a patent, the be both new tion must accu rately describe And I seeks to cover more than is In his directions to the jury, the judge has stated it as the To establish law on the subject of patents-first, that the invention must the validity of be novel; secondly, that it must be useful; and thirdly, that the invention must specification must be intelligible. I will go farther, and say, and useful, and that not only must the invention be novel and useful, and the specificathe specification intelligible, but also that the specification must not attempt to cover more than that which, being both it. matter of actual discovery, and of useful discovery, is the specification only proper subject for the protection of a patent. am compelled to add, that if a patentee seeks by his specifi- actually new cation any more than he is strictly entitled to, his patent is and useful, it vitiates the pathereby rendered ineffectual, even to the extent to which he en tent, rendering would be otherwise fairly entitled. On the other hand, there it ineffectual may be a valid patent for a new combination of materials pre- tent to which it viously in use for the same purpose, or for a new method of might otherwise applying such materials. But, in order to its being effectual, ported. the specification must clearly express that it is in respect of such new combination or application, and of that only, and not lay claim to the merit of original invention in the use of the materials. If there be a patent both for a machine and for an improvement in the use of it, and it cannot be supported for the machine, although it might for the improvement merely, it is good for nothing altogether, on account of its attempting to cover too much. even to the ex have been sup Now it is contended, that what is claimed by the present patent is not a novel invention; that the extraction of iron from slags or cinders was previously known and practised; that the use of lime in obstructing "cold short" was likewise known. But to all this it is answered, that the patent is not for the invention of these things, but for such an application of them as is described in the specification. Now, the utility of the discovery, The utility of the intelligibility of the description, &c., are all of them matters and the intelliof fact proper for a jury. But whether or not the patent is de- gibility of the fective in attempting to cover too much, is a question of law, are for the jury; and as such to be considered, in all ways that it is convenient but the nature for the purposes of justice that it should be considered (h). the claim, for This specification generally describes the patent to be "for the court. improvements in the smelting and working of iron;" and it then (h) The distinction here pointed out, as to the questions which belong to the jury and court respectively, is of great importance to be observed. In the case of Neilson v. Harford it was argued, post, that in the opinion of Lord Eldon, the jury were to judge of the meaning and construction of a particular sentence in the specification, the sentence containing neither terms of art requiring explanation, nor words, the meaning of which, independent of the context, was the least doubtful or obscure; that the expression "intelligibility of the description," as a question for the jury, was the invention, specification, and extent of co-extensive and synonymous with the expression, "meaning of the specification." But the Court of Exchequer held that these were essentially distinct; that the meaning of the specification was for the court, and that the court were to tell the jury what the specification had said, the interpretation of terms of art being left to the determination of the jury, according to the evidence; that the jury were to determine whether that which the specification says, is a sufficient description. See post. having been goes on to describe the particulars in which the alleged improvements consist, describing various proportions in the combination of the materials, and various processes in the adhibition of them. The question of law, upon the whole matter, is, whether this is a specification by which the patentee claims the benefit of the actual discovery of lime as a preventive of "cold short," or, whether he claims no more than the invention of that precise combination, and those peculiar processes which are described in the specification. And when I see that this question clearly arises, the only other question which remains is, whether I can be so well satisfied with respect to it as to take it for granted, that no argument can prevail upon a court of law, to let that first question be reconsidered, by granting the motion for a new trial. If this be a question of law, I can have no right whatever to take its decision out of the jurisdiction of a court of law, unless I am convinced that a court of law must and will consider the verdict of the jury as final and conclusive. But The injunction this only brings it back to the original question; and I see dissolved, the enough of difficulty and uncertainty in the specification, and plaintiff to enough of apparent repugnance between the specification and bring an action to establish his the patent itself, to say that it is impossible I can arrive at such a conclusion respecting it as to be satisfied that there