affecting the patent; and the phrase "obtained letters patent," A.D. 1842. in the statute, clearly means possessed of letters patent. If the concurrence of other part owners in the patent would qualify Maugham to enter the disclaimer, their concurrence should have been averred. The plea is good. If it is bad, it is bad for duplicity; and it has not been demurred to on that ground. The plea alleges distinctly, that the invention was not a new manufacture within the statute of James. There is no ambiguity in that allegation, though it may be objected to as double, inasmuch as it denies that the invention is new, and that it is within the statute. But the plea is, in truth, not double; for the allegation is one connected proposition, containing a single defence, to which both the statements involved in the allegation are necessary; such a mode of pleading is good (b). Petersdorff, in reply. [Patteson, J.: "Obtained" cannot very well be taken merely to mean "possessed" in the statute, 5 & 6 W. 4, for in the 2d section provision is made for allowing a party who has obtained a patent for something, of which it turns out he was not the first inventor, to petition for a confirmation of the patent; in that section, the person spoken of as having obtained the patent, is clearly the original grantee (c).] [Wightman, J.: The plea does not follow the words of the 6th section of the statute of James, which makes a reservation in favour of letters patent heretofore made, of the sole working or making of any manner of new manufacture within this realm.] The question, how far an assignee who had been grantee may disclaim, does not arise, because in this case the disclaimer was by the grantee. There is nothing in the act to intimate that a party entering a disclaimer should have any present interest. The plea is uncertain. It would be difficult in advising on evidence to say, what defence the plaintiff must be prepared to meet. Lord DENMAN, C. J.: The first question is, whether the Judgment. declaration is good. The disclaimer is stated to be by the grantee of the letters patent; at a time when he had not the entire interest in them. I think he falls within the description given in the statute of the person who may enter a disclaimer, and that the declaration is good. Any inconvenience which might arise from such a power may be obviated by the exercise of the discretion conferred upon the Attorney and Solicitor General, who will, before they grant leave for that purpose, take cognizance of the name in which permission is given. The second question is, on the goodness of the fourth plea. Suppose the words of the statute had been followed; then, I (b) O'Brien v. Sazon, 2 B. & C. 908. (c) Any other meaning of the word is inapplicable to the circumstances to which the section relates. The grantee is the only person who can have, or be possessed of, letters patent in respect of his character of inventor, but the same inapplicability does not exist in the senses in which the word may be used in the first section. Judgment. think, it would have fallen within the rule which allows of a complicated proposition being pleaded though consisting of several facts. But the words of the statute are not followed, which are, "the sole working or making of any manner of new manufactures within this realm;" and therefore, being used in the ordinary sense, it is left doubtful whether the objection is, that the invention is not new, or that it is not a manufacture within the statute (21 Jac. 1, c. 3). That is clearly not a complicated proposition, but two propositions; and therefore the plea is bad. PATTESON, J.: I cannot read the first section of stat. 5 & 6 W. 4, c. 83, without being convinced that the word "obtain" refers to the act of applying for and obtaining from the crown a grant of letters patent, though at the same time I do not understand the words "assignee, or otherwise." It is indeed argued that the word "obtain" may mean "get into his possession," through any other channel; but looking to the second section we find the same word; and there it is clear that it has the meaning which I attach to it; for it mentions any person who shall have obtained letters patent for any invention being found to be not the first inventor thereof, and gives power to him or his assigns to petition the crown. And I do not see why the same sense should not be attributed to it in the first, which it A grantee of obviously has in the second section (d). Therefore, if the though having grantee has entirely parted with his interest, I think he would entirely parted be a proper person to enter a disclaimer, if the Attorney or with his interest, Solicitor General, whose permission is made necessary, should think proper to allow it. But this declaration shows that the original grantee had reconveyed to him two-thirds of the interest in the patent, whether collusively or not is not now a question. As to the fourth plea, I thought at first that it contained one connected proposition, but the words "within this realm" apply to the working or making of the manufacture; and the words of letters patent, may enter a disclaimer. (d) But the important question is, whether it has that sense and no other. If the word "obtain" in the first section is to apply only to the immediate grantee of letters patent, and he alone is the proper party to enter a disclaimer or memorandum of alteration, the words "assignee or otherwise" would not only be without meaning, but great hardship will result in certain cases'; as, for instance, where the grantee, who has parted with his whole interest, refuses to enter such disclaimer, or where the letters patent may have vested in the executors or administrators of a grantee, or in assignees under a bankruptcy. With respect to the suggestion that these words may apply to a party who first procures letters patent in this country for an invention learnt or imported from abroad, it must be observed that such a party is the grantee of the letters patent as the true and first inventor in law, and has no other or different rights than the grantee of letters patent for an in vention, not derived from such a source. It may also be remarked, that in the second section the word" obtain" cannot in the nature of the thing be applied to any other than the grantee; the inventor must be the grantee, the term assignee is altogether inapplicable. Ante 257, n. c. Thus the subject-matter of the two sections being different, the construction of words employed will, to meet the necessities of the case, require a corresponding modification. The preceding case decides, that a grantee who has parted with a part or the whole of his letters patent may make a disclaimer; but does it also decide that the assignee of the whole letters patent may not also make a disclaimer? The objects of the statute would be defeated in many cases by such a construction, and that question would ap pear neither to have arisen, nor to have been decided, in the above case. the statute are not strictly pursued. I think the plea is am- A.D. 1842. biguous, and that the plaintiff might be put in a difficulty how to meet it. COLERIDGE, J.: I am of opinion that the declaration is good. The words of the statute extend to what has been done in this case; and the disclaimer has been made by the party who has obtained it within the meaning of the statute. The words "assignee or otherwise" may be reconciled with our construction, "that the person who has obtained" means the original grantee, for the words "assignee or otherwise" may apply to a foreign invention, of which a party in this country may become the assignee, and be the first to obtain an English patent for it (e). The inconvenience which would result from allowing a person who has parted with his right to enter a disclaimer without any restriction, is obviated by the provisions with respect to the caveat, and by the control to which it is subjected of the officers of the crown. The fourth plea is substantially defective; a person asked to advise upon the evidence to rebut it, would be in doubt as to the point to which it should be directed. WIGHTMAN, J.: It is only by a forced construction that the word "obtain" could be construed to apply to any other person than the person to whom originally the letters were granted by the crown. The argument ab inconvenienti is answered by a reference to the provisoes in the first section. If the fourth plea had omitted the words "within this realm," it might have been good; but as it stands, it applies those words to the invention, whereas the act applies them to the working or making (ƒ). (e) See ante 256, n. a. Judgment for the plaintiffs. (f) The concluding observation of this learned judge on the construction of the statute, is of the greatest importance with reference to the question, whether the simple user of an invention or article imported from abroad, without any knowledge of the construction of that article, or its constitution, or of the source whence it came, there being no manufacture of the article within the country, will vitiate letters patent for the same invention granted to an independent inventor, who knew nothing of the existence of such an article; or, knowing of its existence, had no knowledge of how it was to be made, but who either received the knowledge of the manufacture from abroad, or invented it by his own wit and ingenuity, and introduced the working and making of such a manufacture into the realm through the medium of the specification of letters patent, and the putting the manufacture into practice, and the general notoriety consequent on such proceedings. In the case of any simple mechanical combination, as a lock of peculiar construction, the fact of the existence and user of such an article within the country would raise a strong presumption against the grantee of such letters patent being an independent inventor; this however would be a question of fact. (See Lewis v. Marling, 10 B. & C. 22, and ante, 126.) But in the case of a compound, presenting little or no trace of its elements, and of their proportions, as a metal, a paint, a cement, a medicine, and similar articles, the discovery of the working and making of such a manufacture may be matter of great research and difficulty; the constitution of the article itself, together with the fact of its previous user in ignorance of its manufacture, would be evidence to raise a strong presumption in support of the claim of such grantee to be an independent and real inventor. The difficulty which this question presents, appears to arise from not distinguishing between the use of an invention or article as a consumer, and the using, exercising, and putting in practice, the invention spoken of in the letters patent as a manufacturer of an article, which is, in fact, the working and making of the manufacture spoken of in the statute. The purchaser, user, and consumer of a patent lock, cork-screw, medicine, and paint, does not use, exercise, and put in practice, Nov. 25, 1837. In actions for Notice of Objections under 5 & 6 W. 4, c. 83, s. 5 (a). BULNOIS V. MACKENZIE. [4 Bing. N. C. 127.] This was an action on the case