Cornell University Library The original of this book is in the Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924022174738 KD 1384!a4Ih63'™""^ """'' * te!M,a',.,f.1S,.r.eBorfed cases relatin. if 3 1924 022 174 738 ,.. A DIGEST OF THE REPOETED CASES KELATIKG TO THE LAW AND PEACTICE Mttttn §ixtmt p\ ^mmtwm DECIDED TEOI THE PASSING OP THE STATUTE OE MONOPOLIES TO THE PKESENT TIME. BY . CLEMENT HIGGINS, M.A., F.C.S., OF THE INNER TEMPLE, ESQUIRE, BARRISTER- AT -LAW. LONDON: BUTTERWORTHS, 7, FLEET STREET, ILain Hutilisfietg to tlje ®tum's most eicellent iKIajeetg, MEKEDITH & KAY, MANCHESTER. T. & T. CLARK, EDINBUEGH. SMITH & SON, GLASGOW. HODGES, FOSTER & CO., DUBLIN. GEORGE ROBERTSON, MELBOURNE. 1875. LONDON : PRINTED BY C. EOWOETH AND SONS, NEWTON STBEET, HIGH HOLBOBN. ^^B maxk MOST EESPEOTPULLy DEDICATED TO THE HONORABLE SIE WILLIAM EOBEET GEOVE, D.C.L., E.E.S., ONE OP THE JUDGES OP P^r Ulajtstg's &auxt ai Common ^leas. PEEFACE. This is essentially a book of reference. Its object is to supply a reliable and exhaustive summary of the reported Patent Law Cases decided in English Courts of Law and Equity. No opinion is expressed upon the Cases digested, and no attempt is made to re- concile conflicting decisions. All that the book con- tains rests upon the authority of the Judges. The classification adopted is that which naturally suggests itself from the practical working of Patent Law rights, and the chronological arrangement of the Cases gives a complete history of legal decision on the several points of Law and Practice under which they are arranged. This is the Author's justification for re- taining some few Overruled Cases, and for introducing several decisions upon the same point where they are of different dates. Cases which bear only on the present system of pleading, and upon the repeal of Letters Patent by scire facias, have been omitted, as reform in both modes of procedure appears to be immi- nent. Should the Patents for Inventions Bill, 1875, become law, it will be added as an Appendix to this Digest. 1, Bkick Couet, Temple, June, 1875. TABLE OF CONTENTS. PAGE Table of Cases • . . . . xi Subject-Matter OF Lettees Patent 1—61 Manufacture ...,..,,.. 1 Combination 16 Process 22 Addition to a known machine or process . . . . .30 Application of a known macliine, process or material to a new purpose ' 34 Application of a known macliine, process or material to an analogous purpose 47 Principle 57 Novelty of Invektion '62—107 Novelty generally 62 Want of novelty in a part of an invention 69 Public use 74 Secret use 87 Publication in a book or specification 89 Publication by experiment 100 Publication by sale 103 Question for the jury 106 Utility of Invention 108—117 Utility generally 108 Degree of utility 113 Want of utility in a part of an invention 114 Question for the jury 116 Who MAY BE A Patentee 118—125 First and true inventor 118 Importer of foreign invention 125 Application for Letters Patent 126 — 141 Concurrent applicants 126 Grounds of opposition 129 Caveat 132 Hearing before law officer 132 Reference to law officer 133 •Opposition at the great seal 134 Delay 136 Inspection > 137 vui TABLE OF CONTENTS. Application for Letters VAtEST— continued. , p-*";^ Affidavits t^^^ Substituted service ^f^ Costs 138 Filing specification ^•''' Stamp duty 1*0 Countermanding warrant 1^1 The Grant 142-147 Date of letters patent 142 Conditions and terms of grant 143 Consideration for grant 144 Limited grant 146 Cancelling 147 Title op Patent 148—161 Title generally 148 Largeness of title 149 Variance between title and specification 155 Provisional Specification 162—166 Complete Specification 167 — 245 Sufficiency of, generally 167 To whom it must be intelligible 175 Should be sufficient without experiments 181 Prejudicial concealment 184 Misleading 188 Ambiguity in, 195 Should distinguish what is new from what is old . . . 197 Claiming too much 202 Specifying an improvement 210 Variance between provisional and complete specification . .214 How affected by subsequent discoveries 215 The claim 217 Effect of drawings annexed to specification .... 219 Verbal errors 221 Construction of, generally 222 Construction of, in particular cases 228 Comparison of specifications 240 Sufficiency of, a question for the jury 244 Amendment OP Patent, Specification AND Enrolment . 246-260 At common laio 246 By disclaimer and memorandum of alteration .... 249 By whom entered 249 Grounds for and objection to 250 Operation of 254 Practice 259 Extension op the Teem of Letters Patent . , . 261 — 322 Jurisdiction of the Judicial Committee of the Privy Council . 261 Grounds of extension generally 262 Merit of inventor 269 Utility of invention 273 Remuneration 276 Objections to extension 287 •TABLE OF CONTENTS. IX Extension op the Teem of Letters FA.TEtiT— continued. page Conditions imposed 290 Questions of validity 295 Extension of patent for an invention also patented abroad . 299 The petitioner 304 The petition 311 Amendment of the petition 311 Time to present petition — Prosecuting with effect . . . 312 Kules . . . . 314 Advertisements 314 Caveats 315 Inspection 316 Counsel 316 The grant 316 Revocation of grant 319 Costs 320 Confirmation 323—331 Grounds of, and objections to 323 Effect of 328 The petition 330 Affidavits 330 Costs 331 Sale and Assignment 332 — 337 Registration 338-339 Licences and Royalties 340—346 Estoppel 347—355 Joint Owners op Patents 356 — 359 Infringement 360—402 Generally 360 By working and making 362 By vending 370 By working or making a new and material part of an invention 374 Colourable imitation — Equivalent — Evasion .... 384 Intention immaterial 399 A question for the jury 401 Action for Infringement 403—446 Parties to the action 403 Particulars of breaches 406 Notice of objections, generally 409 As to first and true inventor 413 As to prior user 414 As to specification . . _ 419 As to fi-aud and misrepresentation 420 Interrogatories 421 Discovery and inspection 422 Injunction 427 Postponement of trial 427 Venue 429 Evidence of the subject-matter of a patent .... 429 novelty of invention 430 the grant of letters patent 432 X TABLE OF CONTENTS. Action foe Infrinoement— conimued page Evidence of sufficiency of specification . . . . • 433 infringement 435 New trial 437 Costs 437 Account 442 Damages 444 Consolidation of actions 444 Threatening an action for infringement 445 Suit in Equity 447—514 Parties to the suit 447 Pleading 448 Affidavits 451 Interrogatories and discovery 454 Inspection 457 Injunction 461 Validity of patent — Uninterrupted enjoyment . . . 461 Infringement must be shown . ' . . . . . 476 Delay and acquiescence 478 Expired patents 481 Rival patentees 482 Procedure on application for, ...... 483 Order for 487 Account of Sales and profits 488 Damages 493 Trial of questions of law and fact 497 Right to a jury . 501 Particulars of breaches 502 Pai-ticulars of objection . 503 Evidence 506 Nevf trial 507 Consolidation of suits 508 Taking bill pro confesso 509 Bill of review 510 Counsel . , 510 Costs 510 Addenda 515 Index 519 TABLE OF CASES. Kames of Cases.- Where reported. "Where reported and cited In this Digest. Abbott V. Williams 1837 9 Eep. Arts, 103 j 2 Carp. P. C. 388 . . 1192 29 L. T. Kep., N. S. 367 1105 way Company 1873 Adams' Patent, In re . . 1853 21 L. T. Rep. 38; 1 W. R. 259 574 Adamson's Patent, In re . . 1856 6 De G., M. & a. 420; 25 L. J., Ch. 456; 4 W. R. 473 . 138, 257 Alcock's Patent, In re . . 1832 at. 4 M. & Cr. 511 ; 1 Web. P. C. 432 270, 273 Allan's Patent, In re . . 1867 L. R., 1 P. C. 507; 4 Moo. P. C. C, N. S. 443 651 1 C. B. 551 31, 240, 552 Amies v. Kelaey 1852 1 B. C. C. 123; 16 Jar. 1047; 22 L. J., Q.B.84; 20L.T.Eep.ll6; IW.R. 1034 Amory v. Brown 1869 L. R., 8 Eq. 663; 38 L. J., Ch. 593; 17 W. R. 849; 20 L. T. Kep., N. S. 664 1112 Arkwright v. Nightingale . . (N. P.) 1785 Dav. P. C. 37; 1 Web. P. C. 60 .... 362, 382 Arnold «. Bradbnry (V.-C.) 1871 24 L. T. Rep., N. S. 613; 19 W. R. 817 1257 T. TJ fi Ch 7(\R 469, 1257 (L. C.) 1871 Ashenhurst's Patent, In re. . 1853 2 W. R. 3; 22 L. T. Rep. 109 1304 Anbe's Patent, In re . . 1854 9 Moo P. C. C. 43 720 Axmann v. Lnnd 1874 L. R., 18 Eq. 330; 43 L. J., Ch. 655; 22 W. R. 789; 3 L. T. Rep., N. S. 119 866, 1099 Bacon D. »Tones 1839 4 Mv. & Cr. 433 11QR 1211 cited 1215 D.Spottiswoode ..1839 1 Beav. 382 1212, 1222 Xll TABLE OIT CASES. Names ol Cases. Wlierereportca. Where reported and cited in tliis Digest. Bailey v. Taylor 1825 , Ex parte 1872 Cited 1225 L. R, 8 Ch. 60; 42 L. J., Ch. 264; 21 W. R. 31; 27 L. T. Rep., N. S. 430 266, 309 Bainbridge «. Wigley (N. P.) 1810 Par. Rep. Pat. 1829, p. 197; 18 Rep. Arts, 127; 1 Carp. P. C. 270 340 SCI & Fin 726 850 (H. L.) 1842 Bakewell's Patent, In re . . 1862 1 K Mnn PHP, .RRn fi.50 883 Bancroft v. "Warden . . 1873 Eomilly's Notes to Cases, 103 886 Barber v. Walduck (N. I'.) 1823 Cit. 1 C. & P. 567; 1 Carp. P. C. 438. Eep. under name of Barker v. Shaw, Holroyd, Pat. 60; 1 Web. P. C. 126, 229 Barker v. Grace 1847 1 Exch. 339; 17 L. J., Exch. 122 .... 538, 948 V. Shaw 1823 See Barber v. Walduck. Baskett v. Cunningham .1762 Bate's Patent, In re . . 1836 Bateman v. Gray 1853 2Edenl37 1209 1 Web. P C. 739 Cn ") 655 1 C. L. Eep. 512; 22 L. J., Exch. 290 1053 Marr P C 93 952 (N. P.) 1853 Bateman's Patent, In re. . . . 1854 Macr P C 116 583 Bates V. Eedgate, Ex parte. . 1869 L. E., 4 Ch. 577; 38 L. J., Ch. 501; 17 W. R. 900 ; 21 L. T. Rep., N. S. 410 250, 308, 321 Batley v. Kynock .... 1874 L. E., 10 Eq. -229 ; 31 L. T. Rep., N. S. 573 1265 Baxter's Patent, In re .. 1849 13 Jur. 593 696 — - v Combe i . . • • 1 Tr Ch E 284 1200 (M. R.) 1850 R Tr Cb R 21fi 1172 (M. E.) 1851 Beard v. Egerton 1846 3 C. B. 97; 10 Jur. 643; 15 L. J., C. P. 270 243, 348 V ■■ 1819 8 C. B. 165; 13 ,Tur. 1004; 19 L. J., C. P., 36 ; M. Dis. 75 396, 460, 517, 540, 564 Beck's patent. In re . . 1784 1 Bro. C. C. 578 ; 1 Web. P. C. 430 . . 283, 567 Bell's Patent, In re 1846 10 Jur. 363 686 Bentley v. Fleming (N. P.) 1844 1 C. & K. 587 15 113 V. Keighley 1844 1 D. & L. 944 ; 7 M. & G. 652; 8 Scott. N. E. 372 ; 13 L. J., C. P. 167 1017 Berrington's Patent, In re. . 1852 Coryton's Law of Letters Patent, p. 225 648 Berry's Patent, In re . .1850 7 Moo. P. C. C. 187 737 TABLE OF CASES. Names of Cases. Besaeman v. Wright . . 1858 Betts V. Cleaver 1872 V. ClifEord 1860 V. He Yitra (V.-C.) 1864 V. "Where reported. (V.-C.) 1865 (L. C.) 1868 (H. L.) 1873 V. Gallais 1870 ■y.Menzies(V.-C.) 1857 V. (Q. B.) 1858 V. (Q. B.) 1869 (Ex. Ch.J 1860 - (H. L.) 1862 6W. R. 719 L. R, 7 Ch. 513 i 41 L. J., Ch. 663 ; 27 L. T. Eep. 85 1J.&H.74 .' ■ t-.Neilson (V.-C.) 1865 ■ V. (L. J.) 1865 ■ v. (L.C.)1868 . V. (H. L.) 1871 11 L. T. Eep., N. S. 533; 11 Jur., N. S. 9; 5 N. K. 165; 34 L. J., Ch. 289 12 L. T. Eep., N. S. 51; 34 L. J., Ch 291 L. E., 3 Ch. 429 ; 37 L. J., Ch. 325 ! 18 L. T. Eep., N. S. 165; 16 W. E. 529 L. E., 6 H. L. 319; 21 W. E. 705 .... L. E., 10 Eq. 392 ; 18 W. E. 945 ; 22 L. T. Eep., N. S. 841 3 Jur., N. S. 357 , 27 L. J., Q. B. 154 I Ell. & Bl. 990 ; 28 L. J., Q. B. 361; 5 Jnr., N. S. 1164 30 L. J., Q. B. 81; 6 Jur., N. S. 1290 ; 3 L. T. Eep., N. S. 237; 1 Ell. & Bl. 1020. 10 H. L. Cas. 117; 31 L. J., Q. B. 233; 9 Jur., N. S. 29; 11 W. E. 1 ; 7 L. T. Eep., N. S. 110 12 L. T. Eep., N. S. 489; 13 W. E. 804; 6 N. E. 221 II Jur., N. S. 679; 34 L. J., Ch. 537; 18 W. E., 1028; 3 De G., J. & S. 82; 12 L. T. Eep., N. S. 719 L. E,, 3 Ch. 429; 37 L. J., Ch. 321; 18 L. T. Eep., N. S. 159; 16 W. R. 524 L. E., 5 H. L. 1; 40 L. J., Ch. 317; 19 W. R. 1121 Where reported and cited In this Digest. ?). Walker 1850 V. Willmott (V.-C.) 1870 (L.C.)'i87i Betts' Patent, In re. . . . 1862 Bewley v. Hancock. . . .1856 Bickford v, Skewes (L. C.) 1837 14 Q. B. 363 . 18 W. R. 946 . L. R., 6 Ch. 239; 19 W. E. 369; 25 L. T. Eep., N. S. 188 1 Moo. P. C. C, N. S. 49; 9 Jnr., N. S 137; 11 W. E. 221; 7 L. T. Eep., N. S. 577; 1 N. E. 137 6 De G., M. & G. 391; 2 Jnr., N. S. 289; 4W. R. 334 1 Web.P.C.211 855 1300 1291 1238, 1294 1218 141, 168, 987 1235, 1245, 1299 1243 161.1179 162 139, 162 162 162, 526, 358 897, 1103 897 141, 168, 380, 897, 1242 169,507,897,1059, 1077,1143,1195, 1244, cited 1245 1004 907 844, 884, 907, 1122, 1196 607, 640, 672, 715, 722, cited 727, cited 728, 776 50, 870 1116 XIV TABLE OF CASES. Names of Cases. Bickf ord v. Skewcs (V.-CJ 1838 V. (L. C.) 1839 (Q. B.) 1811 Bircot's case Blake's Patent, In re . .1873 Blamond's Patent, In re . . 1860 Bloxam v. Elsee •. . (N. P.) 1825 (K. B.) 1827 Where reported. 1 Web. P. C. 211- , 4 My. & Cr. 498; 8 L. J., Ch. 188 ... . i Q. B. 938; 1 G. & D. 736; 6 Jur. 167; 10 L. J., Q. B. 302; 1 Web. P. C. -214 3 Inst. 184; 1 Web. P. C. 31, n L. E., 4 P. C. 535 J 9 Moo. P. C. C, N. S. 373 3 L. T. Eep., N. S. 800 Bodmer's Patent 1838—1840 , Inre 1849 — , lore 1853 Booth V. Kennard .... 1856 .1857 Boulton V. Bull (C. P.) 1795 -: V. (Ch.) 1796 Bovill i>. Crate 1865 V. Pinch 1870 V. Goodier ........ (M. R.) 1865 (M.B.>1866 (M. E.) 1867 ■ V. Hadley 1864 — - V. Hitchcock .... V. Key worth .... 1857 ». Moore.. (L. CO 1815 1 C. & P. 558; Ey. & Moo. 187; 1 Carp. P. C. 434 6 B. & C. 169; 9 Dow. & Ey, 215; 1 Web. P. C. 132 (n.); 1 Carp. P. C. , 440. 1 Web. P. C. 740; 2 Moo. P. C. C. 471 6M00.P.C.C. 468 8 Moo. P. C. C. 282; 6 M. D. 114 . . . . 1H.&N.527; 26L. J., Exch.23; 3 Jar., N.S.21; 28L.T. Eep.160; 5W.E. 85 2 H. & N. 84; 26 L. J., Exch. 305; 5 W. R. 607; 29 L. T. Rep. 163 2 H. Bl. 463; Day. P. C. 162; 1 Carp. P. C. 117 3 Ves.140 L. R., 1 Eq. 388 L. E., 5 C. P. 523; 39 L. J., C. P. 277; 18 W. E. 1071; 23 L. T. Eep., N. S. 151 L. E., 1 Eq. 35; 35 Eeav. 264; 35 L. J., Ch, 174; 13 L. T. Eep., N. S. 489; 14 W. R. 91 35 fe'eav. 427; L. R., 2 Eq. 195; 35 L. J., Ch.432 36 L. J., Ch. 360 17 C. B., N. S. 435; 10 L. T. Rep., N. S. 650; 4 N. R. 464 16 W. E. 321; L. E., 3 Ch. 417; 37 L. J., Ch. 223 7 Ell. & Bl. 725; 3 Jur., N. S. 817; 5 W. R. 686; 29L. T. Eep. 194 ^C6op.'56(n) Where reported and cited In this Digest. 1155 1158 392, 428, 512, 561 Cited 61,cited 62 728 575 220, 230, 496, 1302 332, 454, 811, 976 753, 757 695, 736 699, 719, 774 49 49, 464, 555 4,24,61,95,194, 363, 492, 974 1145 1204, 1283 778 1269 1185, 1217, 1253 1274 1087 1261 32, 52, 917 1133 TABLE OF CASES. XV Names of Cases. Bovillw. Moore (N. P.) 1816 V. ..(C. P.) 1816 V. Pimm 1856 V. Smith 1866 Bovill's Patent, In re , .1863 Bower v. Hodges 1853 Bowman v. Taylor .... 1834 Braid v. Neilsou (H. L.) 1842 Bramah v. Hardcastle (N. P.) 1789 Brandies' Patent 1853 Brennand's Patent, In re . . 1861 Bridson v. Benecke. . . .1849 V. M' Alpine . . 1845 Bridson's Patent, In re 1852 Brook V. Aston 1857 (Ex. Ch!) 1859 Brooks V. Eipley 1831 Brotherton's Patent, In re. . 1867 Brough's Patent, In re 1844 Brown v. Kidstone (Crt. Sess.) 1852 V. Moore 1816 Brunton v. Hawkes .... (N. P.) 1820 V. 1821 «. White ....1825 Bulnois V. Mackenzie . .1837 Barrongh's Patent, In re Bash J). Fox ..(N. P.) 1852 (Ex. Ch.) 1854 Where reported. Dav. P. C. 361 2 Marsh. 211 llExch. 718 L. R., 2 Eq. 459 1 Moo. P. C. C, N. S. 348 13 C. B. 765; 22 L. J., C. P. 194; 17 Jur. 1057 i 1 C. L. Rep. 807 2 A. & E. 278; 4 N. & M. 264 8C. &F.726 Holroyd, 81; 1 Carp. P. C. 168; 1 "Web. P. C. 44 (n.) 1 Eq. Rep. 121 7 Jur., N. S. 690; 4 L. T. Rep., N. S. 456; 3DeG., E. & J.695 12 Beav. 1; 34 Lond. Jour. 295 8 Beay. 229 7 Moo. P. C. C. 499 8 El. & B. 478; 4 Jur., N. S. 279; 27 L. J., Q. B. 145; 6 W. R. 42 6 Jur., N. S. 1025; 28 L. J., Q. B: 175 2 Lond. Jour., C. S. 35; Web. P. L. 102 See In re Mitchell's Patent. 7Beav.l04 1 S., M. &P. 769; M. Dig. 344 Cit. 3 Swan. 264 1 Carp.P. C.405 4 B. & Aid. 541; 1 Carp. P. C. 405 .. 7 D. & E. 103 4 Bing. N. C. 127; 6 Dowl. 215; 1 Web. P.' C. 260; 5 Scott, 419 See Manceaux's Patent, In re. Macrory's P. C. 152 ; 23 L. J., Exch! 257 Macrory's P. C. 166 ; 23 L. J., Exch. 257 ■Where reported and cited iu thie) Digest. 198, 409, 452, 474, 494, 930 474 51, 524, 954 1130, 1272 630, 746,' 777 836 848 850 118, 170 1305 276 1169, 1199 1163, 1213 667, 765, 785 80 80, cited 83, cited 85 1065 298 1173 1134 . . 495 27, 69, 120, 319, 331, cited 335, 367 1050 995, cited 1007, 1009 77 XVI TABLE OF CASES. Karnes of Cases, Bush «. Pox ..(H.L.)1856 Caldwell v. Vanvlissengen. • 1851 Cameron v. Gray .... 1795 Campbell's Patent, In re '.. 1853 Campion v. Benyon . . 1821 Cannington v. Nuttall .... (H. L.) 1871 Card's Patent, In re ..1848 Cardwell's Patent, In re . . 1856 Carpenter v. Smith (N. P.) 1841 V. 1842 - 1). Walker Carpenter's Patent, In re . . 1854 Carr's Patent, In re . . 1873 Cartwright v. Amatt . . 1799 Chambers r. Crichley..l864 Chanter v. Dewharst . .1844 V. Johnson .... 1845 i).Leese 1838 (Ex. Ch.) 1839 ChoUet V. Hoffman. . . . 1857 Claridge's Patent, In re 1851 Clark V. Adie (V. C.) 1873 V. ..(L. J.) 1873 V. Fergusson .... 1859 V. Kenrick 1843 Clark's Patent, In re . .1870 "Where reported. 5 H. L. Cas. 707; 2 Jur., N. S. 1029; 25 L. J., Exch. 251; Macrory's P. C. 178 9 Hare, 415; 16 Jur. 115; 21 L. J., Ch. 97 Where reiwrted and cited In this Digest. 6 T. E. 363; Dav. P. C. 220 22L.T.Eep.93 3B. &B. 5; 6B. Mo. 71 L. R., 5 H. L. 205; 40 L. J., Ch. 739. . 6 Moo. P. C. C. 207; 12 Jnr. 507; M. Dig. 75; 2 Web. P. C. 161 10 Moo. P. C. C. 488 1 Web. P. C. 530 9 M. & W. 300; 1 Web. P. C. 540; 11 L. J., Exch. 213 1 Web. P. C. 268 (n.) 2 Moo. P. C. C, N. S. 191 (n.) L. R., 4 P. C. 539; 9 Moo. P. C. C, N. S. 379 2B. &P. 43; Dav. P. C. 240 33 Beav. 374 12 M. & W. 823; 13 L. J., Exch. 198 . . 14 L. J., Exch. 289; 14 M. & W. 408 . 4M. & W. 295; IH. &H. 224 5 M. & W. 698; 9 L. J., Exch. 327 . . 7 Ell. & Bl. 686; 26 L. J., Q. B. 249; 3 Jur., N. S. 935; 5 W. K. 573; 29 L. T. Rep. 158 7 Moore, P. C. C. 394 21W.R.456 ; 21 W.R.764 lGif.184 1 Dow. & Low. 392 ; 13 L. J., Exch. 6 ; 12 M. & W. 219 L. R., 3 P. C. 421 ; 7 Moo. P. C. C, N. S. 255 77,554, cited 555 881, 891, cited 897, 981, 1171, 1303 1049 288, 299 330 23, 116, 599, 929 797, 801 627, 690 30, 131, 181, 438 131 1012 701 681 808 863 832 833 831, cited 855, 978 831, 978 825, 1006 741 845 845 1180, 1290 590 677, cited 678 • TABLE OF CASES. Where reported Karnes of Cases. Where reported. and cited in this Digest Clayton v. Percy 1854 Clothworkers of Ipswich 48 Lee 0. 160 1044 Godbolt, 252 ;. 1 Roll. R. 4 2 case 1615 Cochrane v. Braithwaite . . 3 Lond. Jour., C. S. 42 ; 1 Carp. P. C. 935 (N. P.) 1830 493 V. Smethnrst 1816 1 Stark. 205; Dav. P. C. 354 329 CoUard v. Allison .... 1839 4 Mt. & Cr. 487 1156 Cook and Wheatstone's Pa- 88 Lond. Jonr. 223 740 tent, In re ....1851 V. Pearce 1843 12 L. J., Q. B. 187; 8 Q. B. 1044; 7 Jnr. 764 337 V. (Ex. Ch.) 1844 8 Q. B. 1054; 8 Jur. 499; 13 L. J., 337, cited 347, Q. B. 189 cited 360 Copeland v. "Webb 1862 IIW. R. 134; IN. R. 119 1210 Copley's Patent, In re. .1861 31 L. J., Ch. 333 ; 8 Jur., N. S. 106 ; 5 L. T. Rep., N. S. 387 294 Cornish v. Keene 1 Web. P. C. 501; 2 Carp. P. C. 314. . 129,149,210,221, (N. P.) 1835 233, 246, 388, 1067 -T ^n p Mp.^7 3 Bing. N. C. 570 ; 4 Scott, 337 ; 2 Hodges, 281; 6 L. J., C. P. 225; 1 8, 149 186 Web. P. C. 513 ; 2 Carp. P. C. 371 ; 6 Rep. Arts, 4th Series, 102 Crane v. Price 1842 4 M. & G. 580 ; 1 Web. P. C. 398 ; 5 12, cited 38, cited Scott, N. R. 338; 12 L. J., C. P. 81; 85, cited 91, 206, 2 Carp. P. C. 669; 18 Rep. Arts, 440 4th Series, 102 Crofts «. Peach 1836 2 Hodg. 110; 1 Web. P. C. 268 1033 CrollB.Edge 1850 9 C. B. 479; 14 Jur. 553; 19 L. J., C. P. 261 349, cited 352 Crompton v. Ibbertson 1828 Dan. & Llovd, 33; 1 Web. P. C. 83; 1 Carp. P." C. 460 425 Crosskill v. Evoiy 1848 Crossley v. Beverley in T, T T?pn iH'i 1168 3 C. & P. 513; Mo. & Mai. 283; I 387, 482 (N. P.) 1829 Web. P. C. 106 9B. & C. 63; IWeb. P. C. 112 344, 411 (K. B.) 1829 1 Web. P. C. 119 ; 1 Russ. & My. 166 . 1205 (Ch.) 1829 V. Derby Gas Co. . . 4 L. J., Ch. 25; 1 Web. P. C. 119 .... 1206, 1221 (L. C.) 1834 . Richards . . 1860 II. Ry lands . .1865 Daw V. Eley . .(V.-C.) 1865 V. (V.-C.) 1865 V. . .(V.-C.) 1865 r. ..(V.-C.) 1867 DelaRue v. Dickinson 1857 (V.-C.) 1857 Denley v. Blore (N. P.) 1851 Dcrosne v. Pairie (N. P.) 1835 V. (Exch.) 1835 Derosne's Patent, In re 1835 , In re 1844 Where reported. Macr. P. C. 240 llir.R.426 39 L. O. 443; M. Dig. 194 8 L. J., Ch. 184; 2 Coop. C. C. 60 (n.) 19 Newt. Lond. Jonr.,N. S. 44; 8 L. T • Rep., N. S. 657 33 L. J., C. P. 255; 10 Jur., N. S. 823; 10 L. T. Rep., N. S. 383; 4 N. R. 152 11 L. T. Rep., N. S. 245 35 L. J., Ch. 852; L. R., 1 H. L. 337 11 Q. B. 973; 12 Jur. 721; 17 L. J., Q B. 217 4 My. & Cr. 510; 1 Web. P. C. 418 26 L. J., Ch. 298; 4 W. R. 455 .... 13 L. T. Rep., N. S. 142 Cit. Crane v. Price Noy. R. 173; 1 Web. P. C. 1 1 N. R. 173, 307 5 N. R. 484; 2 Hem. & M. 282 .... 3 L. T. Rep., N. S. 503 L. R., 1 Eq. 302; 35 L. J., Ch. 204; 14 L. T. Rep., N. S. 53; 14 W. R. 243 L. R., 1 Eq. 38; 13 L. T. Rep., N. S 399; 14 W. R. 48 L. R., 3 Eq. 500 (n.); 14 W. R. 126 ; 13 L. T. Rep., N. S. 399 2H. & M. 725 L. E., 3 Eq. 496; 36 L. J., Ch. 482; 15 L. T. Rep., N. S. 559 7 E. & B. 738; 8 Jur., N. S. 841; 5 W. R. 704; 29 L. T. Rep. 194 3K. & J.388 38 Lond. Jour. 224 1 Mo. & Rob. 457; 1 Web. P. C. 154. .■ 5 Tyr. 393; 2 Cr. M. & R. 476; 1 Web. P. C. 158; 1 Gale, 109 1 Carp. P. C. 698 4 Moo. P. C. C. 416; 2 Web. P. C. 1. . Where reported and cited in this Digest. 338 100, 218, 376, 463 1127 880 1109,1157 1266 1088 56,957,965,1250 957, 973, 12C4, 1279 851 205, 255, 291, 1055 313 3G, 447, 864 Cited 12 1, 104, 190 1139,1182,1247 1184, 1259 107.5, 1101, 1194 1239, 1295 1268, 1286 448, 501, cited 958 1129, 1270 114, 822, 1208, 1285, 1308 918, 971 1124 982 511,977 Cited 12, 370, 427, 603 578 620,036,662,758 TABLE OP CASES. XIX Karnes of Cases. De Vitre v. Betts Dilly V. Doig 179'i Dircks v. Mellor 1845 Dismore's Patent, In re 1853 Dixon D.London Small Arms Company 1875 Dobbs V. Penn 1849 DoUond's Patent 1758 Downton's Patent .1839 Dudgeon v. Thomson . .1874 Dnnuicliff v. Mallett . .1859 Davergier v. Fellows . .1828 (Ex. Ch.yisSO (H.L.>i832 Dyer, Ex parte 1812 Edgeberry v. Stevens . .1691 Edwards v. Normandy 1864 Electric Telegraph Company ■y. Brett (C. P.) 1851 V. Nott (V.-C.) 1847 V. (C.P.) 1847 V. (L. C.) 1847 Elgie V. Webster 1839 Elliott «. Aston (N. P.). 1840 V. Turner (Ex. Ch.) 1845 Ellwood V. Christy (C. P.) 1864 V. . (C. P.) 1865 Where reported. Where reported and cited in this Digest. See Betts v. De Vitre. 2 Ves. Jun. 486 26 Lend. Jour. 268 ISBeav. 538 31 L. T. Rep., N. S. 830; L. E., 10 Q. B. 130 3 Exch. 427 Git. 2 H. Bl. 469, 470, 487; Dav. P. C. 170, 171, 172, 199; 1 Web. P. C. 43; 1 Carp. P. C. 28 1 Web.P. C.565 22 W. E. 464; 30 L. T. Eep., N. S. 244 7 C. B., N. S. 209; 1 L. T. Eep., N. S. 514; 6 Jur., N. S. 252; 29 L. J., C. P. 70; 8 W. R. 260 5 Bing. 248 ; 2 M. & P. 384 10 B. & C. 826 1 C. &E. 39 HolroYd 59; Par. Eep. Pat. 1829, p. 197 2 Salk. 447; 1 Web. P. C. 35 ; Comb. 84; Dav. P. C. 36; 1 Carp. P. C. 35 12 W. R. 648; 3N. R. 562 10 C. B. 838; 20 L. J., C. P. 123; 15 Jur. 579 11 Jur. 273 4 C. B. 462; 11 Jur. 590; 16 L. J., C. P. 174 2 Coop. 41 5M. & W. 518 l-Web.P. C. 222 .......'. 2C. B. 446; 15 L. J., C. P. 49 17 C. B., N. S. 754; 34 L. J., C. P. 130; 13 W. R. 54; 11 L. T. Eep., N. S. 342; 10 Jur., N. S. 1079; 6 N. K. 12 13 W. E. 498; 18 C. B., N. S. 494; 34 L. J., C. P. 130; 5 N. E. 312 b2 1281 1164 573 816, 898 158 Cited 110, 226, cited 151 616, 643, 658, 731, 783 1188 984 812 812 812 ■ 245, cited 247 191, 225 1229 16,325,519,913, 950, 980 1118 1166 869 187,391 515, 536 820 1089, 1093 TABLE OF CASES. Karnes of Cases. Elmslie v. Boursier .... 1869 Erard's Patent, In re . . 1835 Farquharson, Ex parte 1872 Fawcett's Patent, In re 1852 Feather v. Reg 1865 Where reported. Where reported and ciCed In this Digest. Felton V. Greaves ■ (N. P.) 1829 Femie v. Young Finlay v. Allan 1857 Fisher v. Dewick (N. P.) 1838 V. (C. P.) 1838 (C. P.) 1838 Flarell v. Harrison .... 1853 Foarde's Patent, In re 1855 Forsyth v. Riviere .... 1819 Fox, Ex parte , 1812 ..1866 L. R., 9 Eq. 217; 39 L. J., Ch. 328; 18 W. R. 665 1 Web. P. C. 557 ; 5 Rep. Arts, N. S. 58 L. E., 8 Ch. 167 ; 42 L. J., Ch. 363 ; 21 W.R.233 2 De G., M. & G. 439; 19 L. T. Rep' 237 6 B. & S. 257; 35 L. J., Q. B. 200;' 12 L. T., N. S. 114 3 C, & P. 611 See Young v. Fernie (H. L.). 19 Deo. of Crt. of Sess., 2nd Series, 1087 Cit. 8 Q. B. 1056 4 Bing. N. C. 706; 6 Dowl. 739; 1 Web. P. C. 264; 6 Scott, 587; 1 Arn. 282; 7 L. J., C. P. 279 1 Web. P. C. 551(n.) 1 W. R. 213; 17 Jur. 368 9 Moo. P. C. C. 376 Chit. Prerog. Cr. 182; 1 Web. P. C. 97; 1 Carp. P. C. 401 1 V. & B. 67; 1 Web. P. C. 431. . .. V. Dellestable Foxwell V. Bostock (L. C.) 1864 V. Webster (L. C.) 1863 V (V.-C.) 1863 Galloway v. Bleaden (N. P.) 1839 «. ■ . . 1839 Galloway's Patent, In re . . 1843 Gamble v. Kurtz .... 1846 Gardner v. Broadbeut ] 856 Geary v. Norton 1846 15 W.E. 194 12 W. R. 723; 10 L. T. Rep., N. S. 144; 4 De G., J. & S. 298 12 W. E. 94; 9 L. T. Rep., N. S. 362; 9 Jur., N. S. 1189; 3 N. R. 103 4 Dp G., J. & S. 77; 9 L. T. Rep., N. S. 528; 12 W. R. 186; 10 Jur., N. S. 137; 3 N. E. 103, 180 1 Web.P.C.521 1 Web. P. C. 268(n.) 1 Web. P. C. 724; 7 Jur. 453 906 609, 708, 766 253, 267, 269 274 315, 320 334, 368 919 345 996 1007,1010,1022, 1027 1176 689 227, 530*, 932 63,264,289,493, cited 502 66, 1233 3o,359,393,477> 500, 586 1126 1282 3C.B.425 2 Jur., N. S. 1041; 4 W. R. 767. 1 DeG. & S. 9 172, 87£ 390, 431, , 1056 1011 661, 733 685, 710, 459, 946 1119, 1178 1287 TABLE OF CASES. Names of Cages. George v. Beaumont . .1815 Gi-thing's Patent, In re 1874 Gibson v. Brand (N. P.) 1841 V. (C. P.) 1842 Gillett V. Green 1841 V. Wilby (N. P.) 1839 Gittins V. Sj^mes 1854 Goucher v. Clayton (V.-C.) 1865 V. (V.-C.) 1865 Goucher's Patent, In re. . . . 1865 Granger, Ex parte .... 1812 Greaves v. Eastern Counties Kailway 1859 Green's Patent, In re . . 1857 Griffiths' Patent, In re 1846 GroTer and Baker Sewing Machine Company v. Millard 1862 Hadden v. Smith .... 1847 Hall V. Boot and Jarvis .... (N. P.) 1822 V. Conder (C. P.) 1857 (Ex'. Ch.) 1857 Hancock v. Moultou . . 1852 V. Bewley . . 1860 ■ V. Somervell .... (N. P.) 1851 Hardy's Patent, In re. . 1849. Harmar v. Playne (K. B.) 1809 Harmer v. Playne (Ch.) 1807 Wliere reported. 27 Eep. Arts, 2nd Series, 252; 1 Carp. P. C. 295 L.R.,9Ch.633 1 Web.P.C.627 4 M. & G. 179; 4 Scott, N. E. 844; 1 Web. P. C. 631; 11 L. J., C. P. 177 7 M. & W. 347; 9 Dowl. 219; 1 "Web. P. C. 271; 10 L. J., Exch. 124 9 C. & P. 334; 1 Web. P. C. 270 .... 3 C. L. Rep. 251; 15 C. B. 362; 24 L. J., C. P. 48. 11 Jur., N. S. 107; 34 L. J., Ch. 239; 13 W. R. 336; 11 L. T. Rep., N. S. 732 11 Jur., N. S. 462; ] 3 L. T. Rep,, N. S. 115; 34 L. J., Ch. 239; 13 W. R.336 2 Moore, P. C. C, N. S. 532 Godson on Patents, 2nd ed. p. 225 .... 1 Ell. & Ell. 961; 28 L. J., Q. B. 290; 5 Jur., N. S. 733 24 Beav. 145 Cit. Hind, on Pat. 534 8 Jur., N. S. 713 17L. J., Ch.43 , 1 Web. P. C. 100; 1 Carp. P. C. 423. 2 C. B., N. S. 22; 3 Jur., N. S. 366; 26 L. J., C. P. 138; 5 W. R. 491 3 Jur., N. S. 963; 5 W. R. 742; 2 C. B., K S. 53; 26 L. J., C. P. 288 Johnson's Patentee's Manual, 3rd ed p. 208; M. Dig. 506 John. 601 39 Newton's Lond Jour. 158 6 Mpo. P. C. C. 441; 13 Jur. 177 .... 11 East, 101; Day. P. C. 311 14Vesl30 Where reported and cited in this Digest. 975, 1148 281 173, 180, 394, 900 235, 45, 12.3, 457, 533 439, 889 1082 910, 998, 1080 1043 865 841, 896 608, 692 810 1086 824 256 859, 1284 1223 41, cited 1071 12, 816, cited 817 816 951, 1175, 1201 872 136, 182 666, 697,7 35 384, 472 1147 TABLE OF CASES. Kame3 of Cases. Harris' Patent, In re 1855 Harrison's Patent, In re. . . . •1-853 Harrison v. Spire 1863 Harrison's Patent, Iri re 1874 Hartley's case Harwood v. Great Northern Railway Co. (Q. B.) 1860 V. (Ex. Ch.) 1862 V. .... (H. L.) 1865 Hassall v. Wright .... 1870 Hastings v. Brown .... 1853 Hastings' Patent .... 1567 Ha worth v. Hardcastle 183.4 Hayne «. Maltby 1789 Heath v. Smith (Q. B.) 1854 V. Unwin (Exch.) •1'842- V, (N. P.) 1843 V. (Exch.) 1845 V. (V.-C.) 1847 V. (Ex. Ch.) 1852 V. (H. L.) 1855 Heath's Patent, In re . . 1853 Heathorn's Patent, In re . . 1864 Helliwell v. Dearman about 1842 Henderson v. Euncorn' Soap and Alkali Company 1SG8 Where reported. 25 L. T. Eep. 90 Macr. P. C. 31 22 L. T.-Rep. 92 L.R.,9Ch. 631 2H.B1.493 29 L. J., Q. B. 193; 6 Jur., N. S. 993 31 L. J.. Q. B. 198; 8 Jur., N. S. 1126; 6 L. T. Rep., N. S. 190; 10 W. E. 422 11 H. L. Cas. 654; 35 L. J., Q. B. 27; 12 L. T. Rep., N. S. 771; 14 W. R'.l L. R., 10 Eq. 609; 18 W. R. 821; 40 L. J., Ch. 145 1 E. & B. 450; 22 L. J., Q. B. 161; 17 Jar. 647 Noy, R. 182; 1 Web. P. C. 6 1 Web. P. C. 480; 4 M. & Sc. .720; 1 Bing. N. C. 182; 3 L. J., C. P. 311 3 T. R. 438; Dav. P. C. 156 3 Ell. & Bl. 256; 2 C. L. R. 1584; 18 Jur. 601; 23 L. J., Q. B. 166; 2 Web P. C. 268 10 M. & W. 684; 2 D., N. S. 482; 6 Jur. 1068; 12 L. J., Exch. 46; ] Web. P. C. 551 2 Web. P. C. 216 2 Web. P. C. 221 ; 14 L. J., Exch. 153; ISM. & W. 583 16 L. J., Ch. 283; 15 Sim. 552 22 L. J., C. P. 7; 2 Web. P. C. 236; 12 C. B. 522 5 H. L. Cas. 506; 16 C. B. 713; 25 L. J., C. P. 8; 3 W. R, 625 8 Moo. P. C. C. 217; 2 Web. P. C. 247; M. Dig. 114 10 Jur., N. S. 810; 10 L. T. Rep., N. S. 802; 12 W. R. 1068; 4 N. U. 489 1 Web. P. C. 401 (n.) 19 L. T. Ecp., N. S. 277 where reported -and dted in this Digest. 301 603 1036 282,311 67 19, cited 83, 91, 140 Cited 89, 91, cited 93, 140 91, cited 93, 140 828, 1104 434, 498 101 216, 509 847, cited 849 137, 248 Cited 1007,1014, 1024 14 ■944 959, 1165 397, 417, 95.3 14, 485, 489, 523, 882, 953, 961, 1074 624, 649, 668, 714, 731, 773 277 46 1256 TABLE OF CASES. XXlll I^ames of Cases. Henderson v. Mostyn Copper Company Limited 1868 Henry, Ex parte 1872 Henson, Ex parte .... 1832 Herbert's Patent, In re 1867 Hersee and Smyth, In re . . 1866 Hesse v. Stevenson 1803 Heurteloup's Patent, In re. . 1836 Hicks V. Kaincock .... 1783 Higgs V. Godwin 1858 HilU-. Monnt 1856 V. Thompson (L. C.) 1817 V. (L. C.) 1817 (c! P.) 1818 V. Wilkinson .... 1817 Hills V. Evans. .(L. C.) 1862 V. Laming 1853 V. Liverpool Gas Light Company 1862 V. London Gaslight Company 1857 (after new trial) 1860 Hills' Patent, In re .... 1863 Hoffmann v. Postill (V.-C.) 1868 V. (L. J.) 1869 Hollands. Fox (Q.B.) 1853 ». _ (Q. B ) 1854 Where reported, L. E., 3 C. P. 202 L. R., 8 Ch. 167; 42 L. J., Ch. 363; 21 W. E. 233 1 Web. P. C. 432; i My. & Cr. 511; 2 Lond. Jour., C. S. 32 L. R., 1 C. P. 399; 4 Moo. P. C. C, N. S. 300 L. E., 1 Ch. 518; 14 L. T. Eep., N. S. 842 3 B. & P. 565; Dav. P. C. 244 1 Web. P. C. 553 2 Dick. 647 27 L. J., Q. B. 421; 5 Jar., N. S. 97; Ell. BI. & Ell. 529 18 C. B. 72; 25 L. J., C. P. 190; i W. E. 562 3 Mer. 622; 1 Web. P. C. 229 3Mer.626; 1 Web. P. C. 235 2 R Moo. 424; 8 Tant. 375; 1 Web ..P.C. 239 2 Coop. 57 (n.) 31 L. J., Ch. 457; 8 Jnr., N. S. 525; '6 L. T. Rep., N. S, 90; 4 De G., F. & J. 288 9 Exch. 256; 23 L. J., Exch. 60 9 Jur., N. S. 140; 32 L. J., Ch. 28; 7 L. T. Rep., N. S. 537 27 L. J., Ex. 60 5 H. & N. 312 ; 29 L. J., Ex. 409 ... . 1 Moo. P. C. C, N. S. 258; 9 Jur., N. S. 1209 ; 12 W. E. 25; 9 L. T. Eep., N. S. 101 19 L. T. Eep., N. S. 276 L. E., 4 Ch. 673 ; 17 W. E. 901 ; 20 L. T. Eep., N. S. 893 1 W. E. 448; 1 C. L. Eep. 440 2 C. L. E. 1576; 3 EH. & Bl. 977; 1 Jur., N. S. 13; 23 L. J., Q. B. 357 Where reported and cited la this Digest. 842 253, 267, 269 270, 273, 290, 306 653, 706 285 809 150, 794 1144 53, 902 302 1113, 1149, 1190 Cited 12,26,199, 219, 453, 560 Cited 12,110, 119, cited 120, 148, 199, cited 331, 342, cited 335, 475, 909, 931 1114 Cited 55, 165, 527, 569, 1181, 1228, cited 1238 853 894 642 20,54,145,16.3,176, 327,377,544,557 641, 673, 716, 723, 790 1255 1131 ^-^. -y 1018 Cited 1041, 1090 TABLE OF CASES. Names of Cases. Holmes v. London and North Western Railway Company 1862 Honiball v. Bloomer (N. P.) 1854 V. 1854 Honiball's Patent, In re 1855 Hoop, Ex parte 1802 Hornblower v. Boulton 1799 Hornby's Patent, In re 1853 Ilorsley and Knighton's Patent, In re (M. K.) 1869 (L. J.) 1869 Horton «.Mabon(C.P.) 1862 V. (Ex.€h.)1864 Houghton's Patent, In re . . 1871 Honsehill Iron Company v. Neilson (N. P.) 1842 V, . . (H. L.) 1843 How V. Taunton . . . .1845 '0. M'Kernan 1862 Huddart v. Grimshaw . . (N. P.) 1803 Hall«. Bolland .1856 Hullett ■». Hague 1831 Humphrey's Patent Hutchinson's Patent, In re . . 1861 -Hyde c. Palmer 1863 Jessop's case Before 1795 Johnson's Patent, In re 1871 Where reported. Macrory's P. C. 13; 22 L. J., C. P. 57; 12 C. B. 831 2 Web. P. C. 199 lOExch.538; 1 jur.,N.S. 188; 24 L.J. Exch. 11; 3 W. R. 71; 3 C. L. Rep 167; M. Dig. 46 9 Moo. P. C. C. 378; 2 Web. P. C. 201: 3 Eq. Rep. 225; M. Dig. 164 6 Ves. 598 8T.R. 95;DaT.P.C.221; ICarp.P.C 1.56 7 Moo. P. C. C. 508 ; 1 C. L. Rep. 519 L. K., 8 Eq. 475; 17 W. R. 1054; 21 L.T Rep., N. S. 345; 39 L. J., Ch. 157 L. R., 4 Ch. 784; 17 W. K. 1000 12 C. B., N. S. 437; 31 L. J., C. P. 255; 10 W. R. 582; 6 L. T. Rep., N. S. 289 16 C. B., N. S. 141 ; 12 W. R. 491 ; L. T. Rep., N. S. 815; 4 N. R. 66 L. R., 3 P. C. 461 ; 7 Moo. P. C. C N. S. 309 1 Web.P. C.676 9 C. & F. 788 ; 1 Web. P. 0. 673 9 Jur. 1056 30Beav. 547 Dav. P. C. 265; 1 Web. P. C. 85; 1 Carp. P. C. 200 1 H. & N. 134; 25 L. J., Exch. 304 2 B. & Ad. 370 Noy, R. 183; 1 Web. P. C. 7 14 Moo. P. C. C. 364 3 B. & S. 657; 11 W. R. 433; 7 L. T. Rep., N. S. 823; 32 L. J.,-Q. B. 126 Cit. 2 H. Bl. 490; Dav. P. C. 182, 203 1 Web, P. C. 42 (n.) L. R., 4 P. C. 75; 8 Moo. P. C. C, N. S. 282 Where reported and cited in this Digest. 375, 441, 541 184 1085 242, 606, 626, 775, 789,799,803,807 296 5,39,62,96,323, 364, 383, 471 786 827 . 827 88, cited 89 634, 678 99, 324, 395 133, 1,52, 174, 514 208 1125 25, cited 38, 40, 107, 195, 422, 451,1070 1005, 1021 111, 508. 103 671, 761, 756, 764 1058 318, cited 61 680, 727, 750, 792 TABLE or CASES. Karnes of Cases. Johnson's and Atkinson's Patent 1873 Jones V. Berger 1843 1). Heaton «. Lees 1856 V. 1856 V. Pearce (Ch.) ..1831 V. (N. P.) 1832 V. Pratt 1861 Jones' Patent, In re . . 1840 , Inre ..1854 Jordan v. Moore 1866 Jnpe V. Pratt 1837 Kay V. Marshall (L. C.) 1836 (M.'E.Vi836 V. (C. P.) 1839 V. (H. L.) 1841 Kay's Patent, In re . . 1839 Kemot ». Potter 1861 v. 1862 Knowles v. Bovill .... 1870 Kollman's Patent, In re 1839 Lamenaude's Patent ..1850 Lancaster's Patent, In re . . 1864 Lang V. Gisbome .... 1862 "Where reported. L. R., 5 P. C. 87 5 M. & G. 208; 1 Web. P. C. 544; 6 Seotfc, N. E. 208; 7 Jur. 883; 12 L. J., C. P. 179 Web. P. C. 404 (n.) 25 L. J., Exch. 24] 1 H. & N. 189; 2 Jur., K. S. 645; 26 L. J., Exch. 9 2 Coop. 58 1 Web. P. C. 122; 1 Carp. P. C. 624; 1 Lon. Jour., C. S. 215 6 H. & N. 697; 7 Jur., N.S. 978; 30 L. J., Exch. 365; 9 W. K. 696; 4 L. T., N. S. 411 1 Web.P. C. 677 9 Moo. P. C. C. 41 L. E., 1 C. P. 624; 12 Jur., N. S. 766; 35 L. J., C. P. 268; 14 W. E. 769 1 Web.P. C. 145 1 My. & Cr. 373; 2 Web. P. C. 39. . . . 1 Keen, 190. 5 Bing. N. C. 492; 7 Scott, 548; 2 Am. 78 ; 8 L. J., C. P. 261 ; 2 Web. P. C. 71 8 CI. & Ein. 245 ; West, 682 ; 5 Jur, 1028; 2 Web. P. C. 79 1 Web. P. C. 568; 3 Moo. P. C. C. 24 30 Beav. 843 3DeG., P. & J.447... 22L. T. Eep., N. S. 70. 1 Web. P. C. 564 2 Web. P. C. 164 2 Moo. P. C. C, N. S. 189 31 Beav. 133; 8 Jur., N. S. 736; 31 L. J., Ch. 769; 10 W. E. 638; 6 L. T. Rep., N. S. 771 Where reported and cited in this Digest. 682, 779 153, 412, 1002, cited 1007, 1016, 1025, 1028 412 991, 1039 837 1220 42, 171, 887 1031 617, 644, 660 788 93, 549 97, 939 487, 1106, cited 1108,1153, cited 1167 1107 87, 122, 372 71,87 657, 709, 769 7S4, 819 1227 843 614 159, 798, 804 802, 704 166 XXVI TABLE OF CASES. I^ames of Cases. Lawes v. Purser 18,5.6 Leaf V. Topham ...... 1845 Ledaam v. Rnssell (Ex. Ch.) 1847 V. <. (H. L.) 1848 Lee V, Walker 1872 Lee's Patent, In re ... . 1856 Lewin v. Brown 1866 Lewis V. Davis (N. P.) 1829 V. Marling (N. P.) 1829 V. (K. B.) 1829 Liardet v. Johnson . . .• (N. P.) 1778 Lister v. Eastwood (Q. B.) 1855 V. Where reported. ,6 E. & B. 930i 26 L. J., Q. B. 25; 3 Jur., N. S. 182; 28 L. T. Eep. 84; 5 W. B. 43 14 M. & W. 146 ; 14 L. J., Exch. 231 16 L. J., Ex. 145 IH. L. CaS. 687 Where reported and cited In this Digest. 41 L. J., C. P. 91 ; L. B., 7 C. P. 121 ; 26 L. T.Bep., N. S. 70 10 Moo. P. C. C. 226 14 W. B. 640 (V.-C.)1855 ■V. (C. P.) 1864 ■ V. Leather (V.-C.) 1857 • V. (Q. B.) 1857 (Ex. Ch.) 1858 (V.-C.) 1858 Losh V. Hague (V.-C.) 1837 V. (N. p.) ,1838 ■». (Exch.) 1838 V. (Exch.) 1839 Lovella Hicks (Ex.Eq.)1836 V. (Ex. Eq.) 1837 Lowe's Patent, In re . . 1846 3 C. & p. 502; 1 Web. P. C. 488;"l Carp. P. C. 471 4 C. & P. 52; 1 Web. P. C. 490; ] ■ Carp; P. C. 475 10 B. & C. 22; 4 C. & P. 56; 5 M. & B. 66; 1 Web. P. C. 493; 1 Carp; P. C. 478 Bull. -N. P. 78; 1 Web. P. C. 53; 1 Carp. P. C. 35 3 C. L. Eep. 1249 26L.T. Rep.4 9 L. T. Bep , N. S. 766 3 Jur., N. S. 433 8 E. & B. 1004; 3 ,Tur., N. S. 811; 5 W. B. 603; 29 L. T. Bep. 142 8 E. & B. 1031; 27 L. J., Q. B. 295; 4 Jur., N. S. 947 4R.&J.425 1 Web. P. C. 200; 2 Coop. 59(n.) .. l.Web. P. C. 202 1 Web. P. C. 203 (n.) 7 D. P. C. 495; 5 M. & W. 887; 3 Jur 409; 8 L. J,, Ex. 251; 7 Dowl. 495 5 L. J., Ex. Eq. 101; 2 Y. & G 46. . . . 2Y.&C.481 10 Jur. 303. 854 1026 .755 1309 639 821 28, 201, 1051 127, 231, 1078 121, 127, 200, 215, • 410, 426, 455, cited 461, 483 105, 419, cited 3S4 1045 1177 925 596 33, 04, 443, 893, 920, cited 94 33,443,491,685, 920, cited 927 1289 1193,1197 70, 86, 179, 212, 234 997 1081 813 868 664 TABLE OF CASEP. XXVU Names of Cfisca. Lowe's Patent, In re . . 1852 . , Inre ..1856 Lucas' Patent 1854 Lukie V. Kobson 1837 M' Alpine v. Mangnall . • . . (Ex. Ch.) 1846 M'Cormick v. Gray. . . . 1861 M'Dougal's Patent', In re . . 1867 Macfarlaue v. Price (N. P.) 1816 M'Innes' Patent, In re .... ■1868 Macintosh v. Everington Macintosh's Patent 1836—7 , In re . . 1856 M'Kean's Patent, In re ... . 1859 Mackelcan v. Rcnnfe .".1862 Macmillan, £x parte, Whit- taker, In re (Bank.)' 1871 Macnamara v. Hulse (N. P.) 1842 Mallet's Patent, In reV. 1866 Manceaux, Ex parte ..1870 , Ex parte . . 1 870 Mangnall v. Benecke Manton v. Manton (N. P.) 1815 V. Pai-ker 1814 Markwick's Patent, In re . . 1860 Mathers v. Green ......... (M. R.) 1865 Where reported. 8M00.P.C.C. 1 25 L. J., Ch. 454; 4 W. R. 429 Macr. P. C. 235 9 Rep. ArtSj N. S. 55; 2 Carp. P: C. 413 3C. B. 496; 15 L. J., C. P. 298 7 H. & N. 25; 31 L. J., Ex. 42; 9 W. R. 809; 4 L. T. Rep., N. S. 832 L. R., 2 P. C. 1; 37 L. J., P. C. 17; 5 Moo. P. C. C, N. S. 1 1 Stark. 199; 1 Web. P. C. 74 .... (L. G.) 1865 Matthey's Patent. . . .(Eliit.) L. R., 2 P. C. 54; 37 L. J , P. C. 23 5 Moo. P. C. C, N. S. 72 6 Rep. Arts, K S. 317, 365 1 Web. P. C. 739 2 Jur., N. S. 1242; 5 W. R. 194; 28 L. T. Rep. 280 ' ■ • 1 De G., P. & J. 2; 8 W. R. 1; 1 L. T Rep., N. S. 19 13 C. B., N. S. 52 24L.T.llep.,N. S. 143 ..., Car. & M. 471; 2 Web. P. C. 128 (n.) L. R., IP. C. 308; 4 Moo. P. C. C. N. S. 175 L. R , 5 Ch. 518; 18 W. R. 8.54 ...... L. R., 6 Ch. 272; 18 W. R. 1184 .... See Bridson v. Benecke. Dav. P. C. 333; 1 Carp. P. C. 278 Dav. P. C. 327; 1 Web. P. C. 192 . (n.) 8 W. R. 333; 13 Moo. P. C. C. 310 34L. J.. Ch. 298; 13 W. R. 421; 12 L. T. Rep., N. S. 66; 5 N. R. 358 . 34 Beav. 170 35 L. J., Ch. 1; 11 Jur., N. S, 8,45;. 14 W. R. 17; 13 L. T. Rep., N. S. 420; L. R., 1 Ch. 29 Nov, 178; 1 Web. P. C. 6 Where reported and cited In this Digest. 762 249 584, 593 1154 476, 537, 814 126, 924, 963 632, 652, 717 473 718 68 752, 782 284 275, 287, 293 81,357,418,528 874 224, 404, 433, 534, 888, 967, 1001 705 295 251,264 108, 197, 385, 437, 1053 196 628, 669, 703 873 873, 1230 102 XXVIU TABLE OF CASES. Names of Cases. Mayer v. Baker 1858 Where reported. u Frith 1860 V. Speuce 1860 Meadows v. Kirkman . .1860 Medlock's Patent, In ire ... . 1865 Milligan v. Marsh .... 1856 Milner's Patent, In re. . 1854 Miuter v. Mower (N. P.) 1835 V. (K. B.) 1837 V. Wells (N. P.) 1834 - V. (Exch.) 1834 ■ 4-. "Williams 1835 3 H. & N. 802; 7 W. R. 66; 28 L. J , Exch. 90 2 L. T. Rep., N. S. 536 IJ. &H.87 29 L. J., Exch. 205 22 Newt. Lond. Jour., N. S. 69 .... 2 Jur., N. S. 1083 . . . 9Moo. P. C. C. 39... IWeb. P. C. 138 ... Mitchell V. Barker 1851 V. Reynolds. . 1713 Mitchell's Patent, In re ... . 1867 Monopolies, Case of Morewood v. Tapper ..1855 Morey's Patent, In re .. 1858 Morgan v. Puller 18C6 - V. Seaward (V. C.) 1835 - V. (N. P.) 1836 ■ V. (Exch.) 1837 (Exch.) 1838 Morgan's Patent, In re 1843 Morris v. Branson (N. P.) 1776 6 A. & E. 735; 1 N. & P. 595; W. W. & D. 262; 1 Web. P. C. 142; 6 L. J., K. B. 183 1 Web. P. C. 127; 1 Carp. P. C. 622. 5 Tyr. 163; 1 C. M. & R. 505; 1 Web. P. C. 134; 1 Carp. P. C. 639; 4 L. J., Ex.2 4 Ad. & Ell. 251; 1 Web. P. C. 135; 6 Nev. & M. 647; 1 H. & W. 585; 5 L. J., K. B. 60 39 Lond. Jour. 631 1 P. Wms. 181; 19 Mod. 130 L. R., 2 Ch. 343 See Darcy v. Allia. 3C. L. Rep. 718 25Beav.581; 6 W. R. 612 L. R. 2 Eq. 296, 297; 14 L. T. Rep., N. S. 353; 14W. R. 497 1 Web.P.C. 167 1 Web. P. C. 170; 1 Carp. P. C. 37 . 2 M. &"W. 544; Mur. & H. 55; 1 Jur. 527; 1 Web. P. C. 187; 1 Carp. P.C. 96; 6 L. J., Ex. 153 2 Carp. P. C. 104 ,,.. 1 Web. P. C. 737 Bull, N. P. 76; 1 Web. P. C. 51; 1 Carp. P. C. 30 Where reported and cited in this Digest. 1307 1216 1121 1040 598, 604 244 787 128, 504 456 202, 232, 936, 1060, 1066 7,531 Morton v. Middleton . . 1863 1 Cr. S., 3rd Series, 718 899 1224 3 278 916 826 1252, 1271 1136, 1152 211, 222, 371, 389, 402,413,497,9,S8 9, 130, 151, 178, 204, 217, 336 679 618,732,cited748 59,cit6d61,cited 62 21, 34, 378, 444, 499, 566 TABLE OF CASES. XXIX Karnes of Cases. Moxon V. Bright 1869 MuUinsi). Hart (N. P.) 1852 Mnntz D. Poster (L. C.) 1843 V. (N. P.) 184i V. (C. P.) 1844 ' v. Greenfell . . 1843 Muntz's Patent, In re. . 1846 Murray v. Clayton (L. J.) 1872 V. (V.-C.) 1872 V. (V.-C.) 1872 Myers «. Baker ...... 1858 Napier's Patent, In re. .1861 Needham v. Oxler (V.-C.) 1863 (V.-C.) 1863 (V.-C.) 1863 (V.-C.')'i865 Neilson v. Betts V. Porman .... 1841 V. Pothergill (L. C.) 1841 V, Harford (N. P.) 1841 V. .-1841 V. (Exch.) 1841 V. (L.C.) 1841 V. Thompson (L. C.) 1841 Where reported. L. E., 4 Ch. 292; 20 L. T. Eep. 961 . . 3C.&K.297 2 Web.P. C.93 2 Web.P. C. 96 2 "Web.P. C. 93(n.) 7 Jur. 121; 2 Coop. 61 (n.) 2 Web.P. C. 113 L. E., 7 Ch. 570; 20 W. K. 649; 27 L. T. Eep., N. S. 110 21 W. E. 118; 42 L. J., Ch. 191; L.E. 15 Eq. 115; 27 L. T. Eep., N. S 644 21 W.E.498 7 W. E. 66; 3H. &N. 802 13 Moo. P. C. C. 543; 9 W. E. 390 8 L. T. Eep., K. S. 532; 11 W. E. 745; 9 Jur., N. S. 598; 2 N. E. 232, 267 8 L. T. Eep., N. S. 604; 2 N. E. 388; 11 W. E. 852 1H.&M.248 21 Newt. Lond. Jour., N. S. 300 See Betts v. Neilson (H. L.). See Neilson v. Thompson. lWeb.P.C.287 1 Web. P.' C. 295 1 Web. P. C. 324 (n.) ;.... 8 M. & W. 806; 1 Web. P. C. 331; 11 L. J., Ex. 20; 10 Xj. J., Ex. 493 1 Web. P. C .373; 2 Coop. C. C. 61 (n.) 1 Web. P. C. 278; 2 Coop 61 (n.) ,. .. Where reported and cited in this Digest. 1234 183 154, 943, 1162 73, 124, 155, 188, 239, 405, 4.58, 535, 551, 877, 890, 901, 943, 1072 1047 1161 638, 665, 784 38, 117, 958 1132 1219 1307 629, 743 1248 1140,1237,1258, 1292 993, 1263 956 849 213, 223, 393, 403' 414, 513, 563, 941 1023 10, 98, 346, cited 348, 393, 403, 429, 484, 505, 999, cited 552 1159 373, 1160 XXX TABLE OF CASES. Names of Cases, Nowall«. EUiott (Exch.) 1863 (Exch.) 1864 Newall and Elliott, Inre 1858 Newall V. Wilkins (N. P.) 1851 V. Wilson 1852 Newbcry v. James .... 1817 Newton v. Grand Junction Railway Co. . . 18i6 V. Vaucher .... 1851 Newton's Patent, In re 1861 1862 Nickels v. Haslam . . . .1844 1). Eoss 1849 Where reported. 1 H. & C. 797; 9 Jur., N. S. 359; 32 It. J., Exch. 120; 11 W. K. 438j 7 L. T. Eep., N. S. 753 10 Jur., N. S. 954; 13 W. R. 11; 10 L. T Rep., N. S. 792; 4 N. E. 429 4 C. B., N. S. 269; 4 Jur., N. S. 562i 27 L. J., C. P. 337 17L.T.Eep.20 2 De G., M. & G. 282 ; 19 L. T. Rep. J61 2 Mer. 446; 1 Carp. P. C. 367 Where reported and cited in this Digest. 5 Exch. 331 ; 20 L. J., Exch. 427 (n.)', M. Dig. 75 6 Exch. 859; 21 L. J., Ex. 305 Nickel's Patent, In re .... (M, R.) 1841 (L. C.) 1841 Noble's Patent, In re . .1850 Normand's Patent, In re . . 1870 Normandy's Patent, In re . . 1855 Norton v. Brooks . . . .1861 Norton's Patent, In re. . 1863 Nunn B.D 'Albuquerque 1865 Oldham v. Langmead .... Before 1789 Ormson v. Clarke (C. P.) 1862 (Ex. Ch.) 1863 Osborne v. JuUion . . . .1856 14 Moo. P. C. C. 156 15 Moo. P. C. C. 176; 10 W. R. 731; 9 Jur., N. S. 109 8 Scott, N. R. 97; 7 M. & G. 378; 8 Jur. 474; 13 L. J., C. P. 146 8C.B.679 , 4 Bear. 563; 1 Web. P. C. 650 .... 1 Ph. 36; 1 Web. P. C. 656 7 Moo. P. C. C. 191 L. E., 3 P. C. 193 ; 6 Moo. P. C. C, N; S. 477 9 Moo. P. C. C. 452 7 H. & N. 499 ; 8 Jur., N. S. 155; 10 W. E. Ill 1 Moo. P. C. C, N. S. 339; 9 Jur., N: S. 4.19;, 11 W. R. 720; 1 N. R. 557 34 Beav. 595 ; . Cit. 3 T. E. 439y 441 32 L. J., C. P. 8 ; 13 C. B., N. S. 337; 9 Jur., N. S. 749; 11 W. E. 118; 7 L. T. Eep., N. S. 361; 1 N. E. 61 32 L. J., C. P. 291 ; 14 C. B., N. S. 475 ; 10 Jur., N. S. 128; 11 W. R. 787; 2 N. E. 192 26L. J., Ch. C; 4 W. R. 767 261, 860 57,339,338,445, 895, 964 175, 356 1084 1174, 1202,1236 365 112, 911, 968 17,113,326,520; 914 670, 744 721 347, cited 348 241, 1062 572 292, 572 739, 760 725, 747 702 858 631, 691, 746 1231, 1296 846 89 871 TABLE OP CASES. XXXI Karnes of Cases, ■ffliere reported. Where reported ' and cited in this Digest. Oxford and Cambridge Uni- ycrsities v. Richardson .J302 6 Ves. 689 .• ■ 1146, cited 1178 Oxleye.Holden ...... 1860 8 C. B., N. S. 666 ; 30 L. J., C. P: 68; 8 W.R. 626; 2 L. T. Rep., N. S. 464 164, 185, 352, 545, 904 Palmer v. Cooper .... 1 853 9 Exch. 231; 2 C. L. R. 430; 23 L. J'., Exch. 82 1019 t'. Wagstaffe ..1853 8 Exch. 840; 17 Jur. 581; 22 E. J., Exch.. 295; 1 W. R. 438; 1 C. L. Rep. 448 1020 V 1851 9 Exch. 494; 2 C. L. R. 1052; 23 L. J., Exch. 217 522 1073 Parkes v. Steyens (V.-C.) 1869 L. R., 8 Eq. 358; 38 L. J., Ch. 627; 17 W. R. 846 94, 354, 478, 566», 927 «. L. R., 5 Ch. 36; 18 W. R. 233; 22 L. T. Rep., N. S. 635 94, 115, 478, 566»i 927 (L. C.) 1869 Patent Bottle Envelope Co. ■K. Sejmer 1858 5 C. B., N. S. 164; 5 Jur., N. S 174; 28 L. J., C. P. 22 79, cited 80, 351, 921, Patent Marine Invention's Co. i>. Chadburn 1873 'L. '&.:, Ifi Eq. 447; 21 W. R. 745; 28 L. T. Rep., N. S. 614 1262 Patent Type Pounding Co. V. Richards . . (Ch.) 1859 1 John. Rep. 381; 6 Jur., N. S. 39 . . . . 435 2 T, T" T{pn W S !!f;Q ■ 992 (C. P.) 1860 11 Wnlfnr -1 5 H: & N. ■ie2; 29 L. J,, Exch. 207; 6 Jur.,N. S. 103; 1 L.T. Rep.,N. S. 382 1041 .Tohns 727- 8 W T! R'm 1041,1138,1215 (Ch) 1860 Patteson v. Holland . . 1845 Cit. Hind, on Pat. p. 293 1048 Patterson's Patent, In re 1849 6 Moo. P. C. C. 469; 13 Jur. 593 .... 688 Payne v. Banner '.'iSi6 Payne's Patent, In re . . 1854 ISX. J:, Ch. 227 815 Cit. Corytou's Law of Letters Patent, p. 220 625 Penn v. Bibby 1 B.Jack (V.-C.) 1866/ L. R., 3 Eq. 308; 36 L. J., Ch. 277; 15 L. T. Rep., N. S. 385 1186, 1240, 1297 V. V. (V.-C.) 1866 ■ ^'- 1 V. (L. C.) 1866 L. R., 1 Eq. 548 : 127.R 1298 L. R., 2 Ch. 127; 36 L. J., Ch. 455; W W. R. 208; 15 L. T. Rep., N". S. 399 83; 353,360,479; 1280 — V. — (V.-C.) ime f L. R., 2 Eq. 314; 14 L. T. Hep., N. S. 495; 14 W. R. 760 1251 XXXll TABLE OF CASES. Names of Cases. Penn v. Bibby 1 V. Jack (V.-C.) 1867 ) Pering, Ex parte 1836 Perkins' Patent, In re . . 1845 Perry v. Mitchell 1840 V. Skinner 1837 Pidding v. Franks 1849 Piggott V. Anglo-American Telegraph Company 1868 Pinkus' Patent, In re . . 1848 Pitman's Patent, In re 1871 Plimpton V, Maleolmson . . 1875 Poole's Patent, In re . .1867 Porter's Patent, In re. .1853 Potter V. Kernot Poupard v. Fardell (V.-C.) 1869 V. (V.-C.) 1869 Pow V. Tannton 1845 Pow's Patent, In re ...... Price's Patent Caudle Com- pany V. Bauwen's Patent Candle Company 1868 Protheroe v. May .... 1839 Qaarrill's Patent, In re 1840 Ralston 1). Smith (C. P.) 1860 Where reported. L. E., 5 Eq. 81; 37 L. J., Ch. 136; 16 ' W. E. 243; 17 L. T., N. S. 407 4 A. & E. 949; 6 N. & M. 472 .... 2 Web.P. C. 6 1 Web. P. C.269 2 M. & "W. 471; M. & H. 122; 1 Jur. 433; 1 Web. P. C. 250; 6 L. J., Ex. 124 18L. J., Ch. 295; 1 Mac. & G. 56.... 19 L. T. Eep., N. S. 46 (Ex. Ch.) 1861- (H. L.) 1865 12 Jur. 233 . . . . L. R., 4 P. C. 8 N. S. 293 44 L. J., Ch. 276 8 Moo. P. C. C, L. R., 1 C. P. 514; 36 L. J., P. C. 76: 4 Moo. P. C. C, N. S. 453 Coryton's Law of Letters Pat. p. 217. . See Kernot v. Potter. 18W.R.09 18 W. E. 127; 21 L. T. Eep., N. S. 696 9 Jur. 1056 See Robinson's Patent, In re. 4K.&J.727 5 M. & W. 675; 1 Web. P. C. 414; 9 L. J., Ex. 121 1 Web. P. C. 740 9 C. B., N. S. 117 ; 4 L. T. Rep., N. S 549 11 C. B., N. S. 471; 8 Jur., N. S. 100 ; 31 L. J-., C. P. 102; 10 W. E. 107 11 H. L. Cas. 223 ; 20 C. B., N. S 28; 13 L. T. Rep., N. S. 1 ; 35 L. J., C. P. 49 Where reported and cited In this Digest. 1241 312 621, 663, 759 988 589, cited 591, cited 592 852, 1170 1142 622, 687, 713 633, 707, 748, 749 1189 676, 724 772 1276 146, 502 74 1207, 1226 830 659 587 587 .22, 65, 92, 436' 547, 687 Eedmund's Patent, In re . . 5 Euss. 44 ; 1 Web. P. C. 649 (n 1. . 568 1828 ^ TABLE OF CASES. xxxm 27ames of Caaes. K. V. Arkwright 1785 — «. Cutler 1816 — V. 1847 — V. 1849 — V. 1849 — D.Else 1785 — ■». russell 1826 — V. Hadden 1826 — V. Lister 1826 — «. Metcalf 1817 — » Mill 1850 — V. 1851 — V. Mnssary 1738 — B. Newton 1845 — «j. Nickels ..About 1846 — D. Steiner 1851 — V. Walton 1842 — ■». Wheeler 1819 Benard v. Levinstein (V.-C.) 1864 «. .... (V.-C.) 1864 ' V. — .... (L. J.) 1864 V. — ' .... (V.-C.) 1865 Eidgway v. Philip 1834 Eoberts' Patent, In re. . 1839 Robinson's Patent, In re . . . 1845 Rollins V. Hinks 1872 Eubery's P&tent, In re 1837 Rushton V. Crawley . ..1870 Russell V. Bamsley . . . . 1834 H. 1 Where reported. Dar. P. C. 61 ; Printed Cases, Fol. Lon. 1785 s 1 Web. P. C. 64( 1 Carp. P. C. 53 1 Stark. 354; 1 Web. P. C. 76; 1 Carp. P. C. 351 3 C. & K. 215j Macrory's P. C. 124; 14 Q. B. 372 (n.) 3 C. & K. 233; Macrory's P. C. 138 . . 14 Q. B. 372 (n.) ; Macr. P. C. 137 ... . Bull. N. P. 76; Dav. P. C. 144; 1 Web. P. C. 76 1 Carp.P.C.449 2 C. & P. 184; 1 Carp. P. C. 447 .... Web.P.L.80 2 Stark. N. P. 249; 1 Web. P. C. 141 (n.) 10 C. B., 379; 20 L. J., C. P. 16; 15 Jur. 59; 1 L. M. & P. 695 14 Beav.312 Bull. N. P. 76 a; 1 Web. P. 0. 41 . . 26 Lond. Jour., C. S. 361 Hind. Law of Pat. p. 186 40 Newton's London Journal, 71 . . 2Q. B. 969 2 B. & Aid. 345; 1 Carp. P. C. 394 3 N. E. 666; 10 L. T. Eep., N. S. 94. . 11 L. T. Eep., N. S. 605; 13 W. R. 229 10 L. T. Eep., N. S. 177 5 N. E. 301; 2 Hera. & M. 628; 11 L. T. Rep., N. S. 766; 13 W. E. 382 IC. M. &R. 415; 5Tyr. 131 lWeb.P.C.573 5 Moo. P. C. C. 65, nom. Pow.'s Pat,; 2 Web. P. C. 5 L. B,, 13 Eq. 355; 41 L. J., Ch. 358; 20 W. R. 287; 26 L, T. Rep., N, S. 56 1 Web. P. C. 649, n L, R., 10 Eq, 522 1 Web.P.C,472 ■where reported and cited in this Digest. 60, 106. 147, 192, 381, 400, 406, 420 109 75, 268 75, 268 461 328, 450 1064 1054 934 341 350, 581, 592, 1003 582, 601 317 322 1068 160 Cited 1007, 1013 6, cited 12, 228, 343, cited 346, 366, 401 1128 1267, 1293 446, 1183 986,1102,1232 867 615, 656 711, 795 1098, cited 1099 570 85, 468 1150 XXXIV TABLK OF CASES. Names ot Caaes. Enssell v. Cowley (L. C.) 1832 - (N. P.) 1834 Where reported. (I* C.) 1834 (Exch.) 1835 ■V. Crichton....l837 - V. Ledsam (Exch.) 1843 - V. (Exch. 1845) (Ex. Ch.) 1847 (H. L.) 1848 Russell's Patent, In re .... 1857 Samnda's Patent, In re ... . 1846 Sarazin v. Hamel 1863 Sannders v. Aston .... 1832 Savory v. Price (N.P.) 1823 Saxby v. Easterbrook. . 1872 V. Hennett .... 1873 1 Web. P. C. 457 1 Web. P. C. 459; 1 Carp. P. C. 532 . . 2 Coop. C. C. 59 (n.); 1 Web. P. C. 471 1 C. M. & E. 864; 1 Web. P. C. 463; 1 Carp. P. C. 557 1 Web. P. C. 667 (n.); 15 Dec. of Crt. of Sess. 1270 7 Jnr. 585; 1 D. & L. 347; 12 L. J., Exch. 439; 11 M. & W. 647 14 L. J., Exch. 358; 14 M. & W. 574 16 M. & W. 633; 16 L. J., Exch. 145; 9 Jur. 567 lH.L.Cas.687 Where reported and cited la this Digest. 2 De G. & J. 130; 6 W. E. 95; 30 L. T. Eep. 178 Cit. Hind, on Pat. 534 , Saxby 's Patent, In re. .I870 Schlumberger v. Lister 1860 ScMumberger's Patent, lure ■ 1853 Scott and Young, Ex parte 1871 Seed V. Higgins (Q.B.) 1858 V. (Ex.Ch.) 1868 V. (H. L.) 1860 32 Beav. 146 3 B. & Ad. 881 ; 1 L. J., K. B. 265 ; 1 Carp. P. C. 510 1 Ey. & Mo. 1; 1 Web. P. C. 83. . . L. E., 7 Ex. 207; 41 L. J., Ex. 113; 20 W. E. 751; 26 L. T. Eep., N. S. 439 L. R., 8 Exch. 210; 42 L. J., Exch. 137, 22 W. R. 16; 28 L. T. Eep., N. S. 639 7 Moo. P. C. C, N. S. 82; 19 W. R 513; L. R., 3 P. C. 292 2 E. & B. 870 ; 29 L. J., Q. B. 157; 9 W. R. 138; 3 L. T. Rep., N. S. 549; 6 Jur., N. S. 1336 9 Moo. P. C. C. 1; 2 Eq. R. 1 L. R., 6Ch. 274; 19 W. R. 425 . . ., 27 L. J., Q. B. 148 ; 4 Jur., N. S. 268 8 E. & B. 755 27 L. J., Q. B. 411 ; 8 E. & B. 771 ; 5 Jnr., N. P. 640 8 H. L. Cas. 550; 30 L. J., Q. B 314- 6 Jur., N. S. 1264; 3 L.T. Eep., N. S. I'oi 1135 937 1151 43, 203, 510, 532 1061, 1137 1008, 1015, 1029 307, 694, 734, 770, 878, 945 694, 734, 770 878 694, 734, 770 259, 3)4, 694, cited 707 256 nil 29, 369 423 1042, 1094 310, 885 654, 676, cited 678 838 305, 605, 700, 742, 763, 780 252, 265 466, 597 466, 597 466, 625, 597, 923, 972, 1076 TABLE OF CASES. XXXV Names of Cases, Where reported. Where reported and cited in tliis Digest. Sellers v. Dickinson . .1850 5 Exch. 312 ; 20 L. J., Exch. 417 ... . 518, 912, 970 Sequelin v. Terrell (N. P.) 1867 16 L T Ren N S 637 304 Sharp's Patent, In re . . 1840 1 Web. P. G.- 641 ; 10 L. J., Ch. 86 ; S Bear. 245 571, 580, 600 Shaw V. Bank of England. . 1852 22 L J Exch 26 1035 Sheffield, Ex parte .... 1872 L. R., 8 Gh. 237; 42 L. J., Ch. 356; 21 W. R. 283 280 Simister's Patent, In le 1842 1 Web. P. G. 721 ; 4 Moo. P. C. C. 164 645,684 , Simpson v. Holliday (V.-C.) 186i 20 Newton's Lon. Jour., N. S. 105. 209, 430, 486, 529, 546, 955 V. (L. G.) 1865 13 W. R. 577 ; 12 L. T. Rep., N. S. 99; 21 New. Lon. Jour., N. S. Ill; 5 N. E. 340 399, 467, 606, - 529 L. R., 1 H. L. 315; 36 L. J., Ch. 811. . 58, 467, 1278 (H. L.) 1866 Simpson and Isaac's Patent, In re 1853 21L. T.Rep. 81;1 W.E.259 247, 300 Singer Sewing Machine Co. V. Wilson (V.-G.) 1865 5 N. R. 505; 12 L. T. Rep., N. S. 140 ; 13 W. E. 560 1141 n T, T T?PTi N S fi7ft 1275 (V.-C.) 1865 Smith V. BuckiDgham 1870 18 W. R. 314; 21 L. T. Rep., N. S..819 823 iq f! s fic)i .. ... 144 892 matter of a patent.' Therefore, the point for con- sideration is thus reduced to this, whether the fishing of the rails, meeting butt-end to butt-end, with iron plates bolted together, and the strengthening of solid timbers by iron plates, also bolted to the timbers, as above stated, are analogous subjects ? It seems to us ... . that they are analogous .... But it was argued at the bar of your Lordships' House that there was invention at all events in this — that, whereas the grooved iron, as used in the bridges, had been applied for the purpose of binding together pieces of material laid upon one another horizontally, the grooved iron in fishing the rails was applied laterally, bind- ing together the material, and that its great merit consisted in its performing the novel fiinction of resisting the vertical pres- sure to which it was exposed, and did so by means of a plate equally strong, but rendered lighter than that previously in use by the removal of that portion of the plate which was useless in resisting such pressure. We do not find that any allusion to such an invention, as that now suggested, was made either at Nisi Prius, or in any of the judgments in the Court of Queen's Application to an Analogous Pu7-pose. 53 Bench supporting, or in that of the Exchequer Chamber in- validating, the patent right ; nor do we think, looking to the terms of the specification, that Wild ever intended to claim, or did claim any such. . . . There is no novelty or invention to support the patent." (35 L. J., Q. B. 35.) The Lord Chan- cellor, in delivering the judgment of the Plouse of Lords, said : " The question is, whether there can be any invention of the plaintiff in having taken 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 interferences with trade, and with the liberty of any mechanical contrivance being adopted, if every slight difference in the ap- plication of a well-known thing were held to constitute a patent. . . . No sounder or more wholesome doctrine, I think, was ever estabhshed than that which was established by the decisions which are 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 mechan- ical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner or to the purpose in 'or to which it has been hitherto notoriously used. The channelled iron was applied in a manner which was notorious, and the application of it to a vertical fish' would be no more than the application of a well-known contrivance to a purpose exactly analogous or corresponding to the purpose to which it had been previously applied." (35 L. J., Q. B. 38.) 9S. Ralston v. Smith. H. L. [1865] The discovery of one particular use of a known machine, although more advantageous than that formerly known, is not the subject of a patent. Before the date of the plaintiff's patent, a roller and a bowl were employed for calendering and for embossing woven goods. In the process of calendering the cloth was passed between a roller and a bowl; the roller was smooth, and the surface velocity of the roller and the bowl was unequal. In embossing, the cloth passed between a roller which had 54 SUBJECT MATTEE : the pattern to be transmitted to the cloth engraved upon it, and a bowl, the two moving with equal surface velocity. The object of the calendering was to produce a gloss upon the cloth. The plaintiff obtained a patent for " Improvements in embossing and finishing woven fabrics and in the machinery or apparatus employed therein." This title was subsequently amended, so as to be in these words, " Improvements in em- bossing and finishing woven fabrics." The specification enrolled by the plaintiff alleged the invention to consist in the use of rollers having any design grooved, fluted, engraved, milled, or otherwise indented upon them. A disclaimer was afterwards filed, and stated that the effect desired could only be produced by the use of a certain species of roller not particularly described in the specification, namely, a roller having circular grooves round its surface ; and the use of all other rollers was disclaimed. The amended claim was for " the employment of grooved, fluted, or indented rollers of hard metal, or other suitable material, driven at a greater speed than the bowl or bowls connected with them, so as to exert a rubbing or friction upon the fabric submitted to their action, and thereby produce an indefinite variety of pattern, as weU as a bright finish or lustre," &c. The Lord Chancellor: " I should have thought that the patentee might have maintained a patent for a new combination if he had put his invention upon, this ground, .that he was the first person who discovered that the circular grooved roller would answer by one process the double purpose of calendering and imprinting the fabric ; and that he was the first person who had constructed a machine that was capable, without injury to fabric, of effecting together both those operations. If, therefore, the original title had remained, and had not been studiously disclaimed, I myself should have thought it very difficult to resist the conclusion that the patent was capable of being supported as a new manufacture, under this view, that it really did describe, for the first time, a new combination of machinery. Your Lordships are well aware that by the large interpretation given to the word ' manufacture,' it not only comprehends productions, but it also comprehends the means of producing them. Therefore, in addition to the thing produced, it will comprehend a new machine, or a new combi- Aijplication to an Analogous Purpose. 55 nation of machinery ; it will comprehend a new process, or an improvement of an old process. But if we look at this patent, and inquire whether there is an improvement in embossing or finishing woven fabrics contained in this amended specification, I am bound to say, that, having regard to existing knowledge at the time, I think there is no such improvement as amounts to a new manufacture, because this mode of producing a brilliant gloss upon the surface was perfectly well known ; the operation of the differential velocity was also perfectly well known ; that the same thing had been thought of for the purpose of producing a pattern was also perfectly well known. Therefore, that woven fabrics might be finished according to one or the other of those two processes was perfectly well known. I cannot, therefore, having regard to the reduced specification which the patentee has now made to constitute the description of his invention, say that there is any new process entitling it to the denomination of a 'new manufacture.'" Lord Cranworth: "I quite agree with what was said by Mr. Grove, and it could not possibly be disputed by any gentleman at the bar, that it is not every useful discovery that can be made the subject of a patent, but you must show that the discovery can be brought within a fair extension of the words, ' a new manufacture.' Now how is this possible to be called ' a new manufacture ? ' I, as a manufacturer, have my roller, which I am in the habit of rolling upon a bowl (if that is the proper expression) ; the fabric passing between the two at equal velocities. Then I can impress my pattern upon it. I have my roller without any pattern engraved upon it ; I can impress that at an unequal velocity, and it will calender. But I do not do them both at the same time, because I suppose that in so doing I shall tear my fabric ; and I rightly so suppose, until the plaintiff makes the discovery that there is one particular sort of pattern which may be produced without tearing the fabric. Now that is a very useful discovery ; but it would be strange to say that that is a new manufacture, and that, there- fore, I am to be deprived of the most useful way of using my roller. There is nothing new in the invention, except that I now know what I did not know before, that by a particular use of it I shall obtain a result -which I did not know before that I 56 SUBJECT MATTER: could obtain." (11 //. L. Gas. 223 ; 20 Com. B., N. S. 28 ; 13 L. T. Rep., N. 8. 1 ; 35 i. J., C. P. 49.) 93. Jordan v. Mooke. [1866] The plaintifF obtained a patent for " certain improvements in the construction of ships and other vessels navigating on water.' The first and most important claim in the specification was "for the combination of an iron fi-ame, with an external covering of timber planking for the sides, bilges, and bottoms." The court construed this claim to be a claim for planking with timber any iron firame of a ship. Byles, J., delivering the judgment of the Court, said: "Iron and wood being both of them materials long used for the construction of the firame 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 patent ? 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 purpose on an iron vessel, but it is the application of the same old invention, namely, planldng with timber which was formerly done on a wooden fi-ame to an analogous purpose, or rather the same purpose, on an iron fi-ame. In this view of the case the recent decision of the Exchequer Chamber, and of the House of Lords, vn Harwood v. The Great Northern Railway Company, appears to us to be in point, and decisive for the defendant." (i. Rep., 1 C. P. 624 ; 12 Jur., N. S. 766 ; 35 L. J., C. P. 268 ; 14 W. R. 769.) 94. Paekes tj. Stevens. Ch. [1869] James, V.-C, said: "I am clearly of opinion that there can be no patent right in the substitution of a slide for a hinge, whether applied to the door of a house, the door of a carriage, or the door of a lamp or lantern, whether large or small, sus- pended or not suspended. It was hardly contended before me that the introduction of the door alone would have been suf- cient to sustain a patent ; but it was contended that because it was, as alleged, a novel part of a novel combination and arrange- ment, it was so protected. To say that, a patent for an entire Principle. 57 Combination is a valid patent for a part, when that part -would not of itself be patentable, is, in my judgment, a reductio ad obsurdum of the supposed principle of Lister v. Leather.'''' {L. R., 8 Eq. 367 ; 38 L. J., Ch. 631.) Judgment affirmed on appeal. — Hatherley, L. C, held, that the adaptation of a sliding door to a spherical lamp, sliding doors having previously been applied to cylindrical lamps and to other glazed surfaces, cannot of itself be the subject of a patent. \L. R., 5 Ch. 36 ; 18 W. R. 233 ; 22 L. T. Rep., N. S. 635.) Principle. 95. BouLTOx ?;. Bull. [1795] Rooke, J. : " The term * principle ' is equivocal ; it may denote either the radical elementary truths of a science, or those consequential axioms which are founded on radical truths, but which are used as fundamental truths by those who do not find it expedient to have recourse to first principles." (2 H. Bl. 479.) Heath, J. : " The Marquis of Worcester discovered, in the last century, the expansive force of steam, and first applied it to machinery. As the original inventor he was clearly entitled to a patent. Would the patent have been good applied to all machinery, or to the machines which he had discovered ? The patent decides the question. It must be for the vendible matter, and not for the principle. Another objection may be urged against the patent, upon the application of the principle to an old machine, which is, that whatever machinery may be hereafter invented would be an infringement of the patent, if it be founded on the same principle. If this were so it would reverse the clearest positions of law respecting patents for machinery, by which it has been always holden, that the organisation of a machine may be the subject of a patent, but principles cannot Indeed it seems impossible to specify a principle, and its application to all cases, which fiir- nishes an argument that it cannot be the subject of a patent." {lb. 483.) Mr. Justice Buller: "The very statement of what a principle is, proves it not to be a ground for a patent. It is the first ground and rule for arts and sciences, or in other 58 SUBJECT MATTER: words, the elements and rudiments of them. A patent must be for some new production from those elements, and not for the elements themselves." {lb. 485.) Chief Justice Eyre : " 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" {lb. 496). (2 H. Bl. 463 ; 1 Carp. P. C. 117; Dav. P. C. 162.) 96. HORNBLOWEE V. BOULTON. [179!)] Grose, J. : " Having very much turned the question in my mind, and weighed and considered again and again the words of the statute specifying what patents the Crown may grant, upon which alone I conceive the question must ultimately depend, I am not prepared to say that a patent for a mere principle was intended to be comprehended within those words." (8 T. i?e/j. 101.) Lawrence, J.: "'Principle' may mean a mere elementary truth, but it may also mean constituent parts." See also 39. {lb. 106.) Jones w. Peakce. N. P. [1832] See 42. 97. Jdpe v. Peatt. [1837] Alderson, B., said : " You cannot take out a patent for a principle ; you may take out a patent for a principle coupled with the 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 piracy of your original invention." (1 We.b. P. C. 146.) 98. Neilson u. Hakfoed. [1841] Alderson, B. : "I take the distinction between a patent for Principle. 59 a principle and a patent which can be supported, is-, that you must have an embodiment of the principle in some practical mode described in the specification of carrying the principle into actual effect, and then you take out your patent, not for the principle, but for the mode of carrying the principle into effect." (1 Web. P. C. 342.) « There is no difference between (claiming) a principle to be carried into effect in any way you wiU, and claiming the principle itself." (lb. 355.) 99. The Househill Company v. Neilson. [1843] Lord Justice Clerk Hope : " A patent cannot be taken out solely for an abstract philosophical principle — for instance, for any law of nature, or any property of matter, apart from any mode of turning it to account in the practical operations of manufacture, or the business, and arts, and utilities of life. The mere discoveiy of such a principle is not an invention, in the patent law sense of the term. Stating such a principle in a patent may be a promulgation of the principle, but it is no application of the principle to any practical purpose. And without that application of the principle to a practical object and end, and without the application of it to human industry, or to the purposes of human enjoyment, a person cannot in the abstract appropriate a principle to himself. But a patent will be good, though the subject of the patent consists in the dis- covery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specifica- tion applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained. (1 Web. P. C. 683.) ... It would be very strange and unjust to refuse the same legal effect, when the inventor has the additional merit of discovering the principle as well as its application to a practical object. The instant that the principle, although dis- covered for the first time, is stated, in actual application to, and as the agent of, producing a certain specified effect, it is no longer an abstract principle ; it is then clothed with the language of practical application, and receives the impress of tangible direc- tion to the actual business of human life." ... A claim for all 60 SUBJECT MATTEE: modes of applying the principle to the purpose specified, accord- ing to or within a general statement of the object to be attained, and of the use to be made of the agent to be so applied, is no objection whatever to the patent. That the application or use of the agent for the purpose specified, may be carried out in a great variety of ways, only shows the beauty, and simplicity, and comprehensiveness of the invention. But the scientific and general utility of the proposed application of the principle, if directed to a specified purpose, is not an objection to its becoming the subject of a patent. That the proposed applica- tion may be very generally adopted in a great variety of ways, is the merit of the invention, not a legal objection to the patent. {lb. 684.) ... 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 discover, 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 apparatus, is essential, in order to obtain benefit from the principle, then you may take your patent for the mode of carrying it into effect, and are not under the necessity of describing and con- fining yourself to one form of apparatus. If that were necessary, you see what would be the result ? Why, that a patent could hardly ever be obtained for any mode of carrjdng a newly- discovered principle into practical results, though the most valuable of all discoveries. For the best form and shape or modification of apparatus cannot, in matters of such vast range, and requiring observation on such a great scale, be attained at once ; and so the thing would become kno^vn, and so the right lost, long before all the various kinds of apparatus could be tried. Hence 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, produce the benefit, and you are not tied down to anj form" {lb. 685). (1 Web. P. C. 673; 1 C. Sf F. 788.) Electric Telegraph Company v. Brett. [1851] See 1 6, per Cresswell, J. Principle. 61 100. Crossley v. Potter. N. P. [1853] The title was for " certain improvements in weaving figured fabrics." The patentee in his specification says: "My im- provements in weaving figured fabrics apply to those particular kinds of fabric which have a terry or raised looped surface, such as coach lace, Brussels carpeting, velvets, and other woven goods having terry or raised surfaces, either plain or figured." The evidence went to show that without additional parts, which were not mentioned, the machine described in the specification was capable of making coach lace, but not of making either carpet or velvet goods. Pollock, C. B., in directing the jury, said : " The truth appears to me to be this, that the patent is very much like what has often been attempted, viz., to take out 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 Avhat are called * methods,' or ' 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 manufacture; 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. There is a sort of struggle apparently between lawyers and patent agents. The patent agent is constantly endeavouring to get a patent for a principle ; the lawyer is interposing and saying, ' you cannot do that.' It is a matter of clear and distinct law that you cannot have a patent for a principle. Whatever prin- ciple you have invented or applied, you must have it embodied . in some machine or manufacture distinctly, in order that other ingenious and enterprising members of the community may distinctly know what it is they are prohibited from doing." {Macrory's P. C. 240.) ( 62 ) NOVELTY OP INVENTION. Novelty Generally. 101. Hastings' Patent. [1567] A patent was granted to Mr. Hastings "in consideration that he brought in the skill of making frisadoes, as they were made in Harlem and Amsterdam, beyond the seas, being not used in England, that therefore he should have the sole trade of the making and selling thereof for divers years, charging all other subjects not to make any frisadoes in England during that time, by pain to forfeit the same frisadoes by them made, and to forfeit also 100^., the one moiety thereof to the Queen's Majesty, the other to Mr. Hastings." This patent being infringed by certain clothiers, Mr. Hastings " exhibited his English bill in the Exchequer Chamber against them ; where, upon the examination of the clause, it appeared that the same clothiers did make baies very like to Mr. Hastings' frisadoes, and that they used to make them before Mr. Hastings' patent; for which cause they were neither punished, nor restrained from making their baies like to his frisadoes." {Nog, B. 182; 1 Web. P. C. 6.) 102. Matthet's Patent. [Eliz.J By this patent " it was granted unto him the sole making of knives with bone hafts and plates of lattin, because, as the patent suggested, he brought the first use thereof from beyond seas. Yet nevertheless, when the wardens of the Company of Cutlers did show before some of the council and some learned in the law, that they did use to make knives before, though not with such hafts, that such a light difiference or invention should Novelty generally. 63 be no cause to restrain them, whereupon he could never have benefit of this patent, although he laboured very greatly therein," {Noy, i?. 178; 1 Web. P. C. 6.) 103. Hcmphkey's Patent, A patent was granted to Humphrey " for the sole and only use of a sieve or instrument for melting of lead, supposing that it was of his own invention, and therefore prohibited all others to use the same for a time. And because others used the like instrument in Derbyshire, contrary to the intent of his patent, therefore he did sue them in the Exchequer Chamber, by English bill. In which court the question was, whether it was newly invented by him, whereby he might have the sole privilege, or else used before at MendifF, in the west country, which if it were there before used, then the court were of opinion that he should not have the sole use thereof." {Noy, R. 183; 1 Web. P. C. 7.) 104. Daecy v. Allin. [1602] " Where any man doth bring any new trade into the realm, or any engine tending to the furtherance of a trade, that never ivas used before, the king may grant to him a monopoly patent." {Noy, E. 182 ; 1 Web. P. C. 6.) Mitchell v. Keynolds. [1713] See 3. 105. LiARDET v. Johnson. N. P. [1778] The general question is, whether the invention was known and in use before the patent. {Bull, N. P. 76; 1 Web. P. C. 53 ; 1 Carp. P. C. 35.) 106. E. V. Arkweight. N. P. [1785] Scire facias to repeal letters patent granted to- the defendant. The specification described various parts of machinery, but no complete machine, and the defendant did not point out what parts were new. Buller, J., left the following questions to the jury : — " First, whether this invention is new ? secondly, if it be new, whether it was invented by the defendant?" After commenting upon the evidence, his lordship said : " Thus the 64 NOVELTY: case stands as to the several component parts of this machine ; and if, upon them, you are satisfied that none of them were inventions unkno^vn at the time this patent was granted, or that they were not invented by the defendant, upon either of these points the prosecutor is entitled to your verdict." {Dav. P. C. 61; 1 Web. P. a 64; 1 Carp. P. C. 53.) 107. HuDDARD V. Grimshaw. N. p. [1803] Action for the infringement of a patent for a new mode of making ^cables and other cordage. EUenborough, C. J., in addressing the jury, said : " In inventions of this sort, and every other through the medium of mechanism, there are some materials which are common, and cannot be supposed to be appropriated in the terms of any patent. There are common elementary materials to work with in machinery, but it is the adaptation 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 nature 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 of 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." ... If, in his specification, the patentee " appropriates more than his own, he cannot avail himself of the benefit of it. I don't mean if he states a bobbin which was in' common use before, but if he states any particular thing before in common use, applied in a new manner to the produc- tion, and effecting a new end, that is part of the substance of the invention. And if he states that which of itself is not new, but old and known to the world, though it was unnecessary for him to do so, having done so, he has overstepped his right, and has included in his invention that which is not his invention ; in that respect his patent would be void." (J)a«. P. C. 278; 1 Weh. P. C. 86 ; 1 Carp. P. C. 225.) Novelty generally. 65 108. Manton v. Manton. N. P. [1815] Action for the infringement of two patents, one for a hammer upon an improved construction, for the locks of fire-arms; the other, for "an improvement in double-barrelled guns." Gibbs, C. J., in directing the jury, said : " In order to support a right to the exclusive enjoyment of any invention, it is neces- sary that the party who takes out the patent should show that the invention is new, that it was unknown to the trade and to the world before, that it is not only new, but that it is useftil to the public ; and it is necessary likewise that he should show that he has accurately explained the nature of his invention in his specification, separating that which is new from that which is old. {Dav. P. C. 343.) ... If any one man made these locks, and was in possession of the secret of making them upon the- same principle as Joseph Manton's locks, there would be an end of the patent." {lb. 353.) 109. E. I?. CuTLEE. Sci. fas. [1816] Scire facias to repeal the defendant's patent for " improve- ments ia firegrates or stoves." The specification, after de- scribing the stove, claimed as the invention, the construction of stoves in such manner as that the fiiel necessary to supply the fire shall be introduced from beneath, either in a perpendicular, or in an oblique direction. Ellenborough, C. J., was of opinion that the evidence showed grates to have been -constructed, prior to the patent, on a principle identical with that described in the specification ; that the patentee, by his claim, had confined himself to that principle, which was not new, and that, there- fore, the patent could not be supported, although the appli- cation of the principle, as described in the specification, was new. (1 Stark. 354; 1 Web. P. C. 76 ; 1 Carp. P. C. 351.) 110. Hill «. Thompson. [1818] Dallas, J., in delivering the judgment of the Court of Common Pleas, said : " This, like every other patent, must undoubtedly stand on the ground of improvement, or discovery. If of improvement, it must stand on the ground of improvement invented ; if of discovery, it must stand on the ground of the 66 NOVELTY: discovery 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. ... If the discovery claimed were known and made use of before, the patent is at an end. Now, with reference to this particular case, it may be proper shortly to consider, what novelty and discovery are deemed to be ; and when I say novelty and discovery, I mean to distinguish between those terms ; for it is not enough to have discovered what was unknown to others before, if the discovery be confined to the knowledge of the party having made it ; but it must have been communicated, more or less, or it must have been more or less made use of, so as to constitute discovery, as applied to subjects of this sort. The case oi Dollond has been mentioned at the bar, as also Tennant's patent for bleaching liquor, and they stand so contrasted as to illustrate the distinc- tion to which I allude." (2 B. Moo. 451; 8 Taunt. 394; 1 Web. P. C. 244.) 111. HuLLET i>. Hague. [1831] When the object of two patents is the same, but the mode of effecting that object, which is the thing claimed, is different, the prior patent does not affect the novelty of the subsequent one. A patent was taken out for improvements in evaporating sugar, &c. The specification was as follows : — " My invention consists in a method or apparatus as hereinafter described, by which I am enabled to evaporate liquids and solutions at a low temperature, &c. And my said invention and improvement consists in forcing, by means of bellows, or any other blowino- apparatus, atmospheric or any other air, either in a hot or cold state, through the liquid or solution subjected to evaporation ; and this I do by means of pipes, whose extremities reach nearly (or within such distance as may be found most suitable undeT peculiar circumstances) to the upper or interior area of the bottom of the pan or boiler containing such liquid or solution, the other extremities of such pipes being connected with larger pipes, which communicate with the bellows or other blowing apparatus which forces the air into them." The lesser pipes Novelty generally. 67 were to be equally distributed, and their lower ends on a level with each other. It was further declared, that the form of the apparatus might be varied, provided the essential properties were maintained : — Held, that taking the whole of the specifi- cation together, it appeared that the invention consisted of the particiilar method or process of forcing, by means of bellows, &c., air through the liquid subjected to evaporation, viz., by pipes connected with larger pipes, and placed as mentioned in the specijication ; and, therefore, that it was not void because another patent had been before granted to other persons for effecting the same object, by a coil of pipes (lying at the bottom of the vessel), perforated with small holes, or by a shallow cullender placed at the bottom of the vessel. (2 B. §• Ad. 370.) lis. Newtois' v. The Grand Junction Eailavay Company. [1846] Pollock, C. B. : " In order to ascertain the novelty, you take the entire invention, and if, in all its parts combined together, it answer the purpose by the introduction of any new matter, by any new combination, or by a new application, it is a novelty entitled to a patent." Alderson, B. : " In considering whether the invention is new, the proper mode is to take the specification altogether, and see whether the matter claimed as a whole is new. " Now, the whole which may be new as claimed, may con- sist in some degree of old parts, and in some degree of new parts. The question of novelty, however, will depend on whether the whole taken altogether is new, though it may in part consist of old parts, provided the patentee does not claim the old parts, but only the combination of them and the new." (5 Exch. 334 ; 20 L. J., Exch. 429.) Gamble v. Kxirtz, [1846] See 459. 113. Newton w. Vauchek. [1852] The defendant in 1839 obtained a patent for an improvement in packing hydraulic and other machines by means of a lining of soft metal, the effect of which was to make certain parts of the machines air and fluid tight. Subsequently to this the plaintiffs discovered that the same soft metal had the effect of F 2 68 NOVELTY : diminisMng friction, and of preventing the evolution of heat when applied to the surfaces in contact of machines in ra,pid motion and subject to pressure ; and he embodied the applica- tion of that discovery to machines in a patent, dated 1843. Held, that as the plaintiffs application of the soft metal diflfered essentially from that of the defendant, the plaintiffs patent was new. (6 Ex. Rep. 859 ; 21 L. J., Ex. 305.) Betts w. Menzies. [1858—62] See 163, 114. Dawu. Elet. Ch. [1865] The antecedent existence of an invention which was so far similar, that, if subsequent in date to the patent, it would have been held a colourable and clumsy imitation for the purpose of effecting the same result, did not invalidate the patent by antici- pation. (Z. Rep., 3 Eq. 496; 14 W. R. 126 ; 13 L. T. Rep., N. S. 399.) Betts v. Neilson : Bettsil De Vitke. [1868] See 168. 115. Paekes ?;. Stevens. Ch. [1869] When, in a patent for an entire combination, the novelty of any individual part of the combination has to be determined, it is best done by asking whether, upon the evidence, it could by itself have been the subject of a valid patent, (i. Rep., 5 Ch. 38 ; 18 W. R. 234 ; 22 L. T. Rep., N. S. 639.) 116. CaNNINGTON 17. NUTTALL. H. L. [1871] The Lord Chancellor, moving the judgment of the House of Lords, said : " I take it that the test of novelty is this : Is the product which is the result of the apparatus for which an in- ventor 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 effecting the object you have in view." (L. Rep., 5 H. L. 216.) His Lordship considered the following direction to a jury to be correct: " If a person takes well-known processes from a great number of sources and a great many inventions, and adapts them altogether to a perfectly new combination, for a perfectly Waiit of Novelty in a Part of an Invention. 69 new purpose, their previous use is not an anticipation of the patent.'^ {lb. 222.) (i. Rep., 5 H. L. 205 ; 40 L. J., Eq. 739.) 1 1 7. Mderat w. Clatton. Ch. [1872] Sir W. M. James, L. J., in the course of his judgment in this case, said : " I am not aware of any principle or authority upon which the exhibition of a useless machine which turns out a failure can be held to affect the right of a patentee who has made a successful machine, although there may be a degree of similarity between some of the details of the two machines." (Z. Rep., 7 Ch. 581 ; 20 W. R. 650.) Want of Novelty in a Part of an Invention. 118. Bramah ?;. Haedcastle. N. P. [1789] The patent was for a water-closet upon a new construction. It was objected that the patent, being taken for the whole water- closet, the arrangement of some of the parts only being new, was void. Kenyon, J., said : " Unlearned men look at the specifi- cation, and suppose everything new that is there. If the whole be not new, it is hanging terrors over them." The question for the jury is, whether 'the principle of the invention, and the means employed to effect the object to be obtaiaed, are new ; whether the shape is new or not is immaterial. {Holroyd, 81 ; 1 Carp. P. C, 168.) 119. HiL-L «, Thompson, , [1818J Dallas, J.: " 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." (2 B. Moo. 457 ; 8 TemnU 401 ; 1 Weh. B. C. 249.) 120. Brunton w. Hawkes. [1821] Patent for "certain improvements in the construction, mak- ing, or manufacturing of ships' anchors, and windlasses, -aaid chain cables or mooring." It was proved at Nisi Prius, that the mode of manufacturing anchors described in the plaiatiff's 70 NOVELTY: specification had never been applied before to ships' anchors; but had been applied to the adze-anchor, and the mushroom- anchor. These anchors are used only for the purpose of moor- ing floating lights or vessels intended to be stationary, and are never taken on board. The jury having found a verdict for the plaintiff, the defendant obtained a rule nisi for a new trial, which the court afterwards made absolute. In his judgment, Abbott, C. J., said : " I feel myself compelled to say, that I think so much of the plaintiff's invention, as respects the anchor, is not new, and that the whole patent is, therefore, void. The mode of join- ing the shank to the flukes of the anchor is to put the end of the shank, 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 mushroom-anchor is united to the mushroom top by which the shank of the adze-anchor is united to its other parts. It is indeed the mode by which the different parts of the common hammer, and 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 per- fectly 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 ground for h patent; but, unfortunately, the mode was well known, 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 known and long practised for a similal' purpose. It seems to me, therefore, that there is no novelty in that part of the patent as 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. Then, if there be no novelty in that part of the patent, can the plaintiff sustain his patent for the other part, as to the mooring chain ? As at present advised, I am inclined to think that the combination of a link of this particular form with the stay of the form which he uses, although the Want of Novelty in a Part of an Invention. 71 form of the link might have been known before, is so far new and beneficial as to sustain a patent for that part of the inven- tion, if the patent had been taken out for that alone. But inas- much as one of the things is not new, the question arises, whether any part can be sustained. 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 inven- tion in one article, grant a patent for that article and another. The question then is, whether, if a party applies for a patent, reciting that he has discovered improvements in three things, and obtains a patent for these three things, and in the result it turns out that there is no novelty in one of them, he can sustain his patent. It appears to me, that the case of Hill v. Thompson, which underwent great consideration* in the Common Pleas, is decisive upon that question. (4 B. §• Aid. 549.) . . . The consideration of the patent is the improvement in the three articles, and not in one ; for an improvement in only one of them would render the patent bad. The consideration is the entirety of the improvement of the three; and if it turns out there 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." {lb. 552.) (4 B. §• Aid. 541 ; 1 Carp. P. C. 405.) 121. Lewis v. Makling. [1829] Parke, J. : " The objection to the patent, as explained by the specification, may be thus stated. The patent is for several things, one of which, then supposed to be usefiil, is now found not to be so ; but there is no case deciding that a patent is on that ground void, although cases have gone the length of decid- ing, that if a patent be granted for three things, and one of them be not new, it fails in toto." (10 B. Sf C. 27 ; 5 M. 8f R. 70; 4C.SfP.58; 1 Web. P. C. 497.) 122. Kay v. Marshall, [1839] Tindal, C. J. : " If part of what is claimed is not properly the subject of a patent, or not new, the whole must be voiiJ." (5 Bincf. N. C. 501 ; 7 Scott, 561.) 72 NOVELTY: 1 S3. Gibson jj. Beand. [1842] Held, that, inasmuch as the patentees claimed eight several heads of invention, in order to support their patent they were bound to show that each of the parts was new. And that, if the patent be for a new or improved process, and the jury find the process not to be new but improved, semble that the patent is invalid. (4 M. §• G. 179 ; 4 Scott, N. R. 844 ; 1 Web. P. C. 631.) 1S4. MuNTZ V. Foster. N. P. [1844] Action for the infriagement of a patent for "an improved manufacture of metal plates for sheathing the bottoms of ships." The patentee declared the nature of his invention to consist " in making the said plates for sheathing of an aUoy of zinc and copper, in such proportions and of such qualities as, while it enables the manufacturer to roU the said compound metal into plates or sheets less difficult to work, &c., renders the said sheathing less liable to oxydation," &c. The plaintiflF claimed "the manufacture of metal plates or sheets for the purpose aforesaid, of an alloy of copper and zinc in such proportions as wiU enable the manufacturer to roll the said alloy while at a red heat, into sheets fit for the sheathing of ships," &c. Tindal, C. J., said to the jury : " The only further objection is, that hot rolling is made an essential part of the plaiutiff's invention, and is not new, inasmuch as that is pointed out in Collins's specification, and has also been carried into practice — that that renders the patent void. I cannot understand that if the invention consists of various parts — ^that is, of the compound of the plates, and he states, as he goes along, that it is an advantage that it wiU roll hot — and the subject of it is, that it shall make an alloy for sheathing — the rolling of it hot, that being known beifore, wiH iuvalidate the patent." (2 Web^ P. C. 112.) 125. Templetonv. Macfahlane. H. L. [1848] A patent was taken out for " a new and improved mode of jnanufacturing silk, cotton, linen, and woollen fabrics." The Want of Novelty in a Part of an Invention. 73 specification, and a disclaimer, set forth that the patentees claimed " the mode hereinbefore described of producing or pre- paring stripes of silk, cotton, woollen, or linen, or of a mixture of two or more of these materials, in such a manner that the weft, or lateral fibres of both cut edges of each stripe are all brought up on one side, and into close contact with each other, and the re-weaving of such stripes with the whole fur or pile uppermost, into the surfaces of carpets," &c. One of these processes was old. The judge directed the jury, that if one was new, the patent could be supported for the combination ot them, and would only be invalid if there had been a public use of both before the date of the patent: — Held, that this direction was erroneous, and that the patent was void. (1 H.L. Cas. 595.) 126. M'CoEMicK «. Gray. [1861] The specification of a patent reaping machine described the improvements as having for their object the holding of the straw in a favourable position while being cut, and the more conveniently arranging, collecting, and disposing of it when cut. Underneath a set of spear-head shaped fingers, placed at regular intervals apart irom each other, was placed the cutting- blade, formed of a thin plate of steel, toothed upon its front edge and fitted into a groove, the blade having perfect fi-eedom to slide fi-om one side of the machine to the other.. Wheel- gearing, being set in motion by the horse attached to the machine, caused a reel or gatherer to revolve, and so prevent the straws jfirom being pressed forward when coming in contact with the cutting-blade, which had a rapid reciprocating motion imparted to it by the action of a crank and connecting-rod ; the straws were thus speedily cut through, and fell backwards' on the platform. The blade was represented by two figm-es, the one blade being straight in the cutting edge, while the other was zigzag or indented. " In every case, however, it has been found (the specification stated) to be of great advantage to have the cutting edge toothed somewhat similar to a sickle, and to have those teeth divided into sections corresponding to the number of fingers, each section having one half of the teeth inclined in one direction, and the other half having the teeth 74 NOVELTY: inclined in tlie opposite direction." The inventor claimed "the construction of reaping machines according to the Improvements before 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 purposes, whether such machines are constructed m other respects as before described, or however else the same may in other respects be constructed." The published descrip- tion of a previous patent machine stated it to be " for improve- ments in that kind of the machine in which the grain is cut by the serrated edge of a straight and vibrating cutter operated by a crank, the grain being sustained by fingers. The blade is serrated like a sickle, except that the angle of the teeth is reversed for every alternate tooth. , . . The fingers for sup- porting the grain are spear-formed." Held, (Bramwell, B., dissentiente), that in an action for an infringement of the sub- sequent patent, the defendant was, by reason of this prior pub- lication, entitled to the verdict on the plea that the manufacture was not new. Held, by Bramwell, B., that in the absence of proof that the machine in its entirety was not new, the plaintiff was entitled to the verdict on that issue, notwithstanding the want of novelty in its separate parts. (7 //. ^ N.25; 31 i. J., Ex. 42; Q W. R. 809; 4 L. T. Rep., N. S. 832.) Public Use. Tennant's Case. [1802] See 142. 