Alderson, B.

to the jury.

able. It is not for you to consider to what extent the thing is useful. If it is a useful invention, then it is a subject to be protected by patent; and if, on the other hand, it is of no use, then it is no subject to be protected by patent. The issue is, whether it is of any use at all, and I think you cannot entertain a doubt that the improvement in the paddle wheels is of use. You will probably think, upon the testimony you have heard in the course of this cause, that it is really a great improvement. The degree of It is not material, however, that the improvement should be utility is not material; it is great. It is sufficient if it is an improvement at all. Upon that sufficient to sup issue, therefore, I think you can hardly entertain a reasonable port a patent if the invention be doubt, that it ought to be found for the plaintiff.

an improvement.

question whe

the court.

Then, gentlemen, with respect to the fifth issue, it appears to me, that this invention is new, that is to say, the invention of a steam engine which was never thought of before, and the invention of machinery for propelling vessels which was never The facts being thought of before; and the only question upon that subject is, undisputed, the whether it is to be considered in point of law as a new inventher the invention. That depends on a mere question of law, arising out of tion is new is for the undisputed facts of the case appearing upon my notes. If in the result, upon those facts being stated to the judges of the Court of Exchequer, they shall appear to them as they appear to me, to be facts which are altogether beyond dispute, and upon which I ought to direct the jury to find a verdict for the defendants, the verdict will be entered for the defendants upon that issue. If I should be wrong in my opinion, the judges will set me right, that is, if they should be of opinion that the question was a proper one for your consideration. I cannot put it more favourably for the plaintiffs than by taking that course. Therefore, under my direction, you will find the fifth issue, for these reasons, for the defendants, subject to your finding being reversed if the court shall think fit.

Then the sixth issue is, that the invention mentioned in the declaration is of no use. Now, I apprehend, and as at present advised I should direct you in that way, that this issue cannot be found for the plaintiffs, unless you are satisfied that both the steam engine and the machinery for propelling vessels are of use. It is clear that the machinery for propelling vessels is of use; upon the subject of the steam engine, there is a contradiction in the evidence. The issue, therefore, upon the third, which states the invention not to be an improvement in steam engines, and the sixth, which states the invention to be of no use, are, in my judgment, the same; therefore, as you find the one you will find the other. The questions, therefore, for your consideration, or which, properly speaking, are matters now in doubt, are the questions upon the specification, and whether the steam engine is useful. All this matter, therefore, turns upon those two points.

tion is to warn

I will now begin with the specification. It is the duty of a A. D. 1836. party who takes out a patent to specify what his invention really is, and although it is the bounden duty of a jury to protect him in the fair exercise of his patent right, it is of great importance to the public, and by law it is absolutely necessary, that the patentee should state in his specification, not only the nature of his invention, but how that invention may be carried into effect. Unless he be required to do that, monopolies would be given for fourteen years to persons who would not on their part do what in justice and in law they ought to do, state fairly The specificato the public what their invention is, in order that other per- the public of sons may know what is the prohibited ground, and in order that what is prohibited, and to the public may be made acquainted with the means by which teach them the the invention is to be carried into effect. That is the fair invention. premium which the patentee pays for the monopoly he receives. The question is, whether Mr. Galloway has in the specification, and which is accompanied by a drawing which you ought to take as part of the specification, described with sufficient clearness and distinctness the nature of his invention, and the mode by which it is to be carried into effect. He has described two in- Two or more ventions, and if either of those inventions is insufficiently spe- comprised in the inventions being cified, the patent fails; for if a person runs the hazard of put- same patent, ting two inventions into one patent, he cannot hold his patent, such as would unless each can be supported as a separate patent. In order to support a support each, the invention must be useful, and must be patent. described in the specification in such a manner as to lead people clearly to know what the invention is, and how it is to be carried into effect. That doctrine must be applied to each of the two inventions contained in this patent, that is, to the invention of the steam engine, and the invention of the machinery for propelling vessels.

To begin therefore with the steam engine (b).—Has Mr. Galloway sufficiently described it so as to enable any one to know what he has invented, and so as to enable a workman of competent skill to carry the invention into effect? Mr. Justice Buller, in the case of the King v. Arkwright, lays down as the criterion, that a man to entitle himself to the benefit of a patent of monopoly must disclose his secret and specify his invention in such a way that others of the same trade, who are artists, may be taught to do the thing for which the patent is granted, by following the directions of the specification, without any new invention or addition of their own (c). That is reasonable and

each must be

(b) The learned judge having described generally the nature of this part of the invention, and the manner in which, according to the specification, it was to be carried out in practice, proceeded as above.

(c) See R. v. Arkwright, ante 66, and note: and the judgment of the Court of Exchequer in the case of Neilson v. Harford.

Alderson, B. to the jury.

The specifica

tion must be such as may

be

followed without invention or

addition.

The ordinary

means of know

ledge common

to the trade may be required.

