minter v. Williams. [a.d. 1835. 4 A. & E. 251 ; 5 L. J., K. B. GO.] Exposure for Sale. Case for the infringement of the same patent. The declaration set out the letters patent whereby the Crown granted to plaintiff the sole privilege to " make, use, exercise, and vend " the said invention, and forbade all persons to " make, use, or put in practice " the same without his license, and alleged that defendant did without license "expose to sale divers chairs," in breach, &c. Greneral demm-rer and joinder. Judgment for defendant by the Court of King's Bench. (Patteson, Williams, Coleridge, JJ.) Per Patteson, J. — It cannot be doubted, notwithstanding the authorities referred to, that there is a great distinction between vending and exposing to sale. Per Coleridge, J. — The count alleges that the defendant, * A 'S: E. without the plaintiff's license, " exposed to sale " divers chairs ^" intended to imitate and resemble, and which did imitate and resemble his invention. Do these words necessarily import the vending spoken of in the granting part of the patent ? I certainly think not. ... A mere exposure to sale— that is, with intent to sell, or for the purpose of selling— is not only not equivalent to a sale, but as regards the patentee, may be attended with wholly different consequences. p. 744. ( •504 ) MiNTER V. Mower. [a.d. 1837. 6 A. & E. 735; 1 Webs. E. 138 ; G L. J., K. B. 183.] The Claim must not go beyond the Invention. Case for the infringement of the same patent. Plea 2. That the plaintiff was not the true and fii'st inventor. Issue. At the trial, it appeared that one Broicne had, before the patent, invented a chair on the same principle, although encumbered with additional parts. The finding of the jmy was : — That Broicne was the inventor of the machine, and found out the principle, but not the practical pm-pose to which it was now applied, and that the plaintiff made that discovery. Verdict for plaintiff. Leave reserved. Rule nisi to enter a nonsuit made absolute by the Court of King's Bench. (Lord Denman, C.J., Patteson, Williams, JJ.) 6 A. & E. Per Lord Denman, C.J. — The specification thus concludes : — " What I claim as my invention is the appHcation of a self-adjust- ing leverage to the back and seat of a chair, whereby the weight on the seat acts as a counterbalance to the pressure against the back of such chair as above described." Now it was perfectly clear, upon the e\ddence, that this description applies to Broicne s chair, though that was encumbered with some additional machinery. The speci- fication therefore claimed more than the plaintiff had invented, and would have actually precluded Mr. Broicne from continuing to make the same chair that he had made before the patentee's discovery. We are, therefore, of opinion that the patent cannot be sustained. MOREWOOD AND ANOTHER V. TUPPER AND ANOTHER. [A.D. 1855. 3C. L.E. 717.] Evidence of Infringement — Suhjed-matter of a Patent. Case for the infringement of a patent of 4th May, 1843, No. 9,720, to E. Moreuood and G. Rogers, for " an improved process for coating metals." Plea : Not guilty. And several other pleas. Issue. The patent related to the manufacture of so-called galvanised iron plates, being, in fact, ii"on plates coated with zinc. The specification described the operation by reference to drawings, and showed a pot for holding fused metal with a pair of rollers com- fjletely immersed below the sm-face thereof. The plate of ii'on was introduced between the rollers, and was immediately bent upwards MOREWOOD AND AxOTHEK V. TUPPER AND AnOTHER. 305 by a third roller placed close to the mouth of the first pah% the result being that it came out above the surface of the molten metal, and was easily removed. The specification stated : — " In place of using two rollers, one roller, or simply a bar, may be used for causing the plates as they are introduced below the metal to be ensured descending to the same extent." 01 aim 2 : " The mode of coating iron or other metal by causing sheets or other suitable sm-faces thereof to pass between rollers in contact with metal kept molten in a suitable pot, and also the causing sheets of metal to be passed under a bar placed below the sm-face of molten metal as above described." At the trial, it appeared that the alleged infringement consisted in the use of a bath of molten zinc, having a bar placed across it dipping two or three inches into the molten metal. Sal- ammoniac was placed on one side of the bar, and sand, &e., on the other side, and the plate to be coated was dipped into the bath on the sal-ammoniac side, passed below the bar, and removed on the other side. Pollock, C.B., directed the jmy : — That if the bar was placed simply for the separation of the fluxes, there was no infringement. Yerdict for defendants on the issue' on not guilty. Leave reserved. Rule nisi for a new trial, on the grounds of misdirection and of the verdict being against evidence, made absolute by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, Martin, BB.) Per Pollock, C.B. — There was some evidence of cases of long 3C. L.R. . p. 722. plates so passed by the defendants as to make it doubtful whether complete immersion would always take place if the partition were away. "VYe think such eases would be strong evidence from which a jury might, and perhaps ought to find that to be an infringement of the plaintiffs' patent ; for there the partition effects both the separation of the fluxes, and also complete submersion, which latter was, in truth, one of the main objects of the plaintiffs' patent. This, perhaps, was not left with sufficient distinctness to the jury ; and we think there ought to be a new trial to ascertain whether there has been an infringement in that class of eases. Then the C|uestion arises, whether it can be established affirma- tively that the bar alone, placed below the surface of the molten metal, may properly be the subject of a patent ? We cannot all of us at present come to the conclusion that this is clearly the subject of a patent, or that it is not. In such a case we ought to grant a new trial. ( 306 ) MoEGAN V. Fuller. [A.D. 1866. L. E., 2 Eq. 296, 297.] Practice in Pidcnt 8 nits— Amendment of Issues— Particulars of Objections. Suit to restrain from infringing a patent for improvements in carriages. The replication was filed, and an order made for tlie trial of certain issues, when defendant sought to amend by adding fm-ther issues of fact not suggested by the answer. Application refused with costs. 2 Eq. Summons adj omened from chambers for further and better par- P" ^^"* ticulars of objections, the objections alleging : — 1. Prior user of the invention "by carriage builders generally thi-oughout Great Britain.''^ 2. Prior user "by carriage builders (/enerallt/." 3. Prior user " by various carriage builders, in or near London, in or near Liverpool, Manchester, Southampton, and in or near various other of the prin- cipal towns of Great Britain," and " amongst other carriage builders by Messrs. T/iorn, of Great Portland Street, London.'' 4. Prior user of the mode described in the specification in " various mechanical combinations applied to various matters and purposes." 5. That " parts " of the combination claimed had not been invented by the plaintiff. 6. That " parts " of the said combination, if so invented, were not particidarly described. Order made. Costs to be costs in the cause. 2 Eq.^ Per Wood, V.C. — Applying the principle of Fisher v. Bewick (4 Bing. N.C. 706) to this case, the first objection must go out alto- gether. The second must go also, as being, if possible, worse than the first. With regard to the third, there is no doubt a reasonable and intelligible objection stated, but it is too general, and I should be disposed to tie the defendant down to specify the sort of carriage in which the alleged prior user took place if he could not give the name of the manufacturer. This would bruig the case in con- formity with Jones v. Berger (5 M. & Gr. 208). The fourth objec- tion is also too vague. An allegation of general user does not of course admit of being met precisely. It will not do for the defen- dants to say, I am prepared to assert that this sort of lever was applied to several sorts of things before, without specifying any — which was not the case of Penn v. Bibbj/ (L. R., 1 Eq. 548). Objections 5 and 6 must also be struck out as not being specific enough to raise distinct issues. The real object is to secm'e to both parties a fair trial, and with that view I must allow tliis motion. 301. ( 307 ) Morgan and Anothee v. Seaward and Others. [A.D. 1835—37. 2 M. & W. 544; 1 Webs. E. 167; 6 L. J., Ex. 153.] Tnspedion — Novelty of Invention — Sufficiency of Specification — Failure of Utility in part of Invention. Suit to restrain from infringing a patent of 2nd July, 1829, No. 5,805, to E. Gallon-ay^ for " improvements in steam-engines and in macliinery for propelling vessels," &c. The patent related : — (1) To a method of obtaining rotatory motion in a steam-engine. (2) To a method of feathering the floats of paddle-wheels. Ex parte injunction dissolved, order for action at law, and an account. Plaintiffs and their witnesses to be at liberty to inspect at all seasonable times, and with notice, the paddle-wheels or machinery relating to paddle-wheels. Action at law in pm'suance of this order. Pleas : 1. Not guilty. 2. That the specification was insufficient. 3. That the invention was not an improvement in steam-engines. 5. That it was not new, and that the patentee was not the true and first inventor. 6. That it was of no use to the public. Issue. At the trial, it appeared that before the date of the patent one Curtis made for plaintiff, Morgan., two pair of paddle-wheels on the construction afterwards patented by GaUoicay. The workmen employed were under an injunction of secrecy, and no strangers were admitted to see the wheels. After a short time the wheels were taken to pieces, and sent abroad for the use of the Venice and Trieste Steam Company, of which Morgan was managing dii'ector. The wheels were sold to the company, but the vendor's name did not transpire. Morgan and Curtis then employed an attorney, who solicited the patent, which was granted to GaUoivay and assigned to Morgan. Aldersox, B., directed the jury : — The plaintiffs complain of the i Webs.E. defendants for infringing their patent. PTpon that subject the P' ' ' question would be simply, whether the defendants' machine was only colom^ably different, that is, whether it differed merely in the substitution of what are called mechanical equivalents for the con- trivances which are resorted to by the patentee. . . . You are to look to the substance and not to the mere form, and if it is in substance an infringement, you ought to find that it is so. If in principle it is not the same, but really different, then the defendants cannot be said to have infringed the patent. The specification ought to be framed so as not to call upon a i Webs.E. person to have recourse to more than those ordinary means of P- * ' x2 308 Morgan and Another v. Seaward and Others. knowledge (not invention) wliicli a workman of competent skill in his art and trade may be presmned to have. You may call upon him to exercise all the existing knowledge common to the trade, but you cannot call upon him to exercise anything more. You have no right to call upon him to tax his ingenuity or in- vention. ... If you think that this invention has been so specified that any competent engineer, having the ordinary knowledge which competent engineers possess, could carry it into effect by the apx)li- cation of his skill, and the use of his previous knowledge, without any inventions on his part, and that he could do it in the manner described by the specification, and from the information disclosed in the specification, then the specification would be sufficient. If, on the other hand, you think that engineers of ordinary and com- petent skill would have to get themselves a problem to solve, and Avould have to solve that problem before they could do it, then the specification would be bad. Further, if a patentee is acquainted with any particular mode by which his invention may most conveniently be carried into effect, he ought to state it in his specification. . . . The specification of a patent must not merely suggest something that will set the mind of an ingenious man at work, but it must actually and plainly set forth what , the invention is, and how it is to be carried into effect, so as to save a party the trouble of making experiments and trials. 1 Webs.E. In the case of the steam-engine, there was put in on the part of ^- ^'^- the defendants a model, made, as it was said, according to the specification, which model would not work. The model was a copy of the di-awing, and would not work, because one part happened to be a little too small, whereas, if it had been a little larger, it would have worked. Now a workman of ordinary skill when told to put two things together, so that they would move, would of course by the ordinary knowledge and skill he possesses make them of sufficient size to move. There he would have to bring to his assistance his knowledge that the size of the parts is material to the working of the machine. That is within the ordinary knowledge of every workman. A question in this case will be whether you think the steam- engine was a useful invention ; if it was of any use. I think if it w\as of different construction from any other steam-engine, and of any use to the public, then that is sufficient. Verdict for defendants on third, fifth, and sixth issues. Leave reserved. Paile nisi to enter a verdict for plaintiffs on the fifth issue made absolute by the Court of Exchequer (Lord Abinger, C.B., Parke, Morgan and Another v. Seaward and Others. 309 Alderson, BB.), and rule nisi to enter judgment for plaintiffs on the tliird and sixth issues, non. ohstanfe veredicto, discharged. Per Parke, B. — The first question in this case is whether the verdict for the defendants on the fifth plea ought to be set aside. The word '^ manufachtre" in the statute must be construed in 2M. &W. one of two ways : it may mean the machine when completed, or P" '^' the mode of constructing the machine. If it mean the former, undoubtedly there has been no use of the machine, as a machine, in England, either by the patentee himself or any other person, nor indeed any use of the machine in a foreign country before the date of the patent. If it be construed to be the mode of con- structing the machine there has been no use or exercise of it in England in any sense which can be called public. The wheels were constructed under the dii-ection of the inventor, by an engineer and his servants, with an injunction of secrecy, on the express ground that the inventor was about to take out a patent, and that injunction was observed : and this makes the case, so far, the same as if they had been constructed by the inventor's own hands, in his own private workshop, and no third person had seen them while in progress. Tlie operation was disclosed, indeed, to Ilorgan, the plaintiff; but there is sufficient evidence that Morgan at that time was connected with the inventor, and designed to take a share of the patent. A disclosure of the nature of the invention to such a person, under such circumstances, must sm-ely be deemed private and confidential. The only remaining circumstance is that Morgan paid for the machines with the privity of Galloicay, on behalf of the Venice and Trieste Steam Company, of which he was the managing director ; but there was no proof that he paid more than the i)rice of the machines as for ordinary work of that descrip- tion ; and the jury would also be well warranted in finding that he did so with the intention that the machine should be used abroad only, by this company, which, as it carried on its transactions in a foreign country, may be considered as a foreign company ; and the question is, whether this solitary transaction, without any gain being proved to be derived thereby to the patentee or the jDlaintiff, be a use or exercise in England of tlie mode of construction, in any sense which can be deemed a use by others, or a public use, within the meaning of the statute and the patent. "We think not. Another question is, whether this patent, which suggests that ^^gf"^^^ certain inventions are improvements, is avoided if there be o>?e which is not so. And upon the authorities we feel obliged to hold that the patent is void upon the ground of fraud on the Crown, without 310 Morgan and Another v. Seaward and Others. entering into the question wlietlier the utility of each and every part of the invention is essential to a patent, where such utihty is not suggested in the patent itself as the ground of the grant. That a false suggestion of the grantee avoids an ordinary grant of lands or tenements from the Crown is a maxim of the common law, and such a grant is void, not against the Cro^vn merely, but in a suit against a third person. It is on the same principle that a patent for two or more inventions when one is not new is void altogether, as was held in Hill v. Thompson (8 Taunt. 375). and Brunton v. Haiches (4 B. & Aid. 541) ; for although the statute invalidates a patent for want of novelty, and consequently by force of the statute the patent would be void so far as related to that which was old, yet the principle on which the patent has been held to be void altogether is, that the consideration for the grant is the novelty of all, and the consideration failing, or, in other words, the Crown being deceived in its grant, the patent is void and no action main- tainable upon it. "We cannot help seeing on the face of this patent, as set out in the record, that an improvement in steam-engines is suggested by the patentee, and is part of the consideration for the grant ; and we must reluctantly hold that the patent is void for the falsity of that suggestion. In the case of Leicis v. Marling (10 B. & C. 22) this view of the case, that the patent was void for a false suggestion, does not appear by the report to have been pressed upon the attention of the Court, or been considered by it. The decision went upon the ground that the brush was not an essential part of the machine, and that want of utility did not vitiate the patent ; and besides the improvement by the introduction of the brush is not recited in the patent itself as one of the subjects of it, which may make a difference. We are therefore of opinion that the defendant is entitled to om* judgment on the third issue. This view of the case makes it imnecessary to consider the effect of the finding on the last issue as amended by the judge's notes, that part of this invention is not useful. ... It may be doubted whether the question of utility is anything more than a compendious mode, introduced in comparatively modern times, of deciding the question whether the patent be void under the Statute of Monopolies. And we do not mean to intimate any doubt as to the validity of a patent for an entire machine or subject which is, taken altogether, useful, though a part or parts may be useless, always supposing that such patent contains no false suggestion. ( 311 ) Morris v. Branson. [A.D. 1776. Bull. N. P. 76 ; 1 Webs. E. 51.] Patent for Addition to an existing Machine. Case for the infringement of a patent of 28th llarch, 1764, No. 807, to J. Morris, for a machine for a set of needles to be applied to a stocking frame for making oylet-holes. At the trial, the question was, whether an addition to an old stocking frame was the subject of a patent. Lord Mansfield said: — If the general question of law— viz., that there can be no patent for an addition — be with the defendant, that is open upon the record, he may move in arrest of judgment; but that objection would go to repeal almost every patent that ever was granted. There was a verdict for plaintiff with 500/. damages, which was acquiesced in. MuLLiNS V. Hart and Others. [A.D. 1852. 3 Car. & K. 297.] Novelty of Invention. Case for the infringement of a patent for a method of manufac- turing penholders. At the trial, it appeared that before the patent defendants had manufactured penholders according to the method subsequently claimed by plaintiff, and that the penholders in question had been deposited in their warehouse for sale, but no sale was proved. Jervis, C.J., held that there was sufficient evidence of publication to defeat plaintiff's claun. of novelty in the invention. Yerdict for defendants. MuNTZ and Others v. Vivian and Walker. [A.D. 1840. 2 Webs. E. 87.] Practice in Patent Suits— Evidence of Infringement. Suit to restrain from infringing a patent of 22nd Oct. 1832, No. 6,325, to O. F. Munfz, for " an improved manufactui'e of metal plates for sheathing the bottoms of ships." The specification stated : — "I declare my invention to consist in making plates for sheathing of an alloy of zinc and copper in such proportions and of such qualities as, while it enables the manufac- turer to roll the metal into sheets less difficult to work, renders the sheathing less liable to oxidation than ordinary copper, though it oxidates sufficiently to keep the bottom of the vessel clean. I take that quality of copper known in the trade as ' best selected copper,' 312 MuNTz AND Othees V. Vivian and Walkek. and that quality of zinc knoA\Ti in England as 'foreign zinc,^ and melt them together in the proportion of fifty per cent, of copper to fifty per cent, of zinc, and sixty-three per cent, of copper to thirty- seven per cent, of zinc, hoth which extremes and all intermediate proportions will roll at a red heat ; but as too large a quantity of copper increases the difficulty of working the metal, and too large a quantity of zinc renders the metal too hard when cold, and not sufficiently liable to oxidation to effect in the best manner the in- tended piu'pose, I prefer the alloy to consist of sixty per cent, of copper to forty per cent, of zinc." The specification then described the operation of casting the ingots and rolling the sheets. Claim : — " The manufactm^e of metal plates of an alloy of copper and zinc in such proportions as will enable the manufacturer to roll the said alloy Avhile at a red heat into sheets fit for the sheathing of ships, and will be sufficiently ductile to dress close to the bottoms of such vessels, at the same time that it is more durable than copper sheathing and oxidates sufficiently to keep the said bottoms clean." On motion for an injunction it appeared that defendants manufac- tured sheets of an alloy of copper and zinc within the proportions specified, but they rolled them cold. Shadwell, Y.C, said that it was impossible not to see that the rolling hot was a material feature in the invention, and as the defendants did not roll hot he would not grant the injunction. No further proceedings were taken. MuNTz V. Foster and Others. [A.D. 1843—44. 2 Webs. E. 92, 93, 96.] Practice in Fatent Suits — Evidence of Infriiujemerd — NoveJtij of Invention — Evidence of prior User — Sufficiency of Specification. Suit to restrain from infringing the same patent. Defendants relied on the anticipation of the invention by the specification of a patent of 23rd April, 1800, No. 2,390, to W. Collins, which re- lated to the manufacture of sheathing for ships by alloying zinc with other metals, and classified the sheathing as being red, yellow, or white. The specification described the yelloAv sheathing as con- taining more zinc than the red, and as having greater ductility, so that it would bear rolling at a low red heat. It stated : — " 100 parts of copper and 80 of zinc afford a good composition, but the proportions may be varied, and other metallic substances added, provided the property of bearing mechanical jiressiu-e when heated is not destroyed." It appeared that plaintiff had been in possession of his patent for eleven years, and there was no proof that Collins' s MuNTz V. Foster and Others. 313 invention had ever come into general nse. Plaintiff relied on the extreme pm-ity of the metals, as to which Collins' s specification was silent, and defendants, on the other hand, alleged that best selected copper had been made extensively in the last centiuy and in precisely the same manner as that referred to in plaintiff's specifi- cation. Defendants insisted that they worked imder Collinses specification ; but analysis showed that their sheathing was com- posed of copper and zinc of the greatest purity, and in the same proportions as those of plaintiff. Kxigiit Bruce, V.C. granted an injunction and ordered an action at law. Appeal motion dismissed by the Lord Chancellor, with costs. Fer Lord Lyxdhurst, L.C— As to the infringement, it is said 2"\yebs.R. that the defendants work according to Collins s specification, and carefully abstain from working according to the specification of the plaintiff. The analysis proves that their compound consists, not of ordinary copper and zinc, but of those metals in their greatest pm-ity, and in the proportions recommended in the plaintiff's specification. If they were originally combined in this state the invasion is plain and direct. If they were pm-ified in the coiu'se of the process, this, I think, would constitute a colourable invasion of the plaintiff's invention. Action at law in pm-suance of the order of the Coiu't. The pleas are not stated in the report, but defendants denied the infringe- ment, the novelty of the invention, the sufficiency of the specification, and that the invention was the subject-matter of a patent. Issue. At the trial, defendants relied on the defences indicated, but the report gives no summary of the e\ddence. Tixdat,, C.J., directed the im-v :— If the defendants had actuallv made some small experi- -"^''^^*-^- ment for the pm-pose of ascertaining what the proportions or properties of the different alloys would come to, that would scarcely have been said to be a making in violation of the patent ; but you must ask yoiu'selves whether the making of a cpiantity which amounts to ten tons, I think, and of which the cost would be something like the sum of between 700/. and 800/., could have been made for any other pm-pose at the time than the piu'pose of sale. If such were the case, there is no doubt that would be an infringement of the patent. His Lordship then discussed the natm-e of the invention and -"^'^^^•^• said :— I look upon it that there is as much merit m discovermg the hidden and concealed vii'tue of a compound alloy of metal, as there woidd be in discovering an unlalo-u^l quality which a natm-al earth or stone possessed. We know, by cases that have been .'HI MuN'i'z V. F(jsti;k and 0'i'ni;ii.s. (lotomiinnd, that wlioro Huoh unknown qualities have, from the i-csuli of (•x])f'i'inif'iiis, l)ccn a|)])lie(l 1o iiscriil |)urpf)HOH of lifo, such ii|)|ilic;ii Inn lijis Imm'ii coiisidcicd iis tin- |ir()|)xp(Mise to tli(uns(^lv<^H, wliieh shall tnin oiil (o ho Imotloss and friiit- lesH ; hid ilicy rely on an Iioncsi and open and candid exposition hy lli(! pal70; I-. 1;., 1.-. \']<\. 11.-.; 2\ W. E. lUS ; ■ii> h. .)., cii. i:m.| I'lviilcncp. of liifriiilaintiff was not the true and first inventor. 3. That the invention was not new. 4. That the invention was not a manufacture within the statute. Issue. At the trial, the specification of a patent of 8th Sejjf. 1838, No. 7,800, to defendant, J. U. Vaucher, was put in which related p. 335. Newton v. Vaucher. 385 to a metliod of packing the pistons of hydraulic engines by soft metallic packing. The metal packing was composed of forty parts of tin, sixty of zinc, and fom- of antimony, and was cast in grooves running round the pistons. It was contended, on the part of defendant, that plaintiff's invention was comprised in the above description, and that his patent was therefore void for want of novelty. Platt, B., was of the contrary opinion, and left the case to the jury. Verdict for plaintiff. Eule nisi for a new trial, on the ground of misdirection, dis- charged by the Court of Exchequer. (Parke, Alderson, Platt, Martin, BB.) Per Parke, B. — The only question is, whether the plaintiff's 6 Ex R. invention is contained in the defendant's, and is old, and that ques- ^' tion must depend upon a comparison between the specifications of the plaintiff's patent of 1843, and of the defendant's of 1838. The specifications are to be read in connection with their titles. After the date of the defendant's patent it was discovered that soft metal could be used beneficially, not merely for the pm^pose of excluding air and water, but that it produced this remarkable effect, that where there was pressure upon it, friction was in a great degree diminished. ... I think the discovery by the person mider whom the plaintiff claims is not merely the discovery of a new principle, but of a new principle embodied in a new machine. Then, that being so, if the plaintiff claims a patent for that new principle embodied in a new machine, and that only for the purpose of diminishing friction, and the apx)lication of it is only to cases where there is pressure as well as motion, that patent is perfectly good ; but if he has also claimed in it the application of soft metal to all cases of stuffing, to exclude fluids of every description, his patent in that respect is for an old invention and is void. The question is now reduced to that single point. I entertained some doubt dm-ing the argument whether the plaintiff's patent is simply for the application of soft metal for the pm-pose of preventing friction where there is pressm-e and motion, or whether it is not also for the application of soft metal in cases of stuffing rods for the pm-pose of excluding air, water, or other fluid. If the determination of the question depended solely upon the specification, and the title of the patent were not read, I should have been inclined to think that the plaintiff claimed both ; but if the specification and the title be read together (and the specification is always taken to be an exemplification of the thing for which the patent is obtained), it is clear that the plaintiff's claim is confined to bearings in cases 336 Newtox v. Vaucher. •where there is pressirre with motion, . . . Had it not "been for the title of the patent, by which the phaintiff appears to me to confine his invention to bearings, there would he strong reason to contend that he applied it also to eases in which rods or bars were to slide. But reading the specification in conjunction with the title, I think the plaintiif 's patent does not extend so far, and consequently that it is not void upon that ground. 6 Ex. E. Fer Aldeeson, B. — The plaintifP, by his specification, describes a P' ^^^" mode of forming a lining of soft metal which bears the pressure, and which endures swift motion upon its surface without the evolu- tion of heat by friction, and this he does by rims of hard metal with soft metal between the rims. It seems to me to be a very reasonable subject-matter for a patent, and that it is essentially diiferent from the defendant's patent. Fer Martin, B. — It is obvious, from his (the defendant's) specifi- cation, that he never had the least idea that soft metal would be of the slightest utility in diminishing friction. Nickels v. Haslam. [a.d. 1844. 7 M. & G. 378 ; 8 Scott, N. E., 97 ; 13 L. J., C. P. 146.] Variance letiueen Title of Patent and Specification. Case for the infringement of a patent of 10th Feb. 18-12, No. 9,252, to C. Nichch, for "improvements in the manufacture of plaited fabrics." Plea : Setting out the specification and avemng that no other had been enrolled, whereby the patent was void. Greneral demm-rer, and joinder. The patent related to a method of manufaetming plaited fabrics in stripes alternating ^\-ith ordinary woven fabric. The specifica- tion stated : — " That the warp should be wound on two warp beams, whereof one was lightly and the other heavily weighted." Claim : — " The mode of weaving plaited fabrics by dividing the warp into separate parts, and causing them to be delivered at different speeds as the weaving with the weft proceeds." This was the only improvement specified. It was objected that the specification did not support the title ; but the Court of Common Pleas (Tindal, C.J., Coltman, Cresswell, JJ.) gave judgment for plaintiff. 7M. &G. Pf>- Tindal, C.J. — Here the objection is only to the title, as p. 385. describing the patent to have been granted for improvements in a certain manufacture, whereas the specification discloses only one improvement. This is certainly a most subtle objection ; if the term improvement had been used, it would have been nomen coUec- Xlf'KKL^ V, TrASl.A>.f. ')37 f'u'um, and would liavo covered am- nimiLcr of improvements, I cannot see why the variance, if it he one, should vitiate the patent, the objection being merely to the title of the patent without fraud upon the Crown or detriment to the public. Nobel's Explosives Company i\ Jones, Scott and Company, [A.D. 1880—82. L. E., 17 Ch. D. 721 ; 8 App. Ca. 5 ; 49 L. J., Cli. 726; 50 L. J., Ch. 582 ; 52 L. J., Ch. 339.] Evidence of Ivfrivrjement — User of Inreniion, Action to restrain the infringement of a patent of 7th May, 1867, No. 1,345, to W. E. Ncuion, for "improvements in explosive com- pounds, and in the means of igniting the same." The invention related to the manufacture of dj-namite, which is made by absorbing liquid nitro-glycerine into porous unexplosive substances, and is described in the report of The British Dynamite Company v. Krehs {ante, p. 88). The statement of claim charged the purchase of litho-fracteur, being a form of dynamite, from Krchs ^ Co., the importation of the same into this country, and its storage or transhipment for sale in Australia. The particulars of breaches charged infringement before the patent came into the possession of the plaintiffs. De- fendants pleaded that the patent was assigned to the plaintiffs on 23rd April, 1877, and not before, and they denied that they had pm-chascd or transhipped any litho-fracteur since the date of the assignment. It appeared that the patent had passed into the possession of the plaintiffs upon the volimtary licjLuidation and dissolution of the British Dynamite Company, who were the original holders. At the hearing, application was made to amend by making the liquidator of the British Dynamite Company a party to the suit ; but this was refused by Bacox, V.C, and the evidence was confined to breaches subsequent to 23rd April, 1877. It now appeared that the statement of claim did not raise the real issue between the parties, and Bacon, V.C, gave leave to amend. Plaintiffs then charged that defendants had imported and delivered, or had consigned to them, or had received or dealt with as owners, or as agents for the owners, large quantities of litho- fracteur, and had transhipped the same, or caused the same to be transhipped and stored in the port of London. Defendants pleaded that their only intervention in relation to litho-fractem- since 23rd April,1877, had been the acting as CustomHouse agents to Messrs. G, Z p 338 Xop.el'.s ExPLOsiiYEs Co. v, Jones, Scott and Co. Krehs 4" Co., the real owners of sucli litho-fractenr. Their function had been confined to obtaining papers necessary for the transhipment of such litho-fracteui", and they never had any owner- ship in or any control over the same. 17 Ch. D. Injimction, with costs and inquiry as to damages, granted by Bacox, Y.C, who said : — Ha\'ing regard to the nature of the in- vention, and that its most essential quality is, that it acquires for nitro-glycerine " the propeiiy of being in a high degree insensible to shocks," it appears to me that it is impossible to tranship, or in any manner to handle or move the commodity made according to the invention without at the same time using the invention. 17 C'li. D. I cannot resist the written and other evidence by which the facts ^'' '■"^" are established, that upon thi^ee several occasions the defendants did procure the delivery and transhipment of the goods mentioned ; nor can I doubt that such dealing was a user by the defendants in infringement of the plaintiffs' rights under the patent. Appeal to the Court of Appeal (James, Baggallay, Lush, L.J J.), when the order of the Vice-Chancellor was discharged, and the action was dismissed with costs. 17 Ch. D. Per James, L.-J. — Is the mere assisting in getting the goods 1^" '^^' from the ship into a lighter an actionable WTong ? What is action- able, and what the plaintiffs' rights are, is shown by the letters patent themselves. The rights of the patentee, which nobody can infringe, are that the patentee and his assigns, and no others, may during the term make, use, exercise, and vend his said invention. Can anybody say that going to the Custom House and writing to the Custom House for Krehs ^ Co. for a warrant to discharge things from a ship into a barge is making the invention, is it using it — is it exercising or vending it ? It seems to me it is neither making, using, exercising, nor vending the said invention. Krehs 8^ Co., the persons who had the control over it, or the persons who had the possession, may, in one sense, be said to be using it ; ha^'ing regard, as Mr, Aston said, though I do not think it necessary for us to determine the point, to the particidar nature of the invention in this case, whicli is one by means of which every di'op of the highly-explosive thing, nitro-glycerine, is coated with some other material in such a way as to make it storeable, movable, and trans- portable with safety. Therefore, as the effect and utility of the patent, according to Mr. Aston' s view — and he may be right in that— was the safety communicated to the nitro-glycerine by means of the particular invention, if Krehs 8f Co. were to bring the thing into this coimtry Nobel's Explosives Co. v. Jones, Scott and Co. 330 for tlio piiqoose of sending it abroad without oven opening tlie packages, if the packages were on iDoard a ship or in a warehouse in England, and there stored bond fide with a view of being sent out of this country, it is possible that they might be held to be using it in this country nearly in the same sense as persons were held to be using Bettn patent capsule, because Bcftfi' patent capsule was protecting the liquor in this country, which was the use of the invention. But a man who has no possession of the thing, and has no control over it, to whom the safety or the want of safety is not of the slightest consequence, cannot be said to be using the invention ; and that is the only way in which it could be said that these letters patent were infringed. And as of course nobody could pretend to say that he was making, exercising, or vending it, it does not come within either of those. It is not necessary to go through the prohibitory words, which do not carry it any further. Appeal to the House of Lords, when the order appealed from 8 App. Ca. was affirmed, and the appeal was dismissed with costs. Lord Selborxe, L.C, after referring to the judgment of Lord 8App. Ca. Justice James, in which the two other Lords Justices concurred, said : — It seems to me that the matter so plainly stated, if it be in accordance with the result of the evidence, makes it imnecessary to consider the ulterior question of law, VN^hether the doctrine laid down as to user in Ncihon v. Beits (L. E., 5 H. L. 1) is applicable to what is alleged to be user in the present case. . . . tSupposing this had been the case, not of the dynamite patent, but of Betts^ patent, it appears to me that from the acts shown to have been done by the present defendants it would have been impossible to say that there was any user by them of the capsules. I cannot go upon suspicion ; I can look only at the evidence. The bmxlen of proof is upon the plaintiffs, and if they have given no evidence whatever, to show either user by the defendants or possession de facto or constructive possession, it is manifest that, whatever else they did, the defendants did not use these goods, "We have nothing to do with the question what would or would not have been the liability of Krehs 8^ Co. for the things which were here done. They were the doers of those thing-s, so far as the position of owners or the fact of possession is concerned, and the only doers. They did indeed employ the agency of the defendants; and agents employed to infringe a patent may, if they do so, though for the benefit of others, be liable to an action for infringement : z2 340 Nobel'.s Explosives Co. v. Jones, Scott axd Co. but tliis agency was not to infringe tlie patent. This agency was simply to remove certain legal difficulties in the way of the passage of the goods from the ship in which they were — for the account and at the risk of tlie true importers, Krehs 8^ Co. — into a lighter of theirs supplied by them ; and nothing whatever was done by the defendants except to comply ^dth certain provisions of the law for that purpose. 8 App. Ca. Per Lord Blackburn. — I do not think it would be material, in PP- J ^- order to support an action for the infringement of their (the plaintiffs') property to show that it was knowingly infringed. Whether it was done knowingly or not, it would equally be an infiingement of their property. The defendants did, as agents, apply for and obtain leave that these goods should be landed upon the proper conditions being fulfilled (and it appears that those conditions were all fulfilled), and that is all. The defendants did therefore (to use a figiu'e of speech which I used in the com-se of the argument), apply for the key to rmlock two doors which prevented the goods being landed from the ship in the Thames to the shore ; it was that and no more. Can that in any sense of the word be called " using " the patented article ? I think not. I Cjuite agree that when it is a question of the use of a patented article, it is important to see what the natiu^e of the patented article is, for a dealing with the article in a particular way which Avouldhave been a use of it, if the object of the patent was one thing, might not have been a use of it, if the object of the patent was another thing. In that I agree entii'ely, and I ^^ill not enter into the inquiry, which might be rather a nice one, whether, the object of this patent being to render an explosive article less dangerous, less liable to explode than it otherwise woidd have been, any one who puts himself in the position of having used the article in that shape, might or might not be said to have used the patent. That is a nice question. But what I do say is that Jones ^* Co., upon this e\idence, are not in that position at all. They never used the article itself, they did nothing whatever, except take steps to remove the two obstacles which were imposed by the legislature, not for the benefit of the patentee, but in the one case against a breach or infringement of the revenue laws, and in the other case against the danger that the article would explode and do mischief. How, in any sense, taking those steps to remove these two obstacles, can be said to be a user of the patent has never been made clear to my mind. I am quite clear that it is not. ( 341 ) NoTON AND Others v. Brooks. [A.D. 1861. 7 IL &N. 499.] Estoppel of Licensee, Action for non-payment of royalties for the use of a patent. Pleas : 3. That the alleged invention was not a new manufacture, by reason whereof the patent was void. 4. That the patentees were not the true and first inventors, by reason, &c. Demurrer, and joinder. Judgment for plaintiffs by the Court of Exchequer. (Pollock, C.B., Bramwell, Channell, Wilde, BB.) Dm'ing the argument Pollock, O.B., said : — The defendant agrees to pay the plaintiffs a royalty, if they will allow him to use their patented invention, and he does use it ; how then can he tm-n round and say that it is worthless ? The plaintiffs claim the remuneration for the permission to do that which the defendant has done. So long as the term of the patent lasts, if the defendant chooses to w^ork under it, he must pay the stipulated price. Also Bkamwell, B., said : — The consideration for the promise to pay is the permission to use the invention. NuNN V. D'Albuquerque. [A.D. I860. 3-4 Beav. 595.] Practice in Patent Suits — Ivjunction. tSuit to restrain the infringement of a patent for lamps to bo used at sea. Defendant, immediately on the infringement being complained of, submitted, and undertook not to manufacture any more of the lamps in question. lie stated that he had made forty-one lamps and had sold two at a profit of 27. 13.s. 6(1. Plaintiff, however, insisted on an account, and on the destruction of all the stock on hand. At the hearing, defendant submitted to an injunction, and the only questions were, as to the account and the costs of the suit. Romilly, lyi.E., made an order for a perpetual injunction, but gave no costs to either side, and as to the aceoimt, his Lordship said : — The plaintiff may have an account, but it must be at his OAvn peril as to the costs of it, if it tm-n out that the defendant has stated the truth. The defendant has sworn to the account, and has offered an inspection of his books and to pay the profits made. He has also offered either to sell the lamps to the plaintiff at the cost price or to have them taken to pieces. ( 342 ) Oldham v. Longmead. [a.d. 1789. Cited 3 T. E. 439, 441.] Per Lord Kexyox, C.J. — In tlie case of Ohllann v. Longmead^ the patentee had conveyed his mterest in the patent to the plaintiff, and yet in violation of his contract he afterwards infringed the plaintiff's right, and then attempted to deny his having any title to convey ; but I was of opinion that he was estopped by his own deed from making that defence. Oemson V. Clarice. [a,d. 1862—63. 13 0. B., N. S. 337 ; 14 C. B., N. S. 475; 32 L. J., C. P. 8, 291.] Siibjed-mutter of a Patent. Case for the infringement of a patent of 19th Sept. 1857, No. 2,41:1, to II. Oiinson, for " an improvement in the manufactm-e of cast tubidar boilers." Pleas: 1. Not guilty. 7. That the invention was not a manufactm-o within the statute. Issue. The invention related to a mode of constructing tubular boilers after a pattern well known at the date of the patent — viz., a boiler by one Weeks, which consisted of a row of vertical tubes terminating at the top and bottom in two horizontal hollow rings ; the rings being cast with sockets, and the tubes being put in afterwards. In the patented boiler, the lower ring, the upright tubes, and pail; of the upper ring were cast in one piece. The specification stated : — " My invention consists in causing the upright tubes and the lower hollow ring (which connected the tubes together at their lower ends) to be all cast at one time, and thus to form one casting." Claim : The casting a boiler, such as is described, in one piece. At the trial, Erle, C.J., left the case to the jmy. Yerdict lor plaintiff. Leave reserved. Rule nisi to enter a verdict for defendant, on the ground that the invention was not the subject-matter of a patent, made absolute by the Court of Common Pleas. (Erie, C.J., Williams, Byles, Keating, JJ.) Per Erle, C.J. — Tubular boilers, such as those in question, are perfectly well known, and have long been used for the heating of horticultural buildings. The product therefore is not new ; the only novelty is the casting in one piece that which used formerly to be cast in several pieces. I am of opinion that that is not the subject for which a patent can be taken out. The new mode pro- Ormson v. Clarke. 343 bably requires more bkill in the workman than the old one ; but there is no claim for any novelty in the process of casting. On appeal to the Court of Exchequer Chamber (Pollock, C.13., Crompton, Blackbrn^n, Mellor, JJ., Martin, Bramwell, Channel], BB.), judgment affirmed. Fer Pollock, C.B.— I think it is extremely likely that this is a ii C. B. very useful improvement, and if the patent had been taken out for ^'^ an improved mode of casting tubular boilers in one piece, probably it might have been sustained. . . . The only question reserved for us is, whether there could be a patent for a boiler as above de- scribed, cast in one piece. We are all clearly of opinion that that is not the subject of a patent. Otto v. Linford. -32. 46 L. T., N. S. 35 ; 18 Cli. D. 394.] Suhjcd-maiter of Patent—Sufficiency of Sjpecification— Utility— Novel fij of Invention. Action to restrain the infringement of a patent of ITth May, 1876, No. 2,081, to C. D. Ahel, for " improvements in gas motor engines." (A communication by iV. A. Otto.) Pleas : 1. That the invention was not the subject-matter of a patent. 2, Specification insufficient. 3. Invention not usefid. 4. Invention not new. 5. No infringement. Issue. The specification stated that in gas engines, as hitherto con- structed, an explosive mixtiu^e of combustible gas and air was introduced into the cylinder and ignited, whereby there resulted a sudden expansion of the gases and a development of heat, a great portion of which was lost by absorption. According to the present invention, the combustible gas is introduced into the cylinder together Avith air or other gas that may or may not support com- bustion in such a manner that the particles of the combustible gas are more or less dispersed in an isolated condition in the air or other gas, so that, on ignition, instead of an explosion ensuing, the flame mil be communicated gradually from one combustible particle to another, thereby effecting a gradual development of heat and a corresponding gradual expansion of the gases. Fig. 1 showed a cylinder and piston in section, together with a slide for the admission of gas or air. The piston on mo\-ing out- wards from the bottom of the cylinder, di-ew in air for a space marked b (about one-third of the stroke). It then moved an additional space and drew in combustible gas and aii\ The charge 344 Otto v. Linfoed. was then fired, and the piston was driven to tlie end of its stroke. On the retiu'n of the piston the products of combustion were driven out and the operation was repeated as before. Fig. 3 showed the real improvement which gave importance to the invention. In this ease the piston did not come close up to the cylinder cover on its retm-n after the ignition, but a considerable space was left at the end of the cylinder which became filled with the residue of the products of combustion at about atmospheric pressure. As soon as the piston began its forward stroke, air was drawn in, and afterwards gas and air. On the retiu^n of the piston the whole contents of the cylinder were compressed into the space at the end, and the charge was then fired. The result being that the piston was driven to the end of its stroke, when the cycle of operations was repeated. Claims : — 1. Admitting to the cylinder a mixture of combustible gas or vapour with air, separate from a charge of air or incom- bustible gas, so that the development of heat and the expansion or increase of pressure produced by the combustion are rendered gradual, substantially as and for the purposes set forth. 4. The construction substantially as herein described in reference to Figs. 2 to 13 of the drawings of a gas motor engine wherein by one outstroke of the piston separate charges of combustible fluid and air are di-awn into the cylinder, which charges are com- pressed by the instroke and then ignited so as to propel the piston, which by its retm-n stroke expels the products of combustion. For the defendants it was contended that the first claun of invention had been anticipated by a patent of Stli Feb. 1860, No. 335, granted to J. H. Johnson, for " improvements in obtaining motive power, and in the machinery or apparatus employed therein." (A communication from J. J. E. Lenoir.) JohiHonh specification showed the cylinder and slide valve in section, the ignition being produced by an electric spark. It stated : — " Suitable means are employed for admitting atmospheric air into the cylinder, along with this air there is also acbnitted a supply of ordinary lighting or other inflammable gas or vapoui'. " In starting the engine, the piston is first caused to travel a certain distance along the cylinder, thereby producing a vacurmi behind it, and allows the gas and air to enter such void space through the parts a and h respectively, but as the slide opens the part a^ before the passage t comes into communication with one of the gas orifices, it follows that a supply of air will have abeady entered the cylinder. The slide then opening one of the orifices Otto v. Linford. 345 d, the gas and air both enter the cylinder, but without becoming entirely mixed together, and will exist in the space behind the piston in distinct strata. "The object of introducing a supply of air into the cylinder before the gas is allowed to enter is to neutralize the effect of the carbonic acid gas, formed by the combustion of the first portion of the inflammable gas, as the carbonic acid gas, without being thus neutralized, might prevent the ignition of the remainder of the inflammable gas." It was further contended that the specification was insufficient by reason of mistakes in the drawings. The alleged infringement consisted in the construction by the defendants, a firm of engineers at Leicester, of automatic balanced gas motor engines. Bacon, V.C., held that the patent had been anticipated, and is Ch. D. dismissed the action with costs. The costs in the original action having been taxed, and ai certi- ficate obtained, plaintiff now applied to the Court of Appeal (Jessel, M.Pv., Cotton, Brett, L.JJ.) for leave to give short notice of motion to restrain defendants from enforcing the certificate pend- ing an appeal. The Com-t refused the application, saying that it should have been made in the first instance to the Vice-Chancellor. On appeal in the action, the Com-t of Appeal (Jessel, M.R., Brett, Holker, L.JJ.) reversed the decree of the Vice-Chancellor, and granted an injunction, with costs. Per Jessel, M.R. — I have heard judges say, and I have read 46 L. T. that other judges have said, that there should be a benevolent ^" interpretation of specifications. What does this mean ? I think, as I have explained elsewhere, it means this ; when the judges are convinced that there is a genuine, great, and important invention, w^hich, as in some cases, one might almost say, produces a revolution in a given art or manufacture, the judges are not to be astute to find defects in the specification, but on the contrary, if it is possible consistently with the ordinary rules of construction, to put such a construction on the patent as will support it. They are to prefer that construction to another which might possibly commend itself to their minds if the patent w\as of little worth and of very little importance. That has been carried out over and over again, not only by the Lord Chancellor on appeal, but by the House of Lords. There is, if I may say so, and I think there ought to be, a bias, as between two different constructions, in favour- of the real improvement and genuine invention, to adopt that construe- 346 O'J'TO V. LiNFORD. tion whicli supports au invention. Beyond tliat I think the rule ought not to go. His Lordship went on to say that the evidence, which was uncon- tradicted, went to show that the invention was one of great merit and of great importance, and continued : — It may appear very simple when it is known — most great inven- tions do appear to he very simple when they are known. The assumption on the other side that this patent is had for want of novelty is not founded on any engine or machine or on anything that was known before ; hut they tell us there is described in a sj)ecification in the Patent Office the very invention for which this patent is taken out. It is a very singular thing, if it is so, that nobody knew of it. I will take in detail the various objections that are made to the patent. The first objection is, that this is not the subject-matter of a patent ; because it is said that what is claimed is a principle, . . . or, as it is sometimes termed, the " idea " of putting a cushion of air between the explosive mixtm-e and the piston of the gas motor engine, so as to regulate, detain or make gradual, what would other- wise be a sudden explosion. Of course that could not be patented. I do not read the patent so ; I read the patent as being to the effect that the patentee tells us that there is the idea which he wishes to carry out ; but he also describes other kinds of machines which will carry it out ; and he claims to carry it out substantially by one or other of these machines. That is the subject of a patent. If you have a new principle, or a new idea, as regards any art or manufactm^e, and then show a mode of carrying that into prac- tice, you may patent that ; though you could not patent the idea alone, and very likely could not patent the machine alone, because the machine alone would not be new. 46 L. T. One of the strongest illustrations that I know of is the patent for ^' ' the hot blast in the iron manufactm-e, where there was nothing new at all except the idea that the application of hot air instead of cold air to the mixtm-e of iron ore and fuel Avould produce most remark- able results in the shape of economy in the rnaiiufacture of iron. The inventor or discoverer could not patent that, but what he did was this, he said, " I will patent that idea in combination with the mode of carrying it out ; that is, I tell you you may heat yoiu* air in a closed vessel next your fmiiace, and then that mil effect the object." It was held that that would do. . . . Now that is a much stronger illustration than this of the validity of a patent as regards the subject-matter. For here is a complicated machine Otto v. Linford. 347 In the case of the hot bhist the man did not pretend to invent anytliing ; he said a machine of any shape in which yoii can heat air is sufficient. Mr. Otto does allege he has invented a machine. It appears that he did, although a machine Avhich, ^J^r sc, was not of sufficient novelty probably to support a patent. It comes therefore to this, that we have a principle and a mode of carrjdng it out, and, I will assume for this pm-pose, sufficiently described, and that is a good subject-matter for a patent. The next objection is that there is insufficiency of specification. 'IG L. T. The objection in this case is an allegation or a series of allegations as to omissions and as to mistakes in the drawings. They are both classes of objections which are quite familiar to those who have had to do with patent cases, and are always remarkable in this way, that they are never found out until the action is brought. . . . Many years ago I was counsel for some makers of a thrashing machine, and a very clever thrashing machine it was, and they sold thousands of them. His Lordship then said that the draughtsman, by some mistake, had not set the beaters crosswise but parallel, and continued : — Nobody found that out till we came into Court, and Ransome 8f Co. had made the machines "vvith the beaters set crosswise. When it came to be discussed the thing was too absurd ; it woidd not have been a thi^ashing machine at all, and of course the drawing- was corrected by the letterpress, Avhich told them that the thing would thrash. In these matters, therefore, it is not for us to find out how not to do it, but the workman, when he finds that the drawing does not work exactly, sets himself at once to see how it ought to be done, and in practice the thing never arises at all. His Lordship then discussed the objections, and in each case came to the conclusion that a workman woidd put the thing right, and said : — I do not discredit the evidence on behalf of the de- fendant, because all ho says is, "It is expecting an amount of intellect which I do not think that you will find." That is all that Mr. May says upon it. He does not say that he has ever tried a workman, or that he has ever heard of one who failed. It seems to me that is exactly the class of objection which ought not to prevail, and, according to my experience — which is very great — which never has prevailed. I now come to an objection of a far more serious kind. It is said the specification does not show the proportion in which the air is to be put in as regards the combustible mixture. The answer is, first of all, that no exact proportion is wanted. Upon that, I think, 348 Otto v. Linford. the evidence is clear enough ; but it is equally clear that a mere film of air will not do. You must have what is called by one of the witnesses for the plaintiff, a " notable quantity," by another \\dtness a " considerable quantity," and which, no doubt, must be a substantial quantity, having regard to the quantity of mixtiu-e. Now, these words, " notable quantity," or, " substantial quantity," or " considerable c[uantity," are not to be found in the specifica- tion, and the question one has to consider is, whether the specification tells you enough to inform a person about to make— or, I should say, to use— the machine, that there must be this quantity, I think it does. The first thing to be remembered, in specifications of patents is, that they are addressed to those w^ho know some- thiug about the matter. A specification for improvements in gas motor engines is addressed to gas motor engine-makers and workers, not to the public outside. Consequently j'ou do not re- quire the same amount of minute information that you woidd in the case of a totally new invention, applicable to a totally new kind of manufacture. In this case the inventor says this :— " I am going to tiu-n that which was a sudden explosion of gas into a gradual explosion of gas, and I am going to do that by the introduction of a cushion of air in one place between the piston and the combustible mixtm-e." If a man is left without any more information he asks, "How much air am I to let in ? " He lets in a little aii', and he finds that the thing explodes as before, and he lets in some more, and he finds directly, on the mere regulation of his stop- cock how much is required, and he finds very soon that he has let in enough ; and now there is a gradual expansion, and no longer a sudden and ex- plosive expansion. It does not appear to me that that requii'es invention. It rec[uires a little care and watching, and that is all. When you come to look at this man's specification, he has drawings, and his drawings with the letterpress show that he does really put in nearly as much air as explosive mixtui-e. And here, again, the same remark applies. Nobody was called to say they had found any difficulty . . . These are theoretical difficulties suggested by the defendants to defeat the patent. 4G L. T. The next objection is that there was no evidence of utility. P- ^^- That is an objection of the most moderate kind. It is quite true that it has been said that it is jivimd facie evidence of want of utility if you do not make and vend your machine ; but that is subject to this observation, that you may make and vend an improvement upon it, and if you have found out immediately Otto v. Linfokd. o-(9 after you have patented your invention that it can be improved, it does not by any means show that the first invention was useless. In Renardv. Levinstein (11 L. T., N. S. 505), I was counsel for the defendant, and took the same objection. That was an invention for a dye. There the plaintiffs never sold an ounce of dye made according to the patent, because immediately afterwards the inventor had discovered an improvement, and they had always sold the improved dye, and they were obliged to call a witness to show that tliey had made a few ounces of dye and tried it, and that it would dj^o. The answer was, that under these circumstances the mere fact of not selling the original dye was nothing at all. In this case, we have a rather stronger illustration, because the inventor has patented three modifications, and it tiu-ns out that what he has used, made, and sold have been almost entirely No. 3's, and that the other things sold have been almost entirely — not quite — improvements on No. 1. No. 1 does not appear ever to have been sold, but the plaintiff says that No. 1 will work, and he calls witnesses to prove it, and there is no evidence on the other side. . . . Therefore there is evidence of utility. It is very small indeed as regards No. 1, because that is not the one which has proved most useful, but it is quite sufficient for the support of a patent ; and, as to this question of utility, very little will do. As regards novelty, that was the objection upon which the defendant succeeded in the Court below, and it turns upon this. The defendants say that by the patent of one Johnson, which is really a communication from Lenoir, so long ago as the year 18G0, that is, sixteen years before the patent — there was a description of that for which the patent was taken out. His Lordship then observed that Lenoir was the maker of a large nimiber of gas motor engines, principally under a subsequent patent of 1861, and it was remarkable that no witness was produced who had made or sold or seen at work an engine made according to the plaintiff's patent, or which produced the effect which the plaintiff said could be produced. His Lordship continued : — That 46 l. T. is strong evidence to my mind that the specification did not P- ^'-• disclose the plaintiff's patent. ... Of course it is not conclusive, it is only a remark as to probability ; the specification itself must be considered by the Court like any other docmnent. Now, having read and considered it most attentively, I have arrived at this conclusion, that so far from pointing out the principle or idea published by the plaintiff, and the mode of carrying out that principle or idea, the machine described in Johnson^ s speci- 350 Otto v. Linford. ficatiou is a macliine worked by the sudden expansion of an inflammable mixture, and intended to be worked in tbat way, and that so far from telling the public that you can make the machine work by gradual expansion by the protection of a cushion, the only reason for which air is introduced into this machine is for a totally different pm-pose, and with a view to the quickening or making more sudden the expansion of the gases. If that is so, there is no description of the plaintiff's invention, which is a new principle or idea, with the mode applying it, but of something entu'ely different. If, however, this had been the case, that it was a necessity in constructing Johnsonh machine to make a machine which would work according to the plaintiff's invention, so that only a machine could be made which would work by gradual expansion, which was one part of the argument, then I agree that it would liave been an anticipation. It appears to me that, quite independent of the surrounding cii'cimistances, nobody ever understood that specification of Jolimon's as describing or intending to describe that which the plaintiff has claimed by his specification ; that Johnson's specification does not tell the public at all that which the plaintiff has told them, and is by no means an anticipation of the invention. As to the infringement, his Lordship was of opinion that that was made out. OXLEY V. HOLDEN. [A.D. 1860. 