Now it is admitted to be an invention of great genius, skill, and knowledge, and that the defendant has imitated it; no objection is made to the governor or to the purifier; the only question is as to the retort, and the defendant must prove this to be of no utility to entitle him to the verdict.

The jury, with the concurrence of the learned judge, without hearing the summing up, found a Verdict for the plaintiff.

Motion for a

nonsuit.

CROSSLEY V. Beverley.

Hil. T. A.D. 1830, Cor. Lord Tenterden, C. J., Bailey, J.,
Littledale, J., and Parke, J.

Brougham moved for a rule to show cause why a nonsuit should not be entered. The improved gas apparatus, the subject of the patent, consists of four several parts; a retort upon a new construction, a purifying apparatus, a gauge, or rotative gasmeter, and a self-acting governor. No question at all material to the present motion arises upon any of them except the third, the gas-meter. It appeared that the object being to measure successively the portions of gas which should be introduced into any burners or lamps from the reservoir where the gas was kept, or from the furnace where the gas was originally evolved, that purpose was accomplished in this way: a drum or hollow wheel, or hollow cylindrical vessel, was filled successively with gas, and, by a contrivance, the gas was let out in portions equal of course to the solid contents of that cylinder, and then by a clock work movement of some sort, which is no part of the invention, the number of the revolutions of the cylinder was registered, so that at any interval of time (very long intervals as well as very short) the number of revolutions the cylinder had performed could be told; it is so contrived that at each revolution it should be completely emptied of the gas. If the number of the revolutions of the cylinder be registered, it follows of course the quantity of gas which had been consumed in the time would be known. Every thing, therefore, depended upon giving a rotary motion upon its axis to that cylinder, and upon expelling the gas fully each time that a revolution of the cylinder was performed. This is stated in great detail in the specification, and illustrated by figures; and the means upon which every thing depended, the means in the first place of giving the rotation, and in the next place, of completely expelling the gas at each revolution, are laid down in the specification. The contrivances for that are certainly of considerable ingenuity. At the proper periods of the revolution, the hollow arms conveying the gas are to be sealed, as it is called, that is, filled by water carried in

suit.

buckets, which at a particular period of the revolution become Motion for noninverted, and pour the water into the hollow arms so as to seal them, and thus cut off the communication at the proper part of the revolution. There are also hoods to cover the opening in the outer rim at proper places and proper times of the revolution, so that the effect is produced of completely expelling the gas, and always securing that at each revolution the gas which had been taken in to fill the partition should be expelled, and that the water should only come in at the proper time, and that the water should be expelled at the proper time.

The objection to be taken to the validity of this patent depends entirely upon this part of the invention. That which does not often occur in patent cases occurs on this occasion, and from its so seldom happening arises the fact, which is undeniable, that the objection now made has hardly ever been made before. As the action was brought not by the patentee, but by the assignee of the patent, the patentee himself was examined. There was a difficulty as to a release under the assignment, but that was effected, and he became a competent witness. It appeared in his examination, that though he had in his mind the general idea of a rotary motion, of the measuring of gas by a drum or hollow cylinder, and of conveying a rotary motion to the hollow cylinder by introducing the gas inside, and disturbing the water in which the cylinder was placed, so as to alter its centre of gravity, and occasion and give a beginning to the motion which was afterwards kept up; that though he had that in his mind at the time when he applied for and obtained his patent, yet that between the date of his patent and the enrolling of the specification, he had made three material inventions, of all which, taken together, the gas apparatus consisted. He invented the buckets, and the sealing by means of those buckets; he also invented the hoods at the same time that he invented the buckets, and the sealing by means of the buckets; and though it did not appear so distinctly, it rather appeared, upon the whole of his examination taken together, that the hollow axle was invented nearly about the same time, and subsequent to the grant of the patent.

Great reliance in the whole cause was placed upon the hoods, and for this most obvious reason—that it was therein the imitation had taken place.

Now though it is not necessary that an inventor, when he applies to the crown for a patent, should have stated in writing, or, according to the language of the grant, "ascertained in writing," the whole of his process, or have reduced it to writing, or put it into words, he must have had in his mind the idea of the whole of the process, of the whole of the machineif it is a machine, which in the present case it clearly is-so that he can state to the crown in his petition with truth and

Q

suit.

Motion for non- correctness, and upon which statement the patent is granted to him, that he has invented that of which he claims the sole and exclusive use during the time. It is needless to point out the consequences that would follow if a man were only to go with a rough idea in his mind, and say he had formed an idea in his mind, and it is very probable he might have invented the main part, it is very probable the whole of the principle might be in his mind and familiar to his thoughts, when he stated he formed the invention; but he must have invented the manner in which that purpose is executed; he must, to use the words of the specification, have invented the contrivances by which it was so arranged that each of these boxes or chambers will be filled with gas from the entrance pipe, and emptied of the same into the exit pipe, every time the wheel makes a revolution. There are two figures; the one called figure 10 was the one which alone appeared ever to have been usefully employed, the figure 12 having been one of great complexity. [Lord Tenterden, C. J.: It was upon the same principle, but more complex.] He says in his examination, he had invented the scrolls, the complex one before the patent, but the other one, which was a very great improvement upon the other (that there was not the least doubt of), which alone has ever been used, the other being found useless from its complexity; the simple and ingenious contrivance for accomplishing its purpose of successively filling and emptying, by means of sealing and opening the tubes at the several times of the revolution; that was figure 10, and it was quite clear that had occurred to him after the patent was obtained, and between that and the enrolment. [Bailey, J.: He knew at the time he took out the patent he had discovered a new method; but between the time when the patent was taken out, and the time he made out his specification, he discovered certain improvements.] Certain improvements which he added to it, and which he makes a part of the specification. Now if any thing is added to a specification which is at all different from, or an addition to, the patent, of course the specification is void as to that, and is void as to all; but it is also perfectly clear, and it has been so held, that if, for any thing in the specification the patent would be void, the patent would be void for the whole (a).

