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Lord Abinger, before it is in a state to granulate, and to be made sugar; thereC. B.
fore I think the expression “extract” may be fairly understood to mean the process to be applied with advantage to the extracting of syrup from cane juice, before it arrives at that consistency at which granulation takes place, so as to make it into sugar; and with that explanation I think the objection that was made is removed. Supposing the specification is good in other respects as compared with the evidence, on the face of it it must be understood to be a specification of both branches of that invention, and if so that objection is removed. I think also the word “improvements” was relied on as being in the plural number;
but that is of no consequence, because he may mean that every An improve. , part of his process is to be treated as an improvement. It is a result is also an phrase that may be reconciled to the fact, because syrup, in the improvement in proper meaning of the word, is not extracted from the cane juice every intermediate process.
any more than sugar is; but in the process of what is called extracting sugar from the cane juice, it is made into syrup, and, therefore, if it is an improvement in extracting sugar, a fortiori it may be said to be an improvement in extracting syrup.
Upon the main point, however, that respecting the bituminous schistus, nothing that I have heard has removed my original impression, that there was no evidence to show that this process, carried on with bituminous schistus combined with any iron whatsoever, would answer at all. The plaintiff himself has declared that in that bituminous schistus which he himself furnished, the whole of the iron was extracted; and it appears that it was admitted by the counsel that the presence of iron would not only be disadvantageous, but injurious. Thus then it appearing by the evidence that in all the various forms in which the article exists in this country, sulphuret of iron is found, and the witnesses not describing any known process by which it can
be extracted, it appears to me that the plaintiff ought to prove If a substance one of two things—either that the sulphuret of iron in bituminknown contains ous schistus is not so absolutely detrimental as to make its prea foreign matter, sence disadvantageous to the process (in which case this paeither that such tent would be good), or that the process of extracting the iron foreign matter is from it is so simple and well known, that a man may be able to not detrimental, or that it can be accomplish it with ease. As the bituminous schistus which was easily removed. procured and used was exclusively that which was furnished by
the plaintiff, not in its original state, but after it had undergone distillation, and been made into charcoal in a foreign country, and as in that stage of its preparation it could not be discovered by examining it whether it was made from one substance or another (the residuum, after distillation, of almost every matter, vegetable as well as animal, being a charcoal mixed more or less with other things), then there is only the plaintiff's statement to prove that the substance which was furnished by him and used, was charcoal of bituminous schistus. It appeared, also, that he
had declared to one of the witnesses that he had extracted all Rule for a new the iron from the substance so sent, and that it also underwent
trial. another process. I am, therefore, of opinion, that without considering whether or not the patent would be avoided by the process requiring the use of means to extract the iron from the bituminous schistus, which were kept secret by the patentee, he The plaintiff has not shown in this case that what he has described in the
must show that
the substances patent could be used as so described, without injury to the mat- named will an
swer the purter going through the process. Under all these circumstances, I
poses professed. think that the plaintiff ought to have given some evidence to show that bituminous schistus, in the state in which it is found and known in England, could be used in this process with advantage, and as he has not done that the defendants are entitled to a nonsuit; but, at the same time, as it is alleged that the plaintiff may supply the defect of proof as to the schistus on a new trial by other evidence, we are desirous that the patent, if a good one, should not be affected by our judgment, and think it right to direct a new trial on the terms which have been stated.
Parke, B.: I entirely agree with my Lord. Abinger with respect to the construction of the patent. We cannot, on the face of this patent, say that, comparing it with the specification, it is void. The specification does, on the whole, truly describe the nature of the invention, as declared in the patent, nor does there appear to be sufficient obscurity in the clause with reference to the baking to avoid the patent on that ground. But it seems to the plaintiff me to have been clearly the duty of the plaintiff to have done must show that one of two things, viz. either to have shown that bituminous described will schistus, with the admixture of sulphuret of iron as it is known
answer the pur
pose beneficial to exist in England, would answer the purpose beneficially, or ly, or that the that the sulphuret could be removed by any practical man, so as
prejudicial matto give no colour to the syrup. Now I have certainly some doubt moved by any whether there was not evidence for the jury that a practical man
practical man. acquainted with the subject might, without much difficulty, effect that removal to such an extent that it might not be sufficient to give any colour to the sugar, and, therefore, not be prejudicial at all; but as my Lord Abinger, upon the evidence before him at the trial, seems to think otherwise on this last point, I entirely concur with him as to the terms on which I think a new trial ought to be granted.
