Plaintiff's case.

Novelty and utility.

JONES v. PEarce.

Cor. Patteson, J. Trin. Vac. 1832.

The declaration assigned as breaches-That the defendant made and sold divers wheels for carriages in imitation of the said invention; made divers, &c. on the said improved plan, and in imitation of the said invention; used and put in practice divers, &c. on the said improved plan, and in imitation of the said invention; counterfeited the said invention, and used and put in practice divers, &c. on the said improved plan, and in imitation of the said invention; imitated the said invention, and used and put in practice divers, &c. on the said improved plan, and in imitation of the said invention; imitated in part the said invention, and used and put in practice divers, &c. on the said improved plan, and in imitation of the said invention; made divers wheels for carriages with certain improvements on the construction thereof respectively, intended to imitate and resemble, and which did imitate and resemble, the said improvements so invented by the said plaintiff as aforesaid.

Plea-Not guilty.

Sir James Scarlett stated the plaintiff's case, and described his wheels as made entirely of iron, and on the principle of suspension, that is, the weight (in consequence of the spokes or rods being made without shoulders or mortisings at the parts where they entered the box or nave, which allowed them on the least pressure from the revolution of the wheels to slip upwards into the nave) was suspended from the upper parts of the wheel. The witnesses for the plaintiff stated, that the plaintiff's wheel was constructed on the suspension principle, by relieving the lower rods or spokes from pressure, and bringing tension on the upper ones; and that they had never known the principle usefully employed, or heard of any invention of the sort in use, except for water wheels, previous to the plaintiff's patent. That the conical heads and the nuts were important features of the invention, and a well-contrived nicety; that fellies of wood would be destroyed in a very short time; that the wheels possessed great lightness and durability, and were getting into very general use; that one firm, by a contract with the plaintiff for the supply of wheels, would save as much as £187 a year. On cross-examination a model wheel was produced, which witnesses admitted to be on the same principle as the plaintiff's, which principle (in the words of the specification) consisted in the use of iron or other metal rods in lieu of spokes, by which is hung or suspended the weight or load from that part of the wheel which happens to be uppermost, and prevents any support being given to the weight by the rods which happen to be immediately

under the axletree; but stated that a wheel constructed accord- A. D. 1832. ing to that model could never be used; that it would break to pieces; if it could be used it would be an infringement of the plaintiff's patent; also, that the plaintiff's specification was applicable to both wheels, but that the plaintiff's would be more secure; that the only difference appeared to be, that in the plaintiff's the nuts have separate cells, and the rods go quite through the fellie.

The plaintiff's foreman stated that he saw at the defendant's Infringement. premises a pair of gig wheels like the plaintiff's, made on the suspension principle; the fellie, however, was of wood, bound round with an iron tire or rim. The nave was of wood, bound with wrought iron. The spokes or rods were without shoulders at the outside of the nave, but within they were fastened with nuts. The suspension principle was the same as the plaintiff's, but the nuts were not divided into cells like his; nor could he tell how the rods were inserted into the wooden fellie, because of the iron tire which was on its outside; their heads did not come through the tire-they were hid. He only saw two wheels, one was on the gig, the other against the wall; it had no shield, but it appeared as if there was going to be one. He did not notice the screws to fasten the shield.

case.

Campbell, for the defendant, contended, first, that the inven- Defendant's tion was not new, wheels according to the model which was produced having been invented by Mr. Strutt in 1814, made under his orders, and publicly used near Derby for two years; secondly, that there was no infringement, the defendant's wheel, according to the evidence, being differently constructed; thirdly, that the specification did not confine the claim to any particular mode of constructing wheels on the suspension principle, but expressly claimed the invention of the principle itself.

The learned judge overruled the latter objection, being of opinion that, on the specification taken as a whole, the claim was for the invention of a method of making wheels on the principle of suspension, which method was described in the specification.

