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Mann were answered, the plaintiff might still be taken by surprise as to the others who were not named.
Sir F. Pollock and R. V. Richards, in support of the rule, argued, that to enforce those orders would be an unfair exposure of, and interference with, the defendant's evidence ; that the jurisdiction of the court in controlling the proceedings in a cause, appeared by the year books to have commenced in the reign of Henry VII., when pleadings were ore tenus : the court then compelled a defendant to produce a document; but that was a usurpation which the court would not now be disposed to extend; otherwise it might become impossible to draw a line. The court might be called on to order particulars of every plea that was pleaded; the time, place, and manner of com assault demesne, and the details of the trading, debt, and act of bankruptcy, which the plaintiff's assignees must prove upon being required to do so. The defendant being precluded from giving evidence of any objection of which he has not given notice, the sufficiency of the notice will be determined at the trial. And as to the names and addresses of the other persons mentioned in the notice, the defendant may be able to prove that several persons have been seen using it, with whose names he is unacquainted. In Crofts v. Peach(6), in an action for the infringement of a patent, the court held, that the plaintiff could not be compelled to produce a specimen of the patent articles to enable the defendant to prepare his defence to the action. If these orders be enforced, it will rest with a judge at chambers, and not with the defendant, to say on what evidence he shall go to trial : he proceeds on notices given by the judge, and not on those for which the statute has made him responsible. The analogy of set-off has no application, for a set-off is a species of cross action, of which the party is bound to furnish all the particulars; and this is the first time that an order like the present has been made.
TINDAL, C.J.: This is an application to set aside two orders of a judge at chambers; one for further and better objections in answer to an action for infringement of a patent; that has been complied with, and therefore there is no occasion for setting it aside: the other, for the address of James Mann and other persons, who are alleged by the defendant to have used the invention before the plaintiff. To a certain extent, that order has also been complied with, for the address of James Mann has been furnished : to that extent, therefore, it is unnecessary to
(6) Post 268 ; but see Perry v. Mitchell, post 269. These two cases are, however, clearly distinguishable; the application in the former case was refused on the ground that the specification furnishod the requisite information. In the latter,
the plaintiff sought information as to which of several inventions contained in the specification the infringements were alleged; but the court did not order specimens of his manufacture under those several parts to be furnished.
rescind it; and the only question is, whether it should be rescinded as to the name and address of the other persons. I accede to the proposition, that the court has the right to model The court a.
right to model these proceedings under its general jurisdiction; and I protest in
loves these proceedagainst the word usurpation, