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stated in the specification ; namely, by the use of machinery similar to that used in cotton spinning; and it was proved, that the silk produced by the plaintiffs' process was very superior in beauty and value. On the part of the defendant, evidence was given to shew that long before the plaintiffs' patent, silk waste in the long uncut fibre had been spun by the common machine for spinning flax, and sold in large quantities; that any workman might vary the distance of the spindle from the roller, as described in the specification, at pleasure, and that this had often been done; and that the brass bosses and water trough had long been in general use in the same manner as described in the specification. Notice of objections had been delivered under the 5 & 6 W. 4, c. 83, s. 5, but nothing turned upon the objections. An application was made for a nonsuit, on the ground that there was no evidence, that the defendant had made, used, or put in practice the invention, or had counterfeited, imitated, or resembled it. The Lord Chief Justice refused to nonsuit, but reserved leave to the defendant to move to enter a nonsuit; and the jury returned a verdict for the plaintiff upon all the issues except the second and third, and as to these, they found that the invention was not new, but was an improved process, and not a new combination.

Nov. 4.—Channell Serjt., in last Michaelmas term, obtained a rule nisi to enter the verdict on the second and third issues for the defendant: or to set the verdict aside and enter a nonsuit; or to arrest the judgment; and

Bompas Serjt., on the next day, obtained a cross rule to enter judgment for the plaintiffs on the special finding; or, in the event of the court being of opinion that the verdict was incongruous, for a new trial.

[189] Bompas Serjt. now shewed cause against the rule obtained on behalf of the defendant.

First, as to entering a nonsuit. This applies to the first issue. The evidence clearly shewed an infringement of the patent by the defendant, supposing the patent to be valid. It appeared that parties had been employed by the defendant to make silk by the plaintiffs' process, and that the silk so made had been sold by the defendant; this was, in effect, a making by him. [Tindal C. J. Upon the principle qui facit per alium, facit per se (a).]

Secondly, as to arresting the judgment. This is applied for on the ground that the specification, as set out in the fifth plea, is not sufficient. Two objections, it is understood, are raised to the specification ; first, that the processes, by which the improvement is carried into effect, are not described ; and, secondly, that no distinction is made between the old and new parts of the invention. As to the first point, it is submitted that the description of the process is sufficiently intelligible. No doubt, any one might use the machine in question for the purpose of spinning flax, notwithstanding the plaintiffs' patent, but it is new, as applied to the spinning of waste silk; and the jury have found that it is an improved process for that purpose ; it is therefore the subject of a patent. Even the omission of part of a former process, if it give rise to an improvement, may be a good ground for a patent; as in Russell v. Cowley (1 C. M. & R. 864), where the plaintiff had obtained a patent for manufacturing metal tubes, by drawing them through pierced dies or holes ; and it appeared that a former patent had been obtained for a similar method of ma-[190]-nufacturing tubes by drawing them through rollers, with the additional use of a maundril or stamp. The maundril was not used in the plaintiff's process, and the patent was held valid, as being a great improvement on the former process. As to the second objection; it is sufficient to support a patent for an improvement, if, from reading the specification, an ordinary workman can distinguish the old parts from the new ; as in Harmer v. Playne (11 East, 101. S. C. in Chanc. 14 Ves. 130), where the plaintiff having obtained a patent for a certain manufacturing machine, of which he duly inrolled a specification, afterwards obtained another patent for certain improvements in the said machine, in a latter grant by the former patent was recited; and it was held, that a specification containing a full description of the whole machine so improved, but not distinguishing the new improved parts from the old parts, or referring to the former specification, otherwise than as the second patent recited the first, was sufficient. But, independently of these objections, the plea contains an averment, that the specification did not particularly describe the invention. This averment is traversed, issue is joined thereon, and the jury have found that the specification was sufficient. The defendant, therefore, cannot avail

(a) As to the application of this maxim, see 20 Vin. Abr. 466, 21 Vin. Abr. 75.

himself of the other parts of his plea, which are not in the issue, in order to arrest the judgment.

