an invention al to the state. defendants are entitled to our judgment on the third issue. It is a satisfaction to know, that this objection will not necessarily, in the present state of the law, destroy the patent, as the objection is one which will probably be removed by the Attorney General under the 5th and 6th W. 4, c. 83. This view of the case makes it unnecessary to consider the effect of the finding on the last issue, as amended by the judge's notes, that part of this invention is not useful, which is a different question from that which we have disposed of. A grant of a monopoly for an Monopoly of invention which is altogether useless, may well be considered as together useless, "mischievous to the state, to the hurt of trade, or generally is mischievous inconvenient," within the meaning of the statute of Jac. 1, which requires, as a condition of the grant, that it should not be so, for no addition or improvement of such an invention could be made by any one during the continuance of the monopoly, without obliging the person making use of it to purchase the useless invention; and on a review of the cases, it may be doubted whether the question of utility is any thing more than a compendious mode, introduced in comparatively modern times, of deciding the question, whether the patent be void under the statute of monopolies (t). And we do not mean to intimate The inutility of any doubt as to the validity of a patent for an entire machine or parts of an insubject which is, taken altogether, useful, though a part or parts vitiate, if the remay be useless, always supposing that such patent contains no whole be useful, false suggestion; nor do we pronounce any opinion upon the provided there sufficiency of this plea in point of form. It may be, that the proper form of plea is to use the words of the statute, and not to plead the want of utility: though it would probably be too late to take that objection in the present stage. The rule, therefore, must be absolute, to enter a verdict for the plaintiffs on the fifth plea, and discharged as to the residue. Rule accordingly. vention will not sult on the be no false sug gestion. LOSH'S PATENT. Letters patent to William Losh, 31st Aug. 1830, for "certain Title. improvements in the construction of wheels for carriages to be used on railways." I, the said William Losh, do hereby declare, that my said in- Specification. vention is described and ascertained in manner following, (that is to say) The object that is intended to be attained by my (t) The question of utility seems to present a test of general applicability as to the validity of the patent, in respect of the subject-matter of the invention; for it may be presumed that wherever utility is found to exist in a very great degree, there must be some invention sufficient to support a patent; and further, that such invention, when once used by others, or in public use and exercise, would not be lost sight of. But it may be suggested, whether it does not very clearly appear from the early cases (ante 8), that the utility of the invention was an indispensable requisite at common law. Claim. said improvements in the construction of wheels for carriages to Having now described the construction of wheels made according to my improvements for carriages to be used on railroads, I do hereby declare that I make no claim to the exclusive right of iron spokes, or wrought iron tire, for such wheels; nor to the mode hereinbefore described, of uniting wrought iron spokes to the cast iron nave; but my invention consists, First, In the improvement, herein before described and represented in figs. 1 and 2, of making the wheels of carriages to be used on railways, with wrought iron spokes, having elbow bends and curved prolongations from such spokes, which prolongations join one to another, in the manner hereinbefore described, so as to form a circular rim of wrought iron to support and give strength to the hoop of wrought iron tire which is applied and fixed around that circular rim. Secondly; In the improvement hereinbefore described, and represented in figs. 3, 4, and 8, of either making the circular hoop of iron tire, which is to be applied around the circular rim of any wheels for carriages to be used on railways, out of bariron, which is rolled with projecting beads at the edges, on that side which is to form the inside of the hoop of tire, in the manner hereinbefore described, and shown in figs. 2, 3, and 8; or, &c. (b). (a) Here follows a detailed description of the drawings. For the specification at full length, with the drawings, see Repy. of Arts, No. 53, N. S. 277. (b) The residue of this claim was disclaimed 23 July, 1836, previously to the commencement of the subsequent legal proceedings, on the ground of its being doubtful whether the part of the invention to which it referred had not been practised, with some modifications, in some kinds of wheels. See Disclaimer in 9 Repy. of Arts, N. S. 277. Thirdly; In the improvement hereinbefore described, and represented in fig. 5, of making the wheels of carriages to be used on railways with wrought iron spokes, moulded at