BOLLAND, B.: I perfectly agree with the view that has been taken of this matter by the court. The objection made was that the title of this patent was too large for the specification. Now, had that appeared to be the fact, I should have felt myself bound by that rule of law which I have always understood to prevail in cases of this sort, viz. that where a title is set out in the patent it is the bounden duty of the patentee to specify the whole set out in that title; but it appears to me, for the reasons that have been already given by Lord Abinger, that the objection to the
ter can be re
Bulland, B. title is sufficiently removed. Very early in the argument it
appeared to me that justice could not be done in this case unless we granted a new trial, because on the judge's notes it appeared that no evidence had been given by the plaintiff that bituminous schistus, procured from whatever place in which that substance could be found, would answer the purpose intended. The only evidence which the plaintiff gave that bituminous schistus, when used in the process described, produced the desired effect, applied to a pulverized substance which the witness had purchased from the plaintiff at Paris. Now, if the plaintiff had gone on to show that that substance was bituminous schistus, to which nothing had been done, but that it produced the effect in its natural state, a great portion of the difficulty would have been removed; but that not being proved, it was left in doubt whether all bituminous schistus would produce the effect attributed to it in the patent. Without doubt the onus of that proof lay on the plaintiff. An authority, if wanting, may be found in the judgment of Buller, J., in the very early case of Turner v. Winter (a); and that very learned judge added a most extensive acquaintance with the subject of patent right to that knowledge of law in which he was at least equal to any person who, before or since his time, has occupied a seat on the bench. I will, therefore, advert more particularly to his judgment in that case, in order to adopt its terms in application to the present. That patent had been taken out for producing yellow paint, to be applied in the process of painting in oil or in water colour. The patentee attributed to this patent also another quality, viz. making white lead and separating the mineral alkali from the common salt; and Mr. Justice Buller, in giving judgment, said, “ I do not agree with the counsel who have argued against the rule, in saying that it was not necessary for the plaintiff to give any evidence to show what the invention was, and that the proof that the specification was improper lay on the defendant; for I hold that a plaintiff must give some evidence to show what his invention was, unless the other side admit that it has been tried and succeeds. But wherever the patentee brings an action on his patent, if the novelty or effect of the invention be disputed, he must show in what his invention consists, and that he produced the effect proposed by the patent in the manner specified. Slight evidence of this on his part is sufficient, and it is then incumbent on the defendant to falsify the specification" (6). In this case the plaintiff contents
himself by merely saying, that bituminous schistus will answer The plaintiff must show that the purpose intended; but he ought in my opinion to have gone the substance farther, and shown that any bituminous schistus fairly procured, named will suc
either from chemists in the habit of selling that article, or in any
(a) I T. R. 602; Dav. Pat. C. 145, and ante 77.
(b) See ante 81.
other way, would have also sufficed for the purpose intended; Rule for a new whereas he has merely shown that the preparation made by him- trial. self at Paris (with the ingredients of which we are not at all acquainted, any farther than that he told the witness that the iron had been taken out of it) produced the desired effect; he was bound to have informed the public how the iron was removed from the schistus, or to show that its presence was immaterial. On these grounds, as well as for the reasons given by my Lord Chief Baron, I think a new trial ought to be had.