Thirdly, as to entering the verdict on the second and third issues. It is to be observed, that the present patent is not for any article of manufacture, but for a process. The distinction is pointed out in Rex v. Wheeler (2 B. & Ald. 345). The process here consists of eight several heads or parts, all of which form but one whole ; and the patent is taken out, not for any of the separate parts, but for the whole. It appears from the evidence that, [191] before the plaintiffs' patent, the spinning of silk-waste was performed by the machinery used for cotton-spinning. The plaintiffs have applied the machinery for flax spinning to the spinning of silk-waste, and the jury have found it to be an improved process; and, consequently, a great improvement upon the old method of spinning silk-waste. It is said that some parts of the process have been used before for the same purpose; but that will not vitiate the patent if there be novelty in the whole. And, indeed, it may be very doubtful upon the evidence, whether there was any publicity in the previous use of those parts of the process. It is probable that the jury took an incorrect view of the meaning of the words “new invention ;” and that as the thing manufactured was not new, and the machine for the purpose was not new, they fancied there was nothing to countenance a claim of a new invention. But that is not so. It was a new or an improved process; and that is a new invention. Or if it be only an improvement, as the jury have in fact found it to be, it is an invention so far as the improvements go, and the subject of a patent. Taking the whole together, it is new as regards the manufacture of silk-waste; it is a new mode of spinning it, and it is for that the patent is taken out. (Cresswell J. It appears that the plaintiffs do not claim the machine, or any part of it, as theirs. It is just as if the old machine for flax-spinning were used in their process.]

Channell Serjt., in support of the rule obtained on behalf of the defendant.

First, as to entering the verdict upon the second and the third issues. The declaration alleges that this was a new invention; this allegation is traversed by the second plea; and the jury have found that it was not a new invention, or a new combination, but an improved process. Upon this issue, therefore, the [192] defendant is clearly entitled to the verdict. What is found for the plaintiffs does not give them a right to the patent; and what is found for the defendant wholly destroys it. It is possible that an improved process may be a new invention; but it cannot be so considered in this case, as the jury have expressly found, that though the plaintiffs' was an improved process, it was not a new invention.

The plaintiffs' patent is taken out for the invention of a new process, &c., consisting of improvements; but in fact whatever novelty there is in the process consists merely in the application of a known process for the purpose of spinning silk; and that will not support the patent. In Hill v. Thompson (3 Mer. 622, 629. S. C. in C. P. 8 Taunt. 375, 3 B. Moore, 424), Lord Eldon C. said “there may be a valid patent for a new combination of materials, previously in use for the same purpose, or for a new method of applying such materials; but in order to its being effectual, the specification must clearly express that it is in respect of such new combination and application, and of that only, and not lay claim to the merit of original invention in the use of the materials.” In Brunton v. Hawkes (4 B. & Ald. 541) a patent for improvements in the construction of ship's anchors, windlasses, and chain cables, was held not to be supported unless there were novelty in each invention ; and therefore as it turned out that there was no novelty in the construction of the anchors, it was held that the patent was wholly void. In the present case the invention of certain improvements is made part and parcel of the patent; but it is found there was no new invention in the process. In Kay v. Marshall (4 New Ca. 492, 7 Scott, 548), a patent was taken out in respect of new machinery for preparing flax, and improved machinery for spinning (193] flax : the improvement as to spinning consisted in spinning at a shorter reach than had before been practised; but the contraction of the reach was rendered practicable by the maceration of the flax in the new machinery for preparing it : for spinning machines, varying in the distance of the reach, had been in use before; and this court held that the patent was void, though the machinery for preparing the flax was new and useful. That case went afterwards to the House of Lords, and the decision of this court was supported (a). From [194] these cases it is clear, therefore,

(a) In that case (Kay v. Marshall) the plaintiff filed a bill in Chancery for an

that if a patent is taken out for an invention consisting of several parts, any one of which is not new, the whole is void. The jury have negatived what is claimed by the plaintiffs, namely, invention ; and the finding that the plaintiffs have introduced an improved process, can only mean that old machinery, and previously known principles, have been more skilfully applied by them: but this will not support the patent. The patent consists of eight heads or parts; the fourth and fifth it is not material to consider; the [195] seventh and eighth may also be omitted; for they relate to the question whether there has been any combination ; which the jury have negatived ; the sixth, the plaintiffs say, consists, "in the application of their improved process to the throstle machine, on the principle of the long ratch for the new and useful purpose of spinning silk-waste.” This must mean the process as described in the first three heads; the