their outer ends into the form shown in the drawing, having elbow bends at the outer ends to form feet, which ends of the spokes are joined by welding, or by conical bolts or rivets without heads, at the outside, either to a complete ring of wrought iron, around which a hoop of wrought iron tire is to be applied and fixed, or else to a hoop of wrought iron tire, made of sufficient strength to retain its circular curvature without any such inner ring, in manner herein before described (c). Fourthly; In the improvement herein before described, and represented in fig. 6, of forming each spoke of two bars of iron, laid together at one end, as far as the elbow bends, and the parts beyond those elbow bends being bent in opposite directions, to form curved prolongations of each of the compound spokes on each side thereof, and which prolongations when united together, form a circular rim, upon which the tire is laid, as before described, and as shown in the drawing, fig. 6. (e) A question arose in the subsequent proceedings, as to the nature of this claim, whether substantially it is for the spokes with the curved ends, or whether it also includes the combination of the said spokes, producing the felloe, and of the railway or flanched tire, shrunk on as described. (d) In the subsequent proceedings on this patent, frequent reference is made to letters patent granted 24th September, 1808, to Thomas Paton, for "certain new improvements in the construction of wheels for carriages." Paton's specification described several improvements, of which the following only are important. The making the nave of wrought iron; the inserting therein spokes of wrought iron, or other metal; the making the felloes, or external circle that the tire fixes on, of iron or other metal, and making them and the spokes of one solid piece, or fixing the felloes to the spokes with rivets, screws, and nuts, or any other way as convenient. See specification and drawings, Repy. Pat. Inv. No. 53, N. S. 286. The question was, whether this specification described and included the third claim of Losh's specification; or whether that claim only extended to turning up the spokes, and not to affixing them to a complete ring, and shrinking the proper tire for railways on to such a ring. See post. It should be observed, that Paton's specification speaks of wheels for gigs, chaises, &c., and that the use of wheels on railways was, at the date of his patent, hardly contemplated. Reference is also made to letters patent granted 30 Sept. 1816, to In witness, &c. (d) W. Losh and G. Stephenson, for "a method or methods of facilitating the conveyance of carriages, and all manner of goods and materials along railways and tramways, by certain inventions and improvements in the construction of the machines, carriages, carriage wheels, and railways, for that purpose." The specification describes a method of fixing more securely and truly the parts of the edge and plate railway, so that several rails or pieces might be fixed immovably to the chairs, and with their ends abutting truly on each other; also a method of sustaining the weight of locomotives and carriages on pistons inserted in cylinders of fluids. The invention in respect of railway wheels consisted in applying a wrought iron tire to cast iron wheels, and in applying wrought iron rings, or felloes, to wrought iron spokes, set in cast iron naves; and in wheels of small diameter, instead of spokes of wrought iron, employing plates of malleable iron, to form the junction between the naves and the cast iron rims of the wheels. See Repy. Pat. Inv. No. 180, 2d series. It appears from the preceding and other sources, that before the date of Losh's patent, various methods of making wheels for railways were in use. Some wheels were made wholly of cast iron, and were suitable for heavy weights at low speed; these cast iron wheels were improved by putting on a rim of wrought iron tire; a further improvement was, the use of wrought iron spokes, one end being cast into a cast iron nave, the other into a cast iron ring, or felloe, on which cast iron ring or felloe was received the wrought iron railway tire. All the wheels made in this manner were liable to break suddenly at high velocities, owing to the shocks and brittleness of the cast iron felloes. This objection was in a great measure obviated in Losh's wheels, which could be used with safety at the greatest speeds. In Chancery. LOSH v. HAGUE. Cor. Sir L. Shadwell, V. C., Aug. 9, 1837. The bill, having stated the plaintiff's title and the enrolment of the specification and the disclaimer in the usual manner, set forth the whole of the specification, omitting the parts disclaimed, and craving to refer to copies of the drawings annexed to the specification deposited with the clerk in court for all purposes of elucidating the said specification, or otherwise in the cause, averred that the letters patent were in full force, and that the plaintiff had fully enjoyed the profits thereof; and having further stated the making and selling by the defendant of wheels made on the principle of the plaintiff's invention, and the defendant's