ALDERSON, B.: I quite agree with the view the rest of the court have taken in this case. The first objection to the validity of the patent arises upon the ground, that the title of the patent is too general, and has been, I think, already answered satisfactorily by the court; and I certainly entertain considerable doubts whether it is open to be taken on these pleadings. With respect to the other point, the question arises on the validity of the specification. Now a specification must state one or more methods A specification which can be followed for the purpose of accomplishing and must state at carrying into effect the invention. One of the methods stated in thod which will
succeed. this case is the application of a filter composed of charcoal, formed by the distillation or carbonization of bituminous schistus. It must, therefore, be shown that the purpose will be accomplished by following that method. It appears, too, that there is some little doubt entertained, whether, if iron be present in the charcoal formed from the carbonization of bituminous schistus, the experiment of depriving sugar of colour in this particular manner does not altogether fail. With respect to that, on reading the notes I should have entertained some doubt, but it is much more competent for my Lord to decide than for a judge who was not present at the trial. Certainly if any admission was made that the presence of iron would be a detriment to the operation, without confining that admission to its being a less perfect mode of exhibiting the experiment than otherwise would be the case, that undoubtedly would be a ground for a nonsuit. But had it been shown, either that bituminous schistus, deprived of iron, could be made by a process known to ordinary chemists of skill, or that it was a substance capable of being ordinarily purchased in the market as an article of commerce, it would have been unnecessary to have shown the operation of separating the iron from it; if its presence in the bituminous schistus was a positive detriment to the process of depriving the sugar of colour, then indeed the patent would fail. Under all the circumstances I quite concur in the view the rest of the court have taken, as well as in the terms on which this case ought to go down to another jury.
Rule for a new trial accordingly.
No new trial took place, the plaintiff having entered a disclaimer and memorandum of alteration under the provisions of Lord Brougham's act (5 & 6 W. 4, c. 83, s. 1), which was passed and came into operation almost immediately after the above decision. The plaintiff by this instrument, enrolled 16th August, 1836, substituted as the title of the patent the following: “a certain improvement or certain improvements to be used in the course of the process of extracting sugar or syrup from cane juice and other substances containing sugar, and also to be used in the course of the process of refining sugar and syrup, for the purpose, in either case, of removing the colour from or whitening and purifying such sugar or syrup respectively." The original specification was set forth therein, and another substituted for it,
which, instead of the term discoloring, the terms “ removing the colour from or whitening and purifying” were employed. The process to be adopted was described in nearly the same terms, omitting all mention of bituminous schistus, so that the claim was confined to the whitening or purifying the syrups by filtration through beds of granulated animal charcoal. The use of bituminous schistus and of sand was disclaimed, on the ground that the former, as found in England, could not be used so beneficially as the animal charcoal, and that the use of the latter was attended with some practical difficulties. The other alterations were declared to be made for the purpose of rendering the meaning of the specification more clear and intelligible to the public.
Letters patent, 2 July, 1829, to Elijah Galloway, certain improvements in steam engines, and in machinery for propelling vessels, which improvements are applicable to other purposes."
I, the said Elijah Galloway, do hereby declare, that the nature of my said invention consists—First, in an improvement of the steam engine, whereby I am enabled to obtain a rotary motion from the alternating action of the axis of a piston, which piston makes about three-fourths of a revolution within the steam cylinder; and, secondly, in an improvement on paddle wheels for propelling vessels, whereby the float-boards or paddles are made to enter and come out of the water in positions the best adapted, as far as experiments have determined the angle, for giving full effect to the power applied. And I do hereby describe the manner in which my said invention is to be performed by the following description thereof, reference being had to the drawing hereunto annexed, and to the figures and letters marked thereon.
It is only necessary further to add, that the improvement in the steam engine is applicable to engines for driving machinery on land, and for raising water, as well as for marine purposes; and that the improvement in the paddle wheels may be applied to undershot water wheels as well as for propelling vessels.
Now whereas I claim as my invention–First, as regards my
(a) Here follows the description of the draw. ings; the first part describing that part of the invention which relates to steam engines, and the second part that which relates to paddle wheels,
or machinery for propelling vessels. The portions material for understanding the subsequent legal proceedings, are sufficiently set forth in the summing up of the learned judge. Post.