1S7. Lewis v. Marling. [1829] Action for the infringement of a patent for certain improve- ments on shearing machines. It was proved by the defendant, that the specification of a similar machine had previously been enrolled in America, that a model of an exactly similar machine had been exhibited to three or four persons in England, and that a manufacturer in England had commenced the construe- Public Use. 75 •tion of a macMne from the American specification. This, how- ever, was never completed, and it was proved by the plaintiffs that the same manufacturer had purchased the plaintiffs' machines. Tenterden, C. J., in summing up to the jury at Nisi Prius, said : " It is no doubt incumbent on the plaintiffs to show that their machine is new, but it is not necessary that they should have invented it from their own heads ; it is sufficient that it should be new as to the general use and public exercise in this kingdom. If it were shown that the plaintiffs had borrowed from some one else, then, of course, their patent would fail. To show that the machine was not new, evidence is given that a model has been seen by three or four persons, and that the making of a similar machine was begun ; but it appears to me, that the defendant has failed to prove that such a machine was generally known or generally used in England before the taking out of this patent by the plaintiffs." (4 C. 8f P. 55 ; 1 Web. P. C. 492 ; 1 Carp. P. C. All.) On a motion, in the Court of King's Bench, for a new trial, Tenterden, C. J., said, that the evidence showed " that until the plaintiffs' invention came out, no machine was publicly known or used here for shearing from list to list. I told the jury that if it could be shown that the plaintiffs had seen the mod6l or specification that might answer the claim of the invention, 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." (10 i?. §• C. 26 ; 4 C. §• P. 57 ; 5 ilf". §• i?. 69 ; 1 Web. P. C. 496 ; 1 Carp. P. C. 478). Jones v. Peaece. N. P. [1832] See 171. 128. MiNTEE V. MowEE. N. P. [1835] Action for the infringement of a patent which claimed " the application of a self-adjusting leverage to the back or seat of a chair, whereby the weight on the seat acts as a counter-balance to the pressure against the back of such chair, as above de- scribed." It was proved in evidence that a chair had been made by a person of the name of Brown before the date of the patent, which would have acted by a self-adjusting leverage if it 76 NOVELTY: had not been encumbered hj bad machinery. Lord Denman, C. J., said :"...! cannot conceive it would be very strong, even if he (Brown) had said he had discovered this principle of the self-adjusting leverage, when it does not appear he claimed it, took out any patent for it, or that his master did, or that there was any production of the article that could be beneficial to himself or Mr. Mower. It seems that is a very strong argu- ment to show that ia point of fact they had not made the discovery, at least how to make this principle available for general use." (1 Web. P. C. 139.) " It seems to me, if that principle (self-adjustment) might have been deduced from the machinery of the chair that was made, but that it was so encum- bered and connected with other machinery that nobody did make that discovery or even found out that they could have a chair with a self-adjusting leverage, by reason of that or any other defect in the chair actually made ; I confess it seems to me that does not prevent this from being a new invention, when the plaintiff says, I have discovered, throwing aside everything but this self-adjusting leverage itself, that will produce an effect, which I think a very beneficial one." {lb. 140.) 1S9. CoENiSH V. Keene. ]Sr. P.. [1835] Tindal, C. J., said: "The main question is, whether the principal subject lof the patent was or was not in use in England at the time of granting these letters patent. Was it or was it not, in the language of the act of parliament, such a manu- factiu-e (which has a very wide and extended meaning — you may call it almost invention), was it or was it not such an invention, at the time of making the letters patent, as was current in use. If (the invention) was at the time these letters patent were granted in any degree of general use ; if it was known at all to the world publicly and practised openly, so that any other person might have the means of acquiring the know- ledge of it, as weU as this person who obtained the patent, ±hen the letters patent are void ; on the other hand, if it were not known and used at the time in England, then, as far as this question is concerned, the letters patent will stand. ... A jnan may make experiments ia his own closet for the purpose of Public Use, 77 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, or is satisfied with the experiments, may take out a patent, and protect himself in the privilege of the sole making of the article for fourteen years ; 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 timOj and the first which 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 enjoy its benefits. That would be an extreme case on one side ; but, if the evidence that is brought In any case, when properly considered, classes itself under the description of experiment only, and unsuccessfiil experiment, that would be no answer to the validity of the patent. On the other hand, the use of an article may be so general as to be almost universal. In a case like that, you can hardly suppose that any one would incur the expense and trouble of taking out a patent. That would be a case where aU mankind would say, ' You have no right to step in and take that which is In almost universal use, for that is. In fact, to create a monopoly to yourself In this article, without either giving the benefit to the world of the new discovery, or the personal right to the value of the patent, to which you would be entitled from your ingenuity, and firom your application.' Therefore, it must be between those two (if I may so call it) limits that cases wiU range themselves In evidence, and It mu*t be for a jury to say, whether, supposing those points to be out of the question, in any particular case, evidence which has been brought before them convinces them to their understandings that the subject of the patent was in public use and operation at that time — at the time when the patent itself was granted by the Crown. If it was in public use and operation, then the patent Is a void patent, and amounts to a monopoly. If It was not, the patent stands good." (1 Weh. P. C. 508.) 78 NOVELTY: 130. Morgan V. Seaward. [1837] Patent for " certain improvements in steam-engines, and in macMnery for propelling vessels." The invention patented consisted {inter alia) in an improvement on paddle-wheels for propelling vessels, whereby the float-boards or paddles are made to enter and come out of the water in positions the best adapted for giving, full effect to the power applied. It was proved at the trial that, before the date of the patent, Galloway, the patentee, ordered an engineer, under an injunction of secrecy, to make two pairs of paddle-wheels upon the principle of the patent. The wheels when completed were packed at the engineer's factory, and sold to, and exported by, the plaintiff, who was the assignee of the patent, and the managing director of a foreign company, by whom the paddle-wheels were used abroad. The plaintiff paid the engineer for the wheels. The question before the court was, whether the invention, at the date of the patent, was new in the legal sense of that word. Parke, B., delivering the judgment of the court, said : — " The words of the statute are, that grants are to be good * of the sole working or making of any manner of new manufacture within this realm, to the first and true inventor or inventors of such manufactures, which others, at the time of the making of such letters patent and grants, did not use;' and the proviso in the patent in question, founded on the statute, is, that if the invention be not a new invention as to the public use and exercise thereof in England, the patent should be void. The word ' manufacture ' in the statute must be construed in one of two ways ; it may mean the machine when completed, or the mode of constructing the machine. If it mean the former, undoubtedly there has baen 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 the word ' manufacture ' be construed to be the mode of constructing the machine, there has been no use or exercise of it in England in any sense which can be called public." (2 M. §• W. 544 ; 1 Web. P. C. 187; H. 8f M. 55 ; I Jur. 527.) Gibson v. Brand. N. P. [1841] See 235. Public Use. 79 131. Garpentee v. Smith. [1842] Action for the infringement of a patent for certain improve- ments in locks. It was proved that a lock, substantially the same as the plaintiff's, had been put upon a gate in a public place, and used by Mr. Davies for many years before the date of the patent. At Nisi Prius, Abinger, C. B., said : " I think what is meant by ' public use and exercise,' as has been held by my predecessors before (and I think one's own common sense leads one to adopt that definition), is this: a 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 other man having invented that before, and not made any use of it ; because the mere speculations of ingenious men, which may be fi-uitful of a great variety of inventions, if they are not brought into actual use, ought not to stand in the way of other men equally ingenious, who may afterwards make the same inventions, and apply them." (1 Web. P. C. 534.) The defendant sub- sequently moved for a' new trial, on the ground of misdirec- tion. The court, however, refused even a rule nisi, and held, that " the pubHc use and exercise of an invention, means a use and exercise in public, not by the public." Alderson, B., during the course of the argument, held, that to invalidate a patent a prior public user need not continue up to the time of the taking out of the patent. {9 M. ^ W. 2,00; 1 Web. P. C. 540.) 133. Walton v. Bateman. N. P. [1842] CressweU, J., said to the jury : " "With respect to this not being a new invention, the nature of that objection is distinct and clear upon the face of it. It involves two questions for your consideration. First, was any article made before, answer- ing the purposes and having the properties of that, which the plaintiff has made and claims as the patent? (1 Web. P. C. 616.) . . . . Then even supposing that that article 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 80 NOVELTY : 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." (ifi. 619.) 133. The Househill Company v. Neilson. H. L. [1843] Lord Lyndhurst, L. C, said : " If it is proved distinctly that a machine of the same kind was in existence, and was in public use, that is, if use or if trials had been made of it in the eye and in the presence of the public, it is not necessary that it should come down to the time when the patent was granted. If it was discontinued, stiU that is sufficient evidence in support of the prior use so as to invalidate the letters patent. (1 Web. P. C. 709) .... If it is- discontinued, provided it has been once in public use, and the recollection of it has not been alto- gether lost, if it has once been publicly used, it will be suffi- cient to invalidate the letters patent, although the use may be discontinued at the time when the letters patent were granted. I apprehend that is the law, and the known law upon the sub- ject in this country. I never heard it before questioned, that the notorious public use of the invention before the granting of the letters patent, though it may have been discontinued, is sufficient to invalidate the letters patent. {lb. 710.) .... It must not be understood that your lordships, in the judg- ment you are about to pronounce, have given any decision upon this state of facts, namely, if an invention had been formerly used and abandoned many years ago, and the whole thing had been lost sight of. That is a state of facts not now before us. Therefore, it must not be understood that we have pronounced any opinion whatever upon that state of things. It is possible that an invention may have existed fifty years ago, and may have been entirely lost sight of, and not known to the public. What the effect of this state of things might be it is not necessary for us to pronounce upon." (76. 717.) 134. Stead v. Williams. N. P. [1843] Action for the infringement of a patent "for making or paving public streets and highways, and public and private roads, courts and bridges with timber or wooden blocks." The Puhlic Use. 81 defendants proved that the porch of a private dwelling-house had been paved, prior to the date of the patent, in a manner similar to that described in the plaintiff's specification. Cresswell, J., told the jury that, if they thought this paving was essentially the same as that described in the plaintiff's specification, the patent would be, in point of law, invalid. " It was intended to be public, not to be made a matter of merchandise certainly, but merely for his own private use ; but the Imowledge of it exposed to the public an article in public use, and continued to be used down to the time in question. Therefore, if you think that is the same thing in substance as that which the plaintiff claims, I think that it was publicly used before, and that he cannot have his patent. Whether it had been used by one or used by five, I do not think it makes any difference." (2 Weh. P. a 136.) 135. Stead w. Anderson. N. P. [1846] In this case, the facts, as regards user, were the same as in the case of Steady. Williams. (See 134). Parke, B., in direct- ing the jury, said: "As to the alleged user, the only question is, that a similar pavement had previously been laid down at Sir W. Worsley's. ... If the mode of forming and laying the blocks at Sir "W. "Worsley's had been precisely similar to the plaintiff's, that would have been a sufficient user to destroy the plaintiff's patent, though put in practice in a spot to which the public had not fi-ee access." (2 JVeb. P. C. 149.) 138. Hancock v. Someevell. N. P. [1851] In directing the jury upon the issue of novelty, Williams, J., said: "The defendants say that the invention had been sub- stantially published and was in use, not in secret vise, but in public use in England before the date of the patent; and, if that is so, it would entitle the defendants no doubt to a verdict upon these novelty issues. Upon that part of the case the view that it seems to me ought to be taken by you is this : you will first consider whether the material was before the public, — it is not necessary it should be used by the public — if it is in public use, not in secret use. ... If you should be of opinion the H. G 82 NOVELTY: material was so before the public, in public use, before tbe date of the patent, then the question wovild be this : it is said on behalf of the plaintiff— first of all denying that there is any evidence of the material having been at all in public use before the date of the patent, that even if it were so, that although the material was before the public, yet the invention was not— that the invention required to be discovered. On the other hand, on the part of the defendant, what is said is this : that the material being in public use, the ready means of the invention were also necessarily before the public ; because it is said that the article presented in itself such means of knowledge to the public as to enable any one of ordinary competence to re-produce the article. And if you should come to the conclusion upon the facts that the material was in use before the date of the patent, then the question resolves itself into this : "What is your opinion as to whether the publication of the material was sub- stantially a publication of the invention ? If you should find that the material was in public use, but that, notwithstanding it was so, the invention remained still a matter to be discovered, why then, in my opinion, the plaintiff's case would not be affected by the circumstance of the material being in public use. But if, on the other hand, you should think not only that the material was in public use (and I should here say that I do not think it necessary the use should be actually for sale ; if it were in public use, it need not be sold, — it would be suffi- cient, for instance, if it were in use, handed about the country for the purpose of attracting customers) ; if you should think also that, the material being so in use, it was so palpable how you could make it when you got the material, that substantially the disclosure of the material was a disclosure of the means of making it— if you do not think that, then I think the plaintiff's case is unaffected by the circumstance of the material being before the public in the way I have just been describing to you." (^Newton's London Journal, vol. 39, p. 158.) 137. Heath v. Smith. [1854] Action for the infringement of a patent for certain improve- ments in the manufacture of iron and steel. The defendant pleaded (inter alia) that the invention was not new, but had Puhlic Uge. ' 83 been publicly and generally used in England before the date of the patent. It was proved at the trial that, before the date of the patent, five persons had used the process independently, three of them without concealment, and that all five had pub- licly and generally sold, for their own profit, the article thereby produced. Held, that, upon this evidence, the plea was proved., Lord Campbell, C. J., in the course of his judgment, said : " It is said that, according to judicial determinations, the user must be public. If we are to make this addition to the statute (21 Jac. 1, c. 3, s. 6), has there not been a public user within the meaning of the words ? 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 ? " Erie, J., said : " If one party only had used the pro- cess, 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." (3 Ml. 8f Bl. 256 ; 2 Web. F. C. 268; 2 C. L. R. 1584; 18 Jur. 601 ; 23 L. J., Q. B. 167.) 138. Ee Adamson's Patent. Ch. [1856] Adamson, whilst engaged in carrying into effect a contract for the erection of a pier, invented certain machinery, which he used on the works for several months before applying for a patent, during which time it was open to the inspection of the public. Held, that the invention had been dedicated to the public, and that he was not entitled to the patent. Lord Chancellor Cranworth, in his judgment, said : " In this case the petitioner, by his own showing, had publicly used the invention for four months, not, for the purpose of testing it by experiments, but in carrying out a contract in which he was engaged, before he took any steps to obtain a patent for it. . . If the stage (the subject of the patent) had been raised simply for the purpose of testing the invention, though the inventor had been obliged to let 'it be seen by the public, the publicity so given to it would have formed no objection to the granting of the patent." (6 De G. M. ^ G. 420; 25 L. J., Ch. 456.) g2 84 NOVELTY: 139. Betts v. Menzies. [1858] Action for the infringement of a patent for making capsules. It was proved that between the time of the application for, and the issuing of the letters patent, the plaintiff manu&ctured a quantity of the capsules, in the making of which he had dis- covered improvements. They were made by his own workmen, and were not sold before the patent was granted. The defend- ant having obtained a rule to set aside the verdict, it was held, that the manufacture of capsules by the plaintiff, prior to the grant, did not invalidate the patent. (1 JSll. 8f Ell. 990; 28 L. J., Q. B. 361 ; 5 Jicr., N. S. 1164.) Lord Campbell, C. J., delivering judgment upon the point, said : " Under these circum- stances," referring to the facts proved at the trial,' " I am of opinion that the manufacturing of the capsules according to the new invention would not invalidate the patent. I quite agree that if you look at the section of the Statute of Monopolies which has been referred to (sect. 6), it abolishes monopolies altogether, and that there was no power in the Crown, after that statute passed, to grant monopolies, except with the conditions that are imposed by the reservation ; but the reservation which must be relied upon 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 him- self, and the use of it by the servants and mechanics whom he employed must be considered to have been 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 time of the monopoly, that would be fatal. But the defendant has entirely failed in showing that, because any person might have used this manufacture lawfully, until the patent was sealed, and the fourteen years had begun to run, there was a period of more than fourteen years, during which the monopoly existed. That period was not in the slightest degree exceeded, and no inconvenience or grievance is caused to any one individual nor to the country, by saying that this manufacture of the capsules according to the new process before the patent was sealed, shall not invalidate the patent," (1 Ell. §• Ell. 990 ; 28 L. J., Q. B. 365 ; 5 Jur N. S. 1065.) Puhlic Use. 8.5 140. Haewaud v. The Great Northern Railway Com- pany. H. L. [1860—1865] The plaintiffs were the executors of Wild, to whom a patent had been granted for " improvements in fishes and fish joints for connecting the rails of railways." The fishes were made of iron, with a groove on the outer surface, for the purpose of preventing the square heads of the bolts, passing through them and the rail, from turning round, and also for the purpose of procuring greater strength with an equal weight of metal than could have been obtained from a fish of the same thickness throughout. Before these letters patent had been granted, grooved iron plates, with bolts let into the groove, had been used for the purpose of fastening timbers placed vertically upon one another, or placed horizontally side by side. In one case of a bridge, a channelled plate with bolts had been used for the purpose of fishing a scarf joint where the ends of two timbers met together, but it had not been used with the view either of fixing the heads of the bolts, or with the view of obtaining greater strength with an equal weight of metal. The Court of Queen's Bench held, that this was not a prior use which would invalidate the patent. (29 L. J., Q. B. 193 ; 6 Jur., N. S. 993.) Cockburn, C. J., thus expressed himself upon this point : " Now the question is, whether the accidental use of a particular piece of machinerj^, forming part of, or the whole of, the mechanical contrivance, which may be applied after- wards to some ulterior purpose, without any intention of producing the result, is such an anticipation — such a user — of the invention, as shall prevent a patent. I entirely concur with what was thrown out in the course of the argument by my brother Blackburn— that it turns upon what is the meaning of the language to be found in the Statute of Monopolies ; that a man shall not have a patent for that which others do use at the time he takes out his patent. What is the meaning of that ? Surely it must be construed to mean, what others have invented and used for the purpose for which the man who afterwards comes forward as the inventor, and claims to have a patent, and obtains a patent, intends to use it." (29 L. J., Q. B. 199.) Blackburn, J., in the course of his judgment, said ; " I think 86 NOVELTY : that when we go back to the Statute of Monopolies, and take the words of the section, we find that the prohibition is not to extend to the ' making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manu- factures which others at the time of making such letters patent and grants shall not use.' The word ' manufacture ' has been ire- quently considered, and it extends not only to principles that may be supposed to be patented, but to the modes of applying those principles, in practical use, in the result. I do not repeat the cases which my brother Hill has already cited ; but that is the sort of manufacture. But when you look at the ' use,' it must be that kind of use which a man has when he uses a manufacture. I cannot think that a man can use a manufacture in the sense in which the words must be understood in this act, and as they would be understood by any man using them, because accidentally, and without in the least degree intending it, he does that thing which, if it were habitually done on purpose, and for the purpose of trade, would be a manufacture. I cannot think there is a use, either public or private, in that sense, unless there be some knowledge and some intention. ... I would not be understood to say, that I think it is at all essential for the public use of a manufacture that a man who reaUy uses it intending to use it, should, at the time, have ftdl knowledge of all the advantages that wiU arise jfrom the user. I can easily imagine many cases in which he might use the thing as a manu- facture, although there were many incidental advantages which he was not aware of, and that user might prevent another person from taking out another patent for those incidental advantages afterwards." (29 L. J., Q. B. 202.) On appeal to the Exchequer Chamber it was held, that the patent was bad, as, even without reference to the case of the 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 the patent in question. Willes, J., who delivered the judgment of the court, said : " We by no means say that prior use of an invention is to be of no avail because the principle upon which it acts was either unknown or misapprehended." (31 L. J., Secret Use. 87 Q. B. 198; 8 Jur., N. S. 1126.) This judgment was affirmed in the House of Lords, upon the general question of prior use, without reference to the special point raised by the judgments of the judges in the Court of Queen's Bench. (.11 H. L. Cas. 654 ; 35 L. J., Q. B. 27 ; 12 L. T. Rep., N. S. 771.) 141. Betts v. Neilson: Betts v. De Vitee. Ch. [1868] In order to establish the prior public use of a patented article, so as to invalidate the patent, it is not necessary to show that the article had been manufactured for sale. (Z. Rep., 3 Ch. 429 ; 37 L. J., Eq. 321 ; 18 L. T. Rep., N. S. 165.) Secret Use. Dollond's Patent. [1758] See SS8. 142. Tennant's Case. [1802] Action for the infringement of a patent for a method of making a bleaching liquor. The general ignorance of bleachers with respect to such bleaching liquor, until after the date of the plaintiff's patent, was proved. On the part of the defendant it was established, that a bleacher had used the same means of preparing his bleaching liquor for five or six years anterior to the date of the plaintiff's patent, but that he had kept his method a secret fi-om aU but his two partners, and two servants employed in preparing it ; and a chemist at Glasgow deposed, that he had suggested to the plaintiff a material part of the method which formed the subject of the patent. Ellenborough, C. J., nonsuited the plaintiff on two grounds — first, that the process had been used five or six years prior to the date of the patent ; and secondly, that the plaintiff was not the inventor of an indispensable part of the process. (Cit. Dav. P. C. 429 ; 1 Web. P. C. 125 ; 1 Carp. P. C. 177.) Hill v. Thompson. [1818] See 110. Cornish v. Keene. [1835] N. P. See 139. 88 NOVELTY : 143. Bentley v. Fleming. N. P. [1844] If the inventor of a macliine lend it to another in order to have its qualities tested, and that other use it for some weeks in a public workroom ; this is not giving the invention such pub- licity as to deprive the inventor of his right to obtain letters patent for it. (1 C. 8f K. 587.) Heath v. Smth. [1854] See 137, per Erie, J. 144. Smith v. Davidson. [1857] Action for infringement. The jury found that the improve- ments used by the defenders, the same as those independently invented and patented by the pursuer, were invented by the defender Davidson before Nov. 14th, 1853, the date of the pursuer's provisional specification. That Davidson did not use his invention for the purposes of his trade before Nov. 14th, 1853 ; but that the machine invented by him was capable of being so used before that date. That Davidson used his inven- tion for the purposes of his trade between November 14th, 1853, and February 1st, 1854. Held, that neither the secret user before November 14th, nor the public user after, invalidated the pursuer's patent. The Lord President said : " In order to invalidate letters patent on the ground of previous use, it is necessary not only that the use shall have been prior to the date of the letters patent, but that it should be a public and not a secret use. Accordingly, in this case, the issue puts the question, ' Whether improvements substantially the same as those mentioned ia the letters patent and specification, were known and used within the United Kingdom prior to the date of the said letters patent ? ' Now, ' known and used ' means known to the public, and openly used. The jury have by their verdict fixed the nature and extent of the use. They find that, prior to 14th November, 1853, the machine invented by Davidson was capable of being used for the purposes of his trade, but was not so used untU after tlaat date, and they have not found that it was used for any other purpose before that date, nor does it appear that it had been published or made known before that time. Indeed it appears from the evidence that Davidson at that time contemplated Publication in a Book or Specification. 89 applying for a patent, and, consistently with that, he could not do otherwise than avoid publication of his inyention. His experi- ments were over, and the invention was complete and ready for publication and to be put in use, but it was not so published or used. In these circumstances, it cannot be held that, prior to the 14th November, the improvements patented by the pursuer were * known and used ' in the sense of the issue, or in any sense which could be held as invalidating the letters patent." (19 C. S. 691.) 145, Hills v. London Gaslight Company. N. P. [1860] Bramwell, B., at the trial at Nisi Prius, said to the jury : " If a person has invented anything which is the subject of a patent and has kept it to himself, or communicated it privately to one or two, in fact, has not made it public knowledge, if anyone else discovers that invention, it is new, that is to say, new in the sense that the first invention has not been published." And again : " If a man practises his invention privately, or by way of experiment only, such a practising would not be a publication of the invention, so as to prevent a person subsequently finding it out firom being the inventor of new matter, the subject of a patent." (5 H. §• N. 336.) 146. PouPARD V. Fardell. Ch. [1869] A patent for improvements will not be bad on the ground of prior user, though the use of an article of the same kind be proved, with appendages exactly answering the words of the specification, if the appendages to the article previously used had a different object to that of the patented improvements, and did not produce the same effects. (18 W. R. 127.) Publication in a Book or Specification. 147. K. V. Arkwright. Scire facias. [1785] BuUer, J., said: "It is admitted that (this) is not a new dis- covery, for Emmerson's book was produced, which was printed a third time in 1773, and that is precisely the same as this. (1 Web. P. C. 72.) 90 XOVELTY: HuDDARD V. Gkimshaw, N. P. [1803] See 107. 148. Hill v. Thompson. [1818] Held, that a book printed and published, prior to the grant bf the patent, which in substance informed the public of what the specification of the patent professed to inform them, com- pletely negatived the novelty of the alleged invention. (2 B. Mo. 424; 8 Taunt. 375; 1 Web. P. C. 239.) 149. CoENiSH V. Keene. [1835] The defendants put in evidence the specification of a prior, patent obtained by the plaintiff, which, the defendants alleged, described the invention for which the patent in question was granted. Tindal, C. J., in addressing the jury, said: "Un- doubtedly, if you could show under the hand of the plaintiff, or anybody's hand, that the secret had been publicly communicated to the world which was intended to be covered by the subsequent patent, there is an end of that patent ; if the world at large had been informed by the specification of the colour, fabric and manufacture, which is intended to be effected by the subsequent patent, the subsequent patent must fall to the ground, otherwise a man would have nothing to do but to take out patent after patent when the former has nearly expired, and so afterwards procure to himself an unlimited privilege." (1 Weh.P. C. 510.) On a motion for a new trial in the Court of Common Pleas it was held, that a patent will not be set aside for want of novelty by proof that after the date of the patent, although before the date of the specification, the invention was described or men- tioned in the specification of some prior patent. (3 Bing. N. C. 570 ; 4 Scott, 337 ; 2 Hodg. 281; 1 Web. P. C. 512 ; 2 Carp. P. C. 371.) 150. Heurtiloup's Patent. [1836] It would seem that the deposit of a foreign work in the British Museum, which work contained the specification of a French patent for an invention, in great part the same as that for which a patent had subsequently been obtained in England was sufficient to vitiate the latter patent on the groxmd of want of novelty. (1 Web. P. C. 553.) Publication in a Book or Specification. 91 151. Morgan w. Seaward. [1837] Aldersou, B., referring to the case of Dollond's patent, cited in Boulton v. Bull, said : " If Dr. Hall had published his dis- coveries in a book, I apprehend that would have put an end to Dollond's patent." (2 M. §• W. 554; 1 Web. P. C. 190.) 1 58. The Househill Company v. Neilson. H. L. [1843] Lord Lyndhurst said : " If the machine is published in a book, distinctly and clearly described, corresponding with the description in the specification of the 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 works, without reference to what has been done." Lord Brougham : " It negatives being the true and first inventor, which is as good as negativing the non-user. The book that is generally referred to is, the ' Repertory of Arts and Sciences.' It must not be a foreign book, but published in England." • (1 fFeb. P. C. 718 n.) 153. Jones w. Bekger. [1843] Maule, J. : "I think it is an objection to the patent, and not evidence simply of an objection, that there has been a previous patent and a specification enrolled, and therefore published being enrolled, containing the invention." (I Web. P. a 550; 6 Scott, N. R. 219.) 1 54. MuNTZ «. Foster. Ch. [1843] The novelty of a patent is not impeached by a similar process, described in a previous specification, which will not, when carried out, produce the patented article. (2 Web. P. C. 94.) 1 55. MuNTz V. Foster. N. P. [1844] If a patentee has had his mind furnished with the material of his invention by a prior specification, and has merely put it into a more detailed shape, it would neither be a new invention, nor would he be the first and true inventor. (2 Web. P. C. 107.) 1 56. Stead r. "Williams. [1844] Action for the infringement of a patent granted to the plaintiff 92 NOVELTY: for " making or paving public streets and highways, and public and private roads, courts and bridges, vfith timber or wooden blocks." CressweU, J., in summing up to the jury, said : " If you should be of opinion that the plaintiff in this case was not the inventor of this mode of wood paving within this country, he is not entitled to a verdict upon that issue. If he derived the information from a foreign country, that would leave him still the true inventor within this country, provided he did not derive his information from any person here. But if he derived the information which he has given to the public, either from books or from oral communication in this country, then he is not the true inventor, and is not entitled to the patent But then the defendants do not bring home to the plaintiff the fact of his having seen any of those publications (publications put in evidence by the defendants, and said to disclose the plaintiflf's invention); and it is for you to judge, upon the whole of the matter, whether you think that he had seen these publications, and had derived his information from the stock of knowledge previously given to the public of this country, or whether he derived it from some persons residing abroad, and, therefore, having a source of information which is considered as equivalent to his own invention. It does not deprive a per- son of a right to a patent, that another person has the same thing in his head, even supposing he has heard it at the same time, providing he himself is an inventor ; but if he is not an inventor, but a mere operative, carrying out that invention which another has published, then he is not entitled to the patent. Now, upon that subject, upon this part of the case, I must draw your attention to these communications, and you will have two questions to deliberate upon respecting them : — first, whether they came to the knowledge of the plaintiff; secondly, if they did, whether they disclosed that for which he claims a patent ; for although he may have read those, if they do not disclose that which is the essential part of his patent, then it does not invade at all his privilege of having a patent right." Verdict for the plaintiff. (2 fVeb. P. C. 130.) A rule was subsequently obtained, and made absolute, for a new trial, on the ground of misdirection. The defendant's counsel contended that the mere, fact of a prior publication is conclusive against the validity of Puhlication in a Book or Specification. 93 the patent, though the patentee might have no knowledge of thCjexistence of such prior publication. The Court of Common Pleas held that, " If the invention has already been made pub- lic in England, by a description contained in a vrork, whether written or printed, which has been publicly circulated, in such case the patentee is not the first and true inventor within the meaning of the statute, whether he has himself borrowed his invention from such publication or not ; because we think the public cannot be precluded from the right of using such infor- mation as they were already possessed of at the time the patent was granted. It is obvious that the application of this principle must depend upon the particxilar circumstances which are brought to bear on each particular case. The existence of a single copy of a work, though printed, brought from a depo- sitory, where it has long been kept in a state of obscurity, would afford a Tery different inference from the production of an encyclopedia, or other work in general circulation. The ques- tion will be, whether upon the whole evidence there has been such a publication as to make the description a part of the public stock of information." (8 Scott, N. R. 472 ; 1 M.^ Gr. 842; 2 Web. P. C. 142; 8 Jur. 933; 13 L. J., C. P. 220.) 167. Stead u. Anderson. [1847] The first person who discloses an invention to the public is considered as the inventor. A knowledge and publication afi;er the plaintiff's invention does not avoid a patent granted to the true and first inventor, who, having invented, obtained his patent before his invention was used. (16 L. J., C. P. 250 ; 2 JVeb. P. C. 151.) 158. DuBBS t7.' Penn. [1849] A patent granted to A, for " improvements in the construc- tion of racks and pulleys for window-blinds and other useful purposes," besides claiming a mode of making the frames, by constructing them in a particular manner of drawn open metal tubes, claimed a mode of fixing the pulley in the frame, by turning the knob of the spindle, upon which the pulley revolved, and thereby of screwing a piece of metal, made to slide within the frame, tight to the edge of the frame ; by which means the 94 NOVELTY : pulley spindle became firmly fixed to the frame. By a patent previously granted to B., the same object was efiected by a similar method, but with the addition merely of a piece of thin metal, called an escutcheon, which worked outside the firame ; but the specification stated, that the pulleys might be made without the escutcheon. Held, that the two patents were sub- stantially the same as to one of the things claimed, and therefore that A.'s patent was void. (3 Exch. 427.) 1 59. In ee Lamenatjde's Patent. [1850] Lord Brougham : " You may have a patent as the importer of a foreign invention, because that is the construction that the courts have put upon the statute that you are the quasi inventor, if you import it for the first time. But has it ever been said that such importation of a foreign invention is negatived by a book in this country stating the foreign invention ? I am not aware that it has been held to negative the right of an importer of a foreign invention that a book had stated it before." (2 Web. P. C. 169.) 160. E. V. Steinee. Scire facias. [1851] Lord Campbell, C. J., told the jury that if the improvement for which the patent was granted was contained in the specifi- cation of a prior patent, or was described in a book, published abroad but sold in England, the patent would be void. (40 Newton's London Journal, 71.) 161. Betts w. Menzies. Ch. [1857] Sir W. P. Wood, V.-C, said : " I conceive that the law is, that where an ingenious person makes, for instance, an improve- ment in the glasses of a telescope, or the wheels of a carriage, for his own use, and which he uses accordingly, but without publishing it anywhere, or if, on the other hand, he publishes in a book his invention which he has so made and used for his own private accommodation, much more when he takes out a patent for it, there can be no case for a subsequent patentee. ... I think that if a man sits do-\vn and takes out a patent from his own conjectures, without ever having tried the experiment set Publication in a Book or Specification. 9^ forth in it, that will not invalidate a subsequent patent taken out and practically worked, especially when it turns out that the method prescribed by the earlier patent is practically useless." (3 Jur., N. S. 358.) 162. Betts v. Menzies. H. L. [1858—1862] At the trial of an action for the infringement of a patent for " a new manufacture of capsules, and of a material to be em- ployed therein, and for other purposes," the defendant contended that the process which the plaintiff claimed as his invention was not new, as it had been discovered by one Dobbs, and by him disclosed to the world by two specifications, one of the date of 1804, and the other of 1820. Campbell, C. J., in summing up to the jury, said : " I ask you whether you think that a person of ordinary skill, reading Dobbs's specifications, and having no other information upon the subject, could at once proceed to make Betts's metal, not making experiments and getting out bit by bit, but whether it is stated enough to enable him at once to set down and make Betts's metal ? " The Comrt of Queen's Bench held, that this was not the proper question to be left to the jury, for though a workman might not in that way be able to make Betts's metal, still Dobbs's specifications, or something done under them, might have disclosed some part of that which the plaintiff claimed. Rule absolute for a new trial. At the new trial a verdict was found for the plaintiff. The defendant having obtained a rule to set aside the verdict, it was held, that the plaintiff's patent was invalid, as it appeared, on a comparison of Betts's and Dobbs's specifications, that the former claimed that which had been already described by the latter. (1 Ell. ^ Ell. 990; 28 L. J., Q. B. 361 ; 5 Jur., N. S. 1164.) On appeal to the Exchequer Chamber judgment affirmed; Williams and Willes, JJ., however, differed from the rest of the court, holding that the plaintiff's patent was good, and not invalidated by Dobbs's ; since Dobbs's patent was practically incapable of being carried into effect. (1 Ell. 8f Ell. 1020 ; 30 L. J., Q. B.8\; 6 Jur., N. S. 1290.) On appeal to the House of Lords the patent was held good. Blackburn, J., in the course of hiS judgment, said : " It seems to me that, if Dobbs had made it part of the public knowledge how to produce 96 NOVELTY: a new material, as a practical result, and Betts had afterwards claimed to have a patent for, amongst other things, producing that result, he would have claimed what was not new, but if Dobbs had not made it part of the public knowledge how to produce a result, then Betts would not have claimed anything already known." Pollock, C. B., said : " I now entirely agree with my brothers Williams and Willes in what they said in the Exchequer Chamber, that a patent and a specification which are worthless and produce nothing, cannot be considered as disclosing or anticipating anything, so as to be any impediment to a subsequent real practical discovery." Lord Chancellor Westbury, after stating the facts, said : " To defeat a new patent, it must be clear that the antecedent specification dis- closed a practical mode of producing the result which was the object and effect of the subsequent discovery. A barren general description, therefore, though containing some suggestive infor- mation, or involving some speculative theory, could not be treated as avoiding, for want of novelty, a subsequent specifica- tion or invention, unless it was ascertained that the antecedent publication involved the same amount of useful information. As to the two specifications in this case, it was clear that the first was a mere general suggestion, the other a specific practical invention. The one might lead to the other ; but the latter alone complied with the conditions under which protection was given by the patent law. Here there was nothing to show that Dobbs's patent was capable of a practical application ; and on the principle contained in the answer of the judges, it was clear that the decision of the two courts below ought to be reversed. (10 H. L. Cas. 117 ; 31 L. J., Q. B. 233 ; 9 Jiir., N. S. 29 ; 11 W. R.\; 1 L. T. Rep., N. S. 110.) 163. Hills v. London Gaslight Company. [1860] The plaintiff in 1849 obtained a patent for the emplojTnent of the hydrated oxides of iron in purifying coal gas firom sulphuretted hydrogen. In 1840 one Croll took out a patent, in the specification of which, after speaking of the use of black oxide of magnesia for the purpose of removing the sulphuretted hydrogen, he said: " The same effect may be produced by the application of the Publication in a Book or Specijicaiion. 97 oxide of zinc, and the oxides of iron." The court construed this as a claim for the use of the hydrated and anhydrous oxides of iron. And, further, that as there are many oxides of iron, the hydrated and anhydrous, the natural and artificial, some of which will, and some will not answer the purpose, it is a matter of investigation and experiment to see which will. Upon this ground it was held that Croll had not anticipated the plaintiff, (o H. §• N. 312 ; 29 L. J., Ex. 409.) 164. OXLEY V. HOLDBN. [1860] A provisional specification was filed on the 17th of March, and afterwards abandoned by the inventor, who delivered another specification for the same invention on the 10th of April, in respect of which a patent was granted to him on the 12th of October, but dated as of the 10th of April. It was contended, that the filing by the plaintiff of the provisional specification of the 17th of March, and his afterwards allowing it to expire, was such a dedication to the public as prevented his obtaining a valid patent for the same invention on the subse- quent application of the 10th of April. This objection was overruled, and Erie, C. J., in delivering the judgment of the Court of Common Pleas, said : " We are of opinion that a pro- visional specification abandoned does not become public by aban- donment. The statute 15 & 16 Vict. c. 83, s. 29, authorizes the publication, but until that event it is not public Furthermore, although the first provisional specification may afibrd an objec- tion, either to receiving a second 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 enactment making the patent void, if it is so granted ; and, on the contrary, 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." (30 L. J,, C. P. 68 ; 8 Com. B. Rep., N. S. 666 ; 8 fT. R. 626 ; 2 L. T. Rep., N. S. 464.) H. i-i S8 NOVELTY: 165. Hills «. Evans. Ch. [1862] In giving judgment in this case, Lord Westbury, L. C, said: " The antecedent statement must (in order to invalidate a subse- quent patent) be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of mak- ing further experiments, and gaining ftirther information before the invention can be made useful. . . , The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. 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 full extent, will not prejudice a subsequent statement which is limited, accurate, and gives a specific rule of practical application. The reason is manifest, because much further in- formation, 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 pure metal which is extracted fi-om it." (31 L. J., Ch. 463; 8 Jur., N. S. 529; 6 L. T. Rep., N. S. 93.) 166. Lang?;. GiSBOENE. Ch. [1862] An invention was described in a book published in France, copies of which were sent to England, to a bookseller, for sale. Held, that this was a publication of the invention. The Master of the Rolls, in the course of his judgment, said : " In my opinion there are two modes by which an invention may be made public. One is by such user as would alone make it a part of the stock of public information, and the other is by the simple fact of what in law is called 'a publication.' I am of opinion, that the true result of the cases is this : — that the obser- vations to be found in them as to the circumstances which make an invention become a part of the stock of public information. Publication in a Book or Specijication. 99 apply to those cases where somebody has used the invention, not for the purpose of experiment, but for the purpose of really making use of it as a complete invention. ... A publication takes 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 country. I am of opinion that it is not at aU 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 consists, 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 bookseller's shop, there becomes, in point of law, a complete publication of the invention. . . . 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." (31 Beav. 135 ; 31 L. J., Ch. 770 ; 8 Jur., N. S. 736 ; 10 W. R. 639 ; Q L. T. Rep., N. S. 112.) 167. Young r. Feenie. Ch. [1864] Inventions in mechanics are as totally different from inven- tions in economical chemistry, as the laws and operations of mechanical powers differ from the laws of chemical affinities, and the result of analysis in the comparatively infant science of chemistry, with its boundless field of undiscovered laws and substances. Where, therefore, prior to the date of an inventor's patent, something necessary for the useful application of a chemical discovery, for manufacturiag purposes, remained to be discovered, which the plaintiff's invention supplied, held, that the manufacture, with the materials and process ia the speci- fication, was a " new manufacture not in use " at the date of the patent. (4 Giff. 511 ; 10 Jur., N. S. 926 ; 12 W. R. 901 ; 10 L. T. Rep., N. S. 861.) 168, Betts w. Neilson. Betts w. De Vitee. Ch. [1868] The specification of a patent may describe the process to be adopted so insufficiently as to invalidate the patent, and yet h2 100 NOVELTY: disclose enough to show that what is claimed by a subsequent patent is not new. A prior publication will not invalidate a patent, unless it has imparted information so as to enable anyone working upon it to reckon with confidence on the result. {L. R., 3 Ch. 429 ; 37 L. J., Eq. 321 ; 18 L. T. Rep., N. S. 165.) 169. Neilson v. Betts. H. L. [1871] Per Lord Colonsay : — It is not enough that there has been, in a former patent, a general disclosure of the object to be attained, unless there is a specification clearly pointing out the mode of attaiuing it. (i. R., 5 H. L. 2 ; 40 L. J., Eq. 317 ; 19 W. R. 1121.) Publication by Experiment. 170. Beamah w. Haedcastle. [1789] The plaintiff had made two or three of his patent machines before the date of his patent, but it was admitted that circum- stance would not of itself avoid the grant. (Holroyd, 81; 1 Weh. P. C.U,n.) 171. Jones v. Peaece. N. P. [1832] The plaintiff obtained a patent, dated 1826, for "an improved method of making carriage wheels." The defendant proved that Mr. Strutt, in 1814, had wheels constructed upon the same principle as the patent, but differing fi:om it in the details of construction. These wheels were used on a cart for a year, but subsequently getting out of order were laid aside. Patter- son, J., referring to the novelty of the invention, said to the jury : " It is not necessary to show that it was actually in use at the moment of taking out the patent. The circumstance of ceasing to use it would not make it new. The question is, was there really an invention by Mr. Strutt in use, known to others? If you should think his was an abortive attempt, and a failure, or a mere experiment which did not answer, then it would not Publication hy Experiment. 101 invalidate the plaintiff's patent." (1 Carp. P. C. 529.) After summing up the evidence, his lordship continued : " But it is for you to say, if on the whole of this evidence, either on the one side or the other, it appeared this wheel constructed by Mr. Strutt'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 had continued to use the same thing up to the time of taking out the patent, undoubtedly then that would be a ground to say that the plain- tiff's invention is not new, and if it is not new, of course his patent is bad, and he cannot recover in this action ; but if, on the other hand, you are of opinion that Mr. Strutt's was an experiment, and 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, if I may so say, although he knew nothing of Mr. Strutt's wheel, he remedied the defects of Mr. Strutt's wheel, then there is no reason for saying the plaintiff's patent is not good; it depends entirely upon what is your opinion upon the evidence with respect to that, because, supposing you are of opinion that it is a new invention of the plaintiff's, the patent is then good." {lb. 530 ; 1 Web. P. C. 122.) COKNISH V. Keene. N. p. [1835] See 1S9. 172. Galloway w. Bleaden. N. P. [1839] Tiadal, C. J., thus laid down the law with regard to the novelty of an invention : "A mere experiment, or a mere course of experiments, for the purpose of producing a result which is not brought to its completion, but begins and ends in uncertain experiments, that is not such an invention as should prevent another person, who is more successM, or pursues with greater industry the chain in the line that has been laid out for him by the preceding inventor, from availing himself of itj and having *he benefit of it." (1 W^K P. C. 525.) 102 ; NOVELTY: 173. Gibson z;. Beand. N. P. [1841] Tindal, C. J. : " It would not be sufficient to destroy the patent to show, that learned persons in their studies had fore- seen, or had found out this discovery, that is afterwards made public, or that a man in his private warehouse had by various experiments endeavoured to discover it and failed, and had given it up." (1 Web. P. C. 628.) Walton v. Bateman. N. P. [1842] See 133. 174. The HousEHiLL Company ?;. Neilson. H. L. [1843] Trials of an incomplete invention, by way of experiment, are not evidence of a prior use for the purpose of invalidating a patent. (9 C. 8f F. 788 ; 1 Web. P. C. 673.) Stead v. Williams. N. P. [1843] See 238. Bentlet v. Williams. N. P. [1844] See 143. Re Adamson's Patent. Ch. [1856] See 138. 175. ^e Newall AND Elliot. [1858] A necessary and unavoidable disclosure of an invention to others, if made in the course of mere experiments, is not such a publication as will avoid the subsequent grant of a patent, though the same disclosure, if made in the course of a pro*- fitable use of an invention 'previously ascertained to be useful, would be a publication; but an experiment performed in the presence of others, which not only turns out to be successful, but actually beneficial in the particular instance, is not neces- sarily a publication, so as to constitute a gift of the invention to the world. (4 C. B., N. S. 269; 4 Jur., N, S. 562; 27 L. J., C. P. 337.) 176. Hills v. The London Gaslight Company. [1860] Action for the infringement of a patent, obtained in 1849, for the purification of coal gas by means of hydrated oxides of iron. In 1840, C. had obtained a patent for the purification of gas, and claimed the use of aU oxides of iron for that purpose. Publication by sale. 103 It was proved at the trial that the hydrated oxides alone would answer the purpose. In working for the purpose of completing the specification of his patent, C. had used oxides of iron for the purification of gas, and the gas purified by him to the extent of 20,000 feet a day, had for many days been mixed with the ordi- nary gas, and supplied to the public from the mains of a gas company. He had renovated the material by exposing it to heat on the top of some retort beds. The oxides were originally in a hydrated state, and the heat used by him while so working was not sufficient to render them anhydrous ; but, not knowing the difference between hydrated and anhydrous oxides, and sup- posing that a better result would thereby be obtained, he directed in his specification that the material should be raised to a red heat, which would render the oxides anhydrous. The jury having found that what C. did was in the nature of an experi- ment, and was not a publication to the world, the court held that it did not invalidate the plaintiff's patent. BramweU, B., in delivering the judgment of the court, said : " The word ' experiment ' in the cases referred to has been used, not as the sole test upon a matter of this sort, but it has been used as indi- cating a class of practice. There is no particular virtue in the word ' experiment,' and it has been tised for the purpose of showing that, if there has not been a user of an invention of a substantial character, but rather of an experimental character, or of a character analogous to an experiment, why then, although the thing has been done before, it does not preclude a person fi:om taking out a patent for it; so that although what Croll did may not have been strictly in the nature of an experiment, being something more, — ^it may or may not have been so, — still the jury have so found it, and we cannot grant a new trial." (5 H. §• N. 312; 29 L. J., Exch. 409.) Publication by sale. 177. Wood v. Zimmer. N. P. [1815] Gibbs, C. J. : " The public sale of that, which is afterwards made the subject of a patent, though sold by the inventor only. 104 NOVELTY: made the patent void." (1 Holt, N. P. C. 60; 1 Web. P. C. 44 ; 1 Carp. P. C. 294.) 178. Morgan i;. Seaward. [1835] Parke, B. said : "It must be admitted, that if the patentee himself had, before his patent, constructed machines for sale as an article of commerce for gain to himself, and been in the practice of selling them publicly, that is, to any one of the public who would buy, the invention would not be new at the date of the patent. This was laid down in the case of Wood V. Zimmer, and appears to be founded on reason. For if the inventor could sell his invention, keeping the secret to himseHi and when it was likely to be discovered by another take out a patent, he might have practically a monopoly for a much longer period than fourteen years. Nor are we prepared to say, that if such a sale was of articles that were only fit for a foreign market, or to be used abroad, it would make any dif- ference ; nor that a single instance of such a sale as an article of commerce, to anyone who chose to buy, might not be deemed the commencement of such a practice, and a public use of the invention, so as to defeat the patent." (2 M. Sf W. 559; 1 Jur. 528 ; 1 Web. P. C. 194.) 179. LosH V. Hague. N. P. [1838] The publicly making and selling an article to one individual, though there be no demand or use for it by the public, will vitiate a subsequent patent. (1 Web. P. C. 205.) 180. Gibson v. Brand. ,[1841] Tindal, C. J., said : " If you perceive on the evidence, that the thing which is now sought to be protected by the patent has been used, and for a considerable period, and used so far to the benefit of the public as to be sold to anybody that thought proper to purchase it of those who made it, then it becpmes a material question, whether such mode of user is not in your judgment a public using of the article, of the process, or of the invention, before the letters patent were granted^" (1 Weh. P, C, 628,) Publication hy sale. 105 181. Carpenter v. Smith. N. P. [1841] Action for the infringement of a patent for certain improve- ments in locks. It was proved that seven and a half dozen of the locks had been manufactured before the date of the patent, and exported to America. Abinger, C. B., said : " Here you have an article, manufactured by an English manufacturer, and sold, and, in my opinion, if it was sold even for the assumed pur- pose of being sent to America, I cannot but think that that would be destructive of the novelty of the plaintiff's invention. And here let me be clearly understood ; I do not mean to say, that if a man in America employs an agent to see if he can get an article manufactured in England by a particular model, and chooses to take out a patent for it himself, but not with a view of making it public at all, I do not mean to say that that man is to be considered as not entitled to the invention afterwards, because he employs a workman to assist him in it, or, that if he had failed entirely, that some other man might make the inven- tion in England ; but where a model is sent to a workman, who sells seven and a half dozen, and sells them for a certain price, I must say I think the invention was used and publicly exercised." (1 Web. P. C. 536.) 1 82. Hancock ?;. Somervell. N. P.. [1851] An invention may come into public use by being handed about the country for the purpose of attracting customers, although no actual sale has taken place. (iVew. Lon. J-our,, vol. 39,;?. 158.) 183. MuLLiNS^. Hart. N. P. [1852] The prior deposit of articles, of novel manufacture, in a warehouse for sale, although no sale takes place, is a sufficient publication to defeat a patentee's claim to novelty in the inven- tion of similar articles. (3 Car. §- K. 297.) Heath v. Smith. [1854] See 137. 184. Honiball v. Bloomer. N. P. [1854] Jif an article, subsequently patented, be, even in a single 106 NOVELTY: instance, sold in the regular way of business, although it turns out a failure, the patent cannot be supported. (2 JVeb. P. C. 200.) 185. OxLET r. HoLDEN. [1860] The manufacture of a patent article for the piirpose of sale, and offering it for sale, although no sale is actually effected, is a user of the invention. And semble, per Byles, J., that it is equally a user, though the article is made merely as a sample. (8 C. B., N. S. 666.) Hills z;. The London Gaslight Co. [1860] See 176. Betts v. Neilson: Betts v. De Vitee. Ch. [1868] See 141. Question for the Jury. Beamah e. Hardcastle. N. P. [1789] See 118. 1 86. CoENisH u. Keen. [1837] . Tindal, C. J., in delivering the judgment of the Court, said: " The question raised for the jury was this : whether the various instances brought forward by the defendants amounted to proof that before or at the time of taking out the patent, the manu- facture was in public 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." (1 Web. P. C. 519 ; 2 Hodff. 294 ; 3 Binff. N. C. 588.) 187. Elliott v. Aston. N. P. [1840] The question of public use is for the jury ; as, whether the instances adduced show a manufacture to have been in public use. (1 fVeb. P. C. 222.) Question for the Jury. ' 107 Walton v. Bateman. N. P. [1842] See 133. Stead V. Williams. N. P. [1843] See 134. 188. MuNTZv. Foster. N". P. [1844] It is for tlie jury to say whether, on reading a prior specifica- tion and comparing it with the plaintiff's specification, the plaintiff has borrowed his invention from such prior specification. (2 Web. P. a 107.) 189. Spencekw. Jack, [1864] In a suit for an injunction to restrain the infiringement of a patent, the Court directed four issues to be tried at law, one amongst them being " whether the invention was a new manu- facture." The judge at common law, in the course of the trial of the issues, expressed his opinion that a question of law would arise, whether there was upon the facts a sufficiency of invention to warrant the granting of a patent. The judge, nevertheless, went on with the trial, and put two questions to the jury : — " Is the invention new?" and, " Is it a substantial improvement?" The jury found for the plaintiff in the affirmative upon both issues. Upon the cause coming back to equity, the Master of the KoUs took up the point of law reserved, without considering the verdict of the jury, and, on the motion of the defendants, granted a new trial : — Held, on appeal, that the judge in equity ought to have considered the verdict of the jury, and that, had he done so, the only point of law remaining would have been this, — whether a combination of things previously well known, which combination could be rightfully denominated a substantial improvement, could be the subject of a patent ? — the answer to which must have been in the affirmative. The order of the Master of the EoUs, directing a new trial, was consequently reversed. (11 L. T. Rep., N. S. 242.) ( 108 ) UTILITY OF INVENTION. Utility generally, 190. Daecy v. Allin. [1602] " Wliere any man by his o-wn charge and industry, or by his own wit or invention, doth bring any new trade into the realm, or any engine tending to the furtherance of a trade that never was used before : and that for the good of the realm : that in such cases the King may grant to him a monopoly patent for some reasonable time, until the subjects may learn the same, in consideration of the good that he doth bring iy his invention to the commonwealth : otherwise not." (^Noy, R. 182.) 191. Edgebekrt v. Stephens. [1691] The Act 21 Jac. I. intended to encourage new devices useful to the kingdom. (1 Web. P. C. 35 ; Dav, P. C. 36.) 192. Eex D. Aekweight. Scire facias. [1785] When an invention is proved to be new, the question of its materiality or utility arises. {Dav. P. C. 138 ; 1 Web. P. C. 72.) 193. Turner v. Winter. [1787] Ashurst, J., said : " I think that, as every patent is calcu- lated to give a monopoly to the patentee, it is so far against the principles of law, and would be a reason against it, were it not for the advantage which the public derive from the communica- tion of the invention." {Dav.P.C.l5\; 1 T. 7J.605; 1 Web. P. a 80.) 194. BouLTON V. Bull. [1795] Kooke, J., in the course of his judgment, said, that the public have a right to receive a meritorious consideration in Utility generally. 109 return for the protection which a patentee claims. (2 //. Bl. 478.) Buller, J., said : " The invention professes to lessen the consumption (of steam), and, to make the patent good, the method must be capable of lessening the consumption to such an extent as to make the invention useful. More precision is not necessary, and absolute precision is not practicable." {lb. 498.) 195. HuDDART V. Geimshaw. N. p. [1803] Ellenborough, C. J., told the jury that if an invention " be productive of a new end, and beneficial to the public, it is that species of invention which, protected by the king's patent, onght to continue to the person the sole right of vending." (1 Web. P. a 86; Dav.P. C. 278.) 196. Manton v. Parkek. N. P. [1814] The patent was for " a hammer, on an improved construction, for the locks of all kinds of fowling-pieces and small arms." A material part of the invention consisted in a means of letting out the air from the barrel, and causing a communication between the powder in the pan and in the barrel, without, at the same time, letting out the powder. The witnesses for the defendant having proved that the powder passed through the same hole as the air, Thomson, C. B., held : " That the utility of the invention, and the purpose of the patent, wholly fail ; for the purpose of the hole, as described in the specification, is to let the air pass through, and at the same time secure the powder from passing through ; that of itself would be an answer to the action." {Dav. P. C. 327 ; 1 Web. P. C. 192, n.) 197. Manton v. Manton. N". P. [1815] Gibbs, C. J., held that " in order to support a right to the exclusive enjoyment of any invention, it is necessary that the party who takes out the patent should show that the inven- tion is new, that it was unknown to the trade and to the world before ; that it is not only new, but that it is useful to the public." (Dav. P. C. 348.) no UTILITY: 198. BoviLL V. MooEE. N. p. [1816] Action for tHe infringement of a patent. Gibbs, C. J., " In point of law it is necessary that the plaintiff shoTild prove that this is a new and useful invention, in order to entitle himself to the present action." (Bav. P. C. 399.) 199. Hill v. Thompson. [1817-8] A patent can be supported only for an invention which is useful. {3Mer.G29; Web. P. C. 2Z1 .) Dallas, J., deliver- ing the judgment of the Court of Common Pleas, said : " If any part of an alleged discovery, being a material part, fail (the discovery in its entirety forming one entire consideration), the patent is altogether void." (8 Taun. 401 ; 2 B. Moore, 457; Web. P. a 249.) SOO. Lewis v. Maeling. [1829) Parke, J., in the course of his judgment, said : " The pre- rogative of the crown as to granting patents was restrained by the statute 21 Jac. 1, 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 it has been proved to be new." (10 uB. §• a 28 ; 4 Car. §• P. 58 ; 1 Web. P. C. 497.) 201. Lewis v. Davis. N. P. [1829] A patent being for an improvement on a former patent, it is not material whether a machine made according to the first patent would be useful or not, if it be shown that a machine constructed according to the subsequent patent is useful. (3 Car. Sf P. 504; 1 Web. P. C. 489.) 203. Mintee v. Wells. N. P. [1834] Alderson, B. : " The plaintiff, in order to establish his right. Utility generallij. Ill must show that the Invention is new, and that it is useful.'" (1 Web. P. C. 129.) 303. EussELL V. Cowley. [1835] Lyndhurst, C. J. : " The first question is, is this a new and Mse/M/invention ? " (1 Web. P. C. 467.) S04. Morgan w. Seawaed. [1837] In delivering the judgment of the Court, Parke, B., said : " A grant of a monopoly for an invention which is alto- gether useless, may well be considered as ' mischievous to the State, to the hurt of trade, or generally inconvenient,' within the meaning of the statute of James I., which requires, as a condition of the grant, that it should not be so, for no addition or improvement of such an invention could be made by anyone during the continuance of the monopoly, with- out obliging the person making use of it to purchase a useless invention ; and on a review of the cases, it may be doubted whether the question of utility is anything more than a com- pendious mode, introduced in comparatively modern times, of deciding the question, whether the patent be void under the statute of monopolies." (2 M. §• W. 562; Mur. §• H. 61 ; 1 Jur. 529 ; 1 Web. P. C. 197.) 305. Ee Cutler's Patent. Ch. [1839] This was a petition to the Lord Chancellor, to affix the great seal to letters patent, obtained by Cutler, against which a caveat had been lodged. It was urged that Cutler's invention was not usefial, and that, therefore, the great seal ought not to be affixed to his letters patent. Lord Cottenham, L. C, re- ferring to this objection, said : " It is not very easy sitting here to form any very conclusive opinion as to the usefulness, nor is it very necessary to inquire into that (particularly considering from whom the objection emanates), because if it be so per- fectly useless as is represented, it wiU interfere with no man's rights, and it will be a mere dead letter, which no man would wish to imitate if they had the right." (1 Web. P. C. 426.) 112 UTILITY: 206. Crane w. Peice. [1842] Tindal, C. J. : " If the invention be new and useful to the public, it is not material -whether it be the result of long experi- ments and profound research, or whether by some sudden and lucky thought, or mere accidental discovery." (4 M. §• G, 605 ; ] Web. P. C. 411.) S07. Walton v. Bateman. N. P. [1842] CressweU, J. : " Then, gentlemen, we come to another objection — I really do not know what plea it applies to — that the invention claimed by the patent is not of any public use or benefit. It is supposed that that may be a question under the ' new manufacture.' I entertain great doubts upon that, be- cause a thing may be a new manufacture, and perhaps may not be of any public use or benefit." (1 Web. P. C. 623.) 208. How V. Taunton. [1844] Patent for the invention of a nipping lever, for causing the rotation of wheels, shafts, or cylinders, under certain circum- stances. The specification claimed as the invention "the nipping lever, with its tusk and sliding-box, applied to a rimmed wheel, or to a rimmed flange, for the purpose of causing the same to rotate or move together vnth any shaft, cylinder, or other suitable machinery which may be attached thereto." The nipping lever was not new ; but the application of it by means of the sliding- box was new : Held, that it must also appear that the use of sliding-box was essential to the invention. (9 Jur. 1056.) 209. Simpson v. Hollidat. Ch. [1864] It appears to be necessary that a patented invention should be useful, not only at the time the patent is granted, but also during the whole term of the grant. (20 New. Lon. Jour., N. S. 107, 120.) Degree of Utility. 113 Degree of Utility, Hawoeth v. Hardcastle. [1834] See 216. 210. Cornish w. Keene. N.P. [1835] Action for the infringement of a patent for " an improvement or improvements in the making or manufacturing of elastic goods or fabrics, applicable to various useful purposes." Tindal, C J. : " It is a circumstance in the case that it is found useful for surgical purposes. The patent, however, is not taken out for that purpose, and it would not be sufficient in order to main- tain the patent, on the ground of its being an improvement, to show that it was an improvement in surgical cases for bandages only, because the patent is not only confined to that, but they must prove also that it is generally an improvement with respect to the general uses of that fabric or manufacture which was intended — that is, with respect to braces, garters, and other articles that are made of it. The evidence on the part of the plaintiffs states that it is cheaper, and cheapness is an improve- ment, and not to be laid aside and thought nothing of, and you are to consider it among other things ; but that is not the only thing to be considered, because they may have a thing too cheap to be useful, and you must see whether it combines with it the other property of utility which the former fabric, when used for the same purpose, possesses." (1 Web. P. C. 506.) 211. Morgan i;. Seaward. N.P. [1836] Action for infringement. Defendants denied the utility of the plaintiff's invention. Alderson, B., directing the jury upon this point, said : " It is not for you to consider to what extent the thing is useful. If it is a useful invention, then it is a subject to be protected by patent ; and if^ on the other hand, it is of no use, then it is no subject to be protected by patent. The issue is, whether it is of any use at all." (1 fVeb. P. C. 172.) 212. LosH V. Hague. N. P. [1838] Action for the infi-ingement of a patent for " certain improve- ments in the construction of wheels for carriages to be used on II. I lU UTILITY: railways." Plea, inter alia, " that the said supposed improve- mentSj &c are only trifling and insignificant alterations in the mode of making wheels before then known and in public use, and are not legal subjects for the grant of the said letters patent." Abinger, C. B., in directing the jury, said : " I observe one of the pleas states, that the improvements are something trifling and insignificant. If that is the improvement, you will consider whether it is worth a patent or not." (1 Web. P. C. 202.) 813. Neilsonw. Hakfokd. N. P. [1841] An invention to support a patent must be productive prac- tically of some beneficial result, no matter how great, provided it is sufiicient to make it worth while (the expense being taken into consideration) to adopt it. (1 Web. P. C. 314.) 214. Tetlet v. Easton. N. P. [1852] When a machine can do that which, apparently, no other machine can be got to do, it must be pronounced useful, even though its cost is very considerable. It is not necessary that a patent should be so useful as to exclude everything else ; it is quite sufiicient if on any occasion it is useful. {Macr. P. C. 63.) Want of Utility in a Part of an Invention. SI 5. Lewis w. Marling. [1829] Where a patentee of an improved machine claimed as his invention a part of it which turned out to be useless, it was held that this did not vitiate the patent, the specification not describing it as essential to the machine. Bayley, J., said: " If the party knew that it (the useless part of the machine) was unnecessary, the patent would be bad on the ground that this was a deception, but if he thought that it was proper, and only by a subsequent discovery finds out that it is not necessary, I think that it forms no groimd of objection." (I Web. P. C. 496.) TFant of Utiliti/ in a Part of an Invejition. 115 216. Haworth v. Haedcastle, [1834] In an action for the infringement of a patent the jury found as follows : " The invention is new and useful upon the whole, . . . but they also find that the inachine is not useful in gome cases for taking off goods." Verdict for the plaintiff. The court subsequently refused to make absolute a rule nisi for a nonsuit, on the ground that the jury had, by their special finding, negatived the usefulness of the invention to the full extent of what the patent and specification had held out to the public. Tindal, C. J., delivering the judgment of the court, said : " The jury find ' the invention is new and useful upon the whole ; . . . but they also find that the Inachine is not useful in some cases for taking off goods.' . . . But we think we are not warranted in drawing so strict a conclusion from this finding of the jury, as to hold that they have intended to negative, or that they have thereby negatived, that the machine was useful in the generality of the cases which occur for that purpose. After stating that the machine was useful on the whole, the expression, that ' in some cases it is not useful to take up the cloths,' appears to us to lead rather to the infer- ence 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. . . . "We think that we should act with great hazard and precipitation if we were to hold that the plaintiff ought to be nonsuited, upon the ground that his machine was altogether useless for one of the purposes described in his specification." (1 Weh. P. C. 483; 4 M. §• Sc. 732; 1 Bing. N. C. 189.) 217. Morgan v. Seaward. [1837] Alderson, B., " 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 use- less, always supposing that such patent contains no false sugges- tion." (1 TFeb.P. a 197.) i2 116 UTILITY: Obstructing Patents. 218. CkOSSLETW. POTTEK. N. P. [1853] Pollock, C. B., in addressing the jury, said : " A patent for an invention which is merely to obstruct every subsequent im- provement, which is to step in and prevent the exercise of the ingenuity of mankind, and the introduction of other inventions adapted to the particular subject to which the invention may be applicable, — a patent which has for its object to snatch and grasp at everything in all directions, which may possibly come within the general language the patentee may choose to adopt in his specification, — a patent, the object of which is, not to benefit the world by its communication, but to obstruct by the very general character of the claims made for conferring peculiar privileges on the patentee ; — such a patent as that, in my judg- ment, cannot be supported." {Macr. P. C. 245.) Question for the Jury. 219. Hill v. Thompson. [1817] The utility of an invention is a question for the jury. (3 Mer. 630; Web. P. C. 237.) 220. Bloxam v. Elsee. N, P. [1825] Abbott, C. J., left it to the jury to say whether the in- vention was useful. (1 C. Sf P. 565.) 221. CoENiSH V. Keene.. N. p. [1835] The evidence respecting the utility of a patented article being conflicting, and the article itself being produced, it is for the jury to use their own judgment of the matter, and determine whether it is usefvd or not. (1 Web. P. C. 506.) 222. Morgan v. Seaward. N. P. [1836] The circumstance of an invention not getting into general use is a presumption against its utility. (1 Web. P. C. 186.) See also 211. Question for the Jury. 117 LosHr. Hague. N. P. [1838] See 2 IS. S23. Neilson v. Harford. N. P. [1841] It is not necessary that each part of an invention should have been actually tried and proved to answer ; the evidence of scientific persons, that it would answer, may be sufficient. (1 Web. P. C. 314, 316.) 2S4. Macnamara v. Hulse. N. P. [1842] Where, in an action for infi:inging a patent for blocks for pavement, the plaintiff claimed as his invention that his blocks were bevelled both inwards and outwards on the same side, but the specification did not state at what angle the bevels should be made ; and one witness stated that the angle was material, but another witness stated that any angle would be of some benefit ; Lord Abinger, C. J., said : " It will be for the jury to say whether any particular angle is essential, or whether any angle whatever is useful and beneficial." {C. ^ M. 471.) ( 118 ) WHO MAY BE A PATENTEE. First and True Inventor. 225. Edgeberky v. Stephens. A gi-ant of a monopoly may be to the first invBntor, by the 21 Jac. 1; and, if the invention be new in England, a patent may be granted, though the thing was practised beyond sea before ; for the statute speaks of new manufactures within this realm ; so that, if it be new here, it is within the statute ; for the act intended to encourage new devices useful to the king- dom, and whether learned by travel or by study, it is the same thing. (2 Salk. 447; Comb. 84; Dav. P. C. 36 ; 1 Web. P. C. 35 ; 1 Carp. P. C. 35.) Humphkey's Patent. See 103. 226. Dollond's Patent. [1758] Patent for a new method of making the object-glasses of refracting telescopes. Before the date of the patent Dr. HaU had made and used object-glasses, of a precisely similar con- struction in his own observatory, but had not made any pub- lication of their mode of construction or use. Held, that this was not such a prior use as to invalidate the patent. ( Cit. in Boulton V. Bull, 2 H. Bl. 469,470, 487 ; Dav. P. C. 170, 171, 172, 199 ; 1 Web. P. C. 43 ; 1 Carp. P. C. 28.) R. V. Arkweight. [1785] See 106. Tennant's Case. [1802] See 142. 227. Forsyth v. Eivieke. [1819] If several persons simultaneously discover the same thing, the party first communicating it to the public, under the protection First and True Inventor. 119 of letters patent, becomes the legal inventor. ( Chitt/s Prerog. Crown, 182 ; 1 Weh. P. C. 97 ; 1 Carp. P. C. 401.) 228. R, V. Wheelek. Sci. fac. [1819] Abbott, C. J., delivering the judgment of the court, said : " 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 consequently 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." (2 B. §• Aid. 349.) 229. Barber u. "Walduck. N. P. [1823] Action for the infringement of a patent for an improvanent in making hats. One of the plaintiff's witnesses proved that he had made the improvement, which was the subject of the patent, while employed in their workshop. Holroyd, J., ordered a nonsuit. {Cit. 1 C. Sf P. 567 ; 1 Carp. P. C. 438.) 230. Blqxam v. Elsee. N. P. [1825] Action for the infringement of a patent for "a. machine for making paper in single sheets without seam or joinings." The principle of this invention consisted in receiving the pulp to be made into paper upon an endless wire web, stretched upon re- volving cylinders, so that the paper was moved forward as fast as it was formed. The patentee discovered the principle of this invention, but the mechanical details necessary for carrying the invention into complete effect, were numerous and complicated, and therefore he engaged Mr. Donkin, an engineer, to give him his professional assistance, and several parts of the machine were suggested to the patentee by Mr. Donkin. It was objected by the defendants that the patentee, under these circumstances, could not be the inventor; but it was answered that Mr. Donkin was merely acting as the patentee's servant, and the objection was not sustained. {I C. 8f P. 567; 1 fVeb. P. C. 132. n.; .1 Carp. P. a 434.) 120 WHO MAY BE A PATENTEE : 231, Lewis u. Mauling. [1829] Action for the infringement of a patent for certain improve- ments on shearing machines. It was proved by the defendant, that the specification of a similar machine had previously been enrolled in America, that a model of an exactly similar machine had been exhibited to three or four persons in England, and that a manufacturer in England had commenced the construc- tion of a machine from the American specification. Bayley, J., said : " If it had been shown that the plaintiff had seen the model, and had borrowed from it, he would not have been the true inventor, and would, therefore, have misled the Crown; but if I made a discovery, and am enabled to produce an effect from my own experiments, judgment, and skill, it is no objec- tion that some one else has made a similar discovery by his mind, unless it has become public. So, if I introduce a dis- covery, bond fide made, I may have a patent for it, though a person might have received privately a communication from abroad, which would have enabled him to have made the machine." (1 Web. P. C. 493.) 232. MiNTEK V. Wells. N. P. [18.34] Action for the infringement of a patent for " improvements in the construction, making, or manufacturing of chafrs." The patentee claimed "the application of a self-adjusting 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." The defendants contended that the invention was made, not by the patentee, but by a person by the name of Sutton. Alderson, B., in summing up to the jury, said : " He (the patentee) claims under the patent, stating it in his petition to the Crown, that he is the true inventor of the machine in question ; and if it could be shown that he was not the true inventor, but that some one else had invented it, the Crown is deceived in that suggestion, which was the foundation on which it granted the patent ; and then the law is, that a patent obtained under such circumstances would be void, and no action could be maintained against a party for the infringe- ment of the patent, by reason of the suggestion to the Crown First and True Inventor. 121 not being true. . . . The essence of the claim to invention, and undoubtedly his claim, is the application of a self-adjusting leverage to the chair, and if it could be shown that any self- adjusting leverage had been, before the plaintiff's patent, applied to a chair, the patent would be void, because the priority of the specification given to him would claim every species of the application of a self-adjusting leverage to the back and seat of a chair. ... If Sutton suggested the principle to Mr. Minter, then he (Sutton) would be the inventor. If, on the other hand, Mr. Minter suggested the principle to Sutton, and Sutton was assisting him, then Mr. Minter would be the first and true inventor, and Sutton would be a machine, so to speak, which Mr. Minter uses for the purpose of enabling him to carry his original conception into effect." (1 Weh. P. C. 127 ; 1 Carp. P. a 622.) S33. CoENisi-i V. Keene. N. P. [1835] Action for the infringement of a patent, which was held invalid for want of novelty. Tindal, C. J., in summing up to the jury, said : " Sometimes it is a material question to deter- mine whether 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 conferred upon the public by the discovery, but also to the ingenuity of the first inventor ; and, although it is proved chat it is a new discovery so far as the world is concerned, - yet if anybody is able to show that although that was new — that the party who got the patent was not the man whose ingenuity first discovered it, that he had borrowed it fi:om A. or B., or taken it fi:om 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 in- ventor of it." {1 Web. P. C. 507.) See also 1 39. 234. LosH V. Hague. N. P. [1838] Abinger, C. B. : " 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 122 WHO MAY BE A PATENTEE: of them be not original and not improvements, his patent is void." (1 Web. P. C. 203.) 235. Gibson v. Brand. N. P. [1841] Tindalj C. J., in summing up to the jury in this case, said : " A man may publish to the world that which is perfectly new in all its use, 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 learnt it from a specification, and then the Legislature never intended that a person who had taken all his knowledge from the art of another, from the labours and assiduity or ingenuity of another, should be the man who was to receive the benefit of another's skill. There is some distinction, although perhaps not a very broad one, between the plea which alleges the plaintiflfs were not the first and true inventors, and that on which I conceive the principal question between the parties will turn — the third in order, viz., whether the subject-matter of this patent was known in England at the time the letters patent were granted. It is quite clear, if on the evidence you have heard you are satisfied that this which is alleged to be a discovery by the plaintiifs had been publicly known and prac- tised in England, there is an end to the validity of the patent." (1 Web. P. C. 628.) S36. Walton v. Potter. [1841] Tindal, C. J. : " Though the matter may not have been used, the party is not entitled to his patent unless he is the first and true inventor ; therefore, if the svibject-matter of the patent has been discovered, has been published in a dictionary, for example, though it has not been reduced into practice, if a man merely adopts it, the merit is so small that his patent for it would be worth nothing." (1 Web. P. C. 592.) 237. Walton v. Bateman. N. P. [1842] Cresswell, J. : " The party obtaining the patent must be the true and first inventor in their country. If he import from a foreign country that ' which others at the time of the niakino- of First and True Inventor. 123 sucli letters patent and grants did not use,' it will suffice." (1 Web. P. C. 615.) 238. Stead v. Williams. N. P. [1843] Cresswell, J., in directing the jury, said : " Then comes this question, that, long before the patent was granted, the invention was publicly known in this country. Now, as to its being publicly known in this coimtry, I take it that there is a great difference between the knowledge of it as a thing that woidd answer, and was in use, and the knowledge of it as a mere experiment that had been found to be a failure and thrown aside. If you are dealing with an article of merchandise, or with an article of ordinary use — if a person has had a scheme in his head, and has carried it out, but, after a trial, has thrown it aside, and the thing is forgotten and gone by — then, another person re-introducing it, may, within the meaning of this Act, be the inventor and the first user of it, so as to justify a patent." (2 mb. P. C. 135.) See also 156. S39. MuNTZ V. Foster. N. P. [1844] Tindal, C. J. : " First of all, it is said that the manufacture which is described in this patent is not a new one. In the next place it is said, even if it is a new one, that the plaintiff is not the true and first inventor. Now these two objections go very nearly to the same point ; they are not precisely the same, there may be a difference between them, but it will be very much the same train of reasoning that will apply to the one as to the other. It may be very true that the manufacture might be a new manu- facture, not known in this kingdom till the time of the patent, and yet it might also be true that Mr. Muntz might not be the first and true inventor ; because, although a man may take it from an old book, or from some description that he has got elsewhere, where it has been worked, although not generally known, that secret which he then claims from the Crown the benefit of a patent for, as if he had been the inventor (and in that case he would not, as you perceive, on the supposition that I have made, be within the ordinary meaning of the words ' the 124 WHO MAY BE A PATENTEE : first and true inventor,' although no one knew it or used it at the moment) — yet, if he had taken it from Collins's specification, which is the only part of the evidence that will touch the plea : if he had taken from that the account of the process for making this new manufacture, of which he afterwards avails himself by laying his claim before the Crown ; why, he would not be entitled to that benefit which the statute of James intended, namely, for the merit of having by experiment, or by imitation, or by his sagacity, made a discovery himself; but would only be clothing himself with a discovery which would be the result of another man's labour." (2 Weh. P. C. 102.) 240. Allen v. Rawson. [1845] In this case, Tindal, C. J., said : " It would be difficult to define how far the suggestions of a workman, employed in the construction of a machine, are to be considered as distinct inventions by him, so as to avoid a patent incorporating them taken out by his employer. Each case must depend upon its own merits. But, when we see that the principle and object of the invention are complete without it, I thmk it is too much that a suggestion of a workman, employed in the course of the experiments, of something calculated more easily to carry into effect the conceptions of the inventor, should render the Avhole patent void." (1 C. B. 574.) Stead v. Anderson. [1847] See 157. 241. Nickels v. Ross. [1849] A party availing himself of information fr-om abroad is an inventor within 21 Jac. 1, c. 3, s. 6. (8 C. B. 679.) 242. /« re Honiball's Patent. [1855] A first and original inventor means a person who could claim the merit of first invention, without reference to the user. (9 Moo. P. C. C. 378.) Hills v. London Gaslight Cojipant. N. P. [1860] See 145. In re Henry's Application. [1872] See 253. Importer of Foreign Invention. 125 Importer of Foreign Invention. Hasting's Patent. [1567] See 101. Matthey's Patent. [Eliz.] See 102. Edgebeery v. Stephens. See 225. Daecy v. Allin. [1602] See 104. Walton v. Bateman. N. P. [1842] See 237. Stead v. Williams. [1844] See 156. 243. Beaed v. Egerton. [1846] A patent granted to a British subject, in his own name, for an invention communicated to him by a foreigner, the subject of a state in amity with this country, is not void, although such patent be in truth taken out, and held by the grantee, in trust for such foreigner. (3 C. B. 97.) Nickels r. Boss. [1849] See 241. In re Lamenaude's Patent [1850] See 1 59. 244. Milligan v. Maesh. [1856] When a patent is taken out as for an original invention, the subject of the patent. being in fact a communication from a British subject resident abroad, the patent is void. Semble, that an agent in this country of an inventor abroad receiving a confidential communication of an invention, not in a prac- tically useftil state, may take out a patent for his own benefit, if he, pursuing the idea thus thrown out, discovers a practical way of carrying it into effect. (2 Jur., N. S. 1083.) Eenaed v. Levinstein. [1864] See 446. ( 126 ) APPLICATION FOR LETTERS PATENT. Concurrent A])plicants. 24i5. Ex parte Byeh. [1812] Wliere there are concurrent applications for letters patent for the same object, he who obtains the great seal first, by getting quickest through the various stages, will have the sole right at law. {Holroi/d, 59.) 246. CoKNiSH V. Keene. N. P. [1835] Tindal, C. J., "The first who comes to the Crown and takes out a patent is the man who has a right to clothe himself with the authority of the patent, and enjoy its benefits." (1 f^Feb. P. a 508.) S47. In re Simpson & Isaacs' Patent. [1853] Objections were filed to an application for a patent, and were overruled by the law officer of the Crown ; he issued his warrant to seal, to which also objections were filed. On a petition by the patentees, the Court made an order to affix the great seal without sending the case back to the law officer. The Lord Chancellor said : " I think that Lord Eldon was correct in Di/er's case. I shall follow the rule which he there laid down. In that case both parties invented the same thing at the same time, and the question was, who was to be preferred, the first who applied for, or the first who obtained, the patent? His lordship decided in favour of the latter. In that case the patentees first applied, and the Act means to put the order for protection granted at the time of the application on the same footing as the patent stood before ; you are therefore the first entitled. I am of opinion, too, that you are entitled to have the patent sealed. No doubt, in advising the Crown to seal letters patent, I ran the risk of occasioning great injury to parties, by Concurrent Applicants. 127 driving tliem into litigation ; but by the contrary course I run the risk of doing irreparable injury. In my opinion, the question is the same as if, under the old law, application were being made to me for letters patent to be granted at the time when the application for this patent was made. This applica- tion is rested on two grounds, first, that these patentees 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." (21 L. T. Rep. 81.) 248. Heath v. Smith. [1854] Campbell, C. J. : " When I was Attorney-General, and it appeared that there were two contemporaneous discoveries, I used to give a patent to the two jointly." Sir A. E. Cockburn, Attorney-General : " I have adopted the same practice, but I have found parties ordinarily unwilling to accept patents on such terms." (2 Web. P. C. 271.) S49. In re Lowe's Patent, [1856] L. and W. were joint patentees of an invention for propelling vessels, and whilst engaged in making experiments with regard to it an accident happened, which appeared to have suggested to each an improvement upon the method previously adopted. They communicated their ideas to each other, but neither took any steps to secure the benefit of the invention for two years, when L. applied for a patent, against the sealing of which W. entered a caveat, on the ground that he (W.) was the first inventor. The evidence on this point being conflicting : — Held, that L., having first applied, was entitled to have his patent sealed, though possibly W. might be able to get it repealed upon scire facias. (25 L. J., Ch. 454.) In re Russell's Patent. [1857] See 314. 128 APPLICATION FOR LETTERS PATENT: 250. In re Bates & Redgate's Application. [1869] The existence of a prior provisional specification is not a ground, in the absence of fraud, on which the Attorney-General ought to refuse to allow a second provisional specification by another inventor to be filed; and, in the event of the later applicant for provisional protection being the first to obtain a grant of letters patent, his patent is a bar to the grant of letters patent for the same invention to the earlier applicant for such provisional protection. (Z. R., 4 Ch. 577; 38 L. J., Ch. 501.) 251. ^x^arfe Manceaux. [1870] Where the law officer has reported that part of an invention, for which a patent is sought, is identical with part of an inven- tion which is the subject of an existing patent, a second patent wiU not, except under special circumstances, be granted for that part, although the validity of the first patent is disputed. (L. R., 6 Ch. 272.) 252. Ex parte ScoTT & Young. [1871] When a servant filed a provisional specification for an inven- tion, after which the master filed a provisional specification for a similar invention, and subsequently filed a complete specifica- tion and obtained letters patent : — Held, that, under the circum- stances, which threw the gravest suspicion on the bona fides of the master, the great seal might be aflSxed to the letters patent for the servant's invention, and that the letters patent might bear the date of his provisional specification. {L. R., 6 Ch. 274.) 253. /« re Henky's Application FOE Letteks Patent: Re Fakquharson's Application foe Letters Patent. [1872] An applicant for a patent does, not, by lodging a complete specification under the 9th section of the Patent Law Amend- ment Act of 1852, acquire the rights of a patentee so as, during the six months' protection, to prevent any other person who has previously obtained provisional protection for a similar inven- tion from obtaining a patent. {L. R., 8 Ch. 167 ; 42 L. J., Ch. 363.) Grounds of Opposition. 129 Selborne, L. C. : " I apprehend that it would be no answer to a bond Jide applicant for a patent, who has himself, by his own ingenuitj, made a useful invention, and has applied for a patent before anyone else claiming to have made the same invention — it would, I say, be no answer to him, assuming the absence of fraud or communication, to allege that experiments had been going on, or even drawings made, by another inventor, .... If he (the applicant for a patent) were the true inventor, the circumstance of something having taken place somewhere else, which was not disclosed to the world, and as to which no prior apphcation 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." (i. i?., 8 Ch. 170.) In re Gething. [1874] See 381, In re Harbison. [1874] See S82. Grounds of Opposition. 354. In re Fox. [1812] The owners of a patent opposed the gi-ant of a patent for improvements therein, on the ground that the alleged invention was borrowed from their patent. The resemblance of the two inventions was denied. The Lord Chancellor sealed the patent. (1 Web. P. C. 431 ; IV.Sj-B. 67.) 355. In re CuTLEK. [1839] Semble, the sealing of a patent wiU not be stopped merely on the ground of the alleged want of utility. 1st. Because the question cannot be successfully determined. 2nd. Because, if useless, the patent, when granted, would be of no value. (1 Web. P. C. 426.) 356. In re Samuda: In re Griffiths. [1846] Prior public user is a bar to the grant of letters patent for an invention, and when the law officers report that the invention has H. It 130 APPLICATION FOIl LETTERS PATENT: previously been published in any part of the United Kingdolm, no patent for it can be granted. (Cited Hindmarch, p. 534.) 257. Ih re Adamson's Patent. [1856] A contractor for certain works had, in the progress of his undertaking, invented an apparatus which could only be tested in a place available to the public. After having used the appa- ratus for four months in the progress of the work, he applied for a patent : — Held, that such a case amounted to a dedication to the public, and that the petitioner was not entitled to the patent. An experiment might have been made, and if made bond fide only for the purpose of testing the merits of the invention, it would not have been a dedication to the pubHc. But when, as in this case, thousands of persons have the opportunity of seeing the apparatus at work for four months in the regular course of the undertaking, it is quite clear that no intention of applying for a patent originally existed. Under such circumstances, and after the lapse of such a time, there has been a dedication. (6 De G., M. §• G. 420.) 258. In re Tolson's Patent. [1856] Letters patent sealed in a case where the evidence showed great similarity between the alleged invention and one for which a patent was already in force. (6 De G., M. §• G. 422.) 259. In re Russell's Patent. [1857J In general, where there is a doubt as to the validity of the grounds of opposition to a patent, the proper course is to grant the letters patent, as an error in refusing them would be irre- mediable, while one in granting them would not. (2 De G. §• J. 130.) 260. In re Spence's Patent. [1859] Unless a patent is clearly bad, the Lord Chancellor will not refuse to seal it, as the effect of such refusal, if erroneous, would be irremediable, whereas the sealing a bad patent leaves every one at liberty to dispute it. (3 De G. §• J. 523.) Grounds of Opposition. 131 S61. Neavall v. Elliott. [1863] The use of an invention before the public, only for ascertain- ing its practicability, is no dedication to the public, although used in carrying out a contract. (1 if. §• C. 797 ; 9 Jur., N. S. 359; 32 L. J., Excli. 120; 11 W. R. 438.; 7 L. T. Rep., N. S. 753.) 262. In re Tolhausen's Patent. [1866] In a case where there was but one affidavit distinctly swear- ing to public use and sale of an alleged invention prior to the date of the application for a patent, the great seal was ordered to be affixed to the patent. (14 TV. R. 551.) 263. In re Vincent's Patent. [1867] The sealing of a patent was o]pposed on the ground of- pre- vious public user of the invention, in reply to which the appli- cant made the case, that such user was obtained by fraud on him, so as to bring the case within 15 & 16 Vict. c. 83, s. 10 : — Held, that such a case ought to be tried before a jury, and that the patent ought to be sealed that such trial might not be precluded. {L. R., 2 Ck. 341.) 264. In re Manceaux's Patent. [1870] Letters patent will not be sealed where a prior patent has been granted for the same invention, and there is no fraud, although the validity of the first patent is disputed. (L. R., 6 Ch. 272 ; 18 TV. R. 1184.) 265. In re Scott & Young's Patent. [1871] "Whether an objection to the seahng of a patent, on the ground of a prior patent having been granted, can be made where no complete specification of the prior patent has been filed, gucsre. (19 fF. R. 425.) 266. JEx parte Bailey. [1872] B. obtained provisional protection on the 30th of March, gave notice to proceed on the 23rd of April, and on the 21st K 2 132 APPLICATION FOR LETTERS PATENT : applied for the great seal to be affixed to letters patent for his invention. On the 29th of May a caveat was entered against the sealing, and B. petitioned the Lord Chancellor to affix the seal on the 27th of September :— Held, that B.'s delay was not an obiection to sealing his patent, and that he was not put in a worse position because he had given notice to seal his patent some months before he was obliged to do so. (Z-. R-, 8 Ch. 60.) 867. Ex parte Henry. [1872] It is no objection to the grant of a patent that another person has been making experiments and working towards a similar invention. (Z. R., 8 Ch. 167 ; 42 L. J., Ch. 363; 21 W. R. 233.) Caveat. 268. R. V. Cutler. [1847] The effect of a caveat, lodged at the chambers of the Attorney- General, is merely to entitle the party lodging it to notice. (3 C. §■ K. 215.) In re Heathorn's Patent. [1864] See S77. Hearing before Law Officer. 269. In re Henry's Application for Letters Patent : Re Farquharson's Application for Letters Patent. [1872] It is the duty of the law officer, upon the hearing of several apphcations for letters patent by rival inventors, to determine upon confficting evidence, and not to remit the question in dis- pute to the Lord Chancellor, by issuing his warrant for the sealing of both patents. (Z. R., 8 Ch. 167; 42 L. J., Ch. 363.) Reference to Law Officer. 133 Reference to Law Officer. S70. Ex parte Henson, in re Alcock's Patent. [1832] On affidavit that an invention, for which letters patent were about to be sealed, is the invention of the deponent, and had been obtained by a breach of confidence, the Lord Chancellor allowed an opposition at the great seal, though the opponent had not opposed the grant before the law officer. The Lord Chancellor holding that the parties under the circumstances ought to be heard ; but that such right ought to be exercised exceedingly sparingly. He referred the matter to the Attorney- General. (1 Web. P. C. 432.) In re Fawcett's Patent. [1852] See 374. 271. In re Stoll's Patent. [1853] An application for the sealing of a patent which, with the consent of the petitioner and the opposing party, the Lord Chancellor had referred to the Assistant Commissioner in the Patent Office for his opinion as to whether there was an in- fiingement of a patent already granted, was, upon that officer's opinion being unfavourable to the petitioner, refused. (21 L. T. Rep. 233.) JE'a; ^az-fe Brennakd's Patent. [1861] See 276. 0,12. Ex parte Yat^S. [1869] Where the sealing of a patent was objected to, on the ground that the invention was a colourable imitation of one which was the subject of an existing patent, a reference was made to the law officer, whether, having regard to the prior patent, the seal ought to be affixed to the patent as applied for. The law officer having certified against the patent the court dismissed the petition with costs, notwithstanding no opposition had been made to the petitioner's application for a patent until he had applied to have it sealed, and he had given all the requisite notices. {L. R., 5 Ch. 1.) Ex parte M.KSCE,AXs:s.. [1870] See 295. 134 APPLICATION FOR LETTERS PATENT: Opposition at the Great Seal. 273. Ex parte Henson, In re Alcock's Patent. [1832] It is a matter of discretion vcitli the Lord Chancellor whether he will allow a person to oppose the sealing of letters patent before him, when he has not already done so before the law officer. (1 Web. P. C. 432.) S74. Jw re Fawcbtt's Patent. [1852] Where a caveat was lodged before the great seal was affixed to a patent, the Lord Chancellor declined to enter into the merits of the opposition, but referred the matter back to the Attorney-General. (2 De G., M. §• G. 439.) 275. In re M'Kean. [1859] Where no objection is made before the law officer, semble, the course of opposing by affidavit before the Lord Chancellor is still open; (1 De G., F. §■ J. 2.) 276. In re Brennaed's Patent. [1861] Leave was given to oppose the granting of letters patent, notwithstanding the time for entering an opposition had ex- pired, the reason for the delay in entering such opposition being accounted for, and the matter was referred back to the Attorney- General. (7 Jur., N. S. 690 ; 4. L. T. Rep., N. S. 456.) 277. In re Heathoen's Patent. [1864] Since the passing of 15 & 16 Vict. c. 83, the practice of entering caveats is discontinued unless special leave is obtained, and, therefore, the Lord Chancellor sealed a patent, notwithstand- ing a caveat was standing against it, no leave having been ob- tained. (10 Jur., N. S. 810 ; 10 L. T. Rep., N. S. 802). 278. In re Mitchell's Patent : In re Beotherton's Patent. [1867] A party who has not opposed the sealing of a patent before the law officer of the Crown under 15 & 16 Vict. c. 83, s. 12, Opposition at the Great Seal. 135 will not be allowed to oppose before the Lord Chancellor. (Z. R., 2 Ch, 343.) 279, In re Vincent's Patent, [1867] A person may give notice of objection, and oppose the sealing of a patent before the Lord Chancellor, without previously applying to the Court for leave to enter opposition. The Lord Chancellor, on an application for sealing a patent, will not interfere with the decision of the law officer of the Crown, unless in case of fraud or surprise, or of some material fact having come to the knowledge of the party since the case was before the law officer, (X. R., 2 Ch. 341 ; 15 TV. R. 524.) Ux parte Yates, [1869] See S7S. S 80 JEx parte Sheffield. [1872] In opposing the grant of letters patent, the burden is on the opponent to show that the grant Vv^ould be clearly wrong. Where the facts on which the opponent relies were within his knowledge when he opposed before the law officer, he cannot, when before the Lord Chancellor, raise a new legal argument on these facts ; nor can he then bring forward evidence which he might have brought before the law officer, (L. R., 8 Ch. 237 ; 42 L. J., Ch. 356.) 281, In re Gething. [1874] Where rival applicants had applied on the same day for patents, and had afterwards mutually agreed to withdraw oppo- sition, letters patent bearing date the day of application were granted to one applicant, although letters patent bearing that date had already been granted to the other. On the hearing before the Lord Chancellor of a petition for the great seal to be affixed to letters patent, witnesses may be examined viva, voce. {L. R., 9 Ch. 633.) .282. In re Harbison. [1874] Applications were made for two patents for inventions alleged to be similar. The second applicant obtained a patent. The first applicant then presented a. petition to have the great seal 136 APPLICATION FOE, LETTEES PATENT: affixed to letters patent for his invention, alleging that his delay- had been caused by the representations of the second applicant, and also that the inventions were not similar. The Lord Chan- cellor examined the provisional specification of the first appli- cant, and the complete specification of the second applicant, and finding no substantial similarity between the inventions, directed the letters patent of the first applicant to be sealed. (Z. R., 9 Ch. 63L) Delay. S83. In re Beck's Patent. [1784] Letters patent bore date the. 12th August, but a caveat was not discharged until the 27th, the patentee, thinking the letters patent bore date the latter day, did not enrol his specifi- cation tm the 18th December, when the four months had elapsed: — Held, that the date of the patent could not be altered. (1 Web. P. C. 430.) 284. In re Macintosh's Patent. [1856] Petition that certain letters patent for materials to be used in warfare might be sealed, notwithstanding the regular time for that purpose had elapsed. On the 6th August, 1855, petition, declaration, and provisional specification deposited. 18th De- cember, warrant for sealing signed, and objections lodged on behalf of the Ordnance. 5th May, 1856, objections withdrawn. 22nd November, petition for sealing ; order refused, on the ground' that no reason was stated why the application was not made on or immediately after the 15th May. The present petition stated that this delay was owing to the fact that during the period that intervened between 5th May and 17th November, the petitioner was directed by the Secretary of State for War to delay taking the necessary steps for sealing the letters patent. The Lord Chancellor, thought that, under the circumstances, the petitioner's case was made out, and ordered the letters patent to be sealed. (2 Jur., N. S. 1242.) In re Brennaed's Patent. [1861] See 276. Substituted Service.. 137 S85. In re Heesee and Smyth. [1866] The time "within which the application for the warrant and for the letters patent ought to be made under the rules of the Patent Commissioners extended, where the delay was small and accidental, (i. R., 1 Ch. 518 ; 14 L. T. Rep., N. S. 842.) Ex parte 'Bailey. [1872] See 866, Inspection. 286. In re Tolson's Patent. [1856] An application under the 2nd section of the 16 & 17 Vict. c. 115, by a person opposing the grant of letters patent, for the inspection of the provisional specification of certain letters patent, on the ground that the subject-matter was the same as that for which the applicant had obtained a patent, refused. (6 D., M. §• G. 422.) Affidavits. 287. In re M'Kean's Patent. [1859] Where a petition to have the great seal aiSxed to a patent had been filed, and the respondents served with notice two months before the first day of Michaelmas Term, for which day the petition was answered, and the respondents only filed affidavits on the morning of that day : — Held, that they could not be read ; and the patent was ordered to be sealed, (1 De G.,F.8^J.2; 8 TV. R. \; 1 L. T. Rep., N. S. 19.) Substituted Service. 288. In re Campbell's Patent. [1853] Service of a petition for seaKng a patent upon the solicitor of an opposing party, who was out of the jurisdiction, granted. (22 L. T. Rep. 93.) 138 APPLICATION FOK LETTERS PATENT: Costs. 289. JEx parte Fox. [1812] No costs ■will be given when the opposition is not unreason- able. (1 V.^B.67; 1 Web. P. C. 431.) 290. Ex parte Henson, In re Alcock's Patent. [1832] Where a person has not opposed before the law officer, and is admitted to oppose the sealing under special circumstances, he wiU, if unsuccessful, be ordered to pay the costs. (1 Web. P. C. 432 ; 4 My. §• C. 511.) 291. In re Cutler's Patent. [1839] A party, who has lodged an unsuccessfiil caveat against the granting of a patent, ordered to pay to the patentee the taxed costs occasioned by the caveat. Semble, such costs wiU be taxed upon the principle upon which costs in a cause are taxed as between party and party. (See report in this case for the allowances made on taxation.) (4 My. §• Cr. 510.) 293. In re Nickel's Patent. [1841] Petition to re-seal an altered patent, caveat entered, and re- sealing refused. The Lord Chancellor ordered the petitioner to pay the opponent's costs. (Cit. Hindmarch, 536 ; 1 Phillipps, 36.) 293. In re M'Kean's Patent. [1859] Where a petition for sealing was answered for the first day of Michaelmas term, and the respondent having only filed his affi- davits on that day, was not allowed to read them, and the patent was sealed, the Lord Chancellor refused to give costs against the respondent. (\ De G., F. ^ J. 2 ; S W. R. 1; ] L. T. Rep., N. S. 19.) 294. In re Copley's Patent. [1861] Where notice of objections to the sealing a patent were filed and afterwards withdrawn, the costs of the objections and of Filing Specification. 139 the petition rendered necessary by them were ordered to be paid by the objector, (31 L. J., Ch. 333; 8 Jur., N. S. 106 ; 5 L. T. Rep., N. S. 387.) Ex parte Yates. [1869] See S7S. 295. ^x ;jarfe Manceaux. [1870] When the sealing of a patent is opposed on the ground that the invention is similar to one which is the subject of an exist- ing patent, a reference will be made to the law officer whether, having regard to the prior patent, the seal ought to be affixed to the patent as applied for, tlie opponent paying the costs oj the hearing, unless there has been fraud on the part of the applicant. {L. R., 5 Ch. 518.) Filing Specification. 296. Hx parte Koovs. [1802] Enrolment of a patent cannot be dispensed with for the purpose of preventing the specification being made public. (6 Ves. 598.) S97. Watson v. Pears. N. P. [1809] A patent, dated 10th May, contained a proviso that a speci- fication should be enrolled within one calendar month next and immediately after the date thereof. The specification was en- rolled on the 10th of June following : — Held, that the month did not begin to run tiR the day after the date of the patent, and that the specification was in time. (2 Camp. 294.) 298. In re Brough. [1844] The clerk at the enrolment office cannot receive an enrol- ment conditionally, and the Master of the KoUs refused to cancel or vacate an enrolment of a specification which had been left at the office, and had been enrolled, notwithstanding directions not to enrol it until further order. (7 Beav. 104.) 140 APPLICATION FOR LETTERS PATENT: 399. In re Campbell's Patent. [1853] The Court refused to extend the time for filing specifications, &c., under the Patent Act, 1852, where there had been neglect or default. (22 L. T. Rep. 93). 300. In re Simpson & Isaacs' Patent. [1853] A petition for a patent was lodged on the 2nd October, and the warrant to seal the patent was issued on the 9th February following. By reason of objections having been filed to the application, and to the warrant to seal, the patentees were unable to file their specification within six months from the date of the letters patent. Time extended, on petition, to seven months. (21 L. T. Rep. 81.) In re Adams' Patent. [1853] See 574. 301. In re Harris' Patent. [1855] Leave was granted to file a specification after the time for that purpose had expired, when the delay had arisen solely from the non-delivery of the letter containing the proper instruction for filing. (25 L. T. Rep. 90.) Stamp Duty. SOS. Hill v. Mount. [1856] By an agreement between A. and B., it was agreed that A. should do all acts necessary, except the advance of money, for the purpose of procuring and perfecting certain letters patent, and should immediately after the same were procured execute an assignment of one-third share therein to B.; and B. agreed to pay all fees and disbursements that might be necessary for procuring the letters patent, enrolling the specification, and otherwise perfecting the same : — Held, that the execution of an assignment by A. was the whole consideration for the under- taking of B. to pay the sums mentioned in sect. 2 of 16 & 17 Vict. c. 5 ; and, consequently, a condition precedent to his right to sue B. for the non-payment thereof. (18 C. B. 72; 25 X. J., C. P. 190.) Countermanding Warrant. 141 303. Williams v. Nash. Ch. [1859] The day of tlie date of the letters patent is excluded, and the three years do not expire until twelve o'clock at night of the anniversary of the day on -which the-Jetters patent are granted. (5 Jur., N. S. 696 ; 28 L. J., Ch. 886 ; 28 Beav. 93.) 304. Sequelin v. Terrell. N. P. [1867] In an action for not completing a patent for the full term of fourteen years: — ^Held, that, as the effect of the statute 16 & 17 Vict. c. 5, is to give a patent by instalments of three, four and seven years, a defendant would not be liable to pay the different sums of money required by the act till the expiration of these different periods. (16 L. T. Rep., N. S. 539.) Countermanding Warrant. 305. In re Schltjmbeegee's Patent. [1853] The Crown can at any time before affixing the great seal. Tinder proper circumstances, countermand the warrant. (9 Moo. P. C. C. 1.) ( 142 ) THE GRANT. Date of Letters Patent. Watson v. Pears. N". P. [1809] See S97. 308. Ex parte Hei-tson, In re Alcock's Patent. [1832] Where the sealing of letters patent was opposed before the Lord Chancellor, no opposition having been made before the law officers, and the matter is referred back to the Attorney- General, it was agreed that in the event of the patents being sealed, they should bear date as of the day they were first delivered at the Great Seal Office. (2 Lon. Jour., C. S. 32.) 307. Russell v. Ledsam. [1845] Original letters patent were granted on the 26th February, 1825, and renewed letters patent were dated on the 26th Feb- ruary, 1839: — Held, that the day of the date must be reckoned inclusively, and that the former term expired on the 25th February, 1839, and consequently the renewed letters patent were granted after the original letters patent had expired. (14 M. §• W. 574.) Williams v. Nash. Ch. [1859] See 303. 808. Ex parte Bates & Eedgate. [1869] Where two parties apply for patents for similar inventions, and the second applicant first has the seal affixed, the first applicant will have his patent, if granted, dated as of the day of application for sealing, (i. R., 4 Ch. 580.) 309. Ex parte Bailey. [1872] B. applied for a patent and obtained provisional protection on the 30th of March ; C. on the 3rd of April. B. applied for the great seal on the 21st of May; C. obtained letters patent on the 22nd of May, antedated, according to the usual practice. Conditions and Terms of Grant. 143 to the 3rd of April. The patents appearing to be partially for the same invention : — Held, that, whether the conduct of C. had or had not been fraudulent, the letters patent granted to B. must bear date on the 21st of May, and not on the 30th of March, (i. R., 8 Cli. 60; 42 L. J., Ch. 264.) 310. Saxby v. Hektnett. [1873] Two patents for the same invention were applied for on the 20th and 23rd of July, 1867, respectively. The patent applied for on the 23rd was sealed before that applied for on the 20th, but each patent was dated as of the day of application : — Held, that under the 15 & 16 Vict. c. 83, s. 24, the patents took effect as upon the days on which they were applied for respec- tively. {L. R., 8 Exch. 210 ; 42 L. J., Excli. 137.) 311. Ex parte Harrison. [1 874] Where two inventors apply for patents for similar inventions, the second applicant at the Great Seal will be allowed to obtain his patent, but it will be dated as of the date of such application, (i. R., 9 Ch. 632.) Conditions and Terms of Grant. Z12. Ex parte V^mi^iG. [1836] A patent for the exclusive use of an improvement in the invention of anchors, contained a proviso for avoiding the patent, if the patentee should not supply for his Majesty's service aU such articles of the invention as should be required, on such reasonable terms as should be settled by the Lords of the Admiralty. The latter used the invention, but did not take the articles from the patentee. The Court refused to issue a mandamus to them, to settle the terms according to the patent. (4 A. Sj- E. 949 ; 6 N. Sf M. 472.) 313. In re Daine's Patent. [1856] B. had obtained letters patent at the cost of D., which had been at D.'s request assigned to H. Subsequently D. applied 144 THE GKANT: for the grant of letters patent for an improvement in B.'s process. The Lord Chancellor being satisfied that D. had arrived at his knowledge of the improvement whilst working B.'s patent, ordered the patent to be sealed on certain terms as to assignment and Kcence to H. if he required them. (26 L, J., Ch. 298.) 814. In re Russell's Patent. [1857] Where it appeared that a master and his foreman had both invented certain improvements, for which the master sought letters patent : — Held, that they ought only to be granted on the terms of their being vested in trustees for the master and the foreman. (2 Be G. §• J. 130.) 315. Feather v. The Queen. [1865] The Crown may use a patented invention without the assent or remuneration of the patentee. If the law were otherwise, the remedy of the patentee would not be by petition of right, but by action against the officer of the Crown using the patented invention. (8 B. Sf S. 257.) 316. Dixon v. London Small Arms Co. [1875] The right of the Crown to use a patented invention, without the assent or remuneration of the patentee, does not extend to contractors supplying the patented article to, and indemnified against the patentee by, the Crown, (i. R., 10 Q. B. 130 ; 31 L. T. Rep., N. S. 830). See also Prolongation of Letters Patent — Terms imposed. Consideration for Grant. 317. E. V. MussART. [1738] Failure of consideration is a ground for avoiding the grant. {Bull. N. p. 76 a; 1 fFeh. P. C. 41.) Turner v. Winter. [1787] See 4S1. Consideration for Grant. 145 318. Jessop's Case. [Before 1795] Where letters patent were taken out for a watch, and the invention was only of a part of a watch, they were held void for false suggestion. (2 H. Bl. 490; 1 Web. P. C. 42, n.) Bainbkidge v. Wigley. ]Sr. P. [1810] See 340. Hill v. Thompson. [1818] See 342. R. V. Wheelek. [1819] See 228. 819. Beunton w. Hawkes. [1821] Abbott, C. J. : " 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." (4 B. ^Ald. 551.) Bay ley, J. : " If a patent is taken out for many different things, the entire discovery of all those things is the consideration upon which the King is induced to make the grant. That con- sideration is entire, and if it fails in any part it fails in toto. Upon an application for a patent, although the thing may be new in every particular, it is in the judgment of the Crown, whether it wiU or will not, as matter of favour, make the grant to the person who has made the discovery. And when an application is made for a patent, for three different things, it may be con- sidered by the persons who are to advise the Crown as to the propriety of the grant, that the discovery as to the three things together may form the proper subject of a patent although each, per se, would not induce them to recommend the grant." (i5. 552.) Best, J. : " The King is deceived ; the patentee is repre- sented to have the merit of inventing two things, whereas he has discovered only one ; and the Crown might have considered the discovery, as to both, a sufficient ground for granting a patent, when it would not have thought so of the discovery of one alone. This has been compared, in argument, to the case of a grant of lands. If, in the same deed, there were included three conveyances of three distinct estates on three considerations, one might be set aside and another be good ; but if the grant were upon one consideration which was bad, the whole would be void, because the consideration would fail altogether. Now H. L 146 THE GRANT: the present case is similar to that, because here, the considera- tion to induce the King to grant the 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 united consideration upon which the whole grant was made, is there- fore void; and, consequently, the grant itself is void." (/6. 558.) Bloxam ?;. Elsee. [1825] See 332. Felton v. Geeaves. [1829] See 334. MiNTEE V. Wells. N. P. [1834] See 232. MoEGtAN V. Seawaed. [1837] See 335. 320. Feathee v. The Queen. [1865] A patent is not based upon a contract between the patentee and the Crown, in which the patentee, by communicating the secret of the invention to the public, gives a valuable considera- tion for the grant; but is simply an exercise of the royal prerogative. (8 £. Sj- S. 285.) Limited Grant. 321. -E'a;^aj-fe Bates AND Eedgate. Ch. [1869] Where a provisional specification is filed, but, pending the six months' provisional protection, and before obtaining letters patent, a second inventor files a provisional specification, and obtains letters patent for an invention, partly covered by the first provisional specification, letters patent wiU. not, in the absence of fraud, be granted to the first applicant, for any part of his invention which is covered by the letters patent already obtained by the second applicant. (Z. R., 4 Ch. 577 ; 38 L. J., Ch. 501.) Cancelling, 147 Cancelling. 322. E. V. Newton. [1845]. This was an application heard before the Lord Chancellor, assisted by the Master of the Kolls, to compel the defendant to bring into court a certain, patent, to have the same cancelled, and the seal cut therefrom. It appeared that the patent had been obtained by the defendant for a foreigner resident abroad, and that he had forwarded the patent to him. It was ordered that the enrolment of the patent should be cancelled ; and, that a vocator should be entered on the roU; and that the defendant should undertake to bring no writ of error, or make any as- signment of the patent. (26 Lon, Jour.) C. S. 361.) l2 ( 148 ,} TITLE OP PATENT. Title generally. 323. HOKNBLOWEK V. BoLTON. [1799] Grose, J., said : " I consider the patent (title) and specifi- cation so connected together as to make a part of each other, and that to learn what the patent is, I may read the specifi- cation, and consider it as incorporated with the patent." {Dav. P. C. 230.) 3S4. The HousEHiLL Company w. Neilson. N. P. [1843] The title of a patent discloses the object of the invention. (1 Web. P. C. 678.) 325. The Electeic Telegraph Company u. Brett. [1851] Patent " for improvements in giving signals and sounding alarums in distant places, by means of electric currents trans- mitted through metallic circuits." Subsequently to the patent, it was discovered that the return current could be conducted back to the battery through the earth as efiectually as through a continuous metallic circuit, and this was the method used by defendants. CressweU, J., dehvering the judgment of the court, said : " With regard to the use of the words ' metallic circuits' in the title of the patent, it was urged that the patentees, by using those words, would mislead a person who was in possession of improvements identical with the plaintiflF's, but which he intended to use in giving signals by non-metallic circuits, and who might have opposed the grant of a patent of a more comprehensive title, but would acquiesce in one confined to metallic circuits. But it appears to us, that, whatever might be the case, supposing currents transmitted in the manner used by the defendants to have been known at the time of granting Longness of Title. 149 the patent, or of giving notice of the application for it, the title did, in the actual circumstances of tlie case, that is to say, the earth-circuit not being publicly known, give sufficient notice to any person secretly acquainted with that discovery, or thinking it probable that some such discovery might be made, and having also invented improvements like those of the patentees, to put him on his guard, and on an inquiry how far the proposed patent might interfere with him," (10 Com. B. Rep. 881; 20 L. J., C. P. 130; 15 Jur. 582.) 326. Newton v. Vouchee. [1851] The title of a patent, which should be read in conjunction with the specification, may limit a patentee's claim, which would otherwise have voided the patent as being too large. (6 Ex. 866 ; 21 L. J., Ex. 308.) 3S7. Hills v. The London Gas Light Company. [1860] The title of a patent was for " an improved mode of manu- facturing gas." The invention consisted in the application of the hydrated oxides of iron in purifying gas from sulphuretted hydrogen, and in renovating the oxides so used by exposure to the air. The comrt held this to be an improved mode of manufacturing gas. (5 H. §• N. 370; 29 L. J., Ex. 424.) Longness of Title. 328. Rex v. Else. [1785] The patent was for a new invented manufacture of lace, called French, or wire-ground lace. The specification went generally to the invention of mixing silk and cotton thread upon the frame. It was proved that this was not new. It was contended, in answer, that the former use was inadequate to the pm-pose of making lace on account of its coarseness, and that the patentee was the first to succeed in uniting strength and fineness. Buller, J., held the patent void, as the claim 150 TITLE OF PATENT : (expressed in the title) went to the exclusive liberty of making lace composed of silk and cotton thread mixed, and not to any particular mode of making it. (1 fFeb. P. C. 76; Dav. P. C. 144; Bull. N. P. 76.) 829. Cochrane v. Smethuest. [1816] A patent was granted for " a method or methods of more completely lighting cities, towns, and villages." The invention described consisted of improvements in street lamps: — Held, that the patent was void, on the ground of the title being too large. The patent ought to have been taken for an improve- ment in street lamps. {Dav. P. C. 354; 1 Stark. N. P. 205.) 830. Campion v. Benyon. [1821] Where a patent was obtained, for " a new and improved method of making and manufacturing double canvas and sail cloth with hemp and flax, without any starch whatever," and the specification described the invention to consist in an improved texture, or mode of twisting the threads, to be applied to the making of un-starched cloth ; on its being proved that the exclusion of starch had been before adopted: — Held, that such patent was void, as being taken out for more than the patentee had really discovered. Dallas, C. J. : " If there be any ambiguity, either in the patent itself, or in the specification, in any material point, it is of itself a ground for rendering the patent absolutely void. (6 B. Mo. 71 ; 3 B. Sf B.5.) 331. Brunton w. Hawkes. [1821] A patent was granted for improvements in the construction of ships' anchors, windlasses, and chain cables. It was proved at the trial, that the windlasses and chain cables were new, but that the anchors had been before constructed and used. The patent was held bad for want of a consideration, upon the authority of Hill v. Thompson. Abbott, C. J., said : " The consideration is the entirety of the improvement of the three ; and if it turns out there is no novelty in one of the improve- Longness of Title, 151 ments, the consideration fails in the whole, and the patentee is not entitled to the benefit of that other part of his invention." (4 B. §• Aid. 552.) Best, J., based his judgment expressly upon the ground of fraud. He said the patentee had " taken out his patent for more than he is entitled to ; and I am of opinion, that that avoids the patent in toto. For the King is deceived ; the patentee is represented to have the merit of inventing two things, whereas he has discovered only one ; and the Crown might have considered the discovery, as to both, a sufficient ground for granting a patent, when it would not have thought so of the discovery of one alone. This has been compared, in argiunent, to the case of a grant of lands. If, in the same deed, there were included three conveyances of three distinct estates on three considerations, one might be set aside and another be good ; but if the grant were upon one consideration which was bad, the whole would be void, because the considera- tion would fail altogether. Now the present case is similar to that, because here, the consideration to induce the King to grant the 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 united consideration upon which the whole grant was made, is therefore void, and, conse- quently, the grant itself is void." {lb. 558.) S3S. Bloxam v. Elsee. [1825] Action for the infringement of a patent for " a machine for making paper in single sheets, without seam or joinings, from 1 foot to 12 feet and upwards wide, and from 1 foot to 45 feet and upwards in length." It appeared in evidence, that the machine was so constructed as to be capable of producing paper of one definite width only, and that in order to vary the width a new machine was required. It was held by the Court of King's Bench, that the meaning of the patentee's representa- tion was, that paper of various widths might be obtained by one and the same machine ; and, as that representation, which was a material one, was not true, the consideration for the grant had failed, and the patent was void. (6 B. §• C. 169 ; 9 Dow. §• Ry. 215 ; 1 C. §• P. -565.) - 152 TITLE OF PATENT : 833. Stdrtz v. De la Rue. [1828] The patent was " for certain improvements in copper and other plate printing." The specification declared that "the nature of the invention consisted in putting a glazed or ena- melled surface on paper, to be used for copper and other plate printing, by means of whitelead and size, whereby the finer lines of the engraving are better exhibited than heretofore, and also in a mode of polishing the said enamel, and the impression after it has been drawn from the plate. Lord Lyndhurst, L. C. : " The description in the patent must imquestionably give some idea, and, so far as it goes, a true idea of the alleged invention, though the specification may be brought in aid to explain it. The title in this patent is for ' certain improvements in copper and other plate printing.' Copper-plate printing consists of processes involving a great variety of circumstances ; the paper must be of a particular description : before it is used, it must be damped ; it must remain damp a certain time, and must be placed in a certain temperature ; the plate must be duly pre- pared, and duly applied, and various processes must be gone through, before the impression is drawn off and brought to a finished state. An improvement in any one of those circum- stances, — in the preparation of the paper, for instance, or the damping it, &c. — may truly be called an improvement in copper-plate printing." (5 Buss. 322.) 334. Felton v. Gkeaves. N. P. [1829] A patent was granted for " a machine for an expeditious and correct mode of giving a fine edge to knives, razors, scissors, and other cutting instruments." As the machine described in the specification would not do for sharpening scissors, the patent was held void. (3 C. §• P. 611.) 335. Morgan r. Seaward. [1837] The patent was taken out "for certain improvements in steam engines and in machinery for propelling vessels ; which im- provements are applicable to other purposes." The jury found that the alleged invention was not an improvement in steam Longness of Title. 153 engines. Parke, J., delivering the judgment of the court, said : " Upon the authorities we feel obliged to hold that the patent is void, upon the ground of fraud on the Crown. . . A patent for two or more inventions, when one is not new, is void altogether, as was held in Hill v. Thompson, and Brunton v. Hawkes; for, although the statute invalidates a patent for want of novelty, and, consequently, by force of the statute, the patent would be void as 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 maintainable upon it." (1 Web. P. C. 196 ; 2 M. ^ W. 561 ; Mur. ^ H.&O; 1 Jur. 529.) 336. Stead v. Williams. N. P. [184.3] Action for the infringement of a patent " for making or paving public streets and highways, and public and private roads, courts and bridges, with timber or wooden blocks." The defendants pleaded, inter alia, " that the title, in its claim, was too large, uncertain, inapplicable, inexplicable, inconsistent, vague and ambiguous, and at variance vrith the specification." CressweU, J., referring to this, said : " Whether it is too vague or not is rather a matter of law than anything else, and upon that I also say that I am in favour of the plaintiff. I think that it is not too vague, and therefore I advise you to find that issue for the plaintiff." (2 Web. P. C. 137.) 337. Cook v. Peaece. [1844] The patent was taken out " for improvements in carriages," and the invention was an improvement in German shutters, which could only be used in some kinds of carriages : — Held, that, by reason of the title of the invention being too large and general, the patent was void. Lord Denman, C. J., delivering the judgment of the Court of Queen's Bench, said : " If it were enough to state some improvement in a particular subject in the title of the letters patent, and the patentee were at liberty in 154 TITLE OF PATENT: his specification to obtain a monopoly in the use of anything falling under that general description, he might employ the whole six months in making a discovery imknown to him when he obtained the patent. His title might even deprive a person, who should within the six months have made an original in- vention, of the right to use his own invention, although the patentee had not actually made it, and took out his patent vdthout even suspecting that it could be made, and merely on a general speculation that he or some other person might possibly put in some improvement There is, to a certain extent, a resemblance between the title and the specification of a patent, in this, that the former must, though not with the same degree of particularity and minuteness of detail, describe the nature of the invention for which such patent is obtained." (8 Q. B. 1050; 12 L. J., Q. B. 190; 7 Jur. 765.) The above decision was reversed on appeal. Tindal, C. J., delivering the judgment of the Exche- quer Chamber, said : " The mere vagueness of the title appears to us to be an objection that 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 vdth the specification when enrolled, or if there had been any fi-aud practised on the Crown, in obtaining the patent with such title, the patent in those cases might, un- doubtedly, be held void. Any evidence of a design on the part of the inventor to choose a vague and general title, in order that he might avail himself, at the time of the enrolling of the specification, of an invention not discovered by him at the time of taking out the patent, or in order to prevent other subjects of the Queen, fi:om availing themselves of a discovery made by them, upon the ground of its falling within the range of the general terms of the title, although such invention was different from that for which the patent was really and in truth taken out, might afford such proof of fraud upon the Crown and such injury to the subject, as that the vagueness and generality of the title in such case might avoid the patent. But, in the present case, no such evidence was given, nor was the existence of fraud suggested ; but the patent has been held void (in the %\.) 370. Deeosne v. Faieie. [1835] Patent for certain improvements in extracting sugar or syrup from cane-juice and other substances containing sugar, and in refining sugar and syrup. In the specification the patentee said : " The invention consists in a means of discolouring syrups of every description by means of charcoal, produced by the distillation of bituminous schistus alone, or mixed mth Sufficiency of, generally. 171 animal charcoal, and even of animal charcoal alone." The specification then stated that the " discolouration " was to be produced by means of a filter of the charcoal, and continued : " The carbonization of bituminous schistus has nothing parti- cular ; it is produced in closed vessels, as is done for producing animal charcoal, only it is convenient before the carbonization to separate from the bituminous schistus the sulphurets of iron which are mixed with it." The specification said nothing as to any previous operation on the syrup before it was submitted to the filter, but it did state that syrup in a proper state might be obtained by a mixture of sugar and water. The defendant objected to the sufficiency of the specification. Held, first, upon proof that the invention was applicable with advantage to the syrup, after it had undergone a certain degree of heat, though it failed when applied to the first drawings of the syrup, that the specification was sufficient. Secondly, that it was incumbent on the patentee to prove, that the presence of iron in the bituminous schistus, used in the process of filtering, would not be injurious ; or else, that the method of extracting the iron from it was so simple and well known, that a person ordinarily acquainted with the subject could remove it with ease ; or, that the bituminous schistus, as known in England, could be used in the process with advantage. (5 Tyr. 393 ; 2 Cr. M. §• R. 476 ; 1 Gale, 109 ; 1 Web. P. C. 158.) Abinger, C. B., said : " Thus then it appearing by the evi- dence that in all the various forms in which the article (bitu- minous schistus) exists in this country, sulphuret of iron is found, and the witnesses not describing any known process by which it can be extracted, it appears to me that the plaintiff ought to prove one of two things — either that the sulphuret of iron in bituminous schistus is not so absolutely detrimental as to make its presence disadvantageous to the process (in which case this patent would be good), or that the process of extracting the iron from it is so simple and weU known, that a man may be able to accomplish it with ease." (1 Web. P. C. 162.) Alderson, B., said : " A specification must state one or more methods which can be followed for the purpose of accom- 172 COMPLETE SPECIFICATION: plishlng and carrying into effect the invention. . . . Had it been shown, either that bituminous schistus, deprived of iron, could be made by a process known to ordinary chemists of skiU, or that it was. a substance capable of being ordinarily purchased in the market as an article of commerce, it would have been unnecessary to have shown the operation of sepa- rating the iron from it ; if its presence in the bituminous schistus was a positive detriment to the process of depriving the sugar of colour, then indeed the patent would fail." {lb. 165.) 371. Morgan «. Seaward. N. P. [1836] Alderson, B., in addressing the jury, said : " It is the duty of a party who takes out a patent to specify what his invention really is, and although it is the bounden duty of a jury to protect him in the fair exercise of his patent right, it is of great importance to the public, and by law it is absolutely necessary, that the patentee should state in his specification, not only the nature of his invention, but how the invention may be carried into effect. Unless he be required to do that, mono- polies would be given for fourteen years to persons who would not on their part do what in justice and in law they ought to do, state fairly to the public what their invention is, in order that other persons may know what is the prohibited ground, and in order that the public may be made acquainted with the means by which the invention is to be carried into effect He (the patentee) has described two inventions, and if either of those inventions is insufficiently specified, the patent fails ; for if a person runs the hazard of putting two inventions into one patent, he cannot hold his patent, unless each can be supported as a separate patent. (1 Web. P. C. 173) The public, on the one hand, have a right to expect and require that the specification shall be fair, honest, open and sufficient; and on the other hand, the patentee should not be tripped up by captious objections which do not go to the merits of the specification. {lb. 174) You should discard, on both sides, all exaggerated cases, and look to the substance of the thing. If you think in substance that the information really Sufficiency of, generally. 173 communicated would be enough in all ordinary cases, or in such cases as are likely to occur, then that would do." (76. 180). 372. Kat v. Marshall. [1839—41] A patent was taken out for " new and improved machinery for preparing and spinning flax, hemp, and other fibrous substances, by power ;" and, by the specification, the invention was declared to consist of " new machinery for macerating flax, and other similar fibrous substances, previous to drawing and spinning it ; and also of improved machinery for spinning the same after having been so prepared." The only alleged improvement in the spinning machinery was declared to be " placing the drawing rollers only two inches and a half fi-om the retaining rollers," which was nearer than they had ever before been placed for the purpose of spinning flax. It appeared, however, that spinning machines were always so constructed, as, by means of slides, to aUow the distance of the roUers to be varied according to the staple or fibre of the article to be spun ; and that cotton had always been spun with a reach of less than two inches and a half. Held, that this was not the proper subject of a patent, though the jiuy found that the invention was both new and useful ; and, consequently, that the specification, being void as to part, was void altogether. (7 Scott, 548 ; 5 Bing. N. C. 492 ; 2 Arn. 78 ; 5 Jur. 1028 ; % C. &^ F. 245 ; West, 682.) 373. Neilson v. Thompson. [1841] Cottenham, L. C. : " The public are entitled to know for what it is that the patentee claims the invention, that they may be saved inconvenience upon the subject ; therefore, the specifi- cation must tell the public for what it is that he claims protection." (1 Weh. P. C. 283.) 874. Walton v. Potter. N. P. [1841] The specification is the price paid by the inventor for the patent he obtains. (1 Web. P. C. 595.) 174 COMPLETE SPECIFICATION: 375. Holmes v. London & North "Western Railway Company. [1852] Jervis, C. J., said: " The object of the condition in the patent requiring a specification is twofold ; first, that useful novelties should be given to the public, of which, at the end of the term granted to the patentee, they should have the fuU benefit ; and, secondly, that no person should inadvertently infringe the rights of the patentee during the term for which the patent has been granted." (Mac?: F. C. 16.) 376. Crossley v. Potter. N. P. [1853] Pollock, C. B., said : " This patent is taken out for the making of coach lace, carpets, velvets, and velveteens 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 exercise of the ingenuity of mankind and the introduction of other inventions adapted to the parti- cular subject to which the invention may be applicable, — a patent which has for its object to snatch and grasp at everything in all directions which may possibly come within the general language the patentee may choose to adopt in his specification, — a patent, the object of which is, not to benefit the world by its communi- cation, but to obstruct, by the very general character of the claims made for conferring peculiar privileges on the patentee ; such a patent as that, in my judgment, cannot be supported." {Macr. P. a 245.) 877. Hills v. London Gas Light Company. [1860] Pollock, C. B. : " The condition that a patentee shall specify is introduced into letters patent in order to prevent patents being granted for known things, and to secure the public the benefit of new inventions." (5 H. Sf N. 340.) To whom it must he i'ntelUgihle. 175 378. Morton v. Middleton. [1863] Lord President : " In judging of the sufficiency of a specifi- cation, it is necessary to see whether the patentee sets forth clearly the nature of his invention, and sets it forth so as to serve the double purpose — first, of showing a workman of ordinary knowledge and skill how he can construct the thing specified in the patent ; and, second, of showing persons who read the patent what they must avoid doing if they would not infringe the patent." (1 Cr. S., 3rd series, 721.) 379. Thomas v. Welch. [1866] It is necessary that the specification should state the object of the invention, and the means by which the patentee proposes to effect it, (i. R., 1 C. P. 201.) 380. Betts v. Neilson. Ch. [1868] Whether a specification contains a sufficient description can only be ascertained by experiment ; and, in making the expe- riment, knowledge and means may be employed which have been acquired since the date of the patent, (i. R., 3 Ch. 429.) To whom it must be intelligible. 381. Reg. v. Akkweight. Sci. fac. [1785] Buller, J. : " It has been truly said by the counsel, that if the specification be such that mechanical men of common understanding can comprehend it, to make a machine by it, it is sufficient ; but then it must be such that the mechanics may be able to make the machine by following the directions of the specification without any new inventions or additions of their own." (1 Weh. P. C. QQ ; Dm. P. C. 106.) 176 COMPLETE SPECIFICATION: 383. Aekwright v. Nightingale. N. P. [1785] Lord Loughborough : " 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 inteUigible." {JDav. P. C. 37 ; 1 Web. P. C. 60.; BouLTON V. Bull. [1795] See 363. 383. HOENBLOWER V. BoULTON. [1799] Grose, J., said : " I shall content myself with repeating what was said by one of the learned judges of the Court of Common Pleas, that if the specification be such as to enable artists to adopt the invention and make the manufacture, it is sufficient." {Dav. P. C. 228.) Lord Kenyon, C. J. : " No technical words are necessary to explain the subject of a patent." (lb. 224.) 384. Haemar v. Playne. [1809] EUenborough, C. J., in the course of the argument, said : "When Lord Mansfield said, in the case of Liardet v. Johnson, 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 reasonably 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." {Dav. P. C. 318.) And again : " The object of requiring a specification to be enrolled seems to be to enable persons of reasonable intelligent skill in the subject-matter, to teH from the inspection of the specification itself, what the invention was for which the patent was granted, and how it was to be executed." {lb. 316.) 385. Manton v. Manton. [1815] Gibbs, C. J. : It is necessary that the patentee " should show that he has accurately explained the nature of his inven- To whom it must be intelligible. 177 tion in his specification, separating that which is new firom that which is old, so as to enable a person of tolerable skill to make the thing by means of his specification." {Dav. P. C. 349.) 386. Sturz v. De la Eue. Ch. [1828] The specification must describe the invention in such a way that a person of ordinary skill in the trade shall be able to carry on the process. (5 Russ. 327.) 387. Crossley v. Beverley. N. P. [1829] It appeared firom the evidence that the specification did not give any directions respecting a condenser, which was well known to be. an essential part of every gas apparatus. It was objected. for the defendant that the things comprised in the specification would not make a gas apparatus, because it would be incomplete for want of a condenser. Tenterden, C. J., however, held, that a workman who was capable of making a gas apparatus would know that he must put that in, and that although the specification did not direct a condenser to be put in, yet, as it did not say that it was to be left out, it was sufficient. (3 C. §• P. 513 ; Mo. ^ Mai. 283 ; 1 Web. P. C. 106.) 388. Cornish v. Keene. N. P. [1835] In the absence of evidence on the part of the defendants that persons could not understand, or have been misled by the specification, it is sufficient for the plaintiff to call persons who say that to them it is clear. ( 1 Web. P. C 502.) 389. Morgan v. Seaward. N. P. [1836] The defendant put in evidence a model, made according to the specification, which would not work on account of one part being a little too small. Alderson, B., referring to this, said : "A workman of ordi- nary skill when told to put two things together, so that they should move, would, of course, by the ordinary knowledge and H. N 178 COMPLETE SPECIFICATION: skiU he possesses, make them of suflficient 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. . . . What is required is, that the specification should be such as to enable a workman of ordinary skill to make the machine ; with respect to that, therefore, I do not apprehend you will feel much difficulty." (I Web. P. C. 176.) 390. Galloway v. Bleaden. N. P. [1839] Tindal, C. J. : The specification must contain " such a fair and clear statement, that a person with a competent degree of knowledge upon the subject-matter to which the patent relates, would be able to make that which the plaintiff enjoys the ex- clusive privilege of." (1 Web. P. C. 524.) 391, Elliott v. Aston. N. P. [1840] Coltman, J., said : " The patentee must give such a de- scription in his specification as would enable a workman of competent skiU, conversant with the trade, to carry the invention into effect." (1 Web. P. C. 224.) 39S. BiCKFOED V. Skewes. [1841] The specification is addressed, not to persons entirely ignorant of the subject-matter, but to artists of competent skill in that branch of manufactures to which it relates. (1 Q. B. 938 ; 1 Web. P. C. 214; 10 L. J., Q. B. 302.) 393. Neilson v. Haeford. [1841] A specification is sufficient, if it enables a person of ordinary skill and knowledge of the subject, to construct the patented machine. Parke, B., said to the jury : " You are not to ask your- selves the question, whether persons of great skill, a first- rate engineer, or a second-class engineer, as described by Mr. To whom it must be intelligible. 179 Farey — ^whether they would do it ; because generally those persons are men of great science and philosophical knowledge, and they would upon a mere hint in the specification probably invent a machine which should answer the purpose extremely well ; but that is not the description of persons to whom this specification may be supposed to be addressed; it is supposed to be addressed to a practical workman, who brings the ordinary degree of knowledge and the ordinary degree of capacity to the subject." (1 Web. P. C. 314.) In the course of the argument in the Court of Exchequer, Abinger, C. B., said : " Where the specification uses scientific terms, which are not understood except by persons acquainted with the nature of the business, the specification is not bad because an ordinary man does not understand it, provided a scientific man does ; but where the specification does not make use of technical terms, where it uses common language, and where it states that by which a common man may be misled, though a scientific man would not — when it does not profess to use scientific terms, and an ordinary man reading the specification is misled by it — it would not be good." {lb. 341.) 394. Gibson v. Bkand. N. P. [184a] The specification ought to be so clearly worded as to enable any person of sufficient understanding on the particular subject to attain the result without doubt or difficulty, it being the price paid by the inventor for keeping the public out of the enjoyment of the manufacture. (1 Web. P. C. 629.) 395. The Househill Company v. Neilson. N. P. [1842] It is not necessary that the apparatus, described in the speci- fication, should be productive of the greatest amount of benefit ; it is sufficient if an ordinary workman, acquainted with the subject, could, by following the specification, construct an apparatus productive of some benefit. Lord Justice Clerk Hope, in addressing the jury, said : " The specification is to be read as addressed to artists, or persons of competent skiU in the branch of manufacture or process to which it is applicable. Hence, known machinery need not be described, when the use n2 ■ ■ " ' ' 180 COMPLETE SPECIFICATION: of them is to be made in carrying out the object of the patent. (1 Web. P. C. 676.) Workmen of ordinary skiU, means those competent in the ordinary business and conducting of the parti- cular trade — to furnish and construct apparatus for the purpose required. Certainly, the pursuer does not satisfy the condition of law, if he says men of the greatest science — first-rate engineers — could understand him, and would know what to do, or what direction to give. That is not enough. The specifi- cation must be for the benefit of the trade when the patent is out ; it is addressed to those engaged in particular depart- ments of trade, and who are to be employed in order to make apparatus for the purpose, those who are competent to make similar apparatus for similar purposes. But the terms in the issue do not denote common labourers or workmen employed under those which do furnish and construct such apparatus." (lb. 692.) 396. Beard v. Egekton. [1849] A specification is sufficient if it is fi-ee from any such mistake or obscurity as would mislead a person of fair intelligence. Maule, J., during the argument, said : " A specification is not to compel a person, who is determined to misunderstand, to learn, but to direct one who is willing to understand." (19 L. J., C. P. 36 ; 8 C. B. 167; 13 Jur. 1004.) See also 540. 397. Heath v. Unwin. Ex. Ch. [1852] Alderson, B., said : " Every specification is to be read as if by persons acquainted with the general facts of the mechanical or chemical sciences involved in such invention. Thus, if a particular mechanical process is specified, and there are for some parts of it as specified, other well-known mechanical equivalents, the specification of those parts is in truth a specifi- cation of the well-known equivalent also, to those to whose general knowledge we refer, namely, mechanics, and readers of specifications; and so it is with chemical equivalents also in a specification which is to be read by chemists. But it may be that there are equivalents, mechanical and chemical, existing, but previously unknown ■ to ordinary skilful mechanics and Sfiould be sufficient loithout Experiments. 181 chemists. These are not included in the specification, but must be expressly stated there." (2 Web. P. C. 245.) The Patent Type FoinsrDiNG Company v. Richards. Ch. [1859] See 435. Morton v. Middleton. [1863] See 378. 398. FoxwELL V. Bostock. [1864] The law requires that a specification should be intelligible to a workman of ordinary skill and information on the subject. (10 L. T. Rep., N. S. 147.) 399. Simpson v. Holliday. Ch. [1865] Lord Westbury : " When it is stated that an error in a specification which any workman of ordinary skill and experience would perceive and correct, will not vitiate a patent, it must be understood of errors which appear on the face of the specifi- cation, or the drawings it refers to ; or which would be at once discovered and corrected in following out the instructions given for any process or manufacture ; and the reason is, because such errors cannot possibly mislead. But the proposition is not a correct statement of the law, if applied to eiTors which are discoverable only by experiment and fiirther inquiry ; neither is the proposition true of an erroneous statement in a specification amounting to a false suggestion, even though the error would be at once observed by a workman possessed of ordinary knowledge of the subject." (13 W. R. 578 ; 12 L. T. Rep., N. S. 99.) Should be sufficient without Experiments. 400. R. V. Arkwright. [1785] Buller, J. : " It does not prove that a speqification is sufficient, because a man Jfrom the knowledge he has got irom three trials, and seeing people immediately employed about it, is able to make use of it." (1 Web. P. C. 67.) 182 COMPLETE SPECIFICATION: 401. R. «. Whekler. Sci.fac. [1819] Abbott, C. J.J delivering the judgment of the court, said: " A specification which casts upon the public the expense and labour of experiment and trial is undoubtedly bad." (2 B. §• AM. 354.) 402. MoKGAN V. Seaavaed. N. p. [1836] Alderson, B., in addressing the jury, said : " If the invention can only be carried into effect by persons setting themselves a problem to solve, then they, who solve the problem become the inventors of the method of solving it, and he who leaves persons to carry out his intention by means of that application of their understanding, does not teach them in his specification that, which, in order to entitle him to maintain his patent, he should teach them, the way of doing the thing, but sets them a problem, which being suggested to persons of skill, they may be able to solve. That is not the way in which a specification ought to be fi'amed. It ought to be framed so as not to call on a person to have recourse to more than those ordinary means of knowledge (not invention) which a workman of competent skill in his art and trade may be presumed to have. You may call upon him to exercise aU the actual 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 invention." (1 FTeb. P. C. 174.) 403. Neilson v. Hareoed. [1841] The specification should be such as, if fairly followed out by a competent workman, without invention or addition, would produce the machine for which the patent is taken out, and such machine so constructed must be one beneficial to the public. (8 M. Sf W. 806 ; 10 L. J., Ex. 20 ; I Web. P. C. 331.) Parke, B., said, at Nisi Prius : " If experiments are necessary in order to construct a machine to produce some beneficial gffect, no doubt this specification is defective. If experiments are only necessary in order to produce the greatest beneficial effect, in that case I think the patent is not void." Parke, B., delivering the judgment of the Court of Exchequer, Should be sufficient without Experiments. 183 said, there was no authority to show that a specification, which could only be supported by a fresh invention, and correction by a scientific person, would be good. (1 Web. P. C. 371.) 404. Macnamaea v. Hui,se. N. P. [1842] Action for the infringement of a patent for " certain improve- ments in paving, pitching, or covering streets, roads, and other ways." The patentee, in his specification, said : " My invention consists in an improved mode of cutting or forming stone, or other suitable material, for paving or covering roads," &c. The specification directed the blocks, to be used for paving, to be bevelled both inwards and outwards, but said nothing as to the precise angle at which the bevels were to be made. The infiingement complaiaed of was the manufacture of wooden blocks according to the improvement of the plaintiff. Abinger, C. B., said : " If the specification leaves it to experir ment to determine what is the proper angle, it is not good; but if any angle is a benefit, it wiU do." After verdict, his Lord- ship said : " I may now say that my opinion was against the plaintiff as to the angle not being stated, and that the specifi- cation in that respect was insufficient." (1 Car. §• Marsh. 477 ; 2 Web. P. C. 129.) 405. Mtjntz v. Foster. N. P. [1844] Action for the infiringement of a patent for " an improved manufacture of metal plates for sheathing the bottoms of ships or other such vessels.'' The patentee, in his specification, directed copper and zinc to be melted together " in the usual manner, in proportions between 50 per cent, of copper to 50 per cent, of zinc, and 63 per cent, of copper to 37 per cent, of zinc, both of which extreme and all intermediate proportions wUl roll to a red heat." The defendant contended, that in describing the proportions of the copper and the zinc it was lefl; uncertain, upon the face of the specification, whether those quantities were to be taken with reference to the measured quantities that are cast in common into the fiising-pot, or whether they mean to specify that which wiU be the result and aggregate of the two combined together when it is taken oiit. 184 COMPLETE SPECIFICATION: Referring to this, his Lordship said : " A very proper objection, and if it creates in the mind of a workman any degree of doubt which was intended, it would be a fatal one to the specification. Because people are not to go on and make experiments after- wards, at a great expense to themselves, which shall turn out to be bootless and fruitless ; but they rely on an honest, and open, and candid exposition by the patentee, of everything that is necessary for the easy and certain procurement of the commodity, for which the patent was granted." (2 Web. P. a 109.) Prejudicial Concealment. LiAEDET V. JoHNSOK. N. P. [1778] See 419. 406. Reg. v. Aekweight. Sci.fac. [1785] Buller, J., in addressing the jury, said : " It is clearly settled at law that a man, to entitle himself to the benefit of a patent for a monopoly, must disclose his secret, and specify his inven- tion 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 dis- covery, and therefore, unless the discovery be true and fair, the patent is void. If the specification in any part of it, be mate- rially false or defective, the patent is against law, and cannot be supported." (1 Web. P. C. 66 ; Dav. P. C. 106.) 407. Turner v. Winter. [1787] Butler, J., said : " If he (the patentee) make the article, for which the patent is granted, with cheaper materials than those which he has enumerated, although the latter wiU answer the purpose equally well, the patent is void, because he does not put the public in possession of his invention, or enable them to Prejudicial Concealment. 185 derive the same benefit which he himself does." (1 T. R. 607 ; Dav. P, a 154; 1 Web. P. C. 81.) 408. Wood v. Zimmee. N. P. [1815] In this action, to try the validity of Zinck's patent for " a method of making verdigris," it appeared that the method de- scribed in the specification was sufficient to make the verdigris, but that Zinck had been accustomed clandestinely to put aqua- fortis into the boiler, whereby one of the ingredients, copper, was dissolved more rapidly ; but the verdigris so produced was neither better nor cheaper than that made according to the specification, which did not mention aquafortis in any way whatever. Gibbs, C. J. : " It is said that the method described makes verdigris, and that the specification is, therefore, suffi- cient. The law is not so ; 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 that gives an advantageous operation to the thing invented be concealed, the specification is void. Now, though the specification should enable a person to make verdigris substantially as good without aquafortis as with it, still, inasmuch as it would be made with more labour by the omission of aquafortis, it is a prejudicial concealment, and a breach of the term, which the patentee makes with the public." {Holt, N. P. 58 ; 1 Web. P. C. 82.) 409. BoviLL V. Moore. N. P. [1816] Gribbs, C. J., in addressing the jury, said: " There is another consideration respecting the specification, which is also a mate- rial 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 answer- able to the patent to the extent most beneficial within the know- 186 COMPLETE SPECIFICATION: ledge of the patentee at the time ; for a patentee, who has invented a machine useful to the pubKc, and can construct it in one way more extensive in its benefit than in another, and states in his specification only that mode which would be least beneficial, reserving to himself the more beneficial mode of practising it, although he will have so far answered the patent as to describe in his specification a machine to which the patent extends; yet he will not have satisfied the law by communicating to the public the most beneficial mode he was then possessed of, for exercising the privilege granted to him 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 fi-audulent concealment fi-om the public, and wiU render his patent void." {Dav. P. C. 400.) Crompton v. Ibbotson. [1828] See 4S5. 410. Lewis v. Marling. [1829] Bayley J. : " To support a patent it is necessary that the specification should make a fUll disclosure to the public. If the patentee, suppresses anything, or if he misleads, or if he does not communicate all he knows, his specification is bad. So, if he says that there are many modes of doing a thing, when in fact one only wiU do, tliis will also void the patent ; but if he makes a fuU and fair communication, as far as his knowledge at the time extends, he has done all that is required." ( 10 ^. §• C. 2S ; 4 C. §• P. 57 ; 1 Web. P. C. 496.) 411. Crossley ?;. Beverley. [1830] Bayley, J. : " It is the duty of the inventor, if between the period of taking out the patent and enrolling the specification he makes discoveries which will enable it better to effectuate the thing for which the patent was obtained, not only that he is at liberty to introduce them into his patent, but that it is his bounden duty so to do, and that it is not sufficient for him to communicate to the public the knowledge which he had at the time he obtained the patent, but he ought to communicate to Prejudicial Concealment. 187 the public the knowledge he has obtained before the specifica- tion." (1 Web. P. C. 117.) 412. Jones v. Heaton. Tindal, C. J. : " The patentee is bound to give in his specifi- cation the most improved state of his invention up to the time of enrolling his specification." (1 Web. P. C. 404, n.) 413. MoKGAN V. Seawaed. N. p. [1836] Alderson, B. : " If a patentee is acquainted with any particular mode by which his invention may be more conveniently carried into effect, he ought to state it in his specification." (1 Web. P. C. 174.) 414. Neilsonw. Hakford. N. P. [1841] The omission to mention in tiie specification anything which may be necessary for the beneficial enjoyment of the invention is a fatal defect. Aliter if such omission go only to the degree of the benefit. (I Web. P. C. 317.) The omission to mention in the specification anything which the patentee knows to be useful is a fatal defect. {lb. 321.) 415. Walton v. Bateman. N. P. [1842] If a patentee knows a better mode than that which he states in his specification of carrying out his invention, his patent is void. (1 Web. P. C. 622.) 416. Tetley r. Easton. N. P. [1852] PoUock, C. B. : "A man has no right to patent a principle, and then give to the public the humblest instrument that can be made from his principle, and reserve to himself all the better part of it." {Macr. P. C. 76.) 417. Heath v. Unwin. Ex. Ch. [1852] Coleridge, C. J., in the course of his judgment, said : " The specification, to be perfect, must be taken to specify impliedly ail the chemical equivalents of those chemical means expressly 188 COMPLETE SPECIFICATION: stated for producing the promised result, which were at the time of specifying known to ordinarify-skilled chemists or to the patentee himself; the latter of these seems to me to be as neces- sary as the former. If the inventor of an alleged discovery, knowing of two equivalent agents for effecting the end, could by the disclosure of one preclude the public from the benefit of the other, he might for his own profit force upon the public an expensive and difficult process, keeping back the simple and cheap one, which woidd be directly contrary to the good faith required from every patentee in his communication with the public." (2 Web. P. C. 243.) 418. Mackelcan v. Rennie. [1862] Williams, J. : " The plaintiff in this case had obtained a patent for ' improvements in floatiag-docks.' In the course of the 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 applica- tion 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 plain- tiff 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 directed a nonsuit to be entered. We are all of opinion that he was quite right in so doing." (13 C. B., N. S. 59.) Misleading. 419. LiARDET V. Johnson. N. P. [1778] " The meaning of the specification is, that others may be taught to do the thing for which the patent is granted, and if the specification is false the patent is void, for the meaning of the specification is, that after the term the public shall have the benefit of the discovery." In a patent for trusses for i-uptures, the patentee omitted what was very material for tempering steel, which was rubbing Misleading. 189 it with tallow, and for want of that Lord Mansfield held it void. (1 Web. P. C. 53; Bull. N. P. 76.) 420. E. V. Akkwkight. Sci.fac. [1785] According to the evidence, certain parts of the machine described were useless. Referring to these, BuUer, J., said: " If those are of no use, but to be thrown in merely to puzzle, I have no difficulty to say, upon that ground alone, the patent is void. (J)ai7. P. C. 118.) .... If four things only were necessary instead of ten, the specification does not contain a good account of the invention." (76. 125.) 421. Turner v. Winter. [1787] Action for the infringement of a patent for " a method of producing a yellow colour for painting in oil or water, making white lead, and separating the mineral alkali from common salt, all to be performed in one single process." The patentee, in his specification, said : " Take any quantity of lead and cal- cine it, or minium, or red lead, litharge, lead ash, or any calx, or preparation of lead fit for the purpose ; to any given quantity of the above-mentioned materials, add half the weight of sea salt, with a sufficient quantity of water to dissolve it, or rock salt, or sal gem, or fossil salt, or any marine salt, or salt water, proper for the purpose. . . . The yellow colour is produced by calcinating the lead after the alkali has been sepa- rated from it, till it shall acquire the colour wanted ; this will be of different tints, according to the continuance of the cal- cination or the degree of heat employed." Three objections were taken to the specification. " First ; that, after directing that lead should be calcined, it directed another ingredient to be taken, which would not answer the purpose, viz., minium. Neither was it said that minium should be calcined or fused ; but if it had any reference to the preceding words, then it should be calcined, which would not produce the effect, fusion being necessary. Second ; that ' fossil salt ' was improperly mentioned. There were many kinds of fossil salt, only one of which, viz., sal gem, would answer the purpose, because it must be a marine salt. Third ; that the white substance produced 196 COMPLETE SPECIFICATION: was not that commonly known as white lead:" — Held, that, if any of these objections were well founded, it would avoid the patent. {I T. R. 602; Dav. P. C. 145; 1 Web. P. C. 77.) Ashhurst, J., in the course of his judgment, said : " I think that, as every patent is calculated to give a monopoly to the patentee, it is so far against the principles of law, and would be a reason against it, were it not for the advantages the public derive from the communication of the invention after the ex- piration of the time for which the patent is granted. It is, therefore, incumbent on the patentee to give a specification of the invention in the clearest and most unequivocal terms of which the subject is capable. And if it appear there is any imnecessary ambiguity affectedly introduced into the specifica- tion, or anything which tends to mislead the public, in that case the patent is void. (1 Web. P. C. 80.) . . . It is certainly of consequence that the terms of a specification should express the invention in the clearest and most explicit manner; so that a man of science may be able to produce the thing intended, without the necessity of trying experiments." (ii. 81.) BuUer, J., said : " If the patentee says that by one process he can produce three things, and he fails in any one, the consideration of his merit, and for which the patent was granted, fails, and the Crown has been deceived in the grant. Slight defects in the specification will be sufficient to vacate the patent." (ZJ. 82.) 4SS. HuDDAED V. Gkimshaw. N. p. [1803] The insertion or representation of anything as material, not being so in fact, will vitiate the specification. {Dav. P. C. 295 ; 1 Web. P. C. 93.) Haemae v. Playne. [1809] See 472. Campion v. Benton. [1821] See 830. 433. Savoey v. Peice. N. P. [1823] Action for the infringement of a patent for a method of making seidlitz powder. The specification gave three recipes for preparing the ingredients, which were Kochelle salt, carbon- Misleading. 191 ate of soda, and tartaric acid. It was proved that by following the directions given in the specification, the result was obtained, and that it was new and useful. It appeared also that the three recipes were only common processes for preparing the ingre- dients, which were sold in shops before the date of the patent. The specification did not give any name to the ingredients resulting firom the three recipes. Held, that the patent was void. (1 Ry. §• 3Io. 1 ; 1 Web. P. C. 83.) Abbott, C. J., in delivering judgment, said : " It is the duty of anyone, to whom a patent is granted, to point out in his specification the plainest and most easy way of producing that for which he claims a monopoly, and to make the public acquainted with the mode which he himself adopts. If a person, on reading the specification, would be led to suppose a laborious process necessary to the production of any one of the ingredients, when, in fact, he might go to a chemist's shop and buy the same thing as a separate simple part of the compound, the public are misled. If the results of the recipes, or of any of them, may be bought in shops, this specification, tending to make people believe an elaborate process essential to the in- vention, cannot be supported." (1 Ry. §■ Mo. 3.) 424. Stuktz v. De la Kue. Ch. [1828] The patent was "for certain improvements in copper and other plate printing." The specification declared that " the nature of the invention consisted in putting a glazed or enamelled surface on paper to be used for copper and other plate printing, by means of white lead and size." This glaze or enamel was directed to be made by mixing size, in certain proportions, with " the finest and purest chemical white lead," but the evi- dence went to show that there was no substance generally known in the trade by that denomination. Lyndhurst, L. C, said : " It is a principle of patent law, that there must be the utmost good Mth in the specification. It must describe the invention in such a way, that a person of ordinary skill in the trade shall be able to carry on the process. Here, the specifica- tion says, that there is to be added to the size certain propor- tions ' of the finest and purest chemical white lead,' A workman 192 COMPLETE SPECIFICATION: would naturally go to a chemist's shop, and ask for ' the finest and purest chemical white lead ;' the answer which he would receive would be, that there was no substance known in the trade by that name. He would be compelled to ask for the purest and finest white lead ; and, according to the evidence, the purest and finest white lead that can be procured in London vnll not answer the purpose. It is said that there is a substance prepared on the Continent, which is white lead, or some pre- paration of white lead; and that, by using it in the manner described in the specification, the desired eflfect is produced. If that be so, the patentee ought to have directed the attention of the public to that circumstance. He ought to have said, ' the purest white lead which can be obtained in the shops in London will not do ; but there is a purer white lead, prepared on the Continent, and imported into this country, which alone must be used.' 'The purest and finest chemical white lead' must mean the finest and purest white lead usually gotten in the general market for that commodity, unless the public be put on their guard by a statement, that what would be called very fine and pure white lead, in the ordinary sense of the trade, wiU not answer, but that the white lead used must be of a superlatively pure and fine quality, prepared in a particular way, and to be gotten only in a particular place. If the article is not made in this country, but may be imported, it would be necessary to mention that circumstance." (5 Buss. 327; 1 Web. P. C. 83.) 435. Crompton v. Ibbotson. [1828] The patent was for an improvement in drying and finishing paper. The patentee said in his specification : " The invention I claim consists in conducting the paper, by means of cloth or cloths, against the heated cylinders, which cloth may be made of any suitable material, but I prefer it to be made of linen warp and woollen weft." The evidence showed, that, before the date of the specification, the patentee had tried several fabrics for the purpose, but none had answered except the one made of linen and wool: — Held, that the specification was bad, as it tended to mislead the public. Tenterden, C. J. : " Other Misleading. 193 persons, misled by the terras of this specification, may be induced to make experiments which the patentee knows must fail, and the public, therefore, has not the full and entire benefit of the invention." {Dan. ^ i. 34 ; 1 Web. P. C. 83 ; 1 Carp. P. C. 462.) Bayley, J. : "A party knowing that given materials will not answer the purpose, he is bound in his specification so to word it as to prevent parties from trying experiments on that which he knows will not answer." (1 Carp. P. C. 462.) 486. Lewis v. Marling. [1829] A party took out a patent for an improved shearing machine, to shear woollen cloths, and claimed four things as his invention. One of them was a proper substance to brush the cloth. In describing the machine in the specification, he directed plush to be used for this purpose, but he nowhere stated that this was an essential part of his machine. Before the time of the patentee's invention some kind of brush had been uniformly used, but it was subsequently ascertained that with this machine no brush was necessary: — Held, that this did not invalidate the patent. (10 B. §• C. 22 ; 4 C. §• P. 56 ; 5 ilf. §• jS. 66 ; 1 Web. P. C. 493.) Tenterden, C. J., said: "If the patentee mentions that as an essential ingredient in the patent article, which is not so, nor even useful, and thereby 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 plaintifis claim to be the inventors of a certain part of the machine not described as essential, and which turns out not to be useful." (1 Web. P. C. 495.) Bayley, J., said: "If the party knew that it (the brush) was unnecessary, the patent would be bad, on the ground that this was a deception, but if he thought it was proper, and only by a subsequent discovery finds out that it is not necessary, I think that it forms no ground of objection." {lb. 496.) 427. DeeoSne v. Faieie. [1835] A specification must state at least one method which will succeed. (2 C, M. §• R. 493 ; 1 Web. P. C. 165.) H. o 194 COMPLETE SPECIFICATION: 428. BiCKFOED V. Skewes. [1841] Patent for a miner's safety fuse. The specification directed the use of " gunpowder, or other proper combustible matter," for the manufacture of the fuse. It was objected, on behalf of the defendants, that the plaintiff had failed to show that any other material but gunpowder had ever been used in the fuse ; or, if introduced, would answer the pui-pose desired. Denman, C. J., in delivering the judgment of the Court, said : " The first part of this objection is true in fact ; but it seems to us immaterial ; for if other materials, not specified (and it is cer- tainly not necessary to specify all), but still within the descrip- tion given, will answer the purpose, no ambiguity is occasioned, nothing that can mislead the public, or increase the difficulty hereafter of making the instrument, by the introduction of terms which import that the patentee has himself used them. The latter part of the objection, if true in fact, would have been more material, because it does tend to mislead if it be stated that a whole class of substances may be used to produce a given effect, when, in fact, only one is capable of being used success- fully." (1 Q. B. 948; 1 Web. P. C. 218.) 4S9. Neilson v. Haeeoed. [1841] A specification, which contains a false statement in a material circumstance, of a nature that, if literally acted upon by a com- petent workman, would mislead him, and cause the experiment to fail, is bad, and the patent invalidated, although the jury finds that a competent workman, acquainted with the subject, would not be mislead by the error, but would correct it in practice. The patentee, in his specification, said : " The shape of the receptacle " (a part of his machine) " is immaterial to the effect." This was held to cast upon the patentee the necessity of proving to the^satisfaction of the jury that any shape which could reasonably be expected to be made by a competent work- man, would produce a beneficial effect, and be a valuable dis- covery. (8 M. §• W. 806.) See also 393. 430. Simpson v. Holliday. Ch. [1864] Patent for "improvements in the preparation of red and Ambiguity in. 195 purple dyes." The patentee in his specification said : " I mix aniline with dry arsenic acid, and allow the mixture to stand for some time ; or I accelerate the operation by heating it to, or near to, its boiling point." The operation would not succeed if conducted by the first of these methods, viz., without heat. "Wood, V.-C, said : " If the Court had any notion whatever that it (the first method) was put in with an intent to mislead, then without doubt or hesitation it would hold the patent to be bad ; because there are two points in these cases of somewhat confiised description in specifications which the Court mainly attend to — whether or no it has been put in with a fraudulent intent to mislead, so as to have a larger claim— on the one hand, that species of fraudulent intent to mislead, which at once leads the Court to decide against the validity of the patent ; or, on the other hand, whether, although put in innocently by mis- take, and without any fraudulent intent, it is such a description as wiU or can mislead any ordinary workman in the operation that he has to carry on." (20 Newt. Lon. Jour., N. !S. 108.) Amhiguity in. 431, Galloway v. Bleaden. N. P. [1839] Tindal, C. J., referring to the specification, said: " If there is a want of clearness, so that the public cannot afterwards avail themselves of it, much more if there is any studied am- biguity in it, so as to conceal from the public that which the p^entee for a term is enjoying the exclusive benefit of, no doubt the patent itself would be completely void." (1 Web. P. C. 524.) 432. Walton v. Pottek. N. P. [1841] Tindal, C. J., in addressing the jury, said : " The object of the specification is, that it is the price which the party who obtains the patent pays for it, and it would be a hard bargain on the part of the public, if he were allowed to clothe his dis- covery and his description in characters so dark and so am- o 2 196 COMPLETE SPECIFICATION: biguons, that no one could make from it when the fourteen years have expired, and he should not have paid the price for which he enjoyed the exclusive privilege, but that he should have it in his own hands still for as long a period as he chooses ; and therefore, it is always a proper answer when a patent is set up, to say that you have not so described it, that it may be understood." (l" Web. P. C. 595.) 433. Macnamaka v. Hulse. [1842] In a patent for blocks for pavement, the patentee claimed as his invention, that his block was bevelled both inwards and outwards on the same side of the block ; but the specification did not state at what angle the bevels should be made ; and one witness stated that the angle was material, but another witness stated that any angle would be of some benefit : — Held, that if the jury thought that a bevel at any angle would be beneficial, the specification would be good, although it omitted to state any particular angle at which the bevels should be made. (Car. §• M. 471.) MuNTz V. Foster. N. P. [1844] See 405. 434. Hastings v. Bkown. [1853] A specification in a patent, for a particular construction of windlasses, stated that the object was "to hold, without slipping, a chain cable of any size." Before the date of the patent, con- structions were known by which a windlass might be made to hold a single chain cable of any assigned size : — Held, that the specification did not unequivocally show, that the object was to construct a single windlass which might hold difierent chain cables, whatever their size, and that such a windlass was, there- fore, not protected by the patenb. (1 E. §• B. 450 ; 22 L. J., Q. B. 161 ; 17 Jur. 647.) 435. The Patent Type Founding Company v. Eichards. Ch. [1859] The specification of an invention, which consists in the use of known materials in new proportions, is not necessarily bad for uncertainty, though the patentee does not limit himself to Should distinguish what is New from what is Old. 197 the precise proportions recommended. The patentee is bound, according to the authorities, to state what he considers the best proportions. A specification stated in substance, that the usual practice in the manufacture of type was, to employ lead and antimony, and in some cases to add a small per centage of tin ; that the object of the invention was to obtain tougher metal by employ- ing tin in large proportions with antimony, greatly reducing or wholly omitting the use of lead ; that the best proportions were seventy -five of tin and twenty -five of antimony, but that this might be, to some extent, varied; and that, if lead were used, it must not exceed fifty per cent, of the whole, one part of antimony to three of tin, or tin and lead, being the best : — Held, on demurrer, that the specification was not bad on the face of it for uncertainty, and that the evidence of persons acquainted with the usual modes of manufacture was necessary to determine whether the invention was stated with sufficient precision. (1 John Rep. 381; 6 Jur., N. S. 39.) 436. Kalston v. Smith. H. L. [1865] Lord Westbury : " There were some objections raised to the specification, and particularly with regard to the uncertainty of the material, the language of the amended specification beiag that the plaintiff took ' a roller of hard metal, or other suitable material.' I do not think those words ' or other suitable ma- terial' contain anything like such a generality of direction as would be fatal to the patent ; ' other suitable material' no doubt would mean any material equally sufficient for the purpose with hard metal. I think your Lordships would be of opinion that there was no solid weight in that objection." {\\ H. L. Cas. 248; 35 L. J., C. P. 56; 20 C. B., N. S. 47; 13 L. T. Rep., N. S. 4.) Should distinguish what is New from what is Old. 437. Manton v. Manton. N. P. [1815] Gibbs, C. J., in addressing the jury, said : " It is necessary that the patentee should show that he has accurately explained 198 COMPLETE SPECIFICATION: the nature of his invention in his specification, separating that which is new from that which is old, so as to enable a person of tolerable skiU to make the thing by means of his specification." {Dav. P. a 349.) 438. Caepentek v. Sidth. N. P. [1841] Abinger, C. B., in his remarks to the jury, said : " It is required as a condition of every patent, that the patentee shall set forth in his specification a true account and description of his patent or invention, 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." (1 Web. P. C 532.) 439. Gibson v. Brand. [1842] CressweU, J. : " Every party is bound to teU the public clearly, by his specification, what he claims, and what they may do, or not do, without risk of an action for infiringing his patent." (1 Web. P. a 640.) 440. Ckane v. Price. [1842] It is no objection to the validity of a patent that the inven- tion cannot be used except by means of a former patented invention, where the second patentee expressly disclaims any part of such former invention. (4 3£. §• G. 580.) Tindal, C. J., in delivering the judgment of the court, said : " Unless the grantee of the new letters patent is bound by law to specify whether such former invention, which is excepted, was so excepted on the ground of its being generally known, and used by the public, or because it was the subject of a patent which secured the use of it to a former patentee, the new patent will be good. But that distinction is as much in the knowledge Should distinguish what is Neiofrom what is Old. 199 of the public as in that of the grantee of the patent. If, indeed, the new patent had been taken out for an improvement or alteration of an invention secured by a former patent, then, for obvious reasons, a greater particularity would be necessary to distinguish the new from the old." {Ih. 608.) 441. Holmes v. The London and North- Western Kail- way Company. [1852] The plaintiff obtained a patent for " an improved turning- table," all the component parts of which, except one, were comprised in a prior patent, the specification of which was not enrolled until after the date of the plaintiff's patent. The plaintiff, in his specification, claimed " the improved turning'- table hereinbefore described," without showing that any part of it was old. The jury found that the introduction of certain suspending rods made the table a new instrument : — Held, that the specification was bad, as it did not distinguish what was new from what was old. (Macr. P. C. 13.) Jervis, J., in delivering judgment, said : " It is admitted as a general pro- position that every patentee must, in his specification, de- scribe the nature of his invention either directly or in such a way as that those who read the specification with common ordinary understanding, and fairly read it, may see and under- stand what is new and what is old." (Jib. 26.') 443. Tetley v. Easton. [1853] A specification describing a patent invention must, unless a contrary intention appears, be deemed to claim all that it idescribes, not only as a whole taken in combination, but also all the essential parts of which such combination is composed. (2 Ell. §• Bl. 956; Macr. P. C. 82.) Coleridge, J., said: " This rule may, perhaps, admit of some modification in favour of the patentee, in respect of things incidentally mentioned, which are old and universally known to be. so ; for, if he had occasion to introduce a hinge into his machinery, it woiild be absurd to expect that he should point out that the hinge was ■not new." {Macr. P. C. 87.) 200 COMPLETE SPECIFICATION: 443. Lister v. Leather. [1858] A patent for a combination is not a claim that each part thereof is new. (8 H. §• B. 1004; 3 Jur., N. S. 811.) Affirmed on appeal to the Exchequer Chamber : — Held, also, that a patent is a patent for a combination, if a combination is distinctly stated in the specification to be a part of the inven- tion, although the combination is not expressly claimed ; for a claim is not an essential to a specification, or necessary for the protection of the invention. Nor is it necessary to disclaim those matters which manifestly form no part of the invention. (8 jE'. §• B. 1031 ; 27 L. J., Q. B. 295.) 444. Morton v. Middleton. [1863] Lord President : " The usual mode of claiming as new merely a combination or arrangement of certain things, not in them- selves new, is to set forth, that what the patentee claims is not each of the parts, but the combination and arrangement of them, so as to produce either a new result, or -a greater and better one than has been attained before. But this course is not essential. If it appears from the reading of the document, that, although the patentee does not in so many words say, ' I limit my claim to so and so,'— yet if it plainly enough appears that he actually does only claim so and so, that is enough." (1 Cr. S., 3rd Sei: 722.) 445. Newall v. Elliott. [1864] Pollock, C. B. : " The patentee of a combination is bound to state what parts of the combination he claims to be new, or what parts of the combination he has taken from that general stock of knowledge which is common to aU the public." (10 Jur., N. S. 956.) 446. Renard v. Levinstein. Ch. [1864] Lord Justice Knight Bruce: "Considering the different consequences that may arise as to the part of an invention communicated from a foreign country, and as to the part of the Should distinguish what is New from what is Old, 201 same invention, or set of inventions, wliicli may be deemed to be in every respect new, I consider it to be a serious and very arguable question, whether it is or is not incumbent on the patentee to distinguish, to define, and to particularize what is new and what is old." (10 L. T. Rep., N. S. 177.) 447. Dangerfield v. Jones. Ch. [1865] Where the patented machine or apparatus is entirely new, the patentee is not bound to describe and distinguish the diffe- rent parts ; but where the invention consists of a machine which is only an improvement upon an old machine, he must dis- tinguish and describe all the parts which he claims as new. (13 L. T. Rep., N. S. 144.) 448. Daw v. Elet. Ch. [1867] Where a specification, in the first instance, describes the in- vention in too general terms, but afterwards, in describing the method of performing the invention, refers to certain figures in drawings annexed thereto, and the claim made is for the manu- facture of the invention described with reference to those figures, the specification is sufficient. The patent was for improvements in central-fire breech-load- ing cartridges. The specification, describing the method of performing the invention, referred to certain figures in drawings annexed thereto, but did not distinguish between what was new and what was old. The patentee claimed " the manufacture of cartridges described with reference to figs. 1, 2, and 1*; and I also claim the manufacture of cartridges described with refer- ence to figs. 3, 4, and 3* : " — Held, that the patent might be upheld by limiting the claim (as in Seed v. Higgins') for the manufacture of cartridges described with reference to the above- mentioned figures, (Z. R., 3 Eq. 500 n, 513; 36 L. J., Ch. 482; 14 W. R. 126; 13 L. T. Rep., N. S. 399.) 449. Weight v. Hitchcock. [1870] A patent was taken out by W. for " improvements in the manufacture of frills or ruffles, and in the machinery or appa- 202 COMPLETE SPECIFICATION: ratus employed therein." The specification described a process of plaiting fabrics by means of a reciprocating knife in combina- tion -with a sewing machine. The first claim was for the general construction, arrangement, and combination of machinery for producing plaited firills or trimmings in a sewing machine ; the second, was for the application and use of a reciprocating knife for crimping fabrics in a sewing machine ; and the third, for the peculiar manufacture of crimped or plaited frills or trim- mings " as hereinbefore described" and illustrated by drawings : — Held, that W.'s patent was not for the manufactured pro- duct, but for the process of manufacturing it; and was not limited to the manufacture of plaited fabrics by the knife in combination with a sewing machine. Kelly, C. B., said : " It was contended that the manufacture described includes the use of the sewing machine, or that it is a manufacture by means not only of the 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 claim, this is only pointed out as the best mode of completing the manufacture. The sewing machine is treated as a known invention already in use, and it is separate and distinct from the mode of crimping or plaiting to which the plaintiff lays claim." (39 L. J., Ex. 97; L. R., 5 Ex. 37.) See also under " Specifying an Improvement." Claiming too much. 450. R. V. Else. Sci.fac. [1785] Where a patent claimed the exclusive liberty of making lace, composed of silk and cotton thread mixed, and not any par- ticular mode of rnixing, it was held to be void, on proof that silk and cotton thread had been before mixed on the same frame for lace, althoqgh not in the same mode. (1 Web, P. C. 76.) Claiming too viuch. 203 451. HuDDARD «. Grimshaw. N. p. [1803] EUenborough, C. F. W. §• D. 262; 1 Web. P. C. 142.) Denmau, C. J., said: " The specification claimed more than the plaintiff had invented, and would have actually precluded Brown from continuing to make the same chair that he had made before the patentee's discovery. We are far fi-om think- ing that the patentee might not have established his title by showing that a part of Brown's chair could have effected that for which the whole was designed. But his claim is not for an improvement upon Brown's leverage, but for a leverage so described that the description comprehended Brown's." (6 A. 8f E. 74:5.) 457. Gibson v. Beand. [1842] If the patentee claims as his invention improvements in ma- chinery, or a new combination of machinery, and the jury find that he has only invented an improved process, the patent is void. (1 Web. P. C. 613 ; A M. Sf G. 179 ; 4 Scott, N. R. 844.) Tindal, C. J., said: "Looking at the specification in the case, it appears to me that this patent cannot be supported at law, because the plaintiffs have, in the course of it, claimed more than they are entitled to." (1 Web. P. C. 634.) 458. MuNTZ V. FosTEE. N. P. [1844] Action for the infi:ingement of a patent for " an improved manufacture of metal plates for sheathing the bottoms of ships or other such vessels." The patentee, in his specification, directed copper and zinc to be melted together " in the usual manner, in proportions between 50 per cent, of copper to 50 per cent, of zinc, and 63 per cent, of copper to 37 per cent, of zinc, both of which extremes, and aU intermediate proportions, will roll at a red heat :" — Held, that if the invention could not be made in one or two of the different proportions of zinc and copper mentioned in the specification, the patent would be void. (2 Web. P. C. 110.) 206 COMPLETE SPECIFICATION: 459. Gamble v. Kdrtz, [1846] Where a patent was granted for improvements in apparatus for the manufacture of certain chemical substances, and the jury- found that the apparatus itself was not new, but that the patentee's mode of connecting the parts of that apparatus was new, the Court directed the verdict to be entered for the de- fendant, as the patentee had claimed more than was new. (3 C. B. 425.) 460. Beakd v. Egeeton. [1849] Maule, J. : " If you describe in a specification two ways of doing a thing, and by one way it cannot be done, the specifica- tion is bad." (19 L. J., C. P. 40.) 461. E. V. Cutler. [1849] The specification of a patent for " improvements in the con- struction of the tubular flues of steam boilers,'' described two modes of performing one part of the invention, either of which it was stated would produce the effect. At the trial the judge told the jury that, if either mode succeeded, the patent might be good, notwithstanding the imperfection of the others : — Held, that this was a misdirection. Denman, C. J., delivering the judgment of the Court, said : " I told the jury that if either of those methods were proved satisfactorily to do the work, the patent might be good, notwithstanding the imperfection of the other. The case of Lewis v. Marling had been quoted as esta- blishing that doctrine, but on examination we find that the Court then only said that the claim of some part of the machine which turned out to be useless, did not vitiate the patent. This is certainly a very different thing from describing a part of the 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 effectually employed. The reader of the specification, relying upon it, might attempt to use the former mode in constructing the machinery, which would fail of its purpose from being too accurately made according to the patentee's instructions." {Macr. P. C. 137; 14 Q. B. 372, n.) Newton v. Vouchek. [1851] See 3S6. Claiming too much, 207 463, Tetley v. Easton. N. P. [1852] By making a general claim, a patentee cannot include in his patent improvements of whicli he was ignorant at the date of his patent. {Macr. P. C. 77.) 463. Crossley v. Potter. N. P. [1853] Pollock, C. B. : " In my mind, the safest course for patentees to adopt in framing their specifications is, instead of including everything, to confine themselves specially to one good thing, and a jury will always take care that if that be a real inven- tion, no man, under colour of improvement, shall be allowed to interfere with that which is the offspring of their genius." {Macr. P. a 256.) See also SI 8. 464. Booth v. Kennard. [1857] Action for the infringement of a patent for " improvements in the manufacture of gas." The specification stated the in- vention to " consist in the direct use of seeds, leaves, flowers, branches, nuts, firuit, and other substances and matters contain- ing oil, or oily or resinous matter." The specification also stated "that the mode of using seed, and constructing the apparatus used under this my patent in preparing gas, may be the same as the apparatus used in the ordinary mode of making gas with coal." The claim was as follows : " I claim for making gas direct from seeds, and matter herein named, for practical illuminations, or other useful purposes, instead of making it from the oils, resins, or gums, previously extracted from such substances." A previous patentee had, by his specification, proposed, for the manufacture of gas, to use fatty substances, such as greaves or graves ; also the residuum after the oil had been expressed from seeds, such as oil cake ; also beech nuts, mast, cocoa nuts, and other matters abounding in oil, and he proposed to use these substances separately and in combination : — Held, that the claim, being merely for making gas direct from seeds and matter stated in the specification, without reference to any method of doing it, was too large and general, and could not be supported. (2 II. 8f N. M ; 26 L. J., Ex. 305.) 208 COMPLETE SPECIFICATION: 465. Thomas v. Foxwell. Ex. Ch. [1858] The patentee of a sewing machine, in his specification, claimed " the application of a shuttle in combination "with a needle, as shown in sheet 1, for forming and sewing loops of thread or other substance, for the purpose of producing stitches cither to unite or ornament fabrics, whatever may be the means employed for working such shuttle and needle when employed together :" — BLeld, that this claim was not confined to the single application of a shuttle in combination with a needle, as shown in sheet 1, but extended generally, to the application of a shuttle with a needle for the attaining the object therein stated ; and, as the shuttle and needle had been used together previously, the patent was void. (5 Jur., JV. b'. 37 ; affirmed in Ex. Ch., 6 Jur., N. S. 271.) 466. Seed v. Higgins. H. L. [1860] The plaintiff took out a patent for an improvement in ma- chinery used for roving cotton. His specification claimed the discovery of the application of the principle of centrifugal force for such purpose, but he filed a disclaimer, declaring that he intended to claim only the application of centrifugal force in the particular manner represented in drawings attached to the specification : — Held, that, taking the specification and dis- claimer together, they sustained the patent for the invention of the particular machine described in the drawings. (8 £!. §• B. 755 ; 27 L. J., Q. B. 148.) Affirmed by a majority of the judges on appeal to the Court of Exchequer Chamber (8 E. §• B. 771 ; 27 L. J., Q. B. 411). Affirmed in the House of Lords (8 H. of L. Cas. 550). Campbell, C. J., in delivering the judgment of the Court of Queen's Bench, said : " It is quite clear that, if the specification and the disclaimer being taken together, anything is claimed which was not comprised in the original specification, the whole is bad ; and on the issue that the plaintiff has not duly specified his invention, the verdict ought to be entered for the defendant." (27 L. J., Q. B. 150.) Lord Chelmsford, in delivering his judgment in the House of Lords, said : " Assuming that the specification had been originally bad. Claiming too much. 209 on account of the generality of the claim, I see nothing in the act of parliament which prevents such an objection as this being removed, the only limitation to a disclaimer of any part of the specification being that it shall not extend the exclusive right granted by the letters patent." (8 H. L. Cas. 568.) 467. Simpson v. Holliday. H. L. [1866] A patent for " improvements in the preparation of red and purple dyes," thus described the process : " I mix aniline with dry arsenic acid, and allow the mixture to stand for some time, or I accelerate the operation by heating it to, or near to, its boUing point, until it assumes a rich purple colour." It was proved (and not denied by the patentee) that it was necessary to apply heat in order to produce the colour ; but evidence was given that a competent workman would apply heat : — Held, however, that this description in the specification was bad, and the patent founded thereon was invalid. (13 W. R. 511 ; 12 L. T. Rep., N. S.9 9. Affirmed in the House of Lords, L. Rep., 1 H. L. 315 ; 35 L. J., Ch. 811.) Westbury, L. C, hearing the case on appeal from Wood, V.-C, in the course of his judgment, said: "If the true construction of the specification be, that two distinct processes are described as being both efficient, and are both claimed as part of the in- vention, but one is found upon trial to be inefficient and useless, it is plain that the patent has been granted on a false sug- gestion, and is, therefore, invalid and bad at law." (13 W. R. 578.) 468. EusHTON V. Ckawley. Ch. [1870] Sir E. Malins, V.-C. : " The public must be told in very dis- tinct language in every specification, what are the articles they may use, and what they may not use. Therefore, if a man makes a discovery, and, instead of limiting himself in his specification to that which properly is the discovery (if it be one), makes his specification too extensive, and claim more than he is entitled to claim, that is calculated to embarrass the H. P 210 COMPLETE SPECIFICATION: public, and is, I apprehend, a fatal objection to the patent." {L. R., 10 Eq. 527.) 469. Arnold v. Bkadbuey. Ch. [1871] Where a patentee, in his specification, professes to do by machinery, what has never been done before by machinery, and describes the machinery by which he does it, his claim is not too large on the face of it, because it claims generally to perform the operation " by machinery." A patentee in his specification described an improved ruffle or fi-ill, and the machinery by which he proposed to make such improved ruffle, and to fasten it to a plain fabric by a single series of stitches. By his claim he claimed " the production by machinery of ruffles, and the simultaneous attachment of them to a plain fabric by a single series of stitches:" — Held, that the claim was not, on the face of it, too large. (Z. B,., 6 Ch. 706.) Specifying an Improvement. 470. "Williams v. Beodie. [Before 1785] The invention was an improvement upon an old stove, but in the specification the whole stove was described, including both the old and new parts, without describing the invention as a new improvement upon an old thing, and it was held that the patent was therefore void. (Cit. Dav. P. C. 96.) 471. HOENBLOWER V. BOULTON. [1799] The specification of a patent for a " method of lessening the consumption of steam and fuel in fire engines," stated that the " method consisted in the following principles," and then described the mode in which those principles were applied to the purposes of the invention. Lord Kenyon, C. J., in delivering judgment, said : " I do not consider it as a patent for the old engine, but only for the addition to, or improvement of, Specifying an Improvement. 211 the old engine It possibly occurred to the inventor, that if the patent were to be obtained for the whole engine, it might be open to cavil, and therefore he took out his patent not for the engine, but for his invention of a method of lessening the consumption of steam and fuel in fire engines. The method is disclosed in the specification, and it is by the addition of what is there disclosed, and by managing it in the way described. The patent therefore is only for that additional improvement as described in the specification; and there is no pretence to say that he claims or could claim the sole making of the old engine. (8 T. R. 103.) 472. Haemae v. Platne. [1809] The patent in this case was granted for improvements in machinery, secured by previous letters patent. It was admitted by the defendant, that the improvements for which the second patent was granted are included in the second specification, which gives a fuU and proper description of the whole machine in its improved state. But it was objected, that the second specification does not, in any manner, point out or explain the improvements upon the former patented machine, for which the second patent was granted, and, therefore, that it was insuffi- cient: — Held, that the specification was sufficient. (11 East, 101; Dav. P. C. 311.) EUenborough, C. J., in the course of the argument, 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 preclude the imitation of other parts of the machine than those for which the new patent is granted; when he can only teU by comparing it with some other patent what are the new, and what are the old parts; and if this may be done with reference to one, why not by reference to many other patents, so as to render the investigation very complicated? It may not be necessary, indeed, in stating a specification of a patent for an improvement, to state precisely all the former known parts of the machine, and then to apply to p2 212 COMPLETE SPECIFICATION: those the improvement ; but, on many occasions, it may be suflScient to refer generally to them. As in the instance of a common watch ; it may be sufficient for the patentee to say, take a common watch, and add or alter such and such parts, describing them." (11 East, 107; Dav. P. C. 318.) 473. Macfarlane v. Price. N. P. [1816] A person ought to be warned by the specification against the use of the particular invention. Therefore, in the specification of a patent for an improved instrument, it is essential to point out precisely what is new, and what is old, and it is not suffi- cient to give a general description of the construction of the instrument without making such distinction, although a plate is annexed, containing a detached and separate representation of the parts in which the improvement consists. (1 Stark. 199; 1 Web. P. C. 74.) 474. BoviLL V. MooKE. N. P. [1816] Action for the infringement of a patent for a machine or machines for making lace. The specification described the whole machine, without pointing oub any particular part or parts of it, as the invention of the patentee. Gibbs, C. J., held, that, if a combination of a certain number of the parts of the machine up to a given point, had existed before the date of the patent, and if the patentee's invention sprang from that point, and added other combinations to it, then the specification, stating the whole machine as his invention, was bad. (^Dav. P. C. 361.) 475. Hill v. Thompson, C. P. [1818] If the invention be an improvement, it must distinctly appear on the face of the specification to be claimed as such, and not as an original discovery. (1 Web. P. C. 247.) 476. M'Alpine v. Mangnall. [1846] If, taking the whole specification together, and giving its words a fair and reasonable interpretation, the court can see Specifying an Improvement. 213 that the specification only claims an improvement on an old machine, it will be sufficient. (3 C. B. 518.) 477. FoxwELL V. BosTOCK. Ch. [1864] In a patent for an improved arrangement or new combi- nation of machinery, the specification must describe the im- provement and define the novelty, otherwise, and in a more specific form, than by the general description of the entire machine. It is not sufficient that a person possessed of all the knowledge existing at the time of the patent on the subject- matter of the patent, wiU discern the improvement ; or, that it may be discovered upon a minute comparison and coUation of aU existing combinations with the new combination that is claimed. The term " combination of machinery" is nothing but an extended expression of the word "machine." (10 L. T. Rep., N. S. 144 ; 12 fV. R. 723.) 478. Paekes v. Stevens. [1869] Where a patentee has taken out a firesh patent for improve- ments on his original invention, it is sufficient, if, reading his second specification with the first, an artisan would have no sub- stantial difficulty in ascertaining what was claimed. {L. R., 8 JEq. 358 ; judgment affirmed, L. R., 5 Ch. 36.) Sir W. M. James, V.-C, in the course of his judgment, said : " 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, hke 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 fi:om it aU that was old and common-place, all that was the subject of other patents, or of other improvements, bringing to the subject not only the knowledge of an ordinarily skilled artisan, but of a patent lawyer or agent." {L. R., 8 Uq. 365.) See also Murray v. Clayton. 214 COMPLETE SPECIFICATION: Variance between Provisional and Complete Specification. In re Nbwall and Elliott. [1858] See 356. FoxwELL V. BosTOCK. Ch. [1864] See 358. 479. Penn v. Bibbt : Penn v. Jack. [1866] The provisional specification of a patent for an improvement in the bearings and bushes for the shafts of screw and sub- merged propellers, described the invention as consisting in employing wood in the construction of siich bearings and bushes. The complete specification, after describing the mode in which the wood was used, claimed the employment of wood in the construction of the bearings and bushes " as therein described :"■ — Held, that this was no such variation between the provisional and complete specification, as would invalidate the patent. (L. B., 2 Ch. 127; 36 L. J., Ch. 455 ; 15 L. T. Rep., N. S. 399 ; 15 fF. R. 208.) 480. Thomas v. Welch. [1866] The provisional specification of a patent for sewing machines, claimed, amongst other improvements, that a certain instru- ment which moved the work, " or another acting therewith," acted to hold the work during the insertion of the needle, while the complete specification appeared to describe only one instru- ment as moving and holding the work : — Held, that such a variance would not invalidate the patent, (i. R., 1 C. P. 192; 12 Jur., N. S. 316; 35 L. J., C. P. 200.) 481. Weight v. Hitchcock. [1870] The title of the patent being for improvements in the manu- facture of frills or ruffles, and the provisional specification describing the invention as relating to a particular manufacture of frills and ruffles, the complete specification described the invention as relating to a particular manufacture of frills, ruffles, or trimmings: — Held, that this was no such material variation, as to render the patent invalid. (Z. R., 5 Exch. 37; 39 L. J., Exch. 97.) Kelly, C. B., said: "A third point made is that there is an inconsistency between the provisional and the final specification, the word ' trimming' being added in the latter. But by whatever name it is How affected by subsequent Discoveries. 215 described, the thing is in itself identical ; it is something attached to any part of the dress, either of men or women, whether it is called the frill of a sleeve, or the ruffle of a shirt, or the trimming of a lady's dress. These are all ejusdem generis, and the description is only important for the purpose of showing for what purpose the product may be ultimately used when it has been manufactured by means of the plaintiff's invention." {L. Rep., 5 Ex. 46.) Channell, B. : " One of the objections turns on the form of the specification, the final specification going, it is said, beyond the provisional. I do not think it necessary to discuss in general the relation of the provisional and complete specifications. In the view which I take of the circumstances of the case that question does not arise, for there being no proof or suggestion of fraud, I do not think that there is any such extension of the claim in the final specification as disables the plaintiff from claiming this as a good patent." {lb. 49.) How affected hy subsequent Discoveries. 482. Ceossley v. Beverley. N. P. [1829] Action for the infringement of a patent for " an improved gas apparatus." In the specification the patentee said : " My improved gas apparatus is for the purpose of extracting inflam- mable gas by heat from pit coal, or tar, or any other substance from which gas or gases capable of being employed for illumi- nation can be extracted by heat." It was objected to the suffi- ciency of the specification, that the retort described would not do for making gas from oil. Before the date of the specifica- tion, however, oil had never been employed for that purpose: — Held, that the specification was sufficient. (3 C. ^ P. 513 ; Mo. §• Mai. 283; 1 Web. P. C. 106.) Tenterden, C. J., said: "I think it quite clear in this specification, when he speaks of coal and other matters, he means matters ejusdem generis. The patentee must be understood to mean things that were in use, and not things which would produce gas, as every- thing inflammable would, but, from being so expensive, was never expected to be in use. . . . The patentee never sup- poses that they will apply oil for the purpose of lighting towns 216 COMPLETE SPECIFICATION: and rooms, because it was too expensive. A man must have the spirit of prophecy if he knows that people will apply those things to the purpose for which they were not considered applicable at that time." (1 Web. P. C. 107.) 483. Lewis v. Maeling. [1829] A party took out a patent for an improved shearing machine, to shear woollen cloth, and claimed four things as his invention — one of them was, a proper substance (plush) to brush the cloth. In describing the machine in the specification, he directed plush to be used for this purpose,' but he nowhere stated that this was an essential part of his machine. Bayley, J., said : " At the period when this specification was made, the plush was in use, and there is no reason to believe that this patentee did not think it was a useful part of the machine. IJis patent is for an instrument where something of that kind was always thought material ; and I am of opinion that the subsequent discovery, that the plush was unnecessary, is no objection to the validity of the patent." (4 C. §• P. 57 ; 10 C. B.21; 1 Web. P. a 496.) 484. Neilson v. Haeeoed. [1841] If the apparatus, described in a specification, can be used beneficially in its simplest form, it is no objection that great improvements may have been made. (8 M. §* W. 806.) The Electeic Telegeaph Company v. Beett. [1851] See 16. Tetli;t v. Easton, N, P. [1852] See 463. 485. Heath v. Unwin. H. L. [1855] Parke, B. : " The specification must be read as persons ac- quainted with the subject would read it, at the time it was made ; and if it could be construed 9,s containing any chemical equivalents, it must be such as are known to such person at that time ; but those which are not known at the time as equivalents, and afterwards are found to answer the same purpose, are not included in the specification." (25 L. J., C. P. 19.) 486. Simpson v. Holliday. Ch. [1864] Where a patentee describes, in his specification, his invention The Claim. 217 in the best foi-m that science could then give it, it. is immaterial that a cheaper way of carrying out the invention has been subsequently discovered. (20 Newt. Lon. Jour., N. 8. 116.) Betts v. Neilson. Ch. [1868] See 380. The Claim. 487. Kay v. Marshall. Ch. [1836] Lord Cottenham, L. C, said: "It (the claim) is intro- duced, lest in describing and ascertaining the nature of his invention, and by what means the same is to be performed (particularly in the case of a patent for an improvement), the patentee should have inadvertently described something which is not new, in order to render his description of the improve- ment intelligible. The claim is not intended to aid the descrip- tion, but to ascertain the extent of what is claimed as new. It is not to be looked to as the means of making a machine according to the patentee's improvements. If, therefore, the specification, as containing the description, be sufficiently pre- cise, 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." (2 Web. P. C. 39; 1 My. gf Cr. 383.) 488. "Walton v. Bateman. K P. [1842] Action for the infringement of a patent for " certain improve- ments in cards for carding wool," &c. The specification stated the invention " to consist in the application and adaptation of the material known by the name of caoutchouc, or India-rubber, as a substitute for the fiUets or sheets of leather which are com- monly used in the construction of ordinary cards, and thus giving a superior elasticity and durability to such cards." The claim was for " the application and adaptation of caoutchouc or India-rubber as the fillet or sheet, or medium in which the dents or teeth are to be set together in the manufacture of cards, and thereby obtaining a superior elasticity and durability to cards as above described." In describing the method of carrying out the invention, the patentee recommended that a piece of linen should be fastened to the back of the India-rubber. 218 COMPLETE SPECIFICATION: Cresswell, J., said to the jury : " I was called on to express some opinion as to whether the plaintiff claimed, as an essential part of his patent, the application of linen, but I cannot help thinking there is some little confusion in the use of the term, ' what he claims as an essential part of his patent.' He claims, as distinctly as possible, the application of India-rubber as a substitute for leather in making the backs of cards in order to get an elastic bed ; that is what he claims, and there is nothing about the cloth in that. But it is not sufficient that a man should claim a principle. He must add to it in his specifica- tion a mode of working out that principle practically, and that he does now ; for you will find he recommends, as the best mode of working that out, the application of the cloth, but he does not profess to say it cannot be done without. If he had said, it cannot be done without, I should have thought he would have said the linen was essential to the working out of his prin- ciple." (1 Web. P. C. 622.) 489. Heath v. Unvvin. H. L. [1855] Pollock, C. B. : " The right of the plaintiff does not turn upon the extent of his claim, but upon the communication made to the public as to the mode of accomplishing his object, and he has no right to claim anything but that which he has communicated to the public, however large in point of language his claim may appear to be." (5 H. L. Cas. 540; 25 L. J., C. P. 20.) 490. Tetley v. Easton. [1857] A patentee describing his invention in the specification, is to be taken to claim as part of his invention all that he describes as the means by which it is to be carried into effect, unless he clearly expresses a contrary intention. (2 C. B., N. S. 706 ; 26 L. J., C. P. 269.) 491. LisTEK u. Leather. Ex. Ch. [1858] A claim is not an essential part of a specification, or necessary for the protection of the patent. (8 H. §• B. 1034 ; 27 L. J., Q. B. 296.) Effect of, Drawings annexed to Specification. 219 Effect of Drawings annexed to Specification. 49S. BouLTON V. Bull. [1795] Rooke, J. : "I am not aware of any rule of law which re- quires a model or a drawing to be set forth, or which makes' void an intelligible specification of a mechanical improvement, merely because no drawing or model is annexed." (2 H. Bl. 481.) ^QZ. Ex parte ¥o^. Ch. [1812] Lord Chancellor Eldon : " I take it to be clear, that a man may, if he chooses, annex to his specification a picture or a model descriptive of it ; but his specification must be in itself sufficient; or, I apprehend, it will be bad." (1 V. §• B. 67; 1 Web. P. C. 431.) 494. BoviLL V. MooEB. [1816] The drawings annexed to the specification need not be well executed, or skilfully drawn ; they are sufficient if they enable a workman of fair and competent skill in mechanism to make the patented machine. (Dav. P. C. 369.) Macfaelane v. Peice. [1816] See 473. 495. Beunton v. Hawkes. N. P. [1820] Abbott, C. J. : " If a drawing, or figure, enables workmen of ordinary skill to construct the improvement, it is as good as any written description." (1 Carp. P. C. 410.) 496. Bloxam v. Elsee. N. P. [1825] Abbott, C. J., said : " 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 to be allowed to call in aid the drawings which he annexes to the specification ; and if, by a comparison of the words and the drawings, the one will explain the other sufficiently to enable a skilfiil mechanic to perform the work, such a specification is sufficient." (1 C. §• P. 564.) 220 COMPLETE SPECIFICATION: 497. Morgan v. Seaward. N. P. [1836] Drawings are to be taken as part of the specification. (1 Web. P. C. 173.) 498. Hastings v. Brown. [1853] A drawing may be taken to explain an ambiguity in the written description of the invention contained in tlie specifica- tion. {\ E.l^ B. 454.) 499. Morton v. Middleton. [1863] Drawing connected with the specification, and referred to in the letter-press, are to be examined and construed in connection with the specification ; and, therefore, their intelligibility is a matter for the jury. (1 Cr. S., Srd Ser. 722.) The absence of a scale attached to drawings with a specifi- cation is an imperfection ; and when any question as to identity of proportions arise, their absence becomes a matter of import- ance, {lb. 724.) 600. FoxwELL V. BosTOCK. Ch. [1864] Lord Westbury, C. : " It was contended by the plaintiff's counsel, and perhaps justly, that a patent for a new machine would be good if the specification contained nothing but clear drawings of the machine and a description of them." (4 De G., J. 8f S. 303 ; 10 L. T. Rep., N. S. 146.) 601. Daw «. Elet. Ch. [1867] Where a specification in the first instance describes the in- vention in too general terms, but afterwards, in describing the method of performing the invention, refers to certain figures in drawings annexed thereto, and the claim made is for the manu- facture of the invention described with reference to those figures, the specification is sufficient, (i. R., 3 Eq. 500, n. ; 14 W. R. 126; 13 L. T. Rep., N. S. 399.) 503. Poupard v. Fardell. Ch. [1869] Malins, V.-C. : " A specification may consist of a drawing alone, and Ex parte Fox is clearly overruled." (18 W. R. 129.) Verbal Ei-rors in. 221 Verbal Errors in. 503. Derosne v. Faikie. [1835] The patentee, who was a Frenchman, used, in his specifi- cation, the word " discolouring " to signify depriving of colour, and the word "baked," instead of the word crystallized : — Held, that this did not render the specification void. (5 Try. 393 ; 2 Cr. M. §• R. 476 ; 1 Web. P. C. 158 ; 1 Gale, 109.) 504. MiNTER V. Mower. N. P. [1835] It is quite indifferent whether a word used in a specification is the correct description of the thing, provided it describes it so that no man can doubt what it is. (1 Web. P. C. 141.) 505. Neilson v. Harford. [1841] A patent is not vitiated by a mistake in the specification, as where air is called an imponderable substance, or sulphur a mineral ; nor by a mistake in a matter foreign to the invention, which cannot mislead ; nor by the inaccurate use of words which are explained by the context. (1 Web. P. C. 331.) 506. Simpson v. Holliday. Ch. [1865] Lord Westbury, L. C, in delivering judgment, said : "When it is stated that an error in a specification, which any workman of ordinary skiU and experience would perceive and correct, will not vitiate a patent, it must be understood of errors which appear on the face of the specification, or the drawings it refers to; or which would be at once discovered and corrected in following out the instructions given for any process or manu- facture ; and the reason is, because such errors cannot possibly mislead. But the proposition is not a correct statement of the law, if applied to errors which are discoverable only by experi- ment and further inquiry. Neither is the proposition true of an erroneous statement in a specification amounting to a false suggestion, even though the error would be at once observed by a workman possessed of ordinary knowledge of the subject." (13 W. R. 578 ; 12 L. T. Rep., N. S. 99.) 222 COMPLETE SPECIFICATION: 507. Neilson «. Betts. H. L. [1871] After a patent has stood inquiry and the test of time, courts do not encourage verbal objections to the form of the specifica- tion, (i. Rep., 5 H. L. Cas. 1; 40 Z. J., Ch. 317; 19 W. R. 1121.) Construction, of, generally. 508. HuLLETT V. Hague. [1831] Lord Tenterden, C. J. : "I cannot forbear saying, that I 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." (2 B. §• Ad. 377.) 509. Haewoeth v. Hardcastle. [1834] Tindal, C. J. : " 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 would warrant ; on the contrary, such construction 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." (1 Web. P. C. 485.) A patentee is to be presumed not to claim things which he must have known to be in use. {lb. 484.) 510. EUSSELL V. COWLBT. [1834] Alderson, B. : The specification ought to be taken as a whole, and fairly and candidly construed, without astuteness to pick holes in it. Parke, B. : In the construction of a patent, the court is bound to read the specification so as to support it, if it can fairly be done. (1 fVeb. P. C. 470.) 511. Deeosne «. Faime. N. P. [1835] Matters of construction that arise on the face of the patent and specification are matters of law for the court, subject to Construction of, generally. 223 ■the sense put upon the terms of art by the jury. (1 Web. P. C. 156.) 513. BiCKFORD V. Skewes. [1841] The language of the specification ought not to be astutely construed, so as to overthrow a patent. (1 Q. B. 950 ; 1 Weh. P. C. 219.) 613. Neilson v. Hakfoed, [1841] The construction of the specification is for the Court, the meaning of the words and surrounding circumstances having been ascertained by the jury. Parke, B., delivering the judgment of the Court of Exchequer, held it a just rule of construction, to judge of the meaning of a particular phrase by taking the whole instrument together ; and he construed the word " effect " in one part of the specification as meaning bene- ficial effect, because it was evidently used in that sense in some other parts of the specification. (1 Web. P. C. 295.) 514. The Househill Company v. Neilson. [1843] The letters patent and specification constitute one instrument, and are to be interpreted according to the ordinary sense of the terms. (1 Web. P. C. 679.) 515. Elliott v. Tuknek. Ex. Ch. [1845] The words of a specification are to be construed according to their ordinary and proper meaning, unless it be shown by some- thing in the context (which may be explained by evidence) that a different construction ought to be adopted. (2 C: B. 446 ; 15 L. J., C. P. 49.) 516. Stevens v. Keating. N. P. [1847] Pollock, C. B. : " Some observations have been made at the bar on the subject of patents and specifications, and the different rules of construction that have been maintained at different 224 COMPLETE SPECIFICATIOX: periods. I take the rule to be, that you are not to intend any- thing in favour of a specification or patent, and certainly not to intend anything against it ; you are to deal with it just as you find it ; you are to put the true and right and fair construction upon every allegation and every fact connected with it, and you are to find what is the true and fair and just result. You are not to lean in favour of the public against the patent, which it is to be regretted was many years ago rather the fashion of the courts of justice, under the notion that it was a monopoly, that all monopolies were odious, and that, therefore, you were to intend everything against them ; although, on the other hand, in modern times, it is said the leaning is the other way, I do not think there ought to be any leaning one way or the other." (2 Web. P. C. 187.) 517. Beakd v. Egeeton. [1848] In the construction of the specification, the whole instrument must -be taken together, and a fair and reasonable interpretation given to the words used in it. (8 C. B. 165 ; 13 Jur. 1004 ; 19 L. J., C. P. 36. 518. Sellers I'. Dickinson. [1850] Pollock, C. J. : " The specification should be met with candour and indulgence." (5 Ex. 324.) Rolfe, B.: "The court should read a specification as a person of ordinary under- standing would do, not loosely conjecturing anything, but, at the same time, not scanning it as if it were a special plea." (5 Ex. 326.) 519. The Electric Telegraph Company v. Brett. [1851] Patent "for improvements in giving signals and sounding alarums in distant places, by means of electric currents ti-ans- mitted through metallie circuits." Subsequently to the patent, it was discovered that the return current could be conducted back to the battery through the earth as effectually as through a continuous metallic circuit. The defendant contended that. Construction of, generalli/, 225 by using this method, they did not infringe the plaintiff's patent. Cresswell, J., delivering the judgment of the Court of Common Pleas, said : " "With respect to the specification, it is to be ob- served, that the claim of the patentees being for improvements not all immediately connected with, or dependent on, each other, but all applicable to giving signals, &c., by means of electric currents, the plan adopted iu the specification, was, to give an account of the whole system or mode of transmission of electric currents for the purpose of giving signals, and the modes of giving those signals, specifying afterwards those parts claimed as improvements, and either expressly disclaiming, or leaving un- claimed, all that was not expressly claimed. It is obvious, that in such a specification, that part which describes the matter claimed, is to be much more strictly construed than that which, though necessarily mentioned, is not spoken of as a new matter, or as the subject of a grant, but only as something known, and necessary to be referred to for the purpose of explaining the claim. Considered in this view, we think the specification, in speaking of metallic circuits, may properly be considered as comprehending aU circuits which are metallic, as far as it is material to the improvements claimed that they should be so ; and that the expression in question is not to be construed with more strictness and precision than is necessary to enable it to fulfil that purpose of explanation for which it was introduced. (10 Com. B. 880.) .... It appears to us reasonable to hold that a claim for a patent for improvements in the mode of doing something by a known process, 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 known at the time of the claim, so long as it remains identical with regard to improvements claimed, and their application." (iS, 881.) 520. Newton v. Vatjcher. [1851] Specifications are to be read in connection with their titles. (6 Exch. 864.) II. Q 226 COMPLETE SPECIFICATION: 521. Tetleyj;. Easton. N. P. [1852] Pollock, C. B. : Specifications are to be construed in a candid and fair spirit, and if any mistake in one part can be corrected by other parts of the specification, such correction should be made. {Macr. P. C. 74.) 522. Palmee v. Wagstaff. [1854] Pollock, C. B. : ''A patent or specification should be con- strued in the sense which the patentee intended, and if any expressions are ambiguous, we should endeavour to give effect to the intention ; and, moreover, I think that every patent should be expounded favourably 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 diiferent fi:om that which the expressions indicate." (9 Exeh. 501.) 523. Univin v. Heath. H. L. [1855] Crompton, J. : "I think that it would be a narrow and dangerous construction to limit the invention, claimed in ex- press words, by the mode and process of working which the plaintiff sets forth, as a means of carrying his invention into effect." (25 L. J., C. P. 12.) 524. BoviLL V. Pimm. [1856] The construction of a specification is a question of law when the facts are not disputed. (11 Exch. 740.) Hills v. The London Gas Light Company. [1857] See 542. Thomas v. Foxwell. [1858] See 556. 525. Seed v. Higgins. H. L. [1860] Lord Campbell, L. C. : " Where novelty or infi-ingement depend merely on the construction of the specification, it is a pure question of law for the judge ; but where the consideration arises how far one machine, or a material part of one machine, imitates or resembles another in that which is the alleged Construction of, generally. 227 invention, it generally becomes a mixed question of law and fact which must be left to the jury." (8 H. L. Cas. 561.) 536. Betts v. Menzies. H. L. [1861] Blackburn, J., said : " I agree with what was said by Mr. Justice Crompton, in the Court below, that if the general claim to the use of an invention were cut down and limited to the use of the invention in the particular way pointed out by reason of the words 'as herein described,' it would be a narrow rule of construction, generally working to the detriment of patentees ; and, what weighs more with me, generally giving an effect to specifications different from what the persons draw- ing them intended, or those reading them understand." (10 H.L. Cas. 140.) 527. Hills v. Evans. Ch. [1862] The construction of a specification, as the construction of all other written instruments, belongs to the Court ; but the expla- nation of the words or technical terms of art, the phrases used in commerce, and the proof and results of the processes which are described (and in a chemical patent the ascertainment of chemical equivalents) are matters of fact upon which evidence may be given, contradictory testimony may be adduced, and upon which it is the province and right of a jury to decide. But when those portions of a specification are made the subject of evidence, the direction to be given to the jury with regard to the construction of the rest of the patent, which is conceived in ordinary language, must be a direction upon the hypothesis of the jury arriving at a certain conclusion with regard to the meaning of those terms, the signification of those phrases, the truth of those processes, and the result of the technical proce- dure described in the specification. (31 L. J., Ch. 4:51 ; 8 Jur., N. S. 525.) 528. Mackelcan v. Eennie. [1862] In construing a specification, it is not competent to the in- ventor to pray in aid the provisional specification, in order to Q2 228 COMPLETE SPECIFICATION: explain or enlarge the meaning of the complete specification. (13 C. B., N. S. 52.) 629. Simpson v. Hollidat. [1866] Lord Westbury, L. C, hearing the case on appeal from "Wood, V.-C, in the course of his judgment, said: "With respect to the rules that govern the construction of specifications, they are the ordinary rules for the interpretation of written instruments, having regard especially to the fact that the speci- fication must clearly fulfil the obligation imposed on the patentee by the proviso contained in all letters patent, viz., that the grant shall be void if the patentee shall not particularly describe and ascertain the nature of his invention, and in what manner the same is to be performed. It is, therefore, made a settled rule, that the specification must be so expressed as to be perfectly intelligible to a workman of ordinary knowledge, and it must follow, that if there be any obscurity or ambiguity in the speci- fication which is likely to mislead, this defect ought not to be helped by any refined or secondary interpretation of the lan- guage. It was contended before me, and the Vice-Chancellor is reported to have said, that it has been settled by authority that the most liberal construction is to be given to the patent that will sustain it, especially in those cases where the Court is satisfied that the invention is really new and useful. (20 Newt. Lon. Jour,, N. S. 107.) If the words, ' the most liberal con- struction' are intended to denote some principle of interpre- tation difierent from the ordinary rules for the construction of written instruments, I am not aware of any such authority." (13 fF. R. 578.) Construction of, in particular Cases. 530. Forsyte v. Eiviere. [1819] Patent for a "method of discharging or giving fire to artiUery, and all other fire-arms, mines, chambers, cavities and JDlaces in which gunpowder, or other combustible matter, is or maybe put for the purpose of explosion." The specification pointing out Construction of, in particular Cases. 229 how the invention was to be carried out: — Held, that the patentee was entitled to the exclusive application of the deto- nating mixture as priming, whatever the construction of the lock by which it was discharged. (1 Web. P. C. 97.) Bloxam v. Elsee. [1827] See 454. HuLLETT V. Hague. [1831] See 111. 531. MiNTER V. "Wells. [1834] In summing up his invention, a patentee stated it thus: — " My invention is the application of a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acts as a counter-balance to the pressm-e against the back of such chair, as above described:" — Held, that this was not a claim to the principle of the kver, but to an application of that principle to a certain purpose, by certain means, and that the patent was good. (1 C. M, §• R. 505 ; 5 Tyr. 163 ; 1 Weh. P. C. 134.) 532. EussELL V. Cowley. [18353 A patent claimed the invention of manufacturing tubes by drawing them through rollers, using a mandrel in the course of the operation. A later patent claimed the invention of manu- facturing tubes by drawing them through fixed dies or holes, but the specification was silent as to the use of the mandrel.: — Held, that the Court, taking the whole of the latter specification together, would infer that the mandrel was not to be used, and that the latter patent was good. (1 C. itf. §• ii. 864 ; 1 Web-. P. C. 463.) 533. Gibson v. Brand. [1842] A patent was obtained for a new and improved process or manufacture of silk, and silk in combination with certain other fibrous substances. By the specification, the inventors declared the nature of the invention to consist of eight several and distinct parts or heads, the sixth being " the application of an improved process to the throstle machine, on the principle of the iong-ratch, for the new and useful purpose of spinning 230 COMPLETE SPECIFICATION: silk waste ; " and the seventh, " certain improvements effected by them in the throstle machine, by which the utility in spin- ning silk waste was greatly augmented." After describing the old process of converting silk waste into yam, the specification proceeded to describe the novel process by which the plaintiffs produced their new or improved manufacture ; and, referring to drawings, continued : " the annexed drawings for th<3 most part represent the Avell-known spinning-fi-ame, called a ' throstle,' on the principle of the long-ratch, as implied in the spinning of flax ; which machine, combined with the improve- ments we have applied to it, we apply to the new and useful purpose of spinning silk waste of long fibres, in combination with flax or wool." And the specification concluded thus : — " We desire it to be understood that we disclaim those parts of the process, or mechanism, which were, or may have been, previous to the granting of our patent, well knovni or in use for the same purposes ; but we restrict our claims to the eight several heads of invention mentioned in the early part of the specification, all of which we believe to be new, and of great public utility : " — Held, that this was a claim, either of a new invention, or a new combination of parts of the throstle machine ; and the jury having foimd " that the invention was not new, but an improved process, not a new combination," that the patent could not be supported. (4 Scott, N. R. 844 ; 4= M. Sf G. 179 ; 1 Web. P. C. 631.) 534. Macnamaea v. Hulse. N. P. [18422 Action for the infringement of a patent for " certain improve- ments in paving, pitching, or covering streets, roads, and other ways." The patentee, in his specification, said : " My in- vention consists in an improved mode of cutting or forming stone, or other suitable material, for paving or covering roads." The infringement complained of was the manufacture ot wooden .blocks according to the improvement of the plaintiff. Abinger, C. B., said: "I think that the words 'any other suitable material' include a wood pavement, though probably the plaintifl" never contemplated it." {Car. S<- Marsh. 477 ; 2 Web P. a 129.) Construction of , in j)articular Cases. 231 535. MuNTZ V. Foster. N. P. [1844] Action for the infringement of a patent for " an improved manufacture of metal plates for sheathing the bottoms of ships and other such vessels." The patentee, in his specification, said : " I take that quality of copper known in the trade by the appellation of ' best selected copper,' and that quality of zinc known in England as ' foreign zinc,' and melt them together in the usual manner in proportions between 50 per cent, of copper to 50 per cent, of zinc, and 63 per cent, of copper to 37 per cent, of zinc, both of which extremes and all intermediate pro- portions will roll at a red heat." Tindal, C. J., in summing up to the jury, said : " You have had evidence before you that ' best selected copper ' is the very purest that can be had. What I understand, therefore, when he says, ' I take that quality of copper known in the trade by the appellation of ' best selected copper,' ' he takes it of that degree of purity of which the best selected copper was known at the time to consist. He adds also, ' and that quality of zinc known in England as foreign zinc' I do not understand him to mean it should be made of foreign zinc alone, but of zinc of that quality wherever it was made." (2 Web. P. C. 104.) 536. Elliott v. Tuenee. Ex. Ch. [1845] In covenant on an indenture, by which B. was licensed to make and sell buttons according to A.'s patent, the issue was, whether certain buttons, made by B., were made under the licence. The specification described the invention to consist in the application to the covering of buttons, of such figured woven fabrics " wherein the ground, or the face of the ground thereof, is produced by a warp of soft or organzine silk, such as is used in weaving satin and the classes of fabrics produced therefrom." The jury asked how they were to understand the word "or" in the specification; whether it was used disjunc- tively, or whether "organzine''^ was the construction of the word " soft." The judge told them, that, in his opinion, unless the silk was organzine, it was not within the patent : — Held, tliat this direction was erroneous; for that the judge 232 COMPLETE SPECIFICATION: should not have told the jury, absolutely, that soft and organzine silk were the same, but that the words were capable of being so construed, if the jury were satisfied that, at the date of the patent, there was only one description of soft silk, — and that organzine, — used in satin weaving ; but, otherwise, that the proper and ordinary sense of the word " or " was to be adopted, and the patent held to apply to every species of soft silk, as weU as to organzine silk. (2 C. B. 446 ; 15 L. J., C. P. 49.) 537. M'Alpine v. Mangnall. [1846] Patent for "improvements in machinery or apparatus for stretching, drying, and finishing woven fabrics." The specifi- cation, after explaining the mode of conducting the operation, continues : — " We are perfectly aware that many simple contri- vances might be devised for effecting the object of our improve- ments, viz. giving vibrating motion to the selvages of the cloth, for the purposes above stated ; but as it is not practicable to describe every possible method in detail, we desire it to be understood that any mode even of moving one side or selvage of the cloth whilst the other remains Stationary, we shall con- sider to be an evasive imitation of our invention, if for the purpose of drawing the threads into diagonal positions by mechanical means instead of manual labour : " — Held, that the patentee claimed, not the whole machine, but only those improvements which gave the vibrating motion to the fabric while in the course of dyeing. (3 C. B. 496 ; 15 L. J., C. P. 298.) 538. Barker v. Grace. [1847] The specification of a patent for " improvements in the process of finishing hosiery, and other goods manufactured from lamb's- wool, &c.," stated the invention to consist in submitting hosiery, and other similar goods, to the finishing process of a press heated by steam, &c., in the manner hereinafter mentioned. A description was then given, by letters, of a drawing which represented a press, which consisted of a box heated by steam, up to which ianother box similarly heated was to be pressed by Construction of, in particular Cases. 233 means of hydraulic pressure, or by screws or other well-known means. After describing the method of pressing the goods between these hot boxes, the specification concluded by con- fining the inventor's claim to the submitting hosiery and similar goods to the pressure of hot boxes or surfaces heated by steam as above described : — Held, that the specification did not claim a general mode of applying hot surfaces to fabrics, but that it was merely for the particular machine described in the specifi- cation, and that a method of finishing hosiery goods, by passing them through heated rollers, was not included in the patent. (1 IJxch. 339 ; 17 L. J., Exch. 122.) Pollock, C. B., said : " Were the Court to hold that rollers are included in this patent, the effect of it would 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 roUers were capable of being used, and had been used, for such a process, or that they were the object of the patent." (1 Exch. 344.) 539. Stevens v.. Keating. [1848] Patent for "a process or method of combining various ma- terials so as to form stuccoes, plasters, and cements, and for the manufacture of artificial stones, marbles, &c. used in build- ings." The specification, after stating the invention to consist in prodwcing certain hard cements of the combination of the powder of gypsum, powder of limestone, and chalk, with other materials, such combinations being (subsequent to their mixing) submitted to heat, described the method or process of making a cement from gypsum to consist in mixing with powdered gypsuam, strong alkali {ex. gr. best American pearl-ash) dis- solved in a certain proportion of water ; this solution to be neutrali'Zed with acid (sulphuric acid being the best), the mass to be kept in agitation, and the acid to be added gradually till the effervescence should cease; and then a certain proportion 234 COMPLETE SPECIFICATION: of water to be added (if other alkali were used, the quantity to be varied in proportion to its strength) ; and the mixture having been brought to a proper consistence by the further addition of powdered gypsum, to be dried in moulds, and finally subjected to a furnace capable of producing a red heat. The specifi- cation concluded by stating that other alkalies and acids beside those before mentioned would answer the purposes of the invention, though not so well, and that the inventor claimed the method or process thereinbefore described: — Held, that the specification was bad. "It must either be a claim of all acids and alkalies, or of all acids and alkalies that will answer the pur- pose. If it be a claim of aU acids and alkalies, it is clearly bad, as there are some which will not answer the purpose. If it be a claim of those only which will answer the purpose, it is as clearly bad, in consequence of not stating those which wiU. answer the purpose, and distinguishing them from those which will not, and so preventing the public from being under the necessity of making experiments to ascertain which of them will succeed and which will not." (2 Exch. 772; 19 L. J., Ex. 57.) 640. Beard v. Egeiiton. [1849] A specification of a patent for "a new and improved method of obtaining the spontaneous reproduction of all the images received on the focus of the camera obscura," in describing the process, stated : " It is to be divided into five operations. The first consists in polishing and cleaning the silver surface of the plate, in order to properly prepare or qualify it for receiving the sensitive layer or coating (iodine), upon which the action of the light traces the design ; the second operation is the applying that sensitive layer or coating to the silver surface; the third, in submitting, in the camera obscura, the prepared surface or plate to the action of light, so that it may receive the images; the fourth, in bringing out or making appear the image, picture, or representation, which is not visible when the plate is first taken out of the camera obscura ; the fifth, and last operation, is that of removing the sensitive layer or coating, which would continue .to be affected and undergo different changes from the Construction of, in particular Cases. 235 action of light; this would uecessarily tend to destroy the design or tracing so obtained in the camera obscura." It then proceeded to give a description of the first operation, — preparing the silver surface of the plate; the concluding part of which directed that nitric acid dissolved in water should be applied three different times, the plate being each time sprinlded with pounce, and lightly rubbed with cotton; adding, "When the plate is not intended for immediate use or operation, the acid may be used only twice upon its surface after being exposed to heat; the first part of the operation, that is, the preparation as far as the second application of the acid, 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 indispensable, that, just before 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; finally, the plate must be cleaned with cotton from all pounce dust which may be on the surface, or its edges." In a subsequent part of the specification, having described the second operation, viz., the application of the iodine, the inventor observed : " After this second operation is completed, the plate is to be passed to the third operation, or that of the camera obsCura ; whencA^er it is possible, the one operation should immediately foUow the other :" — Held, that, taking the whole specification together, the direction as to the third application of acid was not to be understood to be a direction to apply the acid after the second operation, viz., the coating the plate with iodine, — which, it was proved, would render the whole process abortive, — but to apply it as part of the first operation; and that the specification gave sufficient information to an operator of reasonable skill, and was therefore sufficient. (8 C. B. 165; 13 Jur. 1004; 19 L. J., C. P. 36.) 541. Holmes v. The London and North Western Rail- way Company.. [1852] The plaintiff obtained a patent for " an improved turning- table," all the component parts of which, except one, ivere com- prised in a pi-ior patent, the specification of which was not 236 COMPLETE SPECIFICATION: enrolled until after the date of the plaintiff's patent. The plaintiff, in his specification, claimed " the improved turning- table hereinbefore described," without showing that any part of it was old. The jury found, that the introduction of certain suspending rods made the table a new instrument. Jervis, C. J., in delivering judgment, said : " The claim in substance is this — 'for an improved turning-table.' Now, that will not have the effect of making everything that follows a combina- tion, merely because he claims the turning-table." {Maci\ P. C. 27.) Maule, J., after pointing out that the patentee had not distinguished what was new from what was old, said : " If it be impliedly said in the specification, that the suspension rods are new, and an improvement on what existed before, the same implication arises as to every other part." {lb. 29.) 542. Hills v. London Gas Light Cosii'ANr. [1857] Though the construction of a patent or specification is ordinarily for the judge, yet where a specification mentioned " the precipitated or hydrated oxides df iron," and there was ( on the issue of novelty) a prior patent proved, the specification of which mentioned carbonate of iron, and the scientific evidence showed that real carbonate of iron was difficult to be pre- served, that it was not commonly sold in the shops (though it existed as a chemical substance), and what was sold for it would be, in fact, a hydrate, through absorption, but that carbonate would not be understood chemically as meaning hydrate ; the judge, having ruled that the specification was to be construed commercially not scientifically, that carhonate commercially meant the *' hydrate," and that, on the issue of novelty, the plaintiff must be nonsuited, the Court, after great doubt, set aside the nonsuit, and granted a new trial. (27 L. J., JExch. 60.) 543. Thomas v. Foxwell. Ex. Ch. [1859] . The patentee of a sewing machine, in his specification, claimed " the application of a shuttle in combination with a needle, as shown in sheet 1, for forming and sewing loops of Construction of, in particular Cases. 237 thread or other substance, for the purpose of producing stitches either to unite or ornament fabrics, whatever may be the means employed for working such shuttle and needle when employed together." By a disclaimer he stated, " I do not claim the use in a machine of several needles and shuttles, nor do I claim any of the mechanical parts separately of which the machinery shown in the drawing is composed:" — Held, (affirming the judgment of the Court of Queen's Bench (5 Jur., N. S. 37),) that the claim was not confined to the single application of a shuttle in combination with a needle, as shown in sheet 1, but extended generally to the application of a shuttle with a needle, for attaining the object therein stated. (6 Jur., N. S. 271.) 544. Hills v. The London Gas Light Company. [1860] In a patent for an improved mode of manufacturing gas, the plaintiff claimed a mode of purifying gas by means of "hydrated or precipitated oxide of iron:" — Held, that this included only precipitated hydrates. (5 H. ^ N. 312 ; 29 L. J., Ex. 409.) Bramwell, B., in delivering the judgment of the Court of Exchequer, said : " The next objection was, that the plaintiff's specification was insufficient on this ground. He says : ' I use the hydrated or precipitated oxides.' It was said that included all hydrated oxides, and inasmuch as some of the natural hydrated oxides would not do, the plaintiff's specification was bad. Now, that question turns upon this : If the plaintiff in his specification means all the hydrated oxides, it is open to that objection ; but if he means only those hydrated oxides which are also precipitated, — ^that is, the artificial hydrated oxides — it is not open to that objection. It may be said that the language is in any sense ungrammatical, and that hydrated or precipitated — the whole or the part— cannot be right. To say, ' The works of Shake- speare, or Hamlet and King Lear,' would obviously be an inaccuracy, which cannot be judged by the ordinary rules of grammar, and therefore we must endeavour to find out the proper meaning of this inaccurate expression. It appears to ns, upon looking at the specification, that the plaintiff uses those equivalent expressions, befause he says ' hydrated or pre- 238 COMPLETE SPECIFICATION: cipitatedj' and that oxide of iron may be conveniently prepared for these purposes, and so on ; and therefore it is obvious that when he iises that word hydrated, he uses it as synonymous with precipitated ; and consequently, when he speaks of using hydrated or precipitated oxides, he means such hydrated oxides as are precipitated." (5 //. §• N. 368 ; 29 L. J., Ex. 424.) 545. OXLEY V. HOLDEN. [1860] Patent for " certain improvements in the doors and sashes of carriages." One part of the invention was described as "a novel arrangement and mode of fitting and working sliding sashes, glass frames, blinds and shutters for railway and other carriages," which consisted of a metal plate, with a slot and a stud or pin working in a groove on each side of the sash or frame ; and the patentee claimed " the metal fittings and the mode of applying the same, described herein as the second part of my invention." The description of the metal fittings was inseparably interwoven, throughout the specification, with the mode of applying them : — Held, that this was a claim, not for the metal fittings themselves, but for the mode of applying them, and consequently, that the patent was sustained by proof that the application was new, though the stud and plates them- selves were old. (8 C. B., N. S. 666 ; 30 L. J., C. P. 68 ; 8 W. E. 626 ; 2 L.T. Rep., N. S. 464.) 548. Simpson v. Holliday. Ch. [1864] A patentee, in his specification of a patent for preparing red and purple dyes, said : " I mix aniline with d?y arsenic acid," &c. At the date of the patent an arsenic acid entirely free from water was known to chemists as anhydrous arsenic acid, but could not be commonly bought in the trade. This would not pro- duce the dyes. A hydrated acid, containing from 12 to 14 per cent, of water was commonly sold by manufacturers, which was dry to the touch, and known in the trade as " dry arsenic acid." This would produce the dyes. Wood, V.-C, found, on the ground that the specification was addressed to manufacturers, and not to scientific chemists, that " dry ai'senic acid" meant dry hydrated arsenic acid. (20 Neivt. Lon. Jour., N. S. 118.) Construction of, in -particular Cases. 239 547. Ealston v. Smith. H. L. [1865] E., in his specification, described his patent for improvements in embossing and finishing woven fabrics, as enabling him, upon a roller, either spirally or longitudinally, or in a circular form, to groove, or flute, or engrave, or mill, or otherwise indent any design. The fact was, that if the design was engraved longi- tudinally it would destroy the material. R. therefore, in a dis- claimer, altered " upon " into " around the roller :" — Held, that the construction of the specification, as amended by the dis- claimer, excluded spiral engraving, and confined it to circular engraving or grooves. (11 H. L. Cas. 223; 35 L. J., C. P. 49; 13 L. T. Rep., N. S.l; 20 C. B., N. S. 28.) 548. Thomas v. Welch. [1866] A specification, to which drawings were attached, after describing an instrument marked " g," continued, " It is the arranging an instrument * g,' as herein described, which, while it is the means of holding the fabric .... is also the means by which the step-by-step movement is given to the fabric, which constitutes the peculiarity of my invention : " — Held, that this was not a claim of all instruments which were at once the means of holding and moving the fabric : nor, on the other hand, of the exact machine, with all its arrangements, contained in the drawings ; but a claim to the exclusive right to use "g," or any similar instrument, for the purpose of holding and moving the fabric at the same time. {L. R., 1 C. P. 192.) 549. Jordan v. Mooee. [1866] A. obtained a patent for " certain impi'ovements in the con- struction of ships and other vessels navigating on water." By his specification the patentee claimed as his invention, amongst others, (1) the construction of ships "with an iron frame, com- bined with an external covering of timber planking for the sides, bilges and bottoms ; (6) the construction of iron frames adapted to an external covering of timber for the sides, bilges and bottoms, as described:" — Held, that the expression "iron frame " in the first claim, was nof confined to an iron frame. 240 COMPLETE SPECIFICATION: such as that specified in the sixth claim, hut comprehended ■whatever might, according to the ordinary use of language, be called " an iron frame," and that, as there had existed ships with iron framings similar to that which the plaintiff claimed, the claim was too large, (i. Rep., 1 C. P. 624; 35 L. J., C. P. 268.) 550. Weight v. Hitchcock. [1870] A patent was taken out for " improvements in the manu- facture of frills or ruffles, and in the machinery or apparatus employed therein." The specification described a process of plaiting fabrics by means of a reciprocating knife in combination with a sewing machine. The first claim was for the general con- struction, arrangement and combination of machinery for pro- ducing plaited frills or trimmings in a seiving machine; the second was for the application and use of a reciprocating knife for crimping fabrics in a sewing machine ; and the third, for the peculiar manufacture of crimped or plaited frills or trim- mings " as hereinbefore described," and illustrated by a draw- ing : — Held, first, that the patent was not for the manufactured product, but for the process of manufacturing it; secondly, that the patent was not limited to the manufacture of plaited fabrics by the knife in combination with a sewing machine. (Z. Eep., 5 Ex. 37 ;■ 39 L. J., Ex. 97.) Comparison of Specifications. 551. MuNTZ V. FosTKE. N. P. [1844] Tindal, C. J. : " The identity of the inventions described in two specifications is a question for the jury." (2 Web. P. C. 105.) 553. Allen v. Eawson. [1845J Coltman, J., delivering the judgment of the Court, said: " It was objected that it should have been left to the jury to say whether the present patent and JRobertson's patent were the same as to the method of diagonal or cross felting. On looking at the judge's notes, it appears that there was no evidence given Comparison of Specifications. 211 to show that the two were the same : and, standing as the ques- tion did nakedly on the two specifications, the constructions of them, according to the authority of Neilson v. Harford, was for the judge, and not for the jury." (1 C. B, 571.) 553. Tetlet v. Easton. N. P. [1852] Pollock, C. B. : " The question as to the identity of two inventions described in the specifications is for the Court." (Macr. P. C. 68.) 554. Bush v. Fox. H. L. [1856] In an action for an alleged infringement of a patent, where the defence is, that the supposed invention is not new, the judge may compare the plaintiff's specification with the specification of a previous patent, and may on such comparison direct the jury to find a verdict. (5 H. L. Cas. 707: Macr, P. C. 178 ; 2 Jur., N. S. 1029 ; 25 L. J., Ex. 251.) 555. Booth v. Kenjstaed. [1857] Held, upon the authority of Bush v. Fox, that as the want of novelty in the plaintiff's invention appeared clearly from the two specifications in evidence, it was for the Court, and not for the jury, to determine the identity of the two supposed inven- tions. (2 H. §• iV. 84 ; 26 L. J., Exch. 305.) 556. Thomas v. Foxwell. [1858] Lord Campbell, C. J., in delivering the judgment of the Court of Queen's Bench, said : " "We by no means lay down, as a general rule, that upon a question of novelty of invention such as this, raised by the comparison of two specifications, it must necessarily be a pure question of law for the Court. The specifications may contain expressions of art and commerce, upon which experts must be examined, and there may be con- flicting evidence raising a question of fact to be determined by H. - R 242 COMPLETE SPECIFICATION: the jury. But it is quite clear that there may be cases in which the Court would be bound to decide the question of novelty exclusively ; for the two specifications might be, in ipsissimis verbis, the same ; and, if they be in such plain and common language that the judge is sure he understands their meaning, he is bound to construe them as he does other written documents. (5 Jur., N. S. 38 ; affirmed on appeal, 8 Jur., N. S. 271.) On appeal to the Exchequer Chamber judgment was affirmed, when Pollock, C. B., said : " I agree that we are to construe the specification • ut res magis valeat quam pereat f but still we are to ascertain what is the true and sound construction of the in- strument, construing the language used with reference to the subject-matter." (6 Jur., N. S. 272.) 557. Hills v. London Gas Light Company. [1860] The plaintiff obtained in 1849 a patent for the purification of coal gas by means of hydrated oxides of iron. In 1847, F. having obtained a patent for the purification of gas by chloride of calcium, specified a mode of making the chloride of calcium by decomposing muriate of manganese, iron or zinc, and said, " the Qxides or carbonates which result are usefiil for the said purification of gas, and need not be removed." The oxides so prepared would be hydrates : — Held, that the Court, on a com- parison of F.'s specification with that of the plaintiff, could not say, as a matter of law, that F. had anticipated the plaintiff's invention. (5 H. §• N. 312 ; 29 L. J., Ex. 409.) Bramwell, B., in delivering the judgment of the Court, said : " We hold that there are certain cases in which, upon the mere collocation of the two specifications, or the specification of a patent and a previous written document, the Court may say that the patentee has been anticipated. Undoubtedly that is so ; the process may be described in identically the same words, or, if there be a variety in the words, there may be no variety in the process. Probably it will be found that in the case of what are called mechanical patents, the Court can do so more readily than in the case of chemical patents, or in other cases where the invention depends on what may be called the Comparison of Specifications. 243 occult qualities of matter, — those in fact which are not the sub- ject of popular knowledge." (5 //. §■ N. 363.) 558. Betts v. Menzies. H. L. [1862] As specifications describe external objects, though the lan- guage in two specifications be identically the same, it would be impossible to predicate of the two that they described exactly the same identical external object, unless the terms of art used in both the specifications could be ascertained to have been the same at the date of both the patents. The question of identity of signification belongs to the province of evidence, and not 'to the province of construction. (10 H. L. Cas. 117; 31 L.J., Q. i?. 233; 11 W.R.liI L. T. Rep., N. S. 110.) Wilde, B., in the course of his answers to the questions put to the judges by the House of Lords, said : " If the terms of the two specifications are identical, and if it is not disputed that the terms of art used in the one have the same meaning as the same terms used in the other, which, from the lapse of time between the dates of the two patents may not always be the case, the Court ought to determine that the first publication anticipated the second, without evi- dence, and without any proof that either the first or second was practicable. If, though not identical, the language used in the two, when construed by the Court, describes identically the same process, machine, or manufacture, the Court may, sub- ject to the same remark as to the terms of art, decide at once upon the question of anticipation. But if after construction, and after the meaning of the parties in the two documents has been ascertained by the Court, there be any difference between the two things described, which may be essential or material to the invention, and which is contended by either of the parties to be essential or material to the invention, the Court cannot decide such a controversy ; it has neither materials nor means for so doing, and it must go to a jury. In a word, the Court can pronounce two identical descriptions to portray two iden- tical inventions ; but when the descriptions are different, the identity in substance of the two inventions is a matter to be established by extrinsic evidence." (10 H. L. Cas. 134.) e2 244 COMPLETE SPECIFICATION: 559. Hills v. Evans. Ch. [1862] In the comparison of two specifications, each of which is fiUed with terms of art, and with the description of technical processes, the duty of the Court is confined to giving the legal construction, of such documents taken independently, but the comparison of the two instruments, and ascertaining whether the words, as interpreted by the Court, and contained in one specification, do or do not denote the same external matter as the words, as interpreted and explained by the Court, contained in the other specification, is a matter of fact, and within the province of a jury. (31 L. J., Ch. 457 ; 8 Jiir., N. S. 525 ; 6 L. T. Rep., N. S. 90.) Sufficiency of, a Question for the Jury. 560. Hill v. Thompson. Ch. [1817] The intelligibilty of the description in the specification is a matter of fact for the jury, but whether or not_ the patent is defective in attempting to cover too much, is a question of law. (3 Mer. 626 ; 1 Web. P. C. 235 ; 1 Carp. P. C. 377.) 561. Beckford v. Skews. [1841] The suflSciency of the specification is a question for the jury. (1 Q.B. 938 ; 1 G. §• J>. 736; 6 Jur. 167; 1 Web. P. C. 214.) 568. Neilson v. Haeford. [1841] The intelligibility of the specification is a question for the jury. (1 Web. P. C. 295.) 663. "Walton v. Bateman, N. P. [1842] Cresswell, J., held, that it was a question for the jury whether the patentee has given such a description of his invention and of the manner of carrying it out as will enable a workman of competent skill in that line of business to act upon it. (1 Web. P. C. 621.) Sufficiency of, a Question Jor the Jury. 245 664. Beard v. Egeeton. [1848] Cresswell, J. : " The judge is to state what the specification orders to be done, the jury are to say whether it would produce the result." (19 L. J., C. P. 38.) 665. Wallington v. Dale. [1852] The sufficiency of the description of an invention, contained in a specification, is a question for the jury. (7 Ex. 888.) 566. Morton v. Middleton. [1863] The Court should decide what construction or meaning is to be put upon the specification, but the jury should decide matter of fact. The sufficiency of the specification, as serving the double purpose, — first, of showing a workman of ordinary knowledge and skill how he can construct the thing specified in the patent ; and, secondly, of showing persons who read the patent what they must avoid doing if they would not infiringe the patent, is a matter for the jury, (I Cr. S., 3rd Series, 721.) 566*. Parkes v. Stevens. [1869] The sufficiency of a specification is not a question of law, but a question of fact in each particular case. {L. R., 8 Eq. 358 ; 38 L. J., Ch. 627 ; affirmed, L. R., 5 Ch. 36 ; 22 L. T. Rep., iV. S. 635.) ( 246 ) AMENDMENT OF PATENT, SPECIFICATION AND ENROLMENT. At Common Law. 567. Ex parte Beck. [1784] A caveat havingf been entered against the sealing of a patent which bore date August 12thj 1784, the Lord Chancellor, upon hearing the petition, took some time to consider it ; and did not make his order for discharging the caveat until the 27th August. The patentee, supposing the patent bore date the latter da)', did not enrol his specification till the 18th December, when the four months allowed for enrolment had , expired. The patentee now petitioned the Lord Chancellor to altet the patent, by making it bear date the 27th of August, instead of the 12th, The Lord Chancellor said, that although he was perfectly- satisfied that the patentee was well entitled to his patent, and that his case was a very hard one-; yet he could not make such a use of his power, as Keeper of the Great Seal, as to alter a patent, in any degree, upon an application of this sort. That, perhaps, upon the petitioner's applying for a new patent, the officers might, under these circumstances, be induced to remit their fees; but that he could give no reliet upon the present petition. (1 Br. C. C. 578.) 568. In re Eedmund's Patent. [1828] The patentee stated by a petition, that, within the last month, Tie had discovered that the copying clerk, in engrossing the specification and the plan annexed to it, had by mistake trans- At Common Law. 247 posed the numbers by which, in the specification, reference was made to the plan. His petition was, that this clerical error in the enrolment of the specification, might be amended. The Master of the Eolls made the order. (5 Buss. 44; 1 J^Feb. P. C. 649 (w).) 569. In re Whitehouse's Patent. [1830] In the original specification the word " wire" was by mistake substituted for the word " fire," and was so enrolled. Eive years afterwards. Lord Gifibrd, M. E., ordered the mistake to be corrected, and the enrolment of it altered accordingly. (1 Wei. P. C. 649, note (m).) 570. In re Rubeey's Patent. [1837] The specification recited the letters patent to have been granted in " October " instead of " November." Lord Lang- dale, M. R., ordered the amendment as prayed. The petition stated that scire facias, or other proceedings at law on the patent, had been instituted. (I JVeb. P. C. 649 («).) 571. In re Sharp's Patent. [1840] Except for the purpose of correcting mere verbal or clerical errors, proved to have arisen from mistake or inadvertence, the Master of the Rolls has no authority to make any alteration in the enrolment of the patent or of the specification. If an enrolled memorandum of alteration, by mistake of the writer, contained verbal or clerical errors, by means of which something was enrolled contrary to the true intent of the party, the Master of the Rolls has authority to correct the error and make the enrolment accord with the proved intention of the party at the time of enrolment. (1 Web. P. C. 64.').) For instances in which verbal amendments have been made by the Master of the Rolls, see 1 fFeb. P. C. 647, note (I). 248 AMENDMENT : 578. In re Nickel's Patent. [1841] In this case "recovering" had been written for "covering." The Chancellor and Master of the Rolls made a joint order for the re-sealing of the letters patent with an alteration of this mistake, on the undertaking of the patentee to abandon and pay the costs of an action then pending, and not to bring any action for infringement before the re-sealing. ( Turner 8f Phillips, 36; 1 Web. P. C. 650.) The petitioner not acceding to these terms, relief was refused; and the petitioner was ordered to pay the costs of the party opposing the petition. (^Hindmarch, p. 218u) The Master of the Rolls has no authority to amend letters patent; the Lord Chancellor alone can do so. (1 Web. P. C. 660.) Cottenham, L. C, said: "I may observe that I had some doubt before as to the mode in which an alteration was to be made when the letters patent had been actually enrolled. I have since, however, been furnished with the only instance of the kind which I am told exists, and it was effected in this way. An application had been made to Lord Alvanley, when he was Master of the Rolls, to alter the enrolment. He thought he could not do it, because it would make the enrolment vary from the letters patent ; and afterwards, on communication with the Lord Chancellor, who thought the ease was one in which an alteration ought to be made in the patent, the Master of the Rolls came into this court, and, under the authority of the Lord Chancellor, the patent having been altered, was re-sealed, and then the Master of the Rolls made the enrolment corre- spond with the patent so altered." (1 Web. P. C. 663.) 573. In re Dismoee's Patent. [1853] Afler the specification had been enrolled, it was discovered that the stationer, in engrossing from the draft specification, had, in the recital of the patent and throughout the specifica- tion, by mistake, inserted the name of " Charles " instead of " George." On a petition that this might be amended. Lord By Disclaimer and Memorandum nf Alteration. 249 Eomilly, M. R., took time to consider, and after some hesitation, made an order on the authority of and similar to that in Rubery's case. He required, however, that the signature of the Attorney- General should be obtained, and that the letters patent them- selves should be handed in for inspection. (18 Beav. 538.) 574. In re Adams' Patent. [1853] The engrossment of letters patent bore date two days after the date of the writ of the privy seal, and the patentee, not being aware of the discrepancy, was a day too late in enrolling his patent : ordered that, as the mistake arose from a misprision of the clerk, the enrolment should be amended. (21 L. T. Rep. 38.) 575. In re Blamond's Patent. [1860] An application for amendment of a patent granted in 1856, by rectifying an error in the spelling of the name of the patentee, was refused on the ground of lapse of time. Qucere, whether the court has power to make such an order under 15 & 16 Vict. c. 83, s. 15. (3 L. T. Rep., N. S. 800.) £j^ Disclaimer and Memorandum of Alteration. By whom entered, 576. Spilsburt v. Clough. [1842] A grantee of letters patent, though having entirely parted with his interest, may enter a disclaimer. (2 Gale ^ Dav. 17 ; 6 Jur. 579 ; 2 Q. B. 466 ; 1 Web. P. C. 255.) 577. Wallington v. Dale, [1852] A grantee had assigned his letters patent before the expira- tion of the six months within which the specification was to be 230 AMENDMENT : filed, and aftei" tins assignment disclaimed part of the title of the letters patent: — Held, that the disclaimer was valid as soon as it was entered of record. (7 Exch. 888; 23 L. J., Ex. 49.) Grounds for and Objections to, 578. In re Dekosne's Patent. [1835] A disclaimer may be made after judgment of a court of law adverse to the validity of the patent. (1 Carp. P. C. 698.) 579. Morgan v. Seaward. [1838] A patentee may disclaim a part of his invention after verdict adverse to the validity of a patent, and thus preserve the new and useftil parts of the patent. (2 Carp. P. C. 104.) 580. In re Sharp's Patent. [1840] If the memorandum goes beyond the act (5 & 6 Will. 4, c. 83) it is void, and cannot be given in evidSnce or made any use of. (1 Web. P. C. 643.) 581. E. w. Wheelek. Sci.fac. [1850] Maule, J. : " The spirit of the act (5 & 6 Will. 4, c. 83) 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 relieve himself from the difficulty by a disclaimer." (10 C. B. 395; 20 L. J., C. P. 16.) 58S. Eeg. w. Mill. [1851] Romilly, M. R. : " The power to disclaim given by Lord Brougham's Act (5 & 6 Will. 4, c. 83) is very valuable, and of great importance to patentees ; but it is a power which, if indiscriminately exercised, would work considerable injustice to the public. In mamy cases a person m^ay make an invention, By Disclaimer and Memorandum of Alteration. 251 some part of which may be comprised in another patent, which he may be advised is wholly invahd, and yet, by the effect of a subsequent disclaimer, it may become perfectly good, and a liability created which did not previously exist. It is very desirable to afford protection to patentees in consequence of the difficulties arising from the nature of the subject and the state of the law. It is proper they should be allowed to correct errors in their patents by removing from the specification parts which are not material or substantial, or which they have since dis- covered not to be new inventions ; but this power ought to be exercised with great care and discretion," (14 Beav. 315.) 583. In re Bateman & Moore's Patent. [1854] Where there was some evidence, upon the face of the speci- fication, that the patentees intended their invention to comprise an entire apparatus, but at the end of the specification they claimed the several parts of the apparatus, BetheU, S.Gr., allowed a disclaimer, the effect of which was to convert the claim into one for the combination. Upon an application for a disclaimer, the matter must be decided on the words of the specification itself, irrespective of extraneous considerations. In cases of doubt a disclaimer should be allowed, as the refusal of the law officer to grant the application is final and irrevocable, and may be of serious consequence to the patentee ; whereas, if he wrongly grant his fiat so as to extend the claim of the invention, the public wiU not be injured as the disclaimer will be void. {Macr. P. C. 116.) 