aster of the hotelit and posecondly, the

injunction in H. T. 1835 ; but he did not apply for the injunction pursuant to the prayer of the bill. The defendants, after the usual time for demurring had elapsed, made a special application for leave to demur, which was refused by Shadwell, V. C., but granted, upon appeal, by Lord Lyndhurst C. The demurrer was filed, and came on to be argued before the Vice-Chancellor on the 2d of June 1835 ; and on the 9th his Honor ordered the demurrer to stand over for twelve months, and that in the meantime the plaintiff should be at liberty to bring an action. Upon an appeal to Lord Cottenham C. (1st of February 1836), this order was discharged, and the demurrer was overruled (see 1 Mylne & Craig, 373). The defendants then applied to Lord Langdale M. R. for leave to file a double plea to the plaintiff's bill, which was granted (see 1 Keene, 190), and the pleas were filed accordingly ; first, denying that the plaintiff had invented any new and improved machinery ; secondly, that the alleged invention was not of any public benefit and utility. Upon the case coming on to be argued before the Master of the Rolls on the 19th of March 1836 the plaintiff proposed to waive all objections in point of form, on condition that the defendants would consent to proceed at once to a trial at law of the pleas, without first going into evidence in equity ; and this having been agreed to by the defendants, a replication was filed, and a decree made, by the Master of the Rolls on the 2d of June 1836, directing a trial at law upon issues in the terms of the two pleas; and liberty was given to the judge who should try the cause, to indorse special matters on the postea. The issues were tried at the Yorkshire summer assizes for 1836, before Parke B., when his lordship expressed an opinion that it was not the intention of the Master of the Rolls in directing the issues, that the question of the legal validity of the plaintiff's patent should be inquired into upon the trial, but only that the facts of the case should be ascertained, leaving the question of law to be afterwards disposed of by the court; whereupon the jury, under his lordship's direction, found a verdict for the plaintiff on both the issues, and the special facts were indorsed on the postea (see 5 New Ca. 495). The defendants applied to the Master of the Rolls for a new trial or a special case, on the ground that the learned baron had taken an erroneous view of the nature of the inquiry intended to be submitted to him by the Master of the Rolls, and that the trial ought to have proceeded in the same manner as if an action had been brought at law upon the patent, and the same pleas pleaded in defence to such action, whereby the whole question of the validity of the patent in point of law in respect of the two grounds taken by the pleas would have been tried and disposed of. The motion came on for hearing on the 28th, and again on the 31st, of January 1837, when, at the suggestion of the Master of the Rolls, and with the acquiescence of both parties, an order was made that a case should be stated for the opinion of this court. After some further discussion the case was agreed upon between the parties, argued in this court, and a certificate returned, that the patent was not valid in law (see 5 New Ca. 492; 5 Scott, 501). The cause came on to be heard again for further directions before Lord Langdale M. R. on the 27th and 28th of May, and the 3d of June 1839, when the question as to the validity of the patent was again argued, and on the 16th of July his lordship ordered that the plaintiff's bill should be dismissed with costs (see 1 Beav. 535). The plaintiff appealed to the House of Lords against the two orders of the 31st of Jan. 1837 and the 16th of July 1839* ; which appeal was dismissed on the 18th of June 1841.

* The above statement of the principal facts and proceedings is compiled from the printed cases of the appellant and the respondents in the House of Lords.

first of these relates to the discharge of the gum from the silk-waste; the second, to dyeing the silk-waste. It is necessary, therefore, to refer to that part of the specification where the processes of discharging and dyeing are described ; and it appears that no new mode of performing either operation is claimed ; the only difference being as to the time when the operation is to be performed. These, therefore, are no subject for a patent; and all the eight heads being essential to its validity, and expressly made so by the concluding paragraph of the specification, the destruction of any of them destroys the whole patent.

As to entering a nonsuit, the declaration does not charge, nor was any proof given, that the defendant sold any article for which the plaintiffs had a patent. If the silk, then, is to be considered as made by the defendants (and that point, after what has fallen from the court, is not insisted upon), still the sale of it does not support the charge in the declaration. [Cresswell J. How could the plaintiffs charge a vending? They do not claim any articles of sale ; but a mere process; and that may raise another question, whether there can be a patent for any thing that is not vendible.]

As to arresting the judgment, if the specification, as set out by the defendant in his plea, does not disclose the subject matter of a patent, the action must fail. The construction of the specification is for the court ; [196] Neilson v. Harford (8 M. & W. 806). In that case it was said by the court (b) that if a specification contained an untrue statement in a material circumstance, of such a nature that, if literally acted upon by a competent workman, it would mislead him, and cause the experiment to fail, the specification would be bad, and the patent invalidated, although the jury, on the trial of an action for the infringement of the patent, found that a competent workman acquainted with the subject, would not be misled by the error, but would correct it in practice. In the present case, there is an uncertainty as to the subjectmatter of the patent; and it is not sufficiently pointed out which are the new parts and which are the old. Harmar v. Playne will not assist the plaintiffs upon this point; for in that case a former patent had been granted to the same patentee, which was recited in the later patent; so that there was a reference from one to the other; but in the present specification there is nothing which refers to any previous information.

TINDAL C. J. This is a rule obtained by the defendant calling upon the plaintiffs to shew cause why the verdict found on the second and third issues should not be entered for the defendant, or why the verdict should not be set aside and a nonsuit be entered, or why there should not be an arrest of judgment.

I will endeavour to answer the two latter points first, which do not involve the main question in the cause.