is no ants to keep an ground for granting a new trial. In the order I formerly proaccount in the nounced was contained a direction, that the defendants should mean while; a verdict having keep an account of iron produced by their working in the manfor the plaintiff ner described in the injunction. If the injunction is to be now on the trial of revived, the whole of their establishment must be discharged the action, on between this and the fourth day of next term, when it is inapplication being made to tended to move for a new trial, the result of which may be, that the defendants have a right to continue the works; to do which, they will then be under the necessity of recommencing all their operations, and making all their preparations and move for a new arrangements de novo. It appears to me that this would be a inconvenience than any greater that can result from my dered to stand refusal in the present instance to revive the injunction (i). My sult of that ap- opinion, therefore, is, that this matter must stand over until the plication should fifth day of next term, when I may be informed of the result of parties continu- the intended application for a new trial; the account to be taken ing to keep an in the mean time as before. patent right, and the defend been obtained revive the in junction, it was d that the defendants intended to trial; and the matter was or over till the re be known; the account in the interim. much Ordered accordingly. (i) This principle was acted on by Lord Cottenham, L.C., in the recent case of Neilson's patent, post. It appeared that the defendants would sustain irreparable damage if their works were stopped by injunction; an account, consequently, was ordered, until the validity of the patent could be tried. But in other cases, where the same mischief would not result, the parties have been restrained absolutely. See Bickford v. Skewes, ante, 214, Soames v. Tindal, post, the plaintiff being put on the terms of bringing an action. HILL V. THOMPSON AND FORMAN. In the Common Pleas, Trin. T., 1818. [8 Taun. 382; 2 B. Moore, 433.] nonsuit. Lens, Sergt., in Hilary Term last, obtained a rule nisi to set the Rule nisi for verdict aside (k), and to enter a nonsuit, or have a new trial; first, on the grounds urged at the trial; secondly, because the verdict was against evidence, inasmuch as it had been proved that lime had been applied to the prevention of the quality called "cold short," and that good bar iron had been produced from slags and mine rubbish long before the patent; and he cited a passage from 'Aikin's Chemical and Mineralogical Dictionary' (), to show that the application of lime for the cure of the quality called "cold short" was notorious at a much earlier date. The court granted the rule principally on the question, whether this was substantially a patent for a discovery, or an improvement; and thought that, as to that part of it that applied to a new trial, there was sufficient complication in the case to have it discussed, without saying whether the verdict of the jury was right or wrong; and were further of opinion, that the work of Dr. Aikin should be considered as having been made use of at the trial, both parties having referred to it (m). In the last term, Best and Copley, Sergts., showed cause against the rule, which was then supported by Lens, Vaughan, and Pell, Sergts. Substance of the arguments in showing cause.-Although the Argument principles on which the patent was founded might have been against rule. previously known, and although the various articles specified might have been previously used, yet the combination of those principles, and the use of those articles in certain proportions, in a new series of processes, leading to and terminating in a beneficial result, will support the novelty of invention claimed by the patent: the novelty of such combination and proportions, and the successful result of them, have not been controverted. The patent has not been taken out for too much, nor does the specification embrace more than the patentee is entitled to by his patent. Neither is the specification equivocal and ambiguous. It is not necessary that every information on such a subject as that with which this patent is conversant (k) Ante 234. (1) “Rinman says, That cast iron, which by the common treatment would yield cold short' bar, may be made to afford soft malleable iron, by fusing it with a mixture of equal parts of lime and scoria." Vol. 1, 610, col. 1. (m) This book, referred to by Dallas, J., in sum ming up, had not been given in evidence; but as it lay open on the table at the trial, and had been then referred to by both parties, Park, J., suggested that it could not be now objected that it had not been correctly mentioned by the judge in his summing up; and in this suggestion the counsel on both sides acquiesced. should be given by the specification. In such cases, general knowledge must be resorted to, and the party must carry a reasonable knowledge of the subject-matter with him to the perusal of the specification. Neither is it necessary that the processes or articles in such a case as this should be individually new. It is no objection to mechanical or chemical discoveries that the articles of which they are composed were known, and were in use before, provided the compound article, which is the object of the