M'Crea v. Holdsworth.

135

Mr. Cole, for the defendants, said, that the defendants were at first ignorant of the design being the plaintiffs', but that as they were now aware of it, they did not intend to sell until the expiration of the period for which the registration certificate was granted. By the terms of the Act, the copyright exists for only one year. When the defendants discovered that the design was registered, they abstained from any attempt to sell, and, in point of fact, no one single piece of goods had been finished for sale. The question for the Court to decide was on the construction of the 7th section, which, for preventing the piracy of registered designs, enacts, "That during the existence of any such right to the entire or partial use of any such design, no person shall either do or cause to be done any of the following acts with regard to any articles of manufacture or substance in respect of which the copyright of such design shall be in force, without the license or consent in writing of the registered proprietor thereof; that is to say, no person shall apply any such design, or any fraudulent imitation thereof, for the purpose of sale, to the ornamenting of any article of manufacture, or any substance artificial or natural, or partly artificial and partly natural." By the terms of the injunction asked by the bill, the words "for the purpose of sale" are omitted, and the plaintiffs are limited by the 7th section to protection so guarded. The defendants have not sold nor offered for sale, and do not intend to offer for sale, so long as the plaintiffs' pattern is protected by the Act. The two things restricted, and the only two things restricted, by the Act, are the and "application of the pattern for the purposes of sale."

sale

Mr. J. V. Prior, in reply, said, that as to sale, the Act only inflicts penalties after notice. The 3rd section was that which did in reality apply. By that section the legislature gave the sole right to the proprietor of any design to apply it to articles of manufacture, provided the same was done within England, Scotland, or Ireland, "whether such design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof, or for any two or more of such purposes, and by whatever means such design may be so applicable, whether by printing, or by painting, or by embroidery, or by weaving, &c., or by any other means whatever, manual, mechanical, or chemical, separate or combined." The object avowed by the defendants is, to throw the pattern into the market the moment the plaintiffs' protection expires on the 19th September, and that is contrary to the Act.

His HONOUR. This case is within the 3rd section. The proprietor of every such design is secured by the Act in the sole right within Great Britain and Ireland.

Mr. Cole.If that be your Honour's view of the Act, the matter had better be proceeded with no further. I offer to pay the costs up to this time, and all paper patterns and stamped cards shall be destroyed.

An order was then made, by consent, that all goods made by the defendants with the plaintiffs' pattern, and all paper patterns, stamped cards, and other things used in making the manufactures with the plaintiffs' pattern, should be delivered up; that the defendant should pay all the costs to the present time; that the suit should be stopped; that the injunction should be stopped; and all further proceedings should be stayed, except in case of a breach of the injunction.

COURT OF EXCHEQUER.

August 21st, 22nd, and 23rd, 1848.

Home Circuit, Guildford.-Before the Lord Chief Baron Pollock and a Special Jury.

HAMILTON v. COCHRAN.

THIS was an action brought for an alleged infringement, by the defendant, of a patent of which the plaintiff is assignee. The cause commenced on Monday morning, August 21st, and occupied the Court till the middle of the day on Wednesday.

Mr. Serjeant Channell, Mr. Serjeant Shee, and Mr. Peacock, appeared for the plaintiff; Mr. Chambers, Q.C., Mr. Willes, and Mr. Hindmarch, for the defendant.