584. In re Lucas' Patent. [1854] No disclaimer can be allowed without a statement of a reason for entering it. {Macr. P. C. 235.) 585. Lister v. Leather. [1858] Those matters which manifestly form no part of an invention need not be disclaimed. (8 El. §- B. 1034.) 252 AMENDMENT: 686. FoxwELL V. BosTOCK. Ch. [1864] Where, by the operation of a disclaimer, a combination of machinery, described in an amended specification, is different from the combination of machinery described in the original specification, and for which the patent was granted; Quasre, whether the patent is void, or the disclaimer void. Where the amount by which the disclaimer exceeds the statutory require- ments as to its nature can be easily distinguished, the disclaimer is inoperative for such excess. Sernble : where the combination of machinery in an amended specification was different from the combination in the original specification, and no specification remained of the invention for which the patent was granted ; and where, the combination being claimed as the invention, it was only so far ascertained by the specification, that the latter referred to certain drawings and their description, which did but describe an entire machine and the composition and working of its several constituent parts, without in any manner indicating where the improve- ment lay or in what it consisted : — Held, that the patent was void at law. (4 Be G., J. Sf S. 298 ; 10 L. T., N. S. 144 ; 12 W. R. 723.) Lord Westbury : " By the statute 5 & 6 Will. 4, c. 83, which introduced disclaimers, it is in effect provided that the disclaimer to be entered must not be such as will ' extend the exclusive right granted by the said letters patent;' words which are vague and indefinite. Possibly they mean that the patent must not, by the operation of the disclaimer, be made to include or comprehend something which was not originally contained in the patent. The invention claimed may be reduced or diminished, but it must not be extended or enlarged." (4 De G., J. §• S. 306). 587. Ealston v. Smith. H. L. [1865] The object of the 5 & 6 Will. 4, c. 83, was only to permit a disclaimer to amend the specification of a patent, by removing from it something superfluous, but not to allow the introduction. By Disclaimer and Memorandum of Alteration. 253 of that which would convert a description, in itself unintelligible or impracticable, into a practicable description of a useful in- vention. E,. took out a patent for "improvements in embossing and finishing woven fabrics, and in the machinery and apparatus employed therein." In his specification he said: "I employ a roller of metal, wood, or other suitable material, and groove, flute, engrave, mill, or otherwise indent upon it any desired design ;" he caused this roller to revolve with a bowl at unequal velocities, moving the fabric transversely when fed into the machine, and by these means he proposed to calender or finish, and to emboss the fabric by one process instead of two, as then practised. He afterwards entered a " disclaimer," in which he disclaimed the words in the title, "and in the machinery or apparatus employed therein," disclaimed the word " wood " from the description of the roUer, and restricted the grooves or flutes on the roUer to those of a circular kind. Any other grooves would not only not produce the desired efiect on the fabric but would destroy it: — Held, that the disclaimer ex- tended the exclusive right, and was consequently bad. Lord Chelmsford, said : " The word ' extend,' in the 5 & 6 Will. 4, c. 83, cannot be used only in its ordinary sense of 'adding to' or 'enlarging,' because the exact meaning of the term ' disclaimer ' to which it is applied, is the renunciation of some previous claim actually or apparently made, or supposed to be made. It must therefore be intended to comprehend a case where the disclaimer would give the patentee a right which he could not have enjoyed under the specification as originally formed. Here the specification was conceived in general terms, embracing an infinite variety of modes of indenting upon all descriptions of rollers any desired design. The plaintiff" after- wards discovered that no other roUers but those which had circular grooves, flutings or indentations around their surfaces would answer ; and he therefore, by his disclaimer, limited his invention to this description of rollers only. Now as these were not specifically described in the original specification, but were merely involved in the general terms which were used. 254 AMENDMENT: the plaintiff had not complied with the condition of the letters patent in particularly describing and ascertaining the nature of his invention. When, therefore, by his disclaimer, he con- fines his claim to circular grooved rollers as his sole invention, though in one sense he may be said to narrow a right, yet he really extends it, because he thereby describes his alleged invention sufficiently to enable him now to assert a right under the patent which he never could have successfully maintained upon the original specification alone." (11 li. L. Cos. 223; 35 L. J., a P. 49 ; 13 L. T. Rep., N.S.I; 20 C. B., N. S. 28.) 588. Thomas v. Welch. [1866] All the claiming clauses may be struck out of the speci- fication of a patent by a disclaimer, if there remain in the body of the specification words sufficiently distinguishing what the invention is which the patentee claims. An alteration, verbal merely and not substantive, by means of a disclaimer will not make a patent void. (X. R., 1 C. P. 192; 12 Jur., N. S. 316; 35 L. J., C. P. 200.) Operation of, 589. Perry v. Skinner. [1837] Where a patent is originally voidable, but has been amended under 5 & 6 Will. 4, c. 83, by filing a disclaimer of part of the invention, that act has not a retrospective operation so as to make a party liable for an infringement of the patent, prior to the time of entering such disclaimer. Parke, B., in the course of his judgment, said : " We must engraft a modification upon the words of the act (sect. 1) in this case for the pui-poses of its construction, and read it as though it had been ' shall be deemed and taken as part of the said letters patent, &cc.,from thenceforth,^ so as not to make the defendant a wrongdoer. By Disclaimer and Memorandum of Alteration. 255 The only doubt arising in this case is from the words of the proviso; but we cannot think the legislature meant to do so unjust a thing as to restrict a party from doing that which he has a lawfid right to do ; and therefore, though there is some obscurity in the words of the act, we are bound to put a reasonable construction upon them, and undoubtedly the effect of it is to make the patent good for the future." (2 M. §■ W. 471; M. ^ H. 122; 1 Jur. 433; 1 Wei. P. C. 250. See sect. 39 of 15 §■ 16 Vict. c. 83.) 590. Clark v. Keneick. [1843] The effect of the statute 5 & 6 "Will. 4, c. 83, is to render the disclaimer, when made, part of the patent and the specifica- tion. The patentee, from the moment of the disclaimer, be- comes patentee of the undisclaimed part only. {\2 M. Sf W. 221.) 591. Stockee v. "Waller. [1845] Tindal, C. J. : " The mere fact of a disclaimer being made by a party to whom a grant has been made does not necessarily import that the original patent was void; for the object of the statute was not only to enable inventors to set themselves right when the letters patent, from some cause or other, would have been held to be void, but also to remove doubts and difficulties which would otherwise hang over the heads of parties bringing actions for an infringement, by enabling them to enter a dis- claimer of a part of the specification or title of the patent." CressweU, J. : " In my opinion, the true meaning to be given to the first section of 5 & 6 Will. 4, c. 83, is, in the mode suggested by the Court of Exchequer in the case which has been referred to {Perry v. Skinner), by introducing the words 'from thenceforth' into the proviso. The effect of that con- struction is, to hold, that, from the time of the entry of the disclaimer, it shall be taken to be incorporated with the letters patent and specification, so as to affect all acts done after that period, but that it shall not have the effect of making parties 256 AMENDMENT: wrongdoers by relation." (9 Jur. 138. Reported under name of Stacker v. Warner, 1 C. B. 148.) 593. E. V. Mill. Sci.fac. [1850] In an action of scire facias, a disclaimer, though enrolled subsequently to issue joined, is admissible as evidence for the defendant, and is to be read as part of the original specification put in by the prosecutor. Semble, in actions or suits, not being proceedings by scire facias, and -which were not pending at the time of the enrolment of a disclaimer, the disclaimer is to be deemed and taken to be a part of the patent or specifica- tion from the time of the granting of the letters patent, and not from the time of its enrolment merely. The decision in Perry v. Skinner questioned. (10 C. B. 379; 20 L. J., C. P. 16; 15 Jur. 59; I L. M. §• P. 695.) 593. In re LuCAs' Patent. [1854] There are exceptional cases where a disclaimer should be made retrospective, so as to give the patentee power to proceed against those who infringed before the disclaimer was filed ; as, where a person, having obtained his information from the patentee, presumes upon a defect in his specification, and infringes the valuable part of his patent. {Macr. P. C. 235.) 594. In re Smith's Patent. [1855] The law officer may, should he think fit, order that an action may be brought in respect of infringements prior to the filing of a disclaimer. Disclaimer allowed, on condition that an undertaking be given that no action shall be brought in respect of anything done prior to the hearing of the application for a disclaimer. {Macr. P. C. 232.) 595. Tetley v. Easton. [1857] The effect of a disclaimer is merely to strike out fi-om the specification those parts of the machine which are disclaimed; it By Disclaimer and Memorandum of Alteration. 257 cannot be read as explanatory of that which remains. (2 C. B., N. S. 706.) 596. Lister v. Leather. [1857] In a suit, pending at the time of enrolment of a disclaimer, a plaintiff cannot avail himself of it by amending his bUl, he must file a fresh bill. (3 Jur., N. S. 433.) 597. Seed v. Higgins. H. L. [1860] A patentee claimed by his specification "the application of the principle of centrifugal force to the flyers employed in certain machinery for roving cotton and other fibrous sub- stances," but declared that his improvements " applied solely to such part of the machinery, called the flyers, vehich is employed in connection with the spindle for the purpose of winding cotton." He attached drawings to his specification, and went on to say that these drawings and the specification represented " one particular and practicable mode of applying " his invention, but " I do not intend to confine myself to this particular method, but I claim as my invention the application of the law or prin- ciple of centrifiigal force to the particular or special purpose above set forth, that is, to flyers used in machinery for preparing cotton." He afterwards disclaimed " all application of the law or principle of centrifiigal force as being part of my invention, or as being comprised in my claim of invention contained in the specification, except only the application of centrifugal force, by means of a weight acting upon a presser so as to cause it to press against a bobbin, as described in the specification": — Held, that this disclaimer did not extend the claim, but confined it to a particular mode of applying the principle of centrifiigal force, and did not claim the discovery of that principle, or the application of it, except in a particular way, and that, therefore, the patent was good. (4 Jur., N. S. 258 ; 27 L. J., Q. B. 145 ; aflSrmed in Exch. Ch. and Dom. Proc, 27 L. J., Q. 5. 411; 8 H. L. Cas. 550; 30 L. J., Q. B. 314; 6 Jur., N. S. 1264.) H. s 258 AMENDMENT: 598, In re Medlock's Patent. [1865] A patent for " improvements in the preparation of red and purple dyes " thus described the process : " I mix aniline with dry arsenic acid, and allow the mixture to stand for some time, or I accelerate the operation by heating it to, or near to, its boiling-point, until it assumes a rich purple colour." It was proved (and not denied by the patentee) that it was necessary to apply heat in order to produce the colour, and upon this groimd the patent was held void. An application was now made to disclaim the first of these two methods of preparing the dyes, and the application was opposed by manufacturers who had been defendants in previous actions for infringement of the patent. Collier, S. G., granted leave to enter the dis- claimer, upon the terms that the applicants should bring no action against the opposers " for any infringement of the said patent by the use or continued use, during the continuance of the said patent, of any process or processes for manufacturing or preparing red and purple dyes which is or are in use by them or either of them at the present time." The applicants declined to enter a disclaimer on these terms. (^Newton's London Jour., New Series, vol. 22, p. 69.) 599. Cannington r. NuTTALL. H. L. [1871] The plain language of the operative part of a disclaimer is not to be controlled or modified by any introductory sentences with which the patentee may think fit to preface such dis- claimer. {L. R., 5 H. L. 205.) Lord Westbury : " The reason for a disclaimer is no part of the disclaimer itself. The operative part of the disclaimer begins in this way : ' I, for this reason, wish to disclaim, and do hereby disclaim.' " {lb. 227.) By Disclaimer and Memorandum of Alteration. 259 Practice. 600. In re Shaep's Patent. [1840] The Master of the Rolls has no jurisdiction to remove from the records of the Court of Chancery a memorandum of alterar- tion enrolled under the statute. (1 Web. P. C. 641 ; 3 Beav. 245 ; 2 Carp. P. C. 461.) 601. E. «. Mill. Sei.fac. [1851] Pending a proceeding in scire facias to repeal a patent, the patentee disclaimed a part. The prosecutor stiU proceeded, and ultimately failed : — Held, that he ought to pay the costs subsequent to the disclaimer. (14 Beav. 312.) 602. Wallington v. Dale. [1852] The filing of the copy of a disclaimer is a compliance with the provisions of 5 & 6 Will. 4, c. 83, s. 1. (7 Bxch. 888 ; 23 L. J., Exch. A.Q.) 603. In re Harbison's Patent. [1853] Sir E. Bethell, S. G., refiised to allow a disclaimer to be entered by the assignee of a patentee who had been unsuccessful in an action for infringement against certain defendants, except upon the terms that an undertaking be given not to bring any further action against the same defendants for any alleged infringement prior to the date of the disclaimer. {Macr. P. C. 32.) 604. In re Medlock's Patent. [1865] A fiat had been granted by the Solicitor-General in this case to enter a disclaimer, subject to the acceptance by the applicant of certain conditions. The applicant refused to accede to these conditions, and the Solicitor-General filed a disallowance of the disclaimer. An appeal was then made to the Patent Commis- sioners, in the form of a petition, setting out the facts of the case, and ending with the following prayer : — " 1. That the Solicitor-General, having granted his fiat for the disclaimer,- your petitioners submit that such fiat S2 260 AMENDMENT. cannot be recalled, and they pray that you will be pleased to file the said disclaimer with the fiat, so- that your petitioners, not having consejited to the condi- tions, may be enabled to try the question of their validity. " 2. Or, that the said disclaimer may be referred to one of the law officers mentioned in the statute, with such instruction as to you the Commissioners of Patents may seem fit. " 3. Or, that the Commissioners of Patents require a fuller statement of the case, that your petitioners may be heard by council before the Commissioners of Patents. " 4. That the Commissioners of Patents wiU give to your petitioners such further or other relief as they may see fit." This petition was returned by the Lord Chancellor, indorsed " refiised." (Newton's London Jour., N. S., vol. 22, p. 70.) ( 261 ) EXTENSION OF THE TERM OP LETTERS PATENT. Jurisdiction of the Judicial Committee of the Privy Council. 605. In re Schltjmbekgee's Patent. [1853] The Judicial Committee have, under the 4th sect, of 3 & 4 Will. 4, c. 41, jurisdiction to entertain a petition, referred to them by the Crown, seeking to revoke an order in council, made upon their recommendation, upon an application by patentees for an extension of letters patent under the statute 5 & 6 Will. 4, c. 83, and to recall the warrant for sealing such letters patent. (9 Moo. P. C. C. 1.) 606. In re Honiball's Patent. [1855] The authority conferred upon the Crown, by 5 & 6 Will. 4, c. 83, s. 2, to confirm letters patent, is discretionary in the Judicial Committee, to recommend or not a confirmation. (9 Moo. P. C. a 378.) 607. In re Betts' Patent. [1862] When a foreign and an English patent has been obtained for the same invention, and the foreign patent expires first, the Judicial Committee of the Privy Council have no jurisdiction to entertain an application of prolongation. See sect. 25 of 15 & 16 Vict. c. 83. (1 Moo. P. C. C, N. S. 49; 9 Jur., N. S. 137; 11 fV. R. 221 ; 7 I.. T. Rep., N. S. 577.) See also 72S. 608. In re Gouchek's Patent, [1865] The power given to the Judicial Committee by statute 7 & 8 Vict. c. 69, s. 2 (enlarging statute 5 & 6 Will. 4, c. 83j s. 4), 262 EXTENSION OF LETTEES PATENT: to recommend an extension of the term of letters patent for an invention, is exhausted, when an extension has been once recommended and new letters patent granted ; and the Judicial Committee have no jurisdiction to entertain a petition for a further prolongation of the new letters patent. (2 Moo. P. C. C, N. S. 532.) Grounds of Extension generally. 609. In re Ekabd's Patent, [1835] Lord Lyndhurst : " In cases of this kind (extension) we expect a very strong case of hardship to be made out, as well as a strong case upon the utility of the invention. (1 Weh. P. C. 559; 5 Bep. Art., N. S. 58.) 610. In re Swaine's Patent. [1837] The invention being very meritorious, the result of a great deal of labour, care and science, and extremely useM in its effects, and the party having sustained considerable loss, the patent was extended, (1 Web. P. C. 559.) 611. In re Southworth's Patent. [1837] The misfortunes of the patentee and those connected with him in the management of the patent, together with the nature of the invention being such that it would not be likely to come into immediate use, are grounds for an extension of the term of the patent. (1 Web. P. C. 486.) 61S. In re Whitehouse's Patent. [1838] The term of letters patent for improvements in manufacturing gas tubes, extended by the Judicial Committee, under the 5 & 6 Will. 4, c. 83, for six years, on the ground of the great merit and utility of the invention, the merit of the petitioner in patronizing an ingenious inventor, and liberally expending money to introduce the invention (the amount of profit not Grounds of Extension generally. 263 being greater than the ordinary profit on capital employed on similar trades), and the annoyance, anxiety, and cost of litigation. (2 Moo. P. C. a 496; 1 fFeb. P. C. 473.) 613. In re Stafford's Patent. [1838] Extension of term recommended, the patentee having ex- perienced great opposition from the existing interests, and being a loser by the invention. (1 Web. P. C. 563.) 614. In re Kollman's Patent. [1839] The invention being meritorious, but from circumstances beyond the control of the patentee, not sufficiently appreciated, and unproductive of reward, an extension recommended. ( 1 Web. P. C. 564.) 615. /w re EoBEETs's Patent. [1839] The violent resistance and opposition to the introduction of a meritorious invention, which has prevented the patentee from realizing a profit, is a ground for the extension of the term of the letters patent. (1 Web. P. C. 573.) 616. In re Downton's Patent. [1839] A Lord: " The questions are, is it a useftd invention ; is it beneficial 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?" (1 Web. P. C. 567.) 617. In re Jones' Patent. [1840] Lord Brougham : " It is perfectly true, as has been stated, not Only upon this but upon former occasions, that these appli- cations are anything rather than matters of course. This is a very extraordinary jurisdiction which has been conferred on the Judicial Committee by the legislature, and it is to be exercised 264 EXTENSION OF LETTEES PATENT: only on the most special grounds alleged and proved in refer- ence to each case." (1 Web. P. C. 579.) 618. In re Morgan's Patent. [1843] Lord Brougham, in delivering judgment, said ; " It is by no means the course of their lordships, as has been frequently said, and by myself lately, in giving the judgment of the court in a recent case ; it is by no means their course to put themselves precisely in the situation of the legislature, and never to grant an extension in a case where an act of parliament would not have been obtained. At the same time there are some limits to this. They are to look to a certain degree at the position in which they are placed, and to consider that they here represent the legislature, and that they are invested with somewhat similar powers of discretion to those exercised formerly by the whole three branches of parliament." (1 Web. P. C. 739.) 619. In re Soames' Patent. [1843] Lord Brougham, in delivering judgment, said : " If this case •were to be disposed of upon the ground which in arguing such cases has sometimes been assumed to be the fit one, that there must not only be merit and benefit to the public, and (which ii essential) a want of sufficient remuneration in the course of using the patent, but that, moreover, the case is to be tried here as on a bill in parliament introduced to prolong the patent ; then, I apprehend, there can reaUy be no doubt what- ever that in this case no bill would ever have passed through the two houses of parliament ; but their lordships have always considered that it was with the view of affording a better remedy, not only cheaper and easier, but better in this respect, that there might be cases which never would have prevailed on the legislature to make a new personal law prolonging a monopoly, which, nevertheless, might seem meritorious enough in respect of the individual, beneficial enough in respect of the public, and deficient enough in remuneration to justify inters ference, which, nevertheless, had they been presented in the form of a petition to parliament, would have failed to procure Grounds of Extension generally. 265 an act." The patent was extended for three years. (1 Web. P. C. 733.) 6S0. In re Deeosne's Patent. [1844] Lord Brougham, in delivering judgment, said : " Their lord- ships, in dealing with cases of this sort, have always laid down this rule and always acted upon it, that it is anything rather than a matter of course to grant an extension, under the powers of the act, of these patent rights ; and they have uniformly stated this in the extensions they have granted, that the parties must show, in the first place, some invention ; in the next place, a benefit to the public; and in the third place, that they have not had an adequate remuneration." (2 Web. P. C. 4; 4 Moo. P. C. C. 418.) 621. In re Perkins' Case. [1845] Lord Brougham, in delivering judgment, said : " It must always be considered, as I have had fi-equent occasion to state before, but Ln consequence of what has been said by the learned counsel, it must be again stated, that it is by no means a matter of course that an application of this sort, even when it is not opposed, should be granted. We are here by the authority of the legislature, given to us to advise the Queen, to protect her from rashly and inexpediently for the public granting an exten- sion, which formerly used to require a solemn and deliberate act of all the three branches of the legislature, involving a double inquiry, together with an opinion of the government itself. Now, it becomes our duty to examine minutely, and very often to examine 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." (2 Web. P. C. 18.) 628. In re PiNKUs' Patent. [1848] Lord Laugdale, M. R. : " What is usually taken into con- sideration as forming the ground of the species of indulgence 266 EXTENSION OF LETTEKS PATENT: 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 remimeration for the merit which he has displayed." (12 Jur. 234.) 633. In re Pettit Smith's Patent. [1850] Extension of letters patent granted for five years ; the inven- tion being of great merit and public utility, but the patentee and his grantees had received no remuneration, in consequence of the originality of the patent being disputed at law. (7 Moo. P. C. C. 133.) 624. In re Heath's Patent. [1853] Term of letters patent extended for seven years, on the ground of the meritorious nature of the invention, and the ex- tensive litigation the patentee had been put to in protecting his patent rights, which had prevented any remuneration. (8 Moo. P. C. C. 217; 2 Web. R. 247.) 625. In re Payne's Patent. [1854] Patent for preserved meats extended for five years, on the grounds that the patentee had used every exertion in his power to introduce the invention, and had expended large sums in so doing ; but, by reason of the distrust with which the public viewed preparations of that nature, the inadequacy of the patentee's means, and his want of influence with public boards, he had been prevented fi:om obtaining such a fair trial as would lead to the adoption by the public of his invention. (CiY. CorytoTbs Law of Letters Patent, ■p. 221.) 626. In re Honiball's Patent. [1855] The Right Hon. Pemberton Leigh : " It has been again and again stated in this place that the grant of an extended term is anything but a matter of course ; that, in order to obtain it, £t very special case must be made ; that the novelty, merit, and utility of the invention must be proved, and it must be shown Grounds of Extension generally. 267 that all reasonable means have been used in order to make the invention productive ; but that, in spite of such exertions, the remuneration obtained by the inventor has either entirely failed, or has been quite disproportionate to his merits, and to the benefit conferred upon the public." (9 Moo. P. C. C. 393.) 6S7. In re Caedwell's Patent. [1856] The Judicial Committee of the Privy Council will not, as a matter of course, extend letters patent, even when there is no opposition, and the Crown, through the Attorney-General, does not object. (10 Moo. P. C. C. 490.) 628. In re Maekwick's Patent. [1860] The Right Hon. Lord Kingsdown, in delivering judgment, said : " 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 ; and thirdly, that, owing to circumstances beyond his control, he has been unable to obtain an adequate remunera- tion." (13 Moo. P. C. C. 313.) 629. In re Napier's Patent. [1861] Prolongation of the term of letters patent granted to assig- nees, where the patentee has ceased to have any connection ■ndth the working of the patent, and the assignees were pre- vented from working it at a profit by reason of the discovery of the gold fields in Southern Australia, which caused a derange- ment and scarcity in the labour market. ( 13 Moo. P. C C. 543.) 630. In re Bovill's Patent. [1863] The patentee's invention consisted of improvements upon a former patent, taken out by him in consequence of a communi- cation by a foreigner: — Held, that as the improvements were novel and of public utility, the patentee was, in absence of adequate remuneration, entitled to an extension. (1 Moo, P. a C, N. S. 348.) 268 EXTENSION OF LETTERS PATENT : 631. In re Nobton's Patent. [1863] The Master of the Rolls, in delivering judgment, said: " The grounds upon which their lordships grant extensions of patents aU have reference to the inventor himself. They are, in the first place, to reward the inventor for the peculiar 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 upon the public throiigh the invention itself; or, lastly, because the inventor has not been sufficiently remunerated by the profits derived from his strenuous exertions to make the invention profitable. AU these grounds proceed upon the supposition that the invention is a new and useful invention. But where the inventor inten- tionally 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. In some circumstances there might be a considerable ground of excuse arising from want of fiinds.'' (1 Moo. P. €. a, N. S. 343 ; 9 Jur., N. S. 420; 11 W. R. 721.) 632. In re M'Dougal's Patent. [1867] Extension ought not to be granted unless the invention is of considerable merit and of public utility, and the patentee has not received adequate remuneration. (5 Moo. P. C. C, N. S. 1; L. R.,2 P. C. 1.) 633. In re Pitman's Patent. [1871] Sir J. W. Colvile, in delivering judgment, said : " The general object of the statutable jurisdiction of this committee, in respect to advising an extension of the term of the letters patent, it is hardly necessary to state, is the reward to the inventor, in cases where there has been extraordinary merit in the invention, but where, from circumstances, he has failed to reap any adequate remuneration for his invention during the currency of the term of the letters patent." {L. R.,i P. C. 87.) Alerit of Inventor. 269 634. In re Houghton's Patent. [1871] Prolongation of term of letters patent for seven years, the invention being a meritorious one, and of great value as a raw material for the manufacture of paper ; no profits having been made either by .the inventor or his assignees. (7 Moo. P. C. C. 309.) Merit of Inventor. 635. In re Soames' Patent. [1843] Lord Brougham : " The merit of an importer is less than of an inventor. We are now sitting judicially, and it is an argu- ment 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." ( I Web. P. C. 733.) " It is very fit their lordships should guard against the inference being drawn, from the small amount of any step made in improvement, that they are disposed to undervalue that in importance ; if a new process is invented, if new machinery is invented, if g, new principle is found out and applied so as to become the subject of a patent right, embodied in a manufacture, then, however small it may be in advance of the state of science or of art previous to the period of that step being made, that is no reason whatever for undervaluing the merits of the person who rnakes a discovery in science or an invention in art, because the whole history of science, fi-om the greatest discoveries down to the most unimportant — from the discovery of the system of gravitation itself, and the fi-actional calculus itself, down to the most trifling step that ever has been made — is one continued illustration of the slow progress by which the human mind makes its advance in discovery; it is hardly perceptible, so little has been made by any one step in advance of the former state of things, because generally you find that just before there was something very nearly the same discovered or invented. Therefore, it is no argument whatever in general, if there is a new principle or a novel invention — a new process, for instance." {lb. 735.) The publication of a patented invention in a foreign work is 270 EXTENSION OF LETTERS PATENT: to be considered on an application for an extension of the patent, but not in an inquiry as to the validity of the patent. {lb. 733.) 636. In re Dekosne's Patent. [1844] Extension granted for six years of a patent for an invention, which was " very small in point of discovery," but useful, and of great benefit to the public. (4 Moo. P. C. C. 418.) 637. In re Woodceoft's Patent. [1846] Reference to a suggestion, previously published, of the prin- ciple upon which an invention is based does not prove want of originality unless it is shown that the invention could be easily made by it. (2 fVeb. P. C. 23.) Lord Brougham : " I may invent a thing this year, and I may say there are various ways of exercising my invention, to no one of which I give a preference over the others. There are A., B. and C, different ways of exercising it. Ten years after that another man may, by an invention, and by experiments made under it, point out to me and to the public, who have the benefit of my invention, that one of those three ways, B. rather than A. and C, is the best mode of exercising it ; but that cannot take away the merit of the inventor who invented A., B. and C, altogether. Nay, I may go further, the circumstance may arise of a new invention giving for the first time a par- ticular use to another. For example, no one denies to Watt the great merit of the steam engine, because steam navigation was applied subsequently to his time to the use of propelling ships. I quite agree that if another man's invention is neces- sary in order to make the first invention useful, no doubt that takes away the merit of the first invention ; but if the first inven- tion contained in its own bosom a new mode, as well as the other two modes which are found out to be useM, it is in vain to say there is no value in the original invention." {lb. 27.) 638. In re MuNTz's Patent. [1846] The simplicity of an invention is an element of its value. (2 Web. P. C. 119.) In re Bodmer's Patent. [1853] See 699. In re Heath's Patent. [1853] See 649. Merit of Inventor. 271 639. In re Lee's Patent. [1856] Letters patent comprised three separate subjects. Upon an application for an extension of the term of the patent, one only of the three subjects (that relating to railway breaks) appeared to the Judicial Committee to be deserving of a renewed grant. Prolongation granted under statute 15 & 16 Vict. c. 83, s. 40, for such part only of the letters patent as related to railway breaks, and not to the other subject-matters of the patent. (10 Moo. P. C. C. 226.) 640. In re Betts' Patent. [1861] Utility in the practical working of an invention, and not ingenuity in throwing out the idea of the possibility of doing a thing, is that description of merit which constitutes one of the grounds for extending the term of a patent. (1 Moo. P. C. a 49.) Lord Chelmsford, in delivering judgment, said : " Dobbs' specification may have given the petitioner the idea of the pos- sibility of uniting the two metals of tin and lead, and may thus have deprived him of the merit of originality. But in Dobbs' hands the discovery was barren ; the petitioner, however, who followed out his suggestion, and after repeated experiments gave it a practical application, is the real benefactor to the public, and is entitled to claim that description of merit which con- stitutes one of the grounds for extending the term of a patent." (lb. 61.) 641. In re Hill's Patent. [1863] Sir J. T. Coleridge, in delivering judgment, said: "In determining whether to recommend the prolongation of a patent or not, even when the claim to a first discovery, and the beneficial nature of that discovery, are both conceded, it will be stiU proper to consider both the degree of merit as inventor and the amount of benefit to the public flowing directly irom the invention. A monopoly limited to a certain time is pro- perly the reward which the law assigns to the patentee for the 272 EXTENSION OF LETTERS PATENT: invention and disclosure to the public of his mode of proceed- ing. Whether that term shall be extended, in effect whether a second patent shall be granted for the same consideration, and the enjoyment by the public of its vested right be postponed, is to depend on the exercise of a discretion, judicial indeed, yet to be influenced by every such circumstance as would properly weigh on a sensible and considerate person in determining whether an extraordinary privilege, not of strict right, but rather of equitable reward, should be conferred. 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 terms as described in his specification — but this may have been the successful result of long and patient labour, and of great and unaided ingenuity, 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 fortunate guess ; or it may have been very closely led up to by earlier, and in a true sense, more meritorious, but stUl incom- plete experiments. Different degrees of merit must surely be attributed to an inventor under these different circumstances. The moral claim to an extension of time may in this way be indefinitely varied, 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 conferred upon the public. The extent of the benefit conferred must vary in each case with the circumstances. The principal question always is, has the individual patentee, under all the circumstances, received what in equity and good sense may be considered a sufficient remuneration ? On his own part, of course, there must have been no want of good faith or prudent exertion ; and further, as the loss to the public may be im- portant in the consideration, it may be necessary in some cases not to confine the inquiry 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." (1 Moo. P. C. C, N. S. 265.) Utility of Invention. 273 Utility of Invention. 642. In re WmaHT's Patent. [1839] The fact of the invention not having been brought into use, unless explained, is an objection to the extension of the term. But, being explained by the pecuniary difficulties and embar- rassments of the patentee, extension recommended. (1 Web, P. C. 575.) 643. In re Downton's Patent. [1839] The sale of a patented article in considerable numbers, when its cost is three or four times as great as the common article, is strong evidence of utility. (1 Web, P. C, 565.) 644. In re Jones' Patent. [1840] The presumption arising from the non-user of an invention may be rebutted by showing that the nature of the invention is such that it would not be likely to come into immediate use. (1 Web. P, C, 577.) 645. In re Simisteb's Patent. [1842] The extension of the term of letters patent refused, although the profit derived from the patent article was less than the expenditure incurred upon the patent, the utility of the in- vention being small. The fact of an invention, when known, not getting into general use, is a presumption against its utility. (4 Moo. P. C, 164; 1 Web. R. 721.) 646. In re Soames' Patent. [1843] The fact of further improvements upon the patented invention having been made, though not themselves patented, is an argu- ment in favour of an extension of the original patent. (1 Web. P. a 734.) H, T 274 EXTENSION OF LETTEKS PATENT: 647. In re Woodceoft's Patent. [1846] No extension will be granted if want of success be owing to inutility, or imless the circumstances have ceased which pre- vented it being lucrative, and it is really coming into use. (2 Weh. P. C. 29.) Lord Brougham, in the course of his judg- ment, said: "We cannot here weigh degrees of merit in golden scales. If there is considerable merit, with originality and some considerable usefulness to the public, that is sufficient." {lb. 31.) The success of the invention will be inquired into. {Ii>, 32.) In re PiNKUS' PATENT. [1848] See 687. In re Claeidge's Patent. [1851] See 741. 648. In re Beekington's Patent. [1852] An application on behalf of a patented knapsack was sup- ported by very favourable reports from officers who had examined it. It was deposed that the fact of nine out of ten men in our infantry becoming flat- chested was to be attributed to the one in ordinary use. Some hundreds had been expended on it by the patentee, but hitherto without return. The committee, allowing their doubt as to its utility (arising from its not having been adopted by the government) to be slightly founded, in the absence of evidence of its failure, recommended its extension for five years. {Cori/ton's Law of Letters Patent, p. 225.) 649. In re Heath's Patent. [1853] An alteration in the mode of manufacture will not prevent extension being granted, if it does not materially detract from the merit of the original invention. (8 Moo. P. C. C. 223.) 650. In re Bakewell's Patent. [1862] A patent, well known, had never been brought into public use during the period of fourteen years. The patentee accounted for the non-user, on the ground that the invention was of such a nature that it could only be carried out by a company, which Utility of Invention. 275 he had failed to form : — Held, not sufficient to rebut the pre- sumption against the practical utility of the patent, and an extension of the term refused. (15 Moo, P. C. C. 385.) Lord Chelmsford, in delivering judgment, said : " Non-user of a patent can hardly be said to be a ground why an extension of the term should be absolutely refused, but it must always amount to a very strong presumption as to the invention not being useful ; of course that presumption may be rebutted, as aU other presumptions may be, by evidence of the utility of the patent." (lb. 386.) In re NORTON'S Patent. [1863] See 691. In re Hill's Patent. [1863] See 641. 651. In re Allan's Patent. [1867] Application for a prolongation of the term, in the circum stances of non-user, refused by the Judicial Committee. Where the utUity of a patent has not been tested by actual employment, for a period of fourteen years, although efforts have been made by the patentee to bring it into use, it raises a very strong presumption against its practical utility, which presump- tion can only be rebutted by the strongest evidence. (4 Moo. P. a a, N. S. 443 ; L. R., 1 P. C. 507.) 65S. In re M'Dougal's Patent. [1867] Petition for the prolongation of a patent for " improvements in treating, deodorizing and disinfecting sewage and other offensive matter, which said improvements are also applicable to deodorizing and disinfecting in general." The improvement consisted in the use of a substance described in the specification as composed of sulphurous and carbolic acids, in combination with magnesia and lime, such acids being in common use by the public for disinfecting purposes before and after the letters patent : — Held, not to be an invention of such merit and utUity as to justify an extension, to the detriment of the public in the use of known sanitary agents. (5 Moo. P. C. C, N. S. 1; L. R., 2 P. C. 1 ; 37 L. J., P. C. 17.) t2 276 EXTENSION OF LETTERS PATENT: 653. In re Hekbeet's Patent. [1867] If an invention has not been brought into practical use during the term of the letters patent, it raises a strong, though not conclusive, presumption against its utility ; and unless there are circumstances to rebut such presumption, an extension of the term of letters patent wiU not be granted. The fact of a patent of a valuable natm-e, but having a limited market, not having been so generally used as to remunerate the inventor, is sufficient to remove the presumption against the utUity of the invention. (4 Moo. P. C. C, N. S. 300; L. R., 1 P. a 399.) 654. In re Saxby's Patent. [1870] Lord Cairns, in delivering judgment, said : " It is not the practice of this tribunal to decide upon the novelty or utihty of a patent ; and although they would of course abstain in any case from prolonging a patent which was materially 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 utility which might more properly be described as merit. Upon that question, it is the habit of this tribunal to consider whether the invention brought before them is one of that high degree of merit which, if every- thing else were satisfactory, would entitle the patentee to a prolongation." (7 Moo. P. C. C, N. S. 84.) Remuneration. 656. In re Bate's Patent. [1836] A large sum of money and much time being expended on experiment to perfect the invention, without any return, the patent extended. (1 TFeb. P. C. 739.) /«/•« Southwobth's Patent. [1837] See 611. Remuneration. 277 656. In re EoBEETs' Patent. [1839] A patentee is entitled to deduct the expenses of taking and defending a patent, and the value of his time devoted to the invention, in estimating the profits derived from the patent. (1 Web. P. C. 575.) 657. In re Kay's Patent. [1839] In estimating profits the expense of taking and defendiag the patent and of making experiments are to be deducted. (1 Web. P. C. 572.) 658. In re Downton's Patent. [1839] On application by the widow of the patentee, who died in 1839, to extend a patent granted in 1825, on the ground of inadequate remuneration having been received by him in his lifetime, owing to want of capital, an extension was granted for five years, and the petitioner's costs were ordered to be paid, the opposing party having shown no good ground for their opposition, the Attorney-General appearing for the Crown. (1 Web. P. C. 565.) A Lord : " When a party has shown great ingenuity in an invention, and, from want of capital and means, has not been able to obtain an adequate return, we have over and over again extended the patent under such circumstances "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 an extension only to show that you made 200Z. a year for the first fourteen years, and you want to make 200/. a year for seven years more." {Ih. 566.) 659. In re Quaeeill's Patent. [1840] The petitioner having purchased the letters patent and stock in trade at a fkir price of the patentee, and sustained no logs, the application for an extension of the term refused. (1 Web. P. C. 740.) 278 EXTENSION OF LETTEES PATENT : The actual expenses and receipts must be shown : it is not sufficient to show generally that there has been no profit. {lb.) 660. In re Jones' Patent. [1840] The insufficiency of the usual term to affisrd remuneration, regard being had to the nature of the invention, is a ground for the extension of the term, provided the invention be meri- torious and useful to the public. Semble, that it is not necessary to show a probable ground for supposing that the petitioners would be remunerated by the extension prayed. (1 Web. P. C. oil.) 661. In re Galloway's Patent. [1843] The expense of litigation, the cost of the patents, the ex- pense of bringing the invention into use, and a manufacturer's fair profit, must be deducted in estimating the profit derived by the monopoly. (1 Web. P. C. 729.) 66S. In re Derosne's Patent. [1844] The term of letters patent, for refining sugar by filtration through beds of granulated animal charcoal, extended for six years, on the ground that, although the patentee had realized a very reasonable profit, he had not derived a benefit to the same extent as that derived by the public fi:om the invention. (2 Web. P. C. 1 ; 4 Moo. P. C. C. 416.) 663. In re Perkins' Patent. [1845] Lord Langdale : " The question is what remuneration has been received under the patent, as a whole, not for any par- ticular branch of it It is not intended that a patent should be divided and subdivided, and that you are to see whether he has received compensation upon one part and not upon another. The question is, whether the patent is to be renewed, which depends, amongst other things, upon this, whether he has received reasonable compensation during the Remuneration. 279 first term for which it was granted. If there were ten branches of the patent, if he had received 10,000/. imder one of them, although he had received nothing under the other nine, it would be very questionable whether the Judicial Gommittee ought to grant an extension of the patent." (2 Web. P. C. 9.) Per Lord Campbell : It is desirable, before applications for extension are heard, that the balance sheet should be handed over to the Solicitor for the Treasury, to examine it beforehand. {lb. 14.) It is material to consider, on applications for extension, in what ratio the profits have increased, if they have increased from year to year. {lb. 16.) 664. In re Lowe's Patent. [1846] The patentee was unable to show, ia the usual way, fi:om his books, that he had not derived fi-om the sale of his invention an adequate remuneration. The patentee not having sold any of his patented machines had kept no books, but he had allowed a gas company, ia numerous instances, to apply his invention, for the purpose of making its utility known. The manager of the gas company deposed that he was not aware of the patentee having ever derived any benefit fi:om his invention, and that they had not paid him anything in respect of it. Sir S. Lushington said : " Although there has been no direct evidence given of want of profit, which is a very important part of the petitioner's case, yet the evidence does ^ow & primd facie case of no profit ; and their Lordships are inclined to come to the conclusion that they are satisfied with the evidence, unless the Crown has reason to be dissatisfied with it. In these applications we have never permitted the petitioner to give evidence in his own case ; but, if the Crown does not intend to raise the objection, that there is no proof of want of remu- neration, then their Lordships are content with the evidence as it is." Patent extended, (10 Jur> 363.) 665. In re MuNTZ's PATENT. [1846] Where a patentee has obtained his remuttel'ation by the 280 EXTENSION OF LETTEKS PATENT: manufacture of the patented article during the existence of the patent, it is impossible to sever the profits realized as a manu- facturer irom those realized as a patentee. (2 JVeb. P. C. 121.) The patentee having made 55,000Z. by the manufacture, extension reftised, on the ground that he had been sufficiently remunerated. Lord Brougham, in delivering judgment, said : "We cannot weigh in golden scales the proportions between manufacturer's profits, and patentee's, but we must take it in the gross, and apply our minds as men of the world, men of business — ^neither unfairly towards the inventor, nor extravagantly and roman- tically towards him in his favour — neither against him pressing nor in his favour straining — we must ascertain whether he has, in the eyes of men of ordinary but enlightened imder- standings, judging fairly between him and the public, had a sufficient remuneration." {lb. 120.) 666. In re Haedt's Patent. [1849] In estimating the profits made under a patent, the profits arising fi-om the sale of the patented article for exportation must be added. (6 Moo. P. C. C. 441.) 667. In re BBir)SON'.s Patent. [1852] Application, under statute 14 & 15 Vict. c. 99, s. 6, by parties who opposed an extension of letters patent, for pro- duction and inspection of the petitioner's accounts pre^dous to the hearing of the -petition, refiised, with costs. (7 Moo. P. C. C. 499.) 668. In re Heath's Patent. [1853] Where the estate of a deceased patentee was of little value, and no accounts had ever been kept, the petitioner, the admi- nistratrix and widow of the patentee, was examined to prove an allegation in the petition, to the efiect that not only had there been no profits but a considerable loss. (8 Moo. F. C. C. 222.) Remuneratiun. 281 669. In re Markwick's Patent. [1860] The accounts produced at the hearing were unsatisfactory, owing to the non-production of the books. The Judicial Com- mittee, in recommending a prolongation of the term of the letters patent, directed a proper account of the profits and losses of the patent, to be verified by affidavit, with an explana- tion accounting for the non-production of the books, to be laid before the Attorney-General, subject to which they extended the term. (13 Moo. P. C. C. 310.) 670. In re Newton's Patent. [1861] Letters patent for an invention communicated by a foreigner resident abroad, extended for five years. The invention (ma- chinery for letter-press printing) was of a meritorious and useful character, but of an expensive nature, and only at the latter end of the term of the letters patent brought into public use ; and, although the patent had been worked at a profit, it was not, in the opinion of the Judicial Committee, sufficiently remunerative, considering the value of the invention. (14 Moo. P. C. C. 156 ; 10 TV. R. 731.) In taking an account of the profits and loss of the working ' of a patent, the patentee is entitled to charge, as part of his ex- penses, for loss of time in endeavouring to bring the invention into general use. {lb.) 671. /?« ?-e Hutchinson's Patent. [1861] The books of the petitioner in respect to profits arising from his patent having been lost during his bankruptcy, the account of profit and loss was taken upon his o^vn evidence. (14 Moo. P. a C. 364.) 673. In re Betts' Patent. [1861] The account of profit and loss of the patentee in working A patent ought to be clear and precise ; and it is the duty of a patentecj if engaged in any other business, or as a manufacturer 282 EXTENSION OF LETTERS PATENT: of his own Inventioii, to keep tke accounts of the patent and the manufacture separately. If a patentee is also manufacturer of his patent article, in taking account of the profits of the patent, he is entitled to deduct his profits as a manufacturer, as also the expenses caused by litigation in protecting his patent right. (1 Moo. P. C. C, N. S.A9 ; 9 Jur., N. S. 137 ; 11 «^. iE. 221 ; 7 L. T. Rep., N. S. 611.) 673. In re Hill's Patent, [1863] The most unreserved and clear statement of the patentee's remuneration is an indispensable condition in an application for an extension. The patentee was also manufacturer and sold the patented article. In his accounts he deducted two-thirds as profits fi-om the manufacture and sale, and only credited the patent with one-third : — ^Held, to be an unreasonable deduction. Although law expenses incurred by the patentee in main- taining his patent rights are allowed in deduction of his profits, yet, where the patentee compromised suits and gave up costs to which he had an apparent title, a deduction on that head will not be allowed. (1 Moo. P. C. C, N. S. 258 ; 9 Jur., N. S. 1209; 12 W. B. 25 ; 9 L. T. Rep., N. S. 101.) 674. In re Tkotman's Patent. [1866] To entitle a patentee to a prolongation of the term of letters patent, he must satisfactorily establish the amount of his profits. Licensees stand, with respect to the profits, in the same posi- tion as assignees of the patent. A patentee did not manufacture or sell the patented article (ship anchors), but granted licences to ironsmiths to manufac- ture, fi-om whom he Teceived royalties. On an application by him for an extension of the term of the letters patent, on the ground of inadequate remuneration, the accounts produced of his own expenditure in carrying on the patent being unsatisfac- tory, and no accounts given of the profits derived by the licensees, a prolongation of the letters patent was refused, first, Remuneration. 283 as the patentee's accounts were unsatisfactory, and secondly, from the patentee's having so dealt with his patent rights as to deprive him of the power of showing the amount of profit derived from the working of the patent. (3 Moo. P. C. C, N. 5-. 488; L. R., IP. C. 118.) 675. In re Poole's Patent. [1867] A patentee residing in America, for the purpose of getting the patented article into general use in England, arranged with an agent in England, and in consideration gave him a moiety of the royalties: — Held, that in estimating the profits of the patentee derived from the patent, such moiety was to be deducted. (4 Moo. P. C. C, N. S. 452 ; L. R., 1 P. C. 514.) Lord Eomilly, in delivering judgment, said : " There is no account of what profits he (the patentee) made in the United States, nor do their Lordships think it material for this purpose, because the question before them is, what profits were made and what benefits were sustained by the introduction of the inven- tion into this country." (4 Moo. P. C. C, N. S. 456.) See 680. 676. In re Saxby's Patent. [1870] Where the patentee is also the manufacturer, the profits which he makes as manufacturer, although not strictly profits of the patent, must yet be taken into consideration in estimating the amount of his remuneration. Therefore, where, on a peti- tion for prolongation, it appeared that the patentee was at the same time the manufacturer of the patented article, and was himself necessarily engaged in fixing and putting iip the patented apparatus, and that the accounts for such services were so intermixed as to render it impossible on their face to separate the items of profit received fi-om the patent, it appear- ing that, on the whole, the receipts had been very large, and that even on the balance alleged there had been considerable gain to the patentee, the Judicial Committee held that such 284 EXTENSION OF LETTERS PATENT: accounts were unsatisfactory, and refused tlie application, but without costs. (7 Moo. P. C. C, N. S. 82.) Lord Cairns, in delivering judgment, said : " It is the duty of every patentee who comes for tlie prolongation of his patent, to take upon himself the onus of satisfying this committee, 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 iuA^ention or not. It is not for this committee to send back the accounts for further particulars, nor to dissect the accounts for the pm'pose of sur- mising what may be their real outcome if they were dififerently cast ; it is for the applicant to bring his accoimts before the committee in a shape which will leave no doubt as to what the remuneration has been that he has received." (lb. 85.) 677. In re Claek's Patent. [1870] A petitioner, seeking the grace and favour of the Crown, in applying for an extension of the term of letters patent, is bound to bring his accounts before the committee in such a shape as to leave no doubt what the remuneration has been that he has received from the patent. The petition for extension, and the accounts furnished by the petitioner (the patentee) not containing sufficiently fuU and accurate information in respect to the patent, or the remunera- tion received by him, the Judicial Committee declined to recommend a prolongation of the term. The principle, where the statement of the remuneration received by the patentee, is on the face of the petition and accounts filed unsatisfactory, of adjudicating without reference to the merits of the invention, as acted on in Sa.vbi/'s Patent, recognized. (7 Moo. P. C. C, N. S. 255.) 678. In re Hotjgbton's Patent. [1871] The statement of accounts fiirnished being primd facie satis' Remuneration. 283 factory, the petitioners were allowed to prove the merits of the invention before going into the accounts. (7 Moo. P. C. C, N. S. 309.) Lord Justice James : " Their Lordships think that the cases of Saxbi/'s Patent and Clarli's Patent 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 circumstance is sufiicient for their Lordships at once to determine the application without going into the ques- tion of the merits of the invention." {lb, 311.) 679. In re Field's Patent. [1871] Accounts of profits and loss filed by a patentee on his appli- cation for a prolongation of the term of letters patent being prima facie unsatisfactory, the Judicial Committee directed the question of accounts to be taken before considering the merits of the invention. As the accounts were not satis- factorily explained, the application for a prolongation was refused. The difference between the sum for which a patentee has sold his patent and that which he has paid in buying it again cannot be allowed in the accounts as one of loss, but must be regarded as a mere commercial speculation. (8 Moo, P. C. C, N. S. 300; L. R., 4 P. C. 89.) 680. In re Johnson's Patent. [1871] When the possession of the patent has brought to the patentee the power of commanding orders as a manufacturer, it is to be taken into consideration in estimating the profits derived fi;om the patent. (8 Moo. P. C. C, N. S. 291.) The Lord Justice James, in deHvering judgment, said : " It was suggested to their Lordships that they ought not to take into consideration any of the profits made in America, and reference was made to Poole's patent. Their Lordships desire it to be understood that that case is not to be considered as 286 EXTENSION OF LETTEKS PATENT: laying down any general rule of law. Whateyer may have been the peculiar circumstances of that case, in which their Lordships, exercising their discretion, thought fit not to take into account the American profits, that is not to be considered as laying down any general rule. Their Lordships are of opinion, that where the question to be considered is, whether an invention has been sufficiently remunerated or not, in taking into consideration the remuneration received, they must have regard to the remuneration 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." (/6.) 681. In re Cage's Patent. [1873] Circumstances showing a want of adequate remuneration, an extension of the term of letters patent granted for six years. In estimating the profits derived from the patent, the Judicial Committee wiU take into consideration a deduction firom the profits of the patent for the personal expenses of the patentee for the exclusive devotion of his time in bringing the patent into practical operation and public notice. {L, R,, 4 P. C, 539 ; 9 Moo. P. C. a, N.S. 279.) 682. In re JoHsrsoN's and Atkinson's Patents. [1873] By the ninth of the rules touching letters patent, to be observed in proceedings before the Privy Council, under 5 & 6 Will. 4, c. 83, it is provided that a party applying for an extension of a patent under sect. 4 of the said act must lodge at the council office four copies of the balance sheet of expenditure and receipts relating to the patent in question, which accounts are to be proved on oath before the Lords of the committee at the hearing: — Held, that the Judicial Committee will not enter upon the accounts, in a case for extension, unless they have been filed in accordance with the above rule. (Z. R., 5 F. C. 87.) Objections to Extension. 287 Objections to Extension. 683. In re Woodceopt's Patent. [1841] An invention as described in the specification, having succeeded at first to a limited extent for certain patterns and colours, but being inapplicable for the more elaborate patterns and brighter colours, untU rendered so by means of certain improvements introduced from abroad, whereby it had become of great value, an application for the extension of the patent was refused, (1 Web. R. 740; 3 Moo. P. C. C. 171.) 684. In re Simister's Patent. [1841] Semble, that negligence on the part of the patentee in restrain- ing infirragement is a ground of opposition. (1 Web. P. C. 724; 4: Moo. P. C. C. 164.) 685. In re GrALLOWAY's Patent. [1843] The fact of great improvements having been made on the original invention^ affords no objection to the extension of the term. (I Web, P. C. 727.) See 630. 686. In re Bell's Patent. [1846] Application for the extension of a patent for manufacturing lucifer matches and boxes. The want of profit arose firom two circumstances ; first, a defect in the composition with which the match was loaded, which was not rectified imtil ten years after the date of the patent ; secondly, great loss had resulted from a fire which occurred on the premises, and, when the premises were rebuilt, the petitioner discovered that no insurance office would insure the premises, and that the terms of his lease obliged him to insure, and that, consequently, he was obliged to build other premises. The profits did not commence till three years before the expiration of the patent, and at the time of petition were under 700?. Extension re&sed. (10 Jur, 363.) 687. In re Pinkds' Patent. [1848] The non-reduction of an invention to practical operation in 288 EXTENSION OF LETTERS PATENT: such a manner as to contribute to the public service, and the absence of evidence to prove the probability of its being so reduced into practice in the future, coupled with the fact that the patentee has allowed his patent to be infringed without any assertion of his right at law, is a sufficient ground for refusing to prolong a patent. Lord Langdale, M. E., said : " Upon the effect, the utility and the merit of the patentee's contrivance, there has been considerable evidence, and also upon the supposed futihty of that contrivance. What is perhaps the strongest evidence, or the evidence upon which the best reliance can be placed, is this : that, from the time when the patent was granted up to this present time, this plan has not been reduced to prac- tical operation in any way which 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." (12 Jur. 234.) In re Baxter's Patent, [1849J See 696. 688. In re Patterson's Patent. [1849] A patentee entered into an agreement with certain parties to work his patent, but, owing to disputes between them, the invention was not prosecuted until a short time before the expiration of the term of ihe letters patent. In such circum- stances, an extension was reftised, (6 Moo. P. C. C. 469 ; U Jur. 593.) In re Claridge's Patent. [1851"] See 741. 689. In re Foarde's Patent. [1855] After an assignee of a patentee had incurred considerable loss in carrying out a patent for a smoke prevention apparatus, an act of parliament passed to compel the owners of furnaces in the metropolis to construct some form of apparatus so as to consume their own smoke: — Held, on an application for a prolongation of the letters patent, that though the act of parliament might. Objections to Extension. 289 in effect, compel the use of the petitioner's patent, yet that such circumstance formed no objection to a renewal of the term of the letters patent, the merits of the invention and loss incurred in carrying it out being established. (9 Moo. P. C. C. 376.) 690. In re Caedwell's Patent. [1856] A patentee agreed by deed with a public company to grant them exclusive licence to use his patented machine, and also covenanted with them to obtain, at the expiration of the term, a renewal of the patent for the same purpose. Under this deed the company alone used the patent. An application by the patentee for a prolongation refused, on the ground that the agreement was contrary to public policy, and repugnant to the provisions of the statute 5 & 6 WiU. 4, c. 83, relating to pro- longations of letters patent. (10 Moo. P. C. C. 488.) 691. In re Norton's Patent. [1863] Where a patentee has intentionally delayed for a length of time attempting to put his invention into practice, an extension will not be recommended, unless he can show some reasonable excuse, such as want of funds, for the delay. (1 Moo. P. C. C, N. S. 339.) 692. In re Goucher's Patent. [1865] In the objections filed by the objectors, the point was not taken, that the power given by 7 & 8 Vict. c. 69, s. 2, to recommend an extension of the term of letters patent for an invention, is exhausted when an extension has been once recom-. mended, and new letters patent granted : — Held, that the objec- tion could be raised on the application to fix a day for hearing of the petition. (2 Moo. P. C. C. 532.) In re M'Innes' Patent. [1868] See 718. u 290 EXTENSION OF LETTERS PATENT: Conditions imposed. 693. In re Whitehouse's Patent. [1838] The inventor, a mechanic, having assigned his interest to the petitioner, his master, the Judicial Committee, under the cn-- cumstances, made it a condition to their recommendation to the Crown to prolong the term of the patent, that the assignee of the patent should secure the inventor an annuity during the period of extension. (2 Moo. P. C. C. 496 ; 1 Web. P. C. 473.) 694. Russell v. Ledsam. [1845—1848] Renewed letters patent were granted, to the plaintiff " upon his securing to C. W. (the original inventor) an annuity of 5001. so long as the letters patent should last" :— Held, that the meaning of this condition was, that a security should be given to C. W. for the annuity, but that whether it was given before or after the letters patent was immaterial ; and that an averment, that the annuity was at the date of the new letters patent secured, was supported by proof of a deed to secure the annuity, executed before the new letters patent were granted. (14 M. §• fV. 574 ; affirmed in Exch. Ch., 16 M. §• W. 633 ; and in House of Lords, 1 H. L. Cas. 687.) There is nothing in the sta,tute (5 & 6 Will. 4, c. 83) to fetter the discretion of the Crown in the extension of letters patent, except the length of time for which that extension is to be granted. Lord Cottenham, L. C, in delivering the judg- ment of the House of Lords, said : " I can find nothing in the act of parliament which authorizes the Judicial Committee of the Privy Council to impose any terms, or to make any recom- mendations to his Majesty with respect to the parties seeking for the grant of the new letters patent, except the fact of whether the letters patent shall be extended or not What the. Judicial Committee is to report upon is merely as to matters between the public and the party applying, whether the party applying for the new letters patent has made out a case as against the public to have the old letters patent renewed. But Conditions imposed. 291 as to imposing any condition upon the Crown, which has otherwise the right to make the grant, there is nothing in the act to restrain the Crown from exercising any discretion it. pleases." {I H. L. Cos. 699.) 695. In re Bodmee's Patent. [1849] Where the executor of the surviving assignee of a patentee petitioned for an extension of the term of the letters patent, and it was established that a valuable consideration had been given for the assignment, and that the assignee had sustained con- siderable loss, the Judicial Committee, in granting an exten- sion of the term, refused to impose terms upon the petitioners in favour of the patentee. (6 Moo. P. C. C. 468.) Lord Brougham : " Terms are only imposed on the assignee where the inventors and patentees have made nothing by their invention." {lb. 469.) 696. In re Baxter's Patent. [1849] Application for the extension of a patent for an improved method of printing in colours. The petition was opposed by the apprentices of the patentee, on the ground that they had served their time with the petitioner under the expectation that, on the expiration of the patent, they would be able to exercise the trade themselves ; and that they had not been properly taught any other trade by the patentee, and, therefore, that they would be unable to gain their livelihood : — Held, that, if this defence had been founded in fact, the Judicial Committee would have put the petitioner under terms; but, as it was proved that the apprentices had received such instruction as to enable them to get employment in another branch of the trade, no condition was imposed on the patentee. (3 Jur. 593.) 697. In re Haedy's Patent. [1849] The inventor and patentee of improvements in manufacturing iron axletrees for railway carriages had lost largely by the patent, but his assignees had lately made considerable profits, and from their position in the trade, were likely to command a U2 292 EXTENSION OF LETTEKS PATENT: very large sale of the patented article. The invention was of high merit, and of great service to the public safety. In such circumstances, a prolongation of the term was granted to the assignees for four years, upon condition, first, that the assignees secured to the patentee half the profits derived from the sale ; and, secondly, that the patented article should be sold by the assignees to the public, at a certain fixed price. (6 Moo. P. C. C. 441 ; 13 Jur. \11 .) 698. In re Pettit Smith's Patent. [1850] In granting prolongation, the Judicial Committee imposed a condition, that the Commissioners for executing the oflSce of High Admiral should have the right of manufacturing such invention, for the service of her Majesty, without any licence fi:om the patentee. (7 Moo. P. C. C. 133.) 699. In re Bodmer's Patent. [1853] Where letters patent (for improvements in machinery, tools or apparatus for cutting, planing, turning, drilling and rolling metals) embraced several subjects, one only of which, namely, the rolling of metals, had been worked out, and that part of the patent was affected by subsequent patented improvements by the same patentee, and could not be effectually used without such subsequent improvements ; the Judicial Committee, before recommending an extension of the term of the first patent, put the petitioner upon terms of disclaiming all the parts of the original patent not worked out;, and restricted the prolongation to' the unexpired term of the subsequent patents. (8 Moo. P. C. C. 282.) 700. In re Schltjmbergee's Patent. [1853] A patentee having obtained an extension warrant neglected to get the patent sealed. A subsequent petition to the Crown, by a foreigner, to revoke this warrant was dismissed, on con- dition of the payment by the patentee of the petitioner's costs, and that no action should be brought for any infiiigements Conditions imposed. 293 between the date of the warrant and the subsequent petition. (9 Moo. P. C. a 1.) 701. In re Carpentee's Patent. [1854] The Judicial Committee, in granting an extension of the patent, which was extensively used in the Royal Navy, refused to annex a condition allowing the Crown the use of the patent, for the public service, without licence from the patentee. (2 Moo. P. C. C, N. S. 191 (w.).) 702. In re Normandy's Patent. [1855] Patentee, formerly in partnership with J. & W., by a deed of dissolution stipulated that J. & W. should have the exclusive right of granting, in certain cases there provided, licences for manufacturing the patent article. In recommending an ex- tension of the term of the letters patent, the Judicial Committee imposed a condition upon the patentee to secure to J., in whom the interest under the deed of dissolution then vested, the same interest in the new letters patent as related to the granting of licences as was provided by the deed of dissolution, but refused to allow J. to substitute new licences for those granted under the original letters patent, in the event of the original licensees declining to renew their licences from him under the new grant. (9 Moo. P. C. C. 452.) 703. In re Markwick's Patent. [I860] An extension granted to the assignee, upon condition of an annuity being secured to the patentee. (13 Moo. P. C. C. 310.) 704. In re Lancaster's Patent. [1864] Patent for improvements in the manufacture of fire-arms. The patentee had received large sums of money from govern- ment, for expenses of experiments, and by way of bounty and reward, but from the nature of the patent had not, in the opinion of the Judicial Coramitteei, received sufficient remune- ration for his invention, and in granting an extension, their 294 EXTENSIOIV OF LETTERS PATENT: Lordships refused to impose a condition in the new grant, thai the Crown should be at liberty to use the invention for the public service without licence from the patentee. (2 Moo. P. C. C, N. S. 189.) 705. In re Mallet's Patent. [1866] A patentee, who was not a manufacturer, granted a licence to a manufacturing firm to manufacture the patented article, which, by agreement between them, was of an almost exclusive character. In granting a prolongation of the term of the letters patent, the new letters patent were directed to be made upon condition that licences should bo granted by the patentee to the public upon terms similar to the one already granted. (4 Moo. P. C. a, N. S. 175 ; L. R., 1 P. C. 308.) 706. In re Herbert's Patent. [1867] Petition for prolongation of term of letters patent by patentee, together with the assignees of a moiety of the patent. After the presentation of the petition, and before the hearing, the patentee died, having by his wUl appointed his widow executrix and residuary legatee. Extension granted to the assignees, on condition that they held the moiety of the patent in trust for the widow of the patentee. (4 Moo. P. C. C, N. S. 300 ; L. R., 1 P. C. 399.) 707. In re Pitman's Patent. [1871] Sir J. W. Colvile, in dehvering judgment, said : " It has been the practice of this tribunal, in cases in which an applica- tion of this kind (extension) on the part of the 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 Russell's Patent." (L. R., 4 P. C. 87.) Questions of Validity. , 295 Questions of Validity. 708. In re Eraed's Patent. [1835] A patent will not be extended which is palpably bad, but their Lordships only require a prima facie case to be made as to the validity of the patent. (1 Web. P. C. 557, note (a).) 709. In re Kay's Patent. [1839] Extension of letters patent about to expire granted, pending a suit involving the question of their validity, where the judg- ment of the court cannot be obtained before the expiration of the patent. It is sufficient to establish a prima facie case of the validity of a patent on an application for an extension. (1 Web. B. 568; 3 Moo. P. C. C. 24.) 710. In re Galloway's Patent. [1843] The new letters patent are granted subject to the same ob- jections as the old, and the questions of novelty and utility will not be minutely entered on. (1 Web. P. C. 725.) 711. Jra re Eobinson's Patent. [1845] The use of an invention in England prior to the date of letters patent granted for Scotland will invalidate the Scotch patent; and the Judicial Committee accordingly refused to confirm a Scotch patent, the invention being used in England before the date of the Scotch patent. (5 Moo. P. C. C. 65.) 71S. In re Woodceoft's Patent. [1846] Lord Brougham, in delivering judgment, said : " In all cases where there is a disputed right as to the validity of the patent, and where the validity of the patent itself must come in question, two things are to be considered. 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 instance, namely, where it is a 296 EXTENSION OF LETTERS PATENT: clear case, or nearly a clear case, their Lordships will not grant an extension ; first, because they do not see merits, and, secondly, because they will not put the parties against whom the patent right is granted and is sought to be extended, to the vexation and trouble and expense either of bringing a scire facias to repeal the letters patent, or of sustaining an action for infringe- ment. But where the matter hangs very doubtM, where there is conflicting evidence, where upon the construction of the specification or the patent, or in any other way, questions 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 recommending an extension, merely because elsewhere the validity of the patent may reasonably be contested Nothing is decided here in granting the extension as to the validity of the patent. All objections to it are saved, of course, and if an extension should be granted of an invalid patent, that would be done which would be only nugatory and not hurtful, except in the way I have described of the expense to the parties ; that is, this only would be done, that an invalid patent woidd be extended for so many years, and if the courts of law held it to 1be invalid, that extension would operate nothing in favour of the patentee." (2 Web. P. C. 30.) 713. In re PiNKUs' Patent. [1848] Lord Langdale, M. P.. : " On an occasion of this kind, this court 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." (12 Jur. 234.) ■714. In re Heath's Patent. [1853] The circumstance of there being lis pendens, respecting the ■'validity of the letters patent, is no objection to the grant of an Questions of Validity. 297 extension of the original letters patent. (8 3Ioo. P. C. C. 217 ; 2 Web. P. a 247.) 715. In re Betts' Patent. [1862] If it can be clearly shown that the patent sought to be ex- tended is bad for want of originality, the Judicial Committee will not entertain the application. Aliter, if at most, a doubtful question as to the validity of the letters patent can be raised. (1 Moo. P. C. C, N. S. 49.) Lord Justice Turner, in the course of the argument, said : "A suffi.cient prima facie case has been shown by the judgment of the House of Lords, in favour of the validity of this patent. It is not the practice of this tribunal, in applications of this kind, to go into the question of the validity or invalidity of the letters patent." {lb. 52.) 716. In re Hill's Patent. [1863] Sir J. T. Coleridge, in delivering judgment, said : " Their Lordships have not in these cases been in the habit of trying the validity of patents. They wiU 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, therefore, the questions of want of novelty and want of utility, so far as they affect the validity of this patent. Indeed, the learned counsel for the opponents disclaimed, and very properly, any intention of im- peaching its validity directly; but they contended that, both with respect to the novelty and the utility of the invention, the degree of merit to be attributed to the petitioner ought to be taken into account ; and in their Lordship's judgment they are right in that contention." (1 Moo. P. C. C, N. S. 262.) 717. In re M'Dougal's Patent. [1867] Sir W. Erie : " It is not the duty of the Judicial Commitee upon such an application (extension) to adjudicate upon the validity or invalidity of the patent itself, but they must, in 298 EXTENSION OF LETTERS PATENT: deciding whether the above conditions have been established, ascertain the meaning of the specification." (5 Moo. P. C. C, N. S. 4.) 718. In re M'Innes' Patent. [1868] The subject-matter of an invention was the employment of a metallic soap, composed of well known chemical substances in common use, which the specification described as applicable for coating of iron and wood to prevent the fouling of ships' bottoms, and for other useful purposes. Prolongation of the term of such letters patent refused on the ground, first, that it would be detrimental to the public interest ; secondly, that adequate remuneration (2,835Z.) had been received. (5 Moo. P. C. C, N. S. 72.) SirW. Erie said: "Although this tribunal does not adjudicate upon the validity of a patent, yet in a case where the validity is doubtful, their Lordships exercise a discretion in recom- mending, or otherwise, the Crown to prolong the term." (76. 76.) " Their Lordships taking into consideration, with reference to the public interest, that the individual substance, for the appli- cation of which the patent is sought to be prolonged, is not specially 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. On the whole, therefore, their Lordships are of opinion, that they ought not to recommend her Majesty, under such circumstances, to grant a prolongation." {lb. 78.) In re Saxby's Patent. [1870] See 654. Extension of Patent for Invention patented Abroad. 299 Extension of Patent for an Invention also patented Abroad. 719. J« re Bodmer's Patent. [1853] The provisions of sect. 25 of the statute 15 & 16 Vict. c. 83, enacting that letters patent obtained in the United Kingdom for patented foreign inventions are not to continue in force after the expiration of the foreign patent, apply only to patents granted in the United Kingdom subsequent to the passing of that statute. (8 Moo. P. C. C. 282.) 720. In re Aube's Patent. [1854] Section 25 of the 15 8s 16 Vict. c. 83, enacts " that no letters patent for or in respect of an invention for vehich any such patent or like privileges shall have been obtained in any foreign country, and which shall be granted in the United Kingdom, from the expiration of the term for which such letters patent or privilege was granted or was in force, shall be of any validity." The 16 & 17 Vict. c. 115, s. 7, declared and enacted, that new letters patent granted by way of prolongation, should be granted according to the provisions of the 15 & 16 Vict. c. 83. Application was made under the 5 & 6 WiU. 4, c. 83, and 2 & 3 Vict. c. 69, by the assignees of a patentee for extension of an English patent for a foreign importation patented in France. At the date of the application the French patent had expired: — Held, dismissing the petition, that as the foreign patent had expired, no renewed grant would be valid by sect. 25 of the 15 & 16 Vict. c. 83, as sect. 7 of the 16 & 17 Vict. c. 113, made an extended patent a new patent, within the provisions of sect. 25 of the 15 & 16 Vict. c. 83. (9 Moo. P. C. C. 43.) 721. In re Newton's Patent. [1862] A patent (for an invention communicated by a foreigner abroad) was taken out in England, and the inventor a few weeks afterwards obtained letters patent for the same invention in the United States of .^merzca. An application made for prolongation of the English patent before the American patent ^OD EXTENSION OF LETTERS PATENT: had expired, refused. (15 Moo. P. C. C. 176; 9 Jur., N. S. 109.) The Right Hon. Dr. Lushington, in delivering judgment, said : " Their Lordships have considered the cases bearing upon this point which have previously been decided by the Judicial Committee upon former occasions, and they are of opinion, that those cases were all rightly decided ; and they have no intention of departing from the principles there laid down. It appears, however, to their Lordships, that the decision of this case rests upon a very narrow principle indeed. The patents in England and the United States of America, were granted almost simul- taneously, and though this case does not come within the letter of the statute, it appears to their 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." (15 Moo. P. C. C. 180.) 722. In re Betts' Patent. [1862] In 1849, letters patent were granted in England to B., a British subject. In 1850, a patent was granted in France, for the same invention, to the patentee for fifteen years, and another in Belgium, to a party on his behalf, for ten years. The Belgian patent expired before the English patent, and before application was made for a prolongation of that patent : — Held, that the Judicial Committee had jurisdiction to entertain an application for the prolongation of the English patent. (1 Moo. P. a a, N. 8.4:9; 9 Jur., N. S. 137 ; U W. R. 221 ; 7 L. T. Rep., N. S. 577.) Lord Chelmsford, in delivering judgment, said : " The earlier part of the 25th section (15 & 16 Vict. 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, and the words in the proviso, ' any such patent or like privilege,' must be taken to refer to the entire description of the patents mentioned in the foregoing part of the section, and to no others. This construction renders the section con- Extension of Patent for Invention patented Abroad. 301 sistent throughout, and applicable in every part of it to the same subject. Where a patent is taken out in a foreign country before a patent for the same invention in the United Kingdom, the latter patent is to terminate at the same time as the foreign patent. Where the term in the foreign patent has expired, any grant of letters patent in the United Kingdom made after that period is to be of no validity." (\ Moo. P. C. C. 59.) 733. In re Hill's Patent. [1863] A patent was granted in England before the passing of the statute, 15 & 16 Vict. c. 83. A patent for a similar invention had been granted in France to another person prior to the English patent, but it did not satisfactorily appear that the English patentee had any previous knowledge of the foreign invention. The French patent had not expired at the time of the application for prolongation: — Held, that, although the case did not fall strictly within the terms of the 25th section of that statute, yet that the policy which the legislature there indi- cated, was to guide the committee in the exercise of their discretion, that policy being, to prevent, in the case of inven- tions made and patented in any foreign country, the continuance of a monopoly in England by means of a patent granted subse- quently here, and after the time when the discovery shall have become public property in the foreign country, and that the prolongation of an existing patent fell within such rule. ( 1 Moo. P. C. a, N. S. 258; 9 Jur., N. S. 1209; 12 JT. R. 25; 9 L. T. Rep., N. S. 101.) 784. In re Poole's Patent. [1867] The 15 & 16 Vict. c. 83, s. 25, does not deprive the Judicial Committee of the Privy Council of the power to entertain an application for an extension of the term of letters patent taken out first In England, though a patent has been pbtained for the same invention In a foreign state; and the foreign patent would expire before the expiration of the pro- longed patent. 302 EXTENSION OF LETTERS PATENT: Secus, if the patent was first obtained abroad by a foreign subject, and afterwards taken out in England. (4 Moo. P. C. a, N. S. 452; L. R., 1 P. C. 514.) Lord Romilly, in delivering judgment, said : " Their Lord- ships are of opinion that this clause of the statute (sect. 25) must apply to a case where a patent has been previously obtained in a foreign country. And it is obvious, from various considerations, that that must be the meaning of the clause, for, if not, an English-born subject who took out a patent in this country for an invention invented here, could not venture to take out a patent in a foreign country if the patent in the foreign country was of shorter duration than in this country, as, for instance, in Belgium, where the term appears to be ten years, as it would absolutely preclude his ever applying for a continuation of the patent here, inasmuch as the patent for the same invention would previously have expired in the foreign country." (4 Moo. P. C. C, N. S. 458.) 725. In re NormAnd's Patent. [1870] A patentee, a foreigner, patented his invention first in England and afterwards in France, which latter patent, at the date of the application for a prolongation of the English patent, had a year to run: — Held, by the Judicial Committee, that they could not recommend the Crown to extend the term upon the chance of the French patent being extended : — Held, further, that if the French patent had expired there was no power in the committee to recommend an extension of the English patent. (6 Moo. P. C. C, N. S. 477.) 726. In re Winan's Patent. [1871] Upon the construction of sect. 25 of 15 & 16 Vict. c. 83: — Held, that that section does not apply where an English patent is taken out in this country before a patent for the same invention is obtained in a foreign country. A patent by American subjects was taken out in this countrj', and shortly afterwards in America and France for the same invention. After the expiration of the French patent, and within a few months of the expiration of the American patent. Extension of Patent for Invention patented Abroad. 303 application was made for a prolongation of the English patent. Such application refused, as the Judicial Committee would not, on the ground of general policy, recommend a renewal of the English patent after the French patent had been allowed to expke. (8 Moo. P. C. C, N. S. 306.) 737. In re Johnson's Patent. [1871] The Lord Justice James, in delivering judgment, said: " Their Lordships are satisfied to adopt the rule as laid down in Belts' Patent, which is one in which the matter underwent the fullest consideration, and they are satisfied that the decision in that case was a right decision, namely, that an English patentee obtaining a patent abroad for his invention, in addition to his English patent, that the English patentee 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. They must have regard to the antecedent circumstances, the efiect of which the legislature itself has thought of so much import- ance as to make it absolutely impossible for the Crown in some cases to grant a renewal of a patent, or even to extend a patent beyond the duration of the foreign patent, whether the invention is in its origin and domicile a foreign invention or an English invention, and that difference their Lordships think they must have regard to in considering the application." (8 Moo. P. C. a, N. S. 287; L. B., 4 P. C. 79.) 7S8. In re Blake's Patent. [1873] Petition for the extension of the term of letters patent. A patent was first taken out in America, then in England, and two days subsequently in France. The French patent was allowed to drop : — Held, that although the Judicial Committee had jurisdiction under the 25th section of the Patent Law Amendment Act, 1852, to entertain the application, yet, on 304 EXTENSION OF LETTERS PATENT: the ground of public policy, as the French patent had been allowed to expire, they would not recommend an extension of the term. The court followed the decision in the case of mnan's Patent. (9 Moo. P. C. C, N. S. 373 ; L. R., 4 P. C. 535.) Sir Barnes Peacock, in delivering judgment, said: " The word ' such' In the proviso In the 25th section of the statute 15 & 16 Vict. c. 83, has already received a judicial con- struction, the word ' such' being held to apply to a patent taken out in a foreign country before the grant of letters patent in England. {In re Betts' Patent.) Their Lordships, therefore, think the meaning Is, that where a patent is taken out In a foreign country, before the grant of letters patent In England, and the foreign patent has expired, then that the patent In England should cease to be in force, and that where one ' such' patent, or the old patent, has been- obtained abroad, then the English patent shall be determined at the expiration of the earliest of the letters patent granted In a foreign country." (Z. R., 4 P. C. 537.) The Petitioner. 7S9. In re Weight's Patent, Ex parte Shuttlewoeth. [1837] Extension recommended in favour of the parties having the legal estate, without Imposing any conditions with reference to the equitable claim of other parties connected with the patentee. (1 Web. P. a 561.) In an application for extension by an assignee, the title of the petitioner must be strictly proved, although no notice of intention to dispute the title is contained In the objections. {lb.) 730. In re Southwoeth's Patent. [1837] The new letters patent must be granted to the party in whom the subsisting patent is legally vested. (1 Web. P. C. 487.) The Petitioner. 305 731. In re Downton's Patent. [1839] In re Heath's Patent. [1853] An extension of a patent may be granted to the administra- trix of the patentee. (1 Web. P. C. 565 ; 8 Moo. P. C. C. 217.) 733. In re Morgan's Patent. [1843] Lord Brougham, in delivering judgment, said : " When ap- plications are made to their Lordships for the extension of a patent term, that is to say, of a monopoly, under letters patent by assignees, to whom the interest of the patentee has been parted with, and in whom it is vested, their Lordships have always been used to consider, that by taking into their view and favourably listening to the application of the assignee, they are, though not directly, yet mediately and consequentially, as it were, giving a benefit to the inventor, because, if the assignee is not remunerated at aU, it might be said that the chance of the patentee of making an advantageous conveyance to the assignee would be materially diminished, and consequently, his interest damnified. For this reason, consideration has been given to the claims of the assignee who has an interest in the patent." (1 Wei. P. C. 737.) 733. In re Galloway's Patent. [1843] In an application by an assignee, his title must be strictly proved. (1 Web. P. C. 725.) 734. Russell v. Ledsam. [1845] The power of the Crown to extend letters patent is not con- fined to grantees, but extends to assignees, and such renewed letters patent, granted to the assignee, are good by the statute 5 & 6 Will. 4, c. 83, independently of the 7 & 8 Vict. c. 69. (14 M. §■ W. 574 ; judgment affirmed in Exch. Ch., 16 M. §• W. 633 ; and in H. of L., 1 H. L. Cas. 687.) Sect. 4 of 5 & 6 Will. 4, c. 83, enacts that " if any person who now hath or shall hereafter obtain any letters patent as 306 EXTENSION OF LETTEllS PATENT: aforesaid," shall advertise, &c., and petition, the Crown may grant an extension of the patent. Parke, B., in delivering the judgment of the court, upon the construction of this section, said : " The ordinary sense of the word ' obtaining,' which alone would probably be taken to mean the original obtaining from the Crown, is, we think, explained by the context to mean the becoming possessed of it either by original grant, by assignment, or by any other title. We feel a difficulty in adopting the explanation of these words, * as assignee,' given by some of the judges in the case of Spilsbury \. Clougli, who suppose that they are meant to refer to an assignee of a foreign invention who obtains a patent here ; for the assignee is distinguished from the grantee, and one who obtains letters patent as assignee, as distinguished from grantee, must take by assignment the letters patent, not the invention. Besides, the importer, who is not necessarily the assignee of a foreign invention, and very seldom is, may have letters patent granted to him. The act is certainly penned so as to leave the construction open to doubt, but our opinion is, that the power of renewal is not confined to grantees, but extends to assignees, and the legislature may reasonably be supposed to have intended to compensate the assignee as well as the patentee for labour bestowed and capital expended, without adequate remuneration, in bringing a useful invention to perfection, as they clearly have done by a substitute statute." (14 M. Sf W. 588.) 735. In re Hardy's Patent. [1849] Extension of a patent granted to an assignee upon certain conditions, (6 Moo. P. C. C. 441 ; 13 Jur. 177.) 736. In re Boomer's Patent. [1849] The extension of a patent may be granted, on petition, to the executor of the surviving assignee for valuable consideration of a patentee. (6 Moo. P. C, C. 469.) The Petitioner. 