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Order.

therefore, that the plaintiff has come in sufficient time, and the only thing that rather appears to me to be probable, is, that the substantial grievance is but small, because if it be true that the defendant will not make any such wheels again, and if it be true that he has taken a contract with the London and Birmingham Company, for making wheels of a different description, this is very little more than a mere scientific discussion on an abstract right. In these cases on patents one is obliged to go a great deal on hypothesis alone-it seems difficult to make out what the real fact is. It appears to me there must be an injunction, and you must undertake to bring such action as you may be advised. And reserve all further directions.

This court doth order that an injunction be awarded against the defendant John Hague, to restrain him from directly or indirectly making, using, or putting in practice, the plaintiff's invention of certain improvements in the construction of wheels for carriages to be used on railways, in the plaintiff's bill mentioned, or any part of the same, or in any wise counterfeiting, imitating, or resembling the same, until the defendant shall fully answer the plaintiff's bill, or this court make other order to the contrary.

Trial at Law.

Declaration.

Pleas.

LOSH v. HAGUE.

Cor. Lord Abinger, C. B., Trin. Vac. 1838.

The declaration having stated the grant of the letters patent, the enrolment of the specification, and the entry of the disclaimer, assigned as breaches-That the defendant made and sold divers wheels for carriages to be used on railways, in imitation of the undisclaimed invention of the plaintiff, and divers other wheels for carriages to be used on railways, in imitation of the parts of the invention of the plaintiff so not disclaimed as aforesaid.

To this the defendant pleaded,-1. Not guilty. 2. That the said supposed improvements in the construction of wheels for carriages to be used on railways claimed by the plaintiff, and not disclaimed in his disclaimer, are only trifling and insignificant alterations in the mode of making wheels before then known and in public use, and are not legal subjects for the grant of the said letters patent. 3. That the plaintiff was not the true and first inventor of the said supposed improvements. 4. That the plaintiff did not by any instrument in writing particularly describe and ascertain the nature of his said invention, and in what manner the same was to be, and might be, performed.

The notice of objections was substantially the same as the pleas (a). At the trial a considerable body of evidence was adduced on both sides, the general nature of which will sufficiently appear in the following extracts of the summing up of the learned judge.

Lord ABINGER, C. B.: Gentlemen of the jury, this action is brought by the plaintiff Mr. Losh, against the defendant Mr. Hague, to recover nominal damages for the purpose of vindicating his right to a patent which he claims, and which he says. the defendant has infringed.

Some years ago, when an action was brought for the infringement of a patent, the defendant did nothing more than plead what is called the general issue; and when he pleaded that which was the only plea the law allowed him, the plaintiff was under the necessity of proving every part of his case: he was obliged to prove the patent, the enrolment within due time, that the specification was proper, and that the invention was novel and beneficial, that it was useful, that he had prepared it for the accommodation of the public, and that the defendant had infringed it; but by some recent alterations in the law, a defendant now is obliged to put all those matters into separate pleas; so that when he puts the plaintiff to prove his case, he is under the necessity of putting into separate pleas all those matters; the defendant is now obliged to put something on the record to bring the specification into question, because, if he did not, he would admit it. Further, by a recent act of parliament, a defendant is now obliged to give a notice of objections to the plaintiff, besides the pleas. We have had the first fruits, The notice of objections is to as far as my experience goes, of that new act of parliament to- apprise the day, but I never conceived those objections were intended to be urged before the jury, I thought they were merely to apprise the plaintiff of what he was to be prepared to meet.

The real question is reduced to this: the third issue is, whether the plaintiff was, at the time of the making of the letters patent, the true and first inventor of the said supposed improvement in the construction of these wheels for carriages to be used on railways. Now I shall, in the outset, state what I conceive to be the law on that subject; if I am wrong I shall be corrected elsewhere. If a man claims by his patent a number of things, as being the inventor of them, whether they consist of improve

(a) Practice as to notice of objections under 5 & 6 W. 4. c. 83, s. 5. The defendant had omitted on pleading to give to the plaintiff a notice of any objections on which he meant to rely at the trial, and a summons was subsequently taken out before a judge at chambers for leave to deliver such notice nunc pro tune. This summons being opposed, en the ground that a judge had not the power to grant the application, the word 'other' in the secfion showing conclusively that unless some objections, one at least, had been given in, the authority

plaintiff of what

he has to meet.

under the statute could not be exercised, the matter came before the court.