Witnesses for the defendant stated that they had made in 1814, for Mr. Strutt, a pair of wheels of which the model put in was a rough model; that the wheel had been put to a cart and used for carrying heavy loads of stones (30 cwt.) on the public roads for upwards of a year. The spokes occasionally got bent, and the box, or nave, becoming broken, the cart was laid by. A pair of these wheels, three feet high, were used on a milk cart for carrying the milk, every morning, of from thirty to fifty cows, from one of Mr. S.'s farms to his factory, where the milk was sold to the work-people. The wheels of this milk cart were on the suspension principle, and the spokes were braced together like the strings of a drum. The rods of the cart wheels were thicker at the heads, where they were put in through the outer edge of the

wooden fellie, and counter-sunk into iron plates in the fellie. Over the fellie was the iron rim, or tire. The spokes, or rods, were frequently straightened, and the wheel was worked until the iron tire was wore thin on the edges. Counter-sinking and conical heads are the same thing in different terms.

Sir James Scarlett, in reply, contended, on the authority of Dollond's case (ante 43), and of Lewis v. Marling (4 C. & P. 52), that the defendant's evidence did not show such a use of Mr. Strutt's wheel, or publication of the principle of suspension as applied to carriage wheels, as would impeach the plaintiff's right to a patent (b).

PATTESON, J., having summed up the evidence, proceeded as follows: "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 every body 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 plaintiff'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 An experiment, of opinion that Mr. Strutt's was an experiment, and that he found failure, ceasing it did not answer, and ceased to use it altogether, and abandoned donment, will it as useless, and nobody else followed it up, and that the plaintiff's invention, which came afterwards, was his own invention, pendent inven- 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; then the only remaining question would be, whether the defendant has or not infringed the patent.

to use, and aban

not vitiate subsequent inde

tion.

"Now as I have told you before, it seems the defendant has constructed a wheel whose construction is on the suspension principle; that alone would not make it an infringement of the plaintiff's patent, because the suspension principle might be applied in various ways; but if you think it is applied in the same way as according to the plaintiff's patent it is applied, then the The defendant's want of two or three circumstances in the defendant's wheel, wheel a piracy, which are contained in the plaintiff's specification, would not pre notwithstanding the absence of vent the plaintiff's recovering in this action for an infringement of his patent. It would be quite a different thing if it was shown that the defendant had his communication long before

certain parts.

(b) As to the words of the statute and letters patent, see ante 44, n.

with Mr. Strutt, and had taken up Mr. Strutt's invention in A. D. 1832. Derbyshire, and had constructed something like Mr. Strutt's without any knowledge of the plaintiff's patent, and had actually borrowed it from Mr. Strutt's, which was good for nothing; it would be the hardest possible thing to say that this was an infringement of the plaintiff's patent; but it merely comes to this by reason of the variance between the defendant's and the plaintiff's, it is only less useful and less durable, but is in effect the same thing. Then the two points for your consideration clearly are these: whether the plaintiff's invention is new, and, if new, whether the defendant has so constructed his wheel that it is an imitation of the plaintiff's patent; if you are of opinion for the plaintiff on both these points, your verdict will be for the plaintiff; but if you are of opinion on either of those two points against the plaintiff, then your verdict will be for the defendant; but you will be so good as to tell me upon what ground it is— whether it is upon the ground that the plaintiff's invention is not new, or upon the ground that the defendant's is not an infringement, because it may make a material difference hereafter." In reply to a question from the jury, whether there was any evidence of the defendant having used or sold the wheels

Patteson, J., said, the terms of the patent are, "without leave or license, make," &c.; now if he did actually make these wheels, his making them would be a sufficient infringement of the patent, unless he merely made them for his own amusement, or as a model. Verdict for the plaintiff (c).

(e) The court granted a rule nisi for a new trial; but the parties having come to an arrange. ment, the rule was discharged, and a perpetual injunction granted by consent.

The preceding is of importance in illustration of the cases which arise on the words of the statute, and of the letters patent, as to what in law constitutes such a user as will vitiate a grant, ante 44, n.; it is also applicable to the question, whether the plaintiff was in law the true and first inventor. There was no user at the time of the grant, the evidence being, that Mr. Strutt's wheel was abandoned; but it was clearly established, that Mr. S. had applied the same principle before; then arises the question, whether the construction put by the learned judge on the specification was the correct legal construction. Ante, 123.

The material question, however, is, whether, supposing the true construction of the specification to be that suggested by the counsel for the defendant, the plaintiff was in law the true and first inventor within the meaning of the statute and the letters patent. An invention may be new as to public use and exercise, but the grantee may not be the true and first inventor. There is a material distinction between these two questions.