307 737. In re Berry's Patent. [1850] Extension of letters patent granted for six years, wliere the invention was of considerable commercial value, and tlie im- porters had embarked a large capital upon machinery in trying to introduce it to general use, and incurred considerable loss in so doing. (7 Moo. P. C. C. 187.) Lord Brougham, in delivering judgment, said : " Their Lordships have considered this case with the more attention, inasmuch as it is not very clear that it may not be considered the first case, in which we have ever granted an extension, solely upon the ground of importation. The patent law 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. Now the latter is a benefit to the public incontestably, and, therefore, they render themselves entitled to be put upon somewhat, if not entirely, the same footing as inventors. In this case, certain parties have by their adven- turous spirit, and by the outlay of capital, benefited the public in the proportion of the value of the foreign invention in question, which, but for that adventurous spirit and outlay 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 legislative power which the statute vests in this committee," (lb. 189.) See also 635, 738. In re Pettit Smith's Patent, [1850] The person who has the legal estate in letters patent has the prior right to petition for an extension. In the present case the new letters patent were granted to the trustees of a joint- stock company, although the patentee joined in the petition, (7 Moo. P. C. C. 133.) 739. In re Noble's Patent. [1850] An equitable assignee is entitled to appear with the legal X 2 308 EXTENSION OF LETTERS PATENT : assignees of a patent, on a petition for a prolongation of the letters patent, if the name of such equitable assignee appears, with the other petitioners, in the advertisements required by sect, 4 of the statute 5 & 6 Will. 4, c. 83, and Rule 2, made in pursuance thereof. (7 Moo. P. C. C. 191.) 740. I?i re Cook & Wheatstone's Patent. [1851] Semble, a company may obtain a renewal of letters patent. Extension was in this case refused on the grounds of sufficient remuneration ; Lord Langdale, however, said : " If the com- pany's speculation had been clearly made out to be a losing concern, it would perhaps have been matter for consideration whether there was not good ground for renewal." (38 Lond, Jour. 223.) 741. hi re Claeidge's Patent. [1851] The importer of an invention from abroad is an inventor within the meaning of the statute 5 & 6 Will. 4, c. 83, and entitled to apply for an extension of the term. But the Judicial Committee mil look mth jealousy into the merits of the inven- tion imported. Application for an extension by the trustees of a joint-stock company (the assignees of the patentee) refused ; the invention imported having been in common use in France, and no great risk or expenditure incurred by the patentee or his assignees in introducing it to the public. (7 Moo. P. C. C. 394.) Jervis, C. J., objected to the prolongation on the ground that the rule in granting letters patent is to limit the number of grantees to twelve. {lb. 395.) Mr. Pemberton Leigh, in the course of the argument, said: " No doubt extensions have been granted to assignees, but it is too strong to say that the assignees are to be treated with the same indulgence as patentees." (lb.) 743. In re Schlumberger's Patent. [1853] An alien resident abroad, who was interested in an English patent by a foreign inventor, and who had also considerable The Petitioner. 309 dealings in this country in respect of sales of the patented machine and in granting licences for the use of such patent, held, in the circumstances, to have such a locus standi as to entitle him to petition the Crown to revoke an order in council for granting an extended term of an English patent, and to recall the vi^aiTant for sealing such patent. (9 Moo. P. C.C.I.) 743. In re Napier's Patent. [1861] The Judicial Committee have power, under statute 7 & 8 Vict. c. 69, s. 4, to grant an extension of the term of letters patent to the assignee of the patentee (in this case a public company), when the patentee has ceased to have any connection with the working of the patent. (13 Moo. P. C. C. 543; 9 W. R. 390.) 744. In re Newton's Patent. [1861] Extension granted to a petitioner who had obtained the letters patent as agent and trustee for a foreign inventor. (14 Moo. P. C. a 156.) 745. In re Bovill's PATENT. [1863] The patentee had been involved in debt arising from exten- sive litigation in defending his patent rights, and had, more- over, mortgaged his letters patent, and entered into a deed of arrangement or inspectorship under the Bankruptcy Act with his creditors. The petition was presented by the patentee, and certain mortgagees and others claiming liens on the letters patent. In the circumstances, their Lordships granted the ex- tension of the patent to the patentee alone.- (1 Moo. P. C. C, N. S. 348.) 746. In re Norton's Patent. [1863] Petition by assignee of patentee, who was dead, for pro- longation of letters patent, dismissed by reason, (1) that the assignee had never taken any effectual steps to apply the inven- tion to a useful and beneficial purpose ; and (2) as the applica* tion for extension, though by the assignee, was in reality on 310 EXTENSION 0¥ LETTEES PATENT : behalf of a joint-stock company, who purchased the letters 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. (1 Moo. P. a C, K S. 339.) The Master of the EoUs, in delivering judgment, said : " Under the late statute, 7 & 8 Vict. c. 69, s. 4, a person is not excluded from applying for an extension of a patent upon the ground of his being the assignee of the patent; but it must always be borne in mind that the assignee of a patent does not, unless under peculiar circumstances, apply on the same favour- able footing that the original inventor does. The ground that the merits of the inventor ought to be properly rewarded, in dealing with an invention which has proved useful and bene- ficial 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 pei-fect and bring out his invention, and has thus enabled him to bring it into use." (lb. 344.) In re Herbert's Patent. [1867] See 706. 747. In re Normakd's Patent. [1870] An assignee of the patentee, who had taken an assignment of four-fifths of the patent within a few months of the expiration of a patent, which had only just been brought into use, for a small consideration, was not entitled to any extension. (6 Moo. P. C. a, N. S. 477.) 748. In re Pitman's Patent. [1871] Sir J. W. Colvlle, in delivering judgment, said : " There are, no doubt, cases in which their Lordships have granted applications by the assignees of the patentee for 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, w, as was stated by Lord Brougham, in Amendment of the Petition. 311 Morgan's Patent, that, by so doing, ' they are, though not directly, yet mediately and consequentially, as it were, giving a benefit to the inventor, because, if the assignee is not remu- nei-ated at all, it might be said that the chance of the patentee of making an advantageous conveyance to the assignee would be materially diminished, and consequently, his Interest damnified. For this reason, consideration has been given to the claims of the assignee who has an interest in the patent.' " (8 Moo. P. C. C, N. S. 297.) The Petitioti. In re Beidson*s Patent. [1852] See B6lf. 749. In re Pitjian's Patent. [1871] As the recommendation to the Crown for the prolongation of the term of letters patent is a matter of discretion in the Judicial Committee, it is imperatively necessary that the petition for such prolongation should state fairly and fully everything relating to the patent: an omission to do so is fatal to the application. Where the petition omitted to state that the patent was, in fact, a communication fi.'om a foreigner living abroad, who had previously to the English patent patented the same invention in America, and that the American patent had expired, though afterwards renewed in America, the Judicial Committee, in the circumstances, refosed the application. (8 Moo. P. C. C, N. S. 293.) 750. In re Johnson's Patent. [1871] A clear statement should be made, in this petition, of every matter applicable to the patent, the term of which it is desired should be extended. (L. R., 4 P. C. 83.) Amendment of the Petition. 751. In re Hutchinson's Patent. [1861] jMaterial facts, showing the title of the petitionei*, were dis- 312 EXTENSION OF LETTERS PATENT: closed in evidence, which were omitted to be stated in the petition for prolongation. In such circumstances the hearing- was postponed, and the petition directed to be amended by stating those facts. (14 Moo. P. C. C. 364.) Time to present Petition — Prosecuting with effect. 75S. In re Macintosh's Patent, [1836] A petition was lodged in January, 1836, for the prolongation of a patent which expired in June, 1837. Application postponed on the ground that the profits accruing in the meantime might materially affect the question of extension. (1 Web. P. C. 739.) 753. In re BodjVIEr's Patent. [1838—1840] By 5 & 6 Will. 4, c. 83, s. 4, it is provided, "that no extension shall be granted if the application shall not be made and prosecuted loith effect, before the expiration of the term originally granted in such letters patent:" — Held, by the Judi- cial Committee, that the petition for such prolongation must be brought to a hearing before the expiration of the letters patent, and that the pendency thereof is not sufficient to bring it within the intent and meaning of the proviso. Where, therefore, the petitioner had been prevented prose- cuting his petition before the expiration of the letters patent, by the conduct of parties objecting, and from the circumstance of the Judicial Committee hot being sitting, and the period for which such letters patent had been originally granted, had, in the meantime, expired, the Judiciail Committee, feeling them- selves bound by the terms of the act of parliament, dismissed the petition, though no laches or neglect could be imputed to the petitioner; but the 5 & 6 Will. 4, c. 83, s. 4, having been repealed by the 2 & 3 Vict. c. 67, their Lordships, upon a fresh petition, granted an extension of the letters patent for seven yeairs, under that act, on the ground that the invention was an Rti/es 313 ingenious one, and thsct it did not appear tliat the patentee had received any remuneration until within the three years previous to the expiration of the patent. (2 Moo. P. C C. 471 ; 1 TFeb. P. C. 740.) '?54. In re Kay's Patent. [1839] Letters patent being about to expire, an application for an extension will be heard during the pendency of legal proceedings as to the validity of the patent. (3 Moo. P. C. C. 24.) '765. Ledsam v. Eussell. [1848] An application for a prolongation of letters patent is " pro- secuted with effect" within the terms of the statute, if the party applying obtain the report of the Judicial Committee of the Privy Council before the expiration of the original patent. (1 H.L. Cas. 687.) 756. In re Hutchinson's Patent. [1861] Eule 3 of the Privy Council, made pursuant to the statute, 5 & 6 Will. 4, c. 83, relating to letters patent for inventions, provides that a petition under sections 2 and 4 of that statute, must be presented within one week from the inser- tion of the last of the advertisements required to be published in the London Gazette. A petitioner inserted the last advertisement of his intention to petition for a prolongation on the 24th of May, but did not present his petition until the 5th of June following. The registrar i-efused to receive the petition as being too late. Upon a special appHcatiOn for that purpose, it appearing that the delay arose fi-om a mistake of the petitioner's agent, an order was made admitting the petition. (14 Moo. P. C. C. 364.) 314 EXTENSION OF LETTERS PATENT: Rules, 757. In re BomiEn's Patent. P. C. [1839] The rules enacted for practice in patent cases, under the 5 & 6 Will, 4, c. 83, must be observed in an application for a prolongation under 2 & 3 Vict. c. 67. (2 Moo. P. C. C. 471.) In re Johnson & Atkinson's Patent. [1873] See 683. Advertisements. 758. Li re Derosne's Patent. [1844] When the patentee resides abroad, and the invention is carried on under licensees, the advertisements should be inserted in papers circulating in the places where the manufacture is actuaHy carried on. (2 Web. P. C. 2 ; 4 Moo. P. C. C. 416.) 759. In re Pekkins' Patent. [1845] The advertisements should be proved before the case is heard. The advertisements having been inserted in London papers only, a witness was allowed to be called to prove that the patent apparatus was manufactured in London and not elsewhere. (2 Web. P. C. 8.) 760. In re Noble's Patent. [1850] To entitle an equitable assignee to appear with the legal assignee of a patent on a petition for a prolongation of the letters patent, the name of such equitable assignee must appear, with the other petitioner, in advertisements required by sect. 4 of the statute 5 & 6 Will. 4, c. 83, and Eule 2, made in piu-- suance thereof. (7 Moo. P. C. C. 191.) Per Lord Brougham : If the statute requires anything, to be done which is not done, the Crown has no power to grant a prolongation. (iJ. 194.) In re Hutohinson's Patent. [1861] See 756. Caveats. 315 Caveats. 761. In re Smith's Patent. [1850] An application by the Lords of the Admiralty to enter a caveat and be heard against a petition for extension, such caveat not having been filed in proper time, refused ; as the Attorney- General watches the interests of the government. (7 Moo. P. C. C.'l33.) 762. In re Lowe's Patent. [1852] The Judicial Committee will not permit a party to be heard in opposition to an application for a prolongation of the term of letters patent, unless a caveat has been entered in his own name. Where a patent agent had entered a caveat in his own name, but in reality as the agent of several other persons as well as on his own behalf, it was held that his counsel could only be heard for him, and could only ask such questions as respected his interest. Any one of the public has a right to enter a caveat and be heard in opposition at the hearing. (8 Moo P. a C. 1.) 763. In re Schlujibeeger's Patent. [1853] An alien residing abroad, who presents a petition to oppose the extension of a patent under which he, as a licensee, had had considerable dealings in this country, need not prove in a formal manner what his interest in the letters patent is. Whether an alien, living abroad, has a right, as such, to inform the Crown, by petition, as to any matters touching letters patent, qucere, (2 Eq. R. 1.) 764. /w re Hutchinson's Patent. [1861] Where the Judicial Committee made an order to receive a petition which had not been presented in accordance with Eule 3 of the Privy Council, made pursuant to the statute 5 & 6 Will. 4, c. 83, and a caveat had been entered : — Held, that as the party filing the caveat was interested in sustaining the. objection to the reception of the petition, notice of the applica- tion must be served on him; (14 Moo. P. C. C. 364.) 316 EXTENSION OF LETTEES PATENT : Insioection. '765. In re Beidsok's Patent. [1851] Application, under 14 & 15 Vict. c. 99, s. 6, by parties who opposed an extension, for production and inspection of the petitioner's accounts previously to the hearing of the petition, refused, with costs. (7 Moo.. P. C. C. 499.) Counsel. 766. In re Eeaed's Patent. [1835] In aU unopposed petitions for the extension of letters patent the Attorney-General should attend on behalf of the Crown. (1 Wei. P. C. 557.) 767. In re Woodceoft's Patent. [1840] Unless parties opposing have distinct and separate interests, not more than two counsel will be heard to oppose. (3 Moo. P. C. C. 172 (n.).) 768. In re Smith's Patent. [1850] The Attorney-General represents the government and the public. (7 Moo. P. C. C. 133.) In re Lowe's Patent. [1852] See 76S. The Grant. 769. In re Kay's Patent. [1839] The renewal grant of letters patent becomes invalid, if, after extension, the original patent is held to be bad, (1 Web. P. C. 571.) In re Galloway's Patent. [1843] See 710. 770. Eussell V, Ledsam. [1845] Original letters patent^ for a term of fourteen yeai-s, were The Grant. 317 dated on the 26th of February, 1825, and renewed letters patent were dated on the 26th of February, 1839 : — Held, that the day of the date must be reckoned inclusively, and that the former term expired on the 25th of February, 1839, and con- sequently the renewed letters patent were granted after the original letters patent had expired. Renewed letters patent, granted under 5 & 6 Will. 4, c. 83, s. 4, are not void if dated after the expiration of the term for which the original letters patent were granted, but may be granted by the Crown after the expiration of that term, provided the preliminary steps which the fourth section of the act requires to be taken by the patentee were complied with before that term ended. See 2 & 3 Yict. c. 67. (14 M, §■ W. 574 ; 14 L. J., JExch..353 ; affirmed in Exch. Ch., 16 M. 8f W. 633 ; and in House of Lords, 1 H. L. Cas. 687.) In re Woodceoft's Patent. [1846] See 71 S. 111. In re Smith's Patent. • [1847] An application for renewed letters patent, to combine the substance of two patents, held by the petitioner, refiised. (30 Lond, Jour. 451.) 773. In re Porter's Patent. [1853] Improvements eSected upon the invention, for which the original patent was granted, by the nephew of the applicant for extension, were amalgamated with the original patent for the extended term. {Coryton's Lmo of Letters Patent, p. 217.) 773. In re Heath's Patent. [1853] Term of letters patent extended for seven years, in preference to a shorter period, on the ground of there being lis pendens respecting the validity of the patent, which would probably delay the enjoyment of the term of extension. (8 Moo. P. C, C. 211 ; 2 Web. R. 247.) 774. In re Bodmer's Patent. [1853] Where letters patent comprised several subjects, one only of 318 EXTENSION OF LETTERS PATENT: which had been worked out, and this part of the patent was affected by subsequent patented improvements by the same patentee ; this portion of the patent only was extended, and the grant was restricted to the unexpired term of the subsequent patents. (8 Moo. P. C. C. 282.) 775. In re Honiball's Patent. [1855] The statute 5 & 6 Will. 4, c. 83, s. 2, applies to confirmation of letters patent for an extended term, as the grant of such ex- tended term is a grant of new letters patent, which are subject to the same conditions, and open to the same objections, and entitled to the same advantages as original lettei's patent. (9 Moo. P, a a 378 ; 2 Web. P. C. 201.) In re Lee's Patent. [1856] See 639. 776. J« ?-e Betts' Patent. [1861] The prolongation of a patent is, by 5 & 6 WiU. 4, c. 86, and 16 & 17 Vict. c. 115, the same as a new grant. (1 Moo. P. C. a, N. 5'. 49 ; 9 Jur., N. S. 137; U PF. R. 221 ;1L.T, Rep., N. S. 611.) 777. In re Bovill's Patent. [1863] Letters patent were granted in 1849 for a patent for £?z^?an(Z, and in the year 1853 for Ireland and Scotland. Upon an application for a prolongation of the three patents, it was ob- jected that the prior use of the English patent rendered the Scotch and Irish patents void. Such objection overruled, on the ground, that the statute 15 & 16 Vict. c. 83, s. 18, providing for a single patent for the United Kingdom, applied in the cu-cum- stances to this case, and was not affected by the 53rd section of that act. (1 Moo. P. C. C, N. S, 348.) 778. BoviLL V. Finch. [1870] Three separate original letters patent were granted to the inventor for England, Scotland and Ireland respectively. The Scotch patent was void for want of novelty, and afterwards a prolongation of the terms of the three original patents was Revocation of Grard. 319 granted by one and the same letters patent under the great seal of the United Kingdom, pursuant to 15 & 16 Vict. e. 83 : — Held, that the grant of prolongation was divisible, and operated as if there had been separate grants by separate instruments for the three countries, so that the prolongation of the English patent was not rendered void by the invalidity of the Scotch patent. (39 L. J., C. P. 277 ; L. R., 5 C, P. 523.) 779. In re Johnson's & Atkinson's Patents. [1873] Two cognate patents, having different terms to run, extended so that both should expire on the same day, {L. R., 5 P. C, 87.) Revocation of Grant. 780. In re Schlumbeeger's Patent. [1853] Patentees applied under the statute 5 & 6 Will. 4, c. 83, for an extension of the term of letters patent, and the Judicial Committee recommended a prolongation for six years, which recommendation was confirmed by the Crown by an order in coimcll, and a warrant issued for sealing the letters patent. No step was taken by the patentees to procure the sealing of the new letters patent, and, after a delay of nearly three years, a party interested in opposing the renewal petitioned the Crown to revoke the order in council and the warrant to seal. It did not appear that the petitioner, or the public, had suffered any loss by the laches of the patentees. The Judicial Committee, to whom the petition was referred, considered the laches not of sufficient magnitude to deprive the patentees of all benefit of the renewed patent ; but made it a condition, before dismissing the petition, that the patentees should pay the petitioner a gross sum for costs and give an undertaking not to prosecute for any infringement which might have occurred from the date of the order in council to the date of dismissal of the petition. (9 Moo. P. a a 1.) 320 EXTENSION OF LETTERS PATENT : Costs. 781. /k re Westeupp & Gibbin's Patent. [1836] Lord Lyndhurst : " My opinion on the subject of costs is this : if a party entitled to oppose does come and oppose, and opposes successfully, 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." (1 Web. P. C. 556). 78S. In re Macintosh's Patent. [1837] The Judicial Committee give costs of opposition when the petitioner abandons his application for extension. (1 fFeb, P. C. 739.) 783. In re Downton's Patent. [1839] Costs will be given to the petitioner where thei'e is no gi'ound for the opposition. (1 Web. P. C. 567.) 784. In re MuNTz's Patent. [1846] Where the petitioner had fairly and honestly stated his case, both the things against and the things for him, in his petition, and the inquiry had been prolonged by the opposition, the costs of the opposition refiised, although the petition had been dis- missed on the ground of sufficient remuneration. (2 ?Feb. P. a 122.) 785. In re Beidson's Patent. [1852] Costs given to all the opposers upon petitioners abandoning petition before hearing. When the petition is abandoned, it is not necessary that the opposers should serve the petitioners with notice of their intended application to the court for costs of opposition. (7 Moo. P. C. C. 499.) Costs. 321 786. In re Hoenby's Patent. [1853] On a petition for prolongation of letters patent, a day was fixed for hearing. Objections were lodged against an extension. Before the hearing the petitioners abandoned the prosecution of the petition. In such circumstances costs of opposition allowed to opposer. (7 Moo. P. C. C. 503,) In re SCHLUMBERGEU's PATENT, [1853] See "700. 787. In re Milner's Patent. [1854] The Judicial Committee wiU exercise a discretion as to the allowance of an opposer's costs upon an abandoned petition for extension of letters patent. A gross sum allowed for costs of opposers, instead of referring their costs to taxation. An affidavit of merits by the petitioner upon the question of costs, rejected, as no copy had been served upon the opposers. (9 Moo. P. C. C. 39.) 788. In re Jones' Patent. [1854] Where there were two opponents to an application for a pro- longation of a patent upon substantially the same grounds of objection, the Judicial Committee, upon a successful opposition, allowed a gross sum for bhe costs of both parties. Opponents' costs directed to be taxed at 100?., and divided between the opponents. (9 Moo. P. C. C. 41.) 789. In re Honiball's Patent. [1855] The Right Hon. Pemberton Leigh : " It is of great im- portance that parties should not be discouraged from bringing important facts to the knowledge of the court by fear of the costs which they may have to pay, even if their opposition be successM ; and upon this ground, in Westrupp §• Gibbins'' Patent, the parties opposing were allowed their costs. But we are not satisfied with the manner in which this opposition has been conducted. Much expense has been occasioned by relying upon patents for inventions which have really no resemblance H, Y 322 EXTENSION OF LETTERS PATENT. to this, and witnesses hare been produced to whose testimony, as we have aheady intimated, we cannot give the smallest credit." No costs allowed to the opponents. (9 Moo. P. C. C. 394.) 790. In re Hill's Patent. [1863] Upon the dismissal of a petition for prolongation, the Judicial Committee, to avoid the expense of a formal taxation, allowed the petitioner the option of paying a gross sum of 1,0007. to the opponents for the costs of their successful opposition ; such sum to be apportioned by the Registrar of the Privy Council among the several opponents, or in the alternative, dismissed the petition with costs generally. (1 Moo. P. C. C, N. S. 258.) 791. 7n re Wield's Patent. [1871] When two sets of opponents really represent the same kind of opposition, one set of costs, to be apportioned between them, will be allowed, unless the petitioner should prefer to tax the costs of all parties. (8 Moo. P. C. C, N. S. 300.) Sir J. "W". ColvUe : " Their lordships have considered the question of costs, and they are inclined to adhere to the rule that has been laid down, almost from the first application under the act giving them jurisdiction 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 bond fide oppositions, in order that the court may be put into possession of all that can be alleged against the continuance of the patent." {Ih. 304.) 79S. Jw re Johnson's Patent. [1871] Where there were several opponents ; on dismissing the petition a lump sum was awarded the opponents, to be divided fro rata for costs. (8 Moo. P. C. C, N. S. 282.) ( 323 ) CONFIRMATION OP LETTERS PATENT. Grounds of and Objections to, 793. In re Westeupp & Gibbins' Patent. [1836] An especial and strong case must be made out to justify the interposition of the Judicial Committee, and if the petitioner has a remedy by disclaimer or memorandum of alteration, the confirmation wiU not be granted. Lord Lyndhurst said: " The act could never be intended to apply to a case where two patents have been taken out for the same thing, that the subsequent patentee should have a right to come to the court, to apply to have the exclusive benefit of the invention, adversely to the rights and interests of the former patentee. It must have been meant to apply to a very different case. You are aware it is discretionary with us, particularly when you have another remedy; you may apply to the Attorney- General for a disclaimer." (1 Web. P, C. 555.) 794. In re Heueteloup's Patent. [1836] Where it appeared, on a petition for confirmation, that part of the patentee's invention formed the subject of an expired French patent, but that it had never been used or known in England, otherwise than by a description in a book published in France, a copy of which was in the British Museum, notice of the day of hearing was directed to be given to the French patentee, and, on an affidavit that such notice had been sent through the Post Office, directed to Paris, confirmation was recommended. (1 Web. P. C, 553.) 795. In re Eobinson's Patent, Ex parte Pow. [1845] Application for the confirmation of a Scotch patent, for an invention used in England prior to their date, refiised, on the y2 324 CONFIEMATION OF LETTERS PATENT: ground that " the act of parliament was meant to meet a totally- different case." (5 Moo. P. C. C. 65.) 796. In re Stead's Patent. [1846] The petition for confirmation must admit the invalidity of the patent as the ground of the jmisdiction of the Judicial Committee. A person who desired to have his patent confirmed ought not, before his petition is heard, to bring an action for infringe- ment, as the two proceedings are contradictory ; the one admits the invalidity of the patent, the other seeks relief because a valid patent is infringed. (2 fFeb. P. C. 147.) Dr. Lushington, in delivering judgment, said : " The second section of the statute referred to (5 & 6 "Will. 4, c. 83), confers upon the Judicial Committee the discretionary power of advising her Majesty to confirm letters patent in cases where they are satisfied, in the manner required by the enactments of that section, that the patentee believed himself to be the first and original inventor, and that such invention or part thereof had not been publicly and generally used before the date of the letters patent. The intention of the statute was, that the patentee might, if circumstances rendered it fitting, in the judgment of the Judicial Committee, be protected against any prior invention not publicly and generally used, where he had no reason to believe that such prior invention existed. We apprehend that this section must necessarily be construed to confer the power of giving to the patentee that which he did not possess before the passing of the statute, or, in other words, of curing that which before the statute would have constituted an invalidity. If the patent were valid by the law as it existed before the passing of the statute it could hardly be necessary to confirm it. The case to be remedied was not that of a patentee discovering a prior invention wholly unused and wholly un- known up to the date of the letters patent, but it was appli- cable to the case of a patentee discovering a prior invention so known that the patent might be invalidated on that ground, though not publicly and generally used, The statute was Grounds of and Objections to, 325 framed to protect against circumstances which constituted an invalidity, though the patentee had, so far as his knowledge went, every reason to believe himself to be the original in- ventor." (iJ, 146.) TDT In re Card's Patent. [1848] Upon an application for a confirmation of letters patent, it was proved, that the patent article was not publicly and gene- rally known prior to the letters patent ; but that some persons had systematically used an article, identical with the patent article, for several years prior to the grant of the letters patent, and that the subject of the patent was little more than an appli- cation of a weU-known article in trade : — Held, that it was not a case to which the statute was intended to apply. Confirmation refused. The patentee must show, that he believed himself the first and original inventor. (6 Moo. P. C. C. 207; 2 Web. P. C. 161; 12 Jur. 507.) Lord Campbell, in delivering judgment, said : " The dis- cretionary power that is entrusted by the legislature to the Judicial Committee, which we are now asked to exercise, is a very extraordinary power, and ought to be very cautiously exercised. By the law, as it stood prior to the statute 5 & 6 Win. 4, c. 83, it was necessary, for the validity of a patent, that the invention should be new, as well as that it should be useful ; and if it could be proved, that the invention had been practised pubholy by any person before the letters patent were granted, the patent was invalid. That law led to hardship in many cases, because it often happened that after experiments had been tried, and a certain progress made in the iavention, and the experiments proving abortive, they were subsequently abandoned, some other ingenious man, de novo, took up the invention, and completed the process, by which a great benefit was conferred upon the community, whereupon he obtained a patent for his invention ; but as soon as he began to reap the fruit of his invention, his patent was infringed, and when he brought an action for such infringement, the former abortive experiments were brought up as proof that the invention was 326 CONFIRMATION OF LETTERS PATENT: not new. Some doubt existed, in Westminster Hall, whether, if the experiment, although it had been, to a certain degree, successful, had been abandoned, it would vitiate the after- acquired patent ; but to remove all doubt upon the subject this enactment was resorted to by the legislature, that, although there may have been a general knowledge of the invention, if it was not actually carried out, and had been abandoned, that such knowledge should not vitiate the patent which perfected and rendered beneficial the original discovery." (6 Moo. P. C. C. 212.) "In a case where it appears that an invention has been carried on to a certain degree, and abandoned, the act of parliament may, most beneficially, be acted upon. But their lordships are of opinion, that a case of this sort, where the invention was used before the patent was considered beneficial by those who carried it out, and was proved to be beneficial by the persons so using it, never having been abandoned, but used by them down to the time at which this application is made, is a case to which the act of parliament never was intended to apply, and that, therefore, this application ought to be refused." (lb. 215.) 798. In re Lamenaude's Patent. [1850] A patent wiU not be confirmed where the invention has been used in public a few days before the date of the letters patent. The statute 5 & 6 Will. 4, c. 83, s. 2, applies only to a case of invention abandoned, and not in use at the time of the patent, and which has not been publicly and generally used. The fact of the person, who has publicly used the invention immediately prior to the date of the patent, consenting to the confirmation of the patent, will not induce the Judicial Committee to exercise their discretionary jurisdiction. (2 Web. P. C. 164.) Lord Campbell, in the course of the argument, said: "For years before I left the bar, in almost every patent case there was the plea of no novelty, and then that was supported by going back for many years in order to find some forgotten ex- periments that had been made. The object of this act was to prevent that being done." (lb. 167.) Grounds of and Objections to, 327 Lord Brougliam : " It is quite clear that the invention having been used up to the time of the confirmation, did not come within the statute of James, ' which others at the time of issuing out the letters patent did not use.' It was never meant by this section to repeal the statute of James. I go upon the words of the statute without imposing into the case the least personal recollection of the object of the statute, which I have no right to do. I go upon the obvious meaning of the statute. The words are very general, but we must put a reasonable construc- tion upon them." {lb. 164.) "799. In re Honiball's Patent. [1855] In 1852, the assignee of a patentee obtained an extension of letters patent originally granted in 1838. In 1854, it was determined at a trial at law, in an action for infringement, that the letters patent were invalid by reason of the prior use and sale of the patent article. Upon an application by the assignee of the patentee to the Judicial Committee for a confirmation, under the 2nd sect, of the statute 5 & 6 WiU. 4, c. 83, of the new letters patent, it was proved that the patentee was not the first inventor, and that the principle had been discovered ten years before the date of the original patent, but that the invention, though publicly known, had not been generally used at the date of the grant of the original letters patent, and that the patentee had notice not only of the original invention, but of the use of such invention. In such circumstances the Judicial Committee reftised to recommend the Crown to confirm the letters patent. Two conditions are required from a petitioner applying for a confirmation, to establish to the satisfaction of the Judicial Committee: first, that before the date of the letters patent (the subject of the application), the invention was not publicly and generally used ; and second, that the grantee of such letters patent believed himself the first and original inventor. (9 Moo. P. a C. 378 ; 2 Web. P. C. 201.) The Eight Hon. Pemberton Leigh, in delivering judgment, said : " It is not. very easy to define what is the exact meaning 328 CONFIRMATION OF LETTEES PATENT : of the expression ' publicly and generally used,' containedin the section. No patent is likely to be taken out for a process or machine already in public and general use in the ordinary sense of those words ; but certainly we cannot consider the use of the invention on board a single ship, however public, or for what- ever length of time, as a general user; and though negative evidence in its nature can hardly be very conclusive, and that produced by the petitioner applies only to a particular firm, we should be inclined to hold, if it were necessary to decide the point, that we were satisfied that the invention had not been generally, though it has been publicly, used at the date of the original letters patent." (9 Moo. P. C. C. 389.) " It appears to us to be clear, on the context of this clause, that the expres- sion ' first and original inventor ' was intended to mean a person who could claim the merit of the first invention, without refer- ence to the user. But however that may be, we think that, according to the doctrine laid down by Lord Lyndhurst in Westrupp 8f Gibbins' Patent, a party cannot be permitted to shelter himself under wilfiil ignorance, but must be iixed with knowledge not only of what he did know, but of that which he would have known if he had made the inquiries which it was incumbent upon him to make." {lb. 390.) Effect of, 800. Stead v. Cakey. [1845] By an "act of parliament, reciting that letters patent had been granted to A. ; that the specification was enrolled within six months, instead of being enrolled within foiu* months after the date thereof as required by the letters patent ; that the letters patent contained a proviso for making them void, if they should become vested in, or in trust for more than twelve persons ; and that certain persons had agreed to form themselves into a company for working the patent; powers were given for the formation of a company, and enabling the patentee to assign the patent to them, or to licence them to work it. A subsequent Effect of, 329 section, reciting the non-enrolment of a specification within due time, and that such non-enrohnent had arisen fi:oni inadvert- ence and misinformation, and that it was expedient that the patent should be rendered valid to the extent hereinafter mentioned, enacted, that the letters patent should, during the remainder of the term, be considered, deemed, and taken to be as valid and effectual to all intents and purposes as if the specification so enrolled by A., within six months after the date thereof, had been enrolled within four months : — Held, that the confirmation of the patent was unconditional, and was not dependent on the formation of a company. (1 C. B. 496; 9 Jkr. 511 ; 14 L. J., C. P. 177.) 801. In re Card's Patent. [1848] The confirmation of letters patent is absolute and conclusive evidence that the invention is new. (6 Moo. P. C. C. 207 ; 2 Web. P. C. 161.) 80S. In re Lamenaude's Patent. [1850] Lord Brougham : " The confirmation granted under the second section is, in fact, the grant of a new patent curing all defects arising fi-om prior use ; the other party cannot bring a scire facias after it." (2 Web. P. C. 165.) 803. In re Honiball's Patent. [1855] The authority conferred upon the Crown, by sect. 2 of the 5 & 6 Will. 4, c. 83, to confirm letters patent, is dis- cretionary in the Judicial Committee, to recommend or not a confirmation. (9 Moo. P. C. C. 378 ; 2 Web. P. C. 201.) The Right Hon. Pemberton Leigh, in delivering judg- ment, said : " The power given to the Crown is to provide an extraordinary remedy for extraordinary cases ; to supersede the ordinary rules of law at the expense of the public, in favour of an individual, to give force and validity by a quasi legislative authority to a grant of monopoly actually void, and to exclude from the use of the invention not only the other subjects of her 330 CONFIRMATION OF LETTERS PATENT: Majesty in England, but even the first and original inventor who had actuaUj brought it into public though not into general use, before the first patent was taken out. That this is the effect of a confirmation is perfectly clear, though it appears from Lord Lyndhurst's observations in the case of Westrupp §• Gihbins, that such was not the intention of the framer of the act, nor its effect as it was originally introduced into, and as it left, the House of Lords Every judge who has had to consider the effect of this provision has felt, and we entirely share that feeling, that the jurisdiction is one which is to be most cautiously and sparingly exercised." (9 Moo, P. C. C. 391.) The Petition. 804. In re Lamenaude's Patent. [1850] The name of the first inventor should be mentioned in the petition, if known, and, if the name is not known, it should be so stated ; but if the inventor is known, notice should be given to him, (2 Web. P. C. 166.) In re Stead's Patent. [1846] See 796. Affidavits. 805. In re Stead's Patent. [1846] Two petitions were presented, the second being supple- mentary to, and stating what had taken place subsequent to the presentation of, the first. The affidavits made by the peti- tioner in support of the first petition, gave a general history of his invention, of the communication from abroad on which it was founded, and of his attempts to introduce it into this country ; and those in support of the second petition stated tlie proceedings at law which had taken place since presentation of the first petition, the publications adduced at the trial as impeaching the novelty of the invention, and the title of the Costs. 331 petitioner. Tlie counsel for the opponents objected to the affi- davits being received as proof of the matters contained in them, the intention being that such affidavits should be received in ad- dition to other evidence, because the applicant having made a good case might be the only person who knew the real case : — Held, that the affidavits were required to show that the peti- tioner believed certain facts to be true ; and that the opponents could prove their own case by other evidence. (2 Web. P. C. 143.) Costs. 806. In re "Westrupp & Gibbins' Patent. [1836] Lord Lyndhurst : " If a party entitled to oppose does come and oppose, and opposes successfully, 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." (1 Web. P. C. 556.) 807. In re Honieall's Patent. [1855] Opposition to an application for extension or confirmation of letters patent is rather encouraged by this court than other- wise, and upon a successful opposition the opposer's costs will, in general, be allowed. (9 Moo. P. C. C. 378; 2 Web. R. 201.) ( 332 ) SALE AND ASSIGNMENT OP LETTERS PATENT. 808. Caetweight v. Amatt. [1799] A. by indenture (reciting that a suit was depending between him and B. respecting certain patents, and that the same could not be assigned without hazard of defeating the suit) granted absolutely the said patents, together with some others, to C, excepting, however, until the determination of the above-men- tioned suit, such patents as should be necessary to support A.'s legal title. Then followed a covenant that A., upon the deter- mination of the suit, should assign the excepted patents to C, and that until such assignment A. should stand legally pos- sessed of the same : — Held, that the legal interest in the excepted patents vested in C. upon the determination of the suit, without assignment. (2 B. §• P. 43 ; Dav. P. C. 240.) 809. Hesse v. Stevenson. [1803] An act of parliament, empowering a bankrupt patentee, his executors, administrators and assigns, to assign the right imder letters patent to a greater number of persons than allowed by the letters patent, and declared to be a public act, does not enable either the bankrupt or his assigns to make a better title than they could before the act. When a patentee becomes bankrupt, his patent right vests in the assignees. (3 B. §• P. 565 ; Dav. P. C. 244.) Lord Alvanley, C. J., in delivering judgment, said : " Next it is contended, that the nature of the property in this patent was such that it did not pass under the assignment; and several cases were cited in support of this proposition. It is said, that although by the assignment every right and interest, and every right of action, as well as right of possession and possibility of interest, is taken out of the bankrupt and vested in the assignees, yet that the fruits of a man's own invention Sale and Assignment of Letters Patent. 333 do not pass. It is true, that the schemes which a man may have in his own head before he obtains his certificate, or the fruits which he may make of such schemes do not pass, nor could the assignees require him to assign them over, provided he does not carry his schemes into effect until after he has obtained his certificate. But if he avail himself of his know- ledge and sMll, and thereby acquire a beneficial interest, which may be the subject of assignment, I cannot fi^ame to myself an argument why that interest should not pass in the same manner as any other property acquired by his personal industry." (3 B. §■ P. 511.) 810. ^a;;3a?-fe Granger. [1812] A patentee, having mortgaged his right under his patent, continued in the notorious use of the invention until his bank- ruptcy. The Lord Chancellor was inclined to think the right passed to the assignees under the statute, but directed a case for the Court of King's Bench, which was never argued, {Godson on Patents, 2nd ed. p. 225.) 811. Bloxam v. Elsee. [1827] Where an act of parliament secured to certain persons, for a fiirther term, the benefit arising from a patent for making a machine, with a proviso, that it should become void, if they should transfer or assign their interest therein to any persons exceeding the number of five ; and two of the patentees became bankrupt: — Held, that the assignment of their interests to their assignees for the benefit of creditors, though the number ex- ceeded twenty, was not within the proviso. (9 D. ^ R.'216; 6 B. 8^ C. 169 ; see 15 Sf 16 Vict. c. 83, s. 36.) 813. DuvERGiER V. Fellovsts. H. L. [1830] Where a bond was given for payment of 10,000/., with a condition that the money should be paid on the obligee's pro- curing subscriptions for 9,000 shares in a company to be formed of many persons, for the purpose of becoming assignees of a patent, and carrying on the patent process; and the patent 334 SALE & ASSIGNMENT OF LETTEES PATENT. contained a proviso, that it should be void if assigned to more than five persons : — Held, that the obligee must be presumed to know of that proviso, and that as the bond was subject to a condition for the performance of an illegal act, it was void. (10 C. B. 826 ; affirmed in H. L., I C. S^ F. 39.) It was also held in the House of Lords that the plaintiff was equally incapable of recovering on the bond, whether he knew or did not Imow the terms of the letters patent. (1 C.SfF. 39.) 813. LovELL V. Hicks. [1836] Agreement for the purchase of part of the profits of a patent, which turned out to be a mere bubble, set aside as having been obtained by fraud and misrepresentation, and so much of the purchase-money as had been paid under the agreement ordered to be repaid. (2 Y. §• C. 46.) 814. M' Alpine v. Mangnall. Ex. Ch. [1846] A voluntary assignment by a patentee of letters patent, to trustees for the benefit of creditors, more than twelve in number, is not such an assignment as will avoid the patent. (3 C. B. 496 ; 15 L. J., C. P. 298.) 81 5. Payne v. Banner. Ch. [1846] A patentee agreed to give one-fourth share of a patent to B., in consideration of 50/. then paid, and of 150/. to be paid in several sums at various times ; and of a sum of 300Z. to be paid by a particular day, to be applied in taking out foreign patents. The 300/. was not paid, and the foreign patents Tvere, conse- quently, not obtained : — Held, that time was the essence of the contract, and that the patentee was entitled to rescind it, notwith- standing he had accepted payment of the other sums at other times than those which were fixed by the agreement. (15 Z. J,, Ch. 227.) Hill v. Mount. [1856] See SOS. 816. Hall v. Condek. Ex. Ch. [1857] By an agreement between the plaintiff and defendants, after reciting that the plaintiff had invented a method for preventing Sale and Assignment of Letters Patent. 335 boiler explosions, and that he had obtained a patent for the use of the same, and that he was desirous of disposing of half his interest in such patent, to which he declared he had full right and title, and that he had applied to the defendants to purchase such half of his interest in such patent, the plaintiff, for certain considerations, agreed to make over, and did accord- ingly make over, to the defendants the above-mentioned half of the said patent: — Held, that by this agreement the plaintiff did not profess to sell, nor did the defendants profess to buy, a good and indefeasible patent right, but only the moiety of the patent, such as it was; and that, as there was no express or implied warranty of title or quality, it was no answer to an action for the price of the said moiety of the patent, to plead that the invention was wholly worthless, and of no public utility, and not new, and that the plaintiff was not the first and true inventor. (2 C. B., N. 8.22; 3 Jur., N. S. 366 ; 26 L. J., C. P. 138 ; affirmed on appeal, 2 C, B., N. -S", 53 ; 3 Jur., N. S. 963 ; 26 L. J., C, P. 288.) 817. Smith v. Nbale. [1857] The defendant made the following written proposal to the plaintiff, who accepted it verbally: — "First, that the patent should be conveyed to myself and any friend of yours, in trust for ' The Ladies' GuUd,' subject to the following conditions." The conditions related to the remuneration of the plaintiff, and the payment of the stamp duty on the patent. WiUes, J., in delivering judgment, said : " Such a contract involves no warranty that the invention was new, or was a manufacture within the statute of James, but merely that her Majesty had granted to the plaintiff the letters patent which she proposed to assign. In short, the defendant in this case, as in Hall v. Conder, contracted for the use of the plaintiff's right such as it was, without regard to whether it could be sustained upon litigation or not; and there is nothing unreasonable or uncommon in such a bargain." (2 C B., N. S. 67; 3 Jur., N. S. 516; 26 L. J., C. P. 143.) DuNNiCLiFF V. Mallett. [1859] See 984. 336 SALE & ASSIGNMENT OF LETTERS PATENT. 818. Walton w, Lavatek. [1860] The sale of a moiety of a patent right conveys an interest pro tanto in the patent. (8 C. B., N. S. 162 ; 6 Jur., N. S. 1251 ; 29 L. J., C. P. 275 ; Z L. T. Rep., N. S. 272.) 819. Kernot v. Potter. Ch. [1861] P. agreed to purchase from K. a patent for purifying paraffine, and to work it during fourteen years, " in case it could be so long worked at a profit," and to pay a royalty of one-third of the dilFerence between the marked price of crude paraffine and the price it sold at. It turned out, that although it could be worked at a profit, yet deducting the royalty reserved there would be a loss : — Held, that the agreement was at an end, (30 Beav. 343.) 820. Ellwood v. Christy. [1864] The executors of a patentee having obtained probate of their testator's will, assigned his patent to another person, but the probate was not registered till after the assignment: — Held, that the assignment was valid. (10 Jnr., N. S. 1079; 13 TF. R. 54 ; 11 L. T. Rep., N. dispute the validity of the patent. (13 L. T. Rep., N. S. 142.) 865. GoucHER V. Clayton. Ch. [1865] Judgment was given by Consent before declaration filed in an action by a patentee against the members of a partnership Estoppel. 355 firm for an infi-ingementj and the defendants immediately took a licence to use the invention. A suit to restrain a subsequent alleged infringement having been brought by the patentee against the defendants at law and two jfresh partners : — Held, that the defendants in equity were not estopped by the judg- ment at law from disputing the validity of the patent. (11 Jur., N. S. 107; 34 L. J., Ch. 239; 13 W. R. 336; 11 L. T. Rep., N. S. 732.; 866. AxMANN V. Lund. Ch. [1874] The plaintiff and defendant had worked in partnership an alleged patent, the property of the defendant : — Held, that the plaintiff by so doing had not debarred himself from disputing the patent after the termination of the partnership. (22 JV. R. 789.) A a2 ( 356 ) JOINT OWNERS OP PATENTS. Bloxam v. Elsee. [1827] See 811. DuvERGiER «. Fellows. H. L. [1830] See 812. 867. EiDGWAY V. Philip. [1834] A., the patentee of an engine, and B. were partners under the firm of A. & Co.' C. purchased the licence of erecting such engines in Cornwall. D. contracted with A. & Co. to erect an engine in Cambridgeshire. A. informed D. that B. and C. were his partners, and C, on being applied to, said it was correct. During the making of the engine, C. firequently came to inquire how the work went on. D. sued B. & Co. for a breach of the contract, when C. proved his limited interest in the patent. The jury having found that C. was not a partner, the court refused a new trial. (1 C. M. §- R. 415 ; 5 Tyr. 131.) 868. LovELL V. Hicks. [1837] Joint owners of a patent, for a particular process used in carrying on a trade, are answerable in solido for the losses occasioned in relation to the patent by the frauds of their co- adventurers. (2 F. §• C. 481.) Prothehoe v. May. [1839] See 830. 869. Elgie v. Webster. [1839] By an agreement in writing, W. agreed with E. to advance him a sum of money for the purpose of manufacturing and per- fecting certain inventions ; and it was agreed that if the inven- tions should become of public or private use, W. should be entitled to one third of the profits of the invention. The agree- ment contained an express promise on the part of E. to repay Joint Owners of Patents. 357 tlie sum of money advanced by W. : — Held, in an action brought by W. to recover the money thus advanced, that this agreement did not constitute a partnership between the parties with respect to that sum. (5 M. §• W. 518.) M' Alpine v. Magnall. Ex. Ch. [1846] See 814. 870. Bewley v. Hancock. Ch. [1856] An agreement was entered into between four persons who were interested in patents and inventions relating to gutta percha, that all patents taken out, or in the course of being taken, or intended to be taken out, or that might at any time thereafter be taken out by any or either of them, or on account of and for the benefit of any or either of them in relation to the preparation and application of gutta percha, or the manufacture of any article therefi-om, should be assigned to trustees, and held for their common benefit. Subsequently one of the parties took out a patent for " improvements in apparatus and machinery for giving shape and configuration to plastic sub- stances," and refiised to assign the patent to the trustees, alleg- ing that it was not comprised in the agreement : — Held, that the patent, so far as it related to gutta percha, was subject to the trusts of the agreement, and that it could not be treated as not being so, because it was for machinery which might be applied to the manufacture of articles of gutta percha, and was not for the manufacture of any such articles. (6 De G., il/. §• 999. Neilson v. Harford. [1841] If the objections are not sufficiently specific, the plaintiff's course is to apply to a judge at chambers for an order for the delivery of a more specific notice ; but if he omits to do so, he cannot object to the generality of the notice at the trial : the only question then is, whether the notice is sufiiciently large to include the objections relied on by the defendant. (8 M. §• W. 806; 1 Web. P. C. 331.) Parke, B., delivering the judgment of the court, said : " The act (5 & 6 Will. 4, c, 83, s. 5) must be construed to mean that a mere copy of the pleas will not be a sufficient compliance with its provisions. It was passed after the new rules had required the several defences to be pleaded, and must, there- fore, be considered as having intended to give to a plaintiff some additional advantage beyond the information which the record would give him. But that did not mean to say, nor do we think the Common Pleas meant to decide, that it would not be sufficient in some cases to give notice in the terms of the plea itself; the objection may be so completely and so fuHy expanded on the record, that a mere transcript of the plea itself may be sufficient; in other cases the plea may be so general in its language as to be insufficient as a notice, if transcribed from the plea merely. Each case must depend on its peculiar circumstances." (1 Web. P. C. 370.) 1000. Walton v. Bateman. N. P. [1842] The notice of objections should be drawn with reference to the pleas, or notice given of the pleas to which the objections are to be applied. (1 Web. P. C. 616.) 1001. Macnamara v. Hulse. K. P. [1842] Lord Abinger, C. B. : " Whatever objections the defendants may have given you notice of, they cannot go beyond their pleas. I apprehend that the statute (5 & 6 Will. 4, c. 83) does not make the notice of objections stand in the place of pleas." (2 Web. P. C. 128 (w.» - 412 ACTION -FOE INFRINGEMENT: lOOS. Jones v. Bekgee. [1843] The notice of objections must point out the defence with greater peculiarity than the record. The court wiU see that the objection is stated with reasonable particularity, according to the circumstances of the case. ( 1 Web. P. C. 544 ; 5M.Sf G, 208.) 1003. R. V. Mill. Sci. fac. [1850] The notice of objections is not part and parcel of the record, so as to be incorporated with the issues raised, and show that those specific objections are in issue. (1 L. M. §• P. 695 ; 10 C. B. 379.) 1004. Betts «. Walker. [1850] In an action for infringing a patent, if the defendant's notice of objections under stat. 5 & 6 Will. 4, c. 83, s. 5, is too general to give such information as the plaintiff is entitled to, it is no answer to a motion for better notice that the notice is as specific as the pleas. (14 Q. B. 363.) 1005. Hull v. Bolland. [1856] In an action for the infiringement of a patent, if the parti- culars of objections, delivered with the pleas in pursuance with the 15 & 16 Vict. c. 83, s. 41, are too general, the party who means to object to them must procure an order for better par- ticulars. (1 H. §• N. 134 ; 25 L. J., Exch. 304.) 1006. Chollex v. Hoffman. [1857] The requirements of the statute 15 & 16 Vict. c. 83, as to the notices by the defendant, are confined to notices affecting the validity of the patent ; and the defendant may, therefore, object to the want of registration of an assignment of the patent to the plaintiff, although it is not specially mentioned in his notices of objections. (7 Ell. §• Bl. 686 ; 26 L. J., Q. B. 249.) Notice of Objections, 413 As to first and true Inventor. 1007. FiSHEK V. Dewick. [1838] On the deliveiy of amended particulars pursuant to an order of the court, a summons for further amended particulars was taken out and heard before the Lord Chief Justice Tindal at chambers. His Lordship, after time taken to consider, made the following alteration : The words " that the plaintiff was not in possession of the said alleged improvements before or at] the date of the letters patent," were struck out of he objection, that the plaintiff was not the true and first inventor of the whole or of any part of the said improvements. (1 Web. P. C.55l(n.).) 1008. Russell v. Ledsam. [1843] To an action for the infringement of a patent, the defendant pleaded : That the patentee was not the true and first inventor : — Held, that the notice of objections delivered under 5 & 6 "Will. 4, c. 83, s. 5, need not state who the first inventor was, or under what circumstances the invention had been previously used. (U M. Sj- ^. 647 ; 12 i. J., Exch. 439.) Parke, B., in delivering the judgment of the court, said^ " The principal point discussed was, whether or no it was necessary in an objection on the ground that the patentee was not the first inventor, or that the invention was not new, that the defendant should state who was the first inventor, or when, and in what place and under what circumstances it was used "before. This point is not new, for it has been already before this court and also before the Court of Common Pleas, in the case of Bulnois v. Mackenzie. In that case the Court of Com- mon Pleas would not require those particulars to be given, and their example has been followed by this court in the case of Heath v. Unwin. In the subsequent case, however, of Jones v. Berger, the Court of Common Pleas deviated from their former decision in Bulnois v. Mackenzie, and compelled the defendant to give the name of the first inventor. On consideration of the matter, however, we think that we ought to abide by the cases of Heath v. Unwin and Bulnois v. Mackenzie, and that no par- 414 ACTION FOR INFRINGEMENT: ticulars of the circumstances under which this invention may have been previously used should be required from the defend- ant ; and we are fortified in this view by the decision of the Court of Queen's Bench in the case of Reg. v. Walton, in which they adopted the same view. That was originally an application to the Master of the Rolls, which afterwards came before the Court of Queen's Bench, which we find, on inquiry, to have determined this point the same way." (1 1 il£, §• ^. 651.) As to prior User. 1009. BuLNOis V. Mackenzie. [1837] It is doubtM whether under the words (5th section of 5 & 6 Will. 4, <;. 83) "notice of objection" the court can require a defendant to furnish the names of those who are alleged to have used the plaintifFs invention. Application refused on the ground that it might prejudice the defendant. (4 Bing. N. a 132.) 1010. Fishery. Dewick. [1838] An objection stated that "a particular improvement had been used by A. B., Sec. (giving names and addresses), and divers other people within this kingdom and elsewhere ;" the judge at chambers struck out the words "and divers other people," adding that " if the defendant discover other person? not named in the objections, he has the power of applying to a judge to add such persons." (1 Web. P. C. 551 («.).) 1011. Galloway D. Bleaden. [1839] Coltman, J., ordered names, addresses, and descriptions to be given, and the words " divers other persons " to be struck out, (1 Web. P. C. 268 (w,).) 1012. Caepentek v. Walker. The objection stated the making of locks similar to the subject of the patent by the defendant and others, several years Notice of Objections. 415 before the date of the letters patent, and their sale to divers persons, and among others to one S. T., of &c. On summons to strike out the words " to divers persons, and among others," or to state the names and descriptions of the others besides S. T., to whom sales were made, the parties were referred to the, court, who refused the application. (1 Web. P. C. 268 (n.).) 1013. Eeg. v. Walton. Sci.fac [1842] On sci. fac. to repeal a patent, the prosecutor having, while the record was in Chancery, filed notice of objections, under 5 & 6 Will. 4, c. 83, s. 5, namely, that other persons than the patentee had used the invention in England before grant of the patent ; the Court of Queen's Bench, on motion supported by an affidavit stating that the defendant had no other means of gaining the information required, and was afiraid of being, taken by surprise at the trial, refiised to order delivery of a particular stating the names and addresses of such persons. (2 Q. B. 969.) 1014. Heath v. Unwin. [1842] It is not sufficient notice of an objection to say that the invention was whoUy or in part used before, but it ought to point out what portions were previously in use. (10 M. §• W. 684; 1 Web. P. C. 551; 2 D. N. S. 482; 6 Jur. 1068; 12' L. J., Ex. 46.) 1015. EussELL u. Ledsam. [1843] To an action for the infi-ingement of a patent, the defendant pleaded : That the invention was not, when the letters patent were granted, a new invention : — Held, that the notice of ob- jections delivered under 5 & 6 Will. 4, c. 83, s. 5, should specify whether the defendant objects to the patent generally as not new, or to part only, and, if so, to what part. (11 il/. §• W. 647; 1 i>. §• i. 347; 1 Jur. 585; 12 i. J., Exch. 439.) 416 ACTION FOR INFRINGEMENT: 1016. Jones u, Beegee. [1843] The words " and elsewhere " should be omitted, the places to be specified should fresh evidence arise. The notice of objections is sufficient if it limits the inquiry to a particular species and class of persons, who are using it in a particular trade. (1 Web. P. a 549.) Maule, J., said: "It seems to me to be a reasonable par- ticularization if it (the notice of objection) points out to the party who is to sustain the patent sufficiently the nature of the inquiry that the objector intends to rely on as to the patent. It seems to me not unreasonable to say ' at Nottingham and elsewhere ; ' for the nature of the fabric being specified, and the particular kind of starch also specified, it might well be, as my brother Bompas has argued forcibly, that there might be fabrics of that kind in the market, which could be. shown to have been made of that kind of starch, though you may not be able to trace where they came from. I don't think it worth while to differ from my Lord Chief Justice in that respect." (1 Web. P. C. 550.) The defendant should specify books or publications intended to be relied on. (1 Web. P. C. 548.) 1017. Bentlet «. Keighley. [1844] In case for infringing of a patent for improvements in machinery, the notice of objections delivered pursuant to 5 & 6 Will. 4, c. 83, s. 5, stated that the invention was known to and used by A. and B., and others, before the grant. The court refused to require the defendant to strike out the words "and others," Maule, J., in the course of the argument, said : " The plaintiff may know one person, and he may know that there are others who have used the article. Suppose the patent to be for an improvement in shipping, and the defence rehed on were, that it had been used before, the defendant would not be bound, in his particular, to state the names of all the owners of all the ships in which he had seen the alleged im- provement applied. But, if he states that the invention had been published to the world in a certain magazine or journal. Notice of Objections. 417 and also in other books and writings, he ought to specify all the books and writings." (7 M. §• G. 652 ; 8 Scott, N. R. 372 ; 1 Z>. §■ L. 944 ; 13 L. J., C. P. 167.) 1018. Holland r. Fox. [1853] Where the defendant in an action for infringement of a patent states in the particulars of objection delivered with his pleas that the invention of the plaintiflf had been used before, inter alia, at Sheffield, Birmingham and London, the court made an order, under the 15 & 16 Vict. c. 83, for further and better particulars. (1 C. L. Rep. 440 ; I W. R. 448.) 1019. Palmer v. Cooper. [1853] The 41st section of the 15 & 16 Vict. c. 83, requires the defendant in an action for the infringement of a patent, to deliver with his pleas the particulars of any objections on which he means to rely at the trial; and when he intends to rely upon a prior user or publication, the particulars must state the place or places at which, and in what manner, the invention has been used or published prior to the date of the patent ; and in the absence of such statement, the defendant will be precluded from giving evidence of such prior user or publication. The plaintiff's particulars of breaches cannot be called in aid of the defective particulars of objections. Although a judge at chambers has power to order the amendment of the particulars, he cannot introduce into such order any terms relative to the admissibility of evidence at the trial under such particulars which are inconsistent with the provisions of the 41st section. (9 Exch. 231; 2 C. L. R. 430; 23 L. J., Exch. 82.) Parke, B. : " The defendant's particulars ought to give the plaintiff such information as will enable him to make the neces- sary inquiries at the places named." (9 Exch. 236.) Alderson, B. : "I think that the present residence of the parties who have been the users of the invention ought to be stated, as otherwise the plaintiff would not Imow where to go for his evidence." (iJ.) H. E E 418 ACTION FOR INFEINGEMENT: 1030. Palmee v. Wagstapfe. [1853] Where, in an action for the infringement of a patent, the defendant relies on a general user of the supposed invention, it is sufficient to state, in his particulars of objection, under 15 & 16 Vict. 0. 83, s. 41, that the invention was used by manufacturers generally at a particular place, without naming any person or specifying any manufactory. (8 Exch, 840; 17 Jur. 581 ; 22 L. J., Exch. 296.) Alderson, B. : "A defendant may rely either on a specified 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 wiU 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." (8 Exch, 842.) lOSl. Hull v. Bolland. [1856] The 15 & 16 Vict. c. 83, s. 41, does not prevent defective particulars from being available at the trial, and the plaintiff cannot resist the admission of evidence which is within the literal meaning of the particulars, on the ground that the statement is too general, and that the particulars do not give the required information as to the place in which the invention is alleged to have been used. {I H. ^ N. 134 ; 25 L. J., Exch. 304.) Pollock, C. B. : " It is true that the statute contains a pro- viso that the place 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 fi-om being available, if not objected to on that groimd before the trial." (1 H. §■ N. 137.) Notice of Objections, 419 As to Specification. loss. FiSHEE V. Deswick. [1838] On the objection, " that the invention for which the said letters patent were granted is more extensive than, and did not correspond with, the invention described in the specification," his Lordship remarked, " I think the attention of the plaintiff should be called to the particular part or parts." His Lordship made the same remark on an objection of discrepancy between the drawings and specification. (1 Web, P. C, 551 («.).) 1053. Neilson v. Haefoed. [1841] A statement in the notice of objections, that the specification is calculated to deceive, is sufiicient to let in evidence as to any- particular passage being false. (1 Web. P. C. 324 (n.).) Where the objection simply states the specification to be insufficient, if the plaintiff is contented to take that as notice, any objection may be made at the trial to show that the specification is insufficient, {lb. 332.) 1054. Heath v. Unavin. [1842] It is a sufficient notice to state " that the invention is not properly set forth in the specification," for the legislature never intended that the defendant should argue his case in the state- ment of objections, which he delivers in compliance with the act. (10 M. §• W. 687 ; 12 L. J., Ex. 48.) 1055. Jones v. Beegee. [1843] The objection that the plaintiff's specification did not " sufficiently distinguish between what was old and what was new," held sufficient, as the objection was to an omission in the specification. The allegation that the plaintiff did' not state in his specification " the most beneficial method with which he was then acquainted, of practising his said invention," held sufficiently precise. (5 M. §• G. 208.) E E 2 420 ACTION FOK INFRINGEMENT : lose. Leap v. Topham. [1845] In an action for the infringement of a patent, the defendant, pursuant to sect. 5 of 5 & 6 Will. 4, c. 83, delivered a notice of objections, one of which stated that the patentee did not, by the specification in the declaration mentioned, sufficiently describe the nature of the supposed invention ; and the other stated that he had not caused iany specification sufficiently describing the nature of the supposed invention to be duly enrolled in chancery : — Held, that the last objection was not sufficiently precise ; and the court ordered an amendment, which was made by inserting the word " other" before " specification." (14 M, §• W. 146 ; 14 L. J., Exch. 231.) Parke, B. : "I think the meaning of the last objection .is too obscure. It may either mean, that there is no specification existing among the roUs of the court, or that that which has been enrolled is defective in not sufficiently describing the in- vention. It is not necessary that the notice of objections should set out the evidence on which the defendant relies, but it ought to be more specific than this is. The act of parliament which requires the notice of objections, was framed at a time when the general issue was the usual plea in cases of this kind, and it was no doubt intended to pass in the place of special pleas." (14 M. §■ W. 148.) As to Fraud and Misrepresentation, 10S7. FiSHEE V. Deswick. [1838] An objection stated, that there were several machines, " such as (naming them) and others, to which the said improvements are inapplicable ;" his Lordship struck out the words " and others." (1 Web. P. C. 551 («.).) 1028. Jones v. Bekgek. [1843] The objection, that the plaintiff did not state the best mode with which he was acquainted is sufficient. (1 Web. P. C. 546.) Interrogatories. 421 10S9. EussELL V. Ledsam. [1843] To an action for the infringement of a patent, the defendant pleaded: That the report of the Judicial Committee of the Privy Council, and the letters patent thereupon, were procured by fraud, covin and misrepresentation: — Held, that the notice of objections delivered under 5 & 6 Will. 4, c. 83, s. 5, ought to state the species of fraud, covin and misrepresentation by which the patent was procured, on which he intends to rely, (llilf. §• ^F. 647.) Interroga tories. 1030. Tetley v. Eastox, [1856] Where a defendant does not deny the infringement, it is no ground for his refusing to answer interrogatories, that the answers would expose persons to whom he had sold the patented articles to actions. (18 C. B. 643 ; 25 L. J., C. P. 293.) Jones W.Lee. [1856] See 991. 1031. Jones v. Pkatt. [1861] The plaintiff, in an action commenced in 1861 for damages for an infringement of his patent, granted in 1841, applied to be allowed to admiaister interrogatories to the defendant before deliyery of declaration, asking, inter alia, for particulars of the number of machines manufactured, altered or sold by the defendant between the years 1841 and 1855, when the patent expired. The application was made on aflSdavits by the plain- tiff's agent, that he had ascertained and believed that many machines, containing infringements of the plaintiff's patent, had been made and sold, without the leave of the plaintiff, by the defendant, between the said years, and that answers to the interrogatories would disclose many more breaches of the plaiq- tlff's patent than had as yet been discovered, and that the dis- covery sought by the interrogatories was essential for the drawing the declaration in the action. The court refused to 422 ACTION FOR INFRINGEMENT : allow the interrogatories to be delivered before declaration, but intimated that the plaintiff might probably be entitled to deliver them after issue joined, and that he would then be at liberty to amend the particulars of the breaches he would be bound to deliver mth his declaration, in accordance with the answers the defendant might give. (30 L. J., Exch. 365 ; 6 H. 8f N. 697.) 1033. Thomas v. Tillie. [1866] See this case for the form and extent of interrogatories which may be exhibited to a defendant in an action for infringement of a patent before plea pleaded. (17 Ir. C. L. R. 783.) The same interrogatories were allowed in England, not reported, (ii. 785.) Discovery and Inspection. 1033. Crofts v. Peach. [1836] In an action for the infringement of a patent, the plaintiff will not be compelled to produce a specimen of the patent articles, to enable the defendant to prepare his defence to the action. (2 Hodg. 110.) 1034. Amies v. Kelsey. [1852] An application to inspect the defendant's machinery may be made by the plaintiff under 15 & 16 Vict. c. 83, s. 42, whenever an action is pending, even before the delivery of the declaration ; but such inspection will not be granted as of course, or without the party applying for it showing that the inspection is material for the purposes of the cause. (22 L. J,, Q. -B. 84; 1 B. C. C. 123; 16 Jur. 1047.) 1036. Shaw v. The Bank op England. [1852] In an action for the infringement of a patent, the com-t will not grant an order, under the 15 & 16 Vict. c. 83, s. 42, for an Discovery and Inspection. 423 inspection of a macMne upon an affidavit " that the machine used by the defendants is the same for which the plaintiff has obtained a patent." (22 L. J., Exch. 26.) Pollock, C. B. : " The affidavit is too vague and defective for the court to grant this application. It ought, at least, to state that there is such a machine, and that the plaintiff has reason to believe it is an infringement." Eeferring to the 42nd section, his Lordship said: "This is a power only hitherto exercised by the Court of Chancery: and now that the legislature has given to the common law courts the power of granting injunctions, it must be presmned that those powers are to be exercised in the same way as they have hitherto been by the Court of Chancery." {lb.) 1036. Harrison v. Spire. [1853] A rule nisi for an order to inspect a defendant's machinery, under the 42nd section of the Patent Amendment Act, 1852, will be granted on motion. (22 L. T. Rep. 92.) 1037. Smith v. The Great Western Railway Company. [1854] Where, in an action for an infringement of a patent, the plaintiff seeks, under sect. 6 of 14 & 15 Vict. c. 99, to discover by an examination of the defendant's books the amount of damage sustained by him by the infringement of his patent by the defendant, the court will not compel the defendant to grant such inspection, unless a prima facie legal right be estabHshed by the plaintiff; and it is not enough for the plaintiff to show that he has been injured in his patent, and that it is probable the amount of such injury will be ascertained by the examination asked for. (3 ?F. ^. 69.) 1038. Vh)I v. Smith. [1854] The "inspection" mentioned in the 42nd section of stat. 15 & 16 Vict. C.-83, is an inspection of the instrument or machinery manufactured or used by the parties, with a view to 424 ACTION FOR INFEINOEMENT : evidence of infringement, and does not refer to an inspection of books, which is provided for by another act of parliament, (3 Ell. §• B. 969 ; 1 Jur., N. S. 14; 23 L. J., Q. B. 342.) 1039. Jones v. Lee. [1856] In an action by a patentee against his licensee on a covenant to pay for roving machines made with the plaintiff's invention, and to make none without, — ^breach, first, in not paying for roving machines made with the invention; and, secondly, in making machines without it ; the defendant having, in answer to interrogatories, admitted the making of many hundreds of roving machines, but not with the plaintiff's invention, and having declared that he could not state to whom they were sold, nor give any further information about them, without disclosing his own evidence ; and the plaintiff claiming in respect of all the machines the defendant had made, under one or other of the covenants, and asserting that he had seen some of them, which had his invention applied : — Held, that the defendant was entitled to such particulars as should de- scribe those portions of the machines to which the plaintiff contended that his invention had been applied, and that the plaintiff might inspect the machines on the premises of the defendant, and also examine him viva voce. (25 L. J., Exch, 241.) 1040. Meadows v. Kirkman. [1860] In an action for the infringement of a patent for a mode of making veneers or mouldings, the court refused to order an in- spection by the plaintiff of the defendant's manufactory and machinery ; it being doubtM on the plaintiff's affidavit whether his patent was for the kind of veneering, or for the process by which it was done ; and the defendant positively swearing that he used no machinery in the process. (29 L. J., Exch. 205.) Pollock, C. B., said : " We ought not to grant such an in- spection without, at least, as good a ground for it as would be required in a court of equity ; or for any inspection of books or documents. Then it must appear that what is asked is really required to prove the plaintiff's case." Discoveny and Inspection. 425 1 041 . The Patent Type Founding Company v. Lloyd ; Same v. Walter. [1860] In an action against a printer for an infringement of a patent for improvements in the manufacture of type, the improvements consisting in the use of lead, tin and antimony in certain propor- tions, the plaintiff applied to the court under the 42nd section of the 15 & 16 Vict. c. 83, for leave to inspect, and, if necessary, to take specimens of the type for the purpose of analysis. His affidavit stated that he had obtained from the defendant speci- mens of the type and caused them to be analysed by a chemist who was dead, and that the type so analysed was an infringement of the patent ; but did not set out the report of the chemist or state its substance, or whether or not it was in writing. The court refused to make an order that the plaintiff should be at liberty to take specimens for analysis. (5 H. §• N. 192; 29 L. J., Exch. 207; 6 Jur., N. S. 103.) Martin, B., in delivering judgment, said : " "We have to put a construction on the 42nd section of the 15 & 16 Vict. c. 83. It empowers the court, ' on the application of the plaintiff or defendant respectively, to make such order for an injunction, inspection, or account, and to give such direction respecting such action, injunction, inspection and account, and the proceedings therein respectively,' as to them may seem fit. I am disposed to think that Mr. "Webster has given a true guide to the construc- tion of it, viz. that no one of these matters is to be dealt with separately, but the whole is to be read together. I entirely agree Avith the opinion of the Court of Queen's Bench in Holland v. Fox, that the intention of the legislatm-e was to vest in the courts of common law the power to order an injunction, inspec- tion and account, heretofore exclusively possessed by courts of equity, so that suitors may be saved the expense of being obliged to go to a court of equity. In applications like the present we ought to look to the rights of the parties, of the patentee as well as of the defendants, and to carry out the enactment, not by putting extreme cases, but dealing with the whole matter as a court of equity would, and as the Vice-ChanceUor did in Morgan v. Seaward. I think that we ought to look at the in- junction, inspection and account in the same spirit, and grant 426 ACTION FOE INFRINGEMENT : or refuse them on such terms as would be fair between the parties." (5 H. §• N. 198.) Bramwell, B., said : " It is diflScult to say that a person authorized to inspect might not consume a small portion of the matter to be inspected. Probably inspection must be construed with reference to the matter to be inspected. If the party in- specting cannot otherwise understand its nature and quality, he may probably consume some small portion of it ; but when a sensible meaning with reference to the subject-matter can be given to the word inspection by construing it inspection by the eye, I think it must be confined to that. Type can be inspected by the eye. I think in the present case that more is asked for than the court has power to grant." (lb. 200.) Channell, B., said : "I do not say that the application in point of form must be for an injunction, yet I think that the right (to grant inspection) depends on the plaintiff satisfying the court that they would have granted an injunction if asked for." (76.) On an application to the Court of Chancery, Wood, V.-C, made an order that the plaintiffs should be at liberty to take specimens of the type for analysis. (John, 727.) 1042. Saxby v. Easteebeook. [1872] The plaintiffs obtained a verdict in an action for the infringe- ment of a patent ; a rule to enter the verdict for the defendants was discharged ; and the defendants appealed. An order was afterwards made for an account of profits, which was not appealed against, but on the parties appearing before the master for the purpose of taking the account, the defendants refused to produce their books. The court made absolute a rule for production and inspection of the defendants' books, and for interrogatories to the defendants, notwithstanding the pendency of the appeal. {L. R., 7 Exch. 207; 41 L. J., Exch. 113.) Postponement of Trial. 427 Injunction. 1043. GiTTiNS «. Symes. [1854] The rule for a writ of injunction to restrain a defendant from infringing a patent, under the 82nd section of the Common Law Procedure Act, 1854, is a rule to show cause only, in the first instance. The same relief may be had imder the Patent Law Amendment Act, 1852, s. 42. (15 C. B. 362; 24 L. J., a p. 48.) 1044. Clayton v. Peecy. [1854] The plaintiff having recovered a verdict, an order for an injunction was obtained and made a rule of court. Upon the defendant continuing the infringement after personal service of the order on him, a rule was made absolute for attachment. (48 Leff. O. 150.) 1045. LiSTEE V. Eastwood. [1855] Where, after verdict in an action for the infringement of a patent, an order for an injunction and for an account to be taken of profits made by the defendant is applied for under section 42 of the Patent Law Amendment Act, 1852, the court will not make an order for an injunction until it be shown that the defendant, after the verdict, has continued to infiringe the patent ; and before they will make an order for an account of profits to be taken, a strong case must be established that the defendant has made profits by the infringement of the patent. (3 C. L. Rep. 1249.) See " Suit in Equity — Injunction." Postponement of Trial. 1046. Smith v. Upton. [1843] Notice of trial by proviso having been given in an action brought by the assignee of a patent for an infi:ingemcnt, in 428 ACTION FOR INFRINGEMENT : which action the validity of the patent was put in issue, the court, at the instance of the plaintiff, postponed the trial on the ground that in a scire facias brought by the defendant to repeal the patent, a rule was pending in the Queen's Bench for entering a verdict for the patentee. (6 M. §• G. 251.) 1047. MuNTz V. Foster. [1844] Action brought on the 21st July, and cause set down for trial at the Middlesex sittings after Hilary term. A writ of scire facias to repeal the patent issued on the 3rd of May, at the instance and on the prosecution of one of the defendants ; the proceed- ing being duly prosecuted, the scire facias was set down for trial at the sittings after the previous Trinity term — ^prior to the commencement of the action — ^but not being then tried was entered for trial after Hilary term. In the ordinary course of things, the cause would first come on for trial. The court refused to order that the trial of the cause should be postponed untU after the scire facias had been determined. Tindal, C. J., said : " I feel very great difficulty where a plaintiff has duly put his cause in the list, in depriving him, under any circumstances, of that which may be called his common law right to try. Undoubtedly there are cases in which we should be justified in interposing ; as, for instance, where public convenience requires it, or where such a course would manifestly be in furtherance of justice." (2 Weh. P. C. 93 in.).) 1048. Patteson v. Holland. [1845] Where one action for infringement had been tried, and a rule nisi for a new trial had been obtained and argued, and another action was pending for another infringement of the same patent, and a scire facias had been sued out to repeal the patent, the court suspended their judgment upon the rule for a new trial, and ordered the trial of the other action to be postponed until after the trial of the scire facias, (Hind, on Pat. 293.) Evidence. 429 Venue. 1049. Cameeon v. Gray-. [1795] A plaintiff cannot make an aflSdavit that the caruse of action, in a case for the infringement of a patent, arose wholly in any- particular county and not elsewhere, since the substratum of the action, namely, the patent, is at Westminster, (6 T. R. 363.) 1050. Brunton v. White. [1825] On a motion to change the venue, in a case for infringement, the court said there was no precedent for the application, and that unless some instance was cited in which it had been done they could not grant the motion. Rule refused. (7 D. §• R. 103.) Evidence of the Subject-matter of a Patent. 1051. Lewis v. Davis. N. P. [1829] In an action for the infringement of a patent, professing to be an improvement on a former patent, the specification of the former patent must be put in evidence, in order to show what the improvement really is. (1 TFeb. P. C. 489 ; 3 C. §■ P. 502.) 105S. Bateman v. Gray. [1853] In an action for infringing a patent, defendant pleaded only — (1) not guilty; (2) a traverse that plaintiff was the inventor; and (3) a traverse that the invention was new. At the trial, the plaintiff put in the specification, which claimed three old things ; but he proved, by his own evidence, that the invention which he really claimed, and which he thought he had de- scribed in his specification, was the combination of the three things : — Held, that the specification was evidence for the jury, but not conclusive; and that they were warranted in finding that the invention was the combination. (1 C. L. Rep. 512.) 430 ACTION FOR INFRINGEMENT : Pollock, C. B., said : " We think that what was the inven- tion is a question for the jury, and that the specification does not conclude the plaintiff. It was evidence to be considered by the jury and no more." (lb. 515.) Evidence of Novelty of Invention. 1053. Manton v. Mantok. N. P. [1815] Action for the infringement of a patent for a hammer for th§ locks of fowling-pieces. Gibbs, C. J., said to the jury : " The first ivitness, a man of considerable experience, had never seen any locks with the lips so perforated; prima facie, that is good evidence; but when the question is, whether this had existence previous to the patent, fifty witnesses proving that they never saAv it before would be of no avail if one was called who had seen it and practised it." {Dav. P. C. 350.) 1054. R. V. Hadden. Sci.fae. [1826] On scire facias to repeal a patent for a machine, on the ground that it is not new, you may, to prove that, put into the hand of a witness, who had constructed a machine for the same purposes, a drawing not made by himself, and ask him whether he has such a recollection of the machine he made, as to be able to say that that is a correct drawing of it, (2 C. §• P. 184.) 1055. In re Cutler's Patent. Ch. [1839] The identity of purpose, and not of name, is the criterion in judging of the similarity or dissimilarity of inventions. (1 Web, P. C. 427.) 1056. Galloway v. Bleaden. N. P. [1839] It is only necessary for the plaintiff to make out a prima facie case as to the novelty of his invention, to call upon the other side to show affirmatively that it is not new. This the plaintiff may do by calling persons who are conversant with Evidence, 431 the subject of the patent, and who pass their time in under- standing the nature of patents, and in following up and discovering what are the inventions that are going on from week to week, to say that they had hot before heard that there had been such a discovery previous to the grant of the patent, (1 Web. P. a 526.) 1057. Walton v. Potter. N. P. [1841] Tindal, C. J., said to the jury: "It will be not immaterial to call your attention, upon this first head of inquiry, to the specifi- cation of the plaintiff's, and next that of the defendants' patent, in order that we may compare them together, and see whether there really is that variation in substance so as to give the denomination of a new discovery to what the defendants have done, or whether they are not following out the invention of the plaintiff, mth some variation in the description, which may not allow it the name of a new discovery," (1 Web. P, C, 587.) 1058. Hyde v. Paljiek. [1863] In an action for the infringement of a patent taken out in 1849, the defendant, in support of a plea that the invention was not new, gave evidence that O., who was dead, had in 1846 used a process identical with that in the patent. On the cross- examination of the witnesses it appeared that, if O. used the invention and sold the product before the date of the patent, it was only in very small quantities, and that it was not brought into general use ; and one of the witnesses was asked in cross- examination whether O. had not sold some of the product to S., and said he had. The plaintiff in reply called S., who gave evidence that in 1850 or 1851, O. sold him a small quantity of the product, and at the time of the sale said that it was a new article, that he did not wish it to be publicly known, and he would sell him aU he could manufacture : — Held, that evidence of what O. said at the time of that sale was not admissible in reply, as it would not have been admissible in chief on an issue whether O., before 1849, used the invention. (3 B, Sf S. 657; llW.R. 433 ; 1 L.T. Rep., N. S. 823 ; 32 L. J., Q. B. 126.) Amoby i;. Bkown. [1869] See 1 US. 432 ACTION FOE INFRINGEMENT : 1059. Betts v. Neilson. H. L. [1871] Where a patent had been taken out by D. in 1804, and another patent had been taken out by B. in 1849, and B, took proceedings against N. for infringement, to which N. set up as an answer want of novelty, and proved D.'s patent, evidence of all that was done in the trade to which the patent related between the date of D.'s patent and of B.'s patent, was ad- missible on this question of novelty, (i, B., 6 H. L.2.) Evidence of the Grant of Letters Patent. 1060. MiNTEE V. Wells. N. P. [1834] Alderson, B. : " The patent is prima facie evidence on the part of the person who claims the right that he is so entitled, and it is for the person who seeks to infringe that patent to show some circumstance whereby that right, which otherwise would be presumed to exist, is defeated, to show that the Crown's grant has been improperly obtained by the present plaintiff." (1 Web. P. C. 129.) 1061. Russell w. Ceichton. [1837] Letters patent afford prima facie evidence of the originality of the alleged invention. (1 Web. P. C. 611 (n.).) 106S. Nickels v. Ross. [1849] At the trial the plaintiff put in the letters patent and specifi- cation, and gave evidence to show that a machine like his had never been in use before the date of the letters patent : — Held, that this entitled the plaintiff to a verdict upon the issue joined on the plea of non concessit. And semble, that the plea of non concessit did not impose upon the plaintiff the burthen of showing that the Crown had power to grant, until evidence had been given on the other side to impeach the patent; and that the averment in the declaration. Evidence. 433 tliat the plaintiff was the inventor of the improvements for which the patent was granted, not having been traversed, the defendant was not at liberty to controvert that fact at the trial. Held, also, that the plaintiff was entitled to a verdict on the issue joined on a plea, stating that the plaintiff had obtained the patent on a false representation that he was in possession of the invention in consequence of a communication from a foreigner resident abroad, without any proof that the invention was com- municated to him by a foreigner residing abroad, as alleged in the petition recited in the specification, — a party availing himself of information from abroad, being an inventorynHam the meaning of the 21 Jac. 1, c. 3, s. 6. (8 C. B. 679.) Evidence of Sufficiency of the Specification. 1063. ToENEE V. Winter. [1787] Buller, J. : "I do not agree with the counsel who have argued against the rule, in saying, that it was not necessary for the plaintiff to give any evidence to show what the invention was, and that the proof that the specification was improper lay on the defendant ; for I hold that a plaintiff must give some evidence to show what his invention was, unless the other side admit that it has been tried and succeeds. But wherever the patentee brings an action on his patent, if the novelty or effect of the invention be disputed, he must show in what his inven- tion consists, and that he produced the effect proposed by the patent in the manner specified. Shght evidence of this on his part is sufficient, and it is then incumbent on the defendant to falsify the specification." (1 T. B. 606.) 1064. E. V. FussELL. N. P. [1826] The evidence of a scientific man, that to carry out an inven- tion from the specification would require a great deal of con- H. FP 434 ACTION FOE INFUINGEMENT : trivance, is, in the absence of evidence to the contrary, sufficient proof of the insufficiency of the specification, (I Carp. P. C. 449.) 