Alderson, B.: Perhaps if the point be insisted on, we can only give the defendant leave to plead de

novo.

Parke, B.: The court has power to grant the defendant leave to plead de novo. Therefore let the pleas already pleaded be considered as if pleaded de novo, and let the objections be then added, and considered as if delivered along with the pleas.

be not new, or an improve

is void.

If one of several ments or original inventions, and it turns out that some of them things claimed be not original and not improvements, his patent is void. The question, therefore, which you are to try is, not merely whether ment, the patent Mr. Losh has made some improvements upon wheels which existed before, but, whether all the improvements which he claims to be so are original. That is the question you have to try. It may still be safely admitted, probably, that Mr. Losh is a very ingenious man, and has made several beneficial improvements. The learned counsel has been endeavouring to show you, that those improvements are improvements on Paton's patent. The question for you to try is, whether some of the improvements which he has stated in his specification as his own, have not already been made, that is the question; if having Paton's patent before him, and seeing what Paton had invented, or if, knowing by inquiry what Paton had made and what Paton had sold, he had referred to that in his specification, and had stated the distinction between this and that, and had stated that such was the improvement he claimed, his patent certainly could not have been touched.

Now let us see what is the evidence on which that question turns, for that appears to me, notwithstanding the length of the case, really to be very short. I will first represent to you what the evidence appears to be upon Paton's patent, and the wheel made before. The witnesses say Paton invented a mode of making the wheels of wrought iron, and they say Paton, by his patent, shows that. The gentlemen who have read the patent say, that though he does not use the word wrought iron for the purpose of showing how the inner circumference of the wheel is to be made, yet when he says the spokes are to be made of wrought iron, and the spokes and periphery are to be welded into one, and that is to form the wheel (I will go to the minute parts presently), they say that denotes that in point of fact he meant them both to be of the same material, wrought iron. But it does not rest on Paton's patent, because Mr. Embleton proved to you, that the first wheel they made was rivetted, and on being tried would not answer; and he says, that upon his suggestion all the other wheels, thirty pair in number, which were made by Paton, were made with the circumference of the inner rim entirely of wrought iron, and then welded into one piece. That is what he says. You have had a model of a wheel produced to you, and you are to judge of that. Then they produce after Paton's patent a model which is to represent his drawing containing this; and they produced an original piece taken from one of the wheels to show you. They say, here is the spoke of the wheel which is welded into the part of the circumference. Now one of the advantages Sir F. Pollock says Losh's patent has over Paton's is, that instead of welding it on he bends it down. I observe one of the pleas states, that the