Mr. Serjeant Channell, in stating the case, said the plaintiff was a native of the United States, residing near New York; and the defendant was also a native of that country. The plaintiff had devoted his attention for many years to the improvement of the mode by which timber for ship-building purposes could be at once cut to the required shape for use; and he at last succeeded in inventing a sawing machine, by which timber could be cut to any shape in less time and with much less waste of stuff than by the common process of first sawing into straight parallel pieces. In the United States he obtained a patent for this improved machine; and being also desirous of obtaining patents in Europe for the same invention, the necessary drawings and specifications were forwarded to Mr. Junius Smith, a gentleman residing in London, who obtained a patent in his own name, and afterwards assigned it to the plaintiff,-the specification of the invention having been duly inrolled. A short time before the English patent was sealed, Mr. Hamilton, jun., son of the plaintiff, arrived in Europe, for the purpose of making some necessary arrangements for working the invention. Mr. Hamilton, jun. subsequently took with him to France the specification that was originally sent from America; and a patent was taken out in France on behalf of the plaintiff, in the name of Mr. Livering, a resident in Paris. The plaintiff himself soon after came to Europe, and as, according to the French law, it was necessary to put the invention in practice within a given time, the plaintiff went first to Paris, where he superintended the construction of a

machine at the works of Messrs. Middleton and Varrell; and, as the invention was found to succeed, another machine was constructed at Toulon, and put into operation, under government inspection, at Marseilles. While the machines were being constructed at Toulon and Paris, respectively, the defendant had opportunities of informing himself of the plaintiff's invention; and, upon one occasion, he appeared desirous of becoming personally interested in it; but no arrangement of that description took place, although negotiations were entered into. Shortly after this, the defendant applied for and obtained a patent in England for a machine for cutting timber. The learned serjeant went on to say, that, in October, 1846, the defendant represented himself as the inventor of a new sawing machine; and the subject being brought under the consideration of the Admiralty, Mr. Cochran received instructions to erect one of his machines in Woolwich dockyard; and this was accordingly done. This machine the plaintiff considered was, with some trifling exceptions and unimportant additions, constructed upon precisely the same principle as the one for which his patent was granted; he therefore considered his rights had been infringed upon by the defendant. The learned serjeant said, there would be two important questions for the jury to decide; first, whether there was any novelty and utility in the invention of the plaintiff,-whether, in fact, something was obtained which had not been accomplished before; and, secondly, if they thought this to be the case, whether the defendant had appropriated in his own machine any material portion of the plaintiff's invention. With reference to the first question, he should shew, that the sawing machine of the plaintiff had accomplished something which had not been done before, namely, cutting wood by one saw, in curves and bevils, and also compound bevils; and the most important feature in the machine was, that the saw, instead of being fixed in one saw-frame or gate, was mounted on pivots or centres in an inner frame, which, being itself mounted on slides or sockets in an outer saw-gate or frame, admitted of the saw and frame being made to move in a lateral direction. The log of timber to be cut or sawn was also mounted in a peculiar manner on revolving chucks or dogs; so that, while the saw was operating, the log being made at the same time to rotate gradually, a winding bevil, or a compound bevil, of any required angle or angles, could be produced with accuracy. The case, therefore, on the part of the plaintiff was, that this machine, so erected at Woolwich, and for which the defendant had already received a large sum of money, was, with some trifling exceptions, precisely similar, in its most important and essential features, to the one for which the plaintiff had obtained a patent; and, therefore, if he established that fact to the satisfaction of the jury, he should be entitled to their verdict.

The specifications and the letters patent, as well as an assign

ment of the letters patent from Smith to the plaintiff; and also a model of the machine, invented by the plaintiff, were then put in.

In answer to the plaintiff's declaration, the defendant pleaded, that Junius Smith was not the true and first inventor; that he was not in possession of the invention when he obtained the patent; that the invention was not new or useful; that it would not perform what it was stated in the specification it was intended to do; that the specification was not sufficient, and did not accurately describe the invention; that the defendant's machine was superior in every respect to the plaintiff's alleged invention; and, lastly, that the defendant's machine was not an infringement on, or imitation of, the plaintiff's.

On behalf of the plaintiff, Mr. J. Smith deposed, that he acted as the agent of Mr. Hamilton to obtain the patent in England; his correspondence with the plaintiff, in reference to this matter, began in 1841. In June, 1842, he received from plaintiff a letter, containing the specification and rough sketch of the machine; and, in consequence of instructions accompanying the specification, took steps to obtain a patent in England. In April, 1843, Mr. Hamilton, jun., came to England, and received from witness the specification for the patent.