refusal to desist from so doing, and that the defendant had recently received a large order for wheels of the same kind from the London and Birmingham Railway Company, prayed an injunction, and an account of the profits which had been made from the sale of the wheels so made. The statements in the bill were verified by the usual affidavits, and various other affidavits having been filed on the one side as to the novelty, utility, and merit of the invention, and on the other side tending to impeach the validity of the patent, an injunction was moved for on the ground of the uninterrupted enjoyment by the plaintiff of his invention for seven years, and until the infringement by the defendant, and that credit was to be given to the validity of a patent after possession of such duration. The motion was opposed, on the ground that the plaintiff's patent was invalid, by reason of a part of the invention set forth in the specification having been invented and used by Paton before the date of the plaintiff's patent. Sir L. SHADWELL, V. C.: It really seems to me that this is a case in which I must grant the injunction, because, as I understand it, the wheels that the defendant has made are certainly wheels made according to that thing for which, as I understand it, the plaintiff has taken out his patent,—the substance of part of the patent being for making wheels that shall have the spoke and the felloe in parts of the same piece, that is, in other words, the spoke is to be made with an elbow bend, which elbow bend will constitute a part of the felloes. Now it seems to me that there can be no question, but that the wheels complained of as having been made by the defendant, do answer the description of the plaintiff's wheels, and I do not think it to admit the in- enough on a question of injunction, for the defendant to say, fringement, and why he has done the thing complained of, but will not do it again. That is not the point, because if a threat had been An injunction being applied for, it is not sufficient for the defendant promise not to repeat it. used, and the defendant revokes the threat, that I can under- Sir L. Shadwell, V. C. stand as making the plaintiff satisfied; but if once the thing complained of has been done, I apprehend this court interferes, notwithstanding any promise the defendant may make not to do the same thing again. I cannot but think, however, that there is a good deal of question raised, by means of the production of Paton's patent, and what is stated by the witnesses on the part of the defendant, on the point whether altogether the thing which is so stated in the plaintiff's specification as an invention is an invention or not; there is a question on it, and it appears to me that even if Paton's specification and patent were in point of fact bad, yet if Paton had actually been making wheels which were on that principle on which the plaintiff's were made, then the plaintiff's patent would fail. The thing is certainly left in doubt on that very affidavit made by Paton's people; they have not sworn to the fact in the simple manner they might have sworn it, but they have so sworn it as to leave it uncertain what they do mean: they have sworn that in all material parts the things were the same, except something which is immaterial. If they had said all parts were the same, that would come to the point, and I should have understood it, but they have not sworn to that fact, and therefore, they have left a doubt on their own affidavit as to what it was they meant to state. I cannot but think that if the matter was to depend on Paton's patent, there would be great ground for saying that the specification is not good. It may, perhaps, be held, if it were to go before a jury, that it was good; that I can understand; but it is quite obvious to my eye, as I view the drawings annexed to the specification, that they do not represent the thing which he meant to be represented; if it be the fact that he meant to have represented that the spoke and the felloe were made of one piece, it is evident from the drawing that that is not so represented, because the drawing introduces internal lines, which of necessity give the appearance to the eye of a combination of parts, and not one piece; and when I look on the singular language which he has used in the body of the specification, it does not appear to be at all clear on the words used, that he did mean that thing which is imputed to him; and, certainly, if he did mean to say so, then the drawings have contradicted the words, and have represented one thing and the words another. As to the length of time that has elapsed, I do Time within which an applinot think there is much in that. On the 23d of March, the cation should. plaintiff received some information that there was an invasion be made. of his patent, and some portion of time it appears was spent in making inquiries; there was notice given distinctly on the 8th of May. Then some further correspondence takes place, and letters between the parties; and then a bill is filed, on the 7th of July, and the application is virtually made. I cannot but think, |