provement is

not, is a question

use for it, will

improvements are something trifling and insignificant. If that Whether an imis the improvement, you will consider whether it is worth a trifling and inpatent or not (b). Several of the witnesses have proved to you, significant or that when a piece is properly welded, the particular parts united for the jury. by the weld are quite as strong as any other part of the piece, if not stronger, and, consequently, if it be welded on, it seems-it is for you to judge—that there is no particular advantage that it should be one piece bent, over the two pieces welded together in this way. Well, this being the case, this is one of the spokes, and they represent that another spoke is to come on here, and the piece is to be welded to this, and the inner rim is to be welded. Sir Frederick Pollock says, that is not in his patent; for aught that appears in his patent they are only to be bound by an outer rim, namely a tire, and therefore they might be loose pieces. Supposing that to be so, the question you have to try on the originality of Losh's invention is, not whether Paton's patent contains that perfect periphery that is required in this The publicly case, but whether wheels have been publicly made on this prin- making and selling an article, ciple; if the wheels had been made and sold to any one indivi- though there be dual, the public's not wanting them because there were no rail- no demand or ways, their not being adapted to any particular use which at vitiate a subsethat time was open to the public to apply them to, makes no difference. You have it in evidence from that witness Embleton, and the person who was called after him, the deaf man, Mr. Mann, that these wheels were made in the first instance; that thirty pair were made with a complete continuous circumference all round. Then what signifies the words of the specification? if they were so made and sold, or used at all, though not for any purpose that then made them popular or desirable, still they are made with that particular advantage which is claimed by Losh's patent, namely, a periphery made of one continuous piece of wrought iron, as well as the spokes. But that is not all the evidence; there are two persons from Manchester; one Horsfall says, that he remembers nearly twenty-eight years ago, in the year 1810, when he came into the employ of his present employers, that there were three trucks, having each three wheels, and those wheels were made of wrought iron spokes in a wrought iron circumference, and there is one exhibited before you which was actually in use at that time; the other, Roberts, confirms. that, and has stated that they existed for many years, and that they have been used. Mr. Roberts states, that he himself has made wheels upon this construction; but as he cannot state the

(b) This question would appear, both on the authority of the learned Chief Baron in this case, and from the nature of the thing, to be peculiarly a question for the jury; and this defence must consequently be specially pleaded. In the case of Brunton v.Hawkes, 4 B. & Ald. 554, Bailey, J., expresses an opinion that there could not be a valid patent for making in one entire piece what before

quent patent.

had been made in two pieces; but it is submitted that dictum must be received and applied with caution, since the avoiding that joining might constitute a most material improvement. The utility of the change would appear to be the test to be applied, and of this the jury are to judge according to the evidence. See ante 71, n. e.

C. B., to the

jury.

Lord Abinger, period of the year 1831 at which he made them, he must not be considered as having made any thing of that sort before Losh's patent, and I lay that out of the question; but yet you have the circumstance of those wheels made for the use of Roberts and Sharpe's manufactory, and you have the wheels made by Paton's people as far back as the year 1809 and 1810, up to the year 1813, when he died.

You will judge whether Losh does or does not claim in his specification, as part of his improvement, that construction which those wheels so long ago made actually exhibited. I quite agree with the law laid down by Sir F. Pollock, that a man can always take out a patent for a new improvement; but when he makes his specification, he must take care that he does not put among his improvements that which another man had before made, or had got a patent for. Now when you look at this patent, it is for you to consider this: he says, that patent is for certain improvements in the construction of wheels for carriages to be used on railways, &c (c). Now it appears here, that one of his modes is to make the circular rim consist of detached pieces, which are united to the spokes in the first instance; and then those detached pieces are either rivetted together, or welded together, to form a continuous circle. By that means he effects an iron wheel made with wrought iron spokes, and with a wrought iron circumference. They say, Paton's patent has done the same, and the only difference between the two cases is, that in the one case they have welded the spokes into the circumference, while in the case of Losh's the spoke is formed, and the circumference is formed, of part of the same piece. Is there any importance in that? That is a point I shall leave to your consideration on this part of the case (d). But it does not rest on this point only: the question is, whether if any man, after the date of Losh's patent, had made a wheel according to Paton's patent, and had welded the spoke into the circumference, not bending the spoke so as to make it part of the circumference, Mr. Losh might not very justly have complained of that as an infringement of his patent, because he would have called men of science to prove that the welding was just as good as the original piece bent, and it would make no difference.

There has been a contest between the learned counsel and the witnesses, that it is not stated in Paton's specification, as in Losh's, that the periphery and the spoke are to be joined together. But Paton's patent is not an important thing for you to consider; it is a light you may look at, but it does not decide the case. The question is, what was made by the workmen; and if it had been made by Paton, and Paton's patent had never existed at all, the question would then have been just the same.

(c) The learned Chief Baron here read over and commented on the specification.

(d) As to the effect of a change of this nature being a proper question for the jury, ante 205, n. b.

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