Now it signifies not whether any thing is void in the specification, on account of its not being new, or on account of its not being useful, or on account of its not answering the description; these are all grounds upon which its invalidity would be clear, but it signifies not whether those be the grounds of the invali

(a) The learned counsel referred to Hill v. Thompson, 3 Mer. 622; R. v. Wheeler, 2 B. & Ald. 349; and Brunton v. Hawkes, 4 B. & Ald. 541. These patents were void on the ground of false suggestion; but there would be no false sugges

tion in this case, provided the patentee had invented a gas apparatus which would have acted, however greatly improved an application of the same principle the one subsequently invented might be. See ante 42, n. and per Littledale, J. post.

suit.

dity of any part comprised in the specification, or whether it is Motion for nonvoid upon any other ground. Now I submit it would clearly be void equally if it is in the specification and had not been invented at the time the patent was granted, because the patent is only granted for that which is invented at the time the application is made. The inventor petitions the crown in the words that are always used, and which are set forth in the declaration: "he represented that he had, after considerable application and expense, invented an improved gas apparatus, which invention he believed would be of general benefit;" and upon that the crown granted him the exclusive use of that invention for a certain time, but it was upon the condition that he should specify what it is he had invented. He can only specify that which he had invented, but he specifies beyond what he had invented-for instance, the buckets and the hoods; if he specifies the buckets and the hoods beyond what he has invented, pro tanto it is void. He has no machinery of the buckets or the hoods; the specification, therefore, quoad hoc is void, and, therefore, according to the principle in Hill v. Thompson, the whole is consequently void. Indeed it would appear in this case that the whole consisted in the contrivances. The way in which the purpose was executed was here every thing, for the whole is a gas apparatus, and, although one mode of accomplishing his purpose might have been known at the time he applied to the crown, and, therefore, with regard to that, he may be said not to have deceived the crown in his statement, because he had invented that at the time; but when he afterwards adds another, as if it was part of his original invention, it is a deception which, if practised, it signifies not either upon the public subsequently, or upon the crown in the application, is equally a deception, because the person is only to specify that which he had invented before. [Bailey, J.: You say this—that if a man improves upon the thing for which the patent is taken out, between the period of time when the patent is granted and the specification, he must either take out a new patent, or he must keep to himself that improvement.] Certainly, because, in fact, the specification is the descriptionthat is, he describes and specifies the whole of the invention for which he obtained the patent. He might be called upon at the time for a specification, and may, in certain cases, in consequence of a caveat, be called upon to give every one figure of his patent. I am quite aware that is not what is constantly done on the contrary, I may say, the opposite practice is more frequent (b). [Bailey, J.: Would it not be an objection to the

(b) The object of the law officers of the crown, in cases of this kind, namely, the ascertaining whether the inventions of two rival applicants are the same, or sufficiently distinct to support separate letters patent, would, it is conceived, rarely require

the detailed account here stated. The first question in this case would have been, whether the invention of the opposing party possessed the peculiar feature of measuring the gas by the rotation of a vessel, and the alternate filling of its chambers

suit.

Motion for non- patent, that you, having taken out your patent for a new apparatus for making gas, had, before you came to your specification, discovered some important improvements in that apparatus; would it not be bad if you did not specify those improvements in your apparatus, but were merely confining your specification to what was your knowledge at the period of time at which the patent was taken out?] I do not see how that could be a fatal objection, and for this reason-I take it, that, strictly speaking, the whole must be considered one exposition, and at the time the party applies to the crown, he may be called upon to specify the whole; for, suppose a caveat is entered, he would have to go before the Attorney General, and the Attorney General may call upon him then and there to state every part of his invention, and to give very minute information of it. Time is given to him in order to prepare it by reducing it to writing. [Littledale, J.: That general statement of his invention upon which he first applies to the crown, is equally applicable to the present specification, and to what the specification would have been if he had merely put down what was passing in his own mind at the time of the specification; the description of the patent is the same.] It is applicable to it as far as it goes. [Littledale, J.: The description of the invention upon which he first applied would not have been varied.] No, because the description is so general-it is" a Gas Apparatus." [Littledale, J.: And, therefore, it is something which is passing in his mind, and which he never discloses to any one until he exhibits a machine of the power of ten, and when he applied for a patent it had only a power of five.] He applies for a patent for one thing, and he specifies that, and one or two other things, which other things I admit will come under the same general principle. [Lord Tenterden, C. J.: And all founded upon the same principle.] Founded upon the same principle, but different contrivances for carrying the principle into execution. [Lord Tenterden, C. J.: Different mechanical contrivances for carrying it into effect.] And some of those contrivances he had invented between the grant and the specification. They are new inventions, and they might have been the subject-matter of a new application for a new grant.

"a

Lord TENTERDEN, C. J.: That would have been less beneficial to the public, because it would have prolonged the time of the monopoly. The objection really would come to this. If at the time a person applies for the patent, he has in his mind an invention capable of producing the effect which he represents it

with gas and water; such rotation being due to or produced by that alternate filling. The next question, supposing both parties to have hit upon this principle, would have been as to the particular modes, and then the particular question of the

hoods might have arisen, for neither party could have had a patent under these last-mentioned circumstances, except for the particular mode of applying the principle. See Law & Practice, IND. tit. Opposition.