8 C. B., N. S. 666 ; .30 L. J., 0. P. 68.] User hy offering Patented Articles for sale— Construction of Specification— Title of Patent— Effect of Provisional Specification ivJien ahandoned. Action to recover royalties payable under an agreement for the use of a patent of 10th Ajml, 1858, No. 776, to J. Oxiey, for " uniirovements in the doors and sashes of carriages." Pleas : 2. Never indebted. 3. That the patent was void, whereby defendant obtained no advantage under the agreement. Issue. The patent related :— (1) to the application of elastic pads for preventing the windows of carriages from rattling ; (2) to a mode of holding a window by metal fittings, consisting of a pin and a slotted plate. The specification described the invention by reference to drawings, and stated :— " I have shown my invention as applied to railway carriage doors and window fittings, although equally applicable to the doors and windows of any other carriages, or in any position where windows and doors are subject to jar and -vibration." Claims: 1. "The construction of elastic pads as OXLFA' r, TTOLBEN. 851 herein clescribed, 2. The mode of applying vulcanized india- rubber or elastic material to sliding window frames. 3. The metal fittings and the mode of applying the same described herein." At the trial, it appeared that on 17th March, 1858, plaintiff obtained provisional protection for an invention of india-rubber pads to be applied to the windows of carriages (No. 549). On 10th Apyil, 1858, he obtained provisional protection for thi-ee heads of invention, whereof one comprised the above-mentioned india-rubber pads. The application of 17th March was thereupon abandoned, and that of 10th AjJril was carried to completion. It further appeared that defendant had made about half a dozen of the studs and plates, and that his traveller had offered them for sale to divers persons, but had not sold any. Byles, J., directed the jury that this was in point of law as much a user of the patent as if there had been an actual sale of the articles. The jury foimd : — That the elastic pads were new ; that the stud and plate was old, but that its appli- cation in the way described w^as new ; and that defendant manu- factm-ed the patented articles for sale and offered to sell them. Verdict for plaintiff, damages 50/. Leave reserved. Rule nisi to enter a verdict for defendant on the grounds (1) That the metal fittings were claimed apart from the mode of applying them, and were not new. (2) That the specification went beyond the title. (3) That the filing of the provisional specifi- cation of 17th 3Iarch, 1858, amounted to a dedication of the invention to the public, and rendered the subsequent patent void. And for a new trial on the ground of misdirection by the judge in telling the jury that the exhibition of patented articles for the purpose of obtaining orders, though none were obtained and no articles sold, was a user of the patent (but this point was given up) . Rule discharged by the Court of Common Pleas. (Erie, C..T., Byles, Keating, JJ.) Fer Erle, C.J. — The principal objection depends upon the con- 8 C. B. struction to be put upon these words : — " I claim the metal fittings ^' ' ^' and the mode of applying the same described herein as the second part of my invention." If the true construction is that the metal fittings are claimed separately from the mode of applying the same, the patent is void for want of novelty, the jury having found that the metal fittings by themselves are old, but that the mode of applying them is new. Then, are the metal fittings claimed separately ? We think not. In respect of the first part of the invention, consisting of elastic pads, and the mode of applying them, the patentee has subdivided 352 OXLF.Y V. HOLDEN. liis invention into a claim for tlie pads, and a separate claim for the mode of applying tliem. If he had meant the same with respect to his second invention he would naturally have used the same form. If " the metal fittings " are taken to mean all metal fittings consisting of two plates adjusted with stud and slot, such a claim would be futile, as plates so adjusted are notoriously old. The patentee must have intended that the patent should he valid. The second ground of objection was, that the specification claimed more than the patent. The invention specified and claimed is truly an improvement in the doors and windows of carriages, not the less because it is also applicable to other doors and windows. It seems to us reasonable that the claim should be construed with reference to the title, and confined accordingly to the doors and windows of carriages. 8 C. B. T]2e third objection was, that the provisional specification relating to the elastic pads, delivered in on the 17th of March, rendered in- operative the provisional specification delivered in on the 10th. of A])ril, and therefore rendered void the patent granted on the 10th of October and founded on the specification of the 10th of April, whicli was either void nb initio or became void on the 17th of Sep- tember, when, it is contended, the invention specified on the 17th of Marc/i, and afterwards abandoned, became dedicated to the public. But we are of opinion that a provisional specification abandoned does not become public by abandonment. The statute (15 & 16 Yict. c. 83, s. 29) authorizes the publication ; but, until that event, it is not public. Fm-thermore, although the first provisional specification may afford an objection either to receiving a second patent for the same invention or to granting a patent for the invention after the first specification has expired, there is no principle of law, and no enact- ment, making the patent void if it is so granted ; and, on the con- trary, sect. 24 enacts that the patent, dated as of the day the pro- visional specification was delivered in, shall be of the same force and validity as if it had been sealed on that day. This patent is dated as of the 10th of April. On that day the protection given under the specification of the 17th of March existed ; and the patent is valid by the operation of this section. All the objections to the validity of the patent, in om* opinion, fail. It therefore becomes unnecessary to consider whether the relation between the parties to the licence created any obstacle against the defendant as to disputing the validity of the patent. ( 353 ) Palmer v. Cooper. [A.D. 1853. 9 Ex. E. 231 ; 23 L. J., Ex. 82.] Evidence admissible under Particulars of Objections. Case for the infringement of a patent granted to plaintiff for " improvements in the manufacture of candles by gymping their wicks." Pleas: 1. Not guilty. 2. Plaintiff not true and first inventor. 3. Invention not new. 4. Specification insufficient. 5. Invention not the subject-matter of a patent. Issue. The particulars of objections, delivered under stat. 15 & 16 Vict. c. 83, s. 41, alleged prior user of candles having gymped wicks, by Messrs. Palmer, of London, by Joseph Morgan, of Manchester, and other persons similarly described. At the trial, evidence of prior user of candles with coiled Avicks was tendered, and objected to on the ground that the user of this kind of candle had not been specified in the notice, and that the place of user was not mentioned therein. Pollock, C.B., admitted the evidence. Verdict for plaintiff on first issue, and for defendants on the remaining issues. Leave reserved. Pule nisi for a new trial on the ground of the improper reception of evidence made absolute by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, Piatt, BB.) On the argument of the rule it was contended that the particulars of breaches could be called in aid of the particulars of objections; but Parke, B., said: "The plaintiff's particulars allege a user after the date of the patentJ' Per Parke, B. — The 41st section peremptorily requires that the 9 Ex. E. particulars of objection shoidd state where the invention was used, ^' " and in what manner it was used or published before the date of the patent. Per Alderson, B. — There is no statement whatever of the place in these particulars, although in one of them the parties are named, and the manner in which the invention had been used. Palmer v. Wagstaffe and Another. [A.D. 1853. 8 Ex. E. 840 ; 22 L. J., Ex. 295; 9 Ex. E. 494; 23 L. J., Ex. 217.] Sufficiency of Particulars of Objections — Evidence of Infringement. Case for the infringement of a patent (in part disclaimed) of 25th March, 1840, No. 8,445, to JF. Palmer, for " improvements in the manufacture of candles." Plea : {inter alia) Not guilty. Issue. The particidars of objections under stat. 15 & 16 Vict. c. 83, s. 41, alleged prior user of the invention by plaintiff and other G. A A 354 Palmer v. Wagstaffe and Another. persons mentioned at certain places specified, " and by candle makers generally in London and tlie vicinity thereof." Eule nisi for better particulars discharged by the Court of Exchequer. (Pollock, C.B., Alderson, Piatt, Martin, BB.) 8 Ex. E. Pe)' Aldersox, B. — A defendant may rely either on a specified P" ^^~' user by certain persons named, or on a general user by all persons at a particular place. In the former case, if he proves a user by any one of the persons named, that will support his objection ; but, if he rests his case on a general user, proof of a user by one person will not do. In fact, the plaintiff has no reason to complain of the generality of the statement, for the more general it is, the more the defendant must prove under it. The specification related (after disclaimer) to a mode of manu- facturing candles by the application of two or more wicks arranged so as to bend outwards in definite directions during the burning, and stated : — " I have observed that in consuming plaiied wicks of candles, that surface of the wick where the strands proceed upwards from the outer edges towards the centre is the direction towards which the wick bends." Then followed a description of a method of placing the wicks in situ in the empty mould, with the proper side outwards, by the aid of a wire. Claim 2. " The mode of manufacturing candles by the applica- tion of two or more plaited wicks, as herein described." At the trial, plaintiff produced a candle, purchased at defen- dants' manufactory, in which the wicks bent outwards dm-ing the burning. Pollock, C.B., left it to the jury to say whether the candle made by defendants was an infringement of plaintiff's patent. Yerdict for plaintiff. Leave reserved. Eule nisi to enter a verdict for defendants on the issue raised by the plea of not guilty made absolute by the Court of Excheqiier. (PoUock, C.B., Parke, Alderson, Martin, BB.) 9 Ex. R. Per Pollock, C.B. — I think that a patent or specification should ^' ^ ■ be construed in the sense in which the patentee intended, and that, if any expressions are ambiguous, we should endeavom' to give effect to the intention ; and, moreover, I think that every patent should be expounded favom-ably to the patentee. But we ought not to violate the obvious meaning of the language, unless it is quite clear that the patentee intended something different from that which the expressions indicate. Taking the patent to be for the mode of making the candle, if any other person can discover a method of producing the same effect by a totally different means, he has a right to do so. That Palmer v. Wagstaffe and Another. 355 being the case, the plaintiff was bound to give some evidence that the defendants had infringed the patent by making a candle in the same way. Per Parke, B. — I agree that in construing a patent a fair and 9 Ex. E. liberal construction ought to be put upon it, and that we must look to what the real intention of the inventor was. With respect to this patent, the only conclusion which I can come to is that the plaintiff claims the particular mode of making the candle, not the candle itself. . . . Then the only question is, whether the simple production of a candle with a plaited wick, which turns outwards, is of itself evidence of an infringement of the plaintiff's patent. I am of opinion that it is not, and that some evidence ought to have been given that the defendants' mode of making the candle was an infringement of the plaintiff's. Parkes V. Stevens. [A.D. 1869—70. L. E., 8 Eq. 358; 38 L. J., Ch. G27 ; L. E., 5 Ch. 36.] Buhjed-mntter of a Patent — Evidence of Infringement — Sufficienc)/ of Sj^ecif cation. Suit to restrain from infringing two patents, viz., of 26th Jioie, 1862, No. 1,876, and of 10th Oct. 1865, No. 2,615, each to J. Parkes, for "improvements in lamps." Trial before the Court without a jury of the following issues : — 1. Whether the invention was new. 2. Whether it was useful. 3. Whether it was the subject of a patent. 4. Whether the specification was sufficient. 5. Whether the patent had been infringed. The patent of 1865 related to a form of globular glazed lamp constituting an improvement on the patent of 1862. The specifi- cation. No. 2,615, stated : — " The object of the improvements is to produce a glazed lamp the frame of which shall throw little or no shadow, and yet at the same time possess the requisite strength and facilities for cleaning." The lamp was then described by reference to drawings, which showed it as being spherical in form, with three metal rings for supporting the panes, one ring occupying the middle or equatorial line, and the other two being placed near the top and bottom. The panes were segments of a sphere, separated by longi- tudinal strips of metal. The door was formed of a Hght framework of metal containing one pane of glass, and was opened by being slid on the surface of the globe so as to overlap the adjoining pane. Claim : " The arrangement and combination of parts hereinbefore described and represented in the drawings annexed in the manu- facture of railway-station and other lamps." A A 2 356 Parkes v. Stevens. It ai3peare(i that the alleged infringement consisted in the use of a globular lamp with a sliding door. Also that cylindrical lamps vdih sliding doors were in public use before the date of the patent. Yerdiet for defendant on issue as to infringement, and for plaintiff on remaining issues. 8 Eq._ Per James, Y.C. — My verdict on the first three issues is in favour ^'' ^* of the plaintiff ; but the defendant contends that the specification is not sufficient, and relies for this objection on the judgment of Lord Westbury in FoxicellY. Bostock (4 De G-. J. & S. 298), to the effect that a patent for the improvement of a machine must with sufficient distinctness describe the particular part of the machine which is alleged to be improved, and the particular improvement for which the protection is claimed. I need not say that I shoidd feel myseK bound by that decision, if I did not, which I do, most entirely concur in the judgment. It is obvious that a patentee does not comply, as he ought to do, with the condition of his grant if the improvement is only to be found like a piece of gold mixed up with a great quantity of alloy, and if a person desiring to find out what was new, and what was claimed as new, would have to get rid of a large portion of the specification by eliminating from it all that was old and commonplace, all that was the subject of other patents and other improvements, bringing to the subject, not only the know- ledge of an ordinary skilled artisan, but of a patent lawyer or agent. For example, supposing that a compensation pendulum was now for the first time invented, it would not do to patent improvements in clocks in general terms and give a specification of the whole machinery of a clock, introducing somewhere in the course of the description the mode of making a compensation pendulum, and then end by claiming the arrangement and com- bination aforesaid. He must say expressly, " I claim the invention of a compensation pendulum and make it thus." But I am of opinion that that case does not apply to or govern such a case as the present. After all, the question of sufficiency of specification is not a question of law ; it is a question really of fact in each particular ease. In this case, I am of opinion that the patentee has a right to have his specification of 1865 read with his specification of 1862; and, reading them together, I do not think any maker of lamps would have any substantial difficulty in ascertaining what was claimed under the general description of the " arrangement and combination of parts hereinbefore described, &c." But the patent being for the arrangement and combination of Parkes v. Stevens. 357 parts so as to form an entire lamp, and not being for, or claiming to be for, any particular part, the last question arises, is the intro- duction into a lamp (which is not alleged in any other respects to have adopted any part of the plaintiff's arrangement and com- bination) of a sliding door an infringement? The plaintiff's counsel have contended that it is, on the authority of the case of Lider v. Leather (8 E. & B. 1004). . . . The authority of this ease has been pressed upon me as if it really established this, which would be a most startling proposition, that a patent for a combi- nation or arrangement would be a distinct patent for everything that was new and material and that went to make up the combina- tion. The marginal note, if read hastily, is calculated to give some colom' to that contention. But if the judgment be read, it will be found to give no warrant whatever for such, I must call it, baseless notion. The law is summed up thus : — The cases establish that a valid patent for an entire combination for a process gives protection to each part thereof that is new and material for that process, which is really nothing more than stating in other words that you not only have no right to steal the whole, but you have no right to steal any part of a man's invention ; and the question in every case is a question of fact, — is it really and substantially a part of the invention ? But the principle of that case has no application whatever to the 8 Eq. present case. Even if there had been any sufficient novelty or P" merit in the substitution of a sliding door, I should have held that that was no part of an invention for producing " a glazed lamp, the flame of which shall throw little or no shadow, and yet at the same time possess the requisite strength, and also facilities for lighting and cleaning." The sliding door has nothing to do with the shadow, has nothing to do with the strength, and gives no facilities for lighting or cleaning. . . . That ought to have been the subject of a distinct claim if it was intended to have been, and could have been, protected. But I am clearly of opinion that there can be no patent right in the substitution of a slide for a hinge. . . . It was hardly contended before me that the introduction of that alone would have been sufficient to sustain a patent ; but it w^as gravely contended that because it was, as alleged, a novel part of a novel combination and arrangement, it was protected. To say that a patent for an entire combination is a vahd patent for a part, when that part would not of itself have been patentable, is in my judgment a reductio ad absurdum of the supposed principle in Lister v. Leather. My verdict on the issue as to infringement will be for the defendant. 358 Parkes v. Stevens. 5 Ch. Motion for a new trial by way of appeal. Defendant also moved for a new trial as to the validity of the patent. Both motions dis- missed, but without costs. 5 Ch. Fer Lord Hatherley, L.C. — Ks> to the validity of the second ^' ' patent, which has been disputed, there is a clear line marking off the old from the new. . . . Then as to the other issue, whether the subject-matter of the patent is new, I think, from the exhibits, as well as from the evidence, that this was a new and ingenious method of making a lighter description of lamp, both lighter in appearance, and lighter in the sense of transmitting light, than any which had been previously contrived. Then, as regards the door, the question arises whether there is an infringement. ... In order to arrive at a sound conclusion on that branch of the subject, we must consider whether this door is really new ; and the best way of testing that, no doubt, is that which the Yice-Ohancellor has adopted — by asking whether, upon the evidence, it could by itself have been the subject of a valid patent. ... It was argued before me that the sliding door was in itself a novelty as applied to a spherical lamp ; but many instances were given of glass in the shape of a cylinder having been made to slide over glass, and it is impossible to say that a sliding door can be the subject of a patent because it is spherical and not cylindrical. I think the second patent is good because the sliding door is not claimed as a novelty, and the patentee only claimed to use a well-known mode of closing an aperture as the best means of closing the doorway in his lamp, and I think that the sliding door is not new. The Patent Bottle Envelope Company v. Seymer. [a.d. 1858. 28 l. j., c. p. 22 ; 5 c. b., n. s. 164.] Evidence of Infringement — Suhject-matter of a Patent. Case for the infringement of a patent of 29th Aug. 1854, No. 1,892, to J. Seithen, for "improvements in the manufacture of cases or envelopes for covering bottles." Pleas : 1. Not guilty. 6. That the said invention was not an invention for improvements in the manufacture of envelopes for bottles. Issue. The patent related to a method of forming cases of rush or straw for the protection of bottles. For this purpose equal lengths of straw or rush were tied together at one end, and passed over the mould of a bottle. The material was then tied tightly round the mould at the part intended to form the base of the envelope. A ring, actuated by a treadle, and large enough to slide over the material tlius tied down, was raised from below so as to bend the Patent Bottle Envelope Company v. vSeymer. 359 straw back and allow of its being tied again at the extreme end above the neck. The specification described the operation, and con- tained a drawing of the apparatus. Clami : — " The combination of mechanism, and the making of envelopes for bottles as herein described." At the trial, it appeared that the alleged infringement consisted in the making of straw envelopes for bottles by tying together lengths of straw, placing the same on a monld resembling a bottle, and interweaving them by passing a string over and under alternate portions. Willes, J., was of opinion that there was no evidence of infringement, and directed a nonsuit. Leave reserved. Rule nisi to set aside the nonsuit discharged by the Com-t of Common Pleas. (Cockbum, C. J., Williams, Crowder, Willes, JJ.) Per Willes, J. — We are of opinion that this rule ought to be 28 L. J. discharged. The plaintiffs' specification clearly shows that the P- ^*- patent is not for bottle envelopes, but for a mode of making them. The defendant's method resembles the plaintiffs' in the x^roduct, which is not the subject of the patent, and in one material parti- cular only — viz., the use of the model or mandiil ; and the question is, whether such use constitutes an infringement of the plaintiffs' patent. The fact that the model or mandrils constitutes part only of the plaintiffs' process does not of itself affect the question. The infringement of any part of a patent process is actionable, if the part of itself is new and useful, so that it might be the subject- matter of a patent, and is used by the infringer to effect the object, or part of the object, proposed by the patentee. The question, therefore, is, whether the plaintiffs could have taken out a patent simply for applying a model or mandril in the form of a bottle, or indeed a bottle itself, in making envelopes for bottles. We are of opinion that they could not. The use of a model or mandril for producing given forms of pliable materials was admitted at the trial. . . . Such use was part of common knowledge, and a model or mandril similar to that of this patent was an ordi- nary and well-known tool. . . . The application of a well-known tool to work previously untried materials, or to produce new forms, is not, in our opinion, the subject-matter of a patent. Indeed, to hold the contrary might tend to produce oppressive monopolies in the api^lication of old and well-known implements to new materials, without any further novelty or merit than the discovery of the material, or the form into which it is to be worked. Such a discovery is not, in our opinion, one of a new " manufacture " within the statute of James I- ( 360 ) Patent Marine Inventions Company v. Chadburn. [A.D. 1873. L. E., 16 Eq. 447.] Practice in Patent Suits as to Trial of Issues. Siiit to restrain from infringing a patent. The parties had agreed upon certain issues ; hut plaintiffs desired that the issues should he tried either hefore the Court itself with a jury, or before a Coiu't of Law, and defendants opposed a motion to that effect. Lord Selborne, L.C, ordered a trial hefore the Court without a jmy, and said : — " My opinion is, like that of Lord Cairns (see Borill V. Hitchcoch, L. R., 3 Ch. 417), that in these patent cases, where all the ordinary issues are raised, and nothing special appears to show that the assistance of a jury is wanted on some mere question of fact properly so called, trial hy jury is not ordinarily the most convenient mode of trial. It is to he observed that such cases almost always involve questions of law and fact, not only mixed, but mixed in such a way as makes the extrication of them extremely difficult ; secondly, that very often much must depend upon the construction of documents, as to which a jury must take their direction entirely from a judge ; thirdly, that much of the evidence, or that which is permitted to be given as evidence in such cases, is argumentative and relative to matters of opinion, so as to make it extremely hard, even for the judge himself, to keep it under proper control ; and lastly, that even the questions of fact are often, to a very great extent, questions of science, which, to say the least, are as likely to be as well decided by a judge as by any juiy. It very rarely happens, if it ever does, that in such cases the practical work is not done by the judge. It very rarely happens, if it ever does, where the thing is not reduced to a narrow question of fact, that the jury do not simply follow, after a very elaborate discussion of the case by the judge, the direction of the judge. Patent Typefounding Company v. Richard. [A.D. 1859. Johns. 381 ; 6 Jur., N. S. 39.] Pleading — Demurrer — Sufficiency of Specification. Suit to restrain from infringing a patent of 7th April, 1854, No. 817, to J. R. JohuHon, for " improvements in the manufacture of type." The specification stated : — " The object of my invention is to make type harder, tougher, and more enduiing, by emplo_}dng tin in large proportions with antimony, and to greatly reduce or whoUy Patent Typefounding Company v. Richard. 361 omit the use of lead. The best proportions I am acquainted with are 75 of tin and 25 of antimony ; but this may be to some extent varied ; and, when lead is also used, I find that it must not exceed 50 parts in 100 of the combined metals employed." There was no separate claim. Demurrer, on the ground that the specification was bad for uncertainty, overruled. Costs to be costs in the cause. Per Wood, V.C. — What I have to determine is, whether this Johns, specification is so clearly and manifestly bad, that no explanations P" by workmen or other experts, to whom the specification must be considered as addi^essed, could induce the Court to hold that this is a new invention, set forth with sufficient clearness and precision. , . . What the patentee considers the best proportions (and he is bound, according to the authorities, to state this) is 75 of tin to 25 of antimony ; but this, he says, may be to some extent varied. A person who takes out a patent for an invention which consists in the use of certain proportions is not, in my opinion, bound to say, " I limit my claim to these precise proportions." Even if the patentee had, in terms, absolutely tied himself down to 25 per cent, as a minimum in the place of 1 or 2 per cent. — supposing that to be the proportion previously used— a stranger would not be allowed to evade the patent by throwing in 23 or 24 per cent. It will be for experts in the trade to say whether the production of a tough metal by using a large proportion of tin is a useful practice ; whether anything of the kind was ever done before ; and whether a variation from the given proportion to others slightly different would not be a colom-able evasion. These are all questions for a jmy. The only opinion I express is, that the specification is not void on the face of it. Patent Typefounding Company v. Walter. [A.D. 1860. Johns. 727.] Inspection and Ddivery of Samples — Laches — Practice in Patent Suits. Suit to restrain from infringing a patent for improvements in the manufacture of type. Application to inspect certain type, and take samples. It appeared that the Com-t of Exchequer (see 5 H. & N. 192) had refused to grant such permission ; also that plaintiffs had lain by for nearly a year in the prosecution of the suit. Order made for inspection and dehvery of samples. Costs to be costs in the cause. Per Wood, V.C. — The jurisdiction of this Com-t to order inspec- Johns, tion, and, if necessary, the taking samples for the purpose of a suit ^" ' here, has scarcely been contested. If a precedent is wanted, the 362 Patent Typefounding Company v, Walter. case of Rmsell v. Cowh-y (1 Webs. Pat. Ca. 457) is in point; There specimens were allowed to be taken away, tbough the necessity for doing so was scarcely so great as in the present case. It \^^as said that, if plaintiffs had come for an interlocutory injunction sim23liciter, without asking for any discovery, it would have been refused on the ground of delay, whatever case they might have made out as to the infringement ; and therefore, it is said, there can be no inspection for the purpose of supporting such an application ; and there is much weight in this argument. But these cases of patents are peculiar. Relief is given in two shapes. It may be by interlocutory injunction in the first instance. But much more frequently, unless the case is of the strongest possible kind, it is by merely putting the matter in train for determination of the right at law ; and then, at the hearing, a perpetual injunc- tion is granted, upon the plaintiff succeeding in the action at law. Power has been conferred upon the Common Law Courts to grant an injunction pending an action at law. The words of stat. 15 & 16 Yiet. c. 83, s. 42, are, "in any action; " and this seems to have been construed by the judges as limited to the pendency of an action ; but whether they have been right or not in their view of the limits of their jm'isdiction, the jurisdiction of this Court is imaffected. With respect to obtaining a perpetual injunction, the rule is established in Bacon v. Jones (4 Myl. & Cr. 433), that in patent cases, unless the plaintiff takes steps to bring the matter before the Court by motion before the hearing, he will not in general be entitled to a perpetual injunction at the hearing. He is therefore not at libei-ty to wait for the hearing, but the Court requires him to place the matter in course of investigation at the earliest possible period. Patterson v. The Gas Light and Coke Company. [A.D. 1875—76. L. E., 2 Ch. D. 812; 3 App. Ca. 239; 45 L. J., Oh. 8i3; 47 L. J., Ch. 402.] Disqualification from becoming a Patentee — Novelty of Invention — Subject- matter of a Patent. Suit to restrain from infringing a patent of 9th March, 1872, No. 730, to R. H. Patterson, for "improvements in the purification of coal gas." The patent related mainly to the purification of coal gas fi'om sulphur in other forms than that of sulphuretted hydrogen, and also to a method of working lime purifiers, wherebj' the carbonic acid present in the gas was eliminated by the action of the first purifier of the series. Patterson v. The GtAs Light and Coke Company. 363 The specification stated that one process consisted in the employ- ment of a sulphide of calcium piirifier for the purpose of absorbing sulphui' in other forms than sulphuretted hydrogen. A second purifier was also to be used, containing fresh lime or oxide of iron, which would arrest any sulphur compounds passing over from the first vessel. The second process consisted in restoring the sulphide of calciimi in the first vessel to its normal state after it had become saturated with sulphiu\ For this purpose gas, still contaminated with car- bonic acid, was passed into the purifier and expelled sulphiu' in the form of sulpliui-etted hydrogen, by reason of the greater affinity of carbonic acid for lime. The sulphuretted hycbogen passed into subsequent purifiers, and converted the lime therein into sulphide of calcium, rendering each in its turn capable of absorbing sulphur compounds other than sulphm^etted hydi'ogen. The patentee stated :— " I have been the first to carry into effect the principle of excluding carbonic acid from lime pmnfiers. I have also been the first to turn to account the greater affinity which car- bonic acid has for lime as compared with suli^huretted hydrogen." Claims.— I. "The employment of sulphides of calcium in separate purifiers, as a means of purifying coal gas from sulphiu' existing in other forms than that of sulphm-etted hydrogen. 2. "A method or system of employing lime purifiers in the manner hereinbefore described, whereby the contents of all the said purifiers, or any required number of them, can be converted into sulphides of calciimi, and also (if requii'ed) be maintained in that condition." The remaining claims were imimportant. The issues raised were those of novelty and utility of plaintiff's improvements, and defendants submitted that it was not competent for plaintiff to make use of the knowledge acquired by him as a public officer in the discharge of his duties, for the purpose of taking out a patent. At the hearing it appeared that plaintiff was one of thi-ee gas referees appointed by the Board of Trade under stat. 31 & 32 Vict. c. 125. On 31st Jan. 1872, the referees signed a report entitled, " Eeport on sulphm- purification at the Beckfon Gasworks by the gas referees." This document was presented to the Board of Trade on 27th March, 1872, and was soon afterwards communicated to defendants, who held the gas works referred to in the report. On 9th March, 1872, plaintiff applied for the patent, dated and numbered as above, and claimed as his invention the very processes 364 Patterson v. The Gas Light and Coke Company. wliich were pointed to in the report of the referees as competent to remedy defects then existing in the purification of gas. Both parties went into evidence as to the novelty and utility of plaintiff's improvements, and as to their anticipation by defendants in their own works. Bacon, V.C, granted an injunction with costs. Defendants appealed, and the Com-t of Appeal (James, L.J., Baggallay, J. A., Lush, J.) dismissed the bill Avith costs, including the costs of the appeal. 2 Ch. D. Per James, L.J. — Although it is not necessary for the determina- P' ^^'* tion of this suit to pronounce any final decision on the point, we deem it right to say that we think it, at the very least, very questionable whether it can be competent for a member of an official commission or committee to take out a patent for the subject-matter of their official investigation, for the results of such investigation embodied in their official report to the public authorities, or to treat as piratical infringers those who have followed the suggestions and directions contained in such report. The suggestion that the report was kept back for the purpose of enabling one of the referees to apply for a patent is not entitled to much favour. It is to be borne in mind that the report then made belonged absolutely to the State. . . . The consideration for every patent is the communication of useful infoi-mation to the public. AVhat consideration is there when the information was abeady the property of the State ? The specification of the patent claims five different matters. If one of them is bad, as there has been no disclaimer, of course the patent must fail, and the defendants insist that every one of them is bad. [His Lordship read the 1st claim, and continued] — 2 Ch. D. There is really in this nothing but the enunciation of a chemical p. 833. ^^^^^1^ ^j^^^ p^g sulphides of calcimn will absorb the sidphur compounds. The plaintiff believed that he had discovered that chemical truth, although it had been taught for many years in many books, and was well known to chemists. There is no inven- tion of any particular process or means of employing the pure sulphide of calcium. If pure sulphide of calcimn is to be used it must be used in some separate holder of it, and the thing holding it would be a separate pmifier, and there is nothing, therefore, in any previous part of the specification to limit the universality of the claims to the employment of sulphides of calcium for the removal of sulphur in other forms than sulphuretted hych'ogea. It is obviously impossible to support such a claim as that. Patterson v. The Gas Light and Coke Company. 865 The great controversy of fact and argument has related to the second head of claim, which is as follows : — [His Lordship read the 2nd claim, and continued] — There is in that no suggestion of any new apparatus— of any 2 Ch. D. new process. There is no device or scheme of any kind. Lime purifiers in succession were in general, almost universal use, wherever lime could be freely iised. The gas entered one, passed from that to another, and then generally, or sometimes, to a third ; the gas, partly pmified in the washers and scrubbers, passed through the series of lime purifiers into an oxide of ii-on purifier. That was the process before, and that is to remain the process after and under the plaintiff's patent. What he claims to have discovered is, that if the carbonic acid, which is the first thing taken up by the lime, is not wholly taken up at the beginning, and is allowed to enter the last purifier or purifiers, it in fact poisons the latter, de- composes the sulphide of calcium already formed, disengages the other sulphur absorbed by the sulphide, and of course fills the gas again with the sulphur impiuities which had been removed. . . . This may be a direction and instruction of the greatest possible value and utility, but it is utterly impossible to make such a direc- tion and instruction, however valuable, the subject of a patent. How could an infringement of such a patent be predicated ? . . . Could the Court say in words (if not in words, could it in effect say). We restrain you from working your lime-purifying process in any such way as will not allow the carbonic acid to enter the last pmifier in sufficient quantity to do substantial mischief, or in less quantity on an average than it used to do in former times on an average ? No one has a right to prevent a workman from using care to keep his tools in the most efficient state. No one has a right to prevent a manufacturer from cleansing his vessels and throwing away the useless contents whenever he likes, or to ask him his motives or intentions in doing so. Appeal to the House of Lords when the decree appealed from 3 App. Ca. was affirmed, and the appeal was dismissed. Fer Lord Blackburn. — The consideration for a patent is the 3App. Ca. communication to the public of a process that is new. In Hindmarch ^' on Patents (p. 33) it is laid down that " if the pubHc once become possessed of an invention by any means whatever, no subsequent patent can be granted for it, either to the true or first inventor himself, or to any other person, for the public cannot be deprived of the right to use the invention, and a patentee of the invention could not give any consideration to the public for the grant, the 366 Patterson v. The Gas Light and Coke Company. public already possessing everything that he could give." This is, in my opinion, a correct statement of the law. It is not necessary that the invention should be used by the public as well as kno^vn to the public. If the invention and the mode in which it can be used has been made known to the public by a description in a work which has been publicly circulated ^teacl V. Wi/Iiams (2 Webs. E. 126) ; or in a specification duly em-olled, Biifih v. Fox (5 H. L. Ca. 707) ; Bcffs v. Ilenzies (10 H. L. Ca. 117) ; it avoids the patent, although it is not shown that it ever was actually put in use. It is true that the latter case establishes that " an antecedent specification ought not to be held to be an anticipation of a subsequent discovery unless you have ascertained that the antecedent specification discloses a practicable mode of pro- ducing the result which is the effect of the subsequent discovery : per Lord Westbury, C. (10 H. L. Ca. 154). Tlie appellant appears, from what he says in his specification, to be of opinion that, if he first discovered the theory and reason of that which had before been done empirically, he is entitled to a patent. I need hardly point out that this is a mistake. 3 App. Ca Per Lord Cairns, L.C. — I do desire to say that I entertain the p. 247. ^-r^^.y strongest opinion that, looking at the position of the appellant in this case as one of the referees under the Act of Parliament, I hold that it would be perfectly impossible that there should have been inserted in a report of the referees, prepared and put in type and dated on the 31st Jan. 1872, a statement of a process actually adapted for the purification of gas, without the public becoming the actual proprietors of the statement, and of any novelty, if there was novelty, in the invention which was so described. 3App. Ca. Per Lord Gtordon.— The appellant here was, in my view, a p. 251. public servant, working for the benefit of the public, and bound to give the public all the information and assistance in his power. Any discovery made by him in the coui^se of his public duty was, I consider, the property of the public, and he was not entitled to apply it to his own private advantage. Penn v. Bibby. [A.D. 186G. L. E., 1 Eq. 548 ; L. E., 2 Ch. 127 ; 36 L. J., Ch. 455.] Particulars of Ohjedions — Novelty of Invention— Variance hetween Complete and Provisional Specifications— Suhject-raatter of a Patent. Suit to restrain from infringing a patent of 2nd Oct. 1854, No. 2 114 to J". Pont, for "an improvement in the bearings and bushes for the shafts of screw and submerged propellers." Penx v. Ribby. 367 Defendant filed amended particulars of objections, alleging prior user of the invention " in the following, among other instances, viz., &c." The words " among other instances " were objected to, hut were allowed to remain. Fer Wood, V.C. — I think these words " among other instances " may be permitted to remain, in order to give the defendant the benefit of a general saving, and liberty to a^^ply for leave to give particulars of other instances of prior user, if and when he may find them. Defendant subsequently applied for leave to specify seven instances, of prior user, which was granted on terms that he paid the costs of the application ; any additional costs consequent thereon being reserved. The patent related to the construction of hard wood bearings for the shafts of screw propellers. The provisional specification merely stated : — " This invention consists in emj)loying wood in the con- struction of the bearings and bushes for the shafts of screw and submerged propellers." The complete specification described the manner of performing the invention by reference to drawings, and stated (in substance) : — The inner surfaces of the bearings for a propeller shaft are grooved to receive strips or fillets of wood, which project beyond the inner surface of the metal bearings, and allow the water to circidate freely in the channels so formed. The wood is, by preference, lUjnum vitw, the grain being either longitudinal with the fillets, or at right angles to the bearing surfaces thereof. In other words, the bearings are not continuous metal surfaces, as previously constructed, but a series of wooden fillets or ridges, having water spaces between them, which supjiort the rubbing action of the shaft. It w^as further stated that the several pieces of wood employed in a bearing might be inclined to the axis instead of parallel to it, as shown. AJso, that it was not essential that the fillets of wood should be fitted in the interior of fixed metal bearings, as a like effect w^oidd be obtained if they were attached to the shaft and revolved therewith in metal bearings in the manner shown in figures 4 and 5 of the drawings. Claim : " The employing of wood in the construction of the bearings and bushes for the shafts of screw and submerged pro- pellers, as herein described." Hearing of the suit. The following questions of fact were tried before the Court, without a jury: — 1. "Was the invention new at the date of the patent ? 2. Was the specification sufficient ? 3. Was the invention the subject-matter of a patent ? 4. Had 368 Penn v. Bibby. the defendant infringed ? Defendant gave evidence in accordance ■v^dth an allegation in the particulars of objections, that wooden bearings had been applied in Mai/, 1851, to the propeller-shaft of the screw-steamer Livonw and used in a voyage. Plaintiff then proposed to call witnesses in reply. Wood, V.C, held that the evidence was admissible. After evidence of plaintiff in reply had been given, and counsel had summed up defendant's evidence, the Com-t was asked to allow defendant to adduce further evidence to contradict that of plaintiff in reply. Wood, Y.C, refused to admit such evidence, and found in the affirmative on each of the above issues. Appeal to the Lord Chancellor for a new trial on the grounds, (1) that the verdict was against the weight of evidence ; (2) that there was a variance between the provisional and complete specifi- cations ; (3) that the invention was not the subject-matter of a patent. Motion refused with costs. Lord Chelmsford, L.C, said that, in dealing with the finding of the Vice- Chancellor upon the first question, he regarded himself as placed precisely in the situation of the judges of the Courts of Common Law when a rule is obtained to set aside the verdict of a jury. They do not consider what would be the proper view of the case if originally presented to them, but merely whether there is sufficient evidence to warrant the verdict. Nor had he ever known an instance in which there was evidence on both sides, and the judge who tried the cause was satisfied with the verdict, where a new trial was granted. His Lordship came to the conclusion that, on the evidence, the Yice-Chancellor was justified in finding in favom- of the novelty of 2 Ch. the invention, and continued : — " The defendant contends that the P- ^"^*^- patent is void because there is a variance between the title and the specification, or between the provisional and the complete specifica- tions. It is said, on the part of the plaintiff, that there is no issue to raise this question ; and that the correct mode of tendering such an issue at law would have been either by plea of non concessit, or by expressly pleading the variance between the title and the specifica- tion. I think, however, that with perhaps a little license of con- struction, the second issue may meet the case. The objection may be thus stated : — The provisional specification describes the nature of the invention, in the most general terms, to consist in employing wood in the construction of the bearings and bushes for the shafts of screw and submerged propellers. The complete specification describes a pariioular mode of employing wood to prevent the parts Penn i\ BiBBY, 3 GO of a propeller shaft, whicli are witliiu the bearings, from coming in contact with tlie metal of the bearings, and to cause them to revolve against pieces of wood fixed in such a manner as to admit of water flowing freely between the pieces of wood, and between the inner surfaces of the metal bearings and the ou.ter sm-faces of the pro- pelling shaft. The claim at the end of the specification is, *' the employing of wood in the construction of the bearings and bushes for propeller shafts, as herein described." If the words " herein described " are to be disregarded, the patent is void, as the claim will then be for the emplojnnent of wood in every possible way in the bearings and bushes of propellers ; and, if these words limit the claim to the precise description in the specification, this is not what is described in the provisional specification, and the plaintiff has therefore obtained a patent for one thing and specified another. This is the defendant's argmnent. There can be no doubt that the claim in the specification must be read with the limitation produced by the words " herein described," and that the question thereupon arises, whether this occasions a departure from the provisional specification so as to render the patent void. It seems clear that the office of the pro\dsional specification is to 2 Ch. describe the nature of the invention, not with minute particularity, but with sufficient precision and acciu^acy to inform the law officer what is to be the subject-matter of the patent. It is not at all necessary that the provisional specification should describe the mode or modes in which the invention is to be worked or carried out. That is left to the complete specification. Nor is it at all necessary that the complete specification should 2 Ch. extend to everything comprehended Avithin the provisional specifi- ^' cation. . . . It is clear, therefore, that unless the complete specifi- cation in this case claims something different from the provisional specification, the objection to the patent under consideration cannot prevail. But there is not the slightest foundation for the objection in point of fact, and each specification appears to me faithfully to fulfil its own office. But it was said that one part of the complete specification went 2 Ch._ beyond the provisional, and extended to something which could not ^' be included in it, viz., the application of wood to the shaft so as to revolve therewith, the provisional specification confining the employment of wood to the bearings and bushes. If wood applied in this manner to the shaft may be properly called a bearing, then there is no excess in this part of the specification. But if, strictly G. B B 370 Penx v. Birby. speaking, this application of wood would not come within the description of a hearing, then the answer to the ohjeetion is, that it is not claimed, the claim heing limited to the employment of wood in the construction of hearings and hushes. There is, therefore, no departure from the provisional specification in the complete specification, and the finding of the Yice-Chancellor upon this issue was right. The last question raised was upon the finding that the invention was the proper subject-matter of a patent. To this it was ohjeetecl that the finding is erroneous, because the alleged invention was merely a new application of an old and well-known thing. It is very difficult to extract any principle from the various decisions on this subject which can be applied with certainty to every case ; nor indeed is it easy to reconcile them Avith each other. The criterion given by Lord Campbell in Brooli v. Aston (8 E. & B. 485) has been frequently cited (as it was in the present argument) , that a patent may be valid for the application of an old invention to a new purpose, but to make it valid there must be some novelty in the application, I cannot help thinking that there must be some inaccuracy in liis Lordship's words, because, according to the proposition, as he stated it, if the invention be applied to a new purpose there cannot but be some novelty in the application. 2 Ch. Ill every case of this description one main consideration seems to p. 136. ]-,g^ whether the new application lies so much out of the track of the former use as not natm-ally to suggest itself to a person turning his mind to the subject, but to require some application of thought and study. Now, strictly applying this test to the present case, it appears to me impossible to saj^ that the patented invention is merely an application of an old thing to a new purpose. The only examples of old use alleged by the defendant were in grindstones and water-wheels. No doubt these have what may be called bearings ; but they are of a totally different character, and for a totally different object, from the bearings patented. It is difficult to believe that bearings of this description could ever have sug- gested the application of wood to the bearings of screw propellers in the way described in the patent. It is, to my mind, not merely a different application, but something in itself essentiallj^ different. It had been found that, in the mode of constructing screw pro- pellers by making metal work upon metal, they soon wore out, and occasioned a violent irregular motion on the vessel. Mr. Peini devised the plan of placing fillets of wood upon the inner surface of the bearings, so as to prevent the shaft coming in contact with Penn r. BiJMJY. 371 the metal ul the beaiings, and so as to admit of tlie water flowing freely between the shaft and the inner surfaces of the metal bearings, thereby keeping the wood constantly lubricated. The success of this invention has been proved in a remarkable manner. It would be an extraordinary fact if an invention of this kind, so long wanted, and of such great utility, should have been lying in every- body's way who knew an}'thing of the construction of a water- wheel or grindstone, and yet should never have been discovered. Penn v. Bibby ; Penn v. Jack ; Penn v. Fernie. [a.d. 1860. L. E., 3 Eq. 308; 36 L. J., Ch. 277.] Practice as to Damages and Costs in Patent Suits, These causes were now taken together. Plaintiff asked for an injunction, for an account against Mr. Jack, and for an inquiry as to damages against the other two defendants. Injunction granted in each case mth costs. The account being waived, an order for an inquiry as to damages was made against all the defendants. Per Wood, Y.C. — With regard to the damages, it has never, I think, been held in tliis Coiu-t that an account, directed against a manufactiu-er of a patented article, licenses the use of that article in the hands of all the purchasers. The patent is a continuing patent, and I do not 'see why the article should not be followed in every man's hand, until the infringement is got rid of. So long as the article is iised there is continuing damage. Application for full costs, as between solicitor and client, imder stat. 15 & 16 Yict. c. 83, s. 43, refused. Application, on behalf of defendant Bibby, to postpone the decree imtil after the decision of the House of Lords on the appeal, also refused. The Coui't declined to enforce an offer made by Bibby to pay plaintiff the same royalties as were paid by others, not infringers. Per Wood, V.C. — My reason for not giving the costs, as between solicitor and client, is this : I consider that stat. 15 & 16 Vict, c. 83, s. 43, means that when a second trial for infringement takes place, the certificate by the judge of the first action is produced in evidence on the second trial, and the extra costs are given to afford a complete indemnity. In BavcnpoH v. By lands (L. E., 1 Eq. 302) I gave the certificate for costs afto- the first trial, but I have not done so iqmi the first trial. With respect to the postjjonement of the decree, I consider it a matter of right that the plaintiff should have a decree at once and not be delayed. BB 2 372 Penn v. Bir.r.Y ; Penn v. Jack ; Penn v, Fernie. As to the royalties, I cannot compel the plaintiff to accept the same royalty from these defendants as he receives from others. I cannot in the decree do less than give the plaintiff his full right, and I cannot bargain for him what he may choose, or may not choose, to do. There will he liberty to apply generally. Penn v. Jack. [A.D. 1867. L. E., o Eq. 81 ; 37 L. J., Cli. 136.] Assessment of Damages in a Patent Suit. After decree for injunction as above mentioned, and order that an inquiry be made as to what damages plaintiff had sustained " by reason of the user and vending of the said invention," plaintiff claimed to be compensated for the loss of profit of which he had been deprived as a manufactui'er in consequence of defendant having wrongfully fitted the invention to certain vessels. Claim disallowed, with costs of the hearing. Per Wood, Y.C. — There are three portions into which the relief which has been obtained by the plaintiff in this suit may be divided. The first is in respect of the vexation and annoyance of a lawsuit, for which he is entitled to his costs. Secondly, he is enabled, for ever, to restrain the defendant from again infringing his patent ; and hence he is in a condition, for the future, to make any bargain he pleases, to any amount. Then the third branch of relief is that which is granted in the shape of damages for the loss which the plaintiff has actually sustained by the conduct of the defendant, irrespective of the vexation and expense of a lawsuit. With reference to this I have to ask myself, what would have been the condition of the plaintiff if the defendant had acted properly instead of acting improperly ? That condition, if it can be ascertained, "svill, I apprehend, be the proper measure of the plaintiff's loss. Now if the plaintiff's case had been one of a patentee who had never granted a licence, and had always remained his own manufac- turer, the question Avould have been one of great difficulty ; and I do not hesitate to say I should not have attem^^ted to grapple with it, but I should have sent it to a jury to settle the amount of damages. But here is a case where the patentee is not in the habit of manufacturing the articles to which the patent applies, or, at all events, very seldom does so ; but he has been in the habit of grant- ing, not general shipbuilders' licences, but a particular licence of 2.S. 6d. per horse-power for each ship which is about to be built wiih. his invention. The defendant accordingly, if he had applied, as he ought to have applied, to the plaintiff, would have had to pay Penn v. Jack. 373 2.5. G(/, per liorse-power for every ship wliicli lie built witli the plain- tiff's invention. That is the amount Avhich the ]3laintiff got from everybody else ; and it does not appear to me that he is entitled to anything more from the defendant. It has been contended that the plaintiff has lost more than this ; he is said to have lost a profit besides. But he has himself estimated the profit at 2s. 6(L per horse-power. His damage must be confined to 2s. 6f/. per horse- power for those ships for which he has not been paid. PiDDING V. FeANKS. [A.D. 1849. 1 Mac. & G. 56 ; 18 L. J., Ch. 295.] E<2 uita lie Ass ign men t — Estoppel. Suit to restrain from infringing a patent for manufacturing coffee. It appeared that plaintiff had granted, by deed, to one S., a defendant in the suit, an exclusive licence to use the patent, S. thereupon made an equitable assignment of all his interest imder the licence to the other defendants. Knight Bruce, Y.C, having directed an action at law, plaintiff now sought to put the defendants, other than S., on terms not to dispute the validity of the patent. Application refused. Per Lord Cottexham, L.C. — Ai-e the defendants not to be at liberty to say, we have bought the patent, and paid for it, but we do not intend to use it ? They are mere equitable assignees, and why should they be deprived of the right which every stranger has of disputing the validity of the patent ? PiGGOTT V. The Anglo-American Telegeaph Company. [A.D. 1868. 19 L. T., N. S. 46.] Practice in Patent Suits — Inspection. Suit to restrain from infringing a patent for " improvements in the manufactm^e of submarine telegraph cables, and in the method of giving signals." Plaintiff' applied for an inspection of the mode of working a certain cable in possession of defendants. Ap- plication opposed on the ground that the inspection would disclose important secrets, and might expose the company to loss and injury. Giffard, V.C, refused the application, and said : — The Court ought to be satisfied of two things— that there was really a case to be tried at the hearing of the cause, and that the inspection asked for was of material importance to the plaintiff's case as made out by his e\4dence. The plaintiff could have no difficulty in proving the nature of the cable used by the defendants ; in fact, a portion of it had been produced in the arguments, and the difference between it and that of the plaintiff was apparent. ( 374 ) Platt v. Else. [A.D. 1853. 8 Ex. E. 364; 22 L. J., Ex. 192.] Pleading non concessit. Case for tlie infringement of a patent. Rule nisi for leave to plead )wn concessit (Martin, B., having refused leave at Chambers) made absolute by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, Martin, BB.) s Ex. E. Dm-ing the argimient Pauke, B., said :— The law is thus stated p. 366. .^^ Jli/iide's case. (4 Eep. 71 b.) So against the King's letters patent under the great seal showed in Coui-t, none can deny them, but lion concessit per pnvd. literas patenics is a good plea ; for although there l^e such letters patent, yet perhaps nothing pass by them ; and so per consequens non concessit. Plimpton v. Malcolmson. [A.D. 18Y5. L. E., 3 eh. D. 531 ; 44 L. J., Ch. 257; 45 L. J., Cli. 505.] Practice in Patent Suits— Interlocutory Injunction— Evidence of Prior Publi- cation — Sufficiency of Specificatioii. Suit to restrain from infringing a patent of 25th Aug. 1865, No. 2,190, to A. V. Neicton, for " improvements in the construction of skates" (a communication from abroad). The pleadings are not stated in the report, but the issues raised were those of novelty, utility, and sufficiency of specification. Motion for an interlocutory injunction. There was no evidence to prove active user of the invention for any length of time. Injunction refused, but defendant to keep an accoimt. 4 1 L J P^^' Jessel, M.R. — ^A person applying for an interlocutory in- 1'- 258. junction on the ground of quiet enjojanent of his patent for a number of years, must show that there has been active user of the invention. There was no evidence of active user for any number of years in this case. . . . Where it appears to the Court that there is a serious question to be tried at the hearing, it is not open to the Com^t to grant an injunction on an interlocutory application, and I think that the rule laid down by Kindeksley, Y.C, was a sound one, namely, to avoid as far as possible expressing an opinion upon the merits of the case upon an interlocutory application. 3 Ch. D. The patent related to an improvement in roller skates, whereby P- '^"^- the lateral tilting of the foot-stock to the right or left caused the roller axles to converge on the side towards which the skater was inclining, and the skate ran in a curve. Thus the various evolutions Plimpton v. Malcolmson. 375 practised with an ordinary skate could be readily accomplished with a skate running like a carriage upon four wheels. The skate (which was invented by Mr. Fliinpfon, of New York, U.fS.A.) was an illustration of a principle in the conversion of motion which had never before been practically applied in the manner pointed out by the patentee. The foot- stand ran upon fom- wheels, two on each roller axle, and the respective axles were supported in frames which turned to a small extent, limited by stops, upon two inclined ledges pointing downwards towards a point on the floor half-way between the heel and toe of the skate. These ledges performed the function of axes, and the skate was so put together that they produced the same effect as if they had been ordinary inclined axes. The specification described the invention by reference to drawings, and stated the object of the invention in the following terms : — " This invention relates to an improve- ment in attaching the rollers or runners to the stock or foot-stand of a skate, whereby the rollers or runners are made to tm-n or cant by the rocking of the stock or foot-stand, so as to assume radii of a circle and facilitate the turning of the skate on the ice or floor, and admit of the skater performing with ease gyrations or revolutions mthout taxing unduly the muscles of the foot or ankles." Claims : — 1. " Applying rollers or runners to the stock or foot- stand of a skate, as described, so that the said rollers or runners may be cramped or tm-ned, so as to cause the skate to run in a curved line, either to the right or left, by the turning, canting, or tilting of the stock or foot-stand. 