1065. Brooks v. Eipley. [1831] If the specification be not sufficiently clear to be understood by ai} ordinary workman (a witness for the plaintiff), witnesses will not be allowed to be called to explain the intention of the patentees, and plaintiffs will be nonsuited. (2 Land. Jour., C. S. 35.) 1066. MiNTER V. Wells. N. P. [1834] Alderson, B. : " 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 coidd make the machine which would answer the purpose which the patent was intended to accomplish." (1 Web. P. C. 129.) 1067. Cornish v. Keene, N. P. [1835] Upon an action for infringement, the specification is proved to be sufficient, if witnesses are called by the plaintiff, who have actually made the manufacture without any instruction except the specification ; and none are called by the defendant, who could not understand the specification, had been misled by it, or incurred expense in endeavouring to copy or to imitate it. (1 Web. P. C. 502.) Neilson v. Harford. [1841] See 4S9. 1068. R. V. Nickels. [About 1846] Where, in a patent for machinery, the improvements are not sufficiently ascertained or described either by words or figures^ Evidince^ 435 parol evidence is not admissible to explain the specification and show what is new. {Hind. Law of Pat. 186.) The Patent Type FoimDiNG Company v. Richards. Ch. [1859] See 435. 1069. Young v. Feknie. Ch. [1864] Experiments conducted for the express purpose of manufac- turing e-vidence, with a view to litigation, are to be looked 'at with distrust. (4 Giff. 609.) Penn v. Bibbt; Penn v. Jack. [1866] See 353. Ween v. Weild. [1869] See 1097. Evidence of Infringement. 1070. HuDDART V. Grimshaw. N. p. [1803] Action for the infringement of a patent for a new mode of making cables and other cordage. Evidence was given on behalf of the plaintiff by an engineer, who was familiar with the subject of rope-making, that some rope, proved to be of the defendant's manufacture, agreed in its structure and in aU its qualities with the rope made by the plaintiff's patented method. The witness knew of no other method of manufacturing such rope, which he believed to have been made in accordance with the plaintiff's patent : — Held, that this was prima facie evidence, tiU the contrary was shown, of an infringement of the plaintiff's patent. {Dav. P. C. 288 ; 1 Web. P. C. 91.) 1071. Hall v. Boot. N. P. [1822] The sale of an article which might, during its manufacture, have been improved according to a patent process, coupled with the fact of the defendant having the machine necessary for practising such process in his possession, is sufficient evidence of infringement. (1 Web. P. C. 100.) FF 2 436 ACTION FOE, INFEINGEMENT: 107S. MuNTZ V. Foster. JST. P. [1844] Tindalj C. J. : " For the purpose of inquiring whether the defendants have infringed the patent or not, we are to assume that it is a good patent, that no objection arises either to the nature of the grant or the specification which has been enrolled by the plaintiff." (2 TVeb. P. C. 99.) 1073. Palmer v. "Wagstaff. [1854] The plaintiff's patent, obtained for " the mode of manufacture of candles by the application of two or more plaited wicks, so disposed that the ends always turn outwards," is not proved to be infringed by the mere production of a candle, made by the defendant, in which the wicks were so plaited and turned Out- wards. It must be further shown that the defendant made it by the method described in the plaintiff's specification, or in some way that the jury might consider colourable. (9 Ex. 494 ; 23 L. J., Ex. 217 ; 2 C.L. R. 1052.) 1074. Unwin v. Heath. H. L. [1855] Crompton, J. : " Proof of a user of an invention before the patent was granted, such as would be evidence that there was no novelty, if taking place after the patent, is evidence of an infringement." (25 L. J., C. P. 13.) Thomas v. Foxwell. [1858] See 922. 1075. Davenport v. Eichards. Ch. [1860] The fact that the articles made by the plaintiff's and defen- dant's machines are identical, is a fair argument to show that an infringement of the plaintiff's patent has been committed. (3 L. T. Rep., N. S. 504.) 1076. Seed v. Higgins. H. L. [1860] The opinion of scientific witnesses as to whether there has or not been an infringement ought not to be received. Per Lord Wensleydale. (8 H. L. Cas. 550; 30 L. J., Q. 5. 314; 6 Jur., N. S. 1264.) New Trial. 437 1077. Neilson v. Betts. H. L. [1871] Semble, that, where the piracy alleged has taken place abroad, it becomes the duty of the defendant to give evidence of a negative character to prove (in answer to the prima Jade case made by the patentee) that the process used was of a different character from that which had been patented. Where that negative evidence was not given by the defen- dant, but positive evidence on the part of the patentee was given by one workman that he had been employed at the foreign manufactory, and there saw the capsules manufactured by a process not distinguishable from that of the patentee : — Held, that these circumstances justified the conclusion of identity of material and process. (Z. R., 6 H. L. 1.) New Trial, 1078. Lewis v. Makling. [1829] New facts stated upon affidavit, which would be ground for repealing a patent by scire facias, will not be received on a motion for a new trial. (1 Web. P. C. 495.) 1079. Walton v. Potter. [1841] Where the judge has left to the jury the specific issues raised on the record, and refiised to put to them certain questions of fact, suggested by the defendant's counsel: — Heldj no mis- direction, or ground for a new trial. Semble, such questions can only be asked with the consent of aU parties, and the jury are not bound to answer them. (11 L. J., a p. 138.) Costs. 1080. GiLLETT V. WiLBY. N. P. [1839] In an action for the infi-ingement of a patent three pleas were pleaded: 1st, the general issue; 2nd, that the alleged 438 ACTION FOE INFKINGEMENT : improvements were not new ; and 3rd, that the plaintiffs were not the true and first inventors of the improvements: — Held, that the validity of the patent might be considered as having come in question under the second plea, so as to entitle the plain- tiff to a certificate to that effect, under the 3rd section of the statute 5 & 6 Will. 4, c. 83. (1 Web. P. C. 270; 9 C. 8f F. 334.) 1081. LosH V. Hague. [1839]. Where a defendant, in an action for the infringement of a patent, succeeds on a plea which goes to the whole action, he wiU. be entitled to the general costs of the cause, deducting the costs of the objections on which the plaintiff has succeeded, and of the issues found for him. The certificate given by the judge under the 5 & 6 WiU. 4, c. 83, s. 5, should be as to the determination of each objection of which notice has been given, and not as to the issues. (5 M. 8f W. 387; 7 D. P. C. 495 ; a Jur. 409.) 108S. GiLLET V. Geeen. [1841] An action on the case for the infringement of a patent is within the operation of the 3 & 4 Vict. c. 24, s. 2 ; and not- withstanding the provisions of the stat. 5 & 6 WiU. 4, c. 83, s. 3, the plaintiff, recovering only nominal damages, cannot have his fuU costs, or triple costs, without a certificate under the former act. After the taxation the judge has no power to grant a certificate. (7 M. §■ W. 347 ; 2 D. P. C. 219 ; 1 Web. P. C. 271.) 1083. Stockee v. Eodgees. N. P. [1843] If, in an action for the infi:ingement of a patent, the defendant plead not guilty, that the invention is not new, and that the specification is not sufficient; and the defendant at the trial consent to a verdict for the plaintiff, without any evidence being given, the judge will not certify under the stat. 5 & 6 WiU. 4, c. 83, s. 3, " that the validity of the patent came in question before him." (1 C. Sf K. 99.) Costs. 439 Ersklne, J., said : " My certificate would affect tMrd parties ; and it would be possible, in a case like the present, for two parties, by collusion, to consent to a yerdict in favour of a patent, and, if they could obtain a certificate under the 3rd sec- tion of the statute, to use it afterwards to the injury of another party who was really contesting the validity of the patent." {lb. 100.) 1084. JSTewall v. Wilkins. N. P. [1851] After the plaintiff in an action for infiringement has obtained a verdict, the record of a former trial, in which the patent was afiSrmed, is admissible to show that the plaintiff is entitled to treble costs. The defendant's case ought not to be prejudiced by the admission of the evidence upon the trial; but it ought to be proved subsequently. (17 L. T. Rep. 20.) 1085. HONIBALL V. Bloomee. [1854] In an action for the inMngement of a patent, the 43rd sec- tion of the 15 & 16 Vict. c. 83, makes the certificate of the judge who tried the cause, that the defendant's particulars of objections have been proved by the defendant, a condition pre- cedent to his right on taxation to any costs in respect of such particulars, even in the case of a nonsuit. (10 Eioch, 538; 1 Jur., N. S. 188; 24 L. J., JExch 11.) Pollock, C. B., said : " "With respect to the costs of the issues, there is no doubt that, where the plaintiff is nonsuited, the defendant is entitled to all the costs of the issues, that is to say, of the pleadings and evidence necessary t-o support them. But as these particulars are the creatures of this statute, and the costs of this particular class of proceedings are declared by the legislature to be no part of the general costs of the cause, and -that in the absence of a certificate they shall not be recoverable, they are not recoverable." (10 Exch. 542.) 1086. Gkeaves v. The Eastern Counties Kailway Com- PANT. [1859] In an action for the infringement of a patent, defendants delivered, with their pleas, particulars of objections, pursuant 440 ACTION FOR INFRINGEMENT: to Stat. 15 & 16 Vict. c. 83, s. 41. The plaintiff having abandoned his action before trial : — Held, that the defendants ■were entitled to the costs of the particulars and of the evidence in support of them, for sect. 43 does not apply, so as to limit the ordinary light to costs, except when the cause comes on for trial. (1 Ell. §• Ell. 961 ; 28 L. J., Q. B. 290 ; 5 Jur., N. S. 733.) Held, also, that the cause not having been tried, the de- fendant, under 6 Geo. 4, c. 50, s. 34, was not entitled to the costs of a special jury applied for by him. (76 ) 1087. BovBLL V. Hadley. [1864] The 43rd sect, of the 15 & 16 Vict. c. 83, enacts, that it shall be lawful for the judge before whom an action for infringing letters patent shall be tried, to certify on the record that the validity of the patent came in question ; and that " the record, •with such certificate, being given in evidence in any suit or action for infringing the said letters patent," shall entitle the plaintiff, on obtaining final judgment, to " his full costs, charges and expenses, taxed as between attorney and client," unless the judge shall certify that he ought not to have such fuU costs. An action having been brought by a patentee (substantially) for the recovery of royalties under a due licence, a compromise •was entered into before the plaintiff's case was closed, and an order of nisi prius was drawn up, under which the defendant was to pay an agreed sum, and a verdict was to be entered for the plaintiff in the action, for 40s. damages, and costs, with aE " usual certificates." After the cause was thus disposed of, the presiding judge, upon an ex parte application, indorsed on the record a certificate that the record in a certain action wherein Eovill was plaintiff and Keyworth was defendant, and the cer- tificate thereon indorsed, was given in evidence at the trial of this action : — Held, that this certificate was improperly granted, the record and certificate in the former action not having been given in evidence, and it not being under the circumstances a "usual certificate" within the contemplation of the parties. (17 C. S., N. -S". 435 ; 10 L. T. Rep., N. S. 650.) Costs. 441 1088. CuETisu. Platt. [1864] The defendant obtained further time to plead, on the terms that the cause should be put down for trial before issue joined, "and that short notice of trial should be taken. The pleas were delivered, and the plaintiff had a special jury nominated, but not struck. The action was then discontinued before issue joined or notice of trial given : — Held, that the circumstances of the case did not authorize a departure from the general rule, that costs incurred before notice of trial shall not be allowed. (33 L. J., C. P. 255 ; 10 Jur., N. S. 823 ; ' 10 L. T. Rep., N. S. 383.) WiUes, J., said : " With respect to the second ground, it is contended, that as notice of objection is delivered with the pleas, the expenses incurred in preparing these objections ought to be allowed as accessory to these objections. But I am not satisfied that these expenses were connected with the objections ; one instance given has been the looking into specifications of patents of a similar character ; but the validity of such a claim would depend on whether the defendant knew, when he delivered the objections, the particulars of the invention, or whether he was merely making speculative inquiries. I have strong doubts whether such expenses should be allowed at all." (10 Jur., .N. IS. 823.) 1089. Ellwoodw. Christy. [1865] In an action for the infringement of a patent, the plaintiffs claimed in their declaration a writ of injunction, and an account to be taken of all profits. The plaintiffs having obtained a verdict on all the issues, a rule nisi was obtained for the master to take an account of all profits made by the defendants. The defendants, on showing cause, made an affidavit stating what profits they had made. The court made the rule absolute on the terms that, if the plaintiffs should not succeed in surcharging the account stated in the affidavit by one-sixth, they were to pay costs of the rule and inquiry. (13 IV. R. 498.) 442 ACTION FOR INFEINGEMENT : Account. 1090. Holland V. Fox. [1854] In an action for the inftingement of a patent, plaintiff obtained a verdict for 40s. damages. Afterwards he obtained a rule, absolute in the first instance, ordering defendant to render an account of aU the articles which he had before and since the commencement of the action made or sold in breach of plaintiff's patent, and pay to plaintiff the moneys received for such articles. A rule nisi was obtained, on the part of the defendant, to discharge this rule. By the affidavits it appeared that defendant had made profits by the sale of the pirated articles since the commencement of the action ; but that he had discontinued the manufacture since the verdict and before the plaintiff's rule was obtained. And it appeared that, shortly after the action commenced, plaintiff's attorney had told the other side that plaintiff would take only nominal damages, and would, if necessary, file a biU in equity to obtain an account of the profits: — Held, that the action was stUl pending, so as to give this court jurisdiction under the Patent Law Amendment Act, 1852, sect. 42. Held, also, that there having been a verdict with damages, and there being no continuing piracy such as would give ground for an injunction, no account of profits before action could be ordered ; but, held, that the defendant might be con- sidered as trustee for the plaintiff of those profits which he had made, pending the action, after notice that plaintiff would require them ; and that an account of those profits might be ordered. The practice of the equity courts followed. (3 Ell. Sf B. 977 ; 2 C. L. R. 1576 ; 1 Jur., N. S. 13 ; 23 L. J., Q. B. 357.) 1091. ViDi V. Smith. [1854] Pending an action for infringement of a patent for an in- vention, plaintiff obtained, under the Patent Law Amendment Act, 1852, a rule nisi that defendant should render on oath an account of the sale of the articles (alleged to be pirated; sold Account. 443 before the action, and of the profit made there/rom ; and keep an account of the articles to be sold and of the profit therefrom. The rule was drawn up on an afiidavit that plaintiff had the patent, and that defendant had infHnged it after notice. Cause being shown : — Held, that no retrospective account of profits made by sales before the action ought to be ordered before final judgment, and so much of the rule was discharged. Held, also, that the court had jurisdiction to order an account to be kept in future, though no injunction was asked for, it appearing that there was a prima facie case of infringe- ment : and the court ordered that the rule should be absolute for such an account, on condition that the plaintiff elected not to claim damages at the trial, and undertook, if he failed in the action, to pay defendant the expense of keeping the account -so ordered. (3 Ell. §• B. 969; 2 C. L. R. 1573; 1 Jur., N. S. 14 ; 23 L. J., Q. B. 342.) Lister v. Eastwood. [1855] See 1045. 1092. Trotman'u. Wood. [1864] The jury, in an action against the defendants for non-pay- ment of royalties and for an account, found that the defendants had used a part of the plaintiff's invention : — Held, that the plaintiff was entitled to an account. (16 C. B., N. S. 479.) 1093. Ellwood v. Christy. [1865] The court wiU only direct an account to be taken, under the 42nd section of 15 & 16 Vict. c. 83, of the profits which have been actually made by the defendant, and not of the loss which the plaintiff has sustained by the infringement ; and, in the case of an assignee of the patent, the account will only be taken from the date of the registration of the assignment under sect. 35. (18 €. B., N. S. 494 ; 34 L. J., C. P. 130; 13 W. R. 498.) 1094. Saxbt u. Easterbrook. [1872] An account will be granted as soon as the verdict is given, and the defendant cannot refuse to allow his books to be 444 ACTION FOR INFEINGEMENT: inspected, for tlie purpose of taking an account, on the ground that he is about to appeal. (Z. R., 1 Exch. 207 ; 42 L. J., JExch. 113.) Damages. 1095. Aekwright v. Nightengale. N. P. [1785] When a patentee, who has failed to establish his right under the patent upon a former occasion, sues for damages for an alleged infringement, the defendant is allowed to give evidence to show to what extent persons have acted upon the faith of the former verdict. {Dav. P. C. 55 ; 1 Web. P. C. 61.) Consolidation of Actions. 1096. Thomas v. Winter. [1867] The defendant was one of twenty-six against whom the plaintiff brought separate actions for infringement of the patent of a sewing-machine. A consolidation order was made by consent, and the plaintiff wa,s authorized to select one action for trial, the defendants undertaking to be bound and concluded by the result of that action. Provision was made by the order for. security for plaintiff's costs in case of an appeal. In the case selected by the plaintiff the decision both at the trial and in banc were in favour of the plaintiff, and the defendant neglected to prosecute an appeal to the Exchequer Chamber: — Held, upon application by the present defendant, who was not in the action tried, to be allowed to carry the case decided to a superior court, — ^that the fact of the neglect to appeal was not sufficient ground for the court's exercising its equitable juris- diction, in amending or revoking the consolidation order. (17 L. T. Rep., N. S. 148.) Threatening an Action. 445- Threatening an Action for Infringement. 1097. Ween?;. Weild. [1869] Kule to set aside a nonsuit. The declaration contained counts to the effect that the plaintiffs made and sold spooling- machineSj and that the defendant falsely and maliciously wrote to persons in treaty with the plaintiffs for such machines that they were infringements of a patent of the defendant's, and that if they were used, he would claim royalties for their use, and, if not paid, take legal proceedings ; in consequence of which the plaintiffs lost the sale of their machines. There was no alle- gation that the defendant did this without reasonable or probable cause, nor, except indirectly, that the defendant had any patent. Plea, not guilty, and issue thereon. At the trial the plaintiffs, after proving the facts stated in the declaration, tendered evidence to show that the defendant's patent was void for want of novelty, that the defendant himself knew the facts which would render his patent void, and that the plaintiffs' machines were no infringement of the defendant's patent. Lush, J., was of opinion that, inasmuch as the defendant's patent was still subsisting and not set aside on scire facias or otherwise, this evidence was immaterial. A rule for a new trial was subsequently discharged, when it was held, (1) that the evidence in question was immaterial to the issue raised; and (2) that the action would not lie unless the plaintiffs could affirmatively prove that the defendant's claim was made mala fide. {L. R., 4 Q. B. 730; 38 L. J., Q. B. 327 ; 20 L. T. Rep., N. S. 1007.) Blackburn, J., in delivering the judgment of the court, said : " The advisers of the plaintiffs seem to have thought it was enough to maiutain this action to show that the defendant could not reaUy have maintained any action, and that, if well advised, he would have been told so, so as ia this action indirectly to try the question whether an action for the infringement of the patent could have been maintained ; whilst, as we think, the action could not lie unless the plaintiffs affirmatively proved that the defendant's claim was not a bond fide claim in support of a right which, with or without cause, he fancied he had, but 446 ACTION FOR INFRINGEMENT. a maid fide and malicious attempt to injure the plaintiifs by asserting a claim of right against his own knowledge that it was without any foundation." (i. R., 4 Q. B. 737.) 1098. Rollins r. HiNKS. Ch. [1872] There is no presumption in law in favour of the validity of a patent, and therefore a patentee is not entitled to publish statements of his intention to institute legal proceedings, in order to deter persons from purchasing alleged infringements of his patent, if he has no hona fide intention to follow up his threats by taking such proceedings, and the court wiU in such case restrain him from making such publication. {L. R., 13 ^^.355; 41 L.J., CA. 358.) A person alleging the invalidity of a patent is not bound to assert his claim by scire facias, in order to establish his right to restrain the publication of statement by the patentee, threatening with legal proceedings persons buying articles of his manufacture alleged to be infringements of the patent. (-?5.) Clakk v. Adie. Ch. [1873] See 845. 1099. AxMANN V. LuNU. Ch. [1874] The court will restrain a patentee from issuing circulars threatening legal proceedings against infringers, unless he will, undertake to commence proceedings to assert the validity of his patent; and the fact that the party seeking the aid of the court was formerly a licensee of the patent under the patentee, and had himself concurred in issuing similar circulars, does not prevent the court interfering after the expiration of the licence. Rollins v. Hinks followed. {L. R., 18 Eq. 330.) ( 447 ) SUIT IN EQUITY. Parties to the Action. 1100. Westhead v. Keene. [1838] Where a company liad been formed for the purchase of the; plaintiff's patent, and no "written contract had been signed, and no assignment had been executed by the plaintiflf, but the company claimed some equitable interest in the patent, a demurrer to a bill, to which the company had been made defendants, on tbe ground of misjoinder of parties, was over- ruled. (1 Beav. 287.) 1101. Davenport v. Eichaeds. [1860] Where one only of several joint-owners of a patent, amongst whom any damages recovered would be divisible, is made the plaintiff, the bill, if not demurred to, is sufficient. (3 L. T. Rep., N. S. 503.) 1102. Renaed u. Levinstein. [1865] An exclusive licensee of a patent has a right to use the name of the patentee to restrain any infringement of the patent, and an interlocutory injunction for that purpose will, in a proper case, be granted. (2 H. §• M. 628.) 1103. Betts V. Neilson. [1865] Where the principals of a firm, which had infringed a patent, were out of the jurisdiction, and not amenable to the process of the court, the court restrained the managers who, though out of the jurisdiction, had appeared to the bill. (6 N. R. 221.) 448 SUIT IN EQUITY: 1104. Hassall w. Weight. [1870] The assignee of a patent may maintain a suit against the assignor, and subsequent licensees from the assignor with notice of the assignment, to restrain them from using the patent, although at the time of the institution of the suit the assign- ment has not been registered. Semble, that registration of the assignment of a patent relates back to the date of the assign- ment, so as to entitle the assignee to maintain a suit to restrain an infringement instituted between the dates of the assignment and the registration. {L. R., 10 Eq. 509; 18 W. R. 821.) 1105. Adams v. North British Railway Company. [1873] To a bin stating an agreement made between a general agent of the patentees of an American invention to introduce and seU the invention in Great Britain and the plaintiflf, whereby the plaintiff' was to have the sole agency and control of the working of the patent in England upon certain terms, including a share of royalties and profits, praying for an account for damages, and an injunction to restrain future infringements, the defendants, who were alleged to be using the invention, demurred : — Held, that the plaintiff" was a mere agent for the sale of the invention,_ and was in no such position as gave him the right to file such a bill, which was in the form of a patentee's bill for infringe- ment. (29 L. T. Rep., N. S. 367.) Pleading. 1106. Kay u. Marshall. [1836] It is sufficient for the plaintiff" to state on the face of the biU that he has done all that is required by the patent, and it is unnecessary for him to set out the specification. An order, that a general demurrer to a biU should stand over, with liberty to the plaintiff to bring an action to try the validity of the patent, discharged, on the ground that it is too Pleading. 449 great a departure from the practice of the court, and too incon- sistent with the nature of the question before the court upon a demurrer, to be supported. (2 Web. P. C. 39; 1 M. §• C 373.) 1107. Kay w.Maeshall. M. E. [1836] Motion for leave to file a double plea. The bill was filed to restrain the infringement of the plaintiif 's patent. The de- fendants disputed the validity of the patent on the grounds that so far as the invention was new it was useless, and that so far as it was useful it was not new. Leave granted. (1 Keene, 190.) A defendant may file a single plea without an application to the court, but he cannot put in a double plea without that application and leave granted by the court. {lb. 197.) 1108. Westhead w. Keene. [1838] A biU filed by a patentee, to restrain the piracy of his patent and for an account, did not distinctly state the specification, or explain the nature of the invention for which the patent right was claimed; but it alleged that the specification was duly enrolled and that the drawings and description in the specifica- tion could not be set out in the biU, and it charged that the plaintiff was the inventor and that the invention was new. The court (not without some doubt) held, on the authority of Kay V. Marshall, that the bill was not demurrable. (1 Beav. 287 ; 2 Web. P. G. 36 (n.).) If a party have a defence beyond the record, he may plead it, or he may put in a short answer, admitting the facts stated by the plaintiff, but denying the plaintiff's right. {lb.) 1109. Curtis w. CuTTS. [1839] Where a bill is filed to restrain the infringement by the de- fendant of letters patent, a sufficient case to justify the injunc- tion must be stated by the plaintiff on the face of the bill, and he must not depend solely on the admissions contained in the defendant's answer for the granting or continuing of the H. GG * 450 SUIT IN EQUITY : injunetion. If the answer deny the invention to be new, and also the enjoyment under the letters patent, and state (as is the fact) that the specification is imperfectly set forth in the bill, the court will dissolve an injunction previously obtained, on affidavit, giving the plaintiff liberty to bring an action, although the defendant admits by his answer that he has made machines upon the principle comprised in the letters, patent, (8 i. J., Ch. 184.) mo. Young «. White. [1853] The plaintiffs, who were the owners of a patent for obtaining oil from bituminous coal, charged the defendants with an infringement of their patent. The bill stated the patent and the specification, and also referred to various publications and other means by which it had obtained notoriety, in the whole of which J. Y., one of the plaintiffs, was represented as the inventor ; and, after alleging that such would appear if the defendants answered the bill, the plaintiffs sought to obtain a discovery, not only of the plaintiffs' trade, but also of the pro- cesses they used in their manufacture. To this bill the de- fendants put in a plea, that J. Y. was not the first and true inventor, and, except as to the discovery, they answered such parts of the bill as were not covered by the plea : — Held, upon this plea, that the facts, which could not be laid before a jury as evidence in an action at law, brought by the plaintiffs, undef an order of this coiu't, for an infringement of their patent, were covered by the answer, but that, if other defences had been set up, the defendants might have been compelled to answer the other parts of the bOl; and the plea was allowed, but leave was given to amend the order under which the action was brought, that the issue at law might be confined to the sole defence raised by this plea. (23 L. J., Ch. 190.) De la Eue v. Dickinson-. [1857] See 1124. 1111. Saeazin w. Hamel. [1863] Whether, under a bill to restrain the infringement of a patent, it is necessary to allege that the patentee has duly paid the Affidavits. 451 instalments of stamp duties tieoessaiy to keep the patent allre, uadef the 16 & 17 Vict. c. 5, s. 2, quafe. (32 Beav. 145.) 1112. Amokt i>. Brown. [1869] In a bill to restrain an infringement of a patent, an express averment of the novelty of the invention protected by the patent is not necessary, (i. R., 8 Eq. 663 ; 38 L. J., Ch. 593.) Sir W. M. JameSj V.-C, said: " I was at first sttuck at the absence of an averment as to the novelty of the invention, and I doubted whether such an averment was not necessary to support a bill in restraint of an inMngement of a patent. But on looking at the form of a declaration at law for damages for the infringement, 1 find that it contains no allegation of the novelty of the invention. The allegation of the grant and pro- duction of the letters patent throws upon the defendant the onus of disputing the novelty, and therefore I think the bill sufficient without it."' Affidavits. 1113. Hill r. Thompson. [1817] The affidavit iti support of an injunction to restrain an in- fringement should State particularly in what the alleged infringe- ment consists; and when the proportions mentioned in the specification are of the essence of the invention, it should state the defendant to have worked by them. (3 Mer. 624,) When an injunction is applied for ex parte, 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 circum- stances may have subsequently intervened, or information been communicated, 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. (K.) G G 2 452 SUIT IN EQUITY: 1114. Hill v. Wilkinson. [1817] lu the case of an alleged infringement of a patent, the in- junction must be granted, or refused, according to the opinion the court may form after an examination of the affidavits. (2 Coop. 57 (n).) 1115. Stuetz v. De la Kue. [1828] Lord Lyndhurst, L. C. : " There can be no doubt that, when a party comes for an injunction against the infringement of a patent, he ought to state that he believes, at the time when he makes the application, that the invention was new, or had never been practised in this kingdom at the date of the patent. It is not enough that it was believed to be new at the time when the patent was taken out." (5 Russ. 329.) 1116. BiCKFOED w. Skewes. [1837] Injunction granted although, on account of the patentee being dead, there was no affidavit to the effect that he, at the time of application, believed himself to be the true and first inventor, and that the invention was new. (1 fVeb. P. C. 211.) 1117. Stocking v. Llewellyn. [1842] If there is any material variation between the allegations in the bill, or the aid sought by it, and the affidavits in support of the plaintiff's case, the injunction wiU be dissolved, with costs. (3 L. T. Rep. 33.) 1118. Electric Telegraph Company v. Nott. [1847] The court will, at any time previous to the hearing, postpone the hearing, in order to allow time for filing affidavits ; but no affidavits filed after the hearing has begun may be read. (11 Jur. 273.) 1119. Gardner w. Beoadbent. [1856] A. B. in May, 1856, became the purchaser of a patent, which the defendant, as alleged, infringed subsequent to the Affidavits. 453 date of the purchase. A. B. obtained an injunction ex parte to restrain the defendant, on an affidavit in support, which stated that the patent had been recorded, and that it became and was good and valid. The court held this affidavit insufficient, and on that ground dissolved the injunction, with costs. (2 Jur., N. S. 1041.) Sir J. Stuart, V.-C, said : " When the plaintiff applied for an ex pai-te injunction, his affidavit ought to have stated clearly and distinctly that he believed the patentee, from whom he pur- chased the patent, was the original and true inventor, and that he believed that the invention had not been practised at the time when the patent was granted. That was necessary, because what 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. The plaintiff was bound, in short, accurately to set forth his legal title to the invention in respect of which he claimed the protection of the court." {lb.) 1 1 SO. Whitton «. Jennings. [1860] When a defendant to a bill filed for an injunction to restrain an infiingement, or for leave to bring an action at law, stated by his answer that the invention was not novel, and that the plaintiff's patent was invalid, the court, on a motion by the plaintiff, without his having made an affidavit as to the novelty of the invention or validity of the patent, refused to grant him an injunction or to give leave to bring an action, unless he pro- duced a clear and distinct affidavit that the invention was novel and the patent valid, but allowed the motion to stand over for that purpose. (1 Dr. §• S. 110.) 1121. Mayeev. Spence. 1_1860] In an injunction suit to restrain an infringement, a motion for leave to take proceedings at law ordered to stand over for the plaintiff, to make an affidavit of his belief of his title to the patent, and of the alleged infringement. (1 J". §• IT. 87.) 454 SUIT IN EQUITY: H^S. BeTTS t', WltLMOTT. [1871] The onus being on the plaintiff to show, not merely that the thing made is his own patented article, but that it has been unlawfiilly sold, he must be prepared to swear distinctly that it is not manufactured by him or his agent. The onus is then thrown upon the defendant. (Z. R., 6 Ch. 239 ; 25 L. T. Rep., N. S. 18§.) Imterrogatariea and Discovery. 1123. SWINBOENE V. NELSOlf. [185.3] The plaintiff's right to discovery and to produQtion rest on th© sa-me principle. A. defendaiit who submits to answer must answer fully ; he pannot by denial of the plaintiff's title escape answering. Discovery of title deeds and of professional communications forms an exception. The plaintiff and defendant had both patents for making gelatine. The plaintiff instituted his smt for redress against g,n alleged infringement of his patent, and the bill contained seairching questions, requiring the defendant to set forth aU the articles manufa.ctured by him, the names and addresses of his customers, the pripes a»d the profits, &c. The defendant denied all infringement. He said he had made his articles according to his own and not according to the pjaiintiff's patent, and he declined to give an account of such articles ; — Held, that, notwithstanding his denial, he was bound to do so. Dissent from the doctrine laid down in Adams v. Fisher, 3 M. & C. 526. (16 Beav. 416.) 1124. De la Ede v. Dickinson. [1857] When a defendant by his answer denies the fact of infringe- ment, he is protected from making any discovery immaterial to that question, and which when that question is decided -would be given under the decree. And it is not necessary to set up a defence of this nature by plea. (3 K. §• J. 388.) Interrogatories and Discovery. Aoo 1125. Howe «. M'Keenan. [1862] The plaintiff complained that the defendant had sold, under the plaintiff's name, sewing-machines which had not been manufactured by him, and he sought a discovery of aU the machines sold by the defendant, the price, the profit, the names of the purchasers and other particulars. The defendant refused to answer, saying that he would thereby disclose the names of his customers and the secrets of his trade : — Held, that he was bound to answer. (30 Beav, 547.) 1 1 26. FoxwELL w. Webster. [1863] The defendant will not be excused from answering ftiUy, and at once, on the ground that the validity of the patent will require to be established by an issue. When separate bills have been filed against numerous defendants, the plaintiff is entitled to a separate answer from each defendant. (3 N. R. 103.) 1127. Ckosslet ?). Stewaet. [1863] In a suit to restrain infi:'ingement the defendants were re- quired to set out the names and addresses of all persons fi-om whom they had received sums of money for the use of articles alleged to be manufactured in infringement of the plaintiff's rights, even though such persons might reside abroad. {\ N. R. 426.) 1128. Eenaed «. Levinstein. [1864] In a suit to restrain the infringement of a patent foi* making dyes in a particular manner, the defendant denied that his process was an infringement, and alleged that his process was secret, and that his trade depended on keeping it secret : — Held, that he was bound to answer whether he used the materials mentioned in the specification, and whether he used any addi- tional materials ; but he was not bound to disclose the propor- tions iia which he used the specified materials, or what the additional materials were. (3 N. R. 665 ; 10 L. T. Rep., N. S. '94. ) 456 SUIT IN EQUITY: 1129. Daw u. Eley. [1865] Where the novelty of the invention is denied by the answer, the plaintiff has no right to a discovery of the particulars on which the defendant relies as showing a user of the thing patented prior to the date of the patent. (2 H. §• M. 725.) 1130. BoviLLt). Smith. [1866] In a suit to restrain an infringement of a patent which is contested on the ground of anticipation by prior user, the plaintiff is not entitled to discovery from the defendant in answer to a general interrogatory as to the instances of prior user on which he relies. (^L. R., 2 Eq. 459.) 1131. Hoffmann 7J. PosTiLL. [1869] In answering interrogatories filed by a defendant for the examination of the plaintiff, the general rule applies that he who is bound to answer must answer full3^ Interrogatories for the examination of a plaintiff are on a different footing from those for the examination of a defendant in this respect, that a plaintiff is not entitled to discovery of the defendant's case ; but a defendant may ask any questions tending to destroy the plaintiff's claim. A defendant in a suit for infiringement of a patent, in order to prove that there was no novelty in the plaintiff's patent, interrogated the plaintiff as to the inventions described in the specifications of previous patents, and asked him to show in what respect they differed from his. The plaintiff declined to answer these interrogatories on the ground that the questions were not questions of fact, and that they related to the plain- tiff's case ; the defendant excepted to the answer, and the exceptions were allowed. The plaintiff was required by interrogatories to set out a correspondence between himself and a third party, and also to state the particulars of the infringement of his patent on which he relied. He refused to answer these questions on the ground that the defendant might obtain an order in chambers to inspect Insijection. 457 the correspondence, and that he had sufSSciently set out the particulars of the infringement in his bill : — Held, that these answers were sufficient. {L. R., 4 Ch. 673 ; 17 W. R. 901 ; 20 L. T. Rep., N. S. 893.) 1132. MuKRAYw. Clayton, ^'xjsarfe the Plaintiff: Ex parte the Defendants. [1872] An injunction having been granted to restrain the infringe- ment of a patent, with an inquiry as to damages, an order was made in chambers for an affidavit by the defendants as to the number of the patented machines sold by them, and the names and addresses of the purchasers and of the agents concerned in the transactions. They gave the number of the machines sold, but not the names of the purchasers. On an application by the plaintiff to consider the sufficiency of the affidavit, and another by the defendants to strike out of the order the words they objected to answer, unless the plaintiffs would undertake not to take proceedings against the purchasers : — Held, that the plaintiff was entitled to have discovery of the names and addresses of the purchasers, but not of the agents concerned, there being nothing to show that any agents had been employed. (42 L. J., Ch. 191 ; L. R., 15 Eq. 115.) Inspection. « 1133. BOTILL V. MOOEE. [1815] Lord Eldon : " There is no use in this court du-ecting atl action to be brought if it does not possess the power to have the action properly tried. The plaintiff has a patent for a. machine used in making bobbin lace. The defendant is a manufacturer of that article, and, as the plaintiff alleges, he is making it with a machine constructed upon the principle of the machine protected by the plaintiff's patent. Now the manu- factory of the defendant is carried on in secret. The machine which the defendant uses to make bobbin lace, and which the plaintiff alleges to be a piracy of his invention, is in the 458 SUIT IN EQUITY: defendant's own possession, and no one can have access to it without his permission. The evidence 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 obviously in a great measure conjecture. No court can be content with evidence of this description. There must be an order that plaintiff's witnesses shall be permitted, before the trial of the action, to inspect the defendant's machine, and. to see it work." (2 Coop. C. C. 56 (w.).) 1134. Brown 17. MooEE. [1816] Lord Eldon, referring to this case in Kynaston v. The East India Company, said : " I remember a case, where, on a sug- gestion that a machine used by the defendant was an infringe- ment of a patent, the court ordered the defendant to allow an entry into his premises for the purpose of ascertaining by inspection whether tiie machine was an infringement." (3 Swan. 264.) 1 135. EussELL V. Cowley. [1832] The court not only ordered that the plaintiff's witnesses should inspect the defendant's machinery at work, but that the defendant's witnesses should inspect the plaintiff's patented machinery at work pending an action for infringement, the object of the court being, to enable the parties to give the best evidence as to whether the defendant had been guilty of infiinge- ment or not. (1 Web. P. C. 458.) 1136. Morgan w. Seaward. [1835] The defendant was ordered to permit, after reasonable notice, an inspection of machinery made, or to be made, in pursuance of a certain contract. (1 Web. P. C. 169.) 1137. Russell u. Crichton. [1837] On motion by plaintiff for an order to inspect defender's works, the defender alleged that his manufacture involved a Inspection. 459 secret process, the value of wliicli would be lost, if inspection was allowed :— Held, that some inspection must be allowed, or else any patent might be infringed with impunity ; and order pronounced for giving inspection of the works and manufacture of both parties, to certain viewers, at the sight of the sheriff, and for exhibiting the works in actual operation, so as to enable the viewers to give evidence at the approaching trial; the viewers being warned not to use any private information which they might acquire through that inspection, except for the purpose of so giving evidence. (15 Dec, of Crt of Sess, 1270.) 1138. Patent Type Founding Company v. "Waltee. [1860] The plaintiffs were owners of a type founding patent. The defendant was a printer, who used types alleged to be colourable imitations of the type patented by the plaintiff. On a bill for injunction: — Held, that the court had jurisdiction on motion to order the defendant to deliver a sample of type to the plaintiffs for analysis, and order accordingly. Held, also, that laches sufficient to defeat the plaintiff's right to an interlocutory injunction was no bar to an order on the same motion for inspection and samples. {John. 727 ; 8 W. B. 353). 1139. Davenport t>. Jepson. [1862] Ordered that the plaintiffs and the defendant, Henry Jepson, by their solicitors and scientific witnesses, be at liberty, from time to time, upon giving three days' notice of their intention go to do, mutually to inspect the machines heretofore used by the plaintiffs and the said defendant in the manufacture of chenille, and that the same machines be put to work upon such in- spection, and that the plaintiffs and the said defendant, by their said witnesses and solicitors, be at liberty to take samples of the cheniUe made or to be made upon the said machines. And further ordered that the plaintiffs, by their solicitors and witnesses as aforesaid, be at liberty, upon the like notice, to 460 SUIT IN EQUITY: inspect the machines or exhibits marked, &c., produced by the said defendant, and referred to as exhibits in certain affidavits filed, &c., and to put the last-mentioned machines to work and to take samples of the produce thereof. (1 N. R. 307.) 1140. Needham u. OxLEY. [1863] Where a patent for a combination of machinery only has been infringed, the coiirt will not order the defendant's machines to be broken up, but wiU order them to be marked. (11 fV. R.852; 2 N. R. 388.) 1141. The Singek Sewing Machine Company v. Wilson. [1865] Where the defendant deals in machines which are, as is alleged by the plaintiff, an infringement of his patent, the defendant wiU not be ordered, in a suit in respect of such infringement, to allow the plaintiff to inspect all the machines in his stock ; but he will be directed to verify on affidavit the several kinds of machines that he has sold or exposed for sale, and to produce one machine of each class for inspection. It is a matter of course to grant inspection where a prima facie case has been made out. (5 N. R. 505 ; 12 L. T. Rep., N. S. 140.) 1142. PiGGOTT V. The Anglo-American Telegraph Company. [1868] Inspection refused where it would have disclosed important trade secrets, and, from the nature of the case, the plaintiff could have no difficulty in proving the nature of the alleged infringement used by the defendants. (19 i. T. Rep., N. S. 46.) Giffard, V.-C, said : " Of late years greater readiness has been shown by the equity courts to allow inspection in patent cases than by the courts of common law. But it has never been considered as a matter of right, nor have the equity courts considered themselves as precluded from exercising a proper discretion in applications of this description. The com"t ought Injunction. 461 to be satisfied of two things : that there really is a case to be tried at the hearing of the cause ; and that the inspection asked for is of material importance to the plaintiflf's case, as made out by his evidence." {lb.) 1143. Neilson v. Betts. H. L. [1871] Where, as in ordinary cases, the duty of establishing that the thing patented has been pirated lies on the patentee, courts of equity grant limited orders of inspection for the purpose of enabling him to discharge that duty. Such orders cannot be granted where the piracy alleged has taken place abroad. {L. R., 5 H. L. 1.) Injunction — Validity of Patent — Uninterrupted Enjoyment. 1144. Hicks r. Kaincock. [1783] Demurrer to a bill, for an injunction to stay the infringement of a patent right, that the plaintiff had not established his right at law, overruled. (2 Dick. 647.) 1145. BouLTON V. Bull. [1796] Injunction granted, where patentee had been in possession for twenty-seven years, that the question as to the validity of the patent might be tried. There was a verdict for the plaintiff, subject to the opinion of the court upon a case stated. The court was equally divided in opinion as to the validity of the patent : — Held, that the injunction should be continued until another action was brought. (3 Ves. 140.) 1146. The Universities of Oxford and Cambridge v. Richardson. [1802] Injunction granted or continued to the hearing, though the patentee's legal title be doubtful. 462 SUIT IN EQUITY: Lord Eldon said : " It is tlien said, in cases of this sort the universal rule is, that, if the title is not clear at law, the court will not grant or sustain an injunction, until it is made clear at law. With all deference to Lord Mansfield, I cannot accede to that proposition so unqualified. There are many instances in my own memory, in which this court has granted or continued an injunction to the hearing under such circumstances. In the case of patent rights, if the party gets his patent, and puts his invention in execution, and has proceeded to a sale, that may be called possession under it;, however doubtful it may be, whether the patent can be sustained, this court has lately said, possession under a colour of title is ground enough to enjoin, and to con- tinue the injunction, tiU it shall be proved at law, that it is only colour and not real title." (6 Ves. 706.) 1147. Haemek «. Playne. [1807] Injunction granted, where the patentee had been in posses- sion under the patent for thirteen years, until the right was tried at law ; although considerable doubt existed as to the validity of the patent. (14 Fea. 130.) Lord Eldon: " The ground upon which, where doubt is excited in the mind of the court, an injunction is granted, until the legal question can be tried, a ground that was acted upon in the case of Boulton and Watt, in some cases preceding that and some that have occurred since, is this : where the Crown on behalf of the public grants letters patent, the grantee, enter- ing into a contract with the Crown, the benefit of which contract the public are to have, and the public have permitted a reason- ably long and undisputed possession under colour of the patent, the court has thought, upon the fact of that possession, proved against the public, that there is less inconvenience in granting the injunction, until the legal question can be tried, than in dissolving it at the hazard, that the grant of the Crown may in the result prove to have been valid. The question is not really between the parties upon the record ; for, unless the injunction is granted, any person might violate the patent ; arid the conse- quence would be, that the patentee must be ruined by litigation. In the case of Boulton and Watt, therefore, though a case of Ttijf.iuctiaii. 465 great doubt, upon which some of the ablest judges in West- minster Hall disagreed, yet upon the ground of the possession by the patentee against all mankind, the injunction was granted, untU the question could be tried." (J^. 131.) "I do not say a case might not exist where possession might be distinctly proved, and yet there might be such strong doubt whether the specifica- tion was not bad in law, that the court would brevi manu interfere, and put an end to the injunction." {lb. 133.) 1148. George J?. Beaumont. [1815] An injunction obtained on the grounds that the party, under pretence of treating with the patentees for a licence, had watched the process, and then practised it without a licence, will be dissolved if the validity of the patent be doubted, and an account will be Ordered to be kept of the extent to which the invention has been practised^ until the validity of the patent caii be! tried at law. (27 Bep. Art^^ 2nd Series, 252.) 1149. Hill w. Thompson. [1817] Where there has been a length of exclusive enjoyment under a patent, the court will grant an injunction in the first instance, without previously putting the party to establish his right at law. Otherwise where the patent is recent and its validity is disputed. Sometimes the court will direct the party, against whom the application is made, to keep an account pending the discontinu- ance of the injunction. (3 Mer. 622.) The injunction having been dissolved, with liberty to the plaintiff to bring an action to establish his patent right, and the defendants to keep an account in the meanwhile; a verdict having been obtained for the plaintiff on the trial of the action, on application being made to revive the injunction, it was objected that the defendants intended to move for a new trial ; and the matter was ordered to stand over till the result of that application should be known, the parties continuing to keep the account in the interim. {lb. 631.) Hill v. Wilkinson. [1817] See 1114. 464 SUIT IN EQUITY: 1150. KussELL V. Baensley. [1834] The fact of the pendency of an action against another party, is not a sufficient ground for continuing an ex parte injunction, without putting the plaintiflF to bring an action against the new defendant. (1 Web. P. C. 472.) 1161. Russell D. Cowley. [1834] Lord Lyndhurst : This court having directed a trial at law, and the jury having found for the patentee, and a motion that the verdict should be set aside and a nonsuit entered having failed, it is quite of course that an injunction should be issued until the hearing of the cause. (2 Coop. C. C. 59 (w.).) 1152. MoEGAN «;. Seawaed. [1835] Where the plaintiff is assignee of the patent the court may, on directing a trial instead of granting an injunction, order the defendant to admit the plaintiff's title to the patent. (1 Weh. P. a 169.) 1153. Kay w. Maeshall. [1836] Lord Cottenham, L. C, said : " The equitable relief flows from the legal title, and the question is whether, upon the state- ments in the bUl, the court can take upon itself to decide that the plaintiff has no legal title. If the plaintiff, asking for equitable relief upon the ground of a legal title, states upon his bUl a title which cannot be supported at law, the defendant may take advantage of it by demurrer ; but if the plaintiff states himself to stand in the position of having so far established his title at law as to give him at least a prima, facie title, this court wUl so far give credit to such circumstance as to afford him the aid of its jurisdiction until the suit shall be in such a state as to call upon the court for a decision, or to direct such proceedings as may be necessary to complete the investigation of the right at law. ... If a plaintiff comes here for equitable relief, after he has established his right at law against the defendant, the court will not withhold its assistance because it may doubt or disapprove the decision at law." (2 Web. P. C. 42.) Injunction, 465 1 1 64. LUKIE W. ROBSON. [1837] An ex parte injunction having been obtained, and suffered to go undisturbed for two years, and the specification appearing free from obscurity and the evidence of novelty sufficient : — Held, that the court could not be doing wrong in upholding the injunction. (9 Rep. Arts, N. S. 55.) 1155. BiCKFOED V. Skewes. [1838] Shadwell, V.-C. : " Whatever may be the objection to the specification, this court is bound to look to the fact that there has been an enjoyment under the patent, as a sort of practical answer to the theoretical objection." Interlocutory injunction granted after enjoyment for six years. His Lordship, how- ever, said : " I admit that if you were to say six years are sufficient, you may, by cutting off successive portions, reduce the six years to nothing. But I have nothing to do with any other case than the case before me." (1 Web. P. C. 213.) 1156. CoLLAED «. Allison. [1839] Although a patent is of long standing, yet if, fi-om the nature of the alleged invention, or the conflicting evidence as to its novelty, its validity appears to be doubtful, or if the evidence of exclusive possession is not satisfactory, the court wiU not grant an injunction until the title has been established at law. After the patentee had obtained a verdict in an action brought to try the validity of the patent, the court refiised to grant an injunction to restrain the infringement of the patent, on the ground that a rule nisi for a new trial had been obtained and was pending in the court of law, and that the legal title of the patentee was therefore still undecided. (4 M. ^ C. 487.) 1157. Curtis «. CuTTS. [1839] Lord Cottenham : " The rule upon which the court acts in granting an injunction, where the validity of the patent alone is disputed, requires, not merely that there shall have been pos- session and enjojTnent under the patent, but such possession H. H H 466 SUIT IN EQUITY: and enjoyment must have been undisturbed and exclusive." (2 Coop. C. C. 60 {n.).) 1158. BiCKFOED V. Skewes. [1839] When the court has interfered, in aid of a legal right, by granting an injunction upon the terms of the plaintiffs bringing an action, it will deprive the plaintiif of the injunction if he does not commence and proceed with his action with due promptness ; but it will not do this if the defendant has been supine in the cause. (4 My. §• Cr. 498; 8 L. J., Ch. 188.) 1 1 59. Neilson v. HAEroED. [1841] Where the plaintiff is directed to proceed at law, in order to try the vaUdity of his patent, and obtains judgment, an injunc- tion is allowed almost as a matter of course, (1 Weh, P. C, 373.) 1160, Neilson w. FoEMAN. [1841] The legal right of a plaintiff ought to be estabHshed beyond aU possibility of doubt before the court wiU be justified in granting an injunction, which, by stopping extensive works, wiU do a mischief to the defendant that, if the plaintiff do not succeed, can never be repaired. (2 Coop. 61 (w.).) 1161, MuNTZv, Geenpell. [1842] Per Knight Bruce, V.-C. : The patent having been worked by the plaintiff and defendant as partners, under circumstances affording a presumption that the defendant did not, during the existence of the partnership, dispute that the patent was valid, the Court of Chancery will, upon an interlocutory application for an injunction, assume that the patent is valid. (2 Coop. 61 («.).) 1163. MUNTZ ?J. FOSTEE. [1843] Upon an appeal, from an order of Bruce, V.-C, for an in- junction to restrain the infringement of a patent, Lyndhurst, Injunction. 467 L, C.J said : " The patentee has been in possession of his excki- sive privilege for several (eleven) years, and the court will not, on any suggested defect of the specification, allow the enjoy- ment of that privilege to be disturbed until the title has been decided in a court of law." (2 Web, P. C. 95.) 1163. Bridson V. M' Alpine. [1845] Motion for an injunction to restrain an infringement ordered to stand over for the plaintiff to bring an action to establish his right. The plaintiff, obtained a verdict, but the defendant tendered a bUl of exceptions, which could not be determined without some considerable delay.- Upon the motion being renewed, the court, under the circumstances, ordered it to stand over till the bill of exceptions had been disposed of. (8 Beav. 229.) 1164. DiRCKSt;. Melloe. [1845] If the defendant admit the validity of the patent, the title of the plaintiff and its infringement by him, the court will at once issue its injunction with costs. (26 Land. Jour. 268.) Hadden t>. Smith. [1847] See 1SS3. 1165. Heath V. Unwin. [1847] The plaintiff, having obtained a patent for an improved method of making steel by the application of carburet of man- ganese, brought an action against the defendant for infringing his patent by using two ingredients, which, when fused, would produce carburet of manganese. The Court of Exchequer held that the patent had not been infringed, either directly or indirectly, because the defendant was ignorant of the fact that he was using the same substance as that employed by the plaintiff. A motion for an injunction upon a bUl filed prior to the action was now opposed, on the ground that the decision of the court of law was final, and the bill ought to be dis- missed. The court considered that although the act was com- mitted unconsciously, the defendant was liable for the injiuy H H 2 468 SUIT, IN EQUITY: he had done, and consequently retained the bill, and gave liberty to the plaintiff to bring another action. (16 L. J,, Ch, 283.) 1166. The Electric Telegeaph Company v. Nott. [1847] 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 will be esta- blished ; or, the legal right not being disputed, that the acts complained of are a violation of it. There is an exception where the sole question is the validity of a patent, and there has been a user of the patent, and an exclusive enjoyment under it for a reasonable time. The court will in such a case interpose, by injunction, until the validity of the patent has been ascertained by a trial at law. But where, though the validity of the patent is not disputed, yet there is conflicting evidence upon the question of infi^ingement, the general rule applies, the court will not grant an injunction until it has been ascertained by a trial at law that there has been an infringe- ment. (2 Coop. 4l.) 1167. Stevens V. Keating. [1847] Application to restrain defendant from infringing plaintiff's patent. Shadwell, V.-C, said: " I cannot but myself think, with reference to the very language that was used by my Lord Chancellor in the case of Kay v. Marshall, that where a patent has been taken out for several years, and there has been a dealing upon it, a user of it, that it is not, at the end we will say of twelve years, to be set aside merely because speculations may be made of more or less force upon its validity as regards the language of the specification. Now I cannot but myself think, therefore, that in this case there has been such a prima facie established legality of the plaintiff's patent, that it is the duty of the court to grant the injunction; but the plaintiff, of course, must be put to bring such action as will try the validity .of the patent, and then the defendant will have the opportunity of trying the question fairly, and showing whether the specula- Injunction. 4(89 tive objections to the specification or the case of the plaintiflF shaU prevaU." (2 Web. P. C. 176.) Affirmed on appeal, Cottenham, L. C, said: "I have, in common mth other judges, of whom Lord Eldon was one, frequently expressed my opinion, that in doubtful cases great care ought to be taken by this court not to grant an injunction which is at all Kkely to prove unfounded ; because if it turns out to be unfounded, you are doing an irreparable injury to the party restrained, whereas by withholding it, you may be permitting some in- justice, but certainly not an injustice at all equal to that which you are doing by improperly granting it. That rule, however, is confined to cases where there is a serious doubt in the mind of the judge as to whether the titie to the injunction is made out or not, for if the court sees that there is a clear case for an injunction, it would be absurd to say, go to law and prove that which you have already proved here, before I grant an injunc- tion. In patent cases, however, a rule steps in which is quite consistent with the general rule to which I have just referred, and, indeed, is only an instance of the exception which a cor- rect statement of that rule must always include, viz., that long and uninterrupted possession shall be considered such prima facie evidence of title as to justify the court in protecting the patent right by an injunction until its invaHdity, if it be invalid, shall have been established- by an action at law." (2 Ph. 335 ; 2 Web. P. a 177.) 1168. Ceosskill V. EvoEY. [1848] Though a patentee has enjoyed his patent for a considerable time, and has succeeded in several actions for an infringement thereof in upholding his patent, and has obtained injunctions restraining the parties so infringing, yet, if there be a new infringement by a different party, an injunction to restrain him will not be granted till after a trial at law, however palpable the infringement by the party may be. (10 L. T. Rep. 459.) 1169. Beidson u. Benecke. [1849] The plaintiff having been put to establish his legal rihgt, succeeded on the trial, but the defendants tended a bill of 470 SUIT IN EQUITY: exceptions. An injunction was granted, under the circum- stances, before the biU of exceptions had been disposed of. (12 Beav, 1.) 1170. PiDDiNG V. Franks. [1849] Where the court directs an action, instead of granting an injunction, against the equitable assignee of a patent, it will not exact from the defendant any admission as to the validity of the patent. (1 Mac. §• G. 56.) 1171. Caldwell 17. Vanvlissengen. [1851] Injunction granted against subjects of the kingdom of Hol- land, to restrain them from using on board their ships within the dominions of England, without the licence of the plaintiffs, an invention, to the benefit of which the plaintiffs were exclu- sively entitled under the Queen's patent, the title of which had been maintained at law against several attempts to impeach it. "Where a legal right exists, the court cannot reftise to interfere for its protection, upon grounds which depend exclusively on considerations of national policy. (9 Hare, 415 ; 2\ L. J., Ch. 97; 16 Jur. 115.) Turner, V.-C. : " It is part of the duty of this court to pro- tect property pending litigation ; but when it is called upon to exercise that duty, the court 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 court therefore refuses to interfere until his right has been established at law. But in a case where there has been long enjoyment under the patent (the enjoyment of course including use), the public have had the opportunity of contesting the patent ; and the fact of their not having done so Buccessfidly 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." (9 Hare, 424.) Injunction, 471 1 1 78. BaxterV Combe. Ir. Ch. [1851] On a motion for an injunction to restrain the infringement of a patent, an order was made that the motion should stand until the plaintiff brought an action at law. There was a verdict for the plaintiff, and the defendant tendered a bill of exceptions, pending which the motion was renewed ; the court granted an injunction, the plaintiff undertaking to abide any order which the court might make, by directing an issue, or otherwise, to ascertain the damage, if any, which the defendant should sustain by obeying the order, in case the defendant should obtain judgment in the action at law. (3 Ir. Ch. R. 245.) The Right Hon. T. B. C. Smith, M. E., said : " I think it is the duty of a judge, in considering a case of this kind, to see whether the defence set up is a mere legal one, beside the merits of the case : and although he must be cautious, and take care that no injustice is ultimately done to the defendant by granting the injunction, yet he is bound, when he has, as in this case, legal authority as high as that of any judge in either country on the only question in the case — that question being merely a legal one, and altogether beside the merits — not to aUow the defendant, during the next four months, to go on making and selling these machines, and to appropriate still further to his own use the benefit and advantage of the plaintiff's invention, on the ground that the wording of the patent goes too far, and patents a principle, and is not confined to what was undoubtedly the invention of the plaintiff." {lb. 252.) 1 II'S. Brown w. KiDSTONE. [1852] The patent was not obtained for Scotland till some months after it had been obtained for England. In the interval a description of the invention had appeared in a magazine cir- culated in Scotland : — Held, that this publication created such a prima facie objection to the patentee's title, that he could not interdict parties in Scotland alleged to be using the invention without a licence. (1 S. M. §• P. 769.) 472 SUIT IN EQUITY: 1174, Newallu. Wilson. [1852] Where a patent had been in force for twelve years, and had been the subject of four suits against different persons, all of which terminated favourably to the patentee, and in two of which verdicts had been given in favour of the validity of the patent : — Held, that in a fifth case, the patentee was entitled to an injunction pending the trial of the legal right, although a fresh fact was brought forward, tending to impeach the novelty of the invention. (2 De G., M. §• G. 282.) 1 1 75. Hancock «. MouLTON. [1852] Length of time and uninterrupted enjoyment of a patent give a colour of right even where there has not been a trial at law. The court ought not to grant an injunction to restrain an injfi'ingement of a patent before a trial at law, unless the evi- dence of infringement be such that the court would on the same evidence commit the defendant for a breach of the injunction, {M. Dig. 506.) 1176. Flavell w. Haeeison. [1853] Plaintiff made kitchen ranges which he called "Flavell's Patent Kitcheners," but he had not obtained any patent. The court refused to restrain the defendant from selling ranges under the same name until the plaintiff had established his right at law. (1 W. R. 213 ; 17 Jur. 368.) 1 1 77, LisTEE «, Eastwood. [1855] Where a patentee had brought an action for damages, and at the trial an arbitration had been agreed to, upon which the arbitrator by his award had established the validity of the patent, and the patent had been again invaded ; the court, upon a bill filed for an injunction to restrain the infringement, held, that the award of the arbitrator must be considered as equiva- lent to a verdict establishing the validity of the patent, against which there had been no motion for a new trial. (26 L. T. Bep. 4.) Injunction. 473 1178. Gardner «). Beoadbent. [1856] Sir J. Stuart, V.-C, said : " If the plaintiff is in a position to support by proper evidence his title to the patent, and to prove the fact of its having been infringed, he is in every other respect, in spite of the recency of its date (1855), entitled to move in this court ex parte for an injunction There is no law of this court which prevented a patentee by the recency of his patent from applying for an injunction ex parte; and I wish it to be understood that the law of the court is that laid down by Lord Eldon in the case of The Universities of Oxford and Cambridge v. Richardson," (2 Jur., N. S. 1041.) 1179. Betts w. Menzies. [1857] "Where there is doubt as to the validity of the plaintiff's patent, but he has had eight years of undisturbed enjoyment under it, and the defendant has neglected to dispute the validity of the patent on a former occasion, when he had the opportunity of doing so, an injunction was granted, and plaintiff ordered to proceed to trial at law. (3 Jur., N. S. 357.) "Wood, V.-C. said : " "Where a person has been long in the enjoyment of a right, undisputed and undisturbed, he shall have the protection of this court in such enjoyment against an invader untU such invader shall establish his rights at law ; he shall be held to have a right to have his enjoyment protected, any disturbance of which it would be so difficult to compensate. On the other hand, it is true, it would be nearly as difficult to compensate the defendant if he be unjustly restrained." {lb.) " The law of this court is, that where the patentee has had long enjoyment, there he shall have an injunction to protect his rights until trial, even although his rights under his patent be doubtftd." {lb. 358.) 1180. Clare V. Fekgusson. [1859] BUI for an injunction to restrain the defendants from working the plaintiff's patent, dated April, 1859, for an improved kind of block for lowering boats. The defendants were employed 474 SUIT IN EQUITY: to manufacture blocks for the plaintiff, but having, as they claimed, discovered an improvement on the plaintiff's inven- tion, they requested the plaintiff to introduce such alleged improvements into his specification, and allow the defendants a share of the profits. The plaintiff having refused this the defendants applied for a patent, and claimed a right to work their invention independently of the plaintiff. Injimction granted, under the circumstances, in spite of the recent date of the plaintiff's patent. (1 Giff. 184.) Sir J. Stuart, V.-C. : " 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 other- wise, according to the nature of the case." {lb. 187.) 1181. Hills V. Evans. [1862] Lord Westbury : " It is the habit amd the rule of a Court of Equity not to grant that injunction (to restrain inMngement), at all events at the hearing, and not to make it perpetual unless the legal validity of the patent has been conclusively esta- blished." (4 De G., F. Sf J. 289.) 1183. Davenport «. Jepson. [1862] The court will, since the 25 & 26 Vict. c. 42, enter into the question of the validity of a patent on a motion for an interim injunction. The powers of the court are not limited by the above Act. (1 N. R. 173.) 1 1 83. Eenaed u. Levinstein. [1864] Lord Justice Knight Bruce : " It is necessary, to support a motion to dissolve an injunction, that there should be at least a fair prima facie case in the opinion of the judge or judges who may have to decide the matter as to the validity of the specifi- cation ; if not in every patent case, at least in one which arises upon a patent of no great age. . . . With a patent no older than the present patent is (three years), though its age is no objection to an interlocutory injunction of itself, in the present Injunction. 475 stage of tlie cause there ought to be no injunction, and upon that ground alone I am of opinion that this injunction should for the present be dissolved." Defendant to keep an account. (10 L. T. Rep., N. S. 177.) 1 1 84. DaVENPOET V. GOLDBEEG. [1865] Where the plaintiffs have had thirteen years' user of their patent, their right to which had been established, once at law and once in a Court of Chancery, the validity of the patent is sufficiently established as against an infiinger, who, in order to get rid of it, must proceed by scire facias to repeal it. (2 H. §• M. 282.) 1185. BoviLL V. GooMEE. [1866] Where the validity of a patent has not been the subject of any legal proceeding, the patentee must prove its validity at law before a Court of Equity will protect him ; but having once established its validity, then a Court of Equity will protect him against another person until that person proves its invalidity. But a defendant is not to be concluded by a trial at law, establishing the validity of the patent, to which he is no party, and is not to be driven to contest the validity of the patent by a scire facias. (35 Beav. 427). 1186. Pennv. BiBBY. [1866] After a trial before the Vice-Chancellor, without a jury, in which issues were found for the plaintiff, a motion for a new trial having been refiised by the Vice-Chancellor, and on appeal refused by the Lord Chancellor, was being taken by appeal to the House of Lords. The court declined to suspend the final order for an injunction' pending the appeal to the House of Lords. {L. R., 3 Eq. 308 ; 36 L. J., Ch. 277.) 1187. The Willcox and Gibbs Sewing Machine Co. v. Wood. [1869] The court refused to restrain the defendants from selling as the plaintiffs' sewing machines, " with the latest improvements," 476 SUIT IN EQUITY: old sewing machines manufactured and patented by the plain- tiffs Avithout such improvements.. (20 L. T. Rep., N. S. 10.) 1188. Dudgeon «. Thomson. [1874] Sir G. Jessel : " The court can grant an injunction before the hearing where the patent is an old one, and the patentee has been in long and undisturbed enjoyment of it, or where its vaUdity has been established elsewhere, and the court sees no reason to doubt the propriety of the result, or where the con- duct 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." The fact of an interdict having been granted against the defendant by the Court of Sessions in January, 1873, held to be sufficient prima facie evidence of the validity of a patent for the United Kingdom granted in 1866, to warrant the court granting an interlocutory injunction. (30 L. T. Rep,, N. S, 244.) 1189. PUMPTON V. Malcolmson. [1875] An injunction to restrain an alleged infringement wiU not be granted on an interlocutory application, unless it can be sho^wn that there has been active user of the invention, even where the patent has been in force for eight years. (44 L, J., Ch. 257.) Injunction — Infringement must he shown. 1190. Hill w. Thompson. [1817] Lord Eldon, L. C. : " The affidavits in support of the in- junction represent, that the defendants have made iron in the way mentioned in the specification. But, whether it is to be considered as a patent for extracting iron from slags or ciaders, by working and smelting, and by - the admixtui'e of certain materials, to reduce the percentage to 40 per cent., or for mixing cinders, limestone, and mine rubbish in certain propor- Injunction. 477 tions ; it should, before any injunction was granted, have been pointed but that the patent was actually infringed by so mixing the ingredients, or so reducing the percentage." (3 Mer. 625.) 1191, WOODV. COCKBBELL. [1819] Per Lord Eldon: Where there is one question whether a patent is valid, and another question whether it has been infringed, the Court of Chancery would be going a g-reat way if it took upon itself to grant an injunction. (2 Coop. 58 {n.).) 1193. Abbott I'. "Williams. [1837] A party wUl be restrained from selling an article in such a state that it may be applied by others so as to infringe a patent, though they may not be restrained from applying it themselves to a different purpose. (9 Rep. Arts, 103.) 1193. LosH V. Hague. [1837] An injunction being applied for, it is not sufficient for the defendant to admit the infringement and promise not to repeat it, the plaintiff is still entitled to an injunction. (1 Web. P. C. 200.) Beidson v. M'Alpine. [1845] See 1S13. Electeic Telegeaph Company v. Nott. [1847] See 1166. Hancock w. Moulton. [1852] See 1175. 1194. DaVENPOET U. ElCHAEDS, [1860] Where there is a prima facie case of infringement of a patent, the length of time which the patent has been enjoyed by the patentee will influence the court in granting an injunc- tion against the parties who are alleged so to have infringed upon the patentee's rights. (3 L. T. Rep., N. S. 503.) 1195. JSTeilsonw. Betts. H. L. [1871] Where an alleged piracy has taken place abroad it becomes the duty of the defendant to give .evidence of a negative 478 SUIT IN EQUITY: character to prove (in answer to the prima facie case made by the patentee) that the process used was of a different character from that which had been patented. Where that negative evidence was not given by the defendant, but positive evidence on the part of the patentee was given by one workman that he had been employed at the foreign manufactory, and there saw the capsules manufactured by a process not distinguishable from that of the patentee : — Held, that these circumstances justified the conclusion of identity of material and process, and were sufficient warrant for the grant of injunction, (i. R,, 5 H, L. 1.) 1196. BeTTS W. WiLLMOTT. [1871] In a suit to restrain the sale of a patented article, it is incum- bent on the plaintiff not only to prove the sale, but to prove that the article was not made by himself or his agents, (i. R., 6 Ch. 239; 19 W. R. 369.) Injunction — Delay and Acquiescence. 1197. LosH?;. Hague. [1837] Sir L. Shadwell, V.-C. : " On the 23rd of March, the plain- tiff received some information that there was an evasion of his patent, and some portion of time it appears was spent in making inquiries ; there was notice given distinctly on the 8 th of May. Then some further correspondence takes place, and letters between the parties ; and then a biU is filed, on the 7th of July, and the application is virtually made. I cannot but think, therefore, that the plaintiff has come in sufficient time." (1 Web. P. a 201.) 1198. Bacons. Jones. [1839] The plaintiff knew of the alleged infringement in August, 1835, but did not apply for an injunction till 1839. The court reftised to grant an injunction or to retain the bill. (4 Mi/. §" Cr. 438). Lord Cottenham, L. C, said : " It is no trifling grievance to Injunction, 479 a defendant to have a chancery suit hanging over him for four years, in which, if the court shall so determine at the hearing, he wiU have to account for all the profits he has been making during the intermediate period. Is a defendant to be subject to this annoyance without any absolute necessity, or even any proportionate advantage to his adversary, and vsdthout that adversary being able to show any reason why he did not apply at an earlier time ? It appears to me that it would be very injurious to sanction such a practice, more especially when I can find no case in which the court has thought it right to retain a bill, simply for the purpose of enabling a plaintiff to do that which these plaintiffs might have done at any time within the last foiu: years." {lb. 439.) 1199. Bkidson 17. Benecke. [1849] A special injunction, on notice, to prevent the infringement of a patent refused, on the ground of delay, notwithstanding the plaintiff's long enjoyment under the patent, and the esta- blishing of its validity in an action against another party. (12 Beav. 1.) Lord Langdale, M. E.., said : " I think that a party coming for the assistance of this court to protect a legal right, not absolutely established, against the party who is alleged to have infringed it, ought to come at an early period. I do not say, at the earliest possible period, because that would be putting an application for an injunction on notice, where all parties have an opportunity of being heard,- in the same condition as an injunc- tion ex parte, which it would not be expedient to do. The rule of this court is very strict, that you must apply in proper time." {lb. 3.) ISOO. Baxter 17. Combe. Ir. Ch. [1850] Delay in filing the bill is a ground for refusing the injunction. Where the patent was obtained in 1846, the alleged infringe- ment of it took place in 1 847, and the bill was not filed for more than two years afterwards, the injunction was refused. (1 Jr. Ch. R. 284.) 480 SUIT IN EQUITY: 1201. Hancock w. MoDLTON. [1852] A patentee is not bound to bring actions in respect of every infringement, but in order to support an injunction against an infringer, who has been permitted to go on for some time, and against whom no action has been brought, distinct, notice ought to be given to him that the patentees would seek to enforce their right. (i»/. Dig. 506.) 1 SOS. Newall «. Wilson. [1852] A patentee does not acquiesce in the infringement of his patent by omitting to proceed by scire facias to set aside a subsequent patent extending to part of his invention, unless such subsequent patent is put in practice. (2 De G,, M. §• G. 282.) 1503. Smith v. The London and South Western Rail- way Company. [1854] The owners of a patent for a peculiar mode of manufiicturing iron wheels for railway carriages, having discovered that several railway companies were violating their patent, brought an action for damages against one of such companies only, but did not in any way give notice to the other companies to dis- continue their infringements of the plaintiffe' right. In the action, the validity of the patent was disputed, and it was not decided until three years after the patent had expired, when a verdict was given for the plaintiffs, ^ith large damages. There- upon the plaintiffs filed a biU for an account of profits, and an injunction against another of the companies who had infringed their patent, complaining of acts done nine years before : — Held, that the delay was not excused by the pendency of the action, but was fatal in the plaintiffs' case. {Kay, 408.) 1504. BoviLL V. Crate. [1865] Where an interlocutory injunction to restrain infringement of a patent was moved for in a suit in which the bill was filed in July, and it appeared that the plaintiff wrote complaining Injunction. 481 of the infringement in the preceding November, and knew of the defendant's proceedings in the previous August, the injunction was refused on the ground of delay, (i. R., 1 Eq. 388.) Injunction — Expired Patents. 1205. Crosslet v. Beveelet. [1829] Injunction granted generally to restrain the sale, both before and after the term limited by the patent, of machines piratically manufactured while the patent was in force. (1 R. §• M. 166; 1 Web. P. C. 119.) 1S06. Crosslet v. The Derby Gas Light Compant. [1834] Although a patent has expired, the court wiU grant an in- junction to restrain the sale of articles manufactured in fraud of that patent previous to its expiration. (4 L. J., Ch. 25.) 1207. Price's Patent Candle Compant v. Bauwen's Patent Candle Company. [1858] On the 28th of November, 1856, the plaiatififs filed a biU for an injunction to restrain the defendants from infringing their patent. On the 10th of December the motion was heard, and ordered to stand over until the hearing, the plaintiffs to bring an action. At the hearing it appeared that the plaintiffs had obtained a verdict, and the defendants admitted that, down to the 8th of December, they had used the plaintiffs' patent process, but denied that they now had in their possession any candles or substances of which the biU sought to have an account: — Held, that, under these circumstances, the court could not grant an injunction, and consequently could not decree an account. (4 K. §• J. 727.) Sir W. Page Wood, V.-C, said : « The plaintiffs' patent is gone ; and whatever may now appear, ex post facto, to have H. II 482 SUIT IN EQUITY: been their rights when they applied for the interlocutory in»- junction, 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 at the hearing nothing towhich- the jurisdiction of equity can attach, the case is reduced to damages, and the bill must be out of court." {lb. 731.) 1208. Daw v. Elet. [1867] A. obtained, in a suit against B. for infringement, a decree by which the validity of the patent was declared, and an injunc- .tion was granted to restrain infringement. Upon motion to commit B. for breach of the injunction : — Held, that it was open to B., in answer to the motion to commit, to show that, the patent having been determined, there was no longer any order of the court in existence which he could be said to have infringed. (X. R., 3 Eq. 496 ; 36 L. J., Ch. 482.) Injunction — Rival Patentees. 1S09. Baskett u. CniraiNGHAM. [1762] Upon a bill brought by the king's printer to restrain the defendant from the publication of certain Acts of Parliament, &c., to which the patentees for printing law books were also defendants, the Court of Chancery refused to interfere between the contending parties, but left them to adjust their rights at law, and therefore only restrained the defendant from printing at any other than a patent press. (2 Eden, 137.) 1210. CoPELAND V. Webb. [1862] Where two parties have obtained patents for the same inven- tion, a Court of Chancery will not interfere by injunction, but leave them to try the legal right by scire facias, being disabled by reason of the first section of the 25 & 26 Vict. c. 42, from Injunction. 483 directing a case for tlie opinion of a court of law. Under these circumstances it was ordered that the defendant should keep an account, and that the matter should stand over till the hear- ing. (11 W, E. 134 ; I N,R. 119.) Procedure on Application for Injunction. 1211. Bacon w. Jones. [1839] In August, 1835, a patentee filed a bill to restrain an alleged injfringement of his patent, and the defendant having by his answer denied the vahdity of the patent, and also the fact of the alleged infringement, the plaintiff made no interlocutory appli- cation for an injunction, but went into evidence in support of his case, and in May, 1839, brought the cause to a hearing. The Master of the E,oUs, being of opinion that the plaiatiff, upon the evidence, had not made out a case which would have sup- ported an injunction if applied for in the interlocutory stage, refused to give him an opportunity of estabhshing his title at law by retaining his biU, with hberty to bring an action ; and dismissed the bill with costs; and the Lord Chancellor, on appeal, affirmed this decision. (4 My. §• Cr. 433.) Cottenham, L. C. : " When a party applies for the aid of the court, the application for an injunction is made either during the progress of the suit or at the hearing ; and in both cases, I apprehend, great latitude and discretion are allowed to the court ia dealing with the application. When the application is for an interlocutory injunction, several courses are open : the court may at once grant the injunction, simpliciter, 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, I apprehend, more wholesome practice in such a ease, 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, ■ 1 1 2 484 SUIT IN EQUITY: 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 courses ought to be taken must depend entirely upon the dis- cretion of the court, according to the case made." (/5. 436.) " Generally speaking, a plaintiff who brings his cause to a hearing is expected to bring it on in such a state as will enable the court to adjudicate upon it, and not in a state in which the only course open is to suspend any adjudication until the party has had an opportunity of establishing his title by proceeding before another tribunal. And I think the court would take a very improper course if it were to listen to the plaintiff who comes forward at the hearing and asks to have his title put in a train for investigation, without stating any satisfactory reason why he did not make the application at an earlier stage. When he comes forward upon an interlocutory motion the court puts the parties in the way of having their legal title investigated and ascertained; but when a plaintiff has neglected to avail himself of the opportunity thus afforded, it becomes a mere question of discretion how far the court wiU assist him at the hearing, whether it will then assist him at aU." (7&..437.) 1313. Bacon v. Spottiswoode. [1839] Where a biU is filed by a patentee for an injunction to restrain an alleged infringement of his patent, the plaintiff is not precluded from asking for an injunction at the hearing by the fact of his not having applied for it on an interlocutory motion ; but the not moving for the injunction imposes on the plaintiff, in such a case, the obligation of making out a clear and unexceptional title at the hearing ; and if he fails in that, and has not previously obtained an injunction, he wiU not be allowed to use the facts proved in the cause as evidence of a prima facie case, giving him a right to fiirther time, for the purpose of enabling him to establish more satisfactorily his legal title. A patentee brought the cause to a hearing, without having previously moved for an injunction, and, the court being of opinion that on the evidence then produced an injunction would Injunction. 485 not have been granted on an interlocutory application, refused to retain the bill to give the patentee an opportunity of esta- blishing his right at law, but dismissed it with costs. (1 Beav. 382.) 1213. Bridson v. M' Alpine. [1845] Lord Langdale, 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 esta- blished, it is within the power, as it is the duty of the court, to grant the injunction. " There are many cases in which it is not clear either that the patent is legally valid, or that it has been infringed. It de- pends on the degree of doubt which exists on these questions whether the court will 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 carefuUy considered: the right between the parties is a legal right, and being a legal right, this court, in cases where the matter is doubtful, is naturally anxious to obtain the decision of a court 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 court upon the facts, and, according to the degree of incon- venience 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 injunction simply, or it may refuse it on the terms of the party undertaking 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 deter- mined that the plaintiff must first establish his right at law, the court does not g^erally interfere with the. mode of trying the legal question, though in some instances it may require the parties to make the necessary admissions of facts to facilitate the trial. It is to be remembered that the proceeding is not like the trial of an issue, but an action in the ordinary form. 486 SUIT IN EQUITY: with whicli, generally speaking, the court will not interfere untU the legal right has been determined at law. I must, however, qualify this by saying that, in cases of overwhelming mischief, this court has authority to interfere at any time." (8 Beav. 230.) 1314. Stevens V. Keating. [1847] When the court grants an injunction, the order ought not merely to direct that an action shall forthwith be brought, with liberty to the parties to apply in case of delay, but to give such directions of its own, in the first instance, as wiU insure the speedy trial of the action. An injunction granted pending an action to be brought by the plaintiff, for the speedy trial of which special directions were given, was dissolved on the ground of the plaintiff not having duly complied with those directions. The plaintiff to keep an account. (2 Ph. 333.) 1515. The Patent Type Founding Company v. "Walteb. [1860] Sir W. Page Wood, V.-C. : " With respect to obtaining a perpetual injunction, the rule is established by Bacon v. Jones, 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 liberty to wait for the hearing, but the court requires him to place the matter in course of inr vestigation at the earliest possible period." (John. 730.) 1516. Mayeb v. Fieth. [1860] In a suit for an injunction to restrain the defendants from infringing the plaintiff's patent, and for an account, &c., the plaintiff may move to proceed with an action at law to try the right, on a proper affidavit, without previously moving for an injunction. (2 L. T. Rep., N. S. 536.) 1217. BoviLLw. GooDiEE. [1866] An objection to the validity of a patent on the ground of the expiration of a foreign patent for the same invention cannot be Injunction, 487. taken at the hearing of a suit to restrain the infringement of the patent, until it has been raised by the answer. (Z. R., 2 Eg. 195.) Feknie v. Young. H. L. [1866] See 1254. Order for Injunction. 1518. Betts v. De Vitke. [1865] See this case for form of order for a perpetual ipjunction to restrain defendants from fiirther infringement of a patent; as to costs personally against directors of a limited liability company, and as to accounts and inquiries to ascertain damages sustained by a patentee in consequence of the infriagemei5Lt of a patent. (12 L. T. Rep., N. S. 51.) 1519. MUEEAT V. CtATTON. [1872] The plaintiff was patentee of a brick-making jnachine. The defendants patented another machine, which was held by the Lords Justices, orerruling the decision of the Vice-Chanceltor, to be an infringement of the plaintiff's patent on the ground that the plaintiff's machine was entitled to protection as a new and useftil combination of well known parts. By the terms of the order the defendants were restrained fi'om selling any machines similar to those of the plaintiff and generally from imitating the plaintiff' 's invention, "or any part thereof or inaking any addition thereto or subtraction therefrom." The defendants shortly afterwards patented a new invention, in which many of the parts of the plaintiff's machine were used, but which did not present all the distinctive features of it nor exactly the same combination : — 'Held (on a motion by the plaintiff to commit the defendants for breach of the injunction), that the order for an injunction must be taken with reference to the pleadings, and the aUegatipns in the bill, and that the defendants' last patent was not within the meaning of the order,, but that,^ as there had not been strict compliance with the order in the other instawqes jarought forward against the 488 SUIT IN EQUITY: defendant, no costs could be given him. An appeal from this decision was dismissed with costs by the Lords Justices. (21 W. R. 498.) Account of Sales and Profits. 1220. Jones v. Pearce [1831] Shadwellj V.-C. : " "Where an undertaking by the defendant to keep an account wiU afford to the court ample means of doing justice to the plaintiff, should his legal right be established, the court rarely grants the interim injunction." (2 Coop. 58.) 