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man who composed it is not an Englishman, and he uses the The inaccurate
use of words, if word "baked” evidently for boiling, and the word “discolora
sense sufficient. tion" for discharge from colour; but all that is conceded; one ly clear, will not
vitiate a specifiwould not be disposed, from any obscure word in the specifi- cation. cation, which might be interpreted in favour of the plaintiff, taking it altogether, to deprive him of his patent. But the specific point requiring your attention is, as to the bituminous schistus, whether the plaintiff has fairly communicated to the world engaged in this sort of trade, what his object was. For he must give a full and true disclosure of the nature of the invention, and if he leaves any part of his invention in a state of obscurity, and does not give definite directions how to perform it, he loses the advantage of his patent. The bituminous schistus is put first, and forms, undoubtedly, a very important part of the invention, and persons not acquainted with the sciences may be well excused for not knowing what bituminous schistus is, and primd facie it is no objection to the specification that those terms must be explained by some men of art. Mr. Faraday and the other chemists say, there are many kinds of bituminous schistus, that they vary very much in the quantity of the sulphuret of iron which they contain, and that they do not know any process by which the sulphuret of iron can be completely expelled. The plaintiff says the sulphuret of iron ought to be expelled, but he does not state which of the various bituminous schistuses he uses, or any process of expelling the sulphuret of iron. Now if a person should suppose that any bituminous schistus would answer the purpose, and were to take one mixed with the sulphuret of iron, being unacquainted with the nature of it, and should attempt to distil it for the purpose of producing charcoal, he might involve himself in considerable expense, and his object would be frustrated. On the other hand, if you should find it in evidence that there is no bituminous schistus that is proved to be used, except that which the plaintiff himself supplies, and if you should consequently think that it was not improbable he contemplated the use of his own, that might be a reason for his being so general; that as no party could find in England the sort which would answer the purpose, he might apply to the plaintiff who manufactured it abroad, to get it for him. But if such was his intention, that would destroy the patent.
The question for your consideration is one of fact, whether you are satisfied upon the subject of the bituminous schistus (e). This part I think doubtful, but the rest of the case is with the plaintiff. I presume you would suppose that any chemist would know what bituminous schistus meant; but the evidence is that
(e) The learned Chief Barou proceeded to call attention to the evidence as to the schistus, as to the nature and general effect of wbich, see (post) in
the judgments on the rule for a new trial. A full report of the evidence is contained in the Repertory of Patent Inventions for Marcb, 1835.
Lord Abinger, there are various sorts, and that there is none in England casaC.B., to the jury.
ble of being produced without the sulphuret of iron by any process known to experienced chemists. It may be known in France, there may be various substances there capable of producing it by calcination; if the plaintiff has it there it is very likely he might suppose that it might be found any where capable of performing the object; it is his misfortune that he had not inquired whether this country produced the same; in that case he might have stated that such schistus might be imported from France, and that would have made the patent good. Supposing you are of opinion that there are various bituminous schistuses which might not equally answer the purpose, and that those not being set forth in the specification, it is probable that any person using the specification would be obliged to have recourse to the plaintiff to procure it, I think the defendants are entitled to your verdict.
The jury found a verdict for the plaintiff, stating, in a reply to a question from the Lord Chief Baron, that they were satisfied upon the evidence that the bituminous schistus obtained in England might be adopted.
In the Erche. Cor. Lord Abinger, C. B., Parke, B., Bolland, B., Alderson, B. quer. Eas. T. 1835.
Sir F. Pollock having obtained a rule nisi for entering a nonsuit, upon the objections taken at the trial (ante 156), Sir J. Campbell, A. G., Ludlow, Serjt., and Godson, showed cause.
There is on this record no plea to raise the question of a defective title; under the plea alleging the insufficiency of the specification, the defendants are not at liberty to attack the title. The title is good in all its parts, for the extraction of sugar was not complete until the syrup had granulated; and this process could be applied whilst the cane juice was in the state of syrup; and in extracting sugar from beet-root, was proved to have been always applied before the sugar was formed. As to the application of the invention to cane juice, that it was never intended to be so applied until it was boiled and became syrup, and in that state it was beneficial and useful. As to the bituminous schistus, the words of the specification are," the carbonization of bituminous schistus has nothing particular; it is produced in close 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” (a). The schistus is mechanically not chemically combined
(a) As to this, it was distinctly stated by several eminent chemists, that the sulphuret of iron could
not be got rid of by any means generally known or easily practised. Ante 167.
with the iron, and, therefore, the iron could not be prejudicial to Rule for a new or affect the sugar; and, further, the iron could be removed by the simple mechanical operation of breaking the schistus, and taking out the nodules of iron which were generally found in it. It would, therefore, have been improper to have given a description of so easy an operation (6). And that, at all events, supposing the schistus not completely to answer the specified purpuse, it was new; and it has been decided, that although every part of an invention must be new, yet every part need not be useful (c). Besides, there was no evidence to show that the schistus could not be used to some extent.
Sir F. Pollock, Sir W. Follett, and Crowder, in support of the rule, were stopped by the court.
Lord A BINGER, C. B.: The doubt which the court has had is, as to what rule they should pronounce in this case as to the costs. Certainly, my impression at the trial was, that I ought to have nonsuited the plaintiff; but I was very anxious to avoid the possibility of withdrawing any thing from the jury, even a scintilla of evidence, in order to avert the necessity of another trial, which, in a case like the present, must be attended with great expense to the parties. But I am free to own that, although I refused to nonsuit the plaintiff after the close of his case, I felt very strongly that there really was no evidence to go to the jury. I felt that it was incumbent on the plaintiff, after the evidence given by his own witnesses, to have proved that bituminous schistus, as found in this country, might be used without detriment, after having been exposed to the process of distillation, which he describes, but without removing the iron. I well remember that Sir F. Pollock had taken the objection very strongly that it had been proved in the cause that the presence of iron was disadvantageous, and admitted to be disadvantageous, not in the qualified sense in which it has been urged on this occasion, viz. that although it rendered the process less efficacious, it did not deprive it of all efficacy, but that the presence of it was positively injurious. I so understood it, and I must do the defendants' counsel the justice of saying that such was my understanding of it, on the representation of both sides. With that understanding I felt that the plaintiff was bound either to have shown that there was some known process of extracting it, which he did not, or to have shown that there was some bituminous schistus which might be found in England, with the iron not entirely extracted, that yet might be used with effect; and on looking to my notes I could not find any such evidence. Mr. Derosne's agent had been examined at great length, and gave his evidence in
(6) The case of Savory v. Price, ante 83, was cited in support of this argument, but it hardly applies to the circumstances of the present case.
(c) The cases here referred to are Lewis v. Mar. ling, 10 B. & C. 22, and Haworth v. Hardcastle, 1 Bing. N. C. 182. As to these, see ante 42, n.
Rule for a new rather an irregular manner, so as to make it very difficult to take
it down on my notes; and from the short note I took of that witness's evidence, I felt some doubt in my own mind whether he had not stated some fact which had escaped me at the time, which, on further investigation, might supply that defect in some minute degree; and I must own it was more with that impression that I left the case to the jury, than on any conviction of my own mind that the plaintiff had made out a case; and then I wrote the note which I have read, that if I was wrong in leaving it to the jury, the defendants' counsel should have the benefit of it on moving for a nonsuit. Now, that being the case, I cannot but feel that the defendants are placed in the situation, by my having so acted, of being compelled to make this motion. If I had nonsuited the plaintiff, he then must have applied to the court, and suggested any misunder. standing that had arisen at the trial, for the purpose of obtaining a new trial; or he might have stated that he himself was surprised by the objection, and could have answered it by evidence, if he had been fully aware of it; that is, that had the plaintiff's counsel been aware that the defendants meant to make this sort of objection, that bituminous schistus, such as is found in England, could not be used with advantage in this process, he would have had abundant evidence to rebut it. If I
remember rightly, that was suggested at the close of my sumParty entitled ming up. Now, the question is, on what terms we ought to in law to a non- allow this inquiry, and it appears to me, that as the defendants pay the costs of were entitled to a nonsuit, and would be entitled to a nonsult if a new trial.
it were not for that suggestion, they ought not to pay the costs of the new trial. Then a question has arisen, whether, if there was any real misunderstanding, the plaintiff ought to pay the costs of the new trial? It is plain, that if I had nonsuited the plaintiff, and he had applied to set aside the nonsuit, and there had been nothing irregular or improper in the conduct of the defendants, he would have had to pay the costs of the new trial. The reason the court is induced to grant a new trial is, to have the matter more fully explained as to what is the use of the bituminous schistus, and what was the real effect of it in its operation; and that being the case, the court is disposed to pronounce this rule. I will first state the rule which the court is disposed to pronounce, and will then state some reasons why we have come to that judgment. The rule will be—that the verdict should be set aside, that a new trial should be had, and that the costs of the new trial shall be costs in the cause if the defendants obtain a verdict finally, but shall not be costs in the cause if the plaintiff obtains a verdict. The new trial is granted for the plaintiff's benefit, to enable him to make out the case which he failed in doing at the first trial. We think it right,
however, to dispose of some of the objections that have been Rule for a new made.
One objection to the plaintiff's specification is rested on the ground, that it does not set forth that double process
which to be expected from the title of the patent. It is unnecessary now to solve that difficulty, as the court doubts whether or not, since the new rules of pleading, that objection is fairly let in by the present pleas. The objection is, that the plea states the plaintiff's specification to be insufficient, whereas it is said, that, supposing we think it adequate, it is sufficient to describe the invention that he really had made, even if it be not sufficient to describe the second branch of the invention set forth in this patent; and the defendants may avail themselves of the objec- The objection tion, that the plaintiff has taken out a patent too large for his bar the title is invention, by putting in an additional plea in a different form invention, not from that stated on this record. We do not think the question plea of the in
raised by the necessarily arises at present, or that it calls for an ultimate sufficiency of
the specificadecision; because we think, on consideration, that the double process, or both the branches of the invention mentioned in the patent, are sufficiently described in the specification. I have come to that conclusion in consequence of the discussion on this motion. The patent purports to be a patent for an improvement in extracting sugar from the cane juice, as well as the refining of sugar subsequently. Now, it appeared on the evidence, that the only attempt to use it, when applied to the cane juice before it was boiled, failed; but I think, on the investigation to-day, it does appear, though it is very awkwardly expressed, that he did mean in his specification to embrace both branches of the title of his invention, in this way-I mean to apply my invention to the refining of sugar by melting the muscovado (or granulated) sugar, and bringing it into syrup, and then applying the invention to it, or by applying it in the process of extracting the sugar from the cane juice before it is baked and made into syrup. Mr. Godson has given a satisfactory solution of that obscure passage in his client's specification, and rendered it more satisfactory by the words immediately following, because he presented in opposition the case of extracting sugar from the cane juice, and of refining the sugar after it has been boiled and manufactured into muscovado sugar; and, therefore, construing it with that view, it appears to me that he meant to use the word “ extract” in the sense in which the chemists, who were called as witnesses, said they understood it, and that he meant also to extract sugar or syrup from the juice before it is baked and made sugar; but it is in evidence that it is made into syrup before it comes into that degree of baking, by the action of fire, as to make it granulate; it is made into syrup after it has derived a certain consistency by passing one, two, or three coppers, but it must pass through two others