2. ''The mode of securing the rumiers and making them re- versible, as above described." The infringement was achnitted, and defendant sought to show that the patent was invalid. For this pm^pose he relied on a description of the invention as patented in America by Mr. Plimpfoii, and published in England in a volume of the Scientific American, which was accessible to the public in the Patent Office Library in Feb. 1863. The description was the following : — " 37,305. — Skate — J. L. Plimpton, New York Ciiy. ''I claim, first, the attaching or applying of the rollers, E, or runners, E, to the stock or foot-stand. A, of a skate in such a manner that the said rollers or rimners wU be tm-ned, cramped, or adjusted so as to run the skate in a curved line to the right or left by the tm-ning or canting of the foot-stand or stock A, as set forth." [" This invention relates to an improvement in the attaching of 376 Plimpton v. Malcolmson. the rollers or rimuers to the skate, whereby the former are made to turn or cramp like the wheels of a waggon, and facilitate the turning of the skate, there being two pairs of rollers or i-unners to each skate."] At the hearing it appeared that some volmnes of dramngs relating to American patents had been published by Jcwitf, of Buffalo, U.S.A., before the date of Neivtoii's patent, and that a particular volume containing a drawing of the Plimpton skate was received at the Patent Office Library on 20th Juiij, 1865. A pencil entry of the date of its arrival was marked in the book itself by the assistant librarian, but no entry was made in the catalogue or donation book, and nothing appeared to have been known about the book until the year 1875, when it was found deposited on a shelf in a small room forming an adjunct of the library. This room was not accessible to the public generally, but the book would have been brought into the public room at the request of any reader who might have asked for it. The evidence adduced was materially varied at the trial of a subsecj^uent action, Plimpton v. Spiller (see page 383). There was a large body of evidence bearing upon the cj[uestion as to whether or not a workman could make a skate, in which the roller axles could converge on the tilting of the foot-stock, from the information supplied by the Scientific American and Jeicitfs drawing. The Master of the Eolls held that there had been no jjublication of Jeicitt''s drawing prior to Newton's patent ; and further, that if he were overruled on this point, and the Court of Appeal should hold that there had been a publication, he was yet of opinion that the drawing and description taken together did not anticipate plaintiff's invention. Other points were contested at the trial, and it was objected that Mr. Plimpton knew at the time of filing the specification that runners ought to be placed at an angle of at least twenty degrees to the vertical, and that he did not say so, whereby the patent was void. Judgment for plaintiff, and injimction granted ■with costs. Per Jessel, M.E. — It will be seen, that both as regards the man who brings in the invention from foreign parts, and the man who takes out a patent for an invention which had been preidously dis- covered by somebody else, it is most material to discover what is meant by being kno^vn in the realm — being known in ^^^f/Zr/^f/. . . . You may show the thing was known because it was used and brought into practice, which is a case I have not now to consider. But you may shovv' that it was published, or made known to the PLTMrTON V. Malcolmson. 377 public. I use the word " published " iu that sense, lluw made known to the public ? It has been held that if it is in a specifi- cation, certainly in a modern specification, which had been enrolled in the Patent Office, and not published besides, that will do. And it has also been held that, as a common rule, if the description has been printed in England, and published in England, in a book which circulates in England, that will do. But after all, it is a question of fact. The judge must decide from the evidence brought before him, whether it has in fact been sufficiently published to come within the definition of being made kno^vn within this realm. The cases cited may be rather used as illustrations of what will amount to sufficient evidence than as deciding anything in principle beyond this, that it must be sufficiently known. Commenting on the case of the Houschill Coal and Iron Compang V. JVeilson (1 Webs. Pat. Ca. 673, 718, n.), his Lordship said :— The decision comes to this, that in an ordinary case of a clear description of the invention in a book published in England, you will presmne that it comes to the knowledge of, at all events, that portion of the public interested in the subject-matter of the inven- tion ; and unless you can explain that, or get rid of it, that is sufficient evidence to destroy the patent. But that again must be taken with reference to the facts of the case. And with reference to the judgment of Ti^dal, C.J., in Steady. Williams (2 Webs. Pat. Ca. 126, 142) :— See how caref idly it is put there. It must be published in a book made public in England. It must be publicly circulated, and it must give possession of the knowledge to the public. He remarked as to Stead v. Anderson (2 Webs. Pat. Ca. 147, 149) :_The case goes to this, that a book must be made public to such an extent as to be generally knomi among persons practising in such matters. His Lordship further discussed the case of the confirmation of Eeurtcloup's patent (1 Webs. R. 553), where an account of a prior invention of one Valdahon, anticipating part of the applicant's invention, had been made known in England solely by the intro- duction into England of books printed and published in France prior to Heitrteloup's patent, and said :— We have the fact that there were several books introduced into England, and that there was one book in the Public Library of the British Museimi. On these facts unexplained, it would have been a fair inference to have come to the conclusion that the invention of Valdahon had been publicly known so as to be a part of the possession of the public as public knowledge. 378 Plimpton v. Malcolmson. Aud. as to Lang v. Gi>ihonie (31 Beav. 133) : — I am clear tkat if it were shown that no copy had ever got into the hands of the public, and the public knew no more about it than seeing the back of the book in the bookseller's window, and every copy could be accounted for, and that none had been sold though exposed for sale, that woidd not be a sufficient publication to avoid a subsequent patent. His Lordship then discussed the e\idence as to the reception of Jeicitfs book at the Patent Office Library, and continued : — It does appear to me, sitting as a jury, that I should be wanting in common sense if I came to the conclusion that the existence of this book on the shelf in a private room in the Patent Library — private in the sense of not being accessible to the public, though public in the sense that if anybody had by accident known of it he could have sent for the book — would be such a publication as to deprive the man who first made it known to the world of that merit— the only merit so far as the importer is concerned — which consists in making known a useful invention to the public. Another point is this : Assuming that the book was publicly kno^\^l, or at least so far publicly known as to be known to all interested in these matters, the defendant alleges, and the plaintiff denies, that the letterpress and di^awing together do contain that sufiicient description which is necessary to enable a workman of ordinary skill to make the patented machine. I should have thought, independently of authority, that no prior description ought to invalidate a patent unless you could make the thing from the description. The question has been before the House of Lords in the case of Neilson v. Belts (L. E., 5 H. L. 1). The judgments of Lord West- bury and Lord Colonsay come to this — that the description in the book must be ec[uivalent to a specification. I may say that is entirely in accordance with the case of HiUs v. Ecans (4 De G. F. & J. 288) and the case of Beits v. Mcnzies (10 H. L. Ca. 117), and even if I differed from them, which I do not, I should be bound by those decisions. It is plain that the specification of a patent is not adcbessed to peox^le who are ignorant of the subject-matter. If it is a mechanical invention you have first of all scientific mechanicians of the fkst class, eminent engineers ; then you have scientific mechanicians of the second class, managers of great manufactories, great employers of labour, persons who have studied mechanics ; . . . and in this class I should include foremen, being men of superior intelligence, who, like their masters, would be capable of invention, and like the Plimpton v. Malcolmsox. 379 scientific engineers would be able to find out what was meant even from slight hints and still more imperfect descriptions, and woidd be able to supplement, so as to succeed even from a defective description, and even more than that, would be able to correct an erroneous description. That is what I would say of the tAvo first classes, which I will call the scientific classes. The other class consists of the ordinary workman, using that amomit of skill and intelligence which is fairly to be expected from him — not a careless man, but a careful man, though not possessing that great scientific knowledge or power of invention which would enable him by him- self, unaided, to supplement a defective description, or correct an erroneous description. ... It will be a bad specification if the first two classes only understand it, and if the third class do not. His Lordship then examined the very conflicting evidence, as to whether or not a workman, such as he had described, could have made the skate with the converging axes by the aid of the letter- j)ress in the Scientific American and the di-awing, and in the com'se of his analysis, referring to the direction to make the wheels of the skate turn lilce the wheels of a waggon, thereby suggesting the idea of a perch-pin, which was not a possible construction, he observed : — If I understand the rides of patent law, you must not mislead 3 Cli. D people by telling them to do something wrong, and leaving them to find out the mistake. . . . You must not give people mechanical problems and call them specifications. You may set to a dozen engineers a mechanical problem, and perhaps eleven out of the twelve will find it out ; you m.ay set to a dozen selected workmen a mechanical problem, and perhaps of that dozen thi'ee-fom'ths A\ill find it out, but that is not the meaning of a sufficient specification to make a patent article. His Lordship further discussed the evidence, and continued : — Now taking all this together, can I say that this was such a description as satisfies the exigencies of the law, that it was a fair specification from which an ordinary workman coidd make the machine ? I think I cannot. His Lordship concluded as follows : — The next objection was this, and it is an objection well foimded in law, if it is made out : the patentee is bound not only to tell the public enough to make the invention useful, but to show the most convenient form of performing it -within his o\w\ knowledge. It was said that Mr. Plimj^foji knew from practice, that he skated himself and had seen his daughters and other ladies skate, and that he knew the skate commonly used was a skate with rmmers at 380 Plimpton v. Malcolmson. an angle of twenty degrees to the vertical, and therefore he should have told the puLlic in his specification that the angle should be twenty degrees at least, and that not having told them so the patent is had. Now the first answer to that is very obvious, Mr. Plimpton is not the patentee at all ; Mr. Neidon is the patentee, and what the laAV requii-es is that the patentee shall tell the public what he knows. Now not only is there no suggestion that Mr. Neidon knew this, but, as he told us in the box, all he knew about it was the instructions which he received from A?ncnca, which he produced. He said, " I am only the patent agent," and there is not a pretence for saying that he had ever skated with these skates, or knew that they wanted twenty degrees or any mmiber of degrees to the vertical; therefore, this objection in law fails altogether. His Lordship then found for plaintiff on all the issues. Plimpton v. Spiller. [a.d. 1876— 77. L. E., 4 Ch. D. 286 ; L. R., 6 Ck D. 412 ; 47 L. J., Ch. 211.] Practice in Patent Actions — Injunction or Account — Evidence of prior Pub- lication — Novelty of Invention — Construction of Specification — Infrinrje- ment. Action to restrain defendants from infringing the same patent by the manufactm^e and sale of a roller skate known as the Spiller skate. Injunction granted. Defendants then made and sold another skate, known as the '' Wilson " skate (as to which see T/iorn V. Woi'thing Slmtincj Rink Company, L. R., 6 Ch. D. 415, «), whereupon plaintiff moved to commit defendants for a breach of the injunction. Before the motion was called on the Master of the Rolls decided, in the case above referred to, that the Wilson skate infringed plaintiff's patent, and, at the hearing, he made no order for committal, but granted an injunction as against the use of that particular skate, plaintiff giving an undertaking as to damages. Defendants appealed, and the Court of Appeal (James, L.J., Brett, J.A., dissenfienfe, Baggallay, J.A.) affirmed the order of the Master of the Rolls. 4 CTi. D. Per James, L.J. — I think we have to deal with the motion in ^' exactly the same way as if it were a motion for an injunction against a new defendant, the validity of the patent having been already established. There will always be, no doubt, the greatest possible difficulty in determining what is the best mode of keeping things in statu quo — for that is really what the Court has to do — to keep things in statu quo — until the final decision of the question ; Plimpton v. Spiller. IJ81 and then, of course, the Court says, " We will not stop a going trade. We will not adopt a coiu'se which will result in a very great difficulty in giving compensation on the one side or on the other." We have to deal with it as a practical question in the best way we can. I think, on the whole, that the Master of the EoUs has made the right order. Baggallay, J.A., after referring to Bridson v. M^A/pine (8 Beav. 229) and Neilson v. Thompson (1 Webs. Pat. Ca. 278), observed :— It appears to me, in the present case, that the granting of the 4 ^'^•^' injunction, if the defendant should ultimately prove to be right, would do him irreparable damage. He would be restrained for some length of time from manirfacturing these skates ; it would be impossible to ascertain to what extent he might have carried on the business of manufaetming or selling skates, and the amoimt of profits he might have made in the meanwhile, if he had not been restrained by the injunction, ... On the other hand, if we do not grant the injunction, but recpire the defendant to keep an account of all the skates he has sold, and the profits he has made by them, in the interval between the present time and the ultimate hearing of the cause, the means will be afforded for ascertaining the loss which the plaintiff will have sustained by the continuance by the defendant of that which may prove to have been an improper business. Per Brett, J.A. — If the trade of a defendant be an old and an established trade, I should say that the hardship upon him would be too great if an injunction were granted. But where, as here, the trade of the defendant is a new trade, and he is a seller of goods to a vast number of peojile, it seems to me to be less incon- venient, and less likely to produce irreparable damage, to stop him from selling, than it Avould be to aUow him to sell, and merely keep an account, thus forcing the plaintiff to commence a multitude of actions against the purchasers. The general nature of the invention has been described in the 6 Ch. D. previous abstract, but here it will be necessary to refer particularly ^" "• to the second claim, which related to the use of the rocking-skates on ice. The specification stated : — "When the invention is to be used on ice runners are employed, constructed and applied as follows : upon the shafts D there are placed loosely what may be termed clamps H composed of two parts, q and r. The pai-ts q may be of any ornamental design (that of a swan is here represented), and the other part r is simply a plate seciu'ed to q by a screw s, the runner I 382 PLDirxox v, Spiller. h'ing between q, r. The runners, I, liave smooth running sur- faces, with angular edges, so that they may be reversed when the inner edges lose their angularity by wear, and a fresh sharp edge obtained ; and when both edges of one surface become w^orn the runner may be inverted, and two more angular or sharp edges obtained. Thus each runner has foiu' angular edges, i^hich may be successively used before the runner \sdll require to be sharpened. The clamps H are retained in proper position on the shafts D by india-rubber or other washers J, shown clearly in fig. 7. The stock or foot-stand is prevented from tilting beyond a proper distance, in consequence of the bars ./' of the hangers coming in contact with the pendant projections d, d of the plates B, B, while the clamps H on the shafts D have their movement thereon limited by the ends of the wings of the swan and tail coming in contact with the^bars/. Claim : Second, the mode of seeming the runners and making them reversible, as above described. The issues raised were those of novelty, sufficiency of specifi- cation, and infringement. The skates complained of as infringing plaintiff's patent v^'ere the " SpiUer,'' wliich differed from the " Plimpton " in the use of a spii-al spring, instead of an india- rubber pad, to restore the axis of the roller to its normal position, and the " Wihon,'' in wdiich a mechanical equivalent was sub- stituted for the inclined axis. The evidence of prior publication mainly relied on, had re- ference to the description in the Scicntifie American, and to the dramng in JeiciWs book, mentioned in the previous case, and differed in some material circmnstances from that before adduced. It appeared that the volume of Jeiciffs book, containing a drawing of the PUmpton skate, was received by a sub-librarian of the Patent Office Library on the 20th Juli/, 1865. It w\as not entered in the book of donations, nor in the catalogue, and was next seen by another sub-librarian, in or about the spring of 1867, on a shelf in the corridor leading to tlie public room, which corridor was open to the public. The Master of tiiI'; Eolt.s was of opinion that both the Spiller and Wilson skates were infringements of plaintiff's patent, and foimd for plaintiff on all the issues. Judgment for plaintiff, and injunction granted mth costs. Per Jessel, M.K. — The want of novelty relied upon is, first of all, prior publication. The prior publication is attempted to be made out by the trans- mission to this country of copies of the Soienfific American, and the Plimpton v. Spillek, 883 Commissioners of Patents Journal, and a copy of a book which is called JewiWs book, which contained a drawing attached to Mr. PHmptori's American patent. His Lordship here discussed the evidence, and came to the con- clusion that Jcu-itfs book was received into the Patent Office on the 20th of Ji(l[j, 18G5, and that nothing- more was knoAvn of it imtil 1867, when it was seen by one of the assistants, during the removal of the books from the old library to the new library. His Lord- ship continued : — But it is then seen, not in the public room in the old library, 6 Cli. D. but in the corridor leading to the public room, to which corridor the ^^' public have access. The public walk through there, and they might, if they thought fit, walk up one of the ladders and take a book down from the shelves. This book was emphatically on the shelf. It was not put in the Library Catalogue. . . . Where the book was on the 25th Aug. 1865, 1 have not the slightest idea. Ha^dng come to the conclusion that it was mislaid somehow, and afterwards found by some one and put in the corridor, there is nothing to show that it was in the corridor on the 25th of Augmt, 1865. But supposing it got there, was it accessible to the public in the proper sense of the word ? It was not in the catalogue ; therefore it was of no use consulting it, neither was there any use in consult- ing the donation book. No one would knov/ of its existence, even if it got into the high shelf of the corridor ; but j)ractically I am satisfied that no one knew of it. ... If I come to the conclusion, as I do, that no human being in this country, either the librarian or assistant librarian, or anyone else, had ever seen this plate on the 25th of Aug. 1865, and that there was no fair knowledge com- municated to the public of the existence of this plate in this coimtry in Aug. 1865 (on both of which points I have arrrived at a positive conclusion), I hold that there was no sufficient publication to invalidate the patent. Now I come to another point, which is a very material point, 4 Ch. D. although it is a small one, and that is the want of novelty, as ^' "" regards the second claim in J^euion^s patent. I have remarked before, in the case of Riiils v. The Safetij Lighi'mg Company (L. R., 4 Ch. D. 607), that it is the duty of the Judge to construe a speci- fication fairly, with a judicial anxiety to support a really useful invention, if it can be supported upon a reasonable interpretation of the patent ; or as Mr. Adon said, that a Judge is not to be astute to find flaws in small matters in a specification, -udth a view to overthrow it. . , . When the j^idge sees that there is a real 384 Plimpton v. Spillkk. substantial invention of great merit, and the description is faii-ly made, so that a competent workman can make the invention, it is not his duty to endeavour to construe the patent so as to make it claim that which it is utterly ahsurd to suppose would he claimed, because it is so well known as a matter of public notoriety that nobody would think of claiming such a thing. Now, it is not contended that if the second claim includes the mode of affixing or applying the runner to the foot-stock — that is, if it includes the clamp and the mode of affixing the clamp— there is not sufficient novelty. If, on the other hand, it is to be restricted to the mode of fastening the little piece of iron or rimner in the clamp, then it is said to be undistinguishable from the ordinary vice, and not to be novel. Now, the words are these : " The mode of secimng the runners and making them reversible, as above described." Which am I to take ? Am I to take the mode of seeming the runners to be new, or to be that which is alleged by the defendants— the putting the bit of iron in the clamp— which is not only not new, but is known to everyone who has been in a workshop? No doubt it is my duty, if there is nothing else in the matter, to adopt that which would make sense of the patent, instead of that which woidd make it useless. I may also observe that the use of the word " simply " in the specification, with reference to the mode in which the rimner is secured in the clamp, shows that that was not intended to be claimed. I am of opinion, therefore, that this objection as to novelty also fails. G Ch. D. Then the next point is the infringement. There are two skates P- ^"^^' that have been made in this case. As regards the skate of Mr. Spiller, it is so obviously an infringement that on inspection it requires time and care to ascertain the differences. As regards the skate of Mr. Wilson, it is to be regarded for the pm-poses of this action to be in issue. But it was admitted by Mr. Edirards* on cross-examination, that there was no substantial variation between the Plimpton and the Spiller skate and the Wilson skate. In the latter there was the substitution of guides for a second axle, but the piu'pose was the same, and the guides so substituted were stated to be a mere mechanical equivalent ; that is to say, you obtain the same purpose by substituting guides for an axle, Avhich is a mere mechanical movement. . . . They put the skate into the hands of a competent mechanic, and, wanting to produce the same result, * A scientific -witness for defendants. Plimpton v, Spiller. 385 tliey make use of the Avoll-known equivalent, and then they pro- duce the skate. It is the exact thing which has been proved to have been done, which is prohibited by law. It is, therefore, an infringement. Defendants appealed, when the Court of Appeal (James, Bag- gallay, Brett, L.JJ.) dismissed the appeal with costs. Per James, L.J. — Two objections have been taken to the validity c CL. D of the patent and to the judgment of the Master of the Rolls in ^' this case. The first is with reference to the construction of what is called the second claim ; and if it were necessary to consider whether the Master of the Rolls' construction of that claim was right or wrong, we should probably have desired to have heard fm"ther argument ; because I am bound to say that my present notion, or rather my present impression, for that is all I am entitled to say, is, that the second claim simply uses the word " rimner " as being the blade, and the blade as fastened in that particidar way. But, in my opinion, that is wholly immaterial when we consider what the claim is and how it is to be construed with reference to the entu^e patent. It is important to bear in mind that there is nothing in the Act or in ih^ Patent Law which says anything about claims. The real object of what is called a claim, which is now much more commonly put in than it used to be formerly, is not to claim anything which is not mentioned by the specification, but to disclaim something. A man wlio has invented something gives in detail the whole of the machine in his specification. In doing that he is of necessity very frequently obliged to give details of tilings which are perfectly known and in common use — he describes new combinations of old things to produce a new result, or something of that kind. There- fore, ha\ing described his invention, and the mode of carrying that invention into effect, by way of secmity, he says : " But take notice, I do not claim the whole of that machine ; I do not claim the whole of that modus operandi, but that which is new, and that which I claim is that which I am now about to state." That really is the legitimate object of a claim, and you must always construe a claim with reference to the whole context of a specification. Now, we have to consider what is the effect of this part of the claim. lie says, " I claim first," and so on — and then he says, *' Secondly, the mode of securing the i miners and making them reversible, as above -described." Now, I agree with the Master of the Rolls that it is too absurd for anj'one to suppose that a man was claiming, in the year 1865, as a distinct and substantive in- G. c c 380 Plimpton v. SriLLEE. vention, the putting of a piece of metal between two pieces of wood and tightening tliem so as to hold that piece of metal fixed. . . . And we have to bear this in mind also, that the whole of the patent is for one particular object, Avhieh is thus described : — " The invention relates to an improvement in attaching the rollers or rmniers to the stock or foot-stand of a skate, whereby the rollers or rujiners are made to tui'n or cant by the rocking of the stock or foot-stand, so as to assume radii of a cii'cle, and facilitate the turning of the skate on the ice or floor, and admit of the skater performing with ease gjTations or evolutions without taxing unduly the muscles of the foot or ankles." That is the invention, and the only thing which is protected by the patent, or that could be sup- posed to be protected by the patent, is that mode of tm-ning or canting by the rocking of the stock or foot-stand, so as to give greater ease to the skater in performing these evolutions. . . . Then, secondly, he claims the mode of secm'ing the runners and making them reversible, as above described. According to my view, and according to the fair and legitimate construction of the claim, he says, " I claim that as part of and in connection with my runner skates. In my runner skates I have introduced a very con- venient and uscfid thing — a mode of making these runners usefid fom' times over." It appears to me that in doing that he is claiming, not a distinct and substantive invention, but he is claiming it as one of the merits and advantages of the entire construction which he has before given, and he is not in any way pretending or claiming to enlarge his monopoly, because, of com'se, it was a novelty as far as Plimpton's skates are concerned, for PUmpton''s skates were novel, and he was only applying an old thing to an entirely new thing. When the new thing ceases to be patented that old thing will cease to be patented too ; so that there is no pretence really for saying that he is endeavouring to obtain under the colom- of that second claim something other and beyond that wliich the invention itself purports to be, that is to say, an in- vention for making a rocking skate in the manner which he has described in the first part. That being so, it seems to me to be wholly immaterial what the exact construction of those words is, because, after aU, that second claim really comes to nothing more than is included in the de- scription of the invention itself. I mean that part of the invention which describes the runners, and the words " the mode of securing the runners and making them reversible." It seems to me to be perfectly idle and superfluous to the claim in the first part. They neither add to nor diminish from tlie patent, nor the monopoly Plimpton v. Spiller. 387 wliich the patentoo is seeking to obtain against the puhlic. I am, therefore, of opinion that there is really nothing in that objection. Then, that objection failing, we come to consider the next part, with regard to the publication. It is not necessary for us to lay down any new canon or rule as to what constitutes or does not constitute publication — as to how far a book in a public library may or may not be a publication — but I agree with the conclusion that the Master of the Rolls has arrived at in this case, that, as a matter of fact, it is impossible to say that this American book ever was in the library in any sense in which it could be construed to be accessible to the public, or that portion of the public which consists of persons conversant with this particular subject, or to patentees who are desirous of taking out patents for new inventions, and tlierofore desirous of making themselves acquainted with the course of invention generally. It appears to me that the evidence is too slight to warrant any inference whatever that between the 20th of July and the 2oth of August that book, which was sent over from America to this country, was ever in such a position as to be, practically speaking, accessible to any part of the public. Per Baggallay, L.J. — In my opinion, as at present advised, the 6 Ch. D. second claim is not included in the first. . . . What I think is ^' described by the second part of the claim is this : the particular mode of securing the runner or reversible metal plate between two other metal plates, so as to make it reversible. Now, if I could read that as a mere general description of fastening a piece of metal between two other pieces of metal by a screw, of com^se it would be idle to suppose that that could be the subject-matter of a patent. But I think you must read the second claim with reference to what the inventor has described and claimed above, and then it is for the mode of secm^ing the runners of the skates above de- scribed, and making them reversible. I do not understand it to be suggested that the application of four runners to a skate in such a mode as is suggested, and the placing them in such a way as that you can change them either fore and aft, or up and down, has ever been suggested before ; and certainly it is clearly in respect of that subject-matter useful. The use is pointed out in the terms of the specification, and it appears to me upon this view of the case that it is impossible to hold that there is a want of novelty such as has been suggested on the part of the appellant. Per Brett, L.J. — If this second claim had been in a form which s Ch. D. would have applied to the runner of any other skate than that which P- ^^^• c c 2 388 Plimpton v. SriLLER. is patented liere, I slioiild have thought it would have been bad, and that therefore the whole patent would have been bad, and that this plaintiff could never recover. But I am of opinion, not look- ing at this objection too astutely, that this second claim is so stated as to be confined to the runners of the particular skate of the patentee in_ the same patent, and which skate is well patented. His Lordship then referred to the description of the invention and continued : — It is obvious that the claim, whatever it be for, with regard to this runner, does not in any way increase the monopoly of the good patent ; and if you can say that the subsidiary claim in the patent cannot, under any circumstances, increase the monopoly of the patent itself, which is well claimed in the patent, it seems to me that the subsidiary claim is unimportant, is futile, has no effect, and therefore does not raise any objection to the patent. If you can bring it within the category of a subsidiary claim in the patent you bring it within the principle stated by Lord West- BuiiY [Neilson v. Betts, L. R., o H. L. 21), and under these cir- cumstances it is no objection to the patent. I therefore consider that this second claim is no objection to this patent, because it is a futile claim, and has no effect upon the monopoly. Potter v. Parr. [A.D. 1860. 2 B. & S. 216, m.] Novelty of Invention — A part previously published must he distinguished. Case for the infringement of tAvo patents — viz., of 21st Bee. 1836, No. 7,263, and of 25th Ma//, 1842, No. 9,366, each to J. Potter, for " improvements in spinning machinery." Pleas : 1. Not guilty. And (as to patent of 1842) : 11. That the invention was not new. 12. That the specification was insufficient. Issue. The patents related to one part of the operation of mule spinning, viz., the winding of the yarn into a " eop " upon the spindle. This operation is begun by winding a conical layer of thread at a continually increasing vertical angle, so as to form the " eoj) bottom " upon the bare spindle, and is completed by winding a succession of similar conical layers upon the foundation thus formed. The speed of revolution of the spindles for taking up the yam should therefore vary according to the diameter of that portion of the cop at whicli the winding is taking place. The specification of the patent of 1836 described a method of obtaining the required variable motion of the spindles dming the u-indiug on by means of a chain attached to a spiral conical di-um, and caused to traverse towards tlie smaller end of the di'uni during Potter v. Pake. 389 the formation of the cop bottom. The shifting of the chain on the dram was effected by a screw of varying pitch, called a hyper- holic screw. The winding of the miiform conical layers which completed the cop was effected by the spiral cbuni after the screw had ceased to act npon the chain. Claim : " The spiral drum and hyperbolic screw, with which, in connection with the chain-wheel and chain, I effect the winding-on motion as described. I do not confine myself exclusively to the hyperbolic screw, as the curve may be varied by using a different form of spu'al drum, &c." The specification of the patent of 1842 referred to the patent of 18uG, and described the invention as consisting in various improve- ments on the mule therein specified. The spiral drum and hyper- bolic screw were abandoned, and in their place a plate with curved slots on its face was rotated at the back of another plate with radial slots, whereby a set of studs working at the same time in both sets of grooves was caused to assume a spiral form, and gave a flattened fusee for the chain connected with the chain -wheel to run npon. This fusee was caused to enlarge or contract in dimensions by rotating the plate with ciu'ved scrolls relatively to the other plate by means of a worm or screw, and could be adapted to the varying rec[uirements of speed during the respective stages of the formation of the cop. The relative motion of the scroll and radially grooved plates was effected by a combination of two segmental wheels called " sectors" with a snail called a " spuxilJ' Claim 5 : " The improved winding-on motion, as set forth, which, although in part used in an imperfect form before the date of this patent, did not produce a correct winding-on till I con- structed the improved curves as represented, and which, together with the sectors and spiral, regulate the position and form of such cm^ves, by which, in conjunction with the parabolic incline, seen at fig. 8 (this incline was concerned in the movement of the faller wire), I produce a perfect result." At the trial, it appeared that the form of winding-on motion refeiTed to in the fifth claim (which embodied the radiating apparatus but was defective in the curves) had been brought out in a machine constructed in 1839. A^'erdict for plaintiff. Leave reserved. llule nisi to enter a verdict for defendant on the first and eleventh issues made absolute by the Com't of Queen's Bench. (Cockbm^n, C.J., Crompton, Blackburn, JJ.) Per CocKBURx, C.J.— I think the true construction of the 390 Potter v. Parr. fifth claim is, tliat tlie radiating apparatus as s1io"Uti is a substitution for the conical drum in the patent of 1886 ; and that in 1842 the plaintiff intended to patent that as a substantial part of his claim, and not onlj^ in combination Avitli the improved curves. He said that he had discovered that the defects which prevented the full development of the conical drum and its appendages in the patent of 1836, might be cured by the substitution of a radiating apparatus in connection with the appendages : that he had made that radiating apparatus in 1839, and that it did not work satisfactorily ; and that he had improved it by substituting for one portion of it an improved system of cm'ves ; and he con- tended that he might then take out a patent for the radiating apparatus, which he had made perfect by the improved curves. In that he was wrong, for he had already made known to the world the principal part of the machine ; and he could not take out a fresh j^^'tent for a combination including that and the im- provements without expressly stating that the patent was for a new combination only. Therefore the patent of 1842 falls to the ground for want of novelty. As to the patent of 1836, the specification claims a spiral move- ment by means of the apparatus therein described, — the spiral drum and chain, and hyperbolic screw, — which last, it says, may be varied. Por that apparatus the plaintiff, in the patent of 1842, substitutes an entirely new apparatus in express terms. I think the two are perfectly distinct ; and indeed it hardly lies in the mouth of the plaintiff to say to the contrary, because if they are not distinct, the patent of 1842 would be bad as patenting an old invention. The defendant's machine is an infringement of the patent of 1842, and not of the patent of 1836, and the patent of 1842 is bad for the reasons already given. POUPARD V. FaRDELL. [a.d. 1SG9. 18 W. E., bd, 127.] Novelty of Invention — SuJ/lcienaj of Spccijiadion. Suit to restrain from infringing a patent of 19th Jan. 1859, No. 166, to W. Poiqmrd, for " an improved wheel-skid or shoe." The patent related to the construction of a skid "with a tail-piece of some length, which formed a gradual incline for the wheel to run upon when entering the skid. The specification described the contrivance by reference to drawings, and showed a skid with a tail projecting backwards in a cm-ve adapted to the form of the carriage wheel. It went on to state : — " I find the best results to be ob- PuuPAED V. Fardell. 391 taiueJ when the projecting tail-piece is curved upwards, Lut I do not limit myself to so shaping it." Claim : — " The construction of a Avheel-skid with a tail-piece projecting from the back part and top of the skid chamber, as hereinbefore described and illustrated." At the hearing by the Court, without a jmy, it appeared that the service skid in use by the Royal Artillery had a short projec- tion, with an eye for hanging the skid to the carriage, but that it was insufficient for guiding the wheel into the skid. Malins, V.C, granted a perpetual injunction with costs, and also an incj[uiry as to damages, and said : — What the plaintiff claims in this case is per- fectly clear from the drawings and specification, and by their aid any good workman could produce the article intended to be patented. It is a skid with a tail projecting from the upper plate, but differing from the Eoyal Artillery skid. I hold that the specification is sufficient. The addition of the words, " but I do not limit myself to so shaping the tail-piece," does not vitiate the specification. Pow V. Taunton. [a.d. 1845. 9 Jur. 1056.] Misdirection hy Judije — Novelty of Invention, Case for the infringement of a patent of 28th Feb. 1837, No. 7,312, to J. Robinson, for " a nipping lever for causing the rotation of wheels, shafts," &c. Pleas: 1. Not guilty. 2. That the in- vention was not new. Issue. The patent related to a method of rotating a wheel by the re- ciprocation of a nipping lever, which dragged the wheel round in one dii^ection by a friction grip on its rim, but was inoperative when moving in the opposite direction. It was an equivalent for an ordinary ratchet-wheel and diiviug paul, and has been com- monly fitted to the windlasses of ships. The specification stated : — " That the invention consisted in a nipping lever applied to the rim of a wheel in such a manner that, when the outer arm of the lever was acted upon, the inner arm or tusk pressed against the rim, and caused a nip which enabled the power applied to the outer arm of the lever to force the wheel round, together with any machinery to which it might be attached." It then described the invention by reference to drawings, and showed the wheel having a rimmed flange upon Avhich a block or box was capable of sliding. The nipping lever was pivoted on a pin passing through the box. Claim : — " The nipping lever, with its tusk and sliding box, hereinbefore described, applied to a rimmed wheel for the pui-pose 392 PoAv V. TAU^TON. of causing tlie same to rotate togetlier witli any shaft or maeliinery wliicli may be attached thereto." At the trial, it appeared that a nipping- lever was not new, and IvOLFE, B., directed the jury : — That the invention was new if the application of a nipping lever to the sm'f ace of a wheel, hy means of the sliding boxes, as a method of making the wheel revolve, was new. Verdict for plaintiff. Rule nisi for a new trial on the ground of misdirection made absolute by the Com-t of Queen's Bench. Per Lord Denmax, C.J. — The application of a nipping lever to the sm-face of a wheel for the purpose of making it revolve may be new, but the mere novelty of the application is not enough ; it must also appear that the means essential for carrying the applica- tion into effect are also new. In the present case the means for applying the old invention to the new purpose are the sliding boxes ; and if they are essential to the application, and novel as means for the piu'pose, the patent may be supported. The learned judge left no question to the jmy as to whether the sliding boxes were or were not an essential or necessary part of the invention claimed. We think the jury may have been misled by the mode in which the question was left to them, and that they may have considered that it was unimportant whether the use of sliding boxes was necessary or essential to the plaintiff's invention, provided their use was new. Either they are essential and not claimed, or they are not essential, and in that case there is no novelty : we therefore think that the rule should be made abso- lute for a new trial. Price's Patent Candle Company v. Bauwen's Patent Candle Company. [a.d. 1858. 4 K. & J. 727.] Practice in Patent Suits — Accoimt — Expiry of Patent, Suit to restrain from infringing four several patents for the manufacture of candles. Bill for injunction and account filed on 28th Nov. 1856. Notice of motion for an interim injunction given for 10th Dec. 1856, the date of expiry of the first patent being 8th Dec. 1856. Order made for actions at law, which were tried, and resulted in a verdict for plaintiffs upon the first patent, but in a verdict for defendants upon the remaining three patents. At the hearing of the cause, defendants admitted the infringe- Price's Candle Co. v. Bauwen's Candle Co. 393 nient of the first patent down to 8tli Dec. 185G, but denied the possession of any candles or fatty matters, of whicli an account was souglit. As regarded the first patent, account refused ; but inquiry ordered as to the possession, by defendants, of any candles or fatty matters manufactured according to that patent ; and as regarded the remaining patents, bill dismissed with costs. Vcv Wood, V.C. — I nnist adhere to the observations I made in 4 K. & J. ^mitli V. London and Soiith-Wedcrn Raihcajj Compamj (Kay, 408) ^' ' as to the right to an account being dependent mainly upon the right to an injunction, so that, if for any reason an injunction cannot be obtained, there can be no right to an account. On the 10th of Beccniher, a stock of these articles (of which the bill seeks an account) must have been still in the defendants' pos- session ; and that being so, it follows that had I been then clear as to the question of right which has since been establislied at law — or, rather, had that question been then established at law as it has since been — the plaintiff s w^oidd have been entitled to an injimction. But it does not by any means follow that they are now entitled to the same relief, at a time when it may well be that an injunction would be utterly useless, in consequence of there being nothing left upon which it could operate. It is an unfortunate position for the plaintiffs, but the misf ortmio arises from their delay in not filing the biD until their patent had almost expired. Their patent is gone ; and Avhatever may now appear, exj^ostfacfo, to have been their right when they applied for the interlocutory injunction, if, at the hearing, there is nothing upon which an injunction can operate, the arm of the Court is stayed; and I am bound by the authorities to say that, there being nothing at the hearing to which the jurisdiction of equity can attach, the case is reduced to damages, and the bill must be out of Court. Printing and Numerical Registering Company v. Sampson. [a.d. 1875. L. E., 19E(i. 462.] Covenant to /, and had been brought to this country in order to complete the armament of tlu-ee ships of war under construction for the Grovernment of Japan. Injunction granted to restrain defendants and the owners of the wharf where the shells were deposited from selling or delivering the shells to the Grovernment of Japan. Motion on the part of the Mikado of Japan that the injunction might be dissolved, and that his Imperial Majesty might be allowed to remove the shells, which were his property, out of the jurisdiction of the Court. Jessel, M.R., said : — I propose to make an order that without prejudice to any question, notwithstanding the injunction, the Mikado shall be at liberty to take out of the jurisdiction the shells which belong to him. Plaintiff appealed, when the Coui-t of Appeal (James, Brett, Cotton, L. JJ.) dismissed the appeal with costs. Per James, L.J. — I suppose there is a notion that in some way 9 Ch. D. these shells became tainted or affected through the breach or ^' attempted breach of the patent ; but even then a foreign sovereign cannot be deprived of his property because it has become tainted by the infringement of somebody's patent. He says, " It is my public property, and I ask you for it." That seems to me to be the whole of the case. Per Brett, L.J. — It is said there is a dispute whether these 9 Ch. D. shells are the property of the Mikado. It is argued that if he were ^' a private individual, then, although he has purchased these shells and paid for them, j^et inasmuch as there has been an infringement of the patent, the property is not in him, because the Com-t may order the shells to be destroyed. Is that argument good or iiot ? To my mind it is utterly fallacious. The patent law has nothing to do with the property. ... I am clearly of opinion that the patent law did not prevent the property from passing. The Mikado has a perfect right to have these goods ; no Court in this country can properly prevent him from having goods which are the public property of his own country. ( 484 ) ViDi V. Smith and Another. [a.d. 185 i. 3 E. & B. 969 ; 23 L. J., Q. B. 342.] Inspection and Account pendincj an Action. Case for the infriugement of a patent for metallic barometers— viz., of 27t]i April, 1844, No. 10,157, to P. Annand Le Comte de Fo)itainemoreau, for " a new mode of constructing barometers " fa eommimication from abroad). Before trial of the action, plaintiff obtained a rule nisi for an account of profits made by the sale of metallic barometers since 1st Oct. 1851, and for an inspection of defendants' books. The Court of Queen's Bench (Lord Campbell, C.J., Coleridge, Erie, Crompton, JJ.) discharged the rule for an inspection of books, and also for an account of profits before action, but made it absolute for " an account to be kept by defendants of all such barometers as they should sell upon the principle alleged by iDlaintiff to be an infringement of his patent and of all profits made therefrom " until fiu'ther order ; on condition that plaintiff waived a claim to any but nominal damages, and undertook, if he failed in the action, to pay the costs of the account. 3 E. & B. Pel- Lord Campbell, C. J.— Before final judgment we ought not ^■^''^- to grant any retrospective account. Such an account would not aid any account of profits which may then be ordered if the plaintiff obtains a verdict ; and such an account would not be ordered by a Court of Equity before the final decree. We are likewise of opinion that we ought not to make the desii'ed order for an inspection of the defendants' books. The inspection mentioned in stat. 15 & 16 Yict. c. 83, s. 42, is, we conceive, an inspection of the instrument or machinery manufactured or used by the parties, with a view to e\idence of infringement, and does not refer to an inspection of books, which is provided for by another Act of Parhament. . . . With regard to an account to be kept during the litigation, we are to see whether there is laid before us reasonable evidence of a valid patent, of this patent having been infringed by the defendants, and of the defendants making profits by the infringement. . . . We think there is a sufficient foundation for this part of the rule . . . but we are of opinion that it should only be granted on the con- dition of the plaintiff waiving his claim to damages, for he ought not to be allowed to seek substantial damages and an account of profits, conjointly. We likewise think it expedient to requii-e an imdertaking on the part of the plaintiff to pay the expense of the account, should the verdict and judgment in the action be for the defendants. ( 485 ) Von Heyden v. Neustadt. [A.D. 1880. L. R., 14 Cli. D. 230 ; oO L. J., Ch. 126.] Evidence of Infringement— Sale in England of a Material made Abroad hy a Patented Process. Action to restrain the infringement of a patent for the making of salicylic acid. It appeared that the defendants imported into and sold in England salicylic acid made in Germamj by a process alleged to be sub- stantially the same as that for which the patent, the subject of the action, had been granted in 1874. Defendants disputed the validity of the patent, principally on the ground of want of novelty, and they denied the infringement. The facts do not appear in the report, which merely reproduces the judgment of the Court of Appeal. Injunction granted by Bacon, V.C. Defendants appealed, when the Comi of Appeal (James, Brett, Cotton, L.J J.) dismissed the appeal with costs. Per James, L.J. — The specification states that the invention 50 L. J. consists in effecting the production of salicylic acid by the action P* of carbonic acid gas on carbolic acid in the presence of an alkali or alkaline earth, and doing this in large quantities and at a great reduction in price. The words "in the presence of an alkali" refer to one of the most strange things in the chemical action of bodies on one another. It has been found that sometimes two bodies which have little or no action on each other are made active by the introduction of a third body, which is itself apparently perfectly inert and passive, neither effecting nor undergoing any change. It is not disputed that this actual ^Drocess had never been used, either in works or laboratory, for the production of salicylic acid, either for sale or for any other practical purpose or use whatsoever. Nor is it disputed that a product of great value, and previously very dear, is obtained by it most economically. The article was quoted in 1868 at 13.s. an ounce — it is now sold at Is. 6d. a pound, and it has come into general use, not only as a useful medicine, but as a powerful antiseptic. But it is contended that it is not novel. . . . The burden of proving this is on the defendants, and it must be made out very clearly in order to destroy the patent of a man who, at all events, was the first person who de facto produced the thing to the public practically in a working state. What we have got in this case is not one clear statement by one 486 Von Heyden v. Neustadt. writer, but a mass of paragraphs exhumed by the industry of the defendant's advisers from a nimiber of publications. His Lordship then enumerated a number of extracts and papers relied on as evidence of prior publication, and continued : — We are of opinion that if it requires this mosaic of extracts from annals and treatises spread over a series of years, to prove the defendant's contention, that contention stands thereby self-con- demned. . . . And even if it could be shown that a patentee had made his discovery of a consecutive process by studying, collating and applj'ing a number of facts discriminated in the pages of such works, his diligent study of such works would as much entitle him to the character of an inventor as the dihgent study of the works of natiu'e would do. The whole may be summed up thus : — No one, before the patentee, had ever practically or theoretically taught the world how to make, out of such abundant and cheap materials as soda, carbolic acid, carbonic acid gas, and hydrochloric acid, the rare and expensive thing, salicylic acid. No one had ever taught the world the simple and fruitful chemical truth, that all that was required to effect this wonderful transmutation was to make the carbonate of soda perfectly anhydrous and perfectly dessicated. His Lordship then discussed the question of infringement, and considered that the defendants had in fact adopted the plaintiff's invention, and he then referred to a doubt suggested from the Bench, whether, if a process is patented in England, and the patent is for the process only, and that process is imitated abroad, the importation of the product from abroad and the sale of it in England is an infringement of the patent. On this point, his Lordship said : — "We see no reason to doubt the conclusion arrived at in Elmslie V. Boursici- (L. E., 9 Eq. 217) that the sole right granted by the Crown " to make, use, exercise and vend the invention "w-ithin the United Kingdom,'' and the right to "have and enjoy the whole profit, benefit, commodity and advantage accruing and arising by reason of the said invention," includes a monopoly of the sale in this country of products made according to the patented process, whether made in the realm or elsewhere. It may be added that the patent in another part expressly forbids any person directly or indirectly to make, use, or put in practice the invention. A person who makes, or procures to be made, abroad for sale in this country, and sells the product here, is surely indirectly making, using, and putting in practice the patented invention. Any other con- Von Heyden v. Neustadt. 487 struction would in fact, in the case of any really valuable invention of a process, render tlie wliole privilege granted by tlie CroA\Ti futile. Wallington v. Dale. [A.D. 1851— 2. 7Ex. E. 888; 23 L. J., T:x. 49.] Novelty of Invention — Suficienci/ of SpecifidLtion — Subject- mutter of a Patent — Entri/ of Disclaimer hy Patentee after Assignment. Case for the infringement of a patent (in part disclaimed) of 24th Nov. 1847, No. 11,975, to G. P. Sirinbonic, for "im- provements in the manufactui-e of gelatinous substances." Pleas : 4. That no sufficient specification was enrolled. 6. That before applying for and entering a disclaimer the said G. P. Suinborne had assigned to the plaintiff all his interest in the said patent. 10. That the invention was not new. 11. That it was not a new manufacture. Issue. The patent related to a method of manufactming gelatine by reducing the sldn into shavings or thin slices by means of an instrument resembling a carpenter's plane. The specification stated : — " That when gelatine was to be extracted, the shavings after soaking were to be subjected to heat, taking care that the heat applied should not exceed that of boiling water." It also pointed out that heretofore it had been the practice to operate on large pieces of hides or skins, except in the case where the hides were reduced to pulp in a paper machine. At the trial, defendant gave in evidence the specification of a patent of 23rd Marc/i, 1839, No. 8,010, to G. Nelson, for a process of extracting gelatine by scoring hides to a depth of one-eighth of an inch, in lines about one inch apart, and then macerating them in caustic alkali. It was objected that the mere cutting of a material into thin slices was not the subject-matter of a patent, and that the specification was defective in not stating whether the hides were to be cut in a wet or diy state, and frnther, in not stating the minimum amount of heat to which the shavings were to be subjected. Alderson, B., left it to the jmy to say whether the specifica- tion was reasonably sufiicient, telling them that it must be such as to define the invention so that an ordinary and skilful workman might do it, and so as to limit the claim of monopoly, and not to embarrass the invention or operation of others. Verdict for plain- tiff. Leave reserved. Eule nisi for a new trial — on the grounds of misdirection by the learned judge in not telling the jury that the cutting a ma- 488 Wallington v. Dale. terial into tMn slices or shavings was not tlie subject of a patent, and also that the learned judge was incorrect in leaving to the jury the question as to sufficiency of the specification, which was a point of law, and that the verdict was against the evidence — or to arrest the judgment on the ground that the patentee had entered the disclaimer after he had assigned all his interest in the patent, — discharged by the Court of Exchequer. (Pollock, C.B., Parke, Alderson, BB.) Per Pollock, C.B. — It appears to us that the plaintiff's process was new and different from any other described in the specifica- tions given in evidence, and that it was indisputably useful. We think also that the ground of misdirection fails, and that the case was properly left to the jury. 7 Ex. R, Upon the point as to arresting judgment. . . . The 5 & 6 Will. ly. e. 83, s. 1, gives a power to disclaim any part, either of the title of the invention or of the specification, with the leave of the Attorney or Solicitor- General. If the question had depended upon that statute alone, some doubt might have been entertained whether a patentee, after having assigned all his interest, could enter a disclaimer ; but we think that the 7 & 8 Yict. c. 69, s. 5, has put an end to all doubt by expressly enacting that "no objection shall be made in any proceeding whatsoever, on the ground that the party making such disclaimer or memorandimi of alteration had not sufficient authority in that behalf." We are of opinion that it was not competent for the defendant to take such an objection. Walton v. Potter and Horsfall. [A.D. 184L 3 M. & G. 411 ; 11 L. J., C. P. 138; 1 Webs. E. 585.] Novelty of Invention. Case for the infringement of a patent of 27th March, 1834, No. 6,584, to J. Walton, for " improvements in cards for carding wool, cotton, silk, and other fibrous substances." Plea 3. That the said invention was not at the time of making the said letters patent a new invention as to the public use and exercise thereof within England. Issue. The patent related to a method of constructing cards for carding wool, cotton, &c. The specification described a mode of sHcing sheets of india-rubber from a block by means of a sharp knife. The sheets were then cemented to linen cloth, and wire dents were inserted. In some cases the linen cloth was cemented between two sheets of india-rubber. Walton v. Potter and Horsfall. 489 Claim : " The application and adaptation of india-rubber as the fillet sheet or medium in which the dents or teeth are to be set together in the manufaetiu'e of cards, and thereby obtaining a superior elasticity and dm-ability to cards as above described." At the trial, defendant gave in evidence the specification of a patent of loth Marcit, 1825, No. 5,120, to T. Hancocl:, for a patent leather which was made as follows : — A piece of cotton cloth was stretched on a board and coated mth a compound of india-rubber and glue. It was then covered %vith a layer of carded cotton, upon which a fresh coating of the compound was spread. A second piece of cloth was placed over all, and the material was compressed between plates of metal passed through rollers, thereby forming the patent leather. At the trial, Tindal, C.J., directed the jiuy : — Where a party iWebs.R. has obtained a patent for a new invention, or a discovery he has ^' made by his own ingenuity, it is not in the power of any other person, simply by varying in form or in immaterial circumstances the nature or subject-matter of that discovery, either to obtain a patent for it himself, or to use it without the leave of the patentee, because that would be in effect and in substance an invasion of the right ; and, therefore, what you have to look at upon the present occasion is not simply whether in form or in circumstances, that may be more or less immaterial, that which has been done by the defendants varies from the specification of the plaintiff's patent, but to see whether in reality, in substance, and in effect, the defendants have availed themselves of the plaintiff's invention in order to make that fabric. There can be no doubt whatever that, although one man has iWebs.R. obtained a patent for a given object, there are many modes still P" ^^*^' open for other men of ingenuity to obtain a patent for the same object ; there may be many roads leading to one place, and if a man has by dint of his owti genius and discovery, after a patent has been obtained, been able to give to the public "uithout reference to the former one, or borrowing from the former one, a new and superior mode of arri^dng at the same end, there can be no objec- tion to his taking out a patent for that piu-pose. But he has no right whatever to take, if I may so say, a leaf out of his neigh- bour's book, for he must be contented to rest upon his own skill and labour for the discovery, and he must not avail himself of that which had before been granted exclusively to another. Verdict for plaintiff. Rule nisi for a new trial, or to arrest the judgment on the ground 490 Walton v. Potter and Hoesfall. that the invention was not the subject-matter of a patent, dis- charged by the Court of Common Pleas, (Tindal, C. J., Coltman, Erskine, Maule, J J.) iWebs. R. Per TiXDAL, C.J. — I am not prejDared to deny — on the contrary, I am ready to admit — that if there were an issue raised upon the record, which involved the validity of the patent, I was boimd to give my opinion one way or the other to the jury, that it was a void or a valid patent ; but looking at these issues I do not see any one which raises the question. . . . The one that comes nearest to it is the 3rd issue, but that dii-ects the mind of any person looking at it to a very different inquiry from that involving the question — whether the invention is, within the meaning of the statute of James, a manufactm-e for which a patent may be granted — taking it for granted that it is a manufactm'e, and only raising the ques- tion whether, being a manuf actui'e, it was in public use and exercise at the time the patent was granted or not. . . . When we look at the notice of objections delivered imder the authority of the Act of Parliament, and out of which the Com-t cannot go, I do not see one which is pointed to that specific ground of invalidity. nVebs.E. Per CoLTMAX, J. — I think that the patent is a valid patent. It ^ ■ is true that the invention is very simple in its nature ; but upon the best consideration I can give to this subject, I think, though it is a very simple ada^^tation of caoutchouc as a fillet, still it is an adaptation of caoutchouc as a fillet in a manner not j)raetised before ; a substance, indeed, well known before, but whose properties and equalities for the piu-pose of being adapted to this particular pm-pose had never been known or used before; and, therefore, it was properly the subject of a patent. Walton v. Bateman. [A.D. 1842. 1 Webs. E. 613.] Prior ex]:>eririiental User — Sufficiency of Specification. Case for the infringement of the same patent. Pleas : 1. Not guilty. 2. That the invention was not new, 3. That it was not a new manufacture within the statute. 4. That the specification was insufficient. Issue. At the trial, it api)eared that the alleged infringement consisted in fonning the backs of cards by cementing together several pieces of cloth, with a layer of india-rubber cement between each. Also that a small quantity of Uancoelin patent leather had been sup2:)lied to certain manufacturers, for the purpose of making card backs, between Jiw/y, 1826, and Dec. 1827, but not subsequently. Walton v. Bateman. 491 Cresswell, J., directed the jury: — Even supposing that the iWebs.R. article {Rancock's patent leather) did embody the principle of the ^" plaintiff's, so as to present to persons using it the properties, qualities and advantages in principle of that article which the plaintiff makes, the question for you will be, whether that user is not to be considered rather in the nature of an experiment than of any public use of the article, so as to deprive the plaintiff of the fruit of this discovery in respect of this manufacture. His Lord- ship then referred to the question as to the sufficiency of the specification, and continued : — It is a question for the jury whether the plaintiff has given such a description of his invention, and of the manner of carrying it out, as will enable a workman of com- petent skill in that line of business to act upon it. And he further said : — I will point out to you what has been the general rule on the subject of these specifications, to show what information a person must give to the public, because if a man Imows a better mode than that which he states to the public, that would be very unfair and wrong, and his patent would be vitiated by it. Verdict for plaintiff. Walton v. Lavatee. [a.d. 1860. 