for infringing a patent for an infringing a pa- improved cabriolet, invented by Moses Poole, and by him asof objection de- signed to the plaintiff. tent, the notices livered by defendant under 5 & 6 W. 4, c. 83, s. 5, are not conclusive the court or a judge, under their general jurisdiction, as well as under The defendant pleaded several pleas, and delivered with them a notice of the following objections to the patent: First, that the alleged invention was not at the time of granting the patent at his peril; but new; secondly, that Poole was not the true and first inventor; thirdly, that Poole was not at the time of granting the patent in the possession of the alleged invention; fourthly, that at the time of granting the patent the alleged invention had been used by others; fifthly, that the supposed improvements were not a new invention as to the public use thereof; sixthly, that the specification was imperfect, in not ascertaining the nature of the invention, and not showing the application of the alleged improved construction. These objections were a mere echo of the pleas. the statute, may and fuller no order a further tice. On the 14th of June last, Park, J., after hearing counsel on both sides at chambers, upon a summons for further and better objections, ordered the defendant's attorney to deliver a further and better account in writing of the objections to be relied on. Whereupon the defendant added to his fourth objection, that the alleged invention had been used by James Hargrave Mann, in England, and by divers other persons in other parts of the kingdom; altered the fifth, into an objection that the specification did not describe the nature of the invention; that every matter or principle stated in it was already known to the public, and open to public use; and that it contained no new combination: the manufacture of those articles, or the said inventions, within the meaning of the letters patent; if he did, such purchaser, user, or consumer, would, in the words of the letters patent, require a license to use the same, in writing, under the hand and seal of the patentee. The not attending to this distinction, between the using an invention, and the working and making of the manufacture, of which the invention is the result, has given rise to some difficult questions in the law of patents, and which would appear not to be well founded. See that suggested by Lord Eldon, ante, 7 & 48; see also ante, 216, in notes. (a) The fifth section is as follows: "And be it enacted, that in any action brought against any person for infringing any letters patent, the defendant in pleading thereto shall give to the plaintiff, and in any scire facias to repeal such letters patent the plaintiff shall file with his declaration, a notice 370. and the sixth into an objection, that vehicles with two wheels, drawn by one horse, and entered behind, were in public use before the granting of the letters patent; and that the specification did not set out with any certainty what. Poole claimed as his invention. The plaintiff then took out a summons, calling on the defendant to furnish the name, description, and place of abode, of the persons referred to in the fourth objection, and further and better objections in lieu of the fourth, fifth, and sixth, or to be precluded from calling witnesses in support of the fourth. VAUGHAN, J., after hearing counsel on both sides on the 22d of June, made an order to that effect. The defendant then added to the first objection, that the details of the alleged invention (specifying them), as well as the alleged invention, were not new; and in the place of the fourth, fifth, and sixth objections, substituted a minute detail of defects in the specification, concluding the whole with a statement of the address and description of Jams Hargrave Mann.-Early in the present term, Sir F. Pollock obtained a rule to rescind the two orders of the 14th and 22d of June, and for the defendant to be at liberty on the trial of the cause to rely on the objections originally delivered with the pleas. He contended that, under the late statute, the defendant must deliver in a particular of objections, at his own peril, and that the judges had no authority to interfere under their general jurisdiction. Wilde, Sergt., and Hoggins, who showed cause, insisted that even if the late statute did not confer any authority in this matter, the court had a right to interfere by virtue of their general jurisdiction in regulating the proceedings in a cause; as, in ordering particulars of a plaintiff's demand; further particulars; the production and inspection of documents, and the like; for which orders there was no authority by statute. In Blackrey v. Porter (1 Taun. 3S6), they ordered a copy of an assignment of a lease, to enable the plaintiff to commence an action of covenant. And, in general, where a party can obtain an inspection of documents in equity, this court will compel it in the progress of a cause. Under the statutes of set-off the defendant may be said to act at his peril, and no express jurisdiction is given to the court; and yet it is the constant practice to order amended particulars of set-off. But the proviso in s. 5 of the late patent act, seems to point expressly to a discretion in the court. Here, the first notice of objections was altogether illusory and vague, and gave no more information than the plea. The plaintiff was at all events entitled to know the names and addresses of the other persons besides Mann, who were alleged to have used the plaintiff's invention; otherwise, if the evidence as to |