Tennant v.

This was an action for an infringement of the plaintiff's patent (A. D. 1798), for "a method of

using certain calcareous earths instead of alkaline substances, by neutralizing the oxygenated muriatic acid used in bleaching," &c. and the specification states the spirit of that part of the invention to be, that the said earths by being kept in a state of mechanical suspense in water, are capable of uniting with the said gas, and forming a compound of great efficacy in bleaching.

The great utility of the invention, and 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 proved, 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 from all but his two partners, and two servants connected in preparing it; and a chemist deposed, that having had frequent conversations with the plaintiff on the means of improving bleaching liquor, he had in one of them suggested that he would probably attain his end by keeping the lime-water constantly agitated; that the plaintiff afterwards informed him that the method had succeeded; that these conversations took place in 1796.

Lord Ellenborough, C. J. nonsuited the plaintiff on two grounds-1st. That the process had been used five or six years prior to the date of the patent; and, 2dly, That the plaintiff was not the

inventor of the agitation of the lime-water, an indispensable part of the process.

Lewis and another v. Marling.

In this case it appeared with respect to a material part of the invention claimed, that a similar machine had been in use at New York twenty years before, and that a specification of it was sent over in 1811 (the date of the plaintiff's patent being 1818), to a person named Thompson, residing at Leeds, and shown to several persons. It further appeared that in 1816, a model of a machine to shear from list to list by means of a rotary cutter (the subject of the plaintiff's patent), was brought over from America by a person named Smith, and shown to three or four persons in his manufactory, but no machine was ever made from it, nor was it publicly known to exist, and Smith always used machines made by the plaintiffs. It further appeared, that many years before a person named Coxon had made a machine to shear from list to list, which was tried by a person on behalf of the defendant, but he did not think it answered, and soon discontinued the use of it. Upon this evidence it was contended for the defendant that the patent was bad; but,

Lord Tenterden, C. J., held, that if it could be shown that the plaintiffs had seen the model or specification, that might answer the claim of the invention; but that as there was no evidence of that kind, the plaintiffs might be considered the inventors within the meaning of the statute (21 Jac. I. c. 3.), notwithstanding the model and the

specification brought over from America, and the making of a machine to work in that manner by Coxon; and he left it to the jury to say whether the invention had been in public use and operation before the patent.

There was a verdict for the plaintiffs, and the court refused a rule nisi for a new trial.

Bailey, J.: "If the model brought from America had been seen by the plaintiffs, they could not afterwards claim to be the inventors. But if I discover a certain thing for myself, it is no objection to my claim to a patent that another also has made the discovery, provided I first introduced it into public use." 10 B. & C. 27.

Parke, J.: "There was no evidence in this case to show that the plaintiffs were not the inventors of this machine, in this country at least." Ibid, 28. Barker and Harris v. Shaw.

This was an action for an infringement of a patent for an improvement in making hats, and one of the plaintiffs' witnesses proved, that he had made the improvement which was the subject of the patent, whilst employed in their workshop; upon which Holroyd, J., nonsuited the plaintiffs.

But if a person be employed to perfect the details of or carry out into execution the original idea of the patentee, that which he suggests or invents while so employed, and subsidiary to such idea, is in law the invention of the patentee. See per Alderson, B., in Minter v. Wells and Hart, post 132. See also Makepeace v. Jackson, 4 Taun. 770.

Title.

Specification.

MINTER'S PATENT.

Letters patent, 9th November, 1 W. 4, A.D. 1830, to George Minter, for "an improvement in the constructing, making and manufacturing of chairs, to be called Minter's patent reclining chair."

I, the said George Minter, do hereby declare that the nature of my said invention, and the manner in which the same is to be performed, are particularly described and ascertained by the following description thereof, reference being had to the drawing hereunto annexed, and to the figures and letters marked thereon; that is to say: my invention of an improvement in the constructing making or manufacturing of chairs consists in 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, and whereby a person sitting or reclining in such chair may, by pressing against the back, cause it to take any inclination, and yet, at the same time, the back of such chair shall, in whatever position it is