8 c. b., n. s. 162 ; 29 l. j., c. p. 275.] Assignment of Patent in separate Moieties — Evidence of Infringement — Estoppel — Account. Case for the infringement of a patent (in part disclaimed) of 7th Jan. 1858, No. 23, to M. L. J. Lavater (defendant), assigned to plaintiff, for " the application of the principle of exhausting air for fixing pegs to solid siu'faces." Plea : Not guilty. Issue. The amended specification stated: — "My invention consists in the application of the principle of pneumatics to cause pegs to adhere mechanically on solid surfaces, such as glass, walls, panels, and furniture." The principle was that of the common sucker. The base of a peg was cup-shaped and was covered with a flat disc of india-rubber. On pressing the peg against a smooth sm-face, and then pulling out the centre of the disc by means of a screw, a vacuum was formed underneath the cup, and the atmospheric pressure held the peg in situ. The specification described the con- struction of the pegs, and the modus operandi, without referring to any drawings. There was no separate claim. At the trial, it appeared that articles called " plate-holders," wherein the same principle of exhaustion was applied in the same manner, had been in common use before the date of the patent. Such plate-holders were used by photographers in manipidating 492 Walton v. Lavater. glass plates. Also that defendant liad assigned one moiety of his patent to plaintiff, and the remaining moiety to other parties, D. and Gr., who had subsequently assigned their share to plaintiff. The alleged infringement consisted in the importation from France of the patented articles, and in the sale of the same in London and elsewhere in Enyland. Byles, J., directed the jmy : — That the defendant, having sold the patent, and received the pm-chase-money, could not be allowed to say that the invention was not new, and he directed a verdict for plaintiff with nominal damages, reserving the point whether certain pegs called " plate-holders " were within the description of the specification. Verdict for plaintiff. Rule for a new trial, on the ground that the assignee of two separate moieties of a patent was not entitled to sue for an infringe- ment, refused by the Court of Common Pleas. (Erie, C.J., Williams, Willes, JJ.) 8 C._B. Per Erle, C.J. — As to the point — that the plaintiff, being the ^' ' * assignee of the two moieties of the patent, is not entitled to sue for an infringement in the same manner as he would have been if he had taken the whole interest in the patent under one assignment — we are of opinion that the assignment to the plaintiff of that partial interest, under the deed of 1858, made the plaintiff in effect tenant in common with the defendant of the entirety of the patent ; and that, the defendant ha^dng afterwards assigned the remaining moiety to D. and Gr., when D. and Gr. assigned to the plaintiff in 1859, the plaintiff became assignee of the whole patent, as if the original assignment to him from the defendant had comprised the whole. Eule nisi to enter a verdict for defendant — on the groimds that the patent was not wholly vested in plaintiff ; and that the sale of articles imported from abroad was not an infringement ; and for a new trial on the ground of misdirection — discharged by the Coiu't of Common Pleas. (Erie, C.J., Keating, Byles, J J.) 8 c. B. Per Erle, C.J. — I think the law will be much better laid down ^' ^^*' as we lately, whether rightly or wrongly, held in BunncI{ffY. Mallet (7 C. B., N. S. 209), that an assignee, whether of the entirety of a patent, or of a part or share in it, takes the legal interest, and is not to be considered merely as a licensee. 8 C. B. The next point contended for is, that the mere sale of articles ^' imported from abroad is not an infringement of the patent, though the making of them would be. The words in the statute of James are working or making. In the granting part of the letters patent Walton v. Lavater. 493 the words are " make, use, exercise, and vend;" in tlie prohibitory part, " make, use, or put in practice." All these words are susceptible of some of the constructions which have been con- tended for ; but it appears to me to be clearly the intention of the Crown, in granting letters patent for a new invention, to prohibit and prevent third persons from using the patent article for the purpose of profit by selling. The object is to give to the inventor the profit of his invention ; and the most effectual way of de- feating that object would be the permitting others to derive from the sale of the patented article the profit which it was intended to secure to the patentee. It seems to me, therefore, that proof that a party has sold the patented article, Avithout proof of his having made it or procured it to be made, would be good evidence to warrant a jiuy in finding that he has been guilty of an infringe- ment. As to the circumstance of the goods having been imported from abroad, I should say, that if this were simply the case of an importation, without any proof of knowledge on the part of the importer that the article imported was a patented article, the mere sale would be sufficient to charge him. But it is unnecessary to lay that down here, for the defendant acted with full knowledge : he has not imported goods by hazard which have been made by another manufacturer ; but he has imported articles with his own name stamped on them as the maker, which he well knew to be a violation of the patent. As between these parties, the defendant, who has received a large sum for the sale of this patent, ought not to be allowed to raise any question as to its validity. Per Byles, J. — As to the selling patented articles not being an s C. B. infringement — I will not say a word as to the principle, but upon P- ^^'^* authority the matter stands thus — there is no authority to sliow that it is not, and there are two distinct authorities to show that it is. In the case of Minter v. WiUiams (4 A. & E. 251) every one of the learned judges gave his judgment on the ground that exposing for sale was not selling, which leads to the inference, as clearly as if it had been expressed in words, that in their opinion a vending or selling of the patented article is an infringement of the patent. Order made (under stat. 15 & 16 Yict. c. 83, s. 42) for an accoimt of all profits of which plaintiff had been deprived by means of the infringement by the defendant of the letters patent, and that defendant do pay to plaintiff the amoimt of such profits. The master certified that the profit of which plaintiif had been deprived amounted to 697/, Qs. ( 494 ) Watson v. Pears. [A.D. 1809. 2 Camp. E. 294; 1 Webs. E. 154, «.] Enrolment of Specification— Computation of Time. Case for the infringement of a patent. At the trial, it apioearecl that the patent bore date the 10th of May, 1808, and contained the proviso that the specification should he enrolled "^^dthin one calendar month next and immediately after the date thereof." The specification was enrolled on the 10th of June following. Lord Ellenborough, C.J., held that this was a good enrolment, and said :— The case cited upon the statute of enrolments {TJiomas v. Popham, Dyer, 218 h ; F. Moo. 40, s.c.) I think is expressly in point. That shows that the day on which the patent bears date is not to be reckoned. Wegmann v. Coecoran. [A.D. 1878—79. L. E., 13 Ch. D. 65.] Biifficiency of Specification. Action to restrain the infringement of a patent of 6th Mar. 1874, No. 823, to T. N. Palmer, for " an improved machine or apparatus for treating or preparing meal." (A communication from abroad by F. Wegmann.) The invention related to the production of flour by rolling pres- sm^e instead of by grinding. The provisional specification stated that the invention related to an improved machine for treating or preparing meal, in which the meal was fed by two wooden feeding rolls upon two pairs of squeezing rolls. One roll of each pair of squeezing rolls had its bearings in the framework; but the other was moimted on a movable lever and pressed against the former by weights. Scrapers were provided for removing any meal which might adhere to the surface of the squeezing rolls. The specification showed cbamngs of the machine, and the only description of the material of the squeezing rollers was the follow- ing : — " The squeezing rolls are to have a surface consisting of material containing so much silica as not to colom- the meal or flour. I prefer to make them of iron, coated with china, and finely turned with diamond tools." Claims : 1. One or more rolls a or c, and corresponding rolls d or e, the latter being pressed against the former automatically, substantially as and for the pmqoose set forth. 2. The application of squeezing rolls having a sm^face consisting Wegmann v. Corcoran. 495 of material containing so mucli silica as not to coloiu' tlie meal or floui", and so as to have the hardness required for the purpose set forth. Per Fry, J. — I have read the whole of the specification, and ^^Ch. D. I have come to the conclusion that it does not fairly and honestly and with sufficient exactitude describe the invention which had been made by Mr. Wegmann. To prevent all misunder- standing, let me say that it does not escape me that Mr. Wegmann is not the patentee, but that Mr. Palmer is. But the question though different in form is the same in substance, because if Mr. Wegmann did not communicate to Mr. Palmer the invention with sufficient exactitude to enable him to describe it, so that the public in England reading the specification might be able to imderstand it, then no true invention was communicated by Wegmann to Palmer, and Palmer was not the true and first in- ventor within the meaning of the statute. Although I have come to the conclusion that hard china is 13 Ch. D. ■ • t) 79 pointed out in the specification, it appears to me that the infor- mation which the plaintiff himself told us he got for the purpose of his invention from a professor of chemistry, viz., that the material must contain 70 or upwards of 70 per cent, of silica, was not indicated to the person who was to act upon this specification, but that he was left to find out as best he could what amount of hardness he must reach before he could use the rolls for the pur- pose of invention, and that, as it appears to me, he would not have been able to discover mthout considerable investigation and experiment. But further than that, there is a difficulty in the way in which the china is to be applied to the iron. ... To say the least, there is the greatest ambiguity in the description, and the plaintiff has not condescended to give those particulars which are necessary in order to satisfy the condition that he should particularly ascer- tain and describe the nature of his invention, and the manner in which the same is to be performed. Now. . . I will inquire what is the class of materials which he 13 Ch. D. claims as being part of his patent for the purpose of these rolls. They must have so much silica as not to colour the meal or flom\ In my opinion that is a misleading statement of the quality required. The evidence shows that you may increase the amount of silica as much as you will, and yet the material will come off and will colour the flour unless you do something to give tough- ness to it. The only material which has been shown to answer the 496 Wegmann v. Corcoran. purpose is one whicli contains a considerable portion of alumina. . . To tell the reader of the specification that what you require is a material containing so much silica as not to disintegrate, is, in effect, to assert that non-disintegration is a function of silica, whereas it is really a function of silica and alumina united. Plaintiff appealed, but the Court of Appeal (James, Bag- gallay, Thesiger, L. JJ.) dismissed the appeal mth costs. 13 Ch. D. Fcr Thesigek, L.J. — It behoved the patentee, in order to give ^' ' the public the benefit of his invention, to describe very particularly the material required for the rollers, and the mode in which rollers of that material were to be constructed. We cannot think that he has done either the one or the other. . . Every step in the application of the invention as specified would necessitate' experi- ment, not merely for adopting the best among many known materials and modes of construction comprised in a general de- scription in the specification, but for the purpose of discovering a suitable material, and finding a practical mode of construction. 13 Ch. D. Per James, L.J. — The patentee could have described the ma- ^' chine which he has actually constructed, and which he claims to be his invention, in simple words — intelligible to any miller and to any maker of mill machinery — thus: — "I make the rollers or hollow cylinders of hard china, which I have obtained at the works of a certain maker, and having turned them with a diamond tool, I place them round a core of iron, with a bedding of sulphur between the iron and the china." He might have gone on, and probably would have gone on, to say : — " Other modes of con- struction may be adopted, but what is essential is that the rollers should have a sm-face of hard china, like the true or Oriental china, or of a china-like material, suflSciently hard but not brittle." It seems to me impossible to say that the words actually used in the specification would convey, even to a well-informed miller, or to a more than ordinarily skilful maker of mill machinery, or to the two in consultation, that meaning or anj'thing like that meaning. If the patentee at the date of his specification had actually con- structed rollers, such as have been exhibited to us, he ought to have described them in plain language, and not in words which appeared to me not only insufficient, but, according to theii' plain natural import, wholly misleading. I can conceive that millers and makers of mill machinery may be as ignorant as myself and not know that an iron roller could not be coated with china capable of standing the work. ( 497 ) Rex v. Wiieelek. [A.D. 1819. 2 B. & Aid. 345.] Variance hdween Title and Specification — Sufficiency of Specification. Sci. fa. to repeal a patent of 28tli March, 1817, No. 4,112, to I). Wheeler, for " a new or improved method of diying and pre- paring malt." The specification stated : — " My invention consists in the heating of malt to 400"* Fahi-. and upwards, so that the greater part of the saccharine and amylaceous principles of the grain become changed into an extractive matter of deep brown colom- readily soluble in hot or cold water. A small quantity of the malt so prepared may be used as a substitute for the colouring- agent made of sugar." It went on to say : — " The proper degree of heat and the time of exposui-e will be easily learnt by experi- ence, the coloiu- of the internal part of the grain affording the best criterion." The drawing showed, inte)- alia, an apparatus consisting of a hollow iron cylinder open at both ends, and having a screw- like channel withinside, whereby the grain was progressively carried forwards as the cylinder rotated, and was delivered when suffi- ciently heated. There was no separate claim. At the trial, Abbott, O.J., was of opinion that the title of the patent showed that it was obtained for a different thing from that stated in the specification. Also that the title was defective in not stating the piu'poses to which the article, when prepared, was to be applied ; and that the specification did not state the jDrocess with sufficient precision. Yerdict for the Crown. Eide for a new trial refused by the Coiu-t of King's Bench. (Abbott, C.J., Bayley, Holroyd, JJ.) Per Abbott, C.J. — The cause was tried before me ... . when, 2 B k A. upon reading the patent and specification (for a specification nacl in fact been enrolled), it appeared to me that the proviso had not been complied with ; and this question arising upon written instru- ments, and being therefore properly a question of law, I directed the jury to find for the Crown on that issue, which was accordingly done. His Lordship went on to say that the patentee had repre- sented to the Crown that he was the first and sole inventor of a certain matter or thing, and that the Crown, yielding to his representation, had granted him the sole privilege of using the invention on certain conditions, and continued : — It is obvious, therefore, that if the patentee has not invented the matter or thing of which he represents himself to be the inventor, the consideration of the royal grant fails, and the grant conse- n K K 498 Rex v. Wheeler. quently becomes void. And this will not be the less true if it should happen that the patentee has invented some other matter or thing, of which, upon a due representation thereof, he might have been entitled to a grant of the exclusive use. The word " manufacture ". has been generally understood to denote either a thing made which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope, and many others ; or to mean an engine or instrument, or some part of an engine or instrmnent, to be employed either in the making of some previously known article, or in some other useful pui'pose, as a stocking-frame, or a steam-engine for raising water from mines. Or it may perhaps extend also to a new process, to be carried on by kno"s\Ti implements, or elements, acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a better and more useful kind. But no merely philosophical or abstract principle can answer to the word " manufacture." Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, is requisite to satisfy this word. 2 B_& A. The defendant has represented himself to the Crown to be ^\q ^" ^ ■ inventor of " a new or improved method of drying and preparing malt," . . . Then has the patentee by his specification shown him- self to be the inventor of any method of drying or preparing this well-known article ? For this we look at the specification ; and we there find that he claims to be the inventor, not of a method of drying or preparing this well-known article, but of a method of gi\'ing to it, when previously prepared, some qualities which it did not possess before, or which it possessed only in a very slight degree, viz., the qualities of being soluble in water, and colouring the liquor in which it shall be dissolved, which latter is the object in view. And this is to be effected by a second and additional process, the application of a very high degree of heat. We think the invention mentioned in the specification so entirely different from that mentioned in the patent, as that the latter (if any such there be) remains wholly undescribed and unspecified, and conse- quently that the issue could not be found for the defendant. His Lordship then commented on the specification, pointing out that it omitted to refer to the condition of the malt, the temperature of the heating process, or the length of time it was to last, and 2 B. & A. said : — A specification which casts upon the public the expense and ^' ^ ■ labour of experiment and trial is undoubtedly bad. . . . There is Rex v. Wheeler. 499 either no certain and clear process described, or the process described is such as might be practised without the assistance of the patentee. White v. Fenn. [a.d. 1867. 15 w. e. 348 ; 15 l. t., n. s. 505.] Evidence of Infrinfjement—User of Part of a Comlination. Case for the infringement of a patent of 11th Jan. 1862, No. 83, to J. White, for "improvements in oil-cans." Plea: Not guilty. And other pleas denying the novelty and utility of the invention. Issue, The patent related to an oil-can, in which an orifice leading to the spout was closed by a valve placed at one end of a lever of the first order, having a fidcrimi near the centre. A spiral spring was attached to the top of the can, and fastened to the lever on the side removed from the valve, the valve being opened against the pull of the spring by means of a plunger pressing down one end of the lever. Each time that the plunger descended some air was let into the can. The specification described the invention minutely by reference to drawings, and showed the lever suppoiied against the under side of a wire fastened to brackets, one on each side of the can. Claim : " The exclusive right and title to the invention, the ex- clusive right to which is set forth in the outset [here referring to certain parts of the specification] of this my specification thereof." At the trial, it appeared that it was not new to have a valve in the spout of an oil-can closed by the action of a spiral spring upon a bell-crank lever connected with the valve and opened by a plunger, the same having been patented on 17th July, 1855, No. 1,604, by A. Burdess. The alleged infringement consisted in the use of a lever similarly supported by the aid of brackets and a cross wire, but having a lock spring underneath the lever instead of a spiral spring above it. The jmy found that the invention was new, and that defendant had infringed by the use of the spring and brackets. KeatinCx, J., directed a verdict for plaintiff. Leave reserved. Rule nisi to enter a nonsuit, on the ground that there was no evidence of infringement, made absolute by the Com-t of Common Pleas. (Bo\dll, C.J., Willes, Keating, Montague Smith, JJ.) Per Montague Smith, J.— The patent was for a combination, 15 W. E, and the alleged infringement was for parts of that combination ^" only ; and the plaintiff's verdict cannot be supported unless the particular parts of the invention alleged to be infringed were new. K K 2 500 White v. Fenn. I think thej^ were not. The plaintiff's case cannot be supported by proving an infringement of a limited character, "White v. Toms. [a.d. 1867. 37 L. J., Cli. 204.] Subject-matter of a Patent. Suit to restrain from infringing a patent of 27th April, 1864, No. 1,055, to J. White, for "improvements in ladies' mourning bonnet and hat falls." The patent related to a mode of making falls for mourning bonnets so that both sides were alike. The specification stated that a fold of crape was to be applied on both sides of a fall above the bottom fold, instead of on one side only as heretofore, and that the edges of the folds were to be pressed down so as to hide the stitches. Claim : *' The forming both sides of ladies' moiu-ning bonnet and hat falls alike by applying thereto the fold above the bottom fold on each side thereof as explained." Malixs, V.C, refused to grant an injunction, and said: — Whereas formerly the fold was sewn on one side only, now it is sewn on both sides ; so that whichever way it is turned it has a good side outwards. There is no iuvention in it. However meritorious as an improvement, which might probably have been registered for one or two years, it is not the subject of a patent. Williams v. Nash. [a.d. 1859. 28 Beav. 93 ; 28 L. J., Ch. 886.] Payment of Stavip Duty — Computation of Time. Suit to restrain from infringing a patent bearing date 26th Feb. 1855. It appeared that a stamp duty of 50/. was paid on 26th Feb. 1858, and defendant insisted that the patent had lapsed. (See stat. 16 & 17 Yict. c. 5, s. 2.) Eomilly, M.R., held that the pay- ment of the stamp duty on the 26th of Fcbnianj was within time. Whitton v. Jennings. [a.d. 18G0. IDr. &S. 110.] Practice in Patent Suits — Affidavit. Suit to restrain from infringing a patent. Plaintiff applied for an interlocutory injunction until the hearing, and for leave to bring an action at law, but he did not file any affidavit as to the validity of the patent or the novelty of the invention. KiNDERSLEY, V.C, said : — I cannot grant an injunction, neither Whitton v. Jennings. 501 can I grant leave to bring an action, unless tlie plaintiff files an affidavit as to tlie novelty of the invention and as to the validity of the patent ; that affidavit must he very clear and distinct on the subject, and the motion must stand over for that purpose. Willis v. Davison. [A.D. 1863. 1 N. E. 234.] Novelty of Invention — Subject-matter of a Patent. Case for the infringement of a patent of 28th Feb. 1851, No. 13,538, to H. Willis, for "improvements in the construction of organs." Pleas : 2. That the invention was not a new manu- factvu-e. 3. That plaintiff was not the true and first inventor. 4. That the invention was not the subject of a patent. Issue. The material part of the patent related to an invention for bringing certain stops under the command of the performer, so that he could effect the changes of putting them in or drawing them out without raising his hand from the keys of the in- strument. For this pm-pose the stop was actuated by a separate bellows, called a jmeimatic lever, an apparatus commonly used in organs, and supplied with compressed air from the main bellows. The specification contained a drawing of the apparatus, and de- scribed the pneumatic lever as connected with the stop. When the performer pressed a finger-key the lever was set in action by the opening of an ordinary flap valve ; and when the finger was withdrawn the valve closed by a spring, and opened a double-heat compensating valve for the rapid escape of air. The object was to make a large opening with a. small expenditure of force ; and this was effected by constructing the escape valve of two discs, threaded on separate spindles, and attached to the opposite ends of a rocking-bar, whose fulcrum was outside the pneimiatic lever. One disc moved inwards and the other outwards, and the pressure of the air was thereby balanced. Claim : " The application to pneumatic levers of the improved escape valve, whereby the reiterating power of the pneumatic lever is greatly increased. Also, the mode of arranging the pneumatic levers as above described." At the trial, it appeared that compound disc or balanced valves, thi-eaded on one spindle, were commonly used in steam-engmes, and were old. Also that, before the patent, a compound valve similar to plaintiff's had been fitted to pedal organs as a supi^ly valve, in order to obtain greater ease in working ; but it was admitted that the use of such a valve in combination with a 60. 502 Willis v. Davison. pneumatic lever, as an escajje valve, was new. Verdict for plaintiff. Leave reserved. Eule nisi to enter a verdict for defendant on 2nd, 3rd and 4tli issues, made absolute by the Court of Queen's Bencb. (Cockbum, C.J., Wigbtman, Crompton, Mellor, J J.) Fcr Curiam.— The pneumatic lever is only another fonn of bellows. It appears that there was an old use of this invention for the pm-pose of easing the working of organ bellows, Om- judg- ment, therefore, proceeds upon the ground that the novelty of the patent has been successfidly impugned, and that the patent is bad. Wood v. Zimmer. [A.D. ISlu. Holt, N. P. 58; 1 Webs. E. 82, «.] Patent void for Concealment — Prior Puhlic Sale. Issue out of Chancery to try the validity of a patent of 20th Jan. 1812, No. 3,519, to J. Ziiik, " for a new method of manu- facturing verdigris." Objections, (1) specification insufiicient, (2) prior public sale. The specification stated that granulated copper and oil of vitriol, in certain proportions, were to be boiled together in a vessel of par- ticular construction as described, and that the liquid was afterwards to be strained off and mixed with a solution of potash or soda. At the trial, it appeared that Ziiik was accustomed to put aqua- fortis into the boiler, whereby the copper was dissolved more rapidly. Also, that four months prior to the date of the patent he sold, imder the name of Dutch Imperial Green, a ciuantity of verdi- gris manufactm-ed according to the process subsequently patented. GriBBS, C.J., directed the jmy: — A man who applies for a patent, and possesses a mode of carrying on that invention in the most beneficial manner, must disclose the means of producing it in equal perfection, and with as little expense and labour as it costs the inventor himself. The price that he pays for his patent is, that he will enable the public, at the expiration of his privilege, to make it in the same way, and with the same advantages. If anything which gives an advantageous operation to the thing invented be concealed the patent is void. Now though the specification would enable a person to make verdigris substantially as good without aquafortis as with it, still, inasmuch as it would be made with more laboiu: by the omission of aquafortis, it is a prejudicial concealment and a breach of the terms which the patentee makes with the public. To entitle a man to a patent, the invention must be new to the world; the public sale of that which is afterwards made the Wood v. Zimmer. 503 subject of a patent, thougli sold by tlie inventor only, makes tbe patent void. It is in evidence that a great quantity was sold in the course of four montlis before tbe patent was obtained. His Lordsbip left two questions to the jury:— 1. Whether aquafortis was used by the inventor as an ingredient in the verdi- gris ? 2. Whether the invention was in public sale before the patent ? In either case he thought the patent void. The juiy found both questions in the affirmative. Yerdict for defendant. Wren and Another v. Weild. [A.D. 1869. L. E., 4 Q. B. 213, 730 ; 38 L. J., Q. B. 88, 327.] Slander of Title relating to a Patent. Action for slander of title. The declaration alleged that de- fendant falsely and maliciously wrote to and told persons who had bought certain machines of plaintiffs that the said machines were infringements of his (defendant's) patent, and claimed royalties for the use of the said machines, and threatened legal proceedings if they used the same without pa^nnent of royalties. Plea: Not guilty. Issue. Eule nisi for defendant to deliver particulars of the alleged infringements of his patent, made absolute by the Court of Queen's Bench. (Cockburn, C.J., Mellor, Hayes, JJ.) Per CocKBL-RN, C.J.— The defendant has driven the plaintiffs to 4^8. take the initiative, and they ought to be in the same position as if the defendant had brought an action against them for the infringe- ment of his patent. At the trial, plaintiffs' counsel offered to prove that the specifi- cation of defendant's patent claimed matters that were not new ; but Lush, J., ruled that this evidence was immaterial, and directed a nonsuit. Eide nisi for a new trial, on the grounds of rejection of evidence and misdirection, discharged by the Court of Queen's Bench. (Blackburn, Lush, Hayes, JJ.) Per Blackburn, J.— We think that as soon as it was shoA\Ti in 4 Q. B. evidence that the defendant really had a patent right of his mvn P" and was asserting it, the occasion privileged the communication, and the plaintiffs were boimd to prove such malice as would support the action. . . . But we think that, supposing every- thing had been proved which the evidence tendered coidd have proved, there would have been no case on which the jmy could properly have found for the plaintiffs. ... We think the action could not lie unless the plaintiffs affirmatively proved that the de- 504 Wren and Another v. Weild. fendant's claim was not a hond fide claim in support of a right wliicli, with or ■uithout cause, lie fancied he had ; but a mala fide and malicious attempt to injure the plaintiffs by asserting a claim of right against his own knowledge that it was without any foimdation. Wright v. Hitchcock and Another. [a.d. 1870. L. E., 5 Ex. 37 ; 39 L. J., Ex. 97.] Evidence of Infringement — Variance between complete and provisional Specifi- cations — Subject-matter of Patent — Infringement by scde of Patented Articles. Case for the infringement of a patent of 19th Feb. 1862, No. 448, to J. Willcox, for " improvements in the manufacture of frills or ruffles, and in the machinery or apparatus employed therein " (a communication from abroad). Defendants pleaded not guilty ; that the invention was not new ; and that it was not the subject-matter of a patent ; and it should seem, although not stated in the repoi't, that there was a further plea raising an objection on the ground of a variance between the complete and provisional specifications. Issue. The pro^'isional specification stated : — " The invention relates to a peculiar manufacture of frills and ruffles, and to a peculiar com- bination of mechanism," &c. The complete specification stated : — " The invention relates to a peculiar manufacture of frills, rufiles, or trimmings, and to a peculiar combination of mechanism to be applied to a sewing machine for producing the same. The pecu- liarity is, that the frills are crimped in one direction transversely to the cloth in a perfectly even and regular manner, and are secured by stitches in lieu of the fabric being puckered or gathered in the ordinary manner." It went on to describe the machine, which had a reciprocating knife for raising the folds, and a spring presser for turning them down and holding them until secured by the stitch of a sewing machine, which was incorporated into the apparatus. It further stated : — " Fig. 8 represents the kind of work produced by the machine." The drawing. Fig. 8, showed a double frill, the separate portions of which were secm'ed on opj)osite sides of a narrow flat band, which itself was formed in flat plaited folds, and was made by the machine. Claims: 1. "The general construction, arrangement, and com- bination of machinery, apparatus, or means for producing crimped or plaited frills or trimmings in a sewing machine, as hereinbefore described. 2. The application and use of a reciprocating knife for crimping fabrics in a sewing machine, as hereinbefore described. Wright v. Hitchcock and ANOTHEn. 505 3. TliG peculiar manufactm-e of crimped or plaited frills or trim- mings, as hereinbefore described, and illustrated by Fig. 8 . of the drawings." At the trial, it appeared that the alleged infringement consisted in manufacturing plaits by a machine with a reciprocating knife (as patented on 4th Nov. 1867, No. 3,093, by J. Orr), which was de- scribed in the specification referred to as capable of " folding plaits upon the sm-face of a roller, straight plate, or table," but that the plaits so made were not seciu'ed by a sewing machine. Kelly, C.B., ruled that the bujdng and selling by defendants of plaits made as stated was an infringement, if the manufactm^e by Orr's process was so. Yerdict for plaintiff. Leave reserved. Eule nisi to enter a verdict for defendants— on the grounds that the third claim was not the subject-matter of a patent ; that there was a variance between the complete and provisional specifications ; that there was no evidence of infringement ; and for a new trial on the ground of misdirection — discharged by the Com-t of Exchecj[uer. (Kelly, C.B., Martin, Channell, Pigott, BB.) Per Kelly, C.B. — The first point made in this case is, that the 5 Ex. patent in question is for a particular product, the result of manu- P' facture, and not for a manuf actming process. . . . The title of the patent describes it as being for the invention of " improvements in the manufacture of frills or ruffles, and in the machinery or apparatus employed therein." . . . The specification relates entirely to the machiner}^ and contains from beginning to end nothing which could lead us to construe it as a specification of the articles manu- factiu^ed. . . . The third claim is in these words — "the peculiar manufacture of crimped or x^laited frills or trimmings, as herein- before described and illustrated by Fig. 8 ; " and, looking at the drawing, we find a double frill, or a middle plaited strip with a frill above and a frill below. But is it the kind of frill that is made the subject of the claim ? On the contrary, it is the peculiar mode of manufacturing it, or the frill as manufactured by a reciprocating knife. Therefore, whether we look at the title of the patent, the specification, or the claim, the patent is not for the article manufactured, but for the mode by which the article described is brought into existence. A second point was, that the manufacture includes the use of a sewing machine, or that it is a manufactiu^e by means not only of a reciprocating knife, but of a sewing machine, without which unquestionably the complete article cannot be produced in the manner described. But, looking at the whole specification and 506 Weight v. Hitchcock and Another. claim, this is only pointed out as the best mode of completing the manufacture. The sewing machine is treated as an invention already in use, and it is separate and distinct from the mode of crimping or plaiting to which the plaintiff lays claim. This point, therefore, also fails. A thuxl point made is, that there is an inconsistency between the provisional and final specification, the word " trimming " being added in the latter. But by whatever name it is described, the thing is in substance identical. 5 Ex. The last point is, whether the selling by the defendants of articles P" '^^' manufactured by the plaintiff's process is an infringement. To determine this, we must look at the words of stat. 21 Jac. I. c. 3, s. 5, which excepts from its nullifying operation patents for the " sole making or working of any manner of new manufacture ; " and the question is, whether the buying and selling of articles made by the patented machinery is a " working or making " within the meaning of the Act. The statute does not contain the word " rend'' which is found in the grants of patents, but we may have some regard to the constant usage according to which for 200 years patents have contained an express license to use and vend ; and although the use of this word by the Crown is not conclusive upon the construction of the statute, it would be strange if for so long a time every patent should have purported to convey the exclusive right and interest if the grant were unauthorized. But, besides this, the authorities are clear and uniform, and are confirmed by the very recent case of Ebnslie v. Boursier (L. E., 9 Eq. 217) before Vice-Chancellor James. ... I am clearly of opinion that if a man takes out a patent by means of which an article is made at a considerably less cost than the same article was before produced at, one who buys and sells such articles — I do not say on a single occasion, for each case must be determined on its own circumstances, but when he becomes, in the way of trade, a buyer and seller of quantities of such articles — knowing them to be manufactured by a machine which is dc facto, though unknown to him, itself an infringement, such buying and selling is an infringement by him of the patent. If the law were otherwise, then w^hen a man has patented an invention, another might, by merely crossing the Channel, and manufacturing abroad, and selling in London for far less than the original price, but also at a trifle less than the price charged by the patentee, articles made by the patented process, wholly deprive the patentee of the benefit of his invention. It is therefore impossible to suppose that an exclusive right to vend is Wkight v. Hitchcock and Another. 507 not given, and the defendants liave therefore infringed the phiintili's right, and it is immaterial whether it was or was not known to them that Orr's machine was identical with the plaintiff's. Young v. Fernie. Ta.d. 1863—66. 1 De G., J. & S. 353 ; 4 Giff. 577 ; L. E., 1 H. L. 63 ; 33 L. J., Ch. 192 ; 35 L. J., Ch. 523.] Novelty of Invention— Evidence of Infrimjement— Procedure in prosecuting an Appeal to the House of Lords. Suit to restrain from infringing a patent of 17th Oct. 1850, No. 13,292, to J. Young, for " improvements in the treatment of certain bitimiinous mineral substances or matters, and in obtaining products therefrom." The patent related to a method of distilling paraffin oil. The specification stated:— "My invention consists in treating bituminous coals in such manner as to obtain therefrom an oil containing paraffin (which I call paraffin oil), and from which oil I obtain paraffin. The coals which I deem to be best fitted for this piu'pose are parrot coal, cannel coal, and gas coal." It then described the process of distillation of the coal broken into small pieces and placed in a common gas retort, to which was attached a worm-pipe, passing through a refrigerator, kept at a temperatm-e of about 55° Fahr. It went on to say :— " The retort, being closed in the usual manner, is then to be gradually heated up to a low red-heat, at wliich it is to be kept until the volatile products cease to come off ; care must be taken to keep the temperature of the retort from rising above a low red-heat, so as to prevent the products being converted into permanent gas." The crude paraffin oil thus distilled or driven off as a vapoiu' was condensed into a liquid in passing through the worm- pipe. The solid substance, paraffin, was separated from the oil by cooling to a temperatiu'e between 40" Fahr. and 30° Fahi-. Claim : " Obtaining paraffin oil, or an oil containing paraffin, and paraffin, from bituminous coals by treating them in the manner hereinbefore described." Stuart, V.O., directed the trial of ceiiain issues before the 33 L. J. Court of Common Pleas. On appeal. Lord Westbury, L.C, p- ^^-• dii-ected the cause to be restored to the paper of the Vice-Chancellor, to be heard in the ordinary way. The cause then came on for hearing before Stuart, V.C, -without 4 GiflP. a jury, on the following issues :— (1) Was plaintiff the true and ^' ^'^'^^ first inventor ? (2) Was the invention new ? (3) Was the speci- fication sufficient ? (4) Had defendants infringed ? A number 508 Young v. Fernie. of scientific aud other mtnesses were called on botli sides, and it appeared that paraffin was discovered by Dr. Rekhenhach in 1830, and was first obtained from beech-wood tar. Also, that plaintiff had found out that cannel coal, or other highly bituminous coal, was suitable for producing paraffin, but that the temperature should be much lower than that employed in the dry distillation of coal for gas-making, and should not rise above a low red-heat which was visible in the dark. Stuart, V.C, found in favom- of plaintiff on all the issues, and granted an injunction and accoimt, saying : — The main objection to the validity of the plaintiff's patent is that both as to the process and material there is nothing new, and that the specification in- dicates nothing which was not publicly known and publicly used before the date of the patent. 4 GifF. It appears from the e^ddence that for very many years before the P" ^°** discovery of the substances now called " paraffin " and " paraffin oils " the distillation of coals and bituminous substances, at every variety of temperature, had been well known and practised for the production of tars and oils which have been used for lubrication of the ruder kinds of machinery and for bm-ning. ... It is certain that Rcichenhach, although he ascertained the existence of paraffin in coal, did not indicate coal of any kind as a material capable of producing paraffin or paraffin oils in most abundance. 4 GifP. There is no evidence of any specification, of any patents, ox any i'- ^°'^" publication in which cannel coal, or coal which produces olefiant and other illuminating gases in considerable quantity, was indicated as the class of materials among the mde range of animal, vegetable, and mineral substances which, subjected to a proper process, would produce paraffin and paraffin oils in large quantities so as to create a manufacture for commercial piu^poses, till Yoitnrfs specification was published. Cannel coals had been tried by many, but without success. Among the many practical and manufactming chemists who had been vainly attempting to find out how to manufactm-e paraffin oils and paraffin, so as to supply the market, none had been fortunate. The fair result of the immense load of evidence in this case shows the prevailing opinion to have been that not coals of any kind, but shales or schists properly so called, were the best material. Eeferring to the scientific evidence on the part of defendants, his Honour said that experiments conducted for the express pur- pose of mamifactmnng evidence for this cause are to be looked at with distrast, and continued : — As to the many witnesses produced Young v. Fernie. 509 to prove that bog-head coal is a " shale " ; that all cannel coals are shales ; that Kimmcn'df/e shale is coal ; that Leesicood cm4y canuel coal is not a shale, although other cannel coals are shales ; that the manufacture of offensive and unmarketable oils from Eim- meridge shales was a manufacture of Young's oils, and an anticipa- tion of his invention ; that the tar and coke ovens used in South Wales to produce tarry oil, used for lubricating the wheels of tram- waggons, was an anticipation of Young's lubricating paraffin oils — all the immense mass of evidence which the defendants have laid before the Court on these various points failed to produce any serious effect upon my mind towards establishing the case of the defendants, and a reconsideration of it satisfies me of its unim- portance. On the question of temperature, as described in Young's specifica- tion, there has been, in the evidence and arguments on behalf of the defendants, some confusion between the heat applied outside of the retort and the heat of the materials within. There has been a great conflict of evidence, but the result of a careful review and estimate of the evidence leaves my mind satisfied that Young's specification has given the proper directions, and described the proper gradation and limit of temperature, up to and not exceeding a low red heat on the outside of the retort, for producing paraffin oils and paraffin in the greatest abundance which has yet been obtained. On the question of infringement, as well as vdth. reference to the validity of the patent, the defendants have laboui-ed to show by evidence that a temperature lower than a low red-heat, and therefore not according to Young's specification, is that at which they have worked, and is the best temperature for producing paraffin oils and paraffin in the greatest quantity and of the best quality. Their evidence has entirely failed to establish the fact that they have not used for their manufacture the same class of coals and the same gradation and limit of temperature which Young describes, or that a gradation and limit of temperatm-e lower than Young's is the best. Mr. Fernie has adduced in evidence a passage from the work of an eminent American chemist. Dr. AntiseU. This book gives the following extract from a publication by Reichenhach in 1854 : — " So remained paraffin until this hour a beautiful item in the collec- tion of chemical preparations, but it has never escaped from the rooms of the scientific man." This illustrates the important dis- tinction between the discoveries of the merely scientific chemist 510 Young v. Fernie. and of tlie practical maniifactiu'er, wlio invents tlie means of pro- ducing in abundance, suitable for economic and commercial purposes, tliat wbicli had previously existed as a beautiful item in the cabinets of men of science. 4 GifE. "WTiat tbe law looks to is tlie inventor and discoverer wbo finds ^' ' out and introduces a manufactui-e which supplies the market for useful and economical purposes mth an article which was previously little more than the ornament of a museum. It has been established to my satisfaction that the plaintiff Young is an inventor of this class, and that his patent is entitled to the protection of the law. I find that he has ascertained, by a course of laborious experiments, a particular class of materials among many, and a particular pro- cess among many, which has enabled him to create and introduce to the public a useful manuf actm^e, which amply supplies the market with that which, until the use of the materials and process, and temperature indicated by him, had never been supplied for com- mercial pm-poses. At the date of his patent something remained to be ascertained which was necessary for the useful application of the chemical discovery of paraffin and paraffin oils. This brings it within the principle stated by the Lord Chancellor in Hi/k v. Evans (31 L. J., Ch. 457). The manufacture, witli the materials and process indicated by him, according to the sense in which I imder- stand the word " manufactm-e " to be used in the statute, was a new manufacture not in use at the date of the patent. 1 H. L. Appeal to the House of Lords. A preliminary objection was P' ^^' taken that the appeal was not maintainable by reason that de- fendants had omitted to move for a new trial on the findings either before the Yice-Chancellor or before the Court of Appeal. (See stats. 21 & 22 Vict. c. 27, and 25 & 26 Yict. c. 42.) Theii' Lord- ships held that an appeal was only competent to the extent to which error could be shown in the decree consistently with leaving the findings of the Yice-Chancellor entirely unchallenged. 1 H. L. Per Lord Westbury. — Inasmuch as we find a distinct enactment P" ^^' that the verdict of the Court shall have the same effect as the verdict of a jury, and as we know perfectly well tliat the verdict of a jury, if it remained unchallenged, would be conclusive, we must hold the verdict of the Cornet as equal to the verdict of the jury ; and in so doing the cause is not decided on any technical objection, but it is decided by the application of the clear language of the Act of Parliament. The case was now heard in the restricted form imposed by the above judgment, and the appeal was dismissed with costs. ( 511 ) PRIYY COimClL CASES. Ekard's Patent. [a.d. 1835. 1 Webs. E. 5o7.] Validity of Patent. Petition for extension of two patents for improvements in piano- fortes. This was the first application under stat. 5 & 6 Will. 4, c. 83, and their Lordships intimated that in all cases of unopposed ap- plications the Attorney-Greneral should attend on the part of the Crown. Their Lordships also asked for a copy of the specification, say- ing that they must see whether the patent Avas valid ; that if it were palpably bad, it would not be extended. Extension of one patent for seven years. Extension of the other patent refused. Per Lord Lyndhurst. — In cases of this kind we expect a very strong case of hardship to be made out, as well as a strong case upon the utility of the invention. Heueteloup's Patent. [A.D. 1836. 1 Webs. E. 553.] Prior Pnhlication of Invention in a French Book deposited in the Library of the British Museum. Petition for the confirmation of a patent of 22nd May, 1834, No. 6,611, to Baron Uciirfeloiip, for "improvements in certain parts of certain descriptions of fire-arms." The petition stated that the patentee in 1834 invented the said improvements, and every part thereof, and was not aware at the time that any other person had invented or used the said improvements. It appeared that the invention consisted in a small tube made of soft metal, and fiUed with detonating powder ; that the tube was advanced to the touch-hole by the act of raising the hammer of the gun, when a small piece was cut oif and de- tonated without exploding the powder in the tube. Subsequently to the grant of the patent the petitioner had dis- 512 Heurteloup's Patent. covered that in 1821 a patent was granted in France to L. Be ValdaJion for an invention, whereof part consisted of a straw filled with detonating powder, brought to the touch-hole as required, and cut off to prime and fire the piece, but the mode of bringing the straw-tube to the touching was different, and did not constitute the gim a self -priming gun. The petitioner believed that the invention of L. Be Valdahon had never been used in England, or in France, or elsewhere, and was not known in this country. It appeared that in 1832 twenty volumes of a French work, con- taining an account of expired patents, had come into the library of the British Museum, and that the specification of the French patent was given in the work. The Judicial Committee directed that notice of the day fixed for hearing should be given to L. Be Valdahon, and, on affidavit that such notice had been sent thi'ough the post-office, theii- Lordships recommended that the letters patent should be confirmed. (See observations on this case, ;jer Jessel, M.E., in Plimpton v. Makolmson, ante, p. 377.) Westrupp and Gibbins' Patent. [A.D. 1836. 1 Webs. E. 554.] Practice as to Costs loliere the Petition is opposed. Petition, by assignee, for the confirmation of a patent of 24th May, 1831, No. 6,117, to W. Gibbins and T. Westrupp for an in- vention of "improvements in an apparatus for converting sea- water, or otherwise impure water, into fresh and pui-e water." The invention related to a condenser for converting steam into water. The application was opposed on the ground that part of the invention had been before the date of the patent published in a well-known book, and also in the specifications of two prior patents. Petition dismissed with costs. On the opponents asking for costs, Lord Lyndhurst said : — I have read yoiu' objections, and if after that they choose to come, it is for them to take the consequences. My opinion on the subject of costs is this : if a party entitled to oppose does come and oppose, and opposes successfidly, if we do not give costs we shall discourage persons coming to protect the interests of the public. We have the power to give costs in any matter referred to us ; and sitting here as a Judicial Committee, we can give costs under the general act, not under the Patent Act. ( 513 ) South worth's Patent. [a.d. 1837. 1 Webs. E. 486.] New Grant to the Legal Owners of the Patent. Petition, by assignees, for the extension of a patent for bleaching fabrics. It appeared that twenty-two licences had been granted, and an arrangement had been made mth all the parties interested, that in the event of the patent being extended, the licences should be con- tinued on the existing terms. The patentee had expended from 1,500/. to 2,000/. in perfecting his invention, and it f m-ther appeared that the original licensee had become bankrupt, and that the trade in consequence refused to enter into any arrangements until after the close of the legal proceedings. Extension for five years. Per Loud Brougham. — Their Lordships are of opinion that the merits of this invention are quite understood. They are also of opinion that it has been proved that the benefit which the patentee might otherwise naturally be expected to obtain from this specific patent has not arisen, in consequence of the misfortunes of the patentee and those connected with him, as agents and otherwise, in the management of this patent, and they have also taken into consideration in some degree the circumstance of the natiu'e of the invention being such that it woidd not be likely to come into immediate use. . . . The new letters patent must be (by the statute) granted to the party or parties who have a legal interest in the letters patent now exist- ing. Of course the parties must take care that the right party or parties alone have the patent, otherwise it will have no legal effect. In reply to coimsel, his Lordship said that the new patent would be granted to " those in whom the subsisting patent was vested." Swaine's Patent. [a.d. 1837. 1 Webs. E. 559.] Reasons for granting Extension. Petition for extension of a patent of 9th Oct. 1823, No. 4,851, to E. S. Stcaine, for a method of " producing and preserving arti- ficial mineral waters, and for machinery to effect the same." Evidence was given as to the utility of the invention, and the accoimts showed that the expenses amounted to 28,990/. and the receipts to 16,183/., the loss exceeding 15,000/. Extension for seven years. Fer Lord Lyndhurst. — We consider the invention as very G. L L 514 Swaine's Patent. meritorious, the result of a great deal of labour, care and science, and that it is extremely useful in its effects. We are satisfied by reasonable e^'idence that the party has sustained very considerable loss, and under these circumstances we think that the period ought to be extended. Weight's Patent. [A.D. 1837. 1 Webs. E. 561.] The Petitioner must make out his Title. Petition, by assignees, for extension of patent of 15th Mat/, 1824, No. 4,955, to L. W. Wright, for " certain combinations and improvements in machinery for making pins." Application opposed. Their Lordships intimated that it was incumbent on the appli- cants for the extension to make out their title. Extension for five years. Their Lordships recommended the extension of the patent in favour of those in whom the legal estate was vested at the time of the application, and gave no costs. Whitehouse's Patent. [A.D. 1838. 1 Webs. E. 473.] Extension to Assignee on Terms of securing an Annuity to the Patentee. Petition by Russell, the assignee, for extension of patent of 26th Feb. 1825, No. 5,109, to C. WhiteJiouse, for " improvements in manufacturing tubes for gas and other purposes." The patent related to a method of making tubes by bending up the edges of a flat strip of iron plate in the shape of a tube, which was passed into a hollow fire heated by a blast, and was then drawn through a conical paii* of dies, whereby the edges were comj)ressed and welded together, and a perfect tube was formed. It appeared that Whitehouse was a mechanic in the employment of the petitioner Russell, and that Russell had expended 14,000/, in plant and machinery for carrying out the invention. The legal expenses incurred against infringers amounted to 4,000/. The balance of net profit was set down at 13,173/. Extension for six years, on condition that Russell secui'ed to WJtiteJiouse an annuity of 500/. duiing the term of the patent. Per Lord Brougham. — Their Lordships having taken the whole of this matter into account, retain the opinion they have had impressed on their minds from the very beginning, that this is an Wititeitouse's Patent. 515 invention of extraordinary merit, doing the greatest honour to the inventor, and conferring great benefit on the community. Their Lordships have on the same side of the question taken into account (which it is material to mention) Mr. HusselPs merit in patronising the ingenious and deserving author of this invention, in expending money until he was able to complete the invention, and in liberally supplying the funds which were requisite for the purpose of carrying the invention into execution. On the other hand, theii- Lordships have taken into mature con- sideration (which they always do in such cases) the profit made by the patentee, Mr. Russell standing in the place of the inventor. They find that it is not a case as in claims of other inventions of great ingenuity, and certainly of great public benefit, of actual loss in some, and of very scanty, if any, profit realized in others, but that a considerable profit has been realized, and, upon the whole, no loss. It is to be observed that the profit is not perhaps very much greater, if at all greater, than the ordinary profits on stock to that amount, employed without the privileges and extra profits of a monopoly. It is proper to consider that one great item of deduc- tion from those profits also involves great pain and anxiety and suffering to the party, namely, the litigation to which he has been subjected, and which is generally found to be in proportion to the merit and usefulness of a patent. Taking the whole matter into consideration, the merits of the patentee, the merits of Mr. BiisseU, and the loss that has been sustained in the litigation, and setting against those, on the other hand, the profits which have been made, their Lordships are of opinion that the term ought to be extended, and upon due execu- tion being given to the undertaking which has just been given in on behalf of the inventor, that the term ought to be extended for a period of six years. Staffoed's Patent. [A.D. 1838. 1 Webs. E. 563.] Merit and Losses of Applicant tal-en into account, Petition for extension of a patent of 24th Dec. 1824, No. 5,063, to D. Stafford, for " improvements in carriages." The invention related to a method of suspending the body of a carriage so as to bring its centre of gravity below the point of suspension. It appeared that several coach proprietors opposed the introduc- L L 2 516 Stafford's Patent. tion of the improvement on tlie groimd of tlie expense whicli would attend the alteration of the coaches then in use. Extension for seven years. Per Lord Lyndhurst. — The original Act of Parliament allows fourteen years, and it was considered that fourteen years would be the time during which the party would be remunerated ; it turns out that Mr. Stafford has received not only no remuneration, but that he has been an actual loser ; we think, under these circum- stances, it is not imreasonable that he should have the full addition of seven years, only half the length of term which the legislature at the time of James the First contemplated as the proper remu- neration. Kay's Patent. [a.d. 1839. 1 Webs. E. 568 ; 3 Moo. P. C. C. 24.] Extension where the Validity of the Patent is questioned. Petition for extension of several letters patent for England^ Scotland and Ireland, granted to J. Kay, for "improved ma- cliinery for preparing and spinning flax." The patent for England was dated 26th July, 1825, No. 5,226. The application was opposed on the ground that the patent was invalid. It appeared that legal proceedings were then pending {Kay V. Marshall, ante, p. 276), that the patentee had obtained a verdict, but that objections had been subsequently raised in the Court of Chancery. Their Lordships intimated that the case not being decided in the Coiu-t of Chancery, they felt some difficulty in proceeding, and should not do so were it not that the patent would expire in a few days ; but that this Court was not to be substituted in the place of the Court of Chancery to decide the legal question. The usage of the House of Lords had been to grant an extension on the party making out a jorimd facie case, leaving the vahdity of the patent for the determination of the courts of law. The accounts showed that the law expenses of Mr. Kay amounted to 3,700/., that the patents cost about 500/., and the machinery 500/., and that on the whole the patentee had received between 5,000/. and 6,000/. The case made for the petitioner was that his method of spinning had given a great start to the manufacture of flax in this country, and had opened out a new source of national wealth and trade. Extension for three years. ( 517 ) RoBEETs's Patent. [A.D. 1839. 1 Webs. E. 5V3.] 3Ierit of Invention— Prejudice against its Introduction — Allowance to Patentee for Personal Expenses. Petition for the extension of several letters patent for England^ Scotland and Ireland, granted to R. Roberts for " improvements in spinning macliines. ' ' The patent for England was dated 29tli March, 1825, No. 5,138. The invention related to the well-known self-acting mule used in spinning yarn. There was great prejudice against the intro- duction of the new machinery invented by the petitioner. The accounts showed that the receijDts amounted to 35,988/., and the expenditure to 29,044/., lea\'ing a profit of 6,944/. ; hut against this was to be set oif the loss occasioned by a fire at the works where the mules were manufactured, which fire appeared to have been caused by incendiaries, inasmuch as it broke out simul- taneously in several unconnected parts of the building. The loss consequent on the fire, above the sums received for insurance, amounted to 10,154/. It appeared that the receipts during the last three or four years of the term of the patent had amoimted to 5,000/. a year, and that during the first seven years the patentee got nothing, and was imder a great outlay. In estimating the expenditure, allowance was made to Mr. Roberts and his partners according to the time which they respec- tively devoted to the invention. Also the cost of the patents and the legal and travelling expenses were brought in. Lord Brougham said the actual expenses should be taken, but deducting the value of Mr. Roberts's time, and the expenses of taking and defending the patents. Extension for seven years. Per The Lord President. — It is the opinion of the Committee that this patent should be prolonged for the term of seven years as prayed, partly in consequence of the ingenuity of the invention, and partly also in consequence of the peculiar character of the resistance which has been offered to it. Downton's Patent. [A.D. 1839. 1 Webs. E. 565.] Reasons for Extension — Practice as to Costs. Petition, by widow and administratrix of patentee, for extension of a patent of 18th June, 1825, No. 5,187, to J. Dotcnton, for "improvements in waterclosets." 518 Downton's Patent. Application opposed on the ground of the high price charged for the patented articles, and that no advantage had "been allowed to the trade. The accounts showed that from 200/. to 250/. per annum had been received for twelve years, which sum included the profit on capital and remuneration for superintendence and loss of time. A Lord. — The questions are — is it a useful invention ; is it bene- ficial to the public ; is it an invention of that character which would lead us to interpose; is there ingenuity in the invention; and has the party been remunerated? . . . We generally want this proof —that they made nothing for the first seven or eight years, and it only began to be profitable during the latter years. It is no case for extension only to show that you made 200/. a year for the first fom-teen years, and want to make 200/. a year for seven years more. Extension for five years. Their Lordships were of opinion that there were no groimds for the opposition, the Attorney- Gleneral attending on behalf of the public, and they gave the applicant the extra costs occasioned by the opposition. The costs were taxed at 61/. 10s. Kollman's Patent. [A.D. 1839. 1 Webs. E. 564.] Merit and Losses of Applicant considered. Petition for the extension of a patent granted to G. A. Kollman, for "improvements in pianofortes." It appeared that the number of pianos sold by the patentee had been 23, and that he had been a great loser by the invention, which was meritorious. Extension for seven years. Wright's Patent. [A.D. 1839. 1 Webs. E. 575.] Extension where the slow Introduction of the Invention is accounted for. Petition for the extension of a patent of 20th April, 1825, No. 5,154, to L. W. Wright, " for improvements in bleaching and washing fabrics." It appeared that after the patent had been granted the petitioner became a bankrupt, and was unable to bring the invention into profitable use. He subsequently expended considerable simis of money in further improvements, for which he obtained letters patent. Wright's Patent, 519 The Attorney- Greneral said that he was not aware of any objection to the extension, except that the invention had not been brought into use. Several witnesses were then called, who attributed the want of introduction of the invention to the embarrassments of the inventor. There were further difficulties on account of the contracts he was vmder in respect of certain machinery for making pins under a patent which had been extended. It also appeared that the in- vention had been used successfully by several bleachers. Extension for seven years. The Lord Pkesident said that the circumstance of the invention not having been brought extensively into use had been explained by the evidence. Jones's Patent. [A.D. 1840. 