As to the first of these, a sufficient answer has, in fact, been already given in the course of the argument. The breach alleged in the declaration is, that the defendant had “directly and indirectly made, used, and put in practice the said invention, and every part thereof, and counterfeited, imitated, and resembled the same." proof in support of this breach was, that an order had been given by the defendant, in England, for the making of silk by the same process as the plaintiffs'; which order had been executed in England; and that is enough to satisfy the allegation in the declaration,--that the defendant made, used, and put in practice the plaintiff's invention,though the silk was, in fact, made by the agency of others.

With respect to the last objection, which is taken on arrest of the judgment upon the issue raised by the fifth plea, I think no sufficient ground has been established for that purpose. The plea contains the following allegation as to the specification ; that it “did not particularly describe and ascertain the nature of the supposed invention, and in what manner the same were to be performed.” The jury have, in effect, found that the specification was sufficient, so that a workman of ordinary skill might understand the process and pursue the plan pointed out, so as to produce the proper result.

This plea goes to the whole declaration, and the issue has been found against the defendant. No authority has been cited to shew that, where a plea has been found to be false in fact, and the verdict has been against the defendant on that part of the plea which is put in issue, he can avail himself of another part, which is not in issue, in order to arrest the judgment. If the defendant had intended to avail himself of

(6) Ib. 824. The point was not decided in that case, as the patent there was held valid.

[197] The

the insufficiency of the specification, he might have stated that the patent was void in law, and the question might have been raised on the record, and determined on demurrer. But, after having put in a plea which contains a confession of the whole right of action—which plea is found to be false in fact on the point in issue,--the defendant now seeks to use the other portion of the plea, which is not put in issue, not merely as an admission, on the part of the plaintiffs, for the purposes of the plea, but as an [198] answer to the right of the plaintiffs to recover. The plea contains two allegations; first, that the plaintiff's did not inrol any other instrument than the one previously set out in the plea; and, secondly, that such instrument is not sufficiently particular. The issue is taken on the latter of these allegations; and this admits only that no other specification than the one stated had been inrolled ; but the defendant has no right to say that the specification is not only defective as to its particularity, but is also bad for other reasons. I think, therefore, that he is not in a situation to call upon us to arrest the judgment.

We come then to the main question in the case, namely, whether the defendant has a right to have the verdict entered for him on the second and third issues. These issues are, first, whether the plaintiffs were the true and first inventors of the process described ; secondly, whether the alleged invention was a new invention ; and the special finding of the jury upon them is, that the invention was not new, but an improved process, and not a new combination. Now, according to the plain meaning of these words, the jury appear to have found that there was no novelty in the plaintiffs' alleged invention ; that it contained no new combination, but that it was only an improvement in an old process; and the question is, whether, if this finding is supported by the evidence, the issue is found for the plaintiffs or the defendant; and it appears to me that it is found for the defendant, and that the verdict ought to be so entered accordingly.

In order to ascertain this point, let us see what it is the patent is taken out for, and what the specification declares to be the nature of the discovery. The invention is said to be “a new or improved process or manufacture of silk, and silk in combination with certain other fibrous substances ;” and the nature of the inven-[199]-tion is said to consist in eight different branches or parts of the process of spinning the silk. It appears, therefore, that the patent is taken out strictly and entirely for a process.

It is not necessary, on this occasion, to go into the question, whether or not a patent can be supported for a process only. If the specification were properly prepared, it probably might be considered a fit subject for a patent. Lord C. J. Eyre seems to be of that opinion in Boulton v. Bull (2 H. Bla. 463), where his lordship, in giving judgment, says, “When the effect produced is some new substance or composition of things, it should seem that the privilege of the sole working or making ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which though perhaps also new, will be only useful as producing the new substance” (ib. 492). And he adds, “When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating, with or without old mechanism, by which the effect is produced” (ib. 493), And there are other passages in the judgment to the same effect. Such also seems to have been the opinion of the court, pronounced by Abbott C. J. in Rex v. Wheeler (2 B. & Ald. 345), where this language, carefully guarding against an abuse of the doctrine, is used ; " the word “manufactures' has been generally understood to denote either a thing made, which is useful for his own sake, and vendible as such, as a medicine, a stove, a telescope, and many others, or to mean an engine or instrument, or some part of an engine or instrument to be employed, either in the making of some previously known article, or in some other useful purpose, as a [200] stocking frame, or a steam-engine for raising water from mines. Or it may perhaps extend also to a new process to be carried on by known implements, or elements acting upon

known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a bette and more useful kind. But no merely philosophical or abstract principle can answer to the word manufactures. Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, or at the least some new mode of employ. ing practically his art and skill, is requisite to satisfy this word.” And in a subsequent part of the same judgment it is said, “Supposing a new process to be the lawful subject

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