Mr. Samuel Haven Hamilton stated that he was the son of the plaintiff; that he came to England in April, 1843, about the patent; that he obtained from last witness the specification, and handed it to Messrs. Newton and Son, with instructions to complete the patent, and prepare the specification for signature; that he received the specification again, and took it with him to Paris, where he gave it to Mr. Livering to obtain a French patent.

Mr. William Edward Newton, of the firm of Newton & Son, civil engineers and patent agents, proved receiving instructions from the last witness, some time in May, 1843, to complete Junius Smith's patent; also received from him the American specification, and instructions to prepare the specification for English patent, which was accordingly done;-the patent being sealed on June 3rd, 1843, and the specification signed by Smith on July 5th of the same year.

On behalf of the plaintiff various scientific witnesses were called, to prove the usefulness and novelty of the invention, and the sufficiency of the specification. The principal of these were Mr. Carpmael, civil engineer; Mr. Cowper, professor of machinery at King's College; Mr. Cottam, engineer; and Mr. W. E. Newton, civil engineer and patent agent. The testimony of these gentlemen went to prove that the drawings and specifications of the plaintiff's machine were so plain and intelligible that a machine could be readily constructed from them. They had seen the machine at work at Stepney. The object of it was to cut wood for ship-building to any required shape, thereby obviating the tedious process of first using the hand-saw, and then shaping

J

saw.

with an adze. The principles of the invention were twofold:first, the application of an inner saw-frame or gate, capable of moving within the ordinary saw-gate of a saw-mill; the saw being stretched in the inner frame on an axis, so as to admit of varying the direction of the cutting by means of a split-bar or lever, used for directing the saw. Another principle was, that the timber required to be cut had an axial motion given to it, when necessary, so as to produce any required bevil with the The witnesses described some other particulars, and stated, that, from their knowledge of engines and mechanics, they had no doubt that the combination of the principles referred to were an entirely new invention when the plaintiff obtained his patent in 1843.-In cross examination, it appeared that all these witnesses had seen the defendant's machine, at Woolwich, and that, in their opinion, the defendant's machine was precisely similar in principle to the plaintiff's. Defendant's machine had two sawframes in an outer gate,-both saws being moveable on their axis. There was some difference in detail between the defendant's and plaintiff's machines; for instance, the defendant does away with one side of the inner saw-frame; this, however, gives rise to a difficulty, which is, that it causes the inner saw-frame to bind, and prevents it from running freely on the outer frame or gate. The defendant's saws were mounted outside the inner saw-frames, and they were worked on their pivots by a parallel motion instead of direct, by means of a forked lever or split. In defendant's machine there was also a roller under the log, for the purpose of supporting it. In plaintiff's machine there was no roller, as it was not considered necessary. The witnesses all saw logs cut in plaintiff's machine, and, although the logs were very crooked ones, there did not appear to be any necessity for a support; if, however, one should, in extreme cases, be required, the specification provides a plan of supporting the log, by means of a weighted lever. The witnesses were examined at some length, as to their knowledge of a previous patent granted to the plaintiff, Mr. Hamilton, in 1833, for a machine for sawing ships' timbers with plain or compound bevils; and they were unanimously of opinion, that although the machine specified under that patent might possibly be made to work, yet that it would be an operation requiring such skill and attention on behalf of the workman, and was so extremely difficult to manage, as to be nearly useless for commercial purposes. A model of this machine was in court, and its construction was explained by one of the witnesses; and it was shewn, that the mode of turning the log, to produce the bevil, was different in principle in both the machines patented by the plaintiff,-viz., the patents of 1833 and 1843; and that the defendant's plan, although somewhat different in detail, was substantially the same in principle as that described by the plaintiff in his specification of 1843.

Mr. Ward, M.P., the secretary to the Admiralty, proved that