1 Webs. E. 577.] Orounds of Extension. Petition, by assignee, for extension of letters patent of 11th Oct. 1,826, No. 5,415, to T. Jones, for "a certain improvement or improvements in wheels for carriages." The validity of the patent had been established by a trial at law {Jones v. Pearce, ante, p. 269), and Sir J. Campbell, A.-Gr., said that he felt it his duty to submit that there was no reasonable prospect that the invention would become beneficial either to the patentee or his assignee, in which case the public ought not to be precluded from the use of it. The accounts showed that the total amount of loss, exclusive of interest on capital, was 15,389/., and mth interest 28,474/. Also that during the last seven years of the term the loss had been 15,505/. This loss had been principally owing to the cost of machinery. About 2,500 wheels had been made. The relative cost of a pair of patent iron and wooden wheels of the same size was 11/. and 71. respectively, but the latter would wear out in two years, while the former would last four years, and when worn out several parts could be used again. Extension for seven years. Per Lord Brougham. — It is perfectly true, as has been stated not only on this, but upon former occasions, that these applications are anything rather than matters of course. This is a very extra- ordinary jmisdiction which has been conferred on the Judicial Committee by the Legislatui-e, and is to be exercised only on the most special grounds alleged and proved in reference to each case. 520 Jones's Patent. Their Lordships are of opinion that in this case the grounds are most decisive, and have been proved in a most satisfactory manner. Their Lordships are of opinion that, in the circumstances of the case, and regard being had to the merits of the invention, and its usefulness to the public, the whole period of seven years' extension should be granted. Bodmer's Patent. [a.d. 1838—40. 2 Moo. P. C. C. 471.] Prosecution ivith effect, operation of Clause relatiyig thereto — Relief hy subsequent Act. Petition for extension of several patents for Scotland, Ireland and England for the same invention of " improvements in machinery for preparing, roving and spinning of cotton and wool." The patent for Scotland expired on 18th Avrj. 1838, and those for Ireland and England on 7th and 14th days of Oct. 1838 re- spectively. Petition lodged on 28th May, 1 838, and notice" was given of application for hearing on 26th June following ; on which day two caveats were entered, whereby it became impossible to bring on the hearing until the 17th August. On that day three of their Lord- ships attended, but it was found impossible to constitute a Court, and the hearing was adjouimed till 29th Nov. following, when the patent had expired. The Attomey-Greneral objected that, the patent having expired, the Court had no jurisdiction under stat. 5 & 6 "Will. 4, c. 83, s. 4, and Lord Brougham said that the words of the proviso were plain, and, being technical, must be taken in their technical sense, and that a prolongation could not be granted. In consequence of this decision the stat. 2 & 3 Yict. c. 67 was passed, and subsequently a fresh application was made to the Judicial Committee. Extension for seven years. Per Lord Lyndiiurst, on the part of their Lordships, expressed the opinion of the Committee, that the subject-matter of the patent was an ingenious invention, and that as the remuneration appeared from the evidence produced only to have been received for the last thi-ee years, and during that period was not of an extraordinary kind, it could hardly be said that the inventor had had sufficiently the benefit of his invention ; they considered, therefore, that they ought to grant an extension for the term of seven years. ( 521 ) Woodcroft's Patent. [A.D. 1841. 3 Moo. p. C. C. 171.] Failure of Merit. Petition for extension of a patent of ^UiMarch, 1827, No. 5,480, to B. Woodcrqft, for " certain processes and apparatus for printing and preparing for manufacture yarns of linen, cotton, silk, woollen, or any other fibrous material." Petition opposed on the grounds that the invention was not new and was not useful. Extension refused. Lord Brougham said that the Committee did not think there were sufficient merits to warrant them in putting the powers of the Act 5 & 6 WiU. 4, c. 83, in force. Simister's Patent. [A.D. 1842. 4 Moo. P. C. C. 164 ; 1 Webs. E. 721.] Presumption regarding Utility. Petition for the extension of a patent of 18th Dec. 1828, No. 5,744, to J. Simister, for " improvements in weaving a fabric, and the application thereof to the making of stays." Caveats were entered by several parties. At the hearing, petitioner offered to insert a proviso in the new letters patent for avoiding the same if any action should be brought for past infringement, and it appeared that in W/u'fe/iouse's case a recital was inserted in the new letters patent granted to Russell, the assignee to the effect that the securing of an annuity of 500/. per annum to the original inventor was part of the consideration of the grant. It was stated that the Queen's warrant directs the Attorney-Greneral to insert any proviso he may judge requisite. Extension refused. Their Lordships expressed an opinion, during the argmnent, that the fact of an invention, when known, not getting into general use is a presumption against its utility ; and that one of the con- siderations for extending the term of a patent is that the public will be benefited after the term has expired, which did not appear here. Galloway's Patent. [A.D. 1843. 1 Webs. E. 724.] Sulsequent Improvements in an Invention do not weaJcen the Claim on the Original Patent — Proof of Title. Petition, by assignee, for the extension of a patent of 2nd Jult/, 522 Galloway's Patent. 1829, No. 5,805, to E. Gallouwj, for "certain improvements in steam-engines, and in machinery for propelling vessels." The patent related to a feathering paddle-wheel, and had been the subject of litigation (see Morgan v. Seaward, ante, p. 307), entailing an expense of 2,423/., and resulted in the filing of a dis- claimer of part of the invention. The original inventor concm-red in the application. The losses of the petitioner in respect of the patent amounted to about 8,000/. Caveats were entered by several parties. The petitioner's title was proved by calling the attesting ^vitnesse3 to the execution of the deeds of assignment, their Lordships having intimated that the title must be strictly proved. On cross-examination of the witnesses as to the failure of novelty and utility in the invention, their Lordships intimated that unless it was contended that the invention was altogether useless, it was not the practice of the committee to enter into these questions, especially after there had been a discussion upon them in a comi of law. Extension for five years. Per Lord Brougham. — It appears that improvements were made in the float— such manifest improvements, that no person would after these ever think of persisting in using the invention as it originally stood, but would have recom^se to the improvements. That, however, is no reason against the claim of the original inventor ; it is only saying that his invention, though useful, has been capable of improvement ; and its having been improved affords no reason for denying him an extension of the patent, if upon other grounds he has merit, and if upon other grounds he is shown not to have reaped a due benefit in proportion to that merit. If such an argument were to prevail, any improvement made by him upon the patent would at once take away the patentee's right to obtain, under whatever circumstances he may come before this Court, a recommendation to have under the Act of Parliament, an enlargement of the term. His Lordship then discussed the accounts, and observed that a smn on the profit side " was not, properly speaking, the patentee's profit, but the profit which any manuiactm-er employed to make these vessels with these engines would have derived by it, who had no right to the patent and no right to the monopoly. That is a very material circumstance, for it sliows that all the poor inventor got by this patent was a sort of priority in the market, a prefer- ence in obtaining these orders, and no profit whatever from his monopoly." Costs, as against the opponents, were refused. ( 523 ) SoAMEs's Patent. [A.D. 1843. 1 Webs. E. 729.] Observations on the slow Progress of Discovery — Small Merit of Tnventioti. Petition, by assignee, for tlie extension of a patent of 9th Sept. 1829, No. 5,842, to J. Soames, for "the making of a composite candle from cocoa-nut oil and tallow. A caveat was entered. It appeared that 100,000/. had been embarked in the working of the patent, and that the profits had been less than the ordinary returns on manufactui'ing capital. There was some discussion as to prior publication in the in- vention in the Annales de Cltiinie, and other books, and Lord Campbell observed : — I should say, sitting here, considering whether the patent should be prolonged, I should be influenced by what I saw published in a foreign journal without inquiring whether it was known in England, though, when sitting in a cornet of justice, and considering the validity of the patent, I should require that it should be kno"«Ti in England. Also Lord Brougham said : — The merit of an importer is less than of an inventor. We are now sitting judicially, and it is an argument against the patent that it was imported and not invented. I do not say it takes away the merit, but it makes it much smaller. Extension for three years. Per Lord Brougham. — It is very fit that their Lordships should guard against the inference being drawn, from the small amoimt of any step made in improvement, that they are disposed to undervalue that in importance. . . . because the whole history of science, from the greatest discoveries do^\Ti to the most unimportant — from the discovery of the system of gravitation, and the frac- tional calculus itself, down to the most trifling step that has ever been made — is one continued illustration of the slow progress by which the human mind makes its advance in discovery. Therefore it is no argument whatever in general, if there is a new principle, or a novel invention — a new process, for instance. But that is not the case here, but only a new application, which might very easily suggest itseK to anybody ; a new appHcation of a well-known simple process, which had been employed with respect to other substances ; a new application to this known substance of cocoa-nut oil. Therefore the general observation fails altogether here, and their Lordships are perfectly justified, without anything unfair- to the party, at the time they are granting an extension of the term, in taking into consideration how small that step has been. ( 524 ) Weight's Patent. [A.D. 1843. 1 Webs. E. 73G.] SJoiu adoption of the Invention — Peculiar circumstances taken into account. Petition for extension of a patent of 26th Jan. 1830, No. 5,890, to *S'. Wright, for " a manufacture of ornamental tiles, bricks, &c., for floors, pavements, and other piu'poses." The subject of the patent was an encaustic tile. It appeared that the patentee failed in introducing the invention, and that in 1838 he granted a licence to Mr. Minter, who undertook a contract for flooring the Temple Church, the loss on which amounted to 250/. The patentee had expended between 700/. and 800/., and had received only 100/. as royalty from Mr. Minter. Extension for seven years. Per Lord Brougham. — Their Lordships think, that regard being had to the benefit which the public are likely to receive from this manuf actm-e going on, and regard being had also to the peculiar circumstances of the Temple contract, being the first time it has come into notice, there ought to be an extension for the term of seven years. Morgan's Patent. [A.D. 1843. 1 Webs. E. 737.] Invention of small merit — Extension to Assignee not a matter of course. Petition, by patentee and assignees jointly, for the extension of a patent of 9th Sept. 1829, No. 5,843, to T. Morgan, for " a new method of manufacturing or preparing iron plates, or black plates, for tinning." Prior to this invention, the iron plate, preparatory to tinning, was scaled by hand, after having been placed in a furnace. The patent was for pickling the plate in sulphiu-ic acid, which removed the scale. The inventor was a working man, earning wages of 21. per week, and in 1840 he sold his patent to Messrs. Lewis for 200/. The purchasers had made from 15,000 to 18,000 boxes of tinplate during their holding, the saving on which was estimated at lOr/. per box. They had also received 300/. in royalties. The patentee reserved his right to use the invention at certain works, and made thereby a profit of about 21. per week. Extension refused. Per Lord Brougham. — Their Lordships have always been used to consider, that by taking into their view and favom-ably listening to the application of the assignee, they are, though not directly, Morgan's Patent. 525 but mediately and consequentially, as it were, giving a benefit to tbe inventor, because if tke assignee is not remunerated at all, it might be said that the chance of the patentee of making an advan- tageous conveyance to the assignee would be materially diminished, and consequently his interest damnified. Their Lordships do not consider that this invention is entirely without merit, but it seems of a very moderate degree, being the substitution of the chemical process of washing with sulphuric acid for the scaling process by fire, making a cheaper and somewhat better article. Their Lordships by no means intend to have it understood (as has been repeatedly said in these cases) that it is anything like a matter of course, upon a case being produced of small merit, and proportionably small consequence, especially in the cii^cumstances of its being the assignee that makes the application, that they shall grant the application. Derosne's Patent. [a.d. 1844. 4 Moo. P. C. C. 416 ; 2 Webs. E. 1.] Practice as to Advertisements tuhere the Petitioner resides in France— Con- siderations ivMch guide the Court. Petition for extension of a patent of 29th Sept 1830, No. 6,002, to C, Derosne, for "improvements in refining sugar." The invention related to a method of pm-ifying sugar by fil- tration of the syrup through beds of granulated animal charcoal. The petitioner resided in France, but he had granted licences to persons resident in and carrying on business in London and Liirr- pool, and he caused advertisements to be inserted in the " Gazette " and newspapers published in those places. Their Lordships held this was a sufficient compliance with the terms of stat. 5 & 6 Will. 4, c. 83, s. 4. It appeared that the inventor had spent more than 4,000/. in per- fecting the invention, and that the profits derived from licences had amounted to 7,920/. ; that the public had derived great ad- vantage from the invention, inasmuch as the consumer could now purchase sugar 20 per cent, cheaper than he could have done before the invention was discovered. Extension for six years. Per Lord Brougham. — Their Lordships have always held it a clear rule, in applications for a prolongation of the term of letters patent, that it was anything rather than a matter of com^se that the application should be granted imder the Act, and they have 526 Derosne's Patent. uniformly required the pai-ty applying— first, to show some inven- tion ; secondly, that the invention was of a nature to benefit the public ; and thirdly, that the inventor had not received adequate reward. Their Lordships think that the present patent, though useful, was very small in point of discovery ; and it is in evidence that some considerable profit has been realized ; but taking into consideration the great benefit the public had derived, their Lord- ships, imder the cii'cumstances, will recommend her Majesty to grant an extension of the terms of the letters patent for six years. Perkins' Patent. [a.d. 1845. 2 Webs. E. 6.] Sufficiency of Accounts. Petition for the extension of patents granted to A. M. Perhns, for England and Scotland, for " improvements in heating the air in buildings," the patent for England being dated 30th July, 1831, No. 6,146. The invention related to a method of heating buildings by the circulation of hot water in closed pipes of small diameter. The accounts being imsatisfactory, their Lordships adjourned the hearing. The accoimts were then improved, but did not show the profits in each year, and the hearing was again adjourned for better particulars. Extension for five years. Per Lord Brougham. — We are here by the authority of the Legislatm-e, given to us to advise the Queen, to protect her from rashly and inexpediently for the public granting an extension, which formerly used to requu-e a solemn and deliberate act of all the thi^ee branches of the Legislatm^e, involving a double inquiry, together with an opinion of the Government itself. Now it becomes our duty to examine minutely, and often very minutely, where there is no party to oppose except the Crown counsel, before we report or advise for any certain period of extension, or for any extension at all. Woodcroft's Patent. [a.d. 1846. 2 Webs. E. 18.] Extension granted ultJiough the Validity of Patent is disputed — Slow adoption of Improvement — Merit of Capitalist lolio assists an Inventor. Petition for the extension of patents granted to B. Woodcroff, for England and Scotland, for " improvements in screw propellers," the patent for England being dated 22nd Marcli, 1832, No. 6,250. Woodcroft's Patent. 527 The invention related to the construction of a screw propeller blade having an increasing pitch. A caveat was entered on behalf of a company who disputed the novelty of the invention. It appeared that a capitalist named. Gardner had assisted the petitioner with funds in endeavouring to introduce the invention, and was to have an interest in the patent. Extension for six years. Per Lord Brougham. — First, is the case to prove the invalidity of the patent, to prove the patent void, clear — past all ordinary and reasonable doubt ; or secondly, does the case hang so doubtful that their Lordships would retire from its consideration, and not, because it is not necessary, decide the question here. In the former case, namely, where it is a clear case, or nearly a clear case, their Lordships will not grant an extension. . . . But where the matter hangs very doubtful, where there is conflicting evidence, where, upon the construction of the specification or the patent, or in any other way, cpiestions of law or questions of fact, as it may be, shall arise, their Lordships have not been used to refuse to exercise their discretionary powers vested in them by the legislature, of recom- mending an extension, merely because elsewhere the validity of the patent may be reasonably contested. Proceeding upon these grounds their Lordships are of opinion that there is no such case raised before them here as to come within the first of these principles, that it is in vain to say that there is an}d:hing upon the face of the matter to make it clear that this patent cannot stand, and thereby to take away the merits of the inventor, and also to raise the other groimd of refusing to grant the extension, namely, that parties may not needlessly be put to vexation and expense in contesting it. Nothing is decided here, in granting the extension, as to the validity of the patent. Then as to the merits of the invention. In this case there appears to be no doubt whatever. His Lordship discussed the evidence, and continued : — Now we always take into account also, independently of the evidence, the nature of the invention. It appears to my mind that there is a clear step made in the progress of steam navigation, and in the construction of that very useful instrument, the screw, for the purpose of propidsion. The next thing, and the only thing, that remains to be considered is, how far this patent has succeeded. It is not enough to say why did it not, if it is so useful, come earlier into practice ? . . . The steam-engine itself, or Mr. Watts^ improvement— for his was 528 Woodcroft's Patent. not a discovery of the steam-engine, but an improvement on the former — is subject to the same objection. It was for so many years useless to him, not coming into immediate operation, that he had to obtain an extension of one-and-twenty years from the Legis- latui-e, but for which he would have been a loser (and probably ruined) by the greatest benefit that was ever given to mankind, next to the invention of printing. I say nothing of Mr. Woodcroft having had the advantage of finding a gentleman in the person of Mr. Gardner to help him with his capital, and I say nothing as to that gentleman having a share in the profits of the extension. It is of great benefit to inventors, and to society thi'ough their means, that persons of capital should be foimd to come forward and assist men who are without capital, and the capitalist recei^dng a fair share of remuneration, is rather an additional means of inducing him to bring the invention in which he is so interested into general use. Lowe's Patent. [A.D. 1846. 10 Jur. 363.] Defective Accounts. Petition for extension of a patent for naphthalizing gas. The utility of the invention was proved, but the patentee had not effected any sales, and he had kept no books. He had, how- ever, allowed a gas company, in nimierous instances, to apply his invention in order to make it known. Extension for five years. Sir S. Lushington said that the evidence showed a prima facie ease of no profit, and their Lordships were inclined to come to the conclusion that they were satisfied with the evidence unless the Crown had reason to be dissatisfied with it. The Attorney- General not requiring any further evidence, their Lordships extended the term. PiNKUs' Patent. [A.D. 1848. 12 Jur. 233.] Considerations which guide the Court— Failure of Invention to come into Practical Use. Petition for extension of a patent of 1st March, 1834, No. 6,570, to E. Pinhis, for " a method of working an atmospheric railway." Caveats were entered by several parties. It appeared that experiments had been made until 1838, after PiNKUs' Patent. 529 which no practical attempt had been made to bring the invention into use. Also, that subsequently to Ptnkm, one Ckgg had brought out a peculiar valve apparatus which effected that which Pinkus could not accomplish. Also, that the petitioner had expended considerable sums on models, not stating how much, and that no profit had been made. Extension refused. Per Lord Langdale, M.R. — On an occasion of this kind the Coiu't has, in no very direct way, occasion to consider whether the patent is or is not valid at law. Unless the patent be very clearly invalid, so that it would be altogether nugatory to prolong that patent, the Court usually has been rather inclined to assume that the patent may be a good patent, and so leave the question to any legal consideration that may arise in a contest between the parties who are interested in it. What is usually taken into consideration as forming the ground of the species of indulgence here asked for is, first, the merit of the invention ; secondly, the utility of the machinery which has been invented ; and lastly, the question has been raised whether the patentee who has enjoyed the benefit of the patent has received a sufficient remuneration for the merit which he has displayed. In this case the machinery in question has related to an atmospheric railway. The idea of an atmospheric railway had manifestly, from the evidence which has here been produced, been entertained to some extent before the date of this patent — an atmospheric railway, on which the carriages are moved by exhaustion before the piston, occasioning a pressure of the atmo- spheric air behind. . . . Now a mode having been suggested of exciting motion by means of exhaustion on one side and pressure on the other side of the piston, that notion having been entertained, it is quite obvious to anybody who considers the subject, that there may be various means of reducing that principle to practical operation. Mr. Pinkus contrived one mode, a mode which, as it is said, is accompanied by several great advantages and conveniences, but in which the valve is described to be of a particular construction. Upon the effect, the utility, and the merit of that contrivance, there has been considerable evidence, and also upon the supposed futility of that contrivance. "What is perhaps the strongest evidence, or the e\'idence upon which the best reliance can be placed, is this : that, from the time when the patent was granted up to the present time, this plan has G. M M 530 PiNKrs' Patent. not been reduced to practical operation in any way wliicli has "been at all calculated to contribute to the public service ; at this time it does not appear, at least there is no evidence whatever to show, that as to this plan — the plan which is described in the first specification — there is now any, even the least, prospect of reducing it to practical operation. His Lordship then referred to the statement of the patentee that subsequent improvements had been made, and that it would come to a state of perfection, and said that if it ever did come to that state of perfection, it would do so by successive improvements ; for it was not to be found in that state of perfection in the specifica- tion. As to profits made his Lordship held that there was no failure of the case on that ground, and continued : — It does appear to us, that, having regard to the length of time which has elapsed without bringing this invention into practical operation, observing that there have been for years back, as Mr. Pin/ius himself has stated, infringements of the invention, and yet no assertion of his right at law ever carried out to trial, it does appear to us that there is not such evidence of merit, and such evidence of utility, as ought to induce us to advise her Majesty to grant a prolongation of the patent. MuNTz's Patent. [a.d. 1846. 2 Webs. E. 113.] Simplicity of Process no detraction from its Merit — Oains hy Patentee as Manufacturer. Petition for the extension of a patent of 22nd Oct. 1832, No. 6,325, to G. F. Muiitz, for " an improved manufacture of plates for sheathing the bottoms of ships." The validity of the patent had been the subject of much litigation {Muntz V. Foster, 2 Webs. E. 92), and it ai3peared that the patentee had manufactured the metal sheathing. The invention made its way slowly at first, and the petitioner was compelled to give away, or to sell without profit, to shipowners large quantities of sheathing in order to test the value of the improvement. The profits did not exceed 70,000/., but from this sum large deductions had to be made for outlay and unavoidable expenses, and also for the losses incurred by litigation. Caveats were entered by several parties. Extension refused. Lord Brougham, after observing that a most useful and meri- torious invention had been made by the labour and ingenuity of Mr. Muntz, continued : — And it is nothing to say, as it has been MuNTz's Patent. 531 attempted sometimes to be said, tliat it is so simple a process that there is little merit in it ; for, in our apprehension, the simplicity, very far from detracting from, greatly increases the value of such an invention. Some of the most important inventions that have been made by the result of experience and ingenuity, applied to practical subjects, have been made with the utmost simplicity, to the greatly increased advantage of mankind. The only question is, therefore, whether or not Mr. Muntz has already received a sufficient remuneration from the patent which he has obtained for that valuable and meritorious invention. We cannot weigh in golden scales the proportions between manufac- turer's profits and patentee's, but we must take it in the gross ; and applying our minds as men of the Avorld, men of business — neither imfairly towards the inventor, nor extravagantly and romantically towards him in his favour — neither against him pressing, nor in his favour straining — we must ascertain whether he has in the eyes of ordinary but enlightened understandings, judging fairly between him and the public, had a sufficient remuneration. His Lordship then discussed the gains of the patentee quasi patent inventor, and his gains quasi manufacturer, and concluded by saying : — It is really a monopoly preference which he has ; because as patentee he is enabled to sell and to trade in a manner which, but for his invention, and but for his patent, he could not. Haedy's Patent. [A.D. 1849. 6 Moo. P. C. C. 441.] Extension to Assignees on terras as to sharing Profits tvith Patentee. Petition, by assignees, for the extension of the term of a patent of 4th April, 1835, No. 6,807, to J. Hardy, for " improvements in manufacturing iron axle-trees for railway carriages." The patentee had assigned his interest in the patent to the petitioners for the sum of 500/. per annum. It appeared that the patentee had lost 3,000/. by the patent, and that the assignees had realized 23,000/. profit dming the last four years of the term. During the hearing. Lord Broi-gham said : — If it had not been for Mr. Ilardifs position, and for the clause in the Act of Parlia- ment, which gives us power to grant an extension, either to the patentee alone, or to the assignee alone, or to the patentee and assignee jointly, there have been such great profits by the as- signees, that no extension would have been granted. You must make an offer to be submitted to us. M M 2 532 Hardy's Patent. On a question in the accounts, his Lordship also said that the profits on axles made for exportation ought to be included. Extension for four years, on payment to Hardy of 1,000/., and seeming to him an annuity of 1,000/. during the extended term. Per Loud Brougham. — Their Lordships are of opinion that they ought to advise the Crown to grant an extension of four years, upon condition, in the first place, on hehalf of the public, that a proper arrangement should he made to prevent the raising of the price of the article to the public after the grant, the limita- tion of the price being in proportion in some way or other to the price of iron ; and, in the next place, taking into consideration the high merit and deplorable loss of the ingenious patentee — a public benefactor, if ever there was one — we shall make it a con- dition precedent to this recommendation, postponing for that purpose the final decision of the case for some days, that there should be a binding deed entered into by the assignees, who are now applying for an extension, along with the patentee, for giving him a moiety of the profits of the patent during these four years, and we shall postpone the final advising of the Crown until we have a draft of the two instruments laid before us. Patterson's Patent. [a.d. 1849. 6 Moo. P. C. C. 469.] Extension refused ivhere the Invention has lain dormant for several Tears. Petition for extension of a patent, granted in 1835, for " im- provements in tanning hides and skins." It appeared that in 1836 the petitioner entered into an agree- ment with certain parties for working the invention, but disputes arose, and nothing was done till 1848, when the patent was given up to the petitioner, who then set up tanning works. Extension refused. Bodmer's Patent. [A.D. 1849. 6 Moo. p. C. C. 468.] Extension granted to Assignee. Petition, by the executor of surviving assignee, for extension of a patent. It appeared that the patentee had been largely indebted to the assignees, and had in a great measure liquidated his debt by funds arising out of the assignment. The assignees had incurred a loss of nearly 0,000/. Extension for five years. . Bodmer's Patent. 533 Per Lord Brougham. — This case is quite different from RusseWs and Ilanhfs cases. Terms are only imposed on the assignee where the inventors and patentees have made nothing by their invention. Baxter's Patent. [A.D. 1849. 13 Jur. 593.] Opposition hy Appr entices. Petition for extension of a patent for jninting in colours, opposed by the apprentices of the petitioner, who alleged that they expected to be able to practise the invention on the expiiy of the patent, and that they had not been taught any other trade. It appeared that two former apprentices were now employed by other firms at wages of 34s. and 52.s. per week respectively. It appeared that the invention related to a combination of copper- plate engraving and wood engraving. Extension for five years. Lord Brougham was of opinion that the apprentices must have been fully instructed in wood engraving in order to earn the wages which they were receiving, and the patent was extended uncon- ditionally. Pettit Smith's Patent. [A.D. 1850. 7 Moo. p. C. C. 133.] Extension subject to Condition. Petition, by assignees, for extension of three patents granted to F. P. Smith, for England, Scotland, and /rf/(?«a respectively, for an invention of a screw propeller. The English patent was dated 31st Mai/, 1836, No. 7,104. The main part of the invention con- sisted in placing the screw in the dead wood of the rim of the vessel, a position in which propellers have been placed ever since the patent. It appeared that the patentee had assigned his patents to a com- pany who invested a large capital in working the invention, but made no profits. The invention had been largely used by the Admiralty, who, however, refused to pay for its use in consequence of the claims of other parties to the originality of the invention. There had been numerous infringements, and the patentee brought one action only for infringement, which resulted in a verdict for defendants, and whereby the patentee lost 2,000/. At the hearing, application was made on behalf of the Lords of the Admiralty for leave to oppose, on the ground that the fact of 534 Pettit Smith's Patent. the petition had not come to their knowledge until it was too late, consistently with the rules, to enter a caveat. Per Lord Campbell. — I cannot understand why the Attomey- Gleneral may not do all that the public interests requii'e without the Admiralty. . . . The petition must go on. The Attorney-Greneral opposed, unless a condition were inserted enabling the public service to have free use of the invention. Extension for five years. Per Lord Brougham. — Theii* Lordships are of opinion that, although there are some peculiarities which are not very satisfac- torily explained, especially the length of time during which no steps were taken to sue parties who were clearly infringing the patent, and the extension of time is not by way of compensation for such infringement to those who have the patent right ; yet we have also to look to the circumstances in which the party was placed in respect to the Admii-alty, on the one hand, and to the great misadventure he had in steering through the coiuis of law, where he imfortunately went against the wrong parties, and, at the ex- pense of 2,000/., failed in his suit. Now, while their Lordships did not think that, regard being had to the other circumstances of the case, to the great merits of the patentee, which are undeniable, and to the great advantage likely to accrue to the public from this invention, enough had been made out for them to refuse this application ; at the same time, in granting the extension, we are quite clear that it ought to be with a view to the condition exacted by the Attorney-Greneral, and to which Sir F. Thesiger, on the part of his client, had no objection. The condition was to the effect that contractors for her Majesty's service should be at liberty to manufacture and fit the said invention for the service of her Majesty without any licence, let, or hindrance from the patentee, and that the patentee should supply the said invention for the service of her Majesty when called upon upon such reasonable prices and terms as should be settled by the Lord High Admiral. Berry's Patent. [A.D. 18J0. 7 Moo. P. C. 0. 187.] Imported Invention — Benefits conferred on the Piiblic by the Enterprise and Capital of the Importers. Petition, by assignees, for the extension of a patent of 7th June, 18-36, No. 7,111, to M. Berry, for "improvements in machinery, or parts for cleansing, purifying, and drying wheat or other grains or seeds" (a communication). Berry's Patent. 535 It appeared tliat the invention had great commercial value, and that the petitioners had emharked a large capital in bringing the patent into use ; but that the machinery was expensive, and a loss had been sustained amounting to 9,839/. 3s. lid. Extension for six years. For Lord Brougham. — The patent laAV is framed in a way to include two species of public benefactors : the one, those who benefit the public by their ingenuity, industry, and science, and invention and personal capability ; the other, those who benefit the public without any ingenuity or invention of their own by the importation of the results of foreign inventions. In this case certain parties have by their adventurous spirit, and by the outlay of capital, benefited the public in proportion of the value of the foreign invention in question, which, but for that adventurous spirit and ou.tlay of capital, would not have been available to the people of this country. That, therefore, is to be considered as a solid claim to the exercise of the quasi-legislaivfe power which the statute vests in this Committee. Noble's Patent. [A.D. 1850. 7 Moo. P. C. C. 191.] Practice — Parties to the Petition. Petition, by assignees, for the extension of a patent for carding wool, granted to J. Nohle. The patent was assigned by Noble to two of the petitioners, viz., Rawson and Donisthorjye, and these assignees entered into an agree- ment to assign the patent to Lister, but no deed was executed. The advertisement contained the names of Rawson and Donis- thorpe only. At the hearing, it was objected that Lister had no locus standi, and dming the argument Lord Brougham said : — It is quite immaterial whether a party has a legal or equitable interest. Their Lordships held that the advertisement was not sufficient to make Lister a petitioner. The case was then heard, and the accounts turned out to be insufficient. Extension refused. Claridge's Patent. [A.D. 1851. 7 Moo. P. C. C. 394.] Imported Invention — Commercial Speculation hy a Joint Stock Company. Petition, by assignees, for extension of a patent of 25th Nov. 1837, No. 7,489, to R. T. Claridge, for " a mastic cement or com- 536 Claeidge's Patent. position applicaLle for pacing and road making, covering buildings, &c." (a communication). The petitioners were the trustees of a joint stock company, called Cla ridge's Patent Asphalte Co., who were the assignees of the patent. It appeared that the invention was in use in Paris before the date of the patent, and that C/aridge, the importer, had assigned all his interest in the patent to the company for 8,000/. That the company had expended 23,000/. in carrying out the invention, and that the profits made had not compensated for the losses incurred. Extension refused. Fcr Sir Johx Jervis. — Each case must be dealt with according to its own particular circumstances, and their Lordships have looked at this case as to the merits of Claridge as the inventor, according to the strict meaning of that word. He introduces, not a piece of complicated machinery, or a manufacture of difficulty or science, but something in general use at Paris. . . . He does obtain a patent, and forms a joint stock company, and receives 8,000/. for the introduction of a well-known substance from a foreign land ; so far as he is concerned, he has had adequate satisfaction for any merits he had in the introduction. We must take this case upon the basis of the original importer's merit, taking, into consideration that those who now apply entered into a commercial speculation with a full knowledge of all the circumstances, and with the expectation of a profit, which, if they have not got, is no reason to entitle them to call upon us to grant this application. Beidson's Patent. [A.D. 1851. 7 Moo. P. C. C. 499.] Inspection of Accounts — Practice as to Costs u'here Petition is abandoned. Petition for extension of a patent of 26th Mai/, 1838, No. 7,653, to T. P. Bridsoii, for "improvements in machinery for stretching, di-ying, and finishing woven fabrics." Caveats were entered by several parties. Application by opponents for permission to inspect the accoimts was refused with costs. The petition was then withdi^awn, and application was made by all the objectors for the costs of the opposition, two only having given notice of their intention to apply for costs, when Lord Cranwortii said : — It appears that there is no practice which renders it necessary for opposers to give notice of their intended Bridson's Patent. 537 application for costs ; neither is there anything which can justify us in refusing costs of opposition. The costs, therefore, of all the objectors must be paid by the petitioners, Lowe's Patent. [A.D. 1852. 8 Moo. P. C. C. 1.] Practice as to Caveats. Petition for the extension of a patent for "improvements in propelling vessels." A ccweat was entered by Rohcrtson, a patent agent, in his o-v\ti name, but really as the agent for some large engineering firms. It appeared that Robertson was patentee also of a like invention. Their Lordships refused to hear counsel for any other person than Robertson, and then would only allow such questions to be asked as affected Robertson's interest. Extension refused. ScHLUMBERGER, In re. [A.D. 1853. 9 Moo. P. C. C. 1.] Practice — Delay in sealing new Letters Patent. Petition by JSF. Schlumberger, a Frenchman, residing within French territory, praying her Majesty to revoke an order in Council of 7th Feb. 1851, granting an extension for six years of a patent of 1836, originally granted to Messrs. Gibson ^ Camjibell, for negligence in not sealing new letters patent in piu'suance of the order. Preliminary objection to the jurisdiction of the Committee to entertain the petition, overruled. Further objection that the petitioner had no locus standi to be heard, also overruled, inasmuch as their Lordships were of opinion that the petitioner had esta- blished a sufficient interest to entitle him to be heard, and the Crown did not object. Hearing of the petition, when it appeared that the delay arose from doubts, whether the renewed patent was to contain the recitals which were required by the old law, or whether it was to come under the new practice. There would be a considerable difference in the amount of fees according to tlie view taken. It did not appear that the public had suffered any damage. Per Dr. Lushixgton.— Their Lordships are not disposed to visit the patentees with the heavy penalty of the total loss of the benefit of the renewal of their patent. The petition was then dismissed on payment to the petitioner of 538 SCHLUMBERGER, III I'C. the sum of 200/., the patentees undertaking not to "bring any action for infringement of the patent which might have occurred between the date of the Order in Council for extension and the date of the order for dismissing the petition, their Lordships expressing no opinion whatever as to whether any action would lie in consequence of such infringement. Hornby's Patent. [A.D. 1853. 7 Moo. P. C. C. 503.] Practice as to Costs wliere Petition is abandoned. Petition for extension of a patent. Caveats were entered, and the petitioners abandoned theii' application. On motion by the opponents for costs of the opposition, their Lordships directed that the same should be taxed by the registrar of the Privy Coimcil, and paid by the petitioners. Heath's Patent. [A.D. 1853. 2 Webs. E. 247; 8 Moo. P. C. C. 217.] Merit of Invention — Pending Litigation no ground for refusing Extension. Petition, by the %vidow and administratrix of the patentee, for the extension of a patent of oth April, 1839, No. 8,021, to J. M. Heath, for " improvements in the manufactm^e of ii'on and steel" by the use of carbm-et of manganese. This patent had been the subject of continued litigation, com- mencing in 1842 and terminating some two-and-a-half years after the date of this petition. (See Heath v. Umcin, ante, p. 233.) It appeared that the patentee had not kept any accounts, and the petitioner gave evidence that not more than from 100/. to 200/. had ever been received imder the patent, and that the patentee had spent a large smn of money on the invention, having sold his pension in 1841, and having obtained assistance from his friends in addition. The main objection was that, in practice, carbm-et of manganese was not employed, but that carbonaceous matter, together with manganese, was put into the crucibles. Extension for seven years. Per Dr. Lushington. — Their Lordships are of opinion that, notwithstanding such an alteration has taken place in the practice, it does not materially detract from the merit of the original inven- tion, and therefore their Lordships, being perfectly satisfied that no benefit has arisen to the parties from this invention, are disposed to advise her Majesty to continue the patent for the period of seven years. Heath's Patent. 539 They are disposed to give that length of time in preference to a somewhat shorter period on account of the litigation which is said to be subsisting in the courts of law. And referring to the doubts as to the validity of the patent, his Lordship said : — The trial of that question is competent to other tribmials, and it is a question with which their Lordships never in the remotest degree interfere. Bodmer's Patent. [A.D. 1853. 8 Moo. P. C. C. 282.] Operation of 2oth Section of Stat. 15 & 16 Vict. c. 83 — Extension of Patent for Part of an Invention. Petition, by assignee, for extension of two patents granted in May and October^ 1839, to J. Bodmer, for improvements in cutting and rolling metals. It appeared that, except as to the rolling of tires, the invention described in the patents had not been carried out, and that improve- ments had been made and patented in 1842 and 1843, whereby the invention, except as to the tires, had been practically superseded. Also, the patentee had, in 1841, taken out a patent in France for the inventions comprised in the patents of 1839, which had expired at the end of two years. It was objected that the Committee could not prolong the patent by reason of the enactment of 15 & 16 Yict. c. 83, s. 25, but Dr. Lushingtox said that this section applied only to foreign patents granted subsequently to the Act. Extension granted for five years on the petitioner consenting to disclaim all parts of the patents of 1839, except those relating to the roUing of tires. Caepenter's Patent. [A.D. 1854. 2 Moo. P. C, N. S. 191, «.] Unconditional Extension, altlwugh Invention luas used in the Public Service. Petition for extension of a patent of 13th June, 1840, No. 8,545, to E. J. Carpenter, for applying machinery to ships for propelhng, steering, &c. The patent related to a screw propeller and the mode of attach- ing it to the ship, and it appeared that the invention had been used in the Eoyal Navy. The Attorney-Greneral suggested, that, inasmuch as this was an invention used in the public service, the same condition should be inserted as in Pettit Smith's patent (7 Moo. P. C. 0. 133). He further observed that the sum of 20,000/. had been paid by Grovern- 540 Carpenter's Patent. ment for the use of the screw propeller, and that the petitioner had failed to establish a claim to any part of that sum. Extension for six years. Po' Lord Justice Knight Bruce.— In this case there are con- siderable difficulties in the way of the applicant, arising from the limited extent to which (imless, perhaps with the possible exception of the Eoyal Navy) the invention, the subject of this patent, has been brought into use, and the very limited endeavours which have been made on the part of the patentee to bring it into use, to which must be added an absence of any detailed account, indeed of any account at all. His Lordship then observed that the Admiralty did not oppose, and must therefore be taken as not contesting the utility and value of tlie invention. His Lordship fiu'ther referred to the cu'cumstance that the Government had placed 20,000/. in the hands of their nominee for distribution among the supposed inventors of the screw propeller, and that no portion of that sum was awarded to the petitioner, and observed that his application was not to be construed into a sub- mission of the reference of his rights to the decision of the arbitrator. His Lordship concluded by saying: — His case, therefore, is not at all prejudiced by what has taken place in that respect ; and, imcler all the peculiar circumstances of this individual case, their Lordships are of opinion that the ends of justice will be answered by extending the patent for six years unconditionally. Aube's Patent. [A.D. 1854. 9 Moo. p. C. C. 43.] Imported Invention — Expiration of prior French Patent. Petition for the extension of a patent. It appeared that the patent was founded on a foreign im- portation which had been [previously] patented in France, and that the Freiich patent had expired. [Note.— In Bens' Patent (I Moo. P. C, N. S. 57) Lord Chelmsford said that the invention had been previoiislf/ patented in France.'] Extension refused. Per Parke, B. — Their Lordships are all of opinion that this is a case which is either expressly provided for by the stat. 15 & 16 Vict. c. 83, or, if not expressly provided for, yet it is a case in which, if the Crown granted an extension of the letters patent, which by the 16 & 17 Yict. c. 115, s. 7, is equivalent to an entirely new patent, such grant would be void. ( 541 ) Milner's Patent. [A.D. 1854. 9 Moo. P. C. C. 39.] Practice as to Affidavit and Costs ivhere the Petition is ahandoned. Petition for extension of a patent witlidi-awn before the hearing. Caveats had been entered by several parties who now asked for costs. The Attorney-Greneral took no part in the discussion. Their Lordships refused to receive an affidavit by the petitioner, explaining the reasons for the withdrawal of the petition, the opponents not having been served with a copy. Order made that the petitioner should pay to the opponents GO/, for costs, or have them taxed under an order of the Court. The petitioner electing not to tax, an order was made for the payment by him of 60/. for costs. Jones' Patent. [A.D. 1854. 9 Moo. P. C. C. 41.] Invalid Patent — Practice as to Costs. Petition for extension of a patent for manufacturing starch, opposed by two sets of opponents. It appeared that in a trial at law [Jones v. Berger) the jmy had found that the invention was not new, whereupon their Lordships stopped the case. Per Parke, B. — It being a fair case in which there should be opposition, it ought not to be made at the expense of the parties opposing. Their Lordships, in cases of this kind, find it exceed- ingly difficult to decide every minute question with respect to costs. They are of opinion, that in this case it was very proper, not only that the Attorney- General, but the persons interested in the subject to which the patent applies, should come forward to oppose the extension. Of coui^se, complete justice cannot be done unless parties so interested come forward, for otherwise we should not have kno"WTi several of those matters upon which our opinion now proceeds. Their Lordships think the costs ought to be taxed at 100/., and divided between the two opposing parties. Foarde's Patent. [A.D. 1855. 9 Moo. p. C. C. 376.] Opposition hy the Law Officer on hehalf of the Puhlic. Petition, by assignee, for the extension of a patent for smoke prevention apparatus. 542 Foarde's Patent. The petition alleged that, although there was great merit in the invention, jet that the public had not adopted it. The Attorney-General opposed on the ground that by a recent statute, 16 & 17 Yict. c. 128, it was made compulsory upon 0T\Tiers of fiu'naces in the metropolis to construct them so as to consume theu' own smoke, and urged that the effect of the re- newal would compel the public to resort to the patented invention, instead of having the choice of the best and cheapest machines. The accounts showed that the petitioner had incurred heavy losses by introducing the patent. Extension for six years. The Et. Hon. T. Pembeutox Leigh said : — The invention is proved to be extremely useful, and it is further proved that the petitioner has not been able to obtain the slightest remuneration for it ; on the contrary, he has incurred very heavy expenses. Cir- cumstances have now occurred by which in all probability, by a moderate extension of the patent, some adequate remuneration may be received. Noemandy's Patent. [A.D. 1855. 9 Moo. P. C. C. 452.] Extension upon Terms. Petition for extension of a patent for improvements in the manu- facture of soap, opposed by one Jerram, a former partner of the patentee. The Judicial Committee recommended an extension for three years, Jerram to be in the same position, and to have the same rights and privileges as he was entitled to imder the deed affecting the original letters patent. By the deed of dissolution, and subsequent deeds, Jerram had an exclusive right of granting licences to work the patented inven- tion in Liverpool. In consequence of the patentee refusing to embody any con- dition relating to the granting of licences by Jerram in the new letters patent, the matter again came before their Lordships on petition by Jerram that the extension might be stayed, and to enable him, if any of the original licensees imder the existing letters patent should refuse to take licences under the new letters patent, to substitute other licensees. Their Lordships held, that whatever the deed gave with refer- ence to the terms there subsisting, should be given with regard to the extended term. If persons to whom licences have been granted, Normandy's Patent. 543 or any of them, would renew their licences, the petitioner Jerram should be entitled to that benefit ; but they did not see any reason for giving a right or power of substitution beyond that given by the deed of partnership. Lee's Patent. [A.D. 1856. 10 Moo. r. C. C. 226.] Extension of Patent for Part of an Invention. Petition for the extension of a patent for improved wheels and axles to be used on railways, and also for improved railway brakes. It appeared that the first part of the invention had no particular merit, but that the railway brakes were a useful invention. ■ Extension for five years of so much of the patent as comprised the railway brakes. Card well's Patent. [A.D. 18o6. 10 Moo. P. C. C. 488.] Exclusive Licence to a Joint Stock Company— The Interest of the Pithlic must he regarded. Petition for the extension of a patent of 15th Dec. 1842, No. 9,556, to T. Cardice/l, for "improvements in the construction of presses for compression of cotton." It appeared that the petitioner had granted an exclusive licence to the Colaba Press Company to work his invention at Bombay, and had covenanted to continue the same in case of renewal. Extension refused, although there was no opposition, and the Crown did not object. Lord Justice Kxight Bruce, after observing that the appli- cation was rather that of other persons than of the petitioner, and that the company took more interest in the renewal than Carchcell himself, referred to the licence and said : — Such provisions appear so manifestly to interfere with the public interest, and so much at variance with the spirit of the law under which the petitioner is permitted to come here, that their Lordships rest their decision upon this portion of the petitioner's case, -without giving any con- clusive opinion upon the other part. Markwick's Patent. [A.D. I860. 13 Moo. p. C. 0. 310.] Practice as to Accounts where the Books of Account have been inadvertently destroyed. Petition, by assignees, for the extension of a patent for an application of vulcanized india-rubber for medical purposes, where a thin sheet was coated with sponge or fibrous textui-e. 544 Markwick's Patent. It appeared tliat the patentee had become bankrupt, and that his books had been taken possession of by the Court of Bankruptcy. They were not forthcoming, and it was supposed that they had been destroyed as waste paper by the officers of the Court. Extension for five years. Per Lord Kingsdown. — In applications of this nature . . . the petitioner is bound to prove three points ; first, the merits of the invention ; secondly, that the party interested has done all in his power to bring out the invention, and to turn it to advantage ; thirdly, that, owing to circumstances beyond his control, he has been unable to obtain an adequate remuneration. These points have been satisfactorily made out by the petitioners in this appli- cation, except as to the non-production of the books of account, of which some better explanation must be given. The statutes 5 & 6 Will. 4, c. 83, and 7 & 8 Vict. c. 69, allow an extension to be granted to an assignee, as well as to the patentee ; but as the object in granting the patent was to reward the inventor for the benefit conferred on the public by the dis- covery, their Lordships generally require some advantage to be secured to the inventor in the event of an extension being granted to the assignee [Whitehouse^ s Patent, quoted as RusseWs Patent, 2 Moo. P. C. C. 496), as has been arranged in this instance. A proper account of the profits and losses of the patent, verified by affidavit, must be made out and sent to the Attorney-Gleneral, with a satisfactory explanation accounting for the non-production of the books, subject to which their Lordships will recommend an extension of the patent for five years. The accounts were afterwards furnished to the Attomey-Greneral, and approved of by him. Newton's Patent. [A.D. 1861. 14 Moo. P. 0. C. 156.] Invention of great Merit — Patentee's loss of Time to be considered. Petition for the extension of a patent of 4th Mat/, 1847, No. 11,688, to W. Newton, for " improvements in machinery for letter- press printing " (a communication) . The invention related to a cylinder printing machine for news- papers, whereby impressions could be taken on thinner paper than usual, the cylinder being placed with its axis horizontal instead of vertical. The accounts showed that Hoe, the inventor, was also a manufacturer, and that the profits realized by the sale of the machines amounted to about 7,000/. Extension for five years. Newton's Patent. 545 Per Lord Cranworth. — Looking at tliis patent, we are satisfied on the score of its merits that it is a most useful invention, possessing the great merit and charm of simplicity as far as such a subject can be made simple, and we are of opinion, upon the case as proved before us, that there has not been that reasonable profit which the inventor deserved, and which might have been expected to have been made. The patent went on for several years without any profit at all, and in the accounts that have been made up and are now before us, it appears that many matters that might have been charged upon the debit side of the account have not been so entered, such as loss of time and other matters of that sort. Napier's Patent. [a.d. 1861. 13 Moo. P. C. C. 543.] Exteiision to Assignees where the sJoiu Adoption of Invention is explained. Petition, by assignees, for the extension of a patent for miprove- ments in smelting copper ore. It appeared that in 1851 the patentee had sold his patent to the company for a smn of 4,000/. and a certain number of 5/. shares fully paid up. Evidence was given of the great utility of the invention, and that the proceedings of the company had been suspended by the difficulty of obtaining labour consequent upon the discovery of the goldfields in South Australia. It was objected, on behalf of the Crown, that an extension could not be granted to the petitioners, who were the trustees of a com- pany and assignees of the patentee. Extension for five years. Fer Lord Cranworth. — Their Lordships are of opinion that there can be no doubt that there is jm-isdiction on the part of this Court to recommend Her Majesty to grant an extension of the term of a patent, as well to the assignee or assignees of the patent, - as to the original patentee. We are clearly of ojDinion that there were circumstances in this application of a very peculiar nature, namely, the unforeseen dis- covery of the goldfields, which rendered the working of this patent in Southern Australia extremely difficult and extremely expensive, and that this consideration, whatever might have been the result if there had been no such special circumstances, will Warrant us in the present case in recommending Her Majesty to grant an extension of the term of this patent. G. . N N ( 540 ) Hutchinson's Patent. [a.d. 1861. 14 Moo. P. C. C. 364.] Practice — Amendment of Petition. Petition for the extension of a i^atent for "improvements in treating pasteboard and other substances, rendering them compact and impervious to wet, frost, vermin, and destructive agents. A caveat was entered. The petitioner inserted his Last advertisement in the London Gazette on 24th May, 1861, and did not present his petition till the 6th June following, which was too late under the rules. Application that the petition might nevertheless be admitted, refused, because notice had not been given to the party filing the caveat. Subsequently the caveat was withdrawn, and the mistake being explained, the petition was received. It appeared that the patent had been vested in trustees under the bankruptcy of the patentee, and that there had been assign- ments to several persons, but that ultimately the patent came into the sole possession of the patentee. These facts not appearing on the petition, the hearing was adjourned for amendment of the same. Also it tui-ned out that the books of the petitioner had been destroyed after the banki-uptcy, whereby it became impossible to file accoimts. Extension for two years. Per Lord Kixgsdow-n. — Their Lordships think, on the whole circumstances of the case, that they can recommend Her Majesty to extend the term for two years. They cannot do more. Bakewell's Patent. [a.d. 1862. 15 Moo. P. C. C. 385.] Extension refused luhere Invention has not come into Use. ■ Petition for the extension of a patent of 2nd Dec. 1848, ISfo. 12,352, to F. C. BaheiceU, for " improvements in making com- iQunications from one place to another by means of electricity." The invention related to the transmission of copies of writings by electricity. It appeared that a patent for a similar invention had been granted to one BoncIU, and a company under a private Act (24 & 25 Yict. c. 92) had been formed for working BonelWs invention. It appeared that Baheu-eirs invention had not been used at all, and counsel for the petitioner was unable to refer their Lordships Bakewell's Patent. 5^7 to any case where extension had been granted under these circum- stances. Extension refused. Per Lord Chelmsford. — Non-user of a patent can hardly he said to be a ground why an extension of the term should be abso- lutely refused, but it must always amount to a very strong pre- sumption as to the invention not being useful ; of course this pre- sumption may be rebutted, as all other presumptions may be, by evidence of the utility of the patent, and if upon this occasion the patentee had been able to give satisfactory reasons why this patent, which was perfectly well known, had not been introduced into use, that, of com'se, would have answered the presumption, which is prima facie against him, on account of the non-user of the patent. His Lordship then said that the invention was an extremely beautiful one, and one which reflected very great credit on the inventor, and proceeded to discuss the reasons why it had not come into use, and also the position of the patentee in respect of BoneUi's patent, and concluded by saying that their Lordships were quite willing to admit that there was great merit in the beautiful invention of the patentee, but that, acting upon that which seems to have been the principle upon which they had proceeded in former cases, and upon that which seems to be reasonable, they could not recommend an extension of the term. Newton's Patent. [a.d. 1862. 15 Moo. P. C. C. 176.] Imported Invention — Extension refused ivhere English and American Patents ivere granted almost simultaneously for the same Invention, and the American Patent had expired. Petition for the extension of a patent of 22nd August, 1848, No. 12,254, to A. V. Nen-ton, for certain ''improvements in dressing and cleaning grain" (a communication). On 19th Sept. 1848, the inventor obtained a patent in America for the same invention for fourteen years. Extension refused. Per Dr. Lushington. — The patents for England and the United States of America were granted almost simultaneously, and though this case does not come witliin the letter of the statute (15 & 16 Vict. c. 83, s. 25), it appears to theii' Lordships to come within the true spirit of it, and their Lordships are of opinion that, in the circumstances, they, in the exercise of their discretion, ought not to advise her Majesty to grant a prolongation of the patent. N N 2 ( 548 ) Bett's Patent. [a.d. 18C2. 1 Moo. P. C, N. S. 49.] Oi:>eraUon of 2oth Section of Stat. 15 & 16 Vict. c. 83—OhUgation in preparing Accounts — Mamfacturer^s Profits. Petition for extension of a patent of 13tli January, 1849, No. 12,415, to W. Beits, for " a new manufacture of capsules and of a material to be employed therein," &c. It appeared that on 16th Jan. 1850, a French patent for the same invention was granted to Betts for fifteen years, and that on 27th Jan. 1852, a Belgian patent was granted to another person on behalf of Betts for ten years. The Belgian patent had expired before the hearing of the petition. Caveats were entered by several parties. The vahdity of the patent had been the subject of much liti- gation, see Betts v. Menzies [ante, p. 45), and it appeared that the patentee was also a manufacturer of the improved capsules. The accounts showed that the profits of the patent as well as of the manufacture were blended together. The petitioner submitted that he Avas entitled to deduct from the return his profits as a manufacturer. A profit of 20,800/, was shown, but the petitioner submitted that this profit was subject to large deductions for law expenses. Extension for five years. Per Lord Chelmsford. — The earlier pai-t of the 25th section (of 15 & 16 Yict. c. 83) clearly applies only to cases where patents have been granted in foreign countries before the grant of the patent in the United Kingdom. His Lordship then referred to the question of the validity of the patent as affected by the prior publication of the patent of Dohhs of 1804, No. 2,761, and said : — Their Lordships think that this patent furnishes a good illus- tration of the distinction which was thrown out in the course of the discussion at the bar between the merit of ingenuity and the merit of utility. Bobbs' specification may have given the petitioner the idea of the possibility of uniting the two metals of tin and lead, and may thus have deprived him of the merit of originality. But in Dobbs* hand the discovery was barren ; the joetitioner, however, who followed out his suggestion, and after repeated experiments gave it a practical ajDplication, is the real benefactor to the public, and is entitled to claim that description of merit which constitutes one of the grounds for extending the term of a patent. Their Lordships have to complain of the very unsatisfactory manner in which the accounts liave been presented to them, which Betts' Patent. 