proper, for people in trade ought to be told the manner in which the thing may be done in respect of which the patent is granted.-How? Not by themselves becoming inventors of a method of carrying it into effect, but by following the specification, without making a new invention, or making any addition to the specification. If the invention can only be carried into effect by persons setting themselves a problem to solve, then they who solve the problem become the inventors of the method of solving it, and he who leaves persons to carry out his invention by means of that application of their understanding, does not teach them in his specification that which in order to entitle him to maintain his patent he should teach them, the way of doing the thing, but sets them a problem, which being suggested to persons of skill, they may be able to solve. That is not the way in which a specification ought to be framed. It ought to be framed so as not to call on a person to have recourse to more than those ordinary means of knowledge (not invention) which a workman of competent skill in his art and trade may be presumed to have. You may call upon him to exercise all the actual existing knowledge common to the trade, but you cannot call upon him to exercise any thing more. You have no right to call upon him to tax his ingenuity or invention. Those are the criteria by which you ought to be governed, and you ought to decide this question according to those criteria. You are to apply those criteria to the case now under consideration, and you should apply them without prejudice, either one way or the other, for it is a fair observation to make, that both parties here stand, so far as this objection is concerned, on a footing of perfect equality. The public, on the one hand, have a right to expect and require that the specification shall be fair, honest, open, and sufficient; and on the other hand, the patentee should not be tripped up by captious objections which do not go to the merits of the specification. If a competent Now, applying those criteria to the evidence in the cause, if you engineer with ordinary know- shall think that this invention has been so specified that any ledge could competent engineer, having the ordinary knowledge which vention without competent engineers possess, could carry it into effect by the solving a pro- application of his skill, and the use of his previous knowledge, without any inventions on his part, and that he could do it in the manner described by the specification, and from the information disclosed in the specification, then the specification would be sufficient. If, on the other hand, you think that engineers of ordinary and competent skill would have to set themselves a problem to solve, and would have to solve that problem before they could do it, then the specification would be bad.

carry out the in

blem, the specification is sufficient.

The most advantageous mode must be stated in the specification.

Further, if a patentee is acquainted with any particular mode by which his invention may be most conveniently carried

There the

into effect, he ought to state it in his specification. That was A. D. 1836. laid down in a case before Lord Mansfield (d). question arose on a patent for steel trusses. It appeared that the patentee in some parts of his process used tallow to facilitate the invention for which he had obtained a patent, and in his specification he made no mention of the use of the tallow. The court held the specification to be bad, because, they said, you ought not to put people to find out that tallow is useful in carrying into effect the invention of steel trusses. You ought to tell the public so, if that is the best mode of doing it, for you are bound to make a bona fide full and candid disclosure. So again in the case of the malt (e). That was a patent for drying malt, and one of the objections taken, was that the patentee did not state in his specification the degree of heat to which the malt should be exposed. The argument there was this. They said, it appeared that the specification was not sufficient, inasmuch as it did not describe the extent of heat to which the malt should be exposed, for it only said, "the proper degree of heat and time of exposure will be easily learned by experience, the colour of the internal part of the prepared grain affording the best criterion." Surely there it would have been competent to the patentee to say, any person of ordinary skill in such a business would be able to judge what colour the malt ought to be, and that, by experiment, he would learn what degree of temperature was exhibited at the time when that proper degree of colour was obtained; therefore the plaintiff contended that there was enough stated in the specification to enable the public to carry the invention into effect, and that the patent ought to be supported, because skilful maltsters and skilful dryers of malt would easily know where to stop, and what degree of heat was requisite for the purpose. There is no doubt that when a man was told that a certain effect might be produced upon the malt by shaking it and subjecting it to a certain degree of heat, his mind would be set on float; he would be at work upon it to ascertain what that degree of heat should be, and he would probably find it out. But that is not enough. The specification of a patent must not merely suggest something that will set A specification merely suggestthe mind of an ingenious man at work, but it must actually ing something, and plainly set forth what the invention is, and how it is to be so as to throw on the public carried into effect, so as to save a party the trouble of making the trouble of experiments and trials. The court in that case said, that a experiment, is specification that casts upon the public the expense and labour of experiments and trials, is undoubtedly bad. Here, in this

bad.

invention really being of a colouring matter to be obtained from malt, and not, as was suggested, a new and improved method of drying and preparing malt.

Alderson, B. to the jury.

case, the defendants take that line of argument; they say that experiments and trials are necessary. If it be said that all these matters will be well or easily known to a person of competent skill (and to such only the patentee may be allowed to address himself) then the invention will not in reality have given any useful or valuable information to the public.

Now, let us apply the principle of this case to the present, and see whether or not the patentee here has given that full information by the specification and drawing, which, being addressed to persons of competent skill and knowledge, would enable them from that specification and drawing to carry the invention into effect. On that subject there is undoubtedly contradictory evidence, but you see a specification is addressed to all the world, and therefore all the world, at least those possessed of a competent skill, ought to be able to construct the machine by following that specification. It is not fair to you or to me, if we happen to be less inventive than our neighbours, that we should be prevented from constructing these machines, by reason of the specification not giving a clear exposition of the way in which it is to be done. In the case of the steam engine, there was put in on the part of the defendants a model, made, as it was said, according to the specification, which model would not work. The model was a copy of the drawing, and would not work, because one part happened to be a little too small, whereas, if it had been a little larger, it would have worked. Now a workman of ordinary skill when told to put two things together, so that they should move, would of course, by the ordinary knowledge and skill he possesses, make them of sufficient size to move. There he would have to bring to his assistance his knowledge that the size of the parts is material to the working of the machine. That is within the ordinary knowledge of every workman. He says, "I see this will not from the precise work because it is too small," and then he makes it a little dimensions, re- larger, and finds it will work: what is required is, that the to make two specification should be such as to enable a workman of ordinary gether, is within skill to make the machine; with respect to that, therefore, I do the knowledge not apprehend you will feel much difficulty, but with respect to of any workthe other there is a good deal more difficulty. I will not sum up the evidence upon the subject of the steam engine, but I will confine myself to the second invention, and see whether that can be carried into effect by means of the specification and the drawings, for it is to that question that the whole is directed. That invention is in two parts: first, he says, it is an improvement on paddle wheels for propelling vessels, whereby the float boards or paddles are made to enter and come out of the water at positions the best adapted, as far as experiments have determined the angle, for giving full effect to the power applied. He says, as far as experiments have deter

A variation

presented so as

parts work to

man.