1221. Ckossley v. The Derby Gas Light Company. [1834] Lord Brougham, L. C. : It is a principle of equity, that a party who claims a right should not lie by, and by his silence or acquiescence induce another to go on expending his money and incurring risk, and afterwards, if profit has been made, come and claim a share in that profit, without having ever been exposed to share in the losses which might have been sustained. Such delay is sufficiently explained when the conduct of the defendants has been such as to luU the plaintiff's suspicions to sleep. (1 Web. P. C. 120.) As to the practical difficulties in working out a decree, directing an account of profits made by an infringement, see the report of this case in 3 M. Sf Cr. 428. 1 222. Bacon D. Spottiswoode. [1839] A plaintiff is not entitled to any account, even though he may have a right to an injunction, when the bill alleges that the defendant has sold and used, it being the fact that he has sold for no profit, and it not appearing that he has used otherwise than by furnishing the patent article to his customers, although the defendant may have derived a collateral profit from the use of such articles by their customers, where that case is neither alleged in the bill nor proved. (1 Bead 387.) Account of Sales and Profits, 489 12S3. Haddenw, Smith. [1847] The plaintiff granted a licence to the defendant to use two patents, upon payment of certain royalties. The plaintiff after- wards put in a disclaimer as to part of his patent ; the defendant refused to continue paying the royalties, on the ground that the licence was void. The bill prayed an account of royalties under ' the licence ; and in case the defendant should dispute the plaintiff's right to payment by reason of the invalidity of the patent or otherwise, then that the defendant might be restrained from continuing to manufacture articles the subject of the patent: — Held, upon demurrer, that if the licence were void^ and the defendant was not bound to account, he ought to be restrained from acting without the authority of the plaintiff. Demurrer overruled. (17 L. J., Ch. 43.) 1224. Mitchell v. Bakkee. [1851] Where, upon the face of the affidavits, the evidence as to the validity of the patent and its infringement was distinctly contra- dictory, an injunction was reftised, but the plaintiff was directed to bring his action at law, the defendant undertaking to keep an account in the meantime. (39 Loud. Jour. 531.) 1 225. Smith v. The Loxdon and South "Western Kail^ way compant. [1854] The right to a decree in equity for an account of the profits made by the manufacture and use of articles in infringement of a patent, is incident to the right to an injunction to restrain ftiture infringements ; and where no case is made for the injunc- tion, the account will not be decreed. {Kay, 408.) Wood, V.-C, in delivering judgment, said : " The true ground of the tehef in these oases is laid down in Bailey v. Taylor (1 R. Sf M. 73), where Sir J. Leach, M. E., says ' The court has no jurisdiction to give to a plaintiff a remedy for an alleged piracy, unless he can make out that he is entitled to the equitable interposition of this court by injunction; and in such case the court will also give him an account, that his remedy here may be complete. If this court do not interfere 490 SUIT IN EQUITY: by injunction, then his remedy, as in the case of any other injury to his property, must be at law.' {lb. 15.) Unless that primary right to an injunction exists, this court has no juris- diction with reference to a mere question of damages." {lb. 408.) 1326. Peice's Patent Candle Company v. Bauwen's Patent Candle Company. [1858] The rule in patent cases, that this court cannot decree an account unless it can grant an injunction, applies, notwith- standing it may appear at the hearing that, since an interim injunction was moved for, the defendants have sold articles which, had the facts and law been then sufficiently ascertained, the court would have restrained them from selling. (4 K. §■ J. 727.) 1237. Keenot v. Potter. [1862] An agreement was entered into between K. and P. that K. should take out a patent for purifying paraffin and assign it to P.; that P. thereupon would work it for fourteen years, if it could be so long worked at a profit ; would not purify paraffin by any other process, and would pay to K. a royalty upon all purified paraffin sold. That P. would keep accurate account of all paraffin purified according to the patent, render them half- yearly and verify them. The patent was taken out, and P, commenced working upon it, but shortly afterwards abandoned the use of the process, alleging that it could not be worked at a profit, and refused to pay any royalty. K. thereupon brought an action at law for royalties, and recovered judgment. Pend- ing this action, P. gave notice to determine the agreement, because the invention could not be worked at a profit. K., after obtaining judgnient, filed his biU, asking for an account of subsequent royalties, an injunction to restrain the defendant from purifying paraffin under any other process, or, if the court should hold the agreement to have been determined, foi; relief against the defendant as an infringer of the patent: — Held, by the Lord Justice Turner, that in a case of this nature it was in the discretion of the court whether it would direct an Account of Sales and Profits. 491 account or leave the parties to their remedy at law, and that, in the present case, the account being only a part of an agreement whicli -the court could not whoUy enforce, the plaintiff ought to be left to his remedy at law. (3 De G., F. §• J. 447.) 1S28. Hills v. Evans. [1862] Where an injunction was granted to restrain an infringement, liberty was given to the plaintiff, instead of an account, to bring an action at law for damages, in lieu of an account. (8 Jur., N. S. 531.) 12S9. Edwards w. NoEMANDY. [1864] E. being owner of one-third of an American patent, assigned his interest therein to N., tlie legal owner of the other two- thirds, in consideration of receiving one-fifth of the profits to arise from sales of the invention in America, for which N. agreed to account to him, and he deprived himself of aU right to interfere in arrangements made for licensing such sales. N. was, in tbis transaction, the agent of a company who were beneficial owners of the two-thirds of the American patent, and of an EngHsh patent for the same invention, and was the ex- clusive manufacturer of the invention in England, but bound to supply his manufacture to the company only. The company granted to G. an exclusive licence for the sale of the invention in America, supplying him with machines at certain prices, higher than those at which they bought fi:om N., and receiving from Gr. one-third of the net profits arising from the American sales : — Held, 1st, that G. was not liable to account to E. for his profits ; 2nd, that the company were bound to account to E. for profits arising from the sale to G. at higher prices than were paid to N. ; 3rd, that N. was not bound to account to E. for the profits arising from the manufacture of the invention. (3 N. R. 562 ; 12 W. R. 548.) 1330. Mathees «, Geeen. [1865] Where a patent for an invention is granted to two or more persons in the usual form, each one may use the invention 492 SUIT IN EQUITY: without the consent of the others, and without accounting for the profits so made. {L. R., 1 Ch. 29.) 1231. NuNN u. D'Albuqueeque. [1865] The defendant having in ignorance infringed the plaintiflF's patent, submitted, and he offered before suit to pay the amount of profits raade, which were very trifling. At the hearing, although a perpetual injunctijOn was granted, no costs were given, and an account was granted only upon the plaintiffs request and at his perU. (34 Bern. 595.) 1 232. Eenaed «. Levinstein. [1865] It is no sufficient answer to a motion for an interlocutory injunction that the defendant has volunteered to keep an account, (2 Hem. §• M. 628.) 1233. Fox V. Dellestable. [1866] F. obtained a patent for umbrella ribs, and enjoyed it unin- terruptedly to its conclusion, with the exception of an action for damages by H., another patentee, who recovered 300/. and a manufacture and sale of the ribs by D. & D. six months before it expired. F. filed a bill and restrained D. & D., and the cause came to a hearing nine months after the expiration of the patent. Malins, V.-C. said : " I have no hesitation in concluding that although the patent has expired, if the bill was previously filed, the plaintiff is entitled to an account, if the court sees a proper case for it 5 but I am relieved fi:om so deciding on my own responsibility, inasmuch as very recently V.-C. Wood has so held ; and, even if it had not been for that case, I should have come to the same conclusion. But regard must be had to the particular circumstances of the case, and the question is whether, under the circumstances of this case, I ought to give relief. To justify me in doing so, I mtist be satisfied of the validity of the patent." (15 W. R. 149.) Damages. 493 1234. MoxoN V. Beight. [1869] A patentee agreed with a machine maker that the machine maker should make machines according to the patent and sell them, taking a certain sum upon each machine for himself, and paying to the patentee as a royalty the amount charged for the machines above that sum :— Heldj that the patentee could not maintain a suit in equity for an account against the machine maker as agent, although in one case he received a sum of money for the patentee, (i. R., 4 Ch. 292.) 1235. De Vitee v. Betts. [1873] The rule that, upon a decree against a party for the infringe- ment of a patent, the patentee is not entitled under 21 & 22 Vict. c. 27, ss. 2, 5, to have both an account of profits and an inquiry into damages, is now established, and applies to every case of infringement. The patentee must therefore elect which of the two forms of relief he will adopt. (Z. R., & H. L. Z\9; 21 W. R. 705.) Damages. 1236. Newall v. Wilson. [1852] An allegation as to the defendant's inability to be answerable in damages, held not irrelevant upon a motion for an injunc- tion against the infringement of a patent. (2 De G., M. §• G. 282.) 1237. Needham v. Oxlet. [1863] "Where a bill prays in the alternative an inquiry as to da- mages, or an account of the defendant's profits, but no issue as to damages was submitted to the jury, the court will not refer an inquiry to assess damages to chambers, but will grant the alternative. (8 L. T. Rep., N. S. 604 ; 2 N. R. 388.) 1238. Betts v. De Vitee. [1864] The jurisdiction given by the Chancery Amendment Act, 1858, to award damages when relief is sought by injunction 494 SUIT INEQUITY: against wrongful acts, extends to the case where the court had previously the power of giving some other form of remedy, as, for example, an account of profits. Since the Chancery Acts, 1858 and 1862, the question of damages wiU stiU be left to be decided by a jury where there is extreme difficulty in their assessment by the court itself. Therefore, in a suit for an injunction by a patentee who had granted no licences, the court put him to his election whether he would have an account of profits or an action for damages against the defendants ; following the form in Hills v. Evans. (11 Jur., N. S.9; 11 X. T. Rep., N. S. 533.) 1 S39. Davenport w. Etlands. [1865] The plaintiff's bill prayed for an injunction against the infringement of his patent by the defendant, for an account of profits and for damages. Afl;er the filing of the biU, but before the hearing of the cause, the patent expired. The infi:inge- ment being proved, the court held that, for the purpose of awarding damages under the act 21 & 22 Vict. c. 27, its juris- diction related back to the time of the filing of the biU. For, otherwise, the object of the statute, which was to enable a Court of Equity to give fall and complete relief to a suitor with- out recourse to a court of law, would be defeated. {L. jB., 1 Eq. 302 ; 35 L. J., Ch. 204 ; 14 L. T. Rep., N. S. 53.) Wood, V.-C, said: " The inquiry wiU be in the form, ' what damage the plaintiff has sustained,' and not ' what damage, if any,' he has sustained, as it would be in the case of 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 conse- quence of the defendant's manufacture ; but it does not neces- sarily follow that the plaintiff can claim damages for eveiy article manufactured by the defendant, even though it be under that mark. On the other hand, every sale without licence of a piatented article must be a damage to the patentee." (i. i?., 1 Eq. 308.) Damages, 495 1240. Penn v. Bibby. [1866] Where bills to restrain tlie infringement of a patent have been filed against both the person who manufactures and the person who uses the article, and issues of fact have been found for the plaintiff, it is the right of the plaintiff to have not only an account against the manufacturer, but also damages against the person using the article, wherever it be. found. {L. R., 3 Eq. 308; 36 L. J., Ch. 277.) 1S41. Penn v. Jack. [1867] A suit was instituted to restraia the defendants from infring- ing the plaintiff's patent for an invention applicable to steam vessels. By the decree the defendants were ordered to pay to the plaintiff the damages which he had sustained by reason of the defendants' user or vending of the invention. The plaintiff had been in the habit of granting licences to use the invention at the rate of 2*. 6^. per horse-power per ship : — Held, that the compensation to which the plaintiff was entitled was a sum calculated on this basis upon the ships to which the defendants had applied the invention, and that he was not entitled to any additional sum in respect of contracts which he had missed by reason of the defendants' piracy. The plaintiff having, in another suit, obtained a decree against certain wrongful users (not being manufacturers) of unlicensed machines fitted by the defendants with the plaintiff's invention, had, in some instances, been paid his ordinary royalty by such users: — Held, that, in every such instance, no ftirther royalty was payable by the manufacturer, (i. R., 5 Eq. 81 ; 37 L. J., Ch. 136.) 1S4S. Betts «. Neilson. [1868] Damages may be awarded, although not specifically prayed by the bOl; 21 & 22 Vict. c. 27. (18 L. T. Rep., N. S. 159.) 1343. Bettsw. Gallais. [1870] The court will not entertain a bill for the mere purpose of giving relief in damages for the infringement of a patent, when 496 SUIT I^ EQUITY: the bin has been filed so immediately before the expiration of the patent as to render it impossible to have obtained an inter- locutory injunction, (i. R., 10 Eq. 392 ; 22 L. T. Rep., N. S. 841.) 1244. Neilson v. Betts. H. L. [1871] A patent having been sustained, the decree granted an in- junction against further infidngement, directed an inquiry as to damages and an account as to profits. The decree was varied by striking out, in accordance with the respondent's election, the order for the account of profits. Per Lord Westbury : The two things are hardly reconcilable, for if you take an accoimt of profits you condone the infiingement. {L. R., 5 H, L. 1.) 1245. De Vitee v. Betts. H. L. [1873] A suit had been instituted by a patentee to restrain the defendants fi-om infiinging his patent, and asking for an account of profits made by the defendants by sale or manufacture of the material which formed the subject of the patent. The validity of the patent and the fact of infringement by the defendants had been decided in the plaintiff's favour by the court without a jury. The plain tifif asked, at bar, for damages or for an account of profits of which he had been deprived by reason of such infringement. The court below directed an account of profits made by the defendants by the use and exercise of the plaintiff's invention, and an inquiry what sum ought to be paid by the defendants in respect of damage sustained by the plaintiff by the defendants' use and exercise of the plaintiff's invention. The Lord Chancellor, on appeal to the House of Lords, said : " The case of Neil son v. Betts most undoubtedly decided the general principle that, upon a decree against a party for the infiringement of a patent, the patentee is not entitled both to an account of profits and an inquiry into damages. That principle applies generally and without any distinction at aU. It applies to every case of infringement ; and, therefore, it must be taken to have settled conclusively that point, that the patentee must, in all these cases where he has a decree, elect whether he will Trial of Questions of Law and Fact, 497 liave an account of profits or an inquiry into damages. He cannot have .both." Decree varied accordingly. {L. R,, 6 H. L. 321.) Trial of Questions of Law and Fact, 1246. Spencer w. Jack. [1862] In a suit instituted to restrain an infringement, an issue was directed, as to the novelty of the plaintiff's " invention." On the defendant's motion, for this issue was substituted one, as to the novelty of the plaintiff's " invention or manufacture." On appeal it was directed, that the question of novelty should be tried on two separate and distinct issues ; one, as to whether the plaintiff's improvements constituted a new invention; the other, whether it constituted a new manufacture, (3 De G., J. §• S, 346.) 1347. Davenpoet w. Jepson. [1862] The effect of the 25 & 26 Vict. c. 42, is, not to limit the power of a Court of Chancery, nor to affect its procedure, but to pro- hibit it from sending cases to be tried by a Court of Common Law. Consequently a defendant is entitled, to have the question of the validity of the patent raised, even on an interlocutory motion. (1 N. JR. 173.) 1348. Needham?;. OxLEY. [1863] On the trial of issues in a patent case, the court will allow an issue to go to the jury, for the purpose of raising, as a question of fact, the point whether there is a substantial variance as between the complete and the provisional specification. (8 L, T. Rep., N. S. 532.) 1349. Young w. Feenie. [1863] In order to bring a case within the proviso contained in the 25 & 26 Vict. c. 42, s. 2, authorizing the Court of Chancery, notwithstanding the act, whenever it shall appear that a question H. K K 498 SUIT IN EQUITY: of fact may be more conveniently tried by a jury at the assizes, or at any sitting in London or Middlesex for the trial of issues in the Superior Courts of Common Law, to direct such trial, the Court of Chancery must be satisfied that the administration of justice in the particular case may be more conveniently exer- cised and promoted by directing such issues, than by completing the hearing and the inquiry before itself. (1 De G,, J. ^ S. 353; 9 L. T. Rep., N. S. 590.) Lord Westbury said : " In a patent case particularly, and in this case, having regard to the nature of the questions raised, I do not think that anything more inconvenient can be suggested than that, where there are mixed questions of law and fact, the one bound up with the other and scarcely capable of being sepa- rated, an attempt should be made to cut the cause in halves and to send one half of it to be tried by a jury in a Court of Common Law, reserving the other half for determination in this court," (1 De G., J. 8f S. 355.) 1550. CuETisi^. Platt. [1864] The practice introduced into Chancery of having separate issues is not peremptory, and must be regarded as nothing more than a convenient mode of arranging the questions to be decided by the court. (11 L. T. Rep., N. 8. 250.) 1551. Penn v. Jack. [1866] Upon the trial of issues in a patent case the plaintiff is entitled to call evidence in reply, for the purpose of rebutting a case of prior user set up by the defendant. But after the evidence for the defence has been summed up, the defendant will not be allowed to adduce further evidence in answer to that given' by the plaintiff in reply. (L, R., 2 Eq. 314 ; 14 L. T. Rep., N. S. 495.) 1S5S. Morgan v. Pdllek. [1866] A defendant will not be allowed to add a totally new issue of fact not in any way suggested by his answer to the issues which have been already directed for trial. Trial of Questions of Law and Fact, 499 In order to raise such new issue tlie defendant must file a supplemental answer. {L. B,, 2 Eq. 296.) 1S53. BoviLL V. GooDiER. [1866] After a patentee had established his patent as against one person at law, he instituted proceedings for an infringement against another in equity. The court granted the defendant an issue as to the novelty of the invention, but refused it as to the utility of the invention and the sufficiency of the specification, holding that the utility was not. contested, or had been proved in the suit, and that the sufficiency of the specification had been already decided in the action at law, a decision in which this court, so far as it was matter of law not depending on the novelty of the invention, concurred. (Z. R., 2 Eq, 195; 35 Beav. 427.) 1254. Feeniew. YouNa, H. L. [1866] Lord Westbury : " In the procedure of Chancery, according to the old practice, these rules were established. If, in the evidence given before the court, or in the proceedings before the court, there arose a considerable controversy upon a ques- tion of fact, it was usual for the Court of Chancery to direct an issue to be tried before a jury at common law, for the pur- pose of informing itself in what manner that question of fact ought to be answered ; but when the proceedings before the Court of Chancery involved a mixed question of law and fact, then it did not direct an issue, but it directed an action, or it retained the bill in order that an action might be brought, fi3r the purpose of having the assistance of a court of law both upon the question of fact by means of a jury and upon the question of law by means of the court. A third description of cases was this, namely, where rehef was sought in equity founded entirely upon a legal title, and then, where the legal title had not been established by the decision of a court of law, it was the habit of the Court of Chancery to direct the biU to be retained, with liberty to the plaintifi" to bring an action to establish his title ; and such in the case of a bill brought by a kk2 300 SUIT IN EQUITY: patentee for relief in a Court of Chancery was tlie settled rule of procedure, with the exception perhaps , only of cases where the patent was of such age and had been so generally recognized and submitted to by the world that the Court of Chancery did not require that its legal vahdity should first be established. " Now, in that state of things it occurred to all men desirous of amending the law and removing the inconvenience conse- quent upon that necessity of a double procedure, that it would be desirable to make the Court of Chancery self-sufficient, and enable itself to try, by the aid of a jury, and by the oral exami- nation of witnesses, aU questions arising before it both of law and of fact. Accordingly, by the Chancery Amendment Act, 1858, in the 3rd section, power was given to the court to direct any question of fact to be tried by a jury before itself; and then, in another section, the court was empowered to dispense with the jury and itself to try the question of fact. This power given to the court was converted into an obligation by the Act of 1862, and extended to questions of law as well as to ques- tions of fact. It is quite clear, therefore, that the procedure to be adopted under these statutes would, in the case of a patent, be analogous to, and altogether usurp the place of, the old mode of procedure which would have been adopted under the former practice. The legislature was extremely desirous of preserving and giving to the mode of procedure which it thus directed, the same legal effect that would have been given to the old procedure under an issue at law or an action at law. This desire has been emphatically expressed by the legislature in the words of the 5th section, in which it directs 'that the verdict of a judge shall be of the same effect as the verdict of a jury under this act,'" (i. R., 1 H, L. 78.) 1265. Hoffmann v. Postill. [1868] V.-C. GifFard intimated that in future he should treat the hearing of issues in patent cases as the hearing of the cause, and would not advance them before the cases in the paper, except upon a special case made, (19 L. T. Rep., N. S. 276,) Right to a Jury. 501 1256. Henderson v. Euncoen Soap and Alkali Com- pany. [1868] A trial of issues will not be granted at the request of tHe defendant when opposed by the plaintiff. (19 i. T. Rep., N. S. 277.) 1357. Arnold w. Beadbury. [1871] The usual issues may be granted in a patent suit before the hearing of the cause, although the defendant denies the validity of the patent, (i. R., 6 Ch. 706, reversing the decision of the V.-C, 24 L. T. Rep., N. S. 613.) Right to a Jury. 1358. Needham w. OxLEY. [1863] When questions of fact are determined by a special jury before the Court of Chancery itseU^ it is not necessary to certily, under 21 & 22 Vict. c. 27, for the special jury. (2 N. R. 388; 8 L. T. Rep., N. S. 604.) 1359. Davenport ij. GrOLDBEEG. [1865] The defendant in a suit to restrain the infringement of a patent has no right to have the issues of fact referred to a jm:y ex debito justiticB ; and where the issues raised have been already determined, such reference will in general be refused. But if it appear that there is a really doubtful question at issue, the court will not decide it for itself, if either party desire a jury. (2 Hem. §• M. 282.) 1360. Tangye v. Stott. [1865] Where the plaintiff's counsel in his opening made charges which were not raised by the pleadings, and the defendant's counsel thereupon asked for a jury, the application was acceded to, and the cause ordered to stand over. (14 W. R. 128.) 502 SUIT IN EQUITY: 1S61. BoviLL V. Hitchcock. [1868] The defendant to a biU for an injunction to protect a legal riglit cannot ex debito justitice require to haye such right tried by a jury; for the court, before the statutes 21 & 22 Vict. c. 27, and 25 & 26 Vict. c. 42, sent such cases to be tried at law, not in order that they might be tried by a jury, but because the court, having no jurisdiction to try a legal right, required to have the judgment of a court of common hiw upon it. (i. R., 3 Ch. 417.) 1263. Patent Maeine Inventions Company v. Chadbuen. [1873] In the absence of special circumstances the ordinary issues in a patent suit will be tried before the court itself without a jury. {L. B., 16 Eq. 447; 21 W. R. 745; 28 L. T. Rep., N. S. 614.) Particulars of Breaches. 1363. Needham w. Oxley. [1863] Particulars of breaches delivered with a view to a jury ti-ial of a patent case are sufficient, if, taken together with the plead- ings, they give the defendant fuU and fair notice of the case to be made against him. (\ H. &^ M. 248.) Sir W. Page Wood, V.-C, said: " The object of having these particulars delivered, is to give the defendant fair notice of what the complaint against him is, not to tie the plaintiffs down to the precise terms of any verbal definition, or to make the trial of the issue turn upon a point of form. Full and fair notice the defendant is entitled to ; but I should be very sorry to introduce anything like special pleading into the practice of this court, or to allow verbal criticism to interfere with a deter- mination of the merits of the contest." {lb. 51.) 1364. Curtis v. Platt. H. L. [1866] The plaintiffs are bound by the particulars of breaches delivered. The principle of the 41st section of the Patent Law Particulars of Objectiun. 503 Amendment Act, 1852, is applicable to trials in chancery, in which particulars of breaches are ordered, as well as to trials at common law. (35 L J., Ch. 852.) 1265. Batley v. Kynock. [1874] Although, upon the trial of questions in a patent suit, the plaintiff's particulars of breaches should give the defendant full, fair and distinct notice of the case intended to be made against him, it is not necessary, in the case of an alleged infringement of a patent for improvements in a particular article {e.g., car- tridges), for the particulars to point out the precise portions of the specification alleged to have been infringed when the thing alleged to be an infringement has been made an exhibit. {L. JR., 19 i:q. 229.) See also Action for Infringement — Particulars of Breaches, Particulars of Objection. 1266. Curtis 17. Platt. [1863] The principle upon which the court proceeds in regulating the form of particulars of objections on the trial of a patent case, is to guard against a surprise upon a plaintiff by produc- tion on the trial of evidence of prior user or publication of which he has no notice. Therefore it wOl require the defen- dant, in stating those instances on which he intends to rely, to put the plaintiff in possession of all he himself Imows, so far as to enable him to identify the instances alleged. (8 L. T. Rep., N. 8. 657.) 1267. Eenard v. Levinstein. [1864] On the trial of a suit in equity to restrain the infringement of a patent, the court, sitting without a jury, will not use the same strictness in matters of pleading as would be necessary in a trial before a jury ; but will follow that course of procedure which it deems best in order to diminish the expense, and hasten the determination of the suit. Therefore, although a de- 504 SUIT IN EQUITY: iendant gave no notice of objection to the patent on the ground of prior publication up to the time of proving the cause, and only gave notice of such objection after the plaintiff's case was closed and the defendant's had been opened, the court then allowed a motion by the latter to amend his particulars of objection by an allegation of prior publication in a given docu- ment. Costs of motion and extra costs thereby incurred to be paid by the defendant in any event. (Hi. T. Rep., N. S. 505; 13 PT. R. 229.) 1268. Daw «. Eley, [1865] The defendant will not be allowed, in the course of the hear- ing before the court without a jury, to introduce evidence of a prior user not disclosed by the particulars of objection, although such evidence may have only come to his knowledge since the delivery of the particulars of objection. Semble, that the court will give the defendant leaive, on short notice of motion, to amend his particulars of objection, so as to introduce such newly discovered evidence. {L. R., 1 Eq. 38.) 1569. BoviLL «;. GOODIEE. [1865] The defendant will not be required to deliver particulars of his objections to the patent, where replication has been filed and the court has refused to direct issues. {L. R., 1 Eq. 35 ; 35 L. J., Ch. 174 ; 35 Beav. 264.) 1570. Daw v. Eley. [1865] A plaintiff in a patent case, where the novelty of the inven- tion is denied by the answer, has no right to a discovery of the particulai'S on which the defendant relies as showing a user of the thing patented prior to the date of the patent. (2 Hem. §- M. 725.) 1271. Morgan v. Fuller. [1866] In a suit to restrain the infringement of a patent for im^ provements in the construction of carriages, the alleged inven- Particulars of Objection. 505 tion cousisting of a particular mode of opening and closing the heads of carriages, particulars of objections stating that head-joints similar to those used in the plaintiff's alleged invention had been, before the date of the patent, commonly used by carriage builders generally throughout Great Britain, and that head-joints, similar to those described in the specifica- tion, had been actuated in their motions in the way described, before the date of the patent, by various carriage builders in or near London, Liverpool, Manchester and Southampton, and various other of the principal towns of Great Britain, were held insufficient. Semble, that where the objection points to the public use of a particular preparation, the words " by various makers in or near London," might be sufficient. Semble, also, if the defendant could not give the names of the carriage builders in or near London, 8fc., he would be required to specify the class or classes of carriages with respect to which the alleged prior user had taken place, and that might have been held sufficient. (L. R., 2 Eq. 297.) 1273. BoviLL V. Smith. [1866] In a suit to restrain an infringement of a patent which is contested on the ground of anticipation by prior use, the plaintiff is not entitled to discovery from the defendant in answer to a general interrogatory as to the instances of prior user on which he relies. (Z. R., 2 Eq. 459.) 1S73. Pennj;. BiBBY. [1866] Particulars of objections filed by a defendant were ordered to be amended by the insertion of words specifying " the per- sons by whom^ the places where, the dates at, and the manner in which," there had been the alleged user prior to the date of the plaintiff's patent. In complying with this order, the defendant was permitted, in his amended particulars, to preface his statement of the specific instances of alleged prior user with the words " amongst other instances," in order to give him an opportunity of apply- 506 SUIT IN EQUITY: ing for leave to re-amend by inserting any further instances of prior user which he might discover. (L. R., 1 Eq. 548.) 1S74. BoviLL V. GooDiEE. [1867] The object in directing issues to be tried at law is to ascer- tain the real state of the facts; and therefore the court in a patent case will allow further particulars of prior user of the invention to be brought forward on proper notice. (36 L. J., Ch. 360.) Evidence. 1275. The Singer Sewing Machine Company «. Wilson. [1865]. The provisions made for the taldng of evidence by the General Orders of the 5th February, 1861, are not to be taken as altering the rules of procedure laid down by the 15 & 16 Vict. c. 86, except where the alteration is express. The former are, where not inconsistent with them, supplementary to the latter ; therefore, although the time for cross-examination of a deponent given by Eule 19 had elapsed, the opposite party were still at liberty to compel him to attend and answer by the mode prescribed in sect. 40. (11 L. T. Rep., N. S. 670.) Penn V.Jack. [1866] See 1S51. 1276. PoTJPARD w. Faedell. [1869] Where a defendant to a suit in which replication is filed has given evidence of instances of prior user not mentioned in his answer, and leave has been granted to the plaintiff to adduce fresh evidence to disprove these instances, the defendant will not necessarily be entitled to bring further evidence to rebut the fresh evidence so adduced by the plaintiff. (18 W. R. 59.) New Trial 507 New Trial. 1577. Fernie v. Young. H. L. [1866] Where a Court of Chancery has directed an issue to try a question of fact, before a jury, or before a judge without a jury, and a verdict has been found by the jury or the judge, it will not enter into the question of fact and set aside the verdict without a motion for a new trial or for judgment non obstante veredicto. {L. R., 1 H. L. 80.) If one party enrols a decree before the time for a new trial expires, the other party is not thereby prevented from moving for a new trial. {lb. 64.) 1578. Simpson v. Holliday. H. L. [1866] The Court of Appeal in Chancery has not, under the 21 & 22 Vict. c. 27, power, on an application for a new trial, to reverse the findings of a Vice-Chancellor on issues of fact tried before him, but, where the issues raise mixed questions of law and fact, if the decision of one of the questions discussed is sufficient to dispose of the case, the Court of Appeal may give a final judgment upon it, without ordering a new trial. {L. R., 1 H. L. 315.) 1279. CuBTiSD. Platt. H. L. [1866] The 3rd section of the 21 & 22 Vict. c. 27 (Chancery Amend- ment Act, 1858), does not, by reference to proceedings at common law, impose limits upon the right of appeal previously existing against any order made in the Court of Chancery. Where, therefore, an order had been made in the Court of Chancery by a Vice-Chancellor, on his own findings, upon a trial without a jury, and that order had been confirmed by the Lord Chancellor on appeal : — Held, that the order of the Lord Chancellor was the subject of appeal to the House of Lords. {L. R., 1 H. L. 337.) 508 -SUIT IN EQUITY : 1380. Penn v. Bibby; Penn v. Jack, [1866] In dealing with the finding of the court below, upon questions of fact, under the jurisdiction given by the Chancery Amend- ment Act, 18.58, the court of appeal is 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 ; consequently, the court will not consider whether the finding was proper, but merely whether there was sufficient evidence to warrant the verdict. Where the motion for a new trial is grounded on the improper rejection of evidence, the evidence ought to have been formerly tendered to the judge, of the court below, and rejected by him. (L. R., 2 Ch. 127; 36 /.. J., Ck. 455.) Consolidation of Suits. 1381. DiLLY V. DoiG. [1794] Lord Loughborough, L. C. : ''I do not remember any case upon patent rights, in which a number of people have been brought before the court as parties, acting all separately upon distinct grounds; it has always been against a particular de- fendant. In a case here, not long ago, upon Boulton §• Watts' Patent) there were several bills." (2 Ves.jun. 487.) 1383. FoxwELL V. Webster. [1863] One hundred and thirty-four suits were instituted against as many defendants by a patentee for infi:ingement of his patent, and interrogatories were served. Seventy-seven defendants, combining together amongst themselves so as to make four bodies in all, moved, before putting in any answer, that the plaintiff might be directed to proceed with one suit only until it should have been determined, or until the validity of the patent should have been finally determined, or imtil further order; and that the proceedings in the other suits might in the meantime be stayed, or that the time for answering and producing documents might be enlarged, the moving defendants Taking Bill Pro confesso, 509 undertaking to be bound by the result of the selected suit so far as the question of the validity of the patent was concerned. The court, upon terms, and the plaintiff not opposing, made an order with a view of trying before itself the question ol validity in the first instance, before entering upon the question of infringement. (4 Be G., J. 8f S. 77.) 1283. BoviLL V. Crate. [1865] Wood, V.-C. : " After getting information of case after case of infringement, the plaintiff might 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 aU the others who were in simili casu, 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 shaU proceed against you by way of interlocutory injunction; and if you will 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?' I do not think any court could complain of a patentee for taking the course I am suggesting." (i. E., 1 JEq. 391.) Taking Bill Pro confesso. 1S84. The Grovee and Baker Sewing Machine Company V. Millard. [1862] In a case where the defendant, who was out of the jurisdiction of the court, had not put in an answer, although the time for answering had long expired, and had never appeared to the bill, the court, on the plaintiff applying for .leave to enter an appearance in order to take the bill pro confesso, ordered that notice should be given to the defendant, that unless he put in an answer within fourteen days from the service of such notice, an appearance would be entered for him, and proceedings taken to take the bill joto confesso. (8 Jur., iV. -S. 713.) 510 SUIT IN EQUITY ; Bill of Review. 1385. Daw v. Eley. [1867] A. obtained, in a suit against B. for infringement, a decree by whicL. the validity of the patent was declared, and an injunction was granted to restrain infringement. If, upon motion to commit B. for breach of the injunction, it is shown that the patent has ceased to be of any validity at the date of decree : — Held, that the only mode of getting rid of the decree is by biU of review, showing that it was erroneous in declaring the patent to be valid and subsisting. (Z. R., 3 Eq. 509; 36 L. J., Ch. 485.) Counsel. 1386. Daw v. Eley. [1865] The practice, as to hearing counsel on the facts in issue before the court sitting as a jury, is the same as at common law, but as to the points of law arising in the same case, the ordinary practice of the court is observed. (13 L: T. Rep., N. S. 399.) Costs. Stocking w. Llewellyn. [1842] See 1117. 1387. Geabyv. Norton. [1846] The plaintiif is entitled to the costs of an injunction, although the defendant promises to commit no further act of infringe- ment. {\ DeG. ^ S. 9.) 1388. Stevens w. Keating. [1850] On a bill filed for an injunction, the plaintiff obtained the injunction on motion, the defendant appearing and opposing the motion ; the biU was subsequently dismissed with costs : — Costs. 511 Held, that the defendant was entitled to the costs of the motion which he had unsuccessfully opposed. (1 Mac. §• G, 659.) 1289. LiSTEE V. Leathek. [1858] Where the court considers the plaintiff entitled to fuH costs as between solicitor and client, the decree or order should con- tain an express direction that the costs be so taxed, notwith- standing the 43rd section of the Patent Law Aniendment Act, 1852, provides that he shall have such fidl costs, unless the judge shall certify that he ought not to have them. (4 K. 8f J. 425.) 1 890. Clark w. Fergusson. [1859] Where the bill, praying for an injunction to restrain the infringement of a patent, described the plaintiff as a lieutenant in her Majesty's ship Gladiator, now on service, the court refused to compel him to give security for costs. (1 Giff. 184.) 1S91. Betts V. Clifford. [1860] On a bill to restrain the infringement of a patent, a motion for injunction was ordered to stand over until after the trial of an action, nothing being said about costs. In the action, the plaintiff succeeded on the issue as to the infringement, but failed in establishing the validity of his patent. The biU was afterwards dismissed with costs: — Held, that the defendant's costs of the motion were costs in the cause. There must be some special circumstances, beyond the mere weight of the cause, to justify the allowance of the costs of a third counsel. Examples of such special circumstances are cases of iUness, and cases where a junior counsel is called within the bar, and it becomes necessary, according to the rules of the bar, to retain another junior ; and cases where the third counsel (of the common law bar) has been engaged in a case, the evidence and judge's notes in which form a substantive part of the plaintiff's case. (1 J. 8f H. 74.) 512 SUIT IN EQUITY: 1593. Needham w. Onley. [1863] In a suit for infringement before a court of chancery, the judge may grant a certificate, in accordance >vith 5 & 6 Will. 4, c. 83, s. 3, that the validity of the patent came in question, as upon an action in a court of common law. (8 i. T. Rep., N. S. 604 ; 2 N. R. 388.) 1 393. Renaed w. Levenstein. [1864] Where the defendant was ordered to pay costs incurred by him through amending his particulars of objections, the court refused, on the application of the plaintiflf, to put him upon the terms of given security for their payment on proof that he had a place of business in England. (11 L, T. Rep., N. S. 505 ; 13 TT. R. 229.) 1594. Betts v. De Vitee. [1864] The directors of a limited company, and acting as its agents, . infringed a patent, and were made defendants,^ together with the company, to a suit, the biU ii^ which prayed for an injunc- tion and costs : — Held, that the decree must be made against the directors as well as the company, and that the directors were personally liable to pay the costs. (11 Jur., JV, S. 9 ; 11 L. T. Rep., N. S. 533.) Sir W. Page Wood, V.-C. : " Where there is a wilful act against the rights of a patentee after he has obtained a verdict, and the certificate of a judge that his title came in question, all the world must be taken to know that that was fairly and completely tried and disposed of, and, if they infringe the patent, they infringe it, with a liability for costs, in consequence of the full right being disposed of." (11 Jur., N. S. 11.) 1595. Davenpoet w. Eylands. [1865] A patentee is entitled to costs as between solicitor and client at the discretion of the judge, under the 15 & 16 Vict. c. 83, s. 43, in any suit to protect his rights under a patent, the validity of which has been previously established, notwith- Costs. 513 standing the fact that the validity of the patent is not ques- tioned in the subsequent suit. (Z. R., 1 Eq. 302 ; 35 L. J., Ch. 204.) 1S96. ISTuNN V. D'Albuquerque. [1865] The defendant, having in ignorance infringed the plaintiff's patent, submitted, and he offered before suit to pay the amount of profits made, but did not offer to pay the plaintiff's costs. At the hearing, the court refused to give the plaintiff his costs, although a perpetual injunction was granted. (34 Beav. 595.) 1297. Penn w. BiBBY. [1866] Where, in a suit to restrain the infringement of a patent, issues are directed, and the judge certifies that the validity of the letters patent came in question, the plaintiff cannot, at the hearing of that suit, have more than party and party costs, the provisions of the 43rd section of the Patent Law Amendment Act, 1852, applying only to subsequent actions and suits. (X. R., 3 Eq. 308; 36 L. J., Ch. 277.) 1298. Penn v. Bibby. [1866] Upon leave being granted to a defendant to re-amend ob- jections by inserting certain further specified instances which had come to his knowledge, he was ordered to pay the costs of the application, and the costs arising out of and consequent upon the re-amendment were reserved. (Z. R., 1 Eq, 548.) 1299. De Vitee v. Betts. H. L. [1873] The appellants gave notice to the respondent that a decision favourable to their contention on one point of the pending appeal having been given in another case by a court of final appeal, they were prepared to withdraw from the remaining points of their appeal and pay the respondent's costs up to the date of their doing so, on condition that the respondent would consent to a variation in the order appealed from, in conformity with the decision favourable to the appellants' one contention H. L L 514 SUIT IN EQUITY. ■which had been so given during the pendency of the appeal. The appellants added,. that in the event of the respondent ren- dering it necessary to proceed with the appeal in spite of such decision they should, if successful, ask for the costs of the appeal. The respondent declined to consent to such variation : — Held, that he must pay the costs of the appeal from the date of his refusal to accede to the appellants' proposal. (21 W. R. 705.) 1300, Betts v. Cleavek. [1872] Where a leader has been employed in a suit but not retained, the costs of employing him as third counsel at the hearing will not be allowed as between party and party, although the junior counsel who drew the pleadings has, before the hearing, beeo called within the bar. A similar affidavit was filed by the plaintiff in each of several suits. The solicitor for the defendants took an office copy of the affidavit in one suit only, and examined at the Record Office the affidavits in the other suits: — Held, that he was not entitled to charge for perusing the affidavits in the other suits. (Z. R., 7 Ch. 513.) ADDENDA. 1301. Smith v. Dickinson. [1804] Action on an agreement by the defendant, not to avail him- self of or to take any undue advantage of a communication made to him by the plaintiff, of an invention for which the plaintiff intended to take out a patent. The defendant com- mitted a breach of the agreement by fraudulently obtaining a patent for the invention in his own name: — Held, that the plaintiff was entitled to recover damages for this breach. {3£, f P. 630.) 1302. Bloxam v. Elsee. N. P. [1825] If a servant, while in the employ of his master, makes an invention, that invention belongs to the servant, and not to the master. (1 C. §• P. 558 ; By. 8f Mo. 187.) 1303. Caldwell v. Vanvlissengen. Ch. [1851] The Crown has always exercised a control over the trade of the country ; and though restrained by the common law and the Statute of Monopolies (21 Jac. 1, c. 3) within reasonable limits, the Crown might grant the exclusive right to trade with a new invention for a reasonable period. The 21 Jac. 1, c. 3, did not create but controlled the power of the Crown in granting to the first inventor the privilege of the sole working and making of new manufactures. (9 Hare, 415 ; 16 Jur. 1 15 ; 21 L. J., Ch. 97.) 1304. In re Ashenhuest's Patent. [1853] The sealing of letters patent having been prevented by the filing of objections, which were subsequently withdrawn by the objector, the objector was ordered to pay the costs. (2 W. R. 3 ; 22 L. T. Rep. 109.) LL 2 516 ADDENDA. 1305. In re Bhandies' Patent. Ch. [1853] On a petition to discharge an objection filed by H. against tbe sealing of a patent to the petitioner B., where B. and H. had been partners, and where the late Attorney-General had reported in favour of the petitioner, but the present Attorney- General had allowed the patent to H. to be sealed, a com- promise was recommended to be settled by the junior counsel of the court, the patent to the petitioner to be forthwith sealed. (1 Eq. Rep. 121.) 1306. TiLLiE & Anderson's Patent. [1854] Where the sealing of letters patent has been delayed by the entering of a caveat, the Lord Chancellor has a discretion to .extend the time beyond one month from the expiration of the six months of provisional protection. (2 W. R. 182; 22 L. T. Rep. 249.) 1307. Myees v. Baker. [1858] In an action for a penalty under the 5 & 6 Will. 4, c. 83, s. 6, for putting on an article, made according to a patent, the words " K. & G. Patent Elastic," without the licence of the patentee, it is no defence " that the invention was not a new manufac- ture." But it is necessary to prove that such words did imitate, and were so put on by the defendant "with a view of imitating" the mark of the patentee. (3 H. §• N. 802; 7 W. R. 66.) 1308. Daw v. Elet. Ch. [1867] , The 15 & 16 Vict. c. 83, s. 25, applies where a foreign patent is de facto granted, though it is afterwards cancelled ab initio. (36 L. J., Ch. 482 ; L. R., 3 Eq. 496 ; 15 L. T. Rep., N. S. 559.) 1309. Lee v. Walker. [1872] On the 28th of April, 1870, the plaintiffs retained the defendant, a patent agent, to obtain for them letters patent for " a new automatic vase or depot for holding coals," and on ADDENDA. 517 the 30th a provisional specification was filed. Nothing more was done by the defendant until the end of August, when he gave notice of his intention to proceed with the patent, pursuant to sect. 12ofl5&16 Vict. c. 83 ; and in October he applied for the fiat of the Attorney-General for sealing the patent. In the meantime, viz., on the 15th of June, 1870, one P. had, as the defendant was aware, filed a provisional specification for " improvements in coal vases," which turned out to be substantially the same as the plaintiffs' invention, and had, on 10th of September, obtained a grant of letters patent for the same. The Attorney-General rejected the plaintiffs' application, upon the authority of Ex parte Bates, where under similar circumstances the second applicant for provisional protection, in the absence of fraud, was held entitled to have his letters patent sealed, of which decision, though pronounced in May, 1869, the defendant was ignorant: — Held, that there was evidence of negligence on the part of the defendant, (i. R., 7 C. F. 121.) INDEX. The niimiers refer to paragraphs, unless otherwise indicated. ABANDONMENT, of provisional specification, 164. of invention, 127, 133, 171. of experiments, 129, 171, 181, 23S, 797". ACCOUNT or PROFITS, at law. See under Action foe Inpeingement, p. Hi. in equity. See under Suit in Equity, p. 488. inspection of, 765. ACCOUNTS, of petitioner for extension. See under EXTfiNSiciN oi* Teem, Remu- NEBATION, p. 276. ACQUIESCENCE, in infringement of patent, p. 478.- ACTION FOR INFRINGEMENT,, p. 40.S. Parties to the Action, p. 403. plaintifE — patentee and assignee jointly, 974. assignees, 979, 980, 985. of banlcmpt patentee, 976. of part of invention, 984. survivor of tenants in common, 983. licensees, 975, 977, 978, 986. defendant — original grantee, 985. person physically using invention, not person giving instructions, 982. directors of company, for acts of workmen, 987. though in contravention of orders, 987. foreigner in this country, 981. Particulars of Preaches, pp. 406 and 502. court has common law right to order, 988, 989'. should point out particular' parts of invention infringed, 988, 991, 994. unless it would embarrass the plaintiff, 989'. or the invention, consists of but one process, 990'. or when thing alleged to be an infnngement is an exhibit, 1265. should specify instances of infriilg'emelit intended to fie proved, 992. as to particular persons and Occasions, 990. should not be more complicated than specification, 990. to be read with pleadings, 993. insufliciency of defendant's answers to intetrogatories no answer to application for bettef, 991, amendmefit of, 1031. 520 INDEX. ACTION FOR INFEINGEMENT— co»*i»Me(?. Notice of Ohjections, generally, pp. 409, 503. jarisdiction of court, 995. further and fuller, may be ordered by judge, 995, 999, 1005, 1019. should generally afford more information than pleas, 995, 999, 1002, 1004. not sufficient unless applicable to some plea, 998, 1000, 1001. omission to give, on pleading, 997. confined to matter affecting validity of patent, 1006. not part of the record, 1003. generality of, camiot be objected to at trial, 999, 1021, 1023. not intended to be urged before jury, 997. plaintiff's particulars of breaches cannot be called in aid of, 1019. as to first and true inventor, p. 413. need not say who was, 1008. as to prior user, p. 414. by A. B. " and others," 1010, 1011, 1013, 1273. by a particular class of persons, 1016, 1271. addresses of users, 1013, 1019. at A. B. « and elsewhere," 1016, 1017, 1018, 1273. generally at particular places, 1020, 1271. of what part of invention, 1014, 1015. publication in books, 1016, 1017. circumstances of, 1008, 1273. amendment of, 1267, 1268. of a particular preparation, 1271. dates of, 1273. as to spedfieation, p. 419. variance of, from patent and drawings, 1023. deception in, 1023. insufficiency of, generally, 102.3, 1024, 1026. distinguishing what is new from what is old, 1025. not describing most beneflcial method, 1025. enrolment of, 1026. as to fraud and misrepresentation, p. 420. in specification, 1027, 1028. in procuring report of Privy Council, 1029. Interrogatories, p. 421. allowed where answers would expose third parties to actions, 1030. form and extent of, 1032. not allowed before declaration, 1031. Discovery and Inspection, p. 422. may be granted whenever action pending, 1034. not a matter of course, 1034. right to, exercised as in chancery, 1035, 1040. affidavits in support of, 1035. rule nisi for, in first instance, 1036. of plaintiff's patent article, 1033. of defendant's machinery, 1039, 1010. specimens for analysis, 1041 . of defendant's books, 1037, 1038, 1040. during pendency of appeal, 1042. Injunction, p. 427. rule nisi for, in first instance, 104,3. attachment for disregard of, 1044. only granted where infringement continued after verdict, 1045. I'ostponement of Trial, p. 427. pending decision on rule, 1046. action on writ of scire facias, 1047, 1048. INDEX. 521 ACTION rOR INFRINGEMENT -co»Hfttte(f. Venue, p. 429. motion to change, refused, 1050. affidavit in support of, lOiS. Eeidence of Subject-matter of Patent, p. 429. for improvement, 1051. specification, where conclusive of, 1052, 1065, 1068. Evidence of Novelty of Invention, p. 430. plaintiff must make out prima, faeie case of, 1052, 1056, 10C3. may be by negative evidence, 1053, 1056. or by allegation of grant and production of patent, 1061, 11 12. comparison of specifications, p. 240, 1057. how affected by development of the trade, 1059. refreshing memory of witness by drawing, 1054. statement of prior user who is dead, admissibility of, 1058. confirmation is conclusive of, 801, 802. greater perfection of result, 24. Evidence of the Grant of Letters Patent, p. 432. patent ^rima/acie evidence of, 1060, 1062. Evidence of svffioienoy of Specification, p. 433. plaintiff must make out prima facie case of, 1063. where not clear t& ordinary workman, 1065. experiments in support of, 1061). hy experts, 435, 1056. Evidence of Infringement, p. 435. similarity of manufactured article, 1070, 1073, 1075, 1133. coupled with possession of necessary machinery, 1071. in considering, patent assumed to be valid, 1072. by experts, 1076. by manufacture abroad, 1077. Ifem Trial, p. 437. affidavits in support of, 1078. grounds for, 1078. Costs, p. 437. general, of cause, 1081. of issues, 1081, 1085. of notice of objections, 1081, 1085, 1086, 1088, 129S. before trial, 1086, 1088. triple, 1082, 1084. certificate " that validity of patent came in question" where given, 1080, 1083. must be put in evidence, 1087. after completion of trial, 1084. not a " usual certificate," 1087. where nominal damages only recovered, 1082. judge cannot certify for^ after taxation, 1082. of special jury, 1086. of rule for account of profits, 1089. Account, p. 442. jurisdiction of court to order, 1090, 1091. of profits before action, 1090, 1091. where defendant trustee to plaintiff for, 1090. where ordered before verdict, 1091. granted as soon as verdict given, 1094. not delayed by appeal, 1094. to assignee only from date of registration of assignment, 1093. of defendant's profits not plaintiff's loss, 1093, 1015. 522 INDEX. ACTION FOE INFEIXGEMENT— con«««erf. Damages, p. 444. Consolidation of Actions, p; 444. order for, not revoked on ground of neglect to appeal, 1096. 7hreatening an Action for Infringement, p. 445. no acjlon for, unless defendant's claim made maid fide, 1097. restrained, where defendant has no hand fide iaS^atiaa to proceed, 1098, 1099. and plaintiff need not dispute defendant's claim by scire facias, 1098. ADDITION, to a known machine or process. See under SUBJECT Mattbk, p. 30. ADMmiSTRATEIX, ■ of patentee may obtain extension, 731. ADMISSION BY DEFENDANT, of plaintiff's title in suit, 1152, 1164, 1170,, 1213. during partnership, 1161. of infringements, 1193. ADVEETISEMENTS, on petition for extension, p. 314. by grantor, deterring customers from his licensees, S43. AFFIDAVITS, on oppositioh to sealing, 287. in support of change of venue, 1048. in equity. See StriT IN EQUITY, p. 451. in support of inspection, 1035. in support of new trial, 1078. ■ on petition for confirmation, 805, AGENT, patent, negligence of, 1309. may petition for extension, 844. infringement by, 889. the testing of utility of invention by, no publication, 1 43. for sale of invention cannot file bill to restrain, llOSv ALIEN, may petition crown to revoke an order in council, 742. oppose petition for extension, 768, obtain patent through trustee, 243, AMBIGUITY, in specification, p. 195. in title, 330, 346, 348. AMENDMENT, p 246. OF Specification, At Common Lam, p. 246. of clerical errors by Master of the Rolls, 569, 670, 573. signature of Attorney-General required, 573. and inspection of the letters patent, 573, INDEX. 523 AMENDMENT— (!o«it«i(e(Z. OF Specification — continued. By Disclaimer and Memarandum, of Alteration, p. 249. by whom entered, p. 249. patentee after assignment of patent, 575, 577. grounds for and oijeotions to, p. 250. inyalidity of patent, 578-, 579. want of novelty in part, 582. materiality in part, 681, 582. extension of exclusiTe right, 580, 581, 587,. 697. creation of a new liability, 582; reasons for entering, 584, 599. removal of all claiming clauses, 588» verbal alterations, 588. should appear on face of specification, 583, operation of, p. 254. becomes part of patent, 589, 590, 591, 592. does not import invalidity of patent, 691. on infringements prior to, 589, 591, 592, 593. not explanatory of specification, 595. introductory sentences, 599. reasons for entering, 599. practice, pv 259. condition imposed not to bring actions, 594, 598^ G03. disallowance of, 604'. must be filed, 602. jurisdiction of Master of the Rolls, 600. OF Memorandum op Alteeation, of clerical en-ors, 571. OF Patent, on petition to Lord Chancellor, refused, 5C7. by re-sealing granted on terms, 572. can only be ordered by Lord Chancellor, 572. refused on ground of delay, 575. OF Enrolment of Patent, of clerical errors, 571, 574. OF Enrolment op Specification, of clerical errors, 568, 571. OF Paeticulabs op Breaches, 1031. OP Notice op Objections, 1267, 1268, 1273, 1274. OF Petition foe Extension, 751. AMOUNT, of labour in invention, not considered, 12, 83> of invention, 9, 83, 91, 212. ANALOGOUS USE, application to. iSee under SUBJECT Matter, p. 47. ANALYSIS, specimens for, not granted at law, 1041. but will be in equity, 1041,. 1138; ANSWER, bill should be EUfficient without admissions in defendant's, 1109. 524 IJTDEX. APPEAL, none from order of Master of the Rolls expunging entry on register, 827. injunction pending, 1149, 1156, 1163, 1168, 1169, 1172. right of, in Chancery, 1279. APPLICANTS, for letters patent, concurrent. See under Letters Patent, Application for, p. 126. APPLICATION, of a known machine, process or material, to a new purpose. See under Subject Matter, p. 34. of a known machine, process or material, to an analoffous purpose. See under Subject Matter, p. 47. for letters patent. See Letters Patent, Application for, p. 126. ART, terms of, explained by jury, 511, 513, 527. ASSIGNEE, may sue for infringement, 979, 980, 985. though only assignee of part of patent, 984. may petition for extension, 732, 734, 735, 741, 746, 747, 748. may maintain suit for infringement, 1104. ASSIGNMENT OF PATENT, p. 332. to take effect on termination of suit, 808. by bankruptcy of patentee, 809, 811, 814. by bankrupt, after mortgaging his right under, 810. before registration of probate, 820. does not affect operation of sect. 25 of 15 & 16 Vict. c. 83. .822. of part of, 818, 984. ASSISTANCE, professional, 230, 232, 240. ASSIZES, trial of issues at, 1247, 1249. ATTACHMENT, for disregard of injunction, 1014. ATTORNEY-GENERAL, on petition for extension, 761, 76G, 768. BANKRUPT, patent vests in assignees of, 809, 811, S14. qiirere, after mortgage, 810. assignee of, may sue for infringement, 97( BILL of review, p. 510. in equity. See Suit in Equity, Pleading, p. 448. BOOK, publication of invention in. See under Novelty, p. 89. BOOKS, inspection of dercndant's,- 1037, 1038, 1040. INDEX. 525 CANCELLING, letters patent, p. 147. CAVEAT, against extension, p. 315. effect of, when lodged with Attorney-General, 2G8. special leave, 277, 279. CERTIFICATE, under sect. 3 of 5 & 6 Will. 4, c. 83, where given, 1080, 1083, 1292, 1295, 1297. must be put in evidence, 1087. after completion of trial, 1084. not a " usual certificate," 1087. not given where suit compromised, 1083. under sect. 2 of 3 & 4 Vict. c. 24. . 1080. i udge cannot certify after taxation, 1080, CHANCERY. See Suit in Equity, p. 447. CLAIM. See under Specification, p. 217. may be all struck out by disclaimer, 588. CLAIMING TOO MUCH. See under Specification, p. 202. COLOURABLE IMITATION OF PATENT ARTICLE. See binder Infringement, p. 384. COMBINATION. See under Subject Matter, p. 16. COMMON LAW, amendment under. See Amendment, p. 24B. right to order particulars of breaches, 988, 989. COMMUNICATION, from abroad, the subject of a patent, p. 125. improvement on confidential, 244. patent for, taken as for original invention, is void, 244. petition for extension should state when patent is for, 749. from abroad, to be distinguished in specification from original inven- tion, 446. COMPANY, may be made defendants in suit though claiming only equitable inte- rest in patent, 1100. COMPARISON, of specifications. See under Specification, p. 240. COMPLETE SPECIFICATION. See Specification, p. 167. CONCEALMENT, prejudicial, in specification, p. 184. CONCURRENT APPLICANTS FOR LETTERS PATENT. See under Letters Patent, Application foe, p. 126. infringement by, 885. CONDITIONS, of grant of letters patent, p. 143, Imposed on extension, p. 290. 526 INDEX. CONFIRMATION, p. 323. Grounds of, p. 323. invalidity of patent, 796. belief of patentee that he was first and trno inventor, 796, 797, 799. meaning of first and true inventor, 799. wilful ignorance of, 799. publication by foreign expired patent, in absence of user, 794. deposit of book in British Musenm, 794. abandoned experiments, 797, 798. Objections to, p. 323. public and general user of invention, 795, 796, 797, 798, 799. meaning of, 799. use on board one ship not a general user, 799. public knowledge vrithout user, 799. systematic use by a few persons, 797- user up to date of patent, 798. effect of user not removed by consent of person using, 798. existence of a remedy by disclaimer, 793. two patents for same invention, 793. that patent is for application of well-known article, 797. Hffeet of, p. 328. is unconditional, SOO. conclusive evidence of novelty, 801, 802. Petition, p. 330. must admit invalidity of patent, 796. must mention name of first inventor, 801. or state it to be unknown, 804. on presenting, notice to be given to first inventor, 794, 804. Affidavits, p. 330. should show petitioner's belief in certain facts, 805. Costs, p. 331. given to successful opposers, 806, 807. CONSIDERATION, for the grant of letters patent, p. 144. CONSOLIDATION OF ACTIONS, order for, not revoked on ground of neglect to appeal, 1096. CONSOLIDATION OF SUITS, order for, validity tried in particular instance, 1282. advice respecting, 1283. CONSTRUCTION, of specification. See under Specification, p. 222. COSTS, of obtaining patent. See under Lettbbs Patent, Application FOE, p. 138. of prolongation. See under Extension op Term, p. 320. at law. See under Action for Inpeingbmbnt, p. 437. in equity. See under Suit in Equity, p. 510. of opposing confirmation, p. 331. COUNSEL, on application for extension, p. 316. in suit in equity, p. 510. COUNTERMANDING WARRANT FOR SEALING, 305. INDEX.. 527 CROWN, prerogative of, 1 303. may use patented invention without assent of patentee, 315. but not contractors for, 316. DAMAGES, at law. See under Action foe iNFEiNGEMBKrr, p. 444. in equity. See under Suit m Equity, p. 493. DATE, of letters patent, p. 142. of extended grant may be after expiration of original patent, 770. DEDICATION, to the public, 164, 257, 261. DELAY, in enrolling specification, 283. in applying for great seal, 266, 284. in applicanou for letters patent, 285. in entering opposition to sealing, 276, 288. in filing affidavits on opposition to sealing, 287. in application for injunction, p. 478. in using invention, evidence of inutility, 222, 642, 645, 648, 650, 651, 687. in filing accounts on petition for extension, 682. in establishing plaintiff's title in suit, 1158. a ground for refusing to decree an account, 1221. DIRECTORS, liable for infringements by their workmen, 987. may be personally liable for costs of suit for infringement, 1294. DISCLAIMER. See under Amendment, p. 249. DISCOVERIES, new, effect of, on specifications, p. 215. DISCOVERY, at law. See under ACTION FOB Infeingbmbnt, p. 422. in equity. See under Suit in Equity, p. 454. DRAWINGS, effect of. See under Specification, p. 219. refreshing memory of witness by, 1054. DURATION, of patent for invention, also patented abroad, 1308. And see under Extension op Teem, p. 299. ENROLMENT, of patent, amendment of, 571, 574. of specification, amendment of, 568, 571. EQUITABLE ASSIGNEE, petition for extension by, 739. EQUITY, See Suit in Equity, p. 447. EQUIVALENTS. See under Infeingbment, p. 384. discovery of new, effect on specification, 485, 528 INDEX, ERRORS, verbal, in specification, p. 221. clerical, amendment of, in specification, 569, 570, 573. in memorandum of alteration, 571. in enrolment of patent, 571, 574. of specification, 668, 571. in specification, correction of, by workmen, 363, 387, 389, 399, 429. in drawings, 506. ESTOPPEL, p. 847. in actions, by patentee against licensee where licence is exclusive, 831, 855. where licence is not exclusive, 848, 854, 855, 856, 858, 861. where use of and payments under licence have ceased, 850, 864. where patent held invalid in proceedings between patentee and third party, 859. by assignee against patentee, 846, 857. by patentee against equitable assignee of sole licensee, 852, of no avail where plaintiff fraudulently claims right to patent, 847. as to use or non-use of licence under agreement, 850. where plea bad, as stating no eviction, 851. not going to whole consideration, 851, under special agreement, 853. not established by award of arbitrator, 860. construction of specification independent of, 862. between partners, 863, 866, 1161. by judgment at law need not affect defendants in equity, 865. EVASION. See under Infbingbmbnt, p. 384. EVIDENCE, at law. See under Action fob Inpeingement, p. 429. in equity. See under Suit in Equity, p. 506. EXCLUSIVE LICENCE, immaterial in how many persons vested, 830, or what is the extent of, 830. EXCLUSIVE LICENSEE, has a right to sue for infringements, 986. may use patentee's name to restrain infringement, 1102. estoppel in actions by patentee against, 831, 855. EXECUTOR, of assignee may petition for extension, 736. EXPERIMENT, publication of invention by. See under Novelty, p. 100. specification should be sufficient without. See under Specipication, p. 181. user by way of, no infringement, 890, EXPERTS, evidence by, 435, 1056, 1076. to prove utility, 223. EXPIRED PATENTS. See under Suit in Equity, p. 481. EXPORTATION, of parts of patent machine, when an infringement, 896. INDEX. 529 EXPUNGING, entries in register, 824, 826. EXTENSION OF TERM, p. 261. Jurisdiction of Judicial Committee of Privy Council, p. 261. to revoke an order in council, 605. exercise of, discretionary, 606. exhausted when extension once granted, 608. nature of, generally, 617, 618, 619, 620, 621. Grounds of, generally, p. 262. case of hardship must be made out, 609. misfortunes of patentee, 611. patronizing inventor, 612, 748. opposition from existing interests, 613, 615. different from those necessary to obtain an act of parliament, 618, 619. loss from litigation, 623, 624. want of influence of patentee, 625. where there is no opposition, 621, 627. must be considered at date of petition, 641. Merit of inventor, p. 269. loss from want of labour, 629. where invention imported, 635, 741. where improvement is small, 635, 636. originality of invention, 635, 637, 640, 654. not affected by subsequent improvements, 637, 646, 649. simplicity an element of value, 638. in part only of patented invention, 639. Utility of invention, p. 273. non-user a presumption against, 642, 645, 648, 650, 651, 687. rebutted by pecuniary embarrassment of patentee, 642, 691. by nature of invention, 644, 650. by market being limited, 653. sale of patented article evidence of, 643. must be a prospect of future use of invention, 647, 687. Remuneration, p. 276. in estimating, deductions allowed for — experiments, 655, 657. litigation, 656, 657, 661, 672, 673. bringing invention into use, 661, 670, 681. cost of patent, 661. manufacturers' profits, 661, 665, 672, 673, 676, 680. costs of agents, 675. no deduction for loss in sale and repurchase of patent, .'679. actual expenses and receipts should be shown, 659. should be in proportion to benefit derived by public, 662. for whole, not part of patent, considered, 663. balance sheet handed to solicitor for treasury, 663. ratio of increase, if considered, 663. want of evidence of, 664. realized abroad, 666, 675, 680. evidence of petitioner, 664, 671. accounts must be clear and precise, 672, 673, 674, 676, 677. of patent and manufacture to be kept distinct, 672, 673, 674. considered before merits of invention, 676, 677, 678, 679. must be filed, 682. Ti MM 530 INDEX. EXTENSION OF T'EB.U-^Oontimied. Objeotions to, p. 287. where invention succeeds only on subsequent improvements, 683, 686. patent once extended, 692. public inconvenience, 718. invalidity, p. 295. exclusive licence, 690. negligence in restraining infringement, 684, 687. non-introduction of invention, 687, 688, 691. improbability of future utility of invention, 687. injury to patentee's apprentices, 696. an act of parliament rendering use of patented invention neces- sary, no objection, 689. Conditions imposed, p. 290. to secure an annuity to inventor, 693, 695, 703, 706, 707. meaning of, 694. a portion of profits to inventor, 697. to sell at fixed price, 697. to protect apprentices, 696. to secure use of invention for public service, 698, 701, 704. to disclaim portions of patent, 699. not to sue for infringements, 700. to secure an existing interest in original patent, 702. to grant licences on certain terms, 705. Questions of Validity, p. 295. not considered by committee, 710, 712, 713, 716, 717. should be a prima facie case, 708, 709, 710, 715. shown by judgment of House of Lords, 715. lis pendens involving, 709, 714. meaning of specification to be determined, 717, 718. Of Patent for Invention also patented Abroad, p. 299. sect. 25 of 15 & 16 Vict. c. 83, applies only to patents obtained subsequent to statute, 719, 723. construction of, 722, 728. where foreign patent expires first, 720, 725, 726, 728. before extended term, 724, 726. taken out first, 724, 728. English patent taken out first, 722, 727, 728. The Petitioner, p. 304. should have legal title, 729, 730, 738. must be strictly proved, 729, 733. may be administratrix of patentee, 731. assignee, 732, 734, 735, 741, 746, 747, 748. executor of assignee, 736. importer of invention, 736, 741. trustees of joint stock company, 738, 741. equitable assignee, 739. company, 740, 743, 746. agent and trustee for foreign inventor, 744. mortgagees and persons having lien on patent, 745. sect. 4 of 5 & 6 Will. 4, c. 83, construction of, 734. death of petitioner before hearing, 706. to revoke an order in council, 742, T7ie Petition, p. 311. should state fully everything relating to patent, 749, 750. omission to do so fatal, 749. INDEX. 531 EXTENSION OE T'EBM—contimed. The Petition— contimiei. amendment of, 751. objection to reception of, 764. 2Hm-e to present Petition — Prosecuting mitk effect, p. 312. must not be too soon, 752. come to hearing before expiration of patent, 753, 755. lis pendens, 754. within week of last advertisement, 766. Mules, p. 314. under 5 & 6 Will. 4, c. 83, to be observed, 682, 766, 757. Advertisements, p. 314. should be where manufacture carried on, 758, 759. should contain the names of all the petitioners, 760. proved before case is heard, 759. Caveats, p. 315. may be entered by any one, 762. must he in name of person opposing, 762. petition to enter, when not duty filed, 761. licensee opposing need not prove his interest in patent, 763. person entering, entitled to notice of application, 764. Inspection, p. 316. of petitioner's accounts, 765. Counsel, p. 316. attorney-general represents crown, government and public, 761, 766, 768. two only heard to oppose in sonje interest, 767. Tfte GroMt, p. 316. Is good though made after expiration of patent, 770. subject to same objections as original patent, 710, 712, 769, 776, 776. to combine substance of two patents, 771. to include improvements on patent extended, 772. length of, where there are lis pendens, TIZ. in case of cognate patents, 779. where subsequent improvements patented, 774. confined to portion of original patent, 639, 774. is divisible, 777, 778. revocation of, 780. Costs, p. 320. given to successful opposer, 781. but not if opposition needlessly prolonged, 784, 788, 789, 790, 791. when petition abandoned, 782, 786, 786, 787. to petitioner where there are no grounds to oppose, 783. as gross sum, 787, 788, 790, 791, 792. to petitioner to revoke warrant to seal, 700. FAILUEE OE CONSIDEEATION, p. 144. EILING, of specification, p. 139. two provisional specifications for same invention, 620. of disclaimer, 602. FIRST AND TRUE INVENTOR, p. 118. M M 2 532 INDEX. rOREIGlirER, liable in this country for infringement, 981. trustee of, may obtain patent, 243. and petition for exteusiot, 844. FOREIGN INVENTION, importer of, p. 125. FOREIGN PATENT, effect of, on petition for extension, p. 299. FORFEITURE, of licence for non-payment of royalties, 834, 835. waiver of, 835. FRAUD, public user, obtained by, 263. on the Crown, 337. pnrchase-money for patent recovered if obtained by, 813. GRANT, of extended term. See under Extension of Term, p. 316. of letters patent. See under Lettebs Patent, Grant of, p. 142. GRANTEE. See under Patentee. GREAT SEAL, opposition at, p. 134. GROUNDS OF EXTENSION. See under Extension of Teem, p. 262. IGNORANCE, wilful, of previous invention, TO9. no answer to charge of infringement, 908, 965, 1231. IMPORTATION, and sale, infringement by, 903, 906. IMPORTER, of invention may obtain patent, p. 125. petition for extension, 736, 741. merit of, 635, 741. IMPROVEMENTS, on processes, patents for, 14, 22, 45, 65. specifications of inventions for, p. 210. and discovery defined, 110, 123. made before filing specification, 411, 412, 462. discovery of, effect on specification, 16, 484. on combination, 30, 35. value of, question for the jury, 212. INFRINGEMENT, p. 360. Generally, p. 360. meaning of, 875, 876, 879. in determining, validity of patent assumed, 877, 882. use of invention between expiry and renewal of patent Is no, 879. where specification larger than patent, 880. relation to prior user, 114, 881. effect of act of parliament on action for, 883. INDEX. 533 INFRINGEMENT— cfl»itra«e(?. Generally — continned. sale of patent article carries with it right to use, unless limited by agreement, 840, 88i. by concurrent applicants for patents, 885. assistance in, 886, 1192. intention immaterial, p. S99. a question for the jury, p. 401. Sy morMng or •malting, p. 362. on principle and method of patent, 887. though varying in minor details, 887. in imitation of a prior machine made on same principle but different construction, 887. for amusement, 887. as a model, 887. as an experiment, 890. where invention is useful though never in use, 888. by foreigner while in England, 891. by contemporaneous inventors, 892. an improvement on a prior patent, 63, 64, 66, 893, on board British ship on high seas, 895. by user in England in transitu, 897. by government, 315. contractors for, 898, by an agent, 889. for exportation, 896. by adaptation of patented combination to additional purpose, 929. Sy vending, p. 370. exposure for sale, 899. though no sale effected, 904. making for sale, without exposure, 901. not for sale, 902. importation and sale, 903, 906. buying and selling in the way of trade, 907, 908. for private use, 908. of patent article made under licence, 905. £y worMng or malting a new and material part of an Invention, p. 374. where part used is not applied to same, or analogous purpose, 914, 916, 919, 922, 925. employed in same manner, 923. patentable, 921, 927. does not create a complete machine, 924. is one of several improvements, 910, 913. is not new and material, 896, 916, 926. advantage of part used is collateral to the object of the invention, 927. by imitation, 915, 922. meaning of "new and material part," 920. Colov/rahle Imitation — Equivalent — Evasion, p. 384. in form or in immaterial circumstances, 887, 930, 931, 938, 940. which is also an improvement, 941, 943, 947, 949, 952, 953. of a chemical process, 951, 953, 954, 955. though too clumsy to have anticipated plaintiff's invention, 958. when equivalent discovered subsequent to patent, 950, 953. a different mode of or combination for attaining same result, is not, 937, 948, 956, 957. unless application of principle is claimed, 887, 932, 934, 935, 936,- 939. 534 INDEX. INFRINGEMENT- coTCtirewerf. JEvidence of. See under Action fob Infeinobmbnt, p. 435. proof of, on application for injunction. See under Suit in Equity, p. 476. INJUNCTION, at law. See under Action fob Infeingement, p. 427. in equity. See under Suit in Equity, p. 461. INSPECTION, of provisional specification, 286. of accounts of petitioner for extension, 765. at law. See under ACTION FOB Infbingement, p. 422. in equity. See under Suit in Equity, p. 457. INTENTION, as to infringement immaterial, p. 399. INTEEEOGATORIES, at law. See under Action foe Infbingement, p. 421. in equity. See under Suit in Equity, p. 454. IN TRANSITU, infringement by user in England, 897. INVENTION, foreign, importer of, p. 125. novelty of, pp. 62—107. utility of, p. 108. INVENTOR, first and true, p. 118. importer of foreign invention, p. 125. merit of, ground for extension, p. 269. remuneration of, consideration of, by judicial committee, p. 276. INVENTORS, contemporaneous, infringement by, 892. ISSUES, trial of. See under Suit in Equity, p. 497. JOINT GRANTEES, of patent, 248, 314. JOINT OWNERS, p. 356, liability of, 868. what agreement creates a partnership, 869, 871, 874. what interest creates a partnership, 867. interests of, under agreement relating to prospective patents for par- ticular objects, 870. where tenants in common, 872. joint tenants, 872. right of co-patentees severally to use a joint patent for their own ex- clusive benefit, 873. number of, in licence, immaterial, 830. ownership of moiety creates interest ^ro tanto, 828. cannot severally release joint rights of action, 827, INDEX. 535 JOINT OWNS,nS—eotiHnved. estopped from disputing validity of patent as against each other, 863. but not by acts of former joint owners, 865. nor after termination of partnership, 866, 1161. one of, may maintain snit if bill not demurred to, 1101. account of sales or profits between, 1227, 1229, 1230. JOINT TENANTS, right to work patent vested in trustee for, 872. JUDICIAL COMMITTEE, jurisdiction of, p. 261. rules of, p. 3l4. JURY, novelty of invention is a question for, p. 106. utility of invention is a question for, p. 116. sufiSciency of specification a question for, p. 244. on trial of issues, p. 601. special, costs of, 1086. explain terms in specification, 511, 513, 627, LAW OFPICEE, hearing of applications for letters patent before, p. 182. reference to, by Lord Chancellor, p. 133. decision of, followed by Lord Chancellor, 272, 279. except in cases of fraud or surprise, 279, or on prpof of new and material facts, 279, 280. LETTERS PATENT, Application fob, p. 126. Concurrent Applicants, p. 126. first who obtains seal succeeds, 129, 245, 246, 247, 250, 253. must make ont prima facie case of novelty, 247, 249. may obtain joint patent, 248, 314. may each obtain provisional protection for same invention, 260. , and sometimes separate patents also, 251, 252, 281, 282. filing complete specification in first instance, 263. Grounds of Opposition, p. 129. publication in previous patent, 264, 258. where validity of first patent disputed, 264. when no complete specification of first patent filed, 265. pubUc user, 256, 257, 261, 262. when obtained by fraud, 263. want of utility, 255. experiments leading to same invention,- 253, 267. delay, 266, 284. when doubtful, patent sealed, 269, 260. Caveat, p. 132. entitles party lodging it to notice, 268. special leave, 277. Bearing before Lam Officer, p. 132. conflicting evidence, 269. Meferenoe to Lam Officer, p. 133. to determine question of breach of confidence, 270. . similarity to previous patent, 271, 272, 295. merits of opposition, 274, 276. where delay in opposing is accounted for, 276. 536 INDEX. LETTERS FATEiHT—continned. Application for — continued. Opposition at the Great Seal, p. 134. where there has been no opposition before law officer, 273, 274, 275, 278. decision of law oflBcer followed, 272, 279. except in cases of fraud or surprise, 279. or on proof of new and material facts, 279, 280. onus proiandi on opponent, 280. viva wee examination, 281. entering caveats, 277, 279. delay in, 276. Belay, p. 136. in enrolling specification, 283. in sealing patent, 266, 284. in entering opposition to sealing, 276, 285. in application for warrant, 28.5. in filing affidavits in opposition to sealing, 287. Inspection, p. 137. of provisional specification, 286. Affidavits, p. 137. delay in filing, 287. Snibstituted Service, p. 137. Costs, p. 138. when opposition not unreasonable, 289. successful, 272, 292. unsuccessful, 290, 291, 293. when withdrawn, 294. on petition to reseal, 292. how taxed, 291. of reference to law ofScer, 295. Filing Specification, p. 139. cannot be dispensed with, 29S. or received conditionally, 298. computation of time for, 297. extension of time for, 299, 300, 301. neglect or default in, 299. Stamp Duty, p. 140. when due, 303. agreements to pay, 302, 304. Cotmtermandi/ng Warrant, p. 141. for sealing, 305. The Geant, p. 142. The Date of, p. 142. how reckoned, 297, 303, 307. of rival patents, 308, 309, 310, 311. when referred back to law ofBcer, 306. Conditions and Terms of, p. 143. to supply her Majesty's service, 312. to grant licences, 313. to assign, 313, 314. in cases of joint inventors, 314. Crown may use patented inventions, 312, 316. but not contractors for Crown, 316. Consideration for, p. 144, 374. INDEX. 537 LETTERS FATENT—contUned: The GuAST—eontinued. Idmited, p. 146. riral inTeritors, 321. Cancelling, p. 147. Evidence of. See under Action fok Infringement, p. 432. Amendment op, on petition to Lord Chancellor, refused, 567. by re-sealing, granted on terms, 572. can only be ordered by Lord Chancellor, 572. refused on ground of delay, 575. Assignment op. See under Assignment op, p. 332. - Sale of. See under Sale, p. 332. LICENCE, p. 340. derogation from, by grantor, 845. need not be by deed, 832, 833, 839. may be verbal, 839. requires no stamp, 833. not assignable, 836. in prospective patents, 843. to manufacturer implies licence to his vendees to vend, 840. covenant in, to use patented invention only not in restraint of trade, 837. covenant to account, auxiliary to covenant to pay royalties, 836. forfeiture of, by non-payment .of royalties, 834, 835. waiver of, 835. void where grantor knows patent is invalid, 831. exclusive, immaterial in how many persons vested, 830. or what is the extent of, 830. to purchaser in one country, to use in another, where invention pro- tected in both, is implied, 844. but rights of an assignee must not be defeated, 844. agreement to restrain infringement of, 842. notice of infringement can be claimed by grantor, 842. construction of, 841. to use carries no implied warranty of validity of patent, 856, 858, 862. LICENSEE, right to sue, 975, 977, 978, 986. cannot recover money paid for use of a patent subsequently found to be void, 829. nnless fraud be proved, 813. estoppel in actions by patentee against, when licence is exclusive, 831, 855. when licence is not exclusive, 848, 854, 855, 856, 858, 861. where use of and payment under licence have ceased, 850, 864. in suit against, where patent held invalid in proceedings between patentee and third party, 859. LIMITED GRANT OE LETTERS PATENT, in case of rival inventors, 321. LORD CHANCELLOR, opposition to scaling before, p. 134. only can order amendment of patent, 572. 538 INDEX. MANUFACTURE. See under Subject Matteb, p. 1. MAKKING, machiuea made in violation of a patent, 1140. MASTER OE THE ROLLS, amendment of clerical errors by, 569, 670, 573. cannot remove memorandum of alteration from the records, 600., no appeal from order of, expunging entry on register, 827. MATERIALS, described in speoiiication must be ordinarily procurable, 170. or capable of preparation by a known process, 170. application of, to new or analogous purpose. See under Subject MA.TTEK, pp. 34, 47. MEMORANDUM OE ALTERATION. See wader Amendment, p. 249. amendment of, 571. MERIT, of inventor, ground of extension, p. 269. METHOD. See under Subject Matteb— Pbocess, p. 22. METHOD OF OBTAINING LETTERS PATENT. Sec Lettees Patent, Application fob, p. 126. MISCHIEVOUS TO STATE, want of novelty makes patent, 204. MISLEADING SPECIFICATIONS, p. 188. MISTAKE, in specification. See under Eeboes. MODEL, making patent machine as, no infringement, 887. public user of invention by exhibition of, 127, 143, 181. NATIONAL POLICY, considerations of, will not prevent court granting injunction to restrain infringement, 1171. NEW TRIAL, at law. See wider Action fob Inpeingbment, p. 437. in equity. See under Suit in Equity, p. 507. NEW USE, application to. See under Subject Matteb, p. 34. NON CONCESSIT, plea of, 1063. NON-USER, is evidence of inutility. See under Utility. NOTICE OF OBJECTIONS, at law. See under Action fob Infringement, p, 409. in equity. See under Suit in Equity, p. 503. INDEX. 539 NOVELTY OF INVENTION, p. C2. Novelty generally, p. 62. need not be new out of England, 101, 102, 104. in principle of invention, 109. method of effecting a known object. 111. of application, 113. improvement and discovery, 110, 123. discovery without disclosure, 110, 129, 131, 226. anticipation and infringement, 114, 88], 958, 1074. exhibition of similar but useless machine, 117. greater perfection of result, an indication of, 21. Want of, in a Part of an Invention, p. 69. when that part is material, 119, 124. immaterial, 121. ■when one patent includes several inventions, 120. Public Use, p. 74. meaning of, 181, 133, 136, 144. by exhibition of a model, 127, 1 43, 181. by experiments. See post, p. 100. by sale. See post, p. 103. when accidental, 128, 140. of abandoned invention, 133, 171. need not continue to date of patent, 133, 134, 171. in a private place, 134, 135. by what number of persons, immaterial, 134. without sale, 136, 141, 183. manufacture of patent article by inventor prior to grant, 130, 139, 144. Secret Use, p. 87. Publication in a Booh or Specification, p. 89. between date of patent and specification, 149. in foreign book deposited in British Museum, 150. published in England, 152. abroad and sent to England, 160, 1 66. need not be sold, 166. single copy of, kept in obscurity, 156. whether written or printed, 156. in an abandoned provisional specification, 164. where prior specification is insufficient, 168. of an imported invention, 159. need not have been seen by patentee, 156. description should be sufficient to produce patented article, 154, 161, 162, 163, 165, 167, 168, 169. Publication by Experiments, p. 100. when abandoned, 129, 171, 181, 238, 797. when unsuccessful, 171, 172, 173. by patentee to test utility of invention, 170, 175, 176. or his agent, 143. after utility established, 130, 138, 175. Publication by Sale, p. 103. in a single instance, 178, 179, 184. for a foreign market, 178, 181. o£ a patent for a process, 180. where article made as a sample, 183. by a secret process, 137. ofeering for sale, 182, 183, 185. A Question for the Jury, p. 106. Evidence of. See under Action foe Infringement, p. 430. need not be averred in bill, 1112. 540 INDEX. OBJECTIONS, to grant of patent, p. 129. to extension, p. 287. to confirmation, p. 323. notice of, at law, p. 409. in equity, p. 603. OBSTRUCTIVE PATENTS, p. 116. OLD MACHINE, application of, to new use, 67, 71, 76, 77, 78. analogous purpose, 87, 92. addition to, p. 30. OMISSION, in specification, 419, 424. of part of process, 48, 48, 49. OPPOSITION, to the grant of letters, patent, grounds of, p. 129. at great seal, p. 184. costs of, on application for letters patent, p. 138. OKDEB, of performing process, change in, 46, for injunction, form of, 1218. construction of, 1219. of PriTy Council, revocation of, 605. PAETICULAES OF BREACHES, at law. See under Action foe Infeingembnt, p. 406. in equity. See under Suit in Equity, p. 502. PARTIES, to action. See under Action fob Infringement, p. 408. to suit. See under Suit in Equity, p. 447. PARTNERSHIP, what agreement creates; 869, 871, 874. interest creates, 867. in prospective patents for particular object, 870. right severally to use patent under, 873. estoppel in cases of, .863, 865, 866, 1161. PATENT. See Lettbbs Patent. PATENTEE, who may be, p. 118. true and first inventor, p. 118. importer of foreign invention, p. 125. rival, p. 482. penalty for using name of, 1307. may obtain assistance, 230, 232, 240. servant while in employ of master may be, 1 302. trustee may become, 243. See also under Letters Patent, Concurrent Applicants for, p. 126. PENALTY, action for, 1307. PETITION, for extension. See nnder EXTENSION OF Term, p. 311. for confirmation. See Confirmation, p. 330. INDEX. 541 PETITIONER, for extension. See under Extension of Teem, p. 304. PLEADING, in equity. See under Suit in Equity, p. 448. PLEAS. See Suit in Equity, 1107, 1110. POSTPONEMENT OF TRIAL, p. 427. pending decision on rule, 1046. action on writ ot scire facias, 1047, 1048. for the filing of affidavits, 1118, 1120, 1121. PREROGATIVE OP CROWN, 1303. PRINCIPLE. See wider Subject Matter, p. 57. PRIVY COUNCIL, jurisdiction of Judicial Committee of, p. 261. PROBATE, assignment of patent before registration of, 820. PROCEDURE ON APPLICATION FOR INJUNCTION. See imder Suit in Equity, p. 483. PROCESS, See under Subject Matter, p. 22. application of known, to a new use, 41, 74, 76. to an analogous use, 76, 89. PRO CONFESSO, taking bill, p. 509. PROFITS, account of. See under Suit in Equity, p. 488. and action for infringement, p. 442. PROLONGATION OF PATENT. See Extension, p. 261. PROSECUTING PETITION FOR EXTENSION WITH EFFECT. See under Extension op Term, p. 312. PROVISIONAL SPECIFICATION, p. 162. need only describe nature of invention, 356, 358, 360. generality of, 360. part of, may be omitted from complete specification, 360, 361. will not supply defect in complete specification, 357. abandonment of, 164. inspection of, 286. two for same invention by different inventors, may be filed, 250. PUBLICATION, in a book or specification. See under Novelty, p. 89. by experiments. See under Novelty, p. 100. by sale. See under Novelty, p. 103. ground of opposition to grant of patent. See under Letters Patent, application foe, p. 129. PUBLIC USE. See under Novelty, p. 74. 542 INDEX. EETEEENCE, to law officer, p. 133. EEGISTRATION, p. 338. must be proved on action for infringement by assignee, 825. absence of, need not be specified in notices of objection, 825. where objection to, cannot be maintained, 828. may be expunged by court, 824, 826. or corrected, 826, 827. no appeal from order of Master of KoUs respecting, 827. relates back to day of assignment, 828. KEMTJNERATION OF INVENTOR, consideration of, on petition for extension, p. 276. RESTRAINT OE TRADE, covenant to use patented invention only, is not void as in, 837. REVOCATION, of order of Privy Council, 605. RIVAL PATENTEES, p. 482. Court of Chancery will not interfere between, 1209. must try their rights by seirefaeias, 1210. ROYALTIES, p. 340. agreement for suspension of, for non-restraint of infringement, 842. applies only after notice of infringement to grantor, 842. and the lapse of a reasonable time, 842. covenant to pay, not qualified by covenant to account, 836. paid for use of invalid patent, cannot be recovered back, 829. RULES, _ ' of judicial committee, p. 314. of construction. See under Specification, p. 222. SALE, of patented Article, publication by. See under Novelty, p. 103. infringement by. See wnder Infringement, p. 370. after expiration of term restrained, if manufactured before expi- ration, 1205, 1206. of Patent, p. 332. contract for, does not imply warranty of title, 816, 817. or that patentee is first and true inventor, 823. but only that the patent has been granted, 817. set aside for fraud, 813. time of the essence of a contract for, 815. acceptance of part payment for, 816. contract for, on completion of patent, 302, 821. of part of, 818, 984. SALES, account of. See under Suit in Equity, p. 488. and Action pok Infringement, p. 442. SEALING, opposition to, p. 134. first applicant for, succeeds, 129, 245, 246, 247, 250, 253. countermanding warrant for, 305. INDEX. 543 SEAS, user of invention on board British vessel on high, no infringement, 895. SECRET USEE. See under Novelty, p. 87. SERVANT, invention by, while in employ of master, 1302. SHIP, user on British, on high seas, no in&ingement, 895. SIMULTANEOUS DISCOVERERS, infringement by, 892, SPECIAL JURY, costs of, 1086. SPECIFICATION, p. 167. Sufficiency of, generally, p. 167. must describe nature of invention, 362, 364, 367, 371, 373, 379, 437. and how it is to be performed, 364, 367, 370, 371, 379. to secure useful novelties to public, 362, 364, 375, 377, 419. and avoid inadvertent infringement, 371, 373, 375, 378, 439, 473. must be clear, 365, 378, 382, 390, 421, 431. precise, 366, 368, 370, 435. fair, honest and open, 371, 390, 405. not be obstructing, 376. ascertained by experiment, 380. To wJwm it must he intelligible, p. 175. to persons having skill in the trade, 363, 382, 384, 386, 387, 391, 392, 394, 395. to persons of ordinary skill, 378, 385, 386, 389, 393, 395, 396. correction of eiTors by, 363, 387, 389, 399, 429. to mechanics, 381, 397. to ai-tists, 383, 395. to readers of specification, 397, 398. to chemists, 397, 421. Shovld be sufficient without Experiments, p. 181. or invention, 402, 403. or addition, 387, 403. or correction, 399, 403. or repeated trials, 400, 401. to produce some beneficial efEect, 403, 404. Prejudicial Concealment, p. 184. as to use of cheap materials, 407. as to saving of labour, 408. as to mode of construction, 409, 416, 418. as to improvements made before filing of specification, 411, 412, 462. by stating many modes when one only will succeed, 410, 425. Misleading, p. 188. from omissions, 419, 424. from purposely describing, as material, useless things or methods, 420, 421, 422, 423, 425, 426, 428, 430. from inaccuracy, 421, 427, 429. Ambiguity in, p. 195. respecting proportions of ingi-edients, 405, 435. materials to be used, 436. when affecting degree of benefit only, 433. 544 INDEX. SPECIFICATION— core?i' M 1-^