549 has compelled them In many particulars to resort to conjecture where certainty ought to have been afforded. There can be no difficulty in a patentee beginning from the first to keep a patent account distinct and separate from any other business in which he may happen to be engaged. He knows perfectly well that if his invention is of public utility, and he has not been adequately remunerated, he will have a claim for an extension of the original term of his patent. It is not, therefore, too much to expect that he should be prepared, when the necessity arises, to give the clearest evidence of everything which has been paid and received on account of the patent. His Lordship then criticised the accounts, and arrived at the conclusion that the petitioner had not received sufficient remimera- tion for an invention of great public utility, and that an extension for five years should be recommended. Hills' Patent. [A.D. 1863. 1 Moo. P. C, N. S. 258.] Considerations which guide the Court — Concurrent Inventions— Estimation of Manufacturers' Profits— Costs to Opponents. Petition for extension of a patent of 28th Kov. 1849, No. 12,867, granted to C. F. RiUs (in part disclaimed), for "im- provements in purifying gas." The petition was opposed by several parties. The patent had been the subject of much litigation {Hills v. Evans, 31 L. J., Ch. 457), and a committee had been 'formed, con- sisting of the representatives of several gas companies, for dis- puting the validity of the patent, which had, nevertheless, been fully established. It was objected that the invention of the renovation of hydrated oxide of iron by atmospheric air, which was a material part of the invention, had been first invented in France in 1848 by one Laming, and that Laming had obtained a French patent of 22nd Feb. 1849, for his discovery, which patent would expire on the 22nd Jan. 186 k Extension refused. Per Sir J. T. Coleridge.— Their Lordships have not in these cases been in the habit of trying the validity of patents. They wiH not, of course, recommend the extension of a patent which is manifestly bad ; but, on the other hand, they will not generally enter into questions of doubtful validity. They lay aside, there- fore, the questions of want of novelty and want of utihty, so far as they affect the validity of this patent. 550 Hills' Patent. If it were clear tlifit the discoveries of Hills and Laming were the same, however independently made, and that of Laming were about, within a few months, to become the property of the public by efflux of time, their Lordships would certainly think it ^Tong to recommend a prolongation of the monopoly in this coimtry. In determining whether to recommend the prolongation of a patent or not, even where the claim to a first discovery, and the beneficial nature of that discovery, are both conceded, it ^\-ill be still proper to consider both the degree of merit as inventor, and the amount of benefit to the public flowing directly from the inven- tion. . . . Now, one may be strictly an inventor within the legal meaning of the term — no one before him may have made and^ disclosed the discovery in all its tenns as described in the specifi- cation—but this may have been the successfid residt of long and patient laboiu-, and of great and imaided ingemiity, without which, for all that appears, the public would never have had the benefit of the discovery ; or it may have been but a happy accident or a fortimate guess ; or it may have been very closely led up to by earlier, and in a true sense more meritorious, but still incomplete experiments. Different degrees of merit must surely be attributed to an inventor under these different circimistances. The moral claim to an extension of time may in this way be indefinitely Taried, according as the circumstances approach nearer to the one or the other of the above suppositions. The same principle will apply to the consideration of benefit con- ferred on the public. . . . The principal question always is, Has the indiA-idual patentee, imder all the circumstances, received what in equity and good sense may be considered a sirfiieient remuneration ? On his own part, of course, there must have been no want of good faith or prudent exertion ; and fm-ther, as the loss to the public may be important in the consideration, it may be necessary in some cases not to confine the inquii-y to the state of things at the date of the patent, but to regard also the circumstances existing at the time when the application is made. Mr. Hills has turned his patent to account in two ways : fii'st, as a manufacturer and vendor of the patented ailicle ; and, secondly, as a grantor of licenses to third persons, who pay him royalties. Xo question has been raised on the second head ; but as to the first, he deducts two-thirds as manufacturer's profits from the net profits received, and considers the remaining third as alone attributable to the patent, and, therefore, as alone to be brought into the present account, and this is objected to. Their Lordships find that this com- mittee expressly laid down a contrary rule in the case of Muntz\' Hills' Patent. 551 patent (2 Webs. E. 121), and, as it seems to tliem, on clear grounds. If, but for tbe i^atent, tliere would bave been no manufactory, tben tbe net profits of tbe manufacturer are in that large sense attribut- able to the patent. With it the manufacturer has a monopoly — in this case the monopoly of an article so beneficial as to have become ahnost a necessary to the gas companies in the large towns of the kingdom. The patent may be said to create his trade, at least it developed it to an extent which would be impossible without it ; it cannot be reasonable, then, that when called on to state what profits he owes to the patent, the patentee should withhold these, which he estimates at two-thirds of his total profits, from the accounts. Their Lordships cannot satisfactorily discharge their duty unless they have the whole case before them ; they must know the whole remuneration. His Lordship then stated the conclusion of the committee that the application should be dismissed, and said: — The onus is upon the petitioner to satisfy them that, when all circumstances are considered, his rennmeration has been less than he is equitably entitled to. No one but himself is in a condition to state the whole account, and it is important to have it distinctly understood that the most imreserved and clear statement is an indispensable condition to the success of such applications as the present. Their Lordships then gave costs to the opponents, directing the pajTuent of 1,000/. to be distributed by the registrar among the several opponents, unless the petitioner preferred taxation. The petitioner elected to pay 1,000/. for costs. Bovill's Patent. [A.D. 1863. 1 Moo. P. C, N. S. 348.] Invention suggested by a Foreigner— Merit of Patentee— Validity of Scotch and Irish Patents of date sulsequent to the English Patent. Petition, by patentee and mortgagees, for extension of patents for England, Scotland and Ireland, for an invention of improve- ments in grinding corn, whereof the English patent bore date 5th June, 1849, and the 8cotch and Irish patents were dated 28th Maif, 1853, and 25th Maij, 1853, respectively. The petition stated that the idea of the invention was sug- gested to the patentee by one E. Borgleaux, a miller of Leghorn, being the introduction through the eye and between the grinding sui-faces of millstones, of a powerful blast of air. That the patentee had devoted his time to carrying this idea into practical 552 Bovill's Patent. effect, and liad paid to E. Borgleauz for tlie suggestion, and as his lialf-interest in the invention, the siun of 10,000/. That this invention had formed the subject of his first patent of 1846, hut that the present patent of June, 1849, was his o\vti personal inven- tion, heing the combination of a blast of aii' vdih. an exhausting apparatus. Caveats were entered by several parties. Evidence was given of the novelty and utility of the invention, and it appeared that the patentee had become involved by reason of the extensive litigation to which he had been subjected in asserting his patent rights, and that he had moi-tgaged the patent, his affairs being placed under an inspectorship. It was objected that the Scotch and Irish patents were void, as being subsequent in date to the English patent ; but it was replied that the Scotch and Irish patents were granted after the passing of the stat. 15 & 16 Yict. c. 83, s. 53, which operated to render them valid. Extension to the patentee alone for five years. EoMiLLY, M.E., said that their Lordships had considered the objection taken to the validity of Scotch and Irish patents, and that they did not think it sufficient to induce them not to grant a pro- longation, provided that upon the other circumstances of the case they might think fit to do so, and continued : — Their Lordships have also considered very carefully the whole of the evidence which has been brought before them, and they are of opinion that they are bound to consider the patent as valid, . . . and that Mr. Bovill has conferred considerable benefit upon the country by the introduction described in his specification ; and whether it be composed partly of an invention and partly of a combination of various matters, their Lordships are of opinion that there is nothing in the evidence to detract from his merit in having introduced that invention, and completing and making it perfect in this country. Their Lordships think that if they were to grant a prolongation to the whole of the petitioners, it would be merely giving it to the creditors of Mr. Bovill, and they also think that upon the accounts, and after making all allowances for the objections which have been made, Mr. Bovill has not received as much remuneration for his invention as he deserves, having regard to the beneficial character of the invention as established in the courts of law, and as proved before us. The new letters patent will be granted to Mr. Bovill alone. ( 553 ) Norton's Patent. [A. D. 1863. 1 Moo. P. C, N. S. 339.] Delay in hringing Invention into vse — Considerations ivhich guide the Court — Joint Stock Company. Petition, by assignee, for "the extension of a patent of 28th March, 1849, No. 12,545, to F. W. Norton, for improvements in _ the production of figured fabrics." Caveats were entered by several parties. It appeared that in 1853 Norton assigned his patent for 400/. to the petitioner, but that nothing was done for ten years, when a joint stock company was formed for the purpose of working the patent in conjunction with other patents founded upon it. The patentee had died before the petition was lodged. Extension refused. No costs given. Per EoMiLLY, M.E. — Their Lordships think that if nothing has been done with this patent for the period of ten years, during which the petitioner has had it, it must be either because the patent itself cannot be practically employed for any useful or beneficial purpose, or because the petitioner has purposely abstained from endeavouring so to employ it. The grounds upon which their Lordships grant extensions of patents all have reference to the inventor himself. They are, in the first place, to reward the inventor for the pecuhar ability and industry he has exercised in making the discovery ; in the second place, to reward him because some great benefit of an unusual description has by him been conferred on the public through the invention itself ; or, lastly, because the inventor has not been sufii- ciently remunerated by the profits derived from his strenuous exertions to make the invention profitable. All these grounds pro- ceed upon the supposition that the invention is a new and useful invention. But where the inventor intentionally delays for a great length of time attempting to put it into practice, the grounds for prolongation of the patent which I have already mentioned cannot be relied on by him unless it be possible for him to show some reasonable excuse for the delay. The delay, however, is not the only reason which influences their Lordships in coming to their present decision. The petitioner is not the inventor. It is very true that under the late stat. 7 & 8 Yict. c. 69, s. 4, a petson is not excluded from applying for a patent upon the ground of his being an assignee of the patent : but it must always be borne in mind that the assignee of a patent does not, unless under 554 Norton's Patent. peculiar circumstances, apply on tlie same favouralDle footing that the original inventor does. The ground that the merits of the inventor ought to be properly rewarded, in dealing with an inven- tion which has proved useful and beneficial to the public, does not exist in the case of an assignee, unless the assignee be a person who has assisted the patentee with funds to enable him to perfect and bring out his invention, and has thus enabled him to bring it into use, none of which grounds exist in the present case. But not only does the petitioner as an assignee not appear in so favourable a position as the inventor, but, in addition to that, in the present case, it is not the assignee who has held the patent for ten years, who, properly speaking, is himself applying for the extension, but he has formed, or has concurred in forming, a joint stock com- pany to work this patent in conjimction with others founded upon it ; and the application substantially is that of the joint stock company. This circumstance increases the unfavourable light in which theii' Lordships have usually regarded applications of this kind. His Lordship then referred to Cardtcell's Patent {ante, p. 543), and to the case of the Electric Telegraph Company (not reported), and quoted the judgment of Lord Langdale as follows : — " They (the company) buy this patent right ; they buy it for a commercial purpose, not at all with the view of encouraging the inventors, or rewarding the inventors, though when they are sink- ing their own capital in this particular mode, they do incidentally give a profit to the inventors. It is not the same case as some cases which have arisen, where the inventor, being himself strug- gling with difficulty for the want of capital, is obliged to obtain the assistance of persons who have capital .... but those parties, with a knowledge of the value of the invention, and its capability of being reduced to practical use to any extent to which capital might be employed upon it, think fit to engage that capital in carrying on a trade by the use of this particular invention." In this case it appears that the real applicants are a mere joint stock company, who have bought this patent for the purpose of trading with it, and with others founded upon it, and not for any purpose by means of which any benefit can be derived by the original inventor, who has not only long since parted with all his interest in it, but has since died. Their Lordships do not think it desirable that a patent should be prolonged for such an object, and they are, moreover, apprehensive that, if they were to accede to the prayer of the petitioner, it might be that the other patents taken out by the petitioner and founded upon this patent, might Norton's Patent. 555 derive undue support from such extension. And his Lordship further said that other persons who had taken out auxiliary and supplemental patents might also be deprived of their just profits. Lancaster's Patent. [A.D. 1864. 2 Moo. P. C, N. S. 189.] Alleged prior Publication — Validity of Patent — Unconditional Extension. Petition for the extension of a patent, for "improvements in rifled firearms." It appeared that the petitioner had made experiments for the Grovernment, and had received on account thereof the sums of 3,000/. in 1853, and 2,000/. in 1854. He subsequently made a claim of 11,000/., and received 6,000/., which he submitted was inadequate. Caveat entered by one Haddan, who alleged that the petitioner was not the true inventor, but that he (Haddaii) was ; and also that the invention had been anticipated in a book entitled " Selope- taria" by Beanfoy, published in 1810. The Solicitor Greneral submitted that leave should be reserved to the Crown to use the invention without further payment, and that the remuneration had been sufficient. Extension for four years. No condition imposed. Fer Lord Justice Knight Bruce. — Their Lordships, in the first place, are of opinion that Mr. Haddanh opposition and claims on his own account merely, that is to say, otherwise than as he is one of the public, may, and ought to be, disregarded. He may have acted as agent for the patentee, may have ren- dered him material services, and may especially have aided him with respect to the processes of combination and manufacture, and may possibly not have received sufiicient remuneration. But Mr. Eaddan, in their Lordships' judgment, has not established any title for any present purpose, otherwise, we repeat, than as one of the public merely. So with regard to the Crown, or the War Ofiice, the patentee has received various sums from that quarter, as an acknowledg- ment of his merits connected with gunnery, and as a remuneration for services rendered with reference to that science or art, but not solely with reference to the letters patent in question, nor so as that the Crown or the War Department has acquired against him either any title in connection with the letters patent, or any 556 Lancaster's Patent. riglit to participate in the benefit of an enlargement otherwise than in, and according to, the ordinary course of law. His Lordship then referred to the question of prior publication, and said that for every present purpose it would be taken that the patent was valid, though as to what ought to be the result of any action at law or suit in equity on the subject their Lordships gave no opinion, and continued: — Their Lordships consider also the patented process, so far at least as the present application extends, to be useful, valuable and meritorious, though its merit may be less than if the book already mentioned, of which a second edition was published in 1812, had not existed. His Lordship then said that the accounts were not altogether satisfactory, but they were allowed to pass because of the pecu- liarities of the case in several respects ; a case almost, if not altogether, sui generis. Goucher's Patent. [A.D. 1865. 2 Moo. P. C, N. S. 532.] Practice — No Second Extension of a Patent. Petition for further prolongation of a patent already extended for three years. On the application for fixing a day for the hearing it was opposed, on the ground that the jurisdiction of the Judicial Committee had been exhausted when the extended term was granted. Application dismissed, with costs of the objectors, but not of the Crown. Trotman's Patent. [A.D. 1866. L. E., 1 P. C. 118; 3 Moo. P. C, N. S. 488.] Estimation of Profits where Licences have been granted— Ohliejation in preparing Accounts — Personal Expenses of Patentee. Petition for extension of a patent, of 20th April, 1852, No. 14,076, to J. Trotinan, for " improvements in anchors." The invention related to improvements on a prior patent, granted to W. II. Porter, on 15th Aug. 1838, No. 7,774. Evidence was given that the invention had been extensively used, and the accounts showed payments by licensees to the amount of 15,000/. The petitioner charged as expenses the sum of 4,900/. for his personal allowance and subsistence money while visiting and overlooking the works of the licensees who manufactured anchors under the patent. Extension refused. Trotman's Patent. 557 Pe)- Lord Chelmsford. — Althougli the merit of tlie Improved anchor was originally due to Porter, the improvements intro- duced by the petitioner have certainly tended to make the anchor practically more useful, and he has, therefore, upon this ground, a claim to consideration in the present application. The question in all cases of this description is not what the patentee has received, but what has been made, or by proper judgment and application might have been made, by the patent. The petitioner might, if he pleased, have become the manufacturer of the patented anchor. If he had it would then have been necessary to ascertain what part of the profits of the manufacturing business ought to be ascribed to the patent. In the course of the argument for the petitioner, a case was supposed of a person patenting an invention of a particular kind of bread, and granting licences for the sale of it to a very large number of bakers, and it was asked whether in such a case it would be necessary for him, in applying for a prolongation of the term of his patent, to prove the amount of the profit made by all the licensees in respect of the patented article. The answer is, that he would undoubtedly be bound to furnish this proof. It must always be borne in mind that the extension of the term of a patent is matter of favour, not of right ; arid that it is essential to the favourable consideration of the patentee's application that he should distinctly prove how much the public have had to pay, or, in other words, how much has been received on account of the patent. If, therefore, the patentee has dealt with his patent rights in such a manner that when the time arrives for asking a renewal of the term, he has put it out of his power to give the requisite evidence upon which his application must to a great extent be founded, his petition must fail, because it wants the proof which is essential to its success. This is the case with the present petitioner. His Lordship further commented on the item for " Patentee's allowance and subsistence money for fourteen years, at 350/. per annum, 4,900/.," and said : — It is difficult to imderstand upon what principle it can be maintained. It was no part of the covenant with the licensees that the petitioner should superintend their operations, and if they required his assistance to instruct their workmen, they shoidd have engaged him and paid him for his services. If they had done so, this would have constituted a fair deduction out of the profits of the licensees, and would have properly entered into the patent account. ( 558 ) Mallet's Patent. [a.d. 1866. L. E., 1 P. C. 308 ; 4'Moo. P. C, N. S. 175.] Merit of Invention, and Advantage to the Public, considered — Terms. Petition for extension of a patent of 28tli Oct. 1852, No. 557, granted to R. Ma//ef, for " improvements in fire-proof and other buildings and structures." The invention related to the so-called " buckled plates " used for the flooring of platforms, bridges, &c., which were rectangular plates ha^dng a flat fillet or edge, but convex or arched in the whole of the interior sm^face. These plates gave the strength of the arch in every direction. It appeared that the dies and other plant necessary for manufac- turing the plates were very costly, and it was only when a large quantity was required, as in the covering of the roadway of West- minster Bridge, that any profit was realized. The accounts showed that the patentee had received from the working of his patent the sum of 5,519/. 19.s. M., and there were two disputed items, which, if taken in favour of the public, would have reduced the profits to about 4,000/. It appeared that Mr. Jones, a manufacturer, had an agreement with the petitioner in respect of the manufacture of the plates, which amounted almost to an exclusive licence, the petitioner only reserving particular contracts of his own. Extension for four years. Per Turner, L.J. — Their Lordships have considered this case ; they are fully satisfied of the value of this invention, and if on the one side the public would be likely to suffer from the enlarge- ment of the teiTu of the patent, on the other side their Lordships are perfectly satisfied that the public have been great gainers by the saving which must necessarily have accrued from the adoption of the patent. Spreading over twelve years, there has been a profit of somewhat about 280/. a year to the patentee, and that without any charge being made against the public in respect of the attention and diligence which the patentee has given to the introduction of this great improvement, . . . Their Lordships, therefore, will recom- mend Her Majesty to grant an extension for four years. Their Lordships will clothe the order for the extension of the terms of the letters patent with the condition that the patentee shall grant licences to all persons desirous of having the same upon terms similar to the licence already granted. ( 559 ) Allan's Patent. [a.d. 18G7. L. E., 1 p. 0. 507; 4 Moo. P. C, N. S. 443.] Extension refused where there has been no User under the Patent. Petition for extension of patent of 12th Aug. 1853, No. 1,889, to T. Allan, for an invention of " improvements in electric con- ductors, and in the means of insulating electric conductors." The invention related to a method of constructing a submarine telegraph cable. It appeared that the invention could only he applied on a large scale, and at a cost which could hardly he borne by any private individual. Efforts which had been made to form companies for working the invention had failed, although a large amount of capital had been subscribed, and the result was that nothing had been done under the patent. Extension refused. Lord Pomilly refeiTcd to Bern'ngfon^s patent (not reported), where the invention was a form of knapsack, and quoted the judgment of Dr. Ltishington, as follows : — " Their Lordships feel some surprise, considering the very high testimonials which have been produced to the usefulness of this invention, to find that after the lapse of so great a period of time it does not seem to have been adopted in the service of any of her Majesty's regiments. It would, perhaps, almost lead their Lordships to doubt whether or not the invention was so meritorious as has been described by the witnesses; but, as there is no evidence to show that this article has ever been tried and failed in attaining the objects which it is calculated to attain, their Lordships are of opinion that they ought to give the patentee the benefit of any doubt of that kind. Their Lordships are therefore disposed to advise Her Majesty that this patent should be extended for five years, under the hope that its utility will be displayed, and that if its utility is clearly ascer- tained, there will be no delay in introducing it into the Anny, which it is said to be so well calculated to benefit." His Lordship then observed that the introduction of the im- proved knapsack occurred in the year 1852, before the Volunteer force came into existence, and continued : — Their Lordships think that the rule to be laid down by the Judicial Committee in this case is, that where the utility of a patent has not been tested by actual employment for a period of fourteen .years, it raises a very strong presumption against its utility, which can only be rebutted by the very strongest evidence ; and that upon the present occasion, the evidence, so far from 560 Allan's Patent. rebutting the presumption, rather leads to the presumption that this was considered not to be a practical patent, however theoretical it might be found to be. In this state of circumstances their Lordships think that they cannot with propriety recommend an extension of the present patent. Heebert's Patent. [a.d. 1867. L. E., 1 P. C. 399; 4 Moo. R C, N. S. 300.] Sloiv Adoption of Livention — Extension to Assignees on Terms. Petition, by patentee and assignees of part share conjointly, for extension of patent of 6th April, 1853, No. 852, granted to Herbert, for " improvements in constructing and mooring light- vessels and buoys." The invention related to constructing buoys or light-vessels with bottoms having a conical or concave recess, so that a mooring-chain could be attached to the vessel at the apex of the recess and hold directly at or near the centre of gravity of the buoy or vessel. This enabled buoys to float in a vertical position, and gave great stability to light-vessels. Evidence was given to show that the petitioner's buoys were being tested by the Trinity Board, and that they were used by the Mersey Bock Board, and also by the Grovernments of India, France, Spain, Bussia and Holland. It appeared that the assignees, Messrs. Ncwall Sf Co., had paid 1,000/. for a half-share of the patent. After the petition had been presented the patentee died, and their Lordships permitted the hearing to proceed without requiring the widow executrix to lodge a supplemental petition at that stage, but directed, in case a pro- longation should be granted, that proofs should be afforded, in order to enable the recital of the death and bequest to be inserted in the preamble of the letters patent. Extension for five years. Per Sm W. Eule. — When the ease was first opened, some of their Lordships were of opinion that it would fall within the prin- ciple of a case which had been decided just previously,* namely, that if a patent invention has been brought fully before the atten- tion of those who are interested in its use and aj^plication, and that for fourteen years the patentee has had the exclusive right to the patent, at the end of that term (the privilege being somewhat in the nature of a contract with the public) they should have the * His Lordship referred to ClifforcVs patent for "improvements in apparatus for lowerin'? boats," an extension of the term having been refused. Herbert's Patent. 561 power to use the patent. An extension of the term, in fact, being the taking away from the public that which is in the natui"e of a contract between the patentee and the public. But the full investi- gation which the present case has undergone has led their Lord- ships to the conclusion that there are material differences between this case and the one just decided which prevent the application of the same priuci^^le. Their Lordships have instructed me to say that they are of the same opinion which this Committee has expressed in former cases, namely, that an extension should be refused where an invention had never, duiing the space of fourteen years for which it had been patented, been brought into practical use. Such want of user raises a strong presumption against the utility of the invention; not that such non-user creates a definite rule, but a presumption so strong that, unless there are cu'cumstances to rebut it, if the inven- tion has never been brought into practical use during the space of fourteen years, then we think no extension ought to be granted. Now this invention has not been generally, or even much used, and there is room therefore for a like presumption ; but giving full attention to the evidence adduced, their Lordships are of opinion that the presumption is rebutted by the circumstances of the limited market and demand for such an invention, and by the difficulty of getting experiments made at night with floating lights. His Lordship having intimated that the interest of Mrs. Herbert should be protected, counsel for the petitioner said : — There is no objection on either side to your Lordships granting an extension of the patent to the assignees, making it a condition that the assignees hold a moiety for the representative of the patentee ; that will be sufficient in equity. Poole's Patent. [a.d. 1867. 4 Moo. P. C, N. S. 452 ; L. E., 1 P. C. 514.] Previous Expiry of Foreign Patent — Provision as to Family of Deceased Patentee. Petition, by assignee, for extension of a patent of 18th JVov. 1853, No. 2,682, to M. Poole, for " improvements in surface con- densers, and in evaporators and heaters for steam-engines " (a com- munication from abroad). It appeared that in 1854 Foole assigned the patent and any extension of the term to one Seicell, a British subject resident in New York, in America, who was the real inventor, and who had communicated the invention to Pooh. G. O O 562 Poole's Patent. In JVop. 1854, Seicell took out a patent in America for the same invention, wliich patent would expire in 1867. Sewell died in 1865, and his personal representatives assigned the patent to the petitioner, subject to pajTuent to them of half royalties. In the first six years no profits were made, and it was only when Seicell entered into an arrangement yAih. an agent, who was to receive half the royalties, that any profits were made in England. The accounts showed a profit of 7,000/., one half of which had gone to the agent. There was no account of the profits made imder the American patent. Extension for five years. Per Lord Romilly. — It appears that for the first six years Sewell made no profits at all in this country. There is no account of what profits he made in the United States, nor do theu^ Lordships think it material for this purpose, because the question before them is, what j)rofits were made and what benefits were sustained by the introduction of the invention into this country. Their Lordships consider that the patent is one of great utility. They think it has been proved that it is a patent of great advantage in the construction of steam-engines. Their Lordships think that 7,000/. is an inadequate remuneration for the time, trouble, and risk occasioned by this invention, and, therefore, that it is desirable that the patent should be extended. His Lordship then referred to the objection founded on sect. 25 of stat. 15 & 16 Vict. c. 83, and expressed an opinion that the section had no application in the present case, and also that the section was not intended to apply so as to prevent persons who are natural-born English subjects, and have taken out a patent here, from obtaining a continuation of the patent, because they have subsequently taken out a patent in another country for the same invention, and that otherwise no one would venture to take out a patent in a foreign country. He also said that their Lordships' view was confirmed by what occurred in Betfs Patent {ante, -p. 548), and concluded by saying: — Their Lordships think that decision applies to this case. The patent here was taken out in November ^ 1853, and the patent in the United States was taken out in November, 1854. The consequence of this is, that their Lordships, taking into consideration the whole of the matter, the remuneration received, the value of the invention, and the arrangement which has been entered into between the gentleman who applies here and the family of the inventor, who is deceased, think it fit that an extension should be granted for five years. ( 563 ) McDougal's Patent. [A.D. 1867. L. E., 2 P. 0. 1 ; 5 Moo. P. C, N. S. 1.] Extension refused where the Free Use of Disinfectants would he restricted. Petition, by McDoiigal, as sole proprietor, for the extension of a patent of 20th Jan. 1854, No. 142, to R. A. Smith and A. McDougal, for " improvements in treating, deodorizing, and disin- fecting sewage and other offensive matter." The patent related to the treatment of sewage matter by means of a compound of sulphui'ous acid and carbolic acid, both which substances were largely used for disinfectant purposes. It appeared that the public had not purchased the patented article to any extent. Extension refused. Per Sir W. Erle. — It is clear that extension ought not to be granted unless their Lordships are satisfied that the original invention is of considerable merit, that it is of public utility, and that there has been inadequate remuneration. It is not the duty of the Judicial Committee to adjudicate upon the validity or invalidity of the patent itself, but they must, in de- ciding whether the above conditions have been established, ascertain the meaning of the invention. Their Lordships, in this case, have no intention to put a construction upon it, as would be necessary in the case of hostile litigation, but they have considered the descrip- tion of the invention given by the petitioner's counsel, and they are of opinion that the specification does not contain the grant of an invention, such as has been described by him. We are of opinion that the restriction by patent from general use of the combination of the articles referred to, namely, sulphurous acid or carbolic acid, in the mode described, as pro- ducing very important effects, would be a great public detriment ; and we do not discover in the invention such merit and utility as should induce us to grant an extension of the monopoly asked for, producing, as it might, so much detriment to the public in the use of an antidote to a species of plague. McInnes's Patent. [A.D. 1868. L. E., 2 P. 0. 54; 5 Moo. P. C, N. S. 72.] Limits of Invention not accuratdy defined— Interest of the Piihlic to he regarded. Petition for extension of a patent of 21st cTiiue, 1854, No. 1,356, to J. Mclnnes, for "an improved composition for coating the o o 2 564 McInnes's Patent. bottoms of iron ships to prevent tlieir fouling, and other useful purposes." The invention related to a metallic soap, being a combination of ordinary " pale yellow soap " and a metallic salt, by preference, sulphate of copper. The accounts showed no profits for the first years of the patent, but a net profit dui'ing the last three years of 2,835/. 16.s. lid. The patentee had debited himself for the early years of the patent with the sum of 400/. a year, and for the latter years with 200/. as a charge for personal superintendence in the manufacture. Extension refused. Per Sir W. Erle. — Extensions of patents have been recom- mended by this Committee where there has been great merit on the part of the inventor, and where there has been inadequate remuneration, and where no detriment to the public interest could arise from such extensions. Their Lordships consider this invention both useful and important, but, ha\dng regard to the accounts which are in evidence, they see that there has been some remu- neration to the patentee, and they are by no means satisfied that that remuneration is not suSicient. Their Lordships also, taking into consideration with reference to the public interest, that the individual substance for the application of which the patent is sought to be prolonged is not specifically defined, every kind of metallic soap being within the limits of the specification ; are of opinion that many questions affecting the patent might be raised if any metallic soap was used by the public in ignorance of the specification being as wide as it is. Noemand's Patent. [A.D. 1870. L. E., 3 p. 0. 193 ; 6 Moo. P. C, N. S. 477.] No Merit in Assignee — Sloiv Adoption of Invention — Imperfect Accounts. Petition by assignee for the extension of a patent of 17th March, 1856, No. 635, to C. B. Normandy for " improvements in the treat- ment of steam in steam-engines." It appeared that on 26th June, 1856, the patentee had obtained a j)atent for the invention in France, which patent had still a year to run. Also, that a few months previously to the application, the patentee had assigned four- fifths of the patent rights to the petitioner for the simi of 50/. Evidence was given that the invention was useful, although it had not come into use imtil the last two or three years of the term, when 23 ships, including ships of the Eoyal Navy, had been fitted Normand's Patent. 565 with the patented apparatus. It was alleged that a saving of 10,000/. liad been thereby effected. Extension refused. Lord Justice Gtiffard observed that their Lordships could not recommend Her Majesty to prolong a patent in Encjlaml upon the chance of its being prolonged in France ; also that until nearly the expiration of the English patent there had been nothing done at all ; and that the only merit on the part of the assignee in applying for an extension of the term would have been great ex- penditiu'e by him, but there had really been no expenditure at all by the assignee. And as to the statement of accounts, that their Lordships were of opinion that they could not proceed upon the accoimts, which were mere estimates, for as to the real expenditure upon this patent no sufficient statement or account had been given. Saxby's Patent. [A.D. 1870. L. E., 3 P. C. 292 ; 7 Moo. P. C, N. S. 82.] Obligation on the Petitioner in preparing his Accounts — Estimation of Manu- facturer'' s Profits. Joint petition by Saxby, the patentee, and Fanner, his partner, for the extension of a patent of 24th June, 1856, No. 1,479, granted to J. Saxb//, for " improvements in working simultaneously the points and signals of railways at junctions." It appeared that the petitioners had manufactiu-ed large quantities of their apparatus for interlocking the points and signals at railway junctions so as to prevent accidents, and that such apparatus had been supplied to all the principal lines of railway in the kingdom. The accounts showed receipts and expenditure amounting to upwards of 100,000/., and an admitted balance of 18,000/. as manufacturer's profits and for royalties, but leaving, as was alleged, a net profit only of 14,322/. 8s. Id. Caveats were entered by several parties, and witnesses were called to speak to the accounts alone. Extension refused. Per Lord Cairns. — Their Lordships do not propose in this case to go into any question with reference to the novelty or utility of this invention. In point of fact, it is not the practice of this tribunal to decide upon the novelty or utility of a patent, and although they would of coiu-se abstain in any case from prolonging a patent which was manifestly bad, yet in one point of view they are in the habit, in taking into account that which may be termed the question of utility, to consider not that amount of utility which would be necessary to support a patent, but that kind of utihty which might be more properly described as merit. Upon that 566 Saxby's Patent. question it is tlie liabit of this tribunal to consider whether the invention brought before them is one of that high degree of merit which, if everything else were satisfactory, would entitle the patentee to a prolongation. It is the duty of every patentee who comes for the prolongation of his patent, to take upon himself the onus of satisfying the Com- mittee in a manner which admits of no controversy, of what has been the amount of remuneration which, in every point of view, the invention has brought to him, in order that their Lordships may be able to come to a conclusion whether that remuneration may fairly be considered a sufficient reward for his invention or not. It is not for this Committee to send back the accounts for further particulars, nor to dissect the accounts for the purpose of surmising what might be their real outcome if they were differently cast ; it is for the applicant to bring his accounts before the Com- mittee in a shape which will leave no doubt as to what the remimeration has been that he has received. It has been decided more than once by this Committee that where a patentee is also the manufacturer, the profits which he makes as a manufactm-er, although they may not be in a strict point of view profits of the patent, must undoubtedly be taken into consideration upon a question of this kind. It is obvious that in different manufactures there wiU be different degrees of connection between the business of the applicant as a manufacturer and his business or his position as the owner of a patent. There may be patents of some kind which have little or no connection with the business of the manufacturer, and there may be patents of a different kind, where there is an intimate connection with the business of the manufacturer, such that the possession of the patent virtually secures to the patentee his power of commanding orders as a manufacturer. Their Lordships consider that they must not only take into account the sum admitted to be received for royalties, but they must also take into account the admitted manufacturer's profits of 20 per cent, on these locking machines and levers, and that they must further not overlook the fact, although it is hard to say what pecuniary value should be put uj)on it, that the general manufac- turing business of these applicants is closely connected with, and as their Lordships thinlc, has been to a great degree produced by their position as patentees. His Lordship then discussed the accounts, and said that the petition ought to be dismissed, but without any costs being paid to the opponents. ( 567 ) Clark's Patent. [A.D. 1870. L. E., 3 P. 0. 421 ; 7 Moo. P. C, N. S. 255.] Obligation on the Petitioner in x>Teparing his Petition and Accounts. Petition for the extension of two patents of 19th Jan. 1857, Nos. 157 and 159, to ^. C/ark, one for " improvements in floating docks," the other for " improvements in machinery or apparatus for raising ships out of water for repair." The two patents were intended to be worked together, and formed one invention. In carrying out this invention, a large rectangular pontoon formed the base of a dock. A ship was floated over the pontoon, and then raised by three groups of hydraidic presses, which lifted the vessel completely out of the water, so that repairs could be carried on. Evidence was given as to the merit and practical value of the invention. Upon the accounts the patentee's clerks were examined. The evidence as to a contract for docks at Malta being considered unsatisfactory, the hearing was adjourned, and the petitioner himself was examined on that point. Counsel for the Crown objected to the accounts as insufficient. Extension refused. Per Lord Justice James. — To the merit, originality and value of the invention engineering evidence of great weight has been adduced, and their Lordships have no reason to doubt this evi- dence. The invention, however, if not wholly, has not been unsubstantially remunerated. It is in evidence that the patentee has received or is to receive in money, or money's worth, the follo"sving remuneration, viz : — Eoyaltyfrom Victoria Graving Bock Co., 600/.; paid-up shares in a thriving company of the nominal value of 3,750/. ; paid by the Indian Grovernment, 2,000/. ; five per cent, on the amount of expenditure on works in course of execution at Malta, the contract price for which is 90,377/. Against this the petitioner has sought to set off very large sums, but sums stated and proved merely as estimates. The largest of them, 2,000/., is stated thus : — By travelling, office, printing, and incidental expenses for proposed patent docks at Portsmouth, Vancouver Island, Bermuda, &c. (enumerating a number of places in all parts of the world), in respect of which no separate accounts have been kept ; being in fact that proportion of the general expenses of the petitioner's office and staff of assist- ants in his profession of a civil engineer which he considers fairly attributable to his efforts to establish docks on his system at the several places mentioned. 568 Clark's Patent. It is obvious that such an expenditure might be carried to an unlimited extent, or limited only by the means, the activity, and the temperament — more or less sanguine — of the patentee. And, it is further possible, and even probable, that in some of the places the patentee's invention may still be adopted, and that to him, as a civil engineer or projector, his plans or estimates may still bring in sufficient remuneration. Their Lordships have for their guidance principles laid down by their predecessors at this Board, and they conceive it to be of vital importance, in dealing with applications of this kind, to adhere to any j^irinciple once clearly established. His Lordship then referred to Saxbi/s Patent {ante, p. 565), and said : — Their Lordships entirely concur in, and feel themselves bound by, this decision, and to hold that the accounts in this case are not presented in such a manner as to enable them to pronounce that the petitioner has not received a sufficient remuneration. This case is, moreover, stronger than Sa.)rb?/s Patent in this : that neither in the accounts nor in the petition is the profit on the Malta works in any way alluded to. The only reference to the Malta works is in the following passage : — " He has every reason to believe that his system is greatly approved, and will very shortly be adopted at Malta and other places ; " that petition having been made in Mai/, 1870, and the actual contract for the works having been made in Augmt, 1869. And in the petition, having enumerated other receipts, there is the following state- ment : — " That the above particulars comprise the whole of the receipts and advantages derived by yoiu' petitioner by way of remuneration for his said patented invention." A petitioner seeking the grace and favour of the Crown is bound to strict truth, and to the utmost candour and frankness, to uberrima fides, in his statement. Their Lordships were so struck with the apparent want of candour in dealing with the Malta con- tract in the petition and accounts that they have thought it right to give the petitioner an opportunity of fiu'ther examination and explanation. And although their Lordships are willing to acquit the petitioner of any intention to deceive them, yet they are bound to hold that the petition and accounts do not contain the full and accurate information which the Crown, ih.e public, and their Lord- ships are entitled to have. The petitioner himself has accordingly been this morning examined, but upon the whole consideration of the case their Lordships feel that they cannot recommend her Majesty to grant the prolongation asked for, or any prolongation. ( 569 ) Houghton's Patent. [A.D. 1871. L. E., 3 P. C. 461 ; 7 Moo. T. C, N. S. 309.] Extension to a Joint Stock Coivpavy. Petition, by assignees, for the extension of a patent of 17th Feb. 1857, No. 467, to F. B. Houghton, for "improvements in the pre- paration of materials used in the manufacture of paper." The invention consisted in the manufacture of fibrous pulp, suitable for making paper, from wood or vegetable woody fibres by the action of heated caustic alkali in a closed boiler. It appeared that the petitioners were a joint stock company, who purchased the patent in 1866 for 1,000/. and 121 paid-up 50/. shares in the company. The accounts showed an expenditure of 30,000/. in plant and machinery, and no profits had been made. The patentee had lost considerable sums in endeavouring to work the invention, and had received no dividends on his shares. Dui'ing the hearing Lord Justice James said : — Their Lord- ships think that the cases of Saxhfs Patent {ante, p. 565) and Clark's Patent {ante, p. 567) only go to this extent, that where there are special statements which show upon the face of the accounts, that the petitioners have, in fact, made very large profits by their invention, as was the fact in both those cases, such circum- stance is sufficient for their Lordships at once to determine the application without going into the merits of the invention. Extension for seven years. Per Lord Justice James. — It appears to their Lordships, that the discovery is one of great importance, inasmuch as it is the ap- plication of a very valuable new material for the purpose of making paper pulp, which material is fibrous and not cellular, being produced from wood, a material which nobody ever supposed to be capable of producing such a pulp ; and produced by a process which has been shown to be practically efficient for the purpose ... Of the merit of the invention their Lordships are satisfied. The fact seems to be, that no profit whatever has been made, either by the patentee himself — except so far as he has shares in this company — or by the company. It appears that the patentee has spent a great part of his life, and a great deal of his money, in trying to bring his patent invention into use, and it also appears that since the patent has been assigned to the present petitioners, a joint stock company, they have really spent a great deal of money in a Jjonci fide endeavour to make the invention known, and to bring it into public use, hitherto vdthout profitable result either to the patentee or to the company. Their Lordships think, therefore, that the petitioners have made out a case for the prolongation. ( 570 ) Johnson's Patent. [A.D. 1871. L. E., 4. P. C. 75; 8 Moo. P. C, N. S. 282.] Effect of Foreign Patents — Particulars thereof sJiould be fully stated. Petition, by Wi/lcox and Gibbs, for the extension of a patent of 15tli Juli/, 1857, No. 1,971, to J. H. Johnson, for " improvements in sewing macliines " (a communication from abroad). The invention related to a method of producing the stitch in se'U'ing machines by a continuous rotatory movement instead of by reciprocation, whereby the seam was produced noiselessly. Gibbs, the petitioner, was also the inventor. Caveats were entered by several parties. It appeared that patents for the same invention had been taken out in America, France, and Belgium, the patent in America being prior in date to the English patent, but having been extended for seven years upon an original grant of foui'teen years, while the other foreign patents had expii'ed. The accounts showed that the profits on the American patent amounted to 16,000/., and that on the English patent to 5,400/. Extension refused. Lord Justice James said that their Lordships were satisfied to adopt the rule laid down in Betfs case . . . namely, that an English patentee obtaining a patent abroad for his invention, in addition to his English patent, is in no sense to be prejudiced either with respect to his original patent or with respect to any application which he may be advised to make for a renewal of it. Their Lordships are also of opinion that an English patentee who has obtained a patent from abroad may make out a case for a prolongation of his patent, but they must have regard to all the circumstances of the case. Beyond all question, here the origin and domicile of this inven- tion, and of the patent, and of the manufactui'e j)rotected by it, are American. If the commissioner in America had not in the exercise of his discretion thought fit to prolong the term of the letters patent, then the English letters patent would have necessarily come to an end, and it would not have been within the power of the Crown to have granted a renewal or extension of the term for ■which the patent was originally granted. So if the French patent or the Belgian patent had been taken out before the English patent — it being a mere accident which was first in point of date — it would have been impossible to have granted a renewal of this patent. What are the merits of the case ? The merits of the case, so Johnson's Patent. 571 far as regards tlie English patent, appear to their Lordships to bo nil. The patentee, by taking out a patent in England, has in effect secured to himself a monopoly during a period of fourteen years of the sale of articles manufactured in America, and exported from America here, which would have been manufactured there and exported to this country quite in the same way if no English patent had been taken out, but with this difference, that the patentee would not have had the monopoly of his patent, and would not, therefore, have had any opportunity of seeming the monopoly of prices. It was suggested to then- Lordships that they ought not to take in consideration any of the profits made in Atnerica, and reference was made to Poole's Patent {ante, p. 561). Their Lordships desire it to be understood that that case is not to be considered as laying down any general rule of law. Where the question to be considered is whether an invention has been sufficiently remunerative or not, in taking into consideration the remuneration received, they must have regard to the rennmeration which the invention has brought in to the patentee, or the person who claims the right of the patentee, whether it be in one country or another. Attention having been drawn by Mr. Archibald, counsel for the Crown, to the inconvenience caused by the omission of a full state- ment of facts in respect of the foreign patents, the Lord Justice said that it was very desii-able that in petitions of this natiu'e every matter applicable to the patent should be stated. Costs to the amount of 500/. were given for distribution amongst the opponents. Pitman's Patent. [A. D. 1871. L. E., 4 p. C. 84; 8 Moo. P. C, N. S. 293.] Imported Invention — There should he a full Statement as to Foreign Patents. Petition, by assignee, for extension of a patent of 6th Oct. 1857, No. 2,556, granted to J. T. Pitman, for " improvements in the apparatus for making candles " (a communication from abroad). It aj)peared that the patent was for a foreign invention which had been patented in America prior to the date of the English patent, and the American patent had expired, and was subsequently renewed, but would finally come to an end in August, 1876. These facts were not stated in the petition. It was objected, on the part of the Crown, that the petition did not state the material facts relating to the American patent. 572 Pitman's Patent. Extension refused. Per Sir J. W. Colville. — In the present case it appears to their Lordships that there were peculiar reasons why the circumstances relating to the American patent should appear upon the face of the petition. ... It is desirahle that those who come to oppose a patent should know the precise circumstances and the possible conditions upon which a renewal was granted, and, therefore, it does appear to their Lordships that this was eminently a case in which the suggestions of Mr. Archibald, In re Johnson's Patent {ante, p. 570), approved by their Lordships, should have been fol- lowed, and that there should have been a full disclosure of all the circumstances relating to the American patent. Their Lordships wish it to be understood that, for the future, this Committee will invariably act upon that principle. There are, no doubt, cases in which their Lordships have granted applications by the assignees of the patentee for the extension of the term, and have also considered, in some respects, the expenses incurred by the assignee in bringing the patent into notice, and for the merit, as it may be said, of the assignee in patronizing the patentee, and in pushing the patent into notice ; but the general rule which their Lordships entertain in applications on the part of assignees is, as was stated by Lord Brougham in Morgan's Patent (1 Webs. E. 738), that by so doing " they are, though not du-ectly, yet mediately and consequentially, as it were, giving a benefit to the inventor." ... It has been the practice of this tribunal, in cases in which an application of this kind on the part of an assignee has been granted, to impose conditions whereby a proportion at least of the benefits to be derived from the patent, should go to the original inventor. In re Russe/l's Patent (2 Moo. P. C. C. 496). In this case, however, their Lordships find that the original patentee is now entirely, as it were, out of the case. Wield's Patent. [A.D. 1871. L. E., 4 P. C. 89 ; 8 Moo. P. C, N. S. 300.] Practice as to Costs. Petition for the extension of a patent, for " improvements in machinery for winding yam or thread on bobbins and spools," Caveats Avere entered by several parties. The accounts being jyrima facie imsatisfactory, theii' Lordships examined the accounts before entering on the merits of the in- vention. Wield's Patent. 573 The petitioner's son, wlio had kept the books, was examined as to the profits, but it appeared that no cash book had been kept. The petitioner, from ill health, was not in attendance, and there was no other witness to verify the accounts. Sir J. W. CoLViLLE said:— Theii- Lordships think that it is clearly necessary to have these accounts verified in some way or other. The petition was then abandoned, and the opponents applied for costs. Per Sir J. W. Colville.— Their Lordships have considered the question of costs, and they are inchned to adhere to the rule that has been laid down, almost from the first application under the Act giving them jmisdiction in patent cases, that in the exercise of their power to grant costs it is certainly not desirable to refuse the costs of a fair opposition, since it is rather in the interest of this tribunal to encourage bona fide oppositions, in order that the Court may be j)ut in possession of all that can be alleged against the continuance of the patent. Their Lordships then ordered that the petitioner should pay 500/., to be apportioned between the two classes of opponents, unless he should prefer within a week to tax the costs of all parties. The petitioner elected to have the costs taxed. Winan's Patent. [a.d. 1872. L. E., 4 p. C. 93; 8 Moo. P. C, N. S. 306.] Effect of Foreign Patents. Petition for extension of a patent of 19th June, 1858, No. 1,386, to R. Winans and T. Winans, for a " new and useful improvement in the form of hulls of steam vessels." It appeared that the same invention was patented in France in August, 1858, and in America in October, 1858, also that the French patent had expired, and that the Aynerican patent had but a few months to run. Extension refused. Per Sir E. Collier. — In the present case we have circum- stances very similar to those which existed in Newton's Patent {ante, p. 547), but we have this additional fact, which appears to their Lordships very material : not only, as in Neivton's patent, were patents taken out in this country and America within short periods of each other, so that the American patent as well as the English were nearly expired, but in this case a patent was taken 574 Winan's Patent. out in France, and that patent has been allowed to expire by the patentees themselves. So that what their Lordships are now asked to do is this : the patentees having published this invention in France, but not having kept up theii' patent in that country, we are asked to pro- hibit the subjects of the Queen for a certain time, if this prolonga- tion is granted, from building vessels the subject of the invention ; while the building of them would be open to shipbuilders in France, where the invention has been published by the patentees. Johnson's and Atkinson's Patents. [a.d. 1873. L. E., 5 P. C. 87.] Practice as to Accounts. Petition for the extension of two cognate patents of different dates, which was unopposed. It appeared that copies of the accounts, as required by the 9th Rule, had only been filed on the morning of the day of hearing. Their Lordships refused to entertain the question of the accounts, and adjourned the hearing. But inasmuch as the petitioner was in a delicate state of health and desired to go abroad, they received his evidence upon the merits of the invention. Subsequently the application was heard on the accounts, when their Lordships recommended an extension for five years of the older patent, and an extension for two-and-a-quarter years of the more recent patent, whereby both patents would expire on the same day, viz., 13th Dec. 1878. Care's Patent. [A.D. 1873. L. E., 4 P. C. 539 ; 9 Moo. P. C, N. S. 379.] Slow adoption of Invention explained — Alloivance to Patentee for Personal Expenses. Petition for extension of a patent of 29th March, 1859, No. 778, to T. Carr, for " machinery for disintegrating or pulverizing artificial manui-es and other substances." In the patented machine, two discs, near together, and each furnished with a number of cross transverse bars nearly reaching across the interval between the discs, were set in rapid rotation iu opposite directions, and the material, introduced into the chamber whereof the discs formed the sides, was broken up by a succession of blows, in mid-air, from the bars. It appeared that the remuneration received, after deducting expenses, amounted to about 2,000/. The patentee charged 400/. Carr's Patent. 575 a year for several years for personal expenses in bringing the patent into notice. Extension for six years. Per Sir Montague Smith. — The machine is one of that kind, the varied application of which may not he immediately ohvious. It would jJi'ohably require considerable experience of its use before manufactui'ers would introduce it into their works, inasmuch as the machine is one which would displace those already employed in various manufactories. It is common experience that men are slow to change the machines they use till they are perfectly satis- fied by experiments that the new machine is better and will pro- duce results more cheaply than those which they abeady possess. It appears that the machine is one original in its kind ; it is not merely an improvement upon an old machine, but one which is founded upon a new principle — a principle that may be well known to scientific persons, but which had not been applied prac- tically to machinery on a large scale before the invention of Mr. Carr. Their Lordships are satisfied that there is considerable merit in the invention, and that the machine is one which may be of considerable utility in various important manufactories. His Lordship then referred to the circumstance that the Attorney- General took no objection on the ground of want of merit in the invention, or on the accounts ; and said it must be assumed that, so far as the Attorney- Greneral was concerned, he had found nothing on the face of them which required investigation. The result of the accounts is that the profits received by the inventor on account of the patent amount to about 2,000/. Their Lordships think that this is not an adequate remuneration for an invention of such excellence. The only suggestion made by the Attorney-General was that the patentee had charged in some years an annual simi of 400/. for his time. Undoubtedly a charge of that kind ought to be narrowly watched; but their Lordships are of opinion, that in this case the patent may be properly debited with that annual amoimt ; at all events for the years in which it was made. It appears that Mr. Carr, in the first, second, or third years after he had obtained his patent, did not devote the whole of his time to carrying it out ; but having then become confident of the great value of his invention, he appears in the year 1863 to have given up the business in which he was engaged, that of a machine manufacturer, and to have devoted his whole time from that year to the improvement of the machine, and to promote its adoption by the public. ( 576 ) Blake's Patent. [A.D. 1873. L. E., 4 P. 0. 