invention, be new (m): for it is settled law, that the new combination of old materials may be the subject of a patent (n). The passage cited from Aikin only shows a previous knowledge of a mode of preventing the quality called "cold short," by fusing cast iron with equal parts of lime and scoria: the plaintiff claims the improvement of preventing it by the application of lime only. Robinson's evidence does not affect the plaintiff's case. He made a mere series of private experiments, and if he made any discovery, he never made such discovery public. The answer of Buller, J., upon the objection raised to Dollond's patent, for the invention of achromatic telescopes, (which objection was, that Dollond was not the inventor of the new method of making the object glasses, but that Dr. Hall had made the same discovery before him,) applies to Robinson's experiments in this case. Buller, J., in the case of Boulton v. Bull, observed upon that objection, that as Dr. Hall had confined the discovery to his closet, and the public were not acquainted with it, Dollond was holden to be the inventor (o). To make Robinson's experiments (even if they had been applied to the manufacture of iron from slags, which was not the case) destructive of the plaintiff's patent, they should have been communicated to workmen, and brought into efficient use in the manufactory. [Dallas, J.: If a person had done prequent patent cisely all that is specified to be done in this specification, to prevent "cold short" in iron, and had not communicated it to any one, could he be prohibited by the patent from doing that which he had done before, though known to no one but himself, or could it be considered as new if practised by only one person, but not communicated to the world?] Such a previous use of an alleged discovery would, as it did in Tennant's case (p), have gone far to destroy the patentee's rights. But here there had been no such use, and the verdict of the jury ratified the patentee's right to the invention which he had claimed. Will a subse restrain prior private user? Substance of arguments in support of the rule. The patent (m) "Mechanical and chemical discoveries all come within the description of manufactures; and it is no objection to either of them, that the articles of which they are composed were known and were in use before, provided the compound article, which is the object of the invention, is new." Per Buller, J., 2 H. Bl. 487. (n) Per Lord Ellenborough, C. J., in Huddart v. Grimshaw, ante 86; and Gibbs, C. J., Dav. P. C. 265. (0) Ante, 43. is too large, has introduced nothing new, and if it had, it has not A.D. 1818. been infringed. It is too large: for it is taken out generally "for certain improvements in the smelting and working of iron," and cannot be understood to apply particularly to the smelting and working of iron obtained from slags or cinders, to which it is narrowed in the specification. The patent ought to have been confined to improvements in the smelting and working of iron obtained from slags or cinders, and to the application of lime for the prevention of the quality called "cold short" in iron so obtained. In 1800 and 1801, Matthias Koops took out two patents; the first for a method of manufacturing paper from straw, hay, thistles, waste and refuse of hemp and flax, &c., fit for printing upon; the second, for a method of manufacturing paper generally from like substances, enumerating them. This was a distinct notice of his invention, and accordingly William Plees, in his patent for a method of manufacturing paper for various purposes, taken out in 1802, was enabled to steer clear of Koops' invention (g). The case of Lord Cochrane v. Smethurst (r) is conclusive against the plaintiff upon this part of the case. As to the alleged novelty of the method of extracting iron from slags, and preventing the quality called "cold short" by the application of lime, stated in the specification, the evidence is all against the plaintiff. He has produced no definite improvements or new beneficial result, for when his combinations were discarded, the result was equally beneficial. The passage in Aikin is completely destructive of the plaintiff's case as to his claim for the invention of applying lime as a prevention of the quality called "cold short;" the word "scoriæ," adverted to by the plaintiff's counsel, is only a synonyme for slags or cinders. After reading that passage, it can never be said, that the plaintiff, in the words of the specification, has discovered that the addition of lime or limestone would sufficiently prevent or remedy that quality in iron from which it is called "cold short." In Bovill v. Moore (s), the greater part of the processes which formed the combination on which the patent was founded, had been used before; the subsequent stages were new; but there, as in this case, the plaintiff had in his specification described an invention to a greater extent than the proof warranted, and the patent could not be sustained. Cur. adv. vult. DALLAS, J., delivered the judgment of the court. In this June 1, 1818. case it will not be necessary to state the patent with the speci- Judgment. fication at large, or the pleadings in the cause. These have been fully adverted to at the bar in the course of the argument (4) Collier on Patents, Ap. 72, tit. Paper. (3) Dav. P. C., 361. |