535 ; 9 Moo. P. C, N. S. 373.] Effect of Foreign Patent. Petition, by assignees, for the extension of a patent of 3rd May, 1859, No. 1,111, to L. R. Blake, of Massachusetts, in America, for " a macliine for sewing a sole to a boot or sboe." It appeared that on 6th July, 1858, the patentee obtained a patent in America for the above invention, and on 5th May, 1859, he patented the same invention in France. The French patent expired in 1862. Extension refused. Per Sir Barxes Peacock. — Would their Lordships be carrying out the policy of the legislature if they were to advise Her Majesty to prolong this English patent which Avas granted on the 3rd of May, 1859, merely because the French patent was granted two days afterwards, when they would have had no jurisdiction to advise Her Majesty to prolong the patent at all if the French patent had been taken out a day earlier than the English patent? Their Lordships think that they would be flying in the face of the policy laid down by the legislature under the stat. 15 & 16 Yict. c. 83, if they were to recommend Her Majesty to prolong the term of the letters patent in this case. Ball's Patent. [A.D. 1879. L. E., 4 App. Ca. 171 ; 48 L. J., P. C. 24.] Practice — Evidence Admissible under Notice of Objections. Petition for extension of a patent of 2nd Feb. 1865, No. 294, to J. Ball, for "improvements in the manufacture of sheep- shears." Caveats were entered by several parties. The notice of ob- jections alleged smallness of merit and utility, want of novelty (some instances of anticipation being given), insufficiency of specification, &c. At the hearing, evidence was tendered to show want of novelty, which had not been specially referred to in the notice of objections. This was objected to, but their Lordships admitted the evidence. Per Sir Barnes Peacock. — Their Lordships are of opinion that they ought not to exclude the evidence which is proposed to be adduced. Their Lordships think that under the rule to which reference has already been made, it is sufficient to state the grounds of Ball's Patent. 577 objection without stating the particulars of those objections. . . . Moreover, the Attorney- General -would clearly have the right to introduce the evidence, irrespective of the notice of objections. Hughes' Patent. [a.d. 1879. L. R., 4 App. Cas. 174; 48 L. J., P. C. 20.] Extension inhere Invention has not come into use — Insertion of Condition. Petition for the extension of a patent of 1st Feb. 1865, No. 286, to J. Hughes, for "improvements in the construction of armoiu'- plated ships, forts, and other like structm-es." The invention related to the construction of ships of war, tiuTcts, and other structures intended to be protected by armour plating. It had not come into use. Extension for seven years. Per Sir Montague E. Smith. — The consideration which has pressed upon their Lordships' minds in this case has been that there has been no use whatever of the invention in this country. Their Lordships, in exercising the jurisdiction which is vested in them of recommending or refusing to recommend the prolongation of a patent, are no doubt invested with pov»'ers in a great measure discretionary, but in exercising them they must be guided by the rules laid down in previous cases. It is obviously necessary that that should be so, both for the proper administration of what is in the natui-e of a judicial function, and also for the guidance and secui'ity of patentees themselves. His Lordship then referred to the judgments in Bakeiceirs Patent {ante, p. '.46) and Allan's Patent [ante, p. 559), and discussed the evidence given by Sii" S. Robinson, Sir H. Lefroy and others on behalf of the petitioner, and said: — If the case had stood there, notwithstanding the great weight which, it must be con- ceded, attaches to the evidence of those gentlemen, then- Lordships would still have felt considerable doubt whether the utility of the invention had been sufficiently established ; because from the fact that the invention had not been adopted by the G-overnment, it may be inferred that other officers, of probably the same amount of experience, who have had the responsibility throwTi upon them of constructing ships in the manner best suited for the public service, are presumably of a different opinion ; but the balance has been turned in the minds of their Lordships in favour of the patentee upon the point of the utihty of the invention, a utility sufficiently great to rebut the presumption that would arise from its non-use, by the statements made by her Majesty's Attorney- General through Mr. Gorst. It is impossible not to suppose that G. P V 578 HuGPiEs' Patent. tlie attention of the Admiralty lias been called to the present inquiry. The Crown, or the Adanii-alty acting on the part of the Cro^\Ti, might have opposed the prolongation, but Mr. Gorst has informed us that he has not been instructed to oppose this pro- longation ; and further, he has intimated the opinion, which is probably formed, not merely from his o"\vn view of the evidence, but from the view of those who instruct him, that upon the evidence this is a valuable invention. If it be valuable, it can only be so because, though not yet adopted, it is an invention which at last may be brought into use. It is sufficient to say upon this point, that the evidence of utility is very strong and unanswered, and is supported rather than con- troverted by the statement which has been made on the pai-t of the Attorney-General. His Lordship then referred to Berrlngton''s Case {ante, p. 559) and to Utithven's Case (not reported), as to which his Lordship quoted a passage from the judgment of Lord Justice Kxight Bruce, as follows : — " Their Lordships cannot disregard the manner in which the Acbuiralty and those who represent the will of the Cro-svn, or the inclination of the Crown in cases of this nature, view the matter ; and they cannot regard that opinion as unfavoiu'able to the claim of the petitioner." And he fui-ther observed that he could not regard what was said on the part of the Attorney-General as unfavourable to the claim of the petitioner. His Lordship, after observing that the patentee had stated that his invention had been adopted in Eussia, and that, failing to introduce his invention in this country, Mr. Hnghes had a right to go there, continued : — Their Lordships think that on grounds of public policy the Government of his own country ought not to be put, with regard to the use of this patent, in a worse position than foreign Governments. Their Lordships think that whilst, on the whole, but mth some hesitation, they think it right to advise her Majesty to prolong this patent, it must be upon a similar condition to that inserted in the prolongation granted to Sir W. PaUiser, which was expressed in these terms : " Upon condition that the officers of her Majesty's Government, and all persons who may from time to time contract for the supply of ordnance and projectiles for her Majesty's service, in respect of work done in the execution of such contracts shall be at liberty to use the same invention or inventions diu-ing the con- tinuance of the new letters patent." That is the language used in Palliscr's patent. The language will, of course, be changed so as to adapt it to this case. ( 679 ) Napier's Patent. [a.d. 1881. L. E., 6 App. Ca. 174; 50 L. J., P. C. 40.] Extension of Patent as to part of the Invention — Reservation of use for the Public Service. Petition for extension of a patent of 2nd Feb. 1867, No. 299, to li. D. Napier, for " improvements in brakes and apparatus for giving motion to machinery." On the case being opened, counsel for petitioner proposed to limit the claim to differential brakes and clutches, and their application to windlasses and cranes. Extension for seven years, under conditions. Per Sir Montague E. Smith. — Theii- Lordships have felt some difficidty in ascertaining what is the precise nature of the invention which the patentee claims, in consequence of the somewhat obscure manner in which the specification is drawn, and the absence of any specific description of the claim made on the part of the patentee. Their Lordships have come to the conclusion that, so far as regards the application of the differential brake to windlasses, it is an invention of value, and indeed of considerable merit. There is also evidence that the invention may be usefully applied to a par- ticular descrijDtion of crane which has been called an overhead crane ; but their Lordships have no evidence that the application of the differential brake to other machines which are mentioned in the specification has been productive of advantage. In the absence of that evidence, their Lordships think that the prolonged patent shoidd be confined to the machines which have been mentioned, viz., windlasses and travelling cranes. Theii* Lordships have had the accounts laid before them ; and so far as the Crown has been able to investigate them, no objection has been made to the results which those accounts show, and it certainly does appear that the patentee and his son, to whom he assigned the patent, have made no profit, but, on the contrary, have sustained some loss. The new letters patent will be restricted to the manufaetm-e of differential brakes and clutches, or of either of them, as applied to windlasses and cranes in the manner described in the specification. The new letters patent must also be subject to the condition, which has become now a usual one in cases of inventions which are likely to be required for use by the Government, that the Government and its contractors should be entitled to use the invention. pp2 ( 580 ) Adair's Patent. [a.d. 1881. L. E., 6 App. Ca. 176; 50 L. J., P. C. 68.] Fiill Statement as to Foreign Patents essential — Extension refused where Accounts are unsatisfactory. Petition for extension of a patent of 5t]i April, 1867, No. 1,027, to W. Adair, for " improvements in pumps." It was objected, on belialf of the Crown, that the petitioner had made no statement as to the foreign patents which he had taken out for his invention, some of which patents had expired, or were about to expire, and that the accounts were unsatisfactory. Extension refused. Per Sir R. P. Collier. — The rule has been again and again laid do^vTi that where a patentee, whether English or foreign, has obtained foreign patents, they should be stated to their Lordships. Moreover, it may be material to ascertain the date of those patents, inasmuch as if the date was prior to that of the English patent, even in the case of an English invention and an English patentee, it would be at all events a serious question whether the patent should be renewed. But in more than one case it has been said that there may be cases in which the profits of a foreign invention may be properly taken into consideration. It is there- fore necessary for an English as well as a foreign patentee to give their Lordships the fuUest information upon that subject. Upon examination of the cases it does not appear that any of them go the length of deciding that, with respect to an English invention and an English inventor, the mere taking out of letters patent in a foreign countrj-, and allowing them to expire, would be a reason for their refusal to renew the patent. In fact, there are two cases — the case of Betts {ante, p. 548) and the ease of Poole {ante, p. 561) — in which the contrary has been held; their Lord- ships therefore do not give weight to that objection. His Lordship then discussed the accounts, and concluded as follows : — Under these circumstances their Lordships have come to the con- clusion that the account is not satisfactory. It is not only upon the omission (which they regard as a serious one) to give them information upon the foreign patents, but also upon the ground that the accounts not being satisfactory, they feel that it would not be consistent with their duty to advise Her Majesty to extend this patent. ( 581 ) Sillar's Patent. [A.D. 1882. Not reported.] Considerations applicahle where the Petitioners are a Company. Petition, hj assignees, for the extension of a patent of 15th June, 1868, No. 1,954, to JF. C. SUhw, R. G. Sillar, and G. W. IFigncr, for " improvements in deodorizing and purifying sewage and making manure therefrom." The petitioners were assignees of the patent and trustees for the Natire Guano Comjjamj, Limited, who held other patents relating to the invention. The patented process was the following : — Sewage in a liquid state was mixed in an open channel with a stream of liquid con- taining in suspension finely ground charcoal and clay admixed, with a small percentage of blood. The sewage was thereby deodorized, and the solution was then treated with alum or sulphate of almnina, whereby the suspended matter was deposited and the liquid became clear and colourless. The deposit was pressed and dried and then sold as a manure under the name of " native guano." The process was called the A, B, C process. There were several foreign patents taken out subsequently to the English patent, some of which had expired before the hearing. The company was registered in 1869, with a capital of 6,000/., which was subsequently increased from time to time to 228,766/. Sewage operations were carried on under the patent at Leamington, Leeds, Crossness, Hastings and other places, and finally at Aylesbury, where the process was brought to a high state of efiiciency, and large sales of manure were made. Evidence was given by chemists, sanitary engineers and agricul- turists to prove the merit and utility of the invention, as well as the value of the resulting products. The accounts showed a payment to the patentees in fully paid-up shares of the company of a sum estimated at 27,000/., and losses by the company in carrying on their operations of 184,095/., which was reduced by sales of manure, concessions and premiums on issues of shares to 138,707/., the sum received for premiums being 44,735/. The Attorney-General opposed on several grounds. Extension refused. Sir Barnes Peacock, after discussing the language of the specification, said : — Any members of the public would be prevented from using alum, clay, and charcoal for the purpose of deodorizing 582 Sillar's Patent. manure, using those ingredients in the proportion stated, whether using them with blood or without — by adding the blood they would clearly infringe the patent. The question is, whether this patent is of such utility as to justify the renewal of the patent, excluding the public upon this general specification from the use of those ingredients for the purpose of deodorizing sewage, the use of two of those ingredients, namely, alum and charcoal, being well known. His Lordship then referred to McBougal's case {ante, p. 563), for the use of a combination of sulphurous and carbolic acids, and the judgment thereon, and continued — Their Lordshij)s therefore considered that it woidd be a great public detriment to deprive the public of the use of the combination of those two materials. And so in this case, it might and would be a detriment to the public to prevent them from using these well- known substances, alum and charcoal, in combination with clay, with the proportion of blood given in the specification. Then the question is whether the patentees have been sufficiently remunerated for the merit and utility of the invention which they have pointed out by their specification. It aj)pears, by the evidence, that when this transfer was made and the Natire Guano Company {Limited) was constituted, the patentees each received a certain number of shares — a certain nmnber of 5/. shares, and, I believe, a certain number of 1/. shares fully paid up — and it appears that Mr. W. C. Sil/ar had made between 6,000/. and 7,000/. by the sale of his shares, besides the 200 shares which he still retains in his hands fully paid up. And I think it appeared that the three patentees had received altogether for their patent over 27,000/., that being divided among the three patentees would be 9,000/. for each, which their lordships think an ample remuneration for the patentees themselves for the invention. But then the application is not made by the patentees, — it is made by the Natire Guano Company, who are the assignees of .the patentees ; and the question is, whether their meritoriousness is such as entitles them to have the patent extended, looking to the benefits they have conferred upon the public by carrying on this invention which was assigned to them. His Lordship then referred to Norton's Patent {ante, p. 553) and to the judgment of Lord Langdale in the case of the Electric TckgrajjJi Company {ante, p. 554), and said: — Did the Native Guano Company form themselves into a company with the object of remunerating the inventors, and enabling them to carry on this patent ? It appears to their Lordships that this Sillar's Patent. 583 case falls very much within the principle laid down by Loud Langdale in the case of the Electric Telegraph Company. Then it has been said that patents have been renewed for the benefit of joint stock companies, but the question is whether in this particular case the joint stock company have shown that they have been very meritorious. In the first place, very soon after the assignment of the patent they floated their shares on the Stock Exchange, and on one occasion they sold a large number of shares at between 10/. and 12/. premium, realizmg 24,000/. His Lordship referred also to another instance in which shares had been sold, and continued : — There has been no case cited to their Lordships, and I do not think any case could have been cited, in which their Lordships have recommended her Majesty to extend letters patent for the benefit of a joint stock company, who have, as this company appear to have done, floated theii- shares in the market and made con- siderable sums of money by doing so. This company by merely selling shares at a premium apj)ears to have realized a sum alto- gether of 44,000/., and the money which they have obtained has been obtained, not by selling the shares at the par value of the shares to persons willing to come in and work the patent, but by selling those shares to stockbrokers on the Stock Exchange, who bought them, not for the benefit of the public, but for the purpose of selling them again on the Stock Exchange. It a2:>pears to their Lordships that this company took over this invention as a speculative undertaking, and the mode in which the company have dealt with the shares shows that they were carrying on their operations for the pm-poses of speculating rather than for the pui'pose of benefiting the public. No doubt in all the cases in which they have endeavoured to carry out the patent they have been losers — they have been losers to a very great extent — they have lost to the extent of 138,707/. Under these circumstances their Lordships think that this is not a case in which they would act properly by advising her Majesty to extend the term of the letters patent. ( 584 ) APPLIGATIOJJS RELATING TO PATENTS. Fox's Patent, In re. [A.D. 1812. 1 Ves. & B. 67; 1 Webs. R. 431, n.'] Patent granted for Improvements on an existing Patent. Petition for Grreat Seal. It appeared tliat the user of the inyention sought to he patented would interfere with rights under an existing patent. Patent sealed. No costs allowed. Per Lord Eldon, L.C. — I take it to be clear that a man may, if he chooses, annex to his specification a pictiu-e or a model descriptive of it ; but his specification must be in itself sufficient, or, I ap- prehend, it will be bad. If the petitioners have invented certain improvements upon an engine for which a patent had been granted, and those improvements could not be used without the original engine, at the end of fom-teen years the petitioners coidd make use of a patent taken out upon their own imj^rovements ; though, before that period expired, they would have no right to make use of the oihev's substrafH/iK My present opinion is that the patent must go ; but I will read the affidavits and see the parties and their models. I do not like to give costs in a case of this kind. I cannot say that the jealousy on the other side was unreasonable. Dyee, Ex parte. [A.D. 1812. Pari. Eep. 197.] Concurrent Apijlications for a Patent. Lord Eldon, L.C, held, that in concm-rent applications for a patent for the same object, that which obtains the Grreat Seal first will have the sole right at law, saying : — I can see no other mode of deciding than by awarding the patent to him who runs the quickest through the process. ( 585 ) Cutlek's Patent, In re. [A.D. 1839. 1 Webs. R. 418.] Utility. Petition for Great Secal, opposed by one Haines, who claimed to have invented the chain, the subject of the proposed patent. The Attorney-Greneral had decided that there was no foundation for the objection, but during the hearing, a patent of a.d. 1779, to Fussell and Douglas, was brought to his notice, and he was of opinion that the petitioner's patent had been anticipated, and ought not to issue. Patent sealed, with costs against the op- ponent. Per LoKD CoTTENHAM, L.C. — An objection is raised of a general nature. . . on two grounds ; first, it (the patent) does not exhibit any invention of anything new ; and secondly, that what is pro- posed to be done would not be useful if introduced in practice. With regard to the second, it is not very easy, sitting here, to form any ^^ery conclusive opinion as to the usefidness, nor is it very necessary to inquire into that, because if it be so perfectly useless as is represented, it will interfere with no man's rights, and it will be a mere dead letter, which no man would wish to imitate if he had the right; but as far as I can come to any conclusion from what is represented to me, I consider it is a considerable im- provement. . . With regard to the novelty, there really seems to me to be very little doubt or difficulty. Sharp's Patent, In re. [A.D. 1840. 3 Beav. 245; 1 Webs. Pat. Ca. 641 ; 10 L. J., Cli. 86.] Alteration of Enrolment — Jurisdiction of the Master of the Rolls. Application to the l^iaster of the Polls to expunge a material part of a disclaimer which had been duly enrolled. Petition dis- missed with costs. Per Lord Langdale, M..^. — Patents for inventions are granted on condition of a specification of each invention being enrolled in a limited time ; and except for the purpose of correcting mere verbal or clerical errors, proved to have arisen from mistake or inadvertence, I am of opinion that I have no authority to make any alteration in the enrolment of the patent or specification. It does not appear that the Master of the Polls, as keeper of the records in Chancery, has ever exercised any greater authority than I have stated in matters of this kind ; and being of opinion that I have no jurisdic- tion to make any such order as is asked by this petition, I must dismiss the petition with costs. ( 586 ) Simpson and Isaacs' Patent, In re. [A.D. 1853. 21 L. T., 0. S. 81 ; 1 W. E. 259.] Concurrent Applications. Petition for Great Seal, opposed by one Warren, who had a patent for a like invention, dated 12tli Oct. 1852. Petitioners had obtained provisional protection on 2nd Oct. 1852, the day after stat. 15 & 16 Vict. c. 83 came into operation. Their aj)plication for sealing was opposed by Warren before the law officer, who, however, issued his warrant with costs against the opponent. Patent sealed, the time for filing the specijBcation being extended. Per Lord Cranworth, L.C. — I think that Lord Eldon was correct in Dijcr^s Case {ante, p. 584). I shall follow the rule which he there laid down. In that case both pai'ties invented the same thing at the same time, and the question was, who were to be preferred, the first who applied for, or the first who obtained, the patent ? His Lordship decided in favour of the latter. In this ease the patentees first applied, and the act means to put the order for protection granted at the time of the appHcation on the same footing as the patent stood before ; they are therefore the first entitled. I am of opinion, too, that they are entitled to have the patent sealed. No doubt, in advising the Crown to seal letters patent, I run the risk of occasioning great injuiy to parties by driving them into litigation ; but by the contrary course I run the risk of doing irreparable injury. . . . This application is resisted on two gromids : first, that the petitioners are not the true inventors ; secondly, that the invention is not new. I am quite ready to say that I think there is strong evidence that it was not, but I shall not take upon myself so to decide. ... I think I am bound to decide myself, not whether they have made out that they are the true inventors, and that the invention is new, but whether such a prima facie case has been made that I ought to put them into a position to litigate the question with the public. I think they have made out such a case. Ashenhurst's Patent, In re. [A.D. 1853. 2 W. E. 3.] Practice as to Costs where Opposition is abandoned. Petition for Great Seal opposed. Respondent subsequently abandoned his opposition. Lord Cranworth, L.C, sealed the patent, and gave the peti- tioner the costs of and occasioned by the notice of objections, including the costs of the petition. ( 587 ) Brandies' Patent, In re. [A.D. 1853. 1 Eq. E. 121.] Caveat at Great Seal — Patent sealed upon Terms. Petition for Great Seal, opposed by one Hilh, who claimed to be the original inventor, or, at least, to have made the invention jointly with petitioner. Lord Chanworth, L.C, sealed the patent on terms that a deed of compromise be embodied in the order. Daines' Patent, In re. [A.D. 1856. 2G L. J., Ch. 298.] Patent to issue upon Terms. Petition for Grreat Seal, opposed by one Hires. It appeared that in 1853, one Barrett obtained a patent for improvements in pre- serving stone, the cost of which was borne by the j)etitioner, Daines. In 1854, Barrett assigned his patent to Hires, the assignment being made at the request of Daines, who received 1,000/. in con- sideration thereof, and took a license from Hires. It was alleged that the invention, the subject of the petition, was not new, and was a fraud upon the respondent. Lord Oranworth, L.C, said he was satisfied that this was a great imj^rovement, and, thinking that Daines had arrived at the knowledge while he was engaged in working Barrett^s patent, which had been assigned to Hires, he did not tliink it right to direct the patent to issue unconditionally. His Lordship du'ected the patent to be sealed as of the day it would have been sealed if no objections had been taken, but on terms that Daines would, if Hires required, assign the patent to him, to be subject to the same an-angements as to license and otherwise which were made in respect of Barrett's patent. No costs. Subsequently, Hires having declined to accept any benefit under the order, the Lord Chancellor granted the prayer of the petition unconditionally. Tolson's Patent, In re. [A.D. 1856. 6 Do G., M. & G. 422.] Practice — l7i spection. Petition for Grreat Seal. Opposed by a prior patentee of a like invention. Pespondent applied for ins]pection of the provisional specification of the proposed patent. 588 Tolson's Patent. Lord Cean worth, L.C, refused the application, with costs, and said that it might he productive of the most dangerous consequences to a person ahout to obtain a patent, if every person who might possibly have a right to oppose should be entitled to require the production of the provisional specification. Subsequently his Lordship sealed the patent, and said that though there appeared to be a great similarity between the alleged invention of the petitioner and that for which the objectors had already obtained a patent, yet that, looking at the consequences of allowing or refusing the application, and inasmuch as by allowing it the legal rights of the parties would be wholly unaffected, he did not feel himself warranted in withholding the G-reat Seal. Lowe's Patent, In re. [A.D. 1856. 25 L. J., Ch. 454.] Rival Inventors. Petition for Great Seal, opposed by T. E. Wyclte. It appeared that in 1853, the jietitioner Loice was joint patentee with Wyche of an invention of a screw propeller. Whilst the two were engaged together in constructing a model, the propeller blade broke, and the accident suggested the use of divided blades. Nothing was done for tv.'o years, when Lowe applied for a patent for a propeller with divided blades, which was the subject of the present application. At the time of the accident Lowe was in the service of Wyche. Patent sealed. No costs. Lord Cranworth, L.C, said, that in the view he took of the case it was immaterial whether Lowe was in the service of Wyche or not. The question was whether Wyche had made out his case that this was an invention surreptitiously abstracted from him. It was impossible to say abstractedly whether Lowe or Wyche was the inventor — that it was the invention of one more than the other . . . all that could be said was that in June, 1853, the knowledge of a principle was in the mind of each, but that neither embodied that principle in an invention for two years. That being so, Wyche had no power to prevent Lowe from getting the Great Seal applied to his patent. Unless it was perfectly clear that the invention had been surreptitiously obtained, he had no right to withhold the application of the Great Seal ; and it was impossible to go into the case then as fully as it might be gone into upon scire facias. Lowers patent would therefore be sealed, but without costs, because it was clear upon the evidence that there had been an endeavom' on the j^art of Lowe's Patent. 589 Lowe to conceal wliat his invention really was. His Lordship then suggested a compromise. Adamson's Patent, In re. [A.D. 1856. 6 De a, M. & G. 420 ; 25 L. J., Ch. 45G.] Caveat at Oreat Seal — Prior Puhlic User. Petition for Grreat Seal to he affixed to a patent for an invention of a travelling stage or crane to he used in the construction of piers or harhour works, opposed hy one Robinson, who claimed to he the inventor. It appeared that the petitioner Adanison had used the apparatus in the construction of a pier at Hartlepool, for a period of foiu- months hefore applying for a patent ; and he suhmitted that it was impossible to test the efficacy of the invention except in rough weather, and in a position exposed to the view of the puhlic. Petition dismissed with costs. Per Lord Cranworth, L.C. — I cannot put the Grreat Seal to this patent, because I think there has heen a clear dedication to the puhlic. ... In the present instance an invention has heen made in the progress of a work, and it has heen used publicly by the inventor, not as an invention, but in the carrying on and execution of that work. I am not aware that in any similar case any such protection has been afforded to the inventor as is here asked. It was alleged by Robinson that he, and not the petitioner, was the true inventor ; but in the circumstances of this case it is not necessary for me to give an opinion upon that point. The petitioner admits that he completed his invention in May, 1855, and that he used it publicly for four months before applying for a patent. No doubt an experiment might have been made, and, if made bond fide only for the purpose of testing the merits of an invention, I do not think it would have amounted to a dedication to the public ; but when, as in the present case, thousands of persons had an opportunity of seeing the apparatus at work for a period of four months, during the carry- ing on of the petitioner's contract, and in the regidar com-se of the imdertaking, it is quite clear that no intention of applying for a patent originally existed, and under such circumstances, and after such a lapse of time, I must hold that there was a dedication to the public. Russell's Patent, In re. [A.D. 1857. 2 De G. & J. 130.] Joint Inventors. Petition for Glreat Seal. The invention related to the manu- facture of metal tubes. Opposed by G. H. M. Muntz, who was in 590 Russell's Patent. the employ of tlie petitioner as foreman. It appeared that both parties had contributed to the invention or had independently arrived at the same result. The evidence was conflicting. Patent sealed on terms : — " That the letters patent should be granted to two trustees, one to be named by each party. Each party to have a free license to himself and partners (if any). All costs of both sides properly incurred in the matter of the patent to be borne and paid equally by both, and the costs also of Mr. Muntz^s application for the patent. A deed to be prepared accordingly, and if the parties differed, to be settled by the con- veyancing counsel of the Court." Per Lord Cranworth, L.C. — There have been many cases of the sort before me, and the principle on which I have generally acted has been, that where a matter is much in doubt, it is better to run the risk of putting the party opposing the grant to the cost of making out his case in some ulterior proceedings, than to with- hold the Grreat Seal from the letters patent in the first instance, for the obvious reason, that the one course would create a remediable, the other an irremediable injmy. The question here is, Vv^hether there is sufficient doubt in the present case as to who was the inventor of this improvement to render it right to take the coui'se to which I have adverted. Having regard to the affidavits, there appears enough to satisfy my mind of this — not that Mr. Russell was the inventor — not that Mr. Munh was the inventor — but that they were both the inventors. Green's Patent, In re. [A.D. 1857. 24 Beav. 145.] Register of Proprietors of Patents — Expunging of Entry. Motion, under stat. 15 & 16 Yict. c. 83, s. 38, to expunge an entry fi-om the register of proprietors in the Grreat Seal Patent Office. It appeared that in 1853 one Green, the grantee of a patent, assigned the same to the applicants W. and H. On ISih. Aug. 1855, Green executed a second assignment of his patent to another party, and the assignment was registered on the same day. On 25th Aug. 1855, the first assignment was also registered. Application being now made, on behalf of W. and H., to expunge from the register the entry of 18th Aug. 1855, Eomilly, M.E., made the order, with costs, and said : — I have no doubt that there is a sufficient case to entitle the applicants to the order to expunge the entry. ( 591 ) Morey's Patent, In re. [A.D. 1858. 25 Beav. 581.] Jurisdiction of the Master of the Rolls over Entries in the Recjister of Proprietors of Patents. Motion to expunge or vary an entry made in the register of proprietors in the Grreat Seal Patent Office. It appeared that on 13th Jan. 1851, one 3Iorcy, the patentee of a sewing machine, assigned by deed one moiety of his patent to one M., and on 14th Jan. agreed with M. to grant him an exclusive Kcence to work the patent. The assignment and agree- ment were registered on 5th Aug. 1857. On 4th Feb. 1853, Morey assigned by deed the whole patent to another party, J. The deed recited that J. had agreed to purchase the patent and all rights under it, save and except a licence to use a portion of the invention previously granted to M. This assign- ment was registered on 21st Jane, 1853. Application being now made, on behaK of M., that the entry on the register might be expunged, vacated, or varied, Eomilly, M.E., directed an entry to be made, stating the recitals and operative parts of the deed of 1853, and declaring that the licence men- tioned in the above passages was referable to the deed of assign- ment of 13th Jan. 1851, and the agreement of 14th Jan. 1851, which had been entered in full on the register on 5th Aug. 1857, and said he was satisfied that the duty of the Court was to insert on the register any facts relating to the proprietorship, but not the legal inferences to be drawn from them. No costs given. Spence's Patent, In re. [A.D. 1859. 3 De G. & J. 523.] Considerations ivhich guide the Court. Petition for Grreat Seal ; oj)posed. The invention related to a process of rolling and turning steel plates. Patent sealed. Lord Chelmsford, L.C. said : — If this application were refused and the petitioner were right, he would be without redi-ess, whereas if it were granted and the petitioner were not entitled to it, the respondent would have a complete remedy. This would not be a reason for affixing the seal to a patent that was clearly bad. But that could not be said of the patent now before the Court. ( 592 ) McKean's Patent, In re. [A.D. 1859. 1 De G., F. & J. 2.] Practice — Delay in filing Affidavits. Petition for Grreat Seal ; opposed. The afRdavits in opposition to tlie petition were not filed until the morning of the day of hearing. Patent sealed. No order for costs. Per Lord Campbell, L.C. — The party opposing has heen guilty of such negligence as to deprive him of his right of being heard. Blamoud's Patent, In re. [A.D. 1860. 3 L. T. 800.] Practice — Amendment of Error. Application (24th Nor. 1860) to amend an error in certain letters patent granted on 14th Oct. 1856, the patentee's name having been spelt " Blamo^Kl " instead of " Blamo^Kl." Lord Campbell, L.C, refused the application, as the applicant had sho^^^l gross negligence in not applying to rectify the mistake earlier. It was impossible to say what interests might be affected by doing what was desired. Cobley's Patent, In re. [A.D. 1862. 31 L. J., Ch. 333.] Practice — Costs. Petition for Great Seal opposed, but the respondent withdrew his objections. Patent sealed by Lord Westbtjry, L.C. Order : Let the patent be sealed forthwith, and the costs of the objections filed to the seahng thereof, and of this petition, be paid by the respondent. Tolhausen's Patent, In re. [A.D. 1866. 14 W. E. 551.] Practice — Sufficiency of Evidence. Petition for Great Seal opposed, on the ground that there had been prior public sale of the invention. It appearing that there was only one afiidavit distinctly swearing to public sale prior to the date of the application, and that was not corroborated by the person alleged to have sold the goods : Lord Cranworth, L.C, said that he could not refuse to affix the Grreat Seal. If the alleged invention shoidd tm-n out not to be new, the matter could be set right in another way. ( 593 ) Hersee and Smyth, In re. [A.D. 1866. L. E., 1 Ch. 518.] Practice — Extension of Time. Appliccation for extension of time in applying for the warrant of tlie law officer, the applicant having met with an accident, and having been nnahle to attend to business. Lord CiiEL^rsFORD, L.C., granted the application under the peculiar circamstances of the case. Vincent's Patent, In re. [A.D. 1867. L. E., 2 Ch. 341.] Concurrent Inventors. Petition for Great Seal. Opposed by one Bruff, Avho had an existing patent for the same invention, which had been extensively used. Petitioner alleged that he was the true and first inventor, and that he had confidentially communicated his invention to Bruff, who had obtained a patent in fraud of his rights. The Attorney- Greneral issued his warrant for sealing on the groimd that the question ought to be tried before a j\uy. Patent sealed. Per Lord Chelmsford, L.C. — It would be making a dangerous precedent to allow an appeal from the laAv officer of the Crown, unless a case be made of surprise or fraud, or unless some material fact, which, if brought before the law officer, would probably have led him to decide differently, has subsequently come to the know- ledge of the party appealing. In the present case the party opposing relies on public user of the invention, but the applicant raises the point that such user took place in consequence of a fraud which, under stat. 15 & 16 Yict. c. 83, s. 10, would destroy the effect of the user. This is a question of fact which ought to be tried by a jury on viva voce evidence, and if I were to refuse to allow the patent to be sealed, I should be precluding Vincent from the opportunity of having it so tried. Mitchell's Patent, In re ; Brotherton's Patent, In re. [A.D. 1867. L. E., 2 Ch. 343.] Concurrent Inventions, Petitions for the sealing of two patents, each petitioner opposing the other on the groimd of the similarity of the inventions. Neither party had opposed before the Attorney- General, and on C. Q Q 59-1: Mitchell's Patent ; Beotherton's Patent. this ground Lord Chelmsford, L.C, sealed both patents, but gave no costs. Bates and Eedgate, Ex farte. [A.D. 1869. L. E., 4 Ch. 577 ; 38 L. J., Ch. 501.] Concurrent Ajpplications. Petition for Great Seal, opposed by one Bertie. It aj^peared that on 2nd Oct. 1868, Bates and Redgate applied for provisional protection, and on 19th Mar. 1869, they applied to have their patent sealed. Meantime, viz. on 2nd Nov. 1868, Bertie applied for provisional protection for a like invention, and 12th Dec. 1868, his patent was sealed. Leave given to apply for new patent dated 19th 3Iar. 1869, for invention not covered by Bertie^s patent, otherwise petition dis- missed. No costs. JPer Lord Hatherley, L.C. — A person who intends to take out a patent may, under stat. 15 & 16 Yict. c. 83, s. 6, leave a provisional specification at the office of the commissioners, and then he will have certain benefits. Under sect. 8, for instance, he may use his invention for six months without prejudice to his patent by that user, but he obtains no rights against the public until his patent has been sealed, and even then the patent will not relate back to acts done in the interval. But that is all, and he has no right or privilege against any other person. If he wishes to have more he may, imder sect. 9, file a complete specification, and then he is absolutely protected for sis months, and has a right to proceed as if he had a patent for that period. The publication of the complete specification gives to the world the whole benefit of the invention, and then the inventor wiU be protected against any other person obtaining a patent for the same invention. I can see no impropriety in the conduct of the law officer. There is nothing to compel the inventor who lodged the first speci- fication to proceed with his invention, and, if he does not, and no • second application was allowed, the invention might be lost. The second applicant must therefore have a right to his provisional protection. 38 L. J., His Lordship also observed that a person filing a second specifi- p. 502. cation must advertise, and one who had filed the first provisional specification ought — as he would have had to do indej)endently of the statute — to keep a watch over the advertisements, and to observe if any invention were advertised of an apparently similar character to his own, and continued : — Bates and Redgate. 595 I ouglit not to antedate the patent, and, if granted, it must bo as of its proper date ; but wben one patent actually exists, and is brought to the notice of the Lord Chancellor, a second patent cannot be granted for the same invention. The first patentee has possession of all that is included in his patent, but if there is any- thing in the present applicant's invention which is not covered by the patent, he will have a right to a patent for so much, and, if necessary, an inquuy must be made on the subject. HoESLEY AND Knighton's Patent, lii re. [A.D. 18G9. L. E., 8 Eq. 475 ; L. E., 4 Ch. 784 ; 39 L. J., Ch. 157.] Begister of Proprietors of Patents — Jurisdiction of the Master of the Rolls. Motion, under stat. 15 & 16 Yict. c. 83, s. 38, that an entry in the register of proprietors kept in the Grreat Seal Patent Office might be expunged, vacated, or varied. It appeared that Hovdcy and Knighton were joint patentees of an invention, and that Knighton executed a deed of assignment purporting to convey to 0. all his interest in the patent, and further to release 0. from all claims by either or both of the co-patentees in respect of the patent. The deed was entered verbatim on the register. Application being made on behalf of Horsley to excise the entry. Lord Eomilly made the order, with costs, and said : — Here is a patent granted to two persons, and therefore either of them may use it, but neither can dispose of the right of the other. ... I cannot alter the deed, because the deed has been executed by two persons, who, whatever may be the effect of it, were competent to enter into it, and I cannot make them execute a deed other than what they have actually executed. I have no option but to strike out the whole entry ; and the persons who put it on the register must pay the costs of this application. On appeal to the Lords Justices, counsel for respondent took the preKminary objection that there was no right of appeal from the order ; whereupon Giffard, L.J., refused to hear the application, and said : — I think the case is too clear for argument. Probably a right of appeal would have been given if the attention of the Legislatiu'e had been called to the subject. An entirely new register of proprietors of patents was created by the Act, and then the 38th section creates a new jurisdiction, and gives the power of expunging entries to the Master of the Polls or to one of the Common Law Judges ; but nothing is said about an appeal from their decisions, and without such enactment I think there can be no appeal. Q Q 2 : ( 590 ) Yates, Ex imrtc. [A.D. 1869. L. E., 5 Ch. 1.] Practice — Prior Patent, Petition for Great Seal, opposed by one Fletcher, wlio held a prior patent for a like invention of improvements in furnaces. It appeared that Fletcher's patent was applied for on 5th April, 1869, and was sealed on 2nd Oct. ; also that Yates applied for his patent on 2nd June, 1869, and was unopposed until he applied for the sealing. Petition dismissed with costs. Lord Hatkerley, L.C. could not see that the mere application for a patent was sufficient to put every other patentee on his guard, and compel him to move at once before the law officer. There was great inconvenience in having two patents for the same invention in existence at the same time, both to the patentees and to the public. This petition must stand over, and it must be referred to the law officer to say whether, having regard to the prior patent, the present application ought to be granted. The law officer having reported against the application, the petition was dismissed with costs. Manceaux, Ex parte. [A.D. 1870. L. E., Ch. 518 ; L. E., 6 Oh. 272.] Caveat at Oreat Seal — Practice. (1) Petition for Great Seal, opposed by one Le Baron, who had obtained a previous patent for a like invention. Lord Hatherley, L.C, said that he should make an order following that in Ex parte Yates (L. E., 5 Ch. 1), and refer the matter to the law officer. On similar applications, however, in futm-e, the opponent would be obliged to pay the costs of the hearing, unless there had been fraud on the part of the petitioner. The reference at this stage of the proceedings was a matter of indulgence to the opponent. (2) The law officer reported that the patent ought not to issue in respect of one part of the invention. It now appeared that part of the invention of Manccau.v was included in the complete specification of Le Baron's patent, but was not referred to in the provisional specification thereof. Also that in the interval between the filing of the provisional and complete specifications, Le Baron Manceaux. 507 had lodg'ed iu tlie Behjian patent office certain drawings which showed the improvement. Patent sealed only for the part not objected to. No costs. Per Lord Hatiierley, L.O. — In the case of Ex parte Bates and Redgate {ante, p. 594), where both parties were bona fide inven- tors, I held that a second patent ought not to be granted for the same invention, inasmuch as one objection to granting a second patent is, that the question is not between the patentees only, but affects the public, who will be at a loss to know with whom to deal. In some cases, to avoid injustice, the patent has been granted putting the parties under terms, where the question could not othermse be tried, but in this case there is considerable risk of doing injustice by granting a second patent. It is clear that this invention has been made public in Belgium, and the parties are therefore not in the position of original inventors ; nor is there any case of fraud ; nor was the first patentee a servant of the applicant. I must decline to affix the Great Seal to this patent except so far as it is not objected to. Scott and Young, Ex parte. [A.D. 1871. L. E., 6 Ch. 274.] Concurrent Inventors, Petition for Glreat Seal, opposed by one Pocoelc. It ajopeared that on 2nd Jiihj, 1870, Scott and Young obtained provisional pro- tection for their invention of improvements in water meters. On 17tli Aug. 1870, Pocock applied for a patent for a like invention, and on 9th Dec. 1870 his patent was sealed. The present petition was heard on lOtli Feb. 1871. It also appeared that Scott had worked at his invention of a meter at the time of his being in Pocock'' s employment. Patent sealed, with costs against opponent. Per Lord Hatherley, L.C. — The case of Bates and Redgate [ante, p. 594) does not apply where the coui'se of dealing is such as I find here. I hold to all that I said in that case — that a person cannot by filing a provisional specification only, not choosing to file a complete specification, obtain anything more than a right to be protected against the consequences of his own publication, and does not obtain a right to priority over any other person who has independently and originally hit upon the same idea, and, in anticipation of the other, first gives the world the benefit of it. In the history of patents there are many cases of bona fide 598 Scott and Young. inventors hitting on the same thing about the same time, the reason probably being that the want of some such invention is felt by several inventors about that time, and so it often happens that an original inventor is shut out of the fruits of his invention. That has been ui'ged as an objection to the patent laws ; but the answer is that, as far as the world is concerned, it can only treat him who first publishes his invention as the benefactor of the public, and in the case of honest discovery on both sides the law protects the first publisher. The case before me is one where the connection of master and servant existed between the parties, and where there did exist also most abundant means for the master to become acquainted vdih what his servant had invented. This case is too full of suspicion to prevent my granting the seal to the present applicants. Thi-oughout the evidence there is the gravest suspicion of information derived by Pocock as to the natm^e of the applicants' invention. The letters patent must be sealed and dated as of the date of their provisional specification. Henry's Patent, In re ; Farquharson's Patent, In re. [A.D. 1872. 42 L. J., Ch. 363 ; L. R., 8 Ch. 167.] Concurrent Applications for a Patent, Petitions for Grreat Seal, each applicant also opposing. On 25th Mai/, 1872, Farquharson obtained provisional protection for an invention of improvements in breech-loading fire arms. On 26th Auff. 1872, Henri/ applied for protection for a like invention and lodged a complete specification. The Attorney- Greneral declined to decide between the applicants, and issued warrants for the sealing of both patents. At the hearing, it appeared that Farquharson had made his invention independently, and his patent alone was sealed, with costs, against Henry. Per Lord Selborne, L.C. — Mr. Henry api^lied for a patent upon the 26th Aug. 1872, and at the same time filed a complete specification ; and the question is whether, under the statute, the effect of that complete specification was to make it an answer to any claim by anyone else who had previously applied for a patent for the same thing, alleging himself to be the first inventor. It is not contended that the mere lodging a complete specification absolutely entitles the party who lodges it to have his patent sealed if he applies for it within six months ; no one can contend that. But Henry's Patent ; Farquhaeson's Patent, 599 if the argument is not good for that, it is not good for anything at all. ... In a case where no grant has actually been made and sealed, there is no obstacle to the Crown doing what is right or just. I apprehend that it would be no answer to a hot id fide applicant for a patent, assuming the absence of fraud or communication, to allege that experiments had been going on, or even drawings made, by another inventor. One person, being a bond fide in- ■ ventor, comes first to ask for a patent for his invention, and such allegations are no answer to him. If a patent be granted to him, it would date from the day of his application. If he were the true inventor, the circumstance of something having taken place some- where else, which was not disclosed to the world, and as to which no prior application was made, would be no answer to him, even if it were shown that the two inventors were travelling very much upon the same lines, and that their minds were going very much to the same point at the same time. Sheffield, Ex parte. [a.d. 1872. L. E., 8 Ch. 237 ; 42 L. J., Ch. 356.] Concurrent Inventions. Petition for Grreat Seal, opposed by one Stevenson. It appeared that on 11th May, 1872, the petitioner obtained protection for an invention of an improvement in fui"naces for melting glass, and filed a complete specification, and that on 22nd March, 1872, Stevenson had obtained provisional protection for a like invention. Stevenson opposed before the Attorney-Greneral on the ground that Sheffield was not the true and first inventor, that the invention was in part the same as his own, and that the application was made in fraud of his rights. The Attorney-Greneral overruled the objections, and ordered Stevenson to pay the costs. At the same time Sheffiehl opposed the issue of the warrant for sealing Stevenson^s patent, but the result of that opposition is not reported. Subsequently, Stevenson applied for and obtained a re- hearing. The Attorney-Greneral reheard the case, but adhered to his former decision, and ordered Stevenson to pay the costs. At the hearing, evidence was tendered of prior public user of the invention, but the Lord Chancellor refused to admit it, as the objection had not been taken before the law ofiicer, and said the 600 Sheffield. Court never decides the question as to wlietlier the patent is good, but merely decides whether the applicant can be allowed to proceed. Patent sealed, with costs to the petitioner. Per Lord Selborne, L.C. — It has often been said, and I think justly, that in all these cases the whole burden is upon the opponent, who has to show that he has so clear a case as to make it right to do that which, if -svrongly done, would, so far as relates to the patentee, be irreparable, but which, if left imdone, would not inflict upon the opponent any irreparable injiuy. On the whole, the usual course must in this case be followed. The patent must be sealed. Bailey, Ex ijurte. [a.d. 1872. L. E., 8 Ch. CO; 42 L. J., Ch. 264.] Concurrent Applications — Date of Patent. Petition for Gfreat Seal, opposed by one Cassaiielli, who had a patent, dated 3rd April, 1872, for an invention of a pyrometer. It appeared that on the 30th MarcJi, 1872, the petitioner had obtained provisional protection for a like invention. It was alleged that CassartelU had improperly endeavoiu-ed to obtain priority, and had obtained his patent by fraud. Lord Selborxe, L.C, said he should decide that even if the conduct of CassartelU had been as alleged, Baileffs patent coidd not on that ground be antedated, and he fiu'ther said : — The Crown cannot with knowledge grant a second patent in derogation of a former grant ; nor can I, without scire facias, at once assume that the first patent is void. The rule laid doT\ii in Ex parte Bates and Redgate {ante, p. 594), as I understand it, so far as it applies to a case like the present, is, that if an appK- cation to seal a patent is made after the sealing of another, and the second patent appears to comprehend some things not com- prehended in the patent already sealed, then for those things the new patent ought to be granted. Care must, however, be taken that the new patent does not cover the ground which is covered by the earlier patent. So far from finding any evidence whatever, even on Bailetfs part, that if his patent were made to override, in point of date, the patent of CassartelU, it would ]iot comprehend any matter in- cluded in C assart elWs patent, I am compelled to come to the con- clusion that it would probably do so. ... I hold that Bailey is entitled to have his patent sealed, and that it shall bear date the 21st May, 1872, when he applied for the Grreat Seal to be affixed- ( <^01 ) Harrison, In re. [A.D. 1874. L. R., 9 Cli. G31.] Practice where there is siiiiilaritij of Invention. Petition for Grreat Seal. Opposed by one West. It appeared that on 29tli Jan. 1874, petitioner obtained pro- visional protection for an invention of improvements in the processes of evaporation, &c., and he now applied for sealing. On 4th Feb. 1874, Wed applied for provisional protection for an invention of improvements in the production of ice, and his patent "was sealed. Lord Cairns, L.O., observed that he had looked into the pro- visional specification of the petitioner and the complete specification of the respondent, and upon a slight examination he did not see anything like similarity between the inventions, and continued : — I will, however, take an opportunity of reading the specifications more carefully, and if I find no substantial similarity between the inventions, then the patent will be sealed in the usual way, and the respondent will pay the costs of the application. If, on the other hand, I find a similarity, then I shall take the course which has been taken in other cases, and allow the patent to be sealed, but dated as of the date of the application for the Great Seal. Subsequently the patent was sealed, the time for filing the specification was extended until 29th Aug. 1874, and the respondent was ordered to pay the petitioner his costs occasioned by the opposition and consequent thereon. Gething's Patent, In re. [A.D. 1874. L. E., 9 Ch. G33.] Agreement not to oppose. Petition for Grreat Seal. Ojiposed. It appeared that the petitioners, Gethinfj, Jeiilcins, and Gardner, applied for a patent on 8rd March, 1874, and on the same day the respondents, Ilopliina, Rees, and T/iO)nas, also applied for a patent, and now alleged that the invention of petitioners was derived from one or other of the respondents. Each party opposed before the law officer, but before the cases came on for hearing the respective agents on each side agreed that there should be no opposition. When the petitioners applied for the Grreat Seal, the respondents left a notice of objections, and contended that the agreement not to oppose was limited to the proceedings before the law officer. 602 Gtething's Patent. Loud Oairxs, L.C, suggested that the agents should be exa- luined viva voce in Court, which was done, and his Lordship then said that the petitioners were right in considering that the re- spondents had agreed to withdraw opjoosition at all stages. The patent must he sealed, and must be dated as if there had been no opposition. The costs must follow the decision, and be paid by the respondents. Johnson's Patent, In re. [A.D. 18*77. L. E., 5 Ch. D. 503; 46 L. J., Cli. 555.] Jurisdiction of the Master of the Bolls — Amendment of Clerical Error. Petition by a patentee, intituled " In the High Court of Justice, Chancery Division," and presented to the Master of the Bolls, praying his Lordship to direct that an engrossed specification, which had been filed on 12th Sept. 1876, and afterwards printed, should be amended by the insertion of certain words which had been inadvertently omitted by the copying clerk in making the engrossment from the original draft. Jessel, M. E.., was of opinion that he had jmisdiction to make an amendment of this kind, where there had been a mistake j;e?' incuriam, and made the order as prayed. Johnson's Patent, In re. [A.D. 1878. L. E., 13 Ch. D. 398, ?i.] Caveat — Delay — Extension of Time, Petition for Grreat Seal, opposed. The application had been delayed by proceedings before the law ofiicer, provisional protection having been obtained on 9th March, 1878, and the petition before the Lord Chancellor being heard on 18th Nov. 1878. Upon the petition being presented doubt was expressed whether, having regard to stat. 16 & 17 Yict. c. 115, s. 6, the Lord Chancellor had jiuisdiction to extend the time beyond seven months, whereupon the petitioner referred to stat. 15 & 16 Yict. c. 83, s. 20. Patent sealed, and time for filing specification enlarged for fourteen days from the date of the order. Earl Cairns, L.C, after observing that there did not appear to have been any unnecessary delay, held that the word caveat in stat. 15 & 16 Yict. c. 83, s. 20, clearly meant anything in the nature of an opposition at any stage, and was not confined to the opposition at the Great Seal, which was the meaning of caveat under the old practice. ( 603 ) Wikth's Patent, In re. [A.D. 1879. L. E.> 12 Ch. D. 303.] Insertion of Disclaiming Clause, Petition for Great Seal for an imported invention opposed by one Gric'ss, tlie patentee of an invention alleged to be similar. It was objected that Wirth, being a foreigner residing abroad, could not receive particulars of an invention from another foreigner, and then obtain letters patent in England for the invention. Also an objection was raised to the form of a jurat. Patent sealed. Earl Cairns, L.C, overruled both objections, and sealed the patent, petitioner undertaking to insert in his specification a disclaimer of any invention covered by the patent of the opponent. Bering's Patent, In re. [A.D. 1879. L. R., 13 Ch. D. 393.] Concurrent Inventors — Eights inter se. Petition for Great Seal opposed by one Riley. It appeared that on 29th A2}ril, 1879, the petitioner and Biki/ both obtained provisional protection for an invention relating to the manufacture of iron and steel. On 25th Jul//, 1879, Rileifs patent was sealed, and Riley now opposed the sealing of Dering^s patent. Patent sealed, no order as to costs. Per Earl Cairns, L.C. — The case before me is not like the case of Ex parte Bates and Redgate {ante, p. 594). There is no exact precedent, so far as I am aware, and so far as I am informed by those who have experience in these matters, for this case. Two applicants apply in perfectly good faith upon the same day for patents for what I may call cognate inventions, made respectively by each applicant without any knowledge of what the other was doing and had done. I will assume now, that to a greater or less extent those inventions are identical. Before the six months are out one of the applicants succeeds in getting his letters patent sealed. Now what is the position of the Crown, and what should the Crown do in such a case ? Prima facie the Crown ought to seal both patents. The contract with each of them, on provisional protection, was that he should have six months' protection. Now, if it is true that they have both acted in good faith, what right have I to confiscate the invention of one because it happens to be identical with the invention of the other? Again, what C04 Dering's Patent. liarm can possibly happen by the seal being affixed to both patents? If one patentee by himself or his licensee uses the invention, how can the other prevent him — what can the other say ? He can only say, You are infringing my patent. The first would reply, I have a patent of the same date ; to which the second would rejoin, My invention was patented before yours. And this statement he can only support by the production of a document bearing the same date as that of his adversary. It seems to me to be clear that neither can restrain or interfere with the other. Why should they not have become joint proprietors of this invention by agree- ment between themselves ? I cannot see any reason why they should not, and if so, why they cannot in effect be made co-pro- prietors by the grant of separate letters patent. It seems to me, on these grounds, that I ought not to refuse to seal Mr. Bering^ s letters patent, and I will extend the time for filing his final speci- fication fourteen days. Somerset and Walker's Patent, In re. [A.D. 1879. L. E., 13 Ch. D. 397.] Enlargement of Time. Petition for Grreat Seal. On 5th March, 1879, petitioners obtained provisional protection for an invention of improvements in mnbrellas. The law officer issued his warrant for sealing. On 2nd Sept. 1879, a caveat was entered by one Spencer. On 4th Sept. 1879, petitioners left their final specification at the Patent Office, under the belief that the letters patent had been already sealed. Prior to the hearing the opposition was withdrawn. Patent sealed, and time for filing specification enlarged to 14 days from the date of the order. The costs had been agreed upon. INDEX. ACTION FOE INFEINGEMENT, Parties, Plaintiffs, agent of patentee cannot obtain injunction or damages, 3. assignee of jiart of a patent may be plaintiff without joining parties interested in the other parts, 181. assigns of executors of patentee, 189. right of as.signeo before registration, 115, 229. licensee made co-plaintiff, 402. one of co-owners, 425, 430. assignee of two moieties, 492. Defendants, numerous infringers, 54, 59, 84, 136, 199, 3V1. foreigner infringing, 102. partners of a licensee, 215. partner of patentee, 240. vendee of licensee wrongly made, 62, 462. who may be made, 54, 59, 60. Interlocutory Injunction, principles wliich guide the Court, per Lord Eldon in Hill v. Thompson, 242. per Lord Cottenham in Bacon v. Jones, 23. per Lord Cottenham in Electric Telegraph Company v. Nott, 183. per Lord Langdale in Bridson v. McAlpine, 87. circirmstances under which it is granted, 22, 320. long exclusive possession, 22, 42, 46, 47, 63, 74, 101, 125, 143, 157,159,176,326,374,413. validity should not be doubtful when patent is new, 124, 158, 159, 219, 400. validity established in Scotland, 176. infringement must be proved, 157, 242, 312, 402. refused, where two patents for same invention, 127. refused, patent being recent, 101, 210, 401. refused, for delay, 83_, 88, 199, 432. refused, where royalties asked for, 320. stopping an established trade, 320, 381. \indertaking if injunction granted, 63. refused, where substantial justice will be done bv directing an accoimt, 269, 320, 380, 381, 402. affidavits on motion, 210, 242, 449, 500. account to be kept, 484. costs of motion, 52, 445. Consolidation — numerous infringers, 84, 199, 371. COG INDEX, ACTION FOE INFEINGEMENT— cowfm??e(?. Pleading, Bill, without express averment of novelty, 14. Defence, insufficiency of specification, 36. variance between title and specification, 368. not guilty, 78, 397. non concessit, 135, 368, 374, 433. notice of objections does not stand in j)lace of pleas, 296. after disclaimer, 116. by partner of patentee, 240. by partner of licensee, 215. bj' vendee of licensee, 62, 462. Particulaes of breaches, 184, 194, 318, 451, 452. where infringing article is an exhibit, 37. Notice and Particulaes of objections, 144, 161, 195, 196, 233, 257, 268, 283, 288, 306, 353. need not give objections to plaintiff's title, 115. if too general, should be amended; if not amended, evidence must be admitted, 268, 323, 353, 450, 451. " generally," 268, 271, 306, 354. " and elsewhere," 271. "among other instances," 367. terms of allowing further notice, 83, 161, 182, 367, 401. order in Baird v. Moule^s Patent Closet Company, 182. not in the place of pleas, 296. DiSCOVEEY AND INSPECTION, grounds on which court orders insiDCction, 373. there may be inspection before declaring, 13. inspection of defendant's machinery, 74, 158, 307, 361, 406. inspection refused where product shows mode of making, 37. inspection of foreign manufactory, 55. inspection of plaintiff's machinery, 134, 158, 406. order for inspection, 429. taking samples, 361, 406. inspection of books, 432, 484. interrogatories, 64, 84, 140, 143, 161, 167, 194, 255, 400, 401, 450, 458. Trial, mode of, right of trial by jury, 84, 449. jury refused, 507. objections to a trial by jury, 360. Evidence on Trial, whether other specifications admissible to construe specification except to show the meaning of words when applied to the subject matter, 5, 8, 10. terms of art explained by extrinsic evidence, 50, 91, 188, 248, 299. evidence to establish the identity of two sjiecifications, 50, 248, 461. comparison of specifications, 69, 101. evidence for the plaintiff, 75, 129, 169, 324, 355. plaintiif must give some evidence of sufficiency and utility, 169, 302, 324. evidence of sufficiency by workmen, 92, 128. specification is evidence, but not conclusive, of what is the in- vention, 30, 140. scientific evidence, 56, 421, 508. opinion of scientific witnesses as to infringement not admissible, 421. /o. INDEX. (307 ACTION FOR INrRINGEMENT-cor.^i«««Z. Evidence on Trial— continued. evidence of infringement, 241, 2G7, 328. evidence of mode of manufacture abroad, 55. evidence of evasion, weight of, 147, 328. evidence must be given by defendant to disprove novelty 14 evidence of secret process with closed doors, 24. reference to expert to inform the court, 24. Questions poe the Judge, construction of specification if no evidence be given, 12, 323 497 whether a judge can, without evidence, pronounce claim too wide, 18, 126, 361. or pronounce two specifications identical without extrinsic evidence, 50, 442, 461. - whether invention is subject matter, 264, 465, 488, 490. the judge is to state what the specification orders to be done, 41. Questions por the Jury, the meaning of terms in the specification, 323, 442. the identity of two specifications may be a question of fact on the evidence for the jury, 248. novelty, 129, 245, 246, 265, 333, 424. how question of novelty left to the jury, 47 333 439 whether invention as specified is the plaintiff's invention, 35. Whether by the directions in the specification the invention can be carried out, 41, 64, 80, 168, 208, 212, 322, 356 488 491 iraudulent concealment by patentee, 75, 308. infringement, 72, 334, 421. ''''42r439 ''^''^'''''' ^-' ^^^' 1^^' 207, 313, 316, 323, 333, 421, Judgment, injunction quia timet, 2, 206. injunction though no interlocutory application, 22 362 mj unction to restrain, after expiry of patent, sale of piratical articles manufactured before expiry, 138. nomjunctionifiiatent expired before hearing, 61, 159 393 431 account or damages, not both, 57, 60, 248 257 ' ' ' ■ account, order for, 189, 493. no account if no injunction, 393, 432. account after expiiy of patent, 198, 393, 432. account of profits made by renewal of old machine, 215 damages, inquiry as to, 160, 371, 372, 430. damages to one of two assignees, 430. • how decree worked out, 317, 371, 372, 416. destruction of infringing articles', 206, 319, 341. committing for breach of injunction, 163, 317. „ afiter disclaimer, 177. Ueetificates, under 5 & 6 Will. 4, c. 83, s. 3 . . . 213, 291, 325, 446. under 3 & 4 Vict. c. 24, s. 2. . . 213. under 15 & 16 Vict. c. 83, s. 43... 59, 81, 160, 216, 251, 262, 319 371 Costs, personal liability of all infringers, 59, 60. liability of directors of a company, 58 60 taxation under 5 & 6 Will. 4, c. 83. . .291 taxation under 15 & 16 Vict. c. S3 . . . 38, 216, 251 '>62 three counsel, 52. , , , - . action discontinued, 38, 144, 216. action compromised, 81. Appeal, stay pending, 1, 371. 608 INDEX. ACTION FOE INFEINGEMENT— co«««u' Wood, V.C., on tbe rule in Seed v. Higgins, as to construction after disclaimer, 147. tbe like in Clarh v. Adie, 123. disclaianer bold to be insufficient to save tbe patent, 457. example of construction of specification after disclaimer, 462, 482. disclaimer by patentee after assignment, 488. DIVISIBILITY, of grant, 85. DUEATION, of term, 260, 408, 416. INDEX. 609 ERROES IN SPECIFICATION, jurisdiction to correct, 585, 602. application to correct refused for delay, 592, ESTOPPEL, of equitable assignee, 373. of patentee assigning, 112, 342, 492. of partners of licensee, 215, of licensee. See Licensee, EXTENSION OP PATENT, Avertisements, rule as to, 525, 535, 546, Petition, must state facts fully without concealment, 56S. must state foreign ixxtents, 571, 572, 580. Accounts, filed too late, hearing adjourned, 574. no order for inspection of, by opponents, 536. unreserved and clear statement of accounts is required, 551, 565, 566, 580. are examined minutely by committee, 526. books of account of patent should be kept from the first, 549, 557. production of books, 544, 546, 573. loss by litigation, 516, 517, 534, 539. cost of patents, 516, 517. cost of macliinery, 516. capitalists profits, 515, 522. manufacturers profits not due to monopoly, 522, 531, 548, 550, 566, 571. manufacturers profits may be due to monopoly, 531, 550, 566, royalties, 525, 566. profits of licensees, 557. profits of foreign patents, 562, 571. profits on exports, 532. allowance for patentees time, 517, 556, 575. travelling expenses, 517, 556, 567. office expenses, 567. Opposition, caveat by agent, 537. notice of objections, 576. by apprentices, 533. by assistant in invention, boo. Death of applicant pending the proceedings, 560. Attorney -General should attend hearing, 511. Second extension not granted, 556. Evidence, petitioner must prove title strictly, 514, 522. account books should be produced, or absence accounted for, 544, 546, 573. Considerations lohich guide the Committee, absence of sufficient remuneration, 513, 516, 518, 520, 526, 528, 544, 582. remuneration which might have been secured, 553, 557. merit of inventor, 513, 518, 526, 527, 550. merit of inventor of new application, 523. merit of importer, 523, 535, 536. merit of assignee, 515, 525, 532, 554, 565, 572, 582. merit of cajjitalist, 528, 610 INDEX. EXTENSION OF l^ATE^T—conUnuecl Considerations which (juide the Committee — continued. company aj^plying, extension refused, 536, 543, 553, 581. company applying, extension granted, 545, 569. validity of patent, no decision on, 516, 522, 527, 529, 539, 555, 563, 565. palpably bad patent not extended, 511, 527, 563, 565. validity wbere there bas been foreign publication, 523, 549. utiUty, 511, 518, 521, 526, 550, 564. utility as merit, 565. public interests manifestly interfered mtb, 543, 563, 564, 565, 581. non-user raises presumption against utility, 521, 530, 532, 547, 553, 559, 561, 577. See also, 348. sucb presumjition may be rebutted, 519, 559, 561. non-user wbere no objection by Crown, 578. slow introduction, 513, 519, 524, 528, 542, 544, 575. prejudice against invention, 517. delay in pushing invention, 553. subsequent improvements no objection, 522, 538. simplicity of invention no objection, 531. slow jirogress of human invention, 523. foreign prior patents, 540. foreign and almost simultaneous patents, 547, 573, 576. foreign subsequent patents, 539, 548, 562. English inventor not prejudiced by taking out patent abroad, 5^70, 580. New Or ant, to those in whom at the time of application subsisting patent is vested, 513, 514. to inventor alone, excluding creditors, 552. on terms of securing benefit to inventor, 514, 521, 531, 544, 572. where terms not imposed, 533. securing benefits to family of inventor, 561. terms made mth previous partners and licensees, 543. condition for use in public service, 534, 578, 579. imconditional, though iised in the public service, 540, 555. condition to give licenses, 558. condition not to raise i^rices, 532. limited to useful parts only, 539, 543, 579. Costs, given so as not to discourage oiDposition, 512, 537, 541, 573. on abandonment of application, 538, 541. where oi")position vexatious, 518. order for a sum to be distributed, 541, 551, 571, 573. Cognate patents extended to the same day, 574. Delay, apiDlication to revoke order on account of, 537. FALSE SUGGESTION. See Title. patent void where representation untrue, 67. the like where new notes were claimed and only one produced, 30. patent void where invention was making sail cloth ivithout starch, which was old, 103. patent void where specification recites the title with an addition, 135. patent void where the invention is incorrectly stated in the title, 299. patent for improvements void whore one is useless, 310. false suggestion where one of two modes described is impracticable, 427. INDEX. 611 FIRST IMPOETEE, if the invention bo new in England, thougli practised beyond tbe sea _ before, a i^atent may bo granted {Edgeherry v. Stephens), 40, 181. it docs not lie upon the first importer "of an invention to prove that its introduction was meritorious {Beard v. Egcrton), 40. obligation in specifying where an invention is in part communicated from abroad, 400. where a description of an invention was found by a widow among the papers of her deceased husband, it cannot be patented. Thi's was the real case, though not so stated in the pleadings (Marsden v. Saville Street Foundry Company), 297, FOREIGN PATENT, expiration of, 163, 260. See Extension. FOEEIONER. See .-l^/e». INFRINGEJklENT, What constitutes an. See also, User. In Walton v. Potter, Tindal, 0. J., directed the jury :— Where a party has obtained a patent for a new invention, or a discovery he has made by his own ingenuity, it is not in tho power of any other person, simply by varying in form or in immaterial circumstances the nature or subject-matter of that discovery, either to obtain a patent for it himself, or to use it without tho leave of the patentee, because that would be in effect and in substance an invasion of the right, 489. In a patent for a combination there is, or may be, an essence or substance of the invention underlying the mere accident of form ; and tho invention may be pirated by a theft in a dis- guised or mutilated form. It will be a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination ( per James, L. J., in Clarh v. Adie), 119. The question of infringement is one of substance {per Jossel, M. E., in Thorn v. Worthing Skating Rinh Co.), 466. Classification of different possible modes of infringement (per Lord Cairns, L. C, in Clarh v. Adie), 121. No infringement by taking a subordinate integer, unless it be clearly claimed, 122. There may be infringement without applying a minute and mathematical test of identity (.4(//e v. Clark), 7. Observations of Fry, J., on infringement by "putting in prac- tice " an invention {Syl-es v. Hoivarth), 452. No infringement of the equity of a patent, 179. The word " colourably " is inappropriate. The question always is whether what is taken is part of the property of the patentee {Dudgeon v. Thomson), 179. Whether or not there is an intention to infrina:e is immaterial 293. There may be an indirect infringement as well as a direct one, though the intention of the party be perfectly innocent, and even though he may not know of the existence of tho patent itself {pier Parke, B.), 237. An infringer is liable for what he does, not for what he intends, 440. The like, per Bramwell, B,, and joer Lord Blackburn, 332, 340. Infringement by the user of the patented article in transitu through England {Belts v. Neilson), 52. Whether user is active or passive is of no consequence, 53. Active user of the capsules in Betis v. AVilson, 54. R R 2 G12 INDEX. TSFET^GE^IB'NT— continued. What constitutes an — continued. Personal liability of directors of a companj' for infringement {Beits V. Dc Vitre), 58. No evidence of infringement ; the plaintiff being unable to show that the capsules in qiiestion had not been made and sold by his own house in Paris [Belts v. Willmott), 61. Infringement by importation and sale of tinfoil made according to patented invention {ElmsUe v. Boursier), 190. The same, in Walton, v. Larater, 493. The same, in Von Heyden v. Neustadt, 486. The same, in Wright v. Hitchcock, 566. The use of two out of three parts of a combination held to be outside the patent, 318. No infringement by selling materials which may be used in making a patented article, 468. "Where no infringement by taking part only of a combination, the part taken not being shown to be new, 499. An exclusive right to vend is given by a patent, whether the patented article is imported or not, 50G. Exposure for sale, no infringement, 303. Infringement by the sale of a product made by a patented pro- cess, 190, 486, 506. There is no infringement of a patent unless a saleable article ia produced {Higgs v. Goodwin), 241. But the thing constructed may infringe without being separately prepared and vendible, as in the case of fitting a ship for the reception and laying of a telegraph cable {Neioall v. Elliot), 332. A man may make a patented article for his own amusement or as a model without infringing, 271. If a man makes things merely by way of hond fide experi- ment, with the view of improving upon an invention the subject of a patent, that is not an invasion of the exclusive rights granted by the patent {per Jessel, M. E. in Frearson v. Loe), 207. Where j)rotection against is enlarged or contracted, In tTupe V. Pratt, xilderson, B., said: — If you have not only dis- covered a principle, but have also invented some mode of carrying that principle into effect, you are entitled to protect 3'ourself from all other modes of carrying the same principle into effect, such modes being treated by the jury as a piracy of your invention, 275. The like, in Househill Co. v. Neilson, 265. The like, in Badische Anilin Fabrih v. Levinstein, 25. "When an object is new, and the means are also new, the Court ■wall scan very narrowly any other contrivances for effecting the same object {Curtis v. Piatt), 146. But where the object is not new, though the means are new, the rights of the public at large will be considered, and the inter- pretation of the invention should be more restricted {Curtis v. Plutt), 147. Observations on rule in Seed v. Tliggins, 147. By taking part of an invention, The infringement of any part of a patented process is actionable, if the part of itself is new and useful, so that it might be the subject matter of a patent, and is used by the infringer to effect the object, or part of the object, proposed by the patentee {per Willes, J., in Patent Bottle Kncelope Co. v. Seymcr), 359. Infringement by pirating part of an invention {Electric Telegraph Co, V. Brett), 187, INDEX. 613 INFEINGEMENT— co^/f//af6r7. By taking part of an invention — contiimed. The like, in Smith v. North Western Railway Co., 431. In Bovill T. Keyivorth, Lord Campbell, C. J., said: — The de- fendants are liable for having used a material part of the pro- cess which was new for the same purpose as that mentioned in the specification, although they did not at the same time use all the parts of the process specified, 81. The like, per Parke, B., 409. In considering the question of infringement, all that is to bo looked at is, whether the defendant has pirated a part of that to which the patent applies ; and if he has used that part for the purpose for which the patentee has adapted his invention, and the jury are of opinion that the difference is merely colourable, it is an infringement {per Pollock, C B., in. Newton V. Grand Junction Jiailway Co.), o34. A patent for a combination may be infringed by taking a part, provided it is a new and material part, of the combination. Also, the part must be new in itself, not merely in its applica- tion {Lister v. Leather), 287. But it must bo applied to an analogous purpose, 289. If the parts taken do not amount to the combination, every part being old, there is no infringement, 215. The facts of each particular case must be regarded, 288. To say that a patent for an entire combination is a valid patent for a part when that jiart would not of itself have been patent- able, is a rediidio ad ahsurdum {per James, L. J., on Lister v. Leather), 357. There may be infringement without following an invention into every minute particular {Adie v. Clark), 7. If an invention consists of something new, and a combination of that vdth what is old, then if an individual takes for his own and uses that whicli is the new part of the patent, that is an infringement of it {per Alderson, B., in Newton Grand JiDidiun Railway Co.), 334. Where a patent is for improvements, and one of them has been pirated, an action may be sustained {Gillett v. Wilby), 213. Where a sj^ecification suggests two alternatives, there may be infringement by taking one of them, 8. Mechanical or chemical eqxdvalents, use of. Where a known equivalent is emj)loyed for producing the patented result with no substantial variation in construction, it is an infringement, 384. In Morgan v. Seward, Alderson, B., directed the jury: — The question simply is, whether the difference consists merely in the substitution of what are called mechanical equivalents for the contrivances resorted to by the patentee. You are to look at the substance and not the mere form, 307. The law will not permit a person to take an article that has been patented, and to give a substitute in place of it, for the pur- pose of effecting the same end, by the use of equivalents, using the skill and knowledge which he may possess to evade the patent {per Martin, B., in Bateman v. Gray), 35. Use of equivalent materials may be a new discovery, 234. No infringement by use of chemical equivalents not known to be such at date of patent, 25. This rule laid down by Alderson , B., Williams, J., Parke, B., and Lord Cranworth, 236, 237, 238. Rule as to mechanical equivalents, per Lord Cranworth, 152. Infringement by use of mechanical equivalents {Murray v. Claijton), 316. 614 INDEX. INFEINGE:NrENT— co«cr Lord Wensley- dale in Seed v. Higgius), 421. In this case the models were before the Court, and the learned judges formed their own opinion as to the infringement, 421. New trial where object of patent not left with sufficient distinct- ness to the jury, 305. In Hnddart v. Grimshatv, the production of a piece of rope, having the essential qualities of that made according to plaintiff's patent, was held to be prima facie evidence of infringement, 267. In I^almer v. Wagstaffe, where the jiatent was for the mode of making a candle with wicks which did not requii-e snuffing, the simple production of a candle was held not to be evidence of infringement, 355. Charge of, sustained in the fvUowing cases : — Where a drum was substituted for an endless ai)ron in a felting machine {Allen v. Rawson), 12. INDEX. C15 mFmNGEME^T-coniinued. Charge of, sustained in the foUowing cases — continued. Where, in i)roclucing a now colour by a new process, the materials employed ^^■ero the same, the result was the same, and tho dift'erenccs in the process of plaintiff and defendant did not, in tho opinion of tho learned judge, amount to a new invention {JJadische Anilin FahriJc v. Levinstein), 25. Where a method of drawing off water from mains, by screwing a standpipe into a valve box and forcing down an indiarubber ball_ valve from its seat, was imitated by having a ball valve on an indiarubber seating and forcing it down with a spindle inside a standpipe {Bateman v. Gray), 35. Where_ a stopper for a soda-water bottle, made of heavy wood, was imitated by a light plug loaded with a movable metal clip [Barrett v. Vernon), 33. Where a rotating upper millstone was substituted for a fixed upper millstone {Bovill y. Key worth), 81. Where, in a furnace for melting glass, air spaces surrounding a tank were imitated by channels for supplying air for combus- tion within the furnace, one side of each channel being the tank {(Janninciton v. Nuttcdl), 105. Where the bending of a stick round a hollow mandril by a gas jet playing inside was imitated by bending round a solid man- dril with a metal strip and a flame outside {Dangerfield y. Jones), 156. TMiere the flaps of envelopes were blown down by jets of air for the purpose of being folded in a machine instead of being creased by separate folding instruments ; and, further, where gum was taken from a reservoir instead of from the surface of an apron (De la line v. Dickenson), 164. Where the patent was for giving signals by electric currents transmitted through metallic circuits, and tho infringement consisted in the use of a circuit, part of which was the earth itself {Electric Telegraph Co. y. Brett), 184. Where a patent for the use of iron retorts worked in combination for the manufacture of sulphate of soda was infringed by the use of two chambers, one of brick and the other of iron (Gamhle v. Kurtz), 209. Wliere a patent for purif jdng gas by artificial hydrated oxide of iron was mfnnged by the use of bog-ochre after it had been re-oxidised {Hills v. Liverpool Oas Co.), 251. Where the combination of mechanism for transferring a half cleaned tuft of wool, and placing it on a comb, was identically the same as that patented {Lister v. Leather), 287. If tho_ metals were originally combined in their greatest purity, the invasion is i^laiu and direct. If they were purified in the course of the process, this, I think, would constitute a colour- able invasion of tho plaintiff's invention («er Lord Lvndhurst, L. C, in 3'ric7itz v. Foster), 313. Where, in adapting a brick-making machine, defendants made a transposition, and instead of moving the clay against the cutting wires they moved the cutting wires against the clay {Murray v. Clayton), 314. Where a telegrai^h cable was coiled around a cone of small verticle angle with a conoidal top, and defendants used a cylindrical core with a hemispherical cover {Newall v. Elliot), 326. Where a patent for soft metal bearings was infringed by rubbing a piece of tin on tho inside of a brass bearing when sufficiently heated to melt the tin and produce a layer of soft metal {Neivton y. Grand Junction Railway Co.), 333. 616 INDEX, TXFEINGEMEXT— coj^i/HwecZ. CJiar(/e of, sustained in the foUoivlng cases — contiuued. Where, in a macliine for giving a moire antique finish to. fabrics, the patentee iisecl a roller with from sixty-two to seventy-four circular grooves per inch, and defendant had a spiral groove on a similar roller with sixty-eight turns to the inch {Ralston V. Smith), 395. Where, in a patented apparatus for stopping a loom automatically when the shuttle remained in the shed, defendant adopted a material portion, viz. a friction-brake {Sellers v. Dickinson), 424. Where defendants imitated a mode of welding separate pieces to form an iron wheel by welding sectors to form the naye {Smith V. London and Noi'th- Western Bailway Co.), 430. Infringement by copying the patented anchor, the only differ- ence being in the mode of welding the parts together {Trotman V. Wood), 470. Charge of, not sustained in the foUoiving cases : — Where a patent for finishing hosiery by pressure between hot boxes was not infringed by the use of heated rollers {Barber v. Grace), 31. Where, the subject not being new, the patentee was confined to the particular method described {Bovill v. Pimm), 78. Where a sub-combination of parts was held not to be protected {ClarhY. Adie),\ri. Where different combinations of like elements are emj^loyed to produce a known result, the case should not be examined in a generic form without regard to the specific differences which exist between the two agents. It cannot be said that there ought not to be separate patents granted for the invention of distinct means to an end {Curtisy. PJatt), 144. See also, 180. Where a patent for the use of carburet of manganese in the manufacture of cast steel was held not to have been infringed bv the use of coal tar and oxide of manganese {Heath v. Unwin), 235. Where the patent was for a reaping machine, and the infringe- ment charged was the making and selling of a cutting blade similar to that used in the patented machine {]\PCormick v. Gra7j), 292. Where the end and object in view is the same, but the means adopted are different, there is no infringement {Saxhy t. Chines), 414, 415. See also, 176. A master of a ship does not infringe bj^ having on board his vessel pumps made in infringement of a patent, unless he uses the pumps. But injunction granted to restrain him from using the pumps in this country {Adair v. Young), 2. JOINT OWNEES, account by, 219, 298. LICENSEE, cannot dispute validity of patent during continuance of licence per Lord Westbury, in Crossley v. Dixon, 141. per Williams, J., in H(dl v. Condcr, 216. ,S'. P., 5, 20, 30, 44, 86, 156, 244, 280, 341, 373, 433, 434. can show the limits of the patent right, 5, 6. consideration for licence failing, 113, 233, 434. eviction by licensor, 117, 156. INDEX. G17 LIC'EXSEE— coH ?//i »ec/. can show fraud, 156, 217, 280, 434. if patent void cannot recover back royalties, 453. partners of, not estoiDped, 215. licence not under seal, 114. unstamped licence, 1 1 5. exclusive licensee has right to sue licensor before registration, 229. rights of vendee of licensee, 462. account of profits not granted against, except profits proved, 43. no account against, unless all parties before Court, 44. M^^STEE AND SERVANT, how far suggestions of a workman become the property of the master, if the invention be made by a servant, the master cannot patent it, oZ, improvements by paid engineer adopted by the patentee, 66. relation of master and servant, in Rex v. ArkwriqU, 17. See also, 303, 588, 589, 597. NOVELTY OF INyENTI(3N. See also, User. In considering whether an invention is new, the proper mode is to take the specification, and see whether the matter claimed as a luJwIe is new. The question of novelty will depend on whether the whole taken together is new {per Alderson, B., in Newton v. Grand Junction Raihvay Co.), 334. The like, ^^er Pollock, C. B., 333. Statement of test for novelty by Lord Hatherley, L. C, in Can- nincjton v. NuttalJ, 106. The notorious public use of an invention before the granting of letters patent, although it may have been discontinued, is sufficient to invalidate the grant {per Lord Lyndhurst, L. C, in Househill Co. v. Neilson), 266. Per Alderson. B.— Public use means a use in public so as to couie to the knowledge of others than the inventor. And, jjer Abmger, C. B.— It means a use and exercise in public, not by the public {Carpenter v. Smith), 111. It need not appear that the invention was used up to the time of taking out the patent {i>er Alderson, B., in Carpenter y. Smith), Legal meaning of first inventor, per Tindal, C. J., 211. Great Seal refused, where the invention had been used in view of the public before application for a patent, 589. If the invention be new and useful to the public, it is immaterial wliether it be the result of profound research or of accidental discovery {per Tindal, C. J., in Crane v. Price), 132. Where patent is for a combination, the novelty need not be dis- tinguished {Harrison v. Anderston Foundry Co.), 222. Lister v. Leather, and Foxwell v. Bostocl; commented on. 223 224. Failure of, in part of an invention, avoids a patent, The consideration is the entirety of the improvement of the thi-ee things, and if there is no novelty in one of the improvements, theconsideration fails in the whole, and the patentee is not entitled to the benefit of that other part of his invention ( per Abbott, C. J., in Brunton v. Hawlces), 98. The same, ^er Dallas, J., in Hill v. Thompson, 244. The like, in Tcmpleton v. Mucfarlane, 454. 618 INDEX. NOVELTY OF mXENTlOls— continued. Failure of, in part of an invention, avoids a patent — continued. In Tliomas v. FoxweU, the patent was upset for want of novelty in the second claim as stated, 461. "Where the si^ccification claims five different matters, and one is bad, the patent fails (jser James, L. J., in Patterson v. Gas Light Co.), 3G4. One improvement failing, the patent was held to be void {Morgan V. Seaward), 309. Hoto affected hy ptrior puhliccdion, If the machine be published in a book, distinctly and clearly described, corresponding with the description in the specifica- tion of the patent, though it has never been actually worked, is not that an answer to the patent ? {per Lord Lyndhurst, L. C, in Ilouschill Co. v. Neilson), 265. Statement of the law (pf?- Tindal, C. J., in Cornish v. Keene), 128. Direction of BuUer, J., to the jury, as to the effect of prior publication of part of the invention in a book {Rex v. Arlc- tvright), 17. If a man has borrowed an invention from some other person, or taken it from a book, or learnt it from a si^ecification, he is not the true and first inventor (Tindal, C. J., to the jury, Gibson v. Brand), 211. If the secret covered by a patent has been previously publicly communicated to the world by a prior specification, there is an end of the patent {per Tindal, 0. J., in Cornish v. Keene), 129. The like, in Iluddart v. Grimshaw, 267. Prior publication in a book avoids a patent. 111. Statement of the law as to publication {per Lord Blackburn), 365. It is not necessary that the public should have used the inven- tion previously published, 366. Prior puhlication, luhat amounts to. No prior description ought to invalidate a patent, unless the patented thing could be made from the descrijation {per Jessel, M. E., in Plimpton v. Malcolmson), 378. The prior knoAvledge of an invention to avoid a patent must be a knowledge equal to that required to be given by a patent {per Lord Westbury, L. C, in Hills v. Evans), 249. Suggestions of invention, not usefully put into practice, will not be enough (per Wood, V. C), 46. The like, per AVilliams, J., 49. A barren general suggestion, not capable of practical operation, will not avoid, for want of novelty, an invention which involves a practical truth productive of beneficial results {per Lord Westbury, L. C, in Betts v. Menzies), 51. The like, per Lord Wensleydale, 51. Prior specifications may be sufficient, 55, 101, 366. In order to anticipate a patent the anterior description should enable those who work under it, and are of competent mechanical skill, to arrive at the same result as if they followed the process contained in the subsequent patent {Betts V. Neilson), 56. Where invention is described in a book published in England it is enough, 265. Observations on prior publication, pjcr Tindal, C. J , in Stead v. WiUiums, 438. The like, per Parko, B., in Stead v. Anderson, 440. The like, per Jessel, M. E., in Plimpton v. Malcolmson, 377. The like, per Jessel, M. E., in Otto v. Linford, 349. INDEX. 619 NOVELTY OF INVENTION— coner Lord Campbell, O.J. — If a man makes a discovery, and uses it without taking out a patent, he need not suspend the use because another person subsequently makes the same discovery, and takes out a patent for it {Heath V. Smith), 239. C20 INDEX. XOYELTY OF IX^^EXTION— coh^^-^ I do not see why time is allowed to the inventor to prepare his specification, unless it be to enable him to matm-e the mechamcal parts of his invention [per Lord Tenterden, 0. J.) The patentee must put the pubUc in possession of the invention so as to enable them to derive the same benefit which ho him- seil does [per Buller, J., in Turner v. Winter), 471. The like, x>er Gibbs, C. J., 75. The like, per PoUock, C. B., in Tetleij y. Easton, 456. ihe like, per Cresswell, J., in Walton v. Bateman, 491. ihis rule may bo modified as regards the foreign inventor where an invention is imported [Plimpton v. Malcolmson), 379 But a foreign inve" tor is bound to describe his invention so that the public m England may understand it [Wegjnann v. Corcoran), Should distinguish hetiueen the old and new, A patentee should state what his invention is, what he claims to be new, and what he admits to be old [per Lord Abinffer C B m Carpenter v. Smith), 110. & > ^- -d., If a specification includes what is old as well as what is new the patentee must be taken to claim all, unless he makes it clearly ai^pear that he does not claim that which is old Ihose parts which are notoriously old need not be disclaimed [per Coleridge, J., m Tetley v. Easton), 458. The like, ^xr Wightman, J., 458. Patent upset for a breach of the above rule [Holmes v. London and North-Western Railway Co.), 2m. Patent upset, the invention being for an improvement on an old lace machine, and the claim being for the whole machine [JjoinU V. Moore), To. The like, j^cr Park, J., 76. Patent upset for a breach of the above rule [Macfarlane v. Price), ^"SLwfo ^""'^ """^ distinguishing the novelty (Saunders v. See also, MacMcan v. Rennie, 295. Patent upset for not distinguishing what acids and alkalis were claimed, and for not distinguishing those which would answer the purpose of the invention [Stevens v. Keating) 445 bee also, Tetley v. Easton, per Lord Campbell, 457.' mere an improvement is introduced into a well-known machine tne nature o± the improvement must be cUstiuguished. Thus li a compensation pendulum were now for the first time invented, it would not do to patent "improvements in clocks " and specify the whole machinery of a clock [per James, V -C m ParJces v. Stevens), 356. ' The specification of a new combination or arrangement of machmery shoiild assign the differentia thereof [per Lord Westbury, L. C, m Foxwell v. Bostock), 204. Or contain within itself the means of distinguishing the improve- ment [Ilarmar y. Playne), 220. ^mpiove Observations of Lord Westbury on this case, 203 ihe doctrines supposed to bo laid down in Foxwell y. Bostoch and Ff::drij'ct)fn2-T'^'''''^ °" ^"""'"'^"^ '' ^"'^^-^-^ 624 INDEX, SPECIFICATION— coH^iw^ffZ. SJioiiId distinguish between the old and neiv — continued. The same cases commented on, j^^f James, V.C., 356, 357. But wliere a combination has never been made before, that alone may be a novel invention, and it may not be necessary to distinguish, 223. Where the principal part of a machine has been published, a patent for an improvement should distinguish the same, 390. Errors, effect and correction of, A mistake may be corrected by reference to the specification itself {per Pollock, C.B., in Tetley v. Easton), 456. The omission of a material statement cannot be corrected by reference to the provisional specification {MacTxelcan v. Rennie), 295. Introduction of French "svords into specifications drawn by foreigners. Patents supported {BJoxam v. Elsee ; Derosne y. Fairie), 66, 168. If the si^ecification of Muntz's patent is not only difficult to understand, but is actually false and incorrect in the statement of proiDortions of zinc and copper, there is an end at once to the patent (per Tindal, C. J., in Muntz v. Foster), 314. Patent objected to, on che ground that the direction to take " dry arsenic acid " was insufficient ; but Lord "Westbury, L.C., over- ruled the objection {Simpson v. HolUday), 427. How far the judge can correct the specification, 255. Where the merit is verj' small, the rule as to correction may not apply, 255. Errors which are only discoverable by exj^eriment and further inquiry are fatal to a patent [per Lord Westbury in Simpson V. Hoiliday), 427. Where two modes are described and one is bad, a workman cannot be called on to select the right method, 429. A workman cannot be called on to correct an error unless there is something by which to correct it, 90, 255, 480. Errors which a workman could correct will not vitiate a patent {OttoY. Lin ford), 347. The like, in Morgan v. Seaiuard, 308. A workman must not be called upon to exercise invention in acting under the sjDecification, 308. Statement of proportions or materials. Wood, y.-C, held that a certain latitude in stating the propor- tions of the compound metal was permissible [Patent Type Founding Co.\. Richard), 361. Patent supported on the ground that the proportions of lead and tin in the patented metal were sufficiently described by assigning the relative thicknesses of the plates of lead and tin before rolling. Such proportions are given rather as illustra- tions of the mode of user of the process than as definite ter- mini which cannot be deviated from {Betts v. Neilson), 57. Patent supported, although the proportions in which air and gas were admitted into the cylinder were not stated {Otto v. Lin- ford), 347. Specification referring "to other combustible matter," sup- ported, 64. Objection to sufficiency for referring to "other substances" overriiled, 137. " Other suitable material" held to include^ wood as appHed to pavement, 296. Objections to sufficiency of statement of quantities overruled, 92. INDEX. 625 SPECIFICATION— cor<^/«w«?. _ Drawings may aid the description, An inventor of a machine is allowed to call in aid 'the di'awings which he annexes to the specification (per Abbott, C. J., in Bloxam v. El see), 66. It is onh' necessary that the nature of the improvement shouhl be understood. Watfs patent for a steam-engine held good without a drawing, 72. Extent to which a drawing in a specification may aid the description, 124. See also, 347, 584. Where a ckawing of a patented lamp did not show how the air was to enter the burner, the specification was held to be bad, 255. To whom addressed, A specification is addressed to persons having skill in the subject- matter thereof {Arkwright v. Nightingale), 15 To whom it should be intelligible (_^9er Jessel, M. E., in Plimpton V. Malcohnson), 378. It must define the invention so that an ordinary and skilful workman may carry it out (per Alderson, B., in Wallington v. Dale), 487. The same, per Maule, J., in Beard v. Egerton, 41. If a mechanical invention, it is addressed to engineers, and you must not set them a problem to solve {Morgany. Seaward), 308. Statement of the law as to the class of persons to whom a specification is addi-essed {per Parke, B., in Neilson v. Harford), 322. The like in Otto v. Linford, 348. Function of claiming clauses, The claim is not intended to aid the description, but is intro- duced for the security of the patentee, that he may not be supposed to claim more than he can suj^port as an invention {per Lord Cottenham, L.C., in Kay v. Marshall), 276. A specification may be good without a claim, and those matters which manifestly form no part of the invention need not be disclaimed {per WilUams, J., in Lister v. Leather), 288. The claim must not go beyond the invention {Minter v. Mower), 304. A claim must be construed with reference to the whole context of a specification {per James, L.J., in Plimptoii v. Bpiller), 385. A subordinate integral part of an invention will not be protected unless distinctly claimed {Clark v. Adie), 122. All that is not claimed is disclaimed, 223. Extent of claim is a question of law where the facts are not dis- puted, 78. Where a claim for part of a process of purifying gas is so wide in its terms as to amount to the enunciation of a kno"\vTi chemical truth, it cannot be supported {Patterson v. Gas Light Company), 364. A claim to every mode of carrying a principle into effect is the same thing as a claim to the principle itself {per Alderson, B., in Neilson v. Harford), 323. If a man describes twelve new inventions in a specification and claims only one of them, he gives to the public the remaining eleven {Hinks v. Safety Lighting Company), 254. Instance where a subsidiary claim may be disregarded {Plimpton V. SjJiller), 383. An appendant claim which is merelj' useless will not vitiate a patent {British Dynamite Company v. Krehs), 94. G. S S 626 INDEX. yPECIFICATIOX— coHf//< tied. Function uf claiming clauses — coutinued. Yery little Bierit will suffice to support a claim to a subi^idiary l^art of a great invention {per Jessel, M.E., in United Tele- pJione Conqxiny v. Harrison), 481. It is not the duty of a judge to construe a patent so as to make it claim that wliicli it is utterly absiird to suppose -would be claimed [Plimpton v. HpiUer), 384. Whether claims of specification can be construed before evidence adduced, 19. Claim to a particular user of the patented material does not vitiate a patent {Betts v. Neilson), 57. Construction, rules of, The language of a specification is to be construed according to its ordinary meaning {jjer Lord Chelmsford in Harrison v. Anderston Foundry Co.), 224. The construction of the specification belongs to the Court alone, whose duty it is to construe all such instruments, as soon as the true meaning of the words in which thej' are couched, and the surrounding circumstances, if any, have been ascertained as facts by the jury {per Parke, B., in NeiJson v. Harford), 323. The like, j:»er Lord Westbury, L. C, in Hills v. Evans, 248. The like, j^cr Abbott, C. J., in Hex v. Wheeler, 497. The construction of the siiecification is for the Court, to be de- termined like the construction of any other written instrument. When the nature of the invention is ascertained by the Court as a matter of construction, the Court has to inquire whether the manner in which the same is to be performed is sufficiently described in the specification to the comprehension of any work- man of oi'dinary skill in the particular art or manufacture, and this the Court can best do by the evidence of workmen of that description {per Earl Cairns, L. C, in British Dynamite Co. x.Krebs), 91. A like rule, pwr Lord Blackburn in Adie v. Clark, 9. It is the duty of the Court to construe a specification fartly and truly, neither favouiing the one side nor the other ( 2:)cr Lord Blackburn in Dudgeon v. Thomson), 180. There is no rule of law which requii'es the Coiu't to make any forced construction of a specification, but it is to be construed consistently with the fair import of the language used {picr Tindal, C. J., in Heiworth v. Hardcastle), 232. Direction of Pollock, C. B., to the same effect {Stevens v. Keating), 444. It should not be scanned as if it wei'e a plea specially demui'red to {Newton v. Gravid Junction Eaihvay Co.), 334. The Court is bound to read the specification so as to support the patent if it can be fairly done {j^ier Parke, B., in Russell v. Coivley), 407. The rule in construing being : — "tti res rnagis valeat quam pereaV — as first laid down by Eyre, C. J., in Boidton and Watty. Bidl, 74. Adopted by Pollock, C. B., in Thomas v. Foxwell, 462. Where any expressions are ambiguous, we should endeavoiu- to give effect to the intention ; and, moreover, every patent .should be expounded favourably to the patentee {j^er Pollock, C. B., in Falmer v. Wugstaffe), 354, Rule of construction, ^jtr James, L. J., in Adie v. Clark, 5. Where a thing is notoriously old the Court will, if possible, avoid imi:)uting to a patentee that he has claimed it, 6. And will not bo astute to find flaws in small matters, with a view to overturninc a patent (^)fr Jessel, M. P., in Plimpton y. Spiller), 383. INDEX. Q27 Constriidlon, rides o/" -continued. ButTs-iUnot alter the construction, in order to save a patent yheretixe patentee has himself explained his meaning ^in the clannmg- clauses {per Lord Hatherley in Adie v. MaI The like, per Lord Blackburn, 8. C, 10. '' tSirt'^a "^ '^•''^"""^^^^'y ^^id^nce in construing a specifica- Instance where question of novelty might have been decided on comparison of specifications {Bush y. Fox) 101 "^"^^^ °^ A subordmate claim to something included in tho description of uovelty!^^ '''''''°* ^' "^'^''''^ ^"^ '^^^^^*' ^ P^^'^t ^'^^^ ^'^^^t «i' A futile claim of this kind may be disregarded, 388. Construction of claim, 180, 210 ^^viSl,*"lJr^ °^ ^^"^ subject-matter of a patent stiU in force is But a claim to improvements thereon may be good 133 Instance where claim is too wide, 70 The claim and title are to be read together, 335 Uaim construed with reference to the title 35'' Conditions under which a claim for a new combination of old parts may be supported (ffarnson v. Anderston Foundry Co ) 2^3 Wheie a .specification claims five different matters, and one cla m IS bad, the patent fails {Patterson v. GccsHght CoA 364 Xt%%XimSf :r ^'''''' '' '^'^'''^ ^^'y '^ '^^ Construction of claim, 305. Construction, benevolent mode of, A specification should be construed fairly, with a judicial anxietv to suppor a really useful invention, if 'it can b"e supported on a reasonable construction of the patent {per Jessel M E i? Hujcs y. Safety Lighting Co.), 2ol ^^ ' ^- ^^ '"^ J^e like m Plimpton v. Spiller, 383. Where there is a genuine, great, and important invention the but^ i? no^S-b P ' ^' '''^%'' ^^i '''''''' ^^ '^' specffication! but, If possible, consistently with the ordinary rules of con- struction to put such a construction on the patent as wUl ThTSr* '* ^r ^T'b ^- ^■' "^ ^^^« ^- Linfordf, 345! ^^^ ihe like, 2}er Lord Tenterden, 269. The hke, per Parke, B., and Alderson, B., 407 bear fts^'S-li' ^^^^^^^^stly used in a popular sense, it is not to bi^JiJe V. ctL?)! ^.''^ '' '^'^'"^= ^^''' ^""'^ ^^^'^^' ^- ^•. In Oxieyy ffolden, Erie, C. J., held that the " metal fittings " were not claimed, as they were notoriously old, 352 ^ (nerTairi'""^ '^v'V^ ^"^?.^ objections than in fo'rmer years UJer i aike, B., m Netlson v. Harford), 321 ^^VS^:^^^:Vt^' ^' to support the patent (AV//- ^S^sJ^^^f^^f^t:^' ''-'' ' -^'^^^-^^^ mrt nf.'^'^f ^'^y !-'®'^ *° ''^'1^1^°^'* ^ ^I'^i^ ^0 a subsidiary part of a great invention, 481. ^ Sufficiency of, u-here a question for the jury frlir" r''''' Yi.^^ J'^^'J' ^^^ther the plaintiff has given such pe eS tX t ^.V^^-^-^T r ^^r^. ^"^^^« ^ workman o? com - s s 2 628 INDEX. SPECIFICATION— co?i«u! »ef7. Sicfficienci/ of, luhere a question for the Jury — continued. The jixdge is to state wliat tlie si^ecification orders to be done, and the jury are to say whether it -would produce the result {per Cresswoll, J., in Beard v. Egerton), 41. Eule as to admission of evidence in construing a specification {per Lord Westbuiy), 218. Provisional Specification. Is for the protection of the inventor, 447. Is not intended to contain a complete description of the inven- tion, 447. Any of its details may be abandoned, 447, 464. An imperfect verbal sketch in a prior provisional specification held not to avoid a patent {Stonor v. Tocld), 447. Is not published until issued by the Patent Office, 352, 447. Statement of the law as to relation between complete and pro- visional specification {per Lord Blackbui'n), 29. Relation of complete to pro^'isional specification, 328. The like in Penn v. Bibly, 3G9. Eule as to correspondence of comj^lete and professional specifica- tions, 201. Variance between deposit paper and specification, 246. Patent void where the nature of the invention is not stated sufficiently, 476. SUEJECT-MATTEE OF A PATENT. By stat. 21 Jac. I. cap. 3, sect. 6, all monopolies were rendered void except ' ' letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within tliis realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use, so as also they be not contrary to the law, nor mischievous to the State, by raising jjrices of commodities at home, or hurt of trade, or generally inconve- nient : the said fourteen years to be accounted from the date of the first letters jjatents or grant of such privilege hereafter to be made." Matter both of actual discovery and of useful discovery is the onlv proper subject for the protection of a patent {per Lord Ekion, L. C, in HiU v. Thompson), 243. A thing of no value cannot be patented, but the invention must be a new and useful improvement in manufactui'e {per Wood, V.-C, in Dangerfiehl v. Jones), 157. The word ' manufacture' commented on by Eyre, C. J., 72. The like by Pollock, C. B., 139. See also, 309. The like by Lord Westbury, L. C, in Rahton v. Smith, 399. The like by Abbott, C. J., in Rex v. Wheeler, 498. I have no doiibt in saying that this is a patent for a manufacture, which I understand to be something made by the hands of man {per Lord Kenyon, C. J. [referring to Watt's jDatent, A.D. 1769, No. 913], in Hornhloiver v. BouUon), 263. Examples of good subject-matter {per Lord Cranworth), 62. The Hke, per Tindal, 0. J., 130. There may be a patent for an imiDrovement on an existing patent, 286, 584. An improvement, without invention, held net to be the subject of a patent, 500. An addition to an existing machine is patentable, 311. Invention supported in respect of subject-matter, 490, INDEX. 629 SUBJECT-IMATTER OF A FATEm-continucd. If the means essential for a novel application of an old thin"- be new, the patent may be supported {Fow v. Taunton), 392." Penns patent for hard-wood bearings for propeller shafts- supported, notwithstanding an objection that it was merely a new ajiplication of an old thing, 370. A new and useful application of known principles is good subiect- matter, 157. o j Patent for particular application of heat to bending walking- sticks— supported, although it was known that heat could be applied to bending wood, 157. Example of good subject-matter, 217. The like of new soft metal lining for bearings of axles, 336. A new 2)roc€Ss is good suhject-matter, There may be a valid patent for a new method of applvino- materials {per Lord Eldon, L. C, in Hill y. Thompson) 2i3 ° A new process may be the subject of a patent {Gibson v. Brand), The word "manufacture" comprehends a new process or an improvement of an old process {per Lord Westbury, in 'lialston V. bmith), 399, New processes in any art producing effects useful to the public Bum ^^ ^^^^^^^ ^^ manufactures (^^^er Eyre, 0. J., in Boulton v. Observation by Pollock, C. B., to the same effect (Crosshi/ y FoUer), 139. \ j ^ The Hke, per Campbell, C. J., 47. The production of a known substance from known materials by acting ujoon them in a cheaper or more expecHtious manner is good subject-matter {per Abbott, C. J., in Bex y. Wheeler) 498 Patent for a process of manufacturing gelatine-supported ( Wullmyton y. Dale), 487. Patent supported, as a patent for a process and not for a product (see observations ^jer KeUy, C. B., in Wright y. Hitchcock), 505. An invention for dispensing with one part of a double process may be patented (jjer Cockburn, C. J., in Booth y. Kennard), 69. JSTeiu combination of old things is good subject-matter, There may be a valid patent for a new combination of materials previously m use for the same purpose {per Lord Eldon L C m Hill y. Thompson), 243. ' " ^ A ?^ combination of old parts is the subject of a patent {per Abbott, C. J., m Brunton v. Hawhes), 98. The like, ^jer Lord Ellenborough, 267. The like, per Lord Campbell, C. J., in Lister v. Leather, 285. All the parts may be old, 2S6. The like, per Gibbs, C. J., in Bovill y. Moore, 75. A new addition to an existing machine is the subject of a patent but the patent should be for the addition only (Bovill y Moore), 76. .; \ v Any part of an improved machine which has been previously published should be distinguished {Fotter v. Farr) 390 Patent supported as being for a combination, in which case it is immaterial whether any or which of the parts are new. Here an objection that the specification did not distinguish between the new and old parts of the machine was not sustained {Harrison v. Anderston Foundry Co.), 221. If the result produced by a combination of known thino-s is either a new article, or a better article, or a cheaper article to the public, than that produced before by the old method such combination may well become the subject of a patent (»er imdal, L. J., m Crane y. Frice), 132. 630 INDEX. SUBJECT-MATTEE OF A PATENT— co«^«n(ec7. i'uzy combination of old things is good suhjed-maifer — continued. The reason for the decision in Crane y. Price, discussed jver Jessel, M. E., in Otto y. Linjord), 346. The ^vord " combination " is not properly ajiplied in Crane y. Price, but no judge has ever questioned the principle laid down by Tindal, C. J., in deciding that case, vi^;. : " That ii the result produced by a combination is either a new article, or a better article, or a cheaper article to the public, than that produced before bj' the old method, such combination is an invention or manufacture intended by the statute" (/;er James, L. J., in Murray v. Clayton), 316. An invention of a method of and apparatus for welding tubes without the use of a mandril, supported, 407. Distinct improvements for distinct piu'i^oses are not to be classed together as parts of a combination {Clark v. Adie), 120. In point of law there may be a valid patent for a combination which includes part of an invention already protected by a patent {per Tindal, 0. J., in Crane v. Price), 133. The same, per Lord Campbell, in Lister v. Leather, 286. A combination of known things which is attended with results of such utility and advantage to the public as to be rightly denominated " a substantial improvement " is the subject of a patent {per Lord Wostbui-y, L. C., in Spencer \. Jack), 436. A patent for substituting a fiat wick for a round -wdck in a lamp, supi^orted, on the ground of greatly imj^roved utility : a slight alteration making that useful which before was practically useless {HinJcs v. Safety Lighting Co.), 255. Where unknown qualities possessed by a natural earth or stone have from the result of experiments been applied to useful purposes of life, such application is a proper ground for a patent {per Tindal, C. J., in Muntz v. Foster), 314. "Where a new combination is arrived at by j^utting two old in- ventions side by side -without anything further, the patent cannot be supported {Saxhy v. Gloucester Waggon Co.), 418. Discovery, matter of, when accidental, may yet he patented, AATiether the manufactui'e be produced by accident or by art, is immaterial {per Buller, J., in Boidton v. Bcdl), 72. If the invention be new and useful to the public, it is not material whether it be the result of long exi^eriments and profound research, or whether of some luckj'- thought or of mere accidental discovery (2:»er Tindal, C. J., in Crane v. Price), 132. Principle, a mere, not good suhject-matter. Undoubtedly there can be no patent for a mere principle (^jer Eyre, C. J., in Boidton v. Ball), 73. But for a principle embodied mth corporeal substances so as to produce effects in any art, trade, or manual occupation there may be a patent, 73. An idea, the mode of carrying out which is shown, may be good subject-matter, 187. There may be a patent for a principle coupled with the mode of carrying the principle into eft'ect, provided both the principle and the mode of carrying it into effect have been discovered by the inventor {pjer Alderson, B., in Jiq)e v. Pratt), 275. The like, ^^er Alderson, B., in Neilson v. Harford, 323. If you have a new principle, or a new idea, as regards any art or manufacture, and then show a mode of carrpng that into practice, you may patent that, though you could not patent the idea alone, and very likely could not patent the machine abme {per Jessol, M. E., in (Jtto y. Linford), 346. lx\DEX. 631 SUBJECT-MATTEE OF A VATE^T—coniinued. Principle, a mere, not fjood sithjcct-iaatier — continued. Patent for an apparatus to bo used in melting glass, consisting of — (1), a tank ; (2), a fire jilaccd laterally to the tank ; (3), the forming of a channel round the tank for the free circulation of atmospheric air — supported [Canningion v. NuttaJl), 107. Thus, the refrigerating effect of air upon the sides of a tank for holding melted glass, is a thing for which, p^r se, no patent could be claimed; but an aj^paratus so constructed as to bring into operation the cooling property of atmospheric air, and to produce a useful effect, is the subject-matter of a patent (/*er Lord Westbui-y), 107. See, also, Infringement, p. 612. New use of an old thing, not the subject of a patent, Patent for a machine employed for finishing woollen yarns held to be void, because a Uke machine had been previously applied to finishing yarns of linen and cotton [Brook y. Aston), 91. It may well be that a patent may be valid for the application of an old invention to a new purpose ; but to make it valid, there must be some novelty in the application. In all cases in which a patent has been supported, there has been some discoverj', some invention. It has not been merely the application of old machinery, in the old manner, to an analogous substance. That cannot be the subject of a patent [per Lord Campbell. 0. J., in Brook v. Aston), 95. See also, 358. The like, ^ler Willes, J., and Bramwell, B., 96. See observations on Lord Campbell's rule {per Lord Chelmsford), 370. Observations of Lord Westbury, L. C, in Harwood v. Great Northern R. Co., 228. A cheaper way of using known materials cannot be patented, 264. The like of the substitution of one material for another, 274. An application of a known chemical fact for puiif jing gas by a new process, supported, 247. Novelty in the combination of parts will do, where the result is new, 98. Patent for a new use of a caisson for working under water, not sujiported {Bush v. Fox), 99. Patent for a new use of iron wheels on railways, not supported {Losh V. Hague), 289. It would be a very extraordinary thing to say that because all mankind have been accustomed to eat soup with a spoon, a man could take out a patent because he says you might eat peas with a spoon {^yer Lord Abinger, C. B., in Losh v. Hague), 291. Patent for casting a boiler in one piece, not supported {Ormson v. Clarke), 342. Patent for a new use of channelled iron in fishing or jointing rails for railways, not supjjorted {Hariuood v. Great Northern Railway Co.), 227. Patent for a more beneficial adjustment of the distance of certain working parts in a known machine is not the subject of a patent {Kay v. Marshall), 276. Statement of the law in this case {per Tindal, 0. J., and Lord Cottenham, L. C), 277, 278. Patent for the application of a timber coating to an ii'on frame in ships, not sui^ported {Jordan v. Moore), 272. A spherical sliding door to a spherical glass lam]^, not the subject of a patent {Parkes v. Stevens), 358. 632 INDEX. SUBJECT-MATTEE OP A PATENT— co«iMn(efZ. A^eiu use of an old thivg, oiot the suhject of a ^latent — continued. Patent for a new use of double beat valves in organs, not sup- l^orted, 501. Patent for applying a hot air blast to tbe smelting of iron by anthracite coal, suj^ported, as a new combination {Crane v. Price), 131. Tbo application of a well-known tool to work previously untried materials, or to jiroduce new forms, is not the subject of a patent {Patent Bottle Envelope Co. v. Beyiner), 359. Altliougb a patentee may have discovered bow to use a known machine more beneficiallj' than the owner knew, he cannot take a grant which virtually prohibits the owner from an existing right over his own property {per Erie, C. J., in Ralston V. Smith), 397. Judgment of Cresswell, J., to the same eifect {Tetley v. Easton), 459. Every useful discovery is not the subject of a patent. The dis- covery must be shown to come within a fair extension of the meaning of the words, " a new manufacture," 399. A more beneficial use of existing purifiers in the manufacture of gas is not patentable, 365. The use of a new material to jn-oduce a known article is not the subject of a patent {Eushton v. Craivley), 405. The mere ajiplication of a j^articular thing to a particular purpose will not do, 154. No i:)atent for a new use of a known material, 155. Compare Machelcan v. Rennie, 295. The substitution of steel wire for whalebone is not patentable, 465. Patent supported for subject-matter, 280. Subject-matter, distinct means to the same end, Although one man has obtained a patent for a given object, there are many modes still open for other men of ingenuity to obtain a patent for the same object; there may be many roads leading to one place, and if a man has by dint of his own genius and discovery, after a patent has been obtained, been able to give to the public without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose {per Tindal, C. J.), 489. Example, of distinct means to effect the same object, 150. Where an invention is nothing more than a particular means to attain to a given result, which is well known, then the inven- tion is for the means ; and you cannot say that the invention of one set of means interferes with the invention of another, any more than you could say originally that there ought not to be patents granted for the invention of distinct means to an end. The discovery of a particular road to attain a particular end, does not at all interfere with the discovery of another road to attain that end {pitr Lord Westbury, L.C.), 150. The like, in Dudgeon v. Thompson, 176. tttpeat of legal proceedings, 20, 117, 218, 404, 503. TIME, computation of, 409, 494, 500, INDEX. 633 TITLE, Objections to, The mere vagueness of tlie title is no ground for avoiding a patent after it has been granted. If the title does not agree with the specification, or any fraud has been practised on the Crown, the patent might undoubtedly be held to be void {per Tindal, C. J., in Cook v. Pearce), 126. In this case an objection was taken to the title as being " im- provements in carriages," when the invention applied only to improvements in one class of carriages, but the patent was supported {Cook v. Pearce), 126. Here the patent was for ' ' improvements in copper-plate print- ing," and the invention related to the preparation of the paper for printing, but the patent was supported by Lord Lynd- hurst, L. C. {Sturtz v. De la Rue), 448. Patent for the application of the hot blast in the smelting of iron, the title being for an " improved application of air." Patent supported, although the title was ambiguous {Neilson v. Har- ford), 321. Patent upset where the title was too large {Gochraney. Smethurst), 124. Patent upset where the title incorrectly described the invention {Bainbridge v. Wigley), 30. Patent upset for false suggestion, the title stating that the machine could do more than it could do {Bloxam v. Elsee), 65. Patent supported, the title being for "a newo?- improved method, &c." {Beard v. Egerton), 39. Patent supported, the patent being for ' ' improvements in ex- tracting sugar, &c.," and one improvement only being specified {per Lord Abinger, C. B.). Every part of the process may be treated as an improvement, foiming together a series {Derosne V. Fairie), 169. Patent supported, the objection being that the title was for "improvements in the manufacture, &c.," and that only one improvement was shown {Nickels v. Haslam), 336. Patent supported, notwithstanding a technical objection to the title {Electric Telegraph Co. v. Brett), 184. Technical objection overruled {Fishery. Bewick), 195. Title suSicient (after disclaimer) {Hills v. London Gas Co.), 244. Title sufficient (after disclaimer) {Regina v. Mill), 299. Patent supported, by construing the claim with reference to the title {Oxleyy. Holden), 350. Patent void where the specification recites the title incorrectly, and enlarges the scope of the invention {Croll v. Edge), 134.* Patent void where the title is too large {Felton v. Oreaves), 193. Patent void for misdescription in the title {Rex v. Metcalf), 299. See observations on this case per Lord Abinger, C.B., in Neilson v. Harford, 322. Patent void for false suggestion in the title {Morgan v. Seaward), 307. Patent void where the title is for one thing and the specification for another {Rex v. Wheehr), 497. TRADE, secret, 24. USEE. See Infringement. by vendee of licensee, 62, 462. Examples of, per Maule, J., 259. There can be no user without possession of, or control over, the patented thing {Nobel's Explosives Co. v. Jones), 339. G. T T 634 INDEX. USER — continued. User by offering patented articles for sale {Oxley y. Eolden), 351. Prior public iiser in a British Colony does not invalidate a patent, 404. Accidental user without knowledge or intention is unimportant, 227. Observations of Tindal, C. J., on a similar point, 314. Scotch patent avoided by prior public user in England, 96. User, by order for manufacture of the patented material, which order was executed in England, 212. Prior public user avoids a patent, whether continued or not, 266. UTILITY OF INVENTION, In Manton v. Parker, it was shown by experiments made in Court that the utility of the invention wholly failed, and plaintiff was nonsuited, 297. Failure of utility in part of an invention {Morgan v. Seaward), 310. In Leiuis v. Marling, a brush for raising the surface of cloth about to be shorn was claimed in the specification, but turned out to be useless; nevertheless the patent was sustained, 281. This case commented on by Parke, B., 310. In point of law, it is necessary that the plaintiff should prove that this is a new and useful invention, in order to entitle himself to the present action [for infringement of a patent] [per Gibbs, C. J.), 75. If an invention be of any use to the public, that is sufficient to support a patent {per Alderson, B.), 308. In Haiuorth v. Hardcastle, the jury found that the invention was useful upon the whole, but that in some cases it was not useful ; whereupon the Court inferred that the invention was useful in the generality of cases, and supported the patent, 232. Utility miist be proved generally, 128. The plaintiff in an action for infringement must show that his in- vention is useful, 302. As to utility, very little will do (per Jessel, M. E.), 348, 349. Not affected by subsequent user of improved machine in place of that patented, 75, 522. The like {j^er Jessel, M. E., in Otto v. Linford), 348. WOEDS, "boxes," 32. " new or improved," 39. " public use and exercise," 100, HI, 309. " improvements," 169, 309. " colour ably," 179. " soft or organzine," 188. " combination of machinery," 203. " hydrated or precipitated," 247, 250. " benevolent," 254, 345. See Specification. " effect," 324. " dry," 427. " manufacture," 72, 139, 263, 309, 399, 498. " prosecution with effect," 408, 520. FEINTED BY C. F. EOWORTH, BEEAM'S BUILDINGS, CHANCEEY LANE, E.C. UC SOUTHERN REGIONAL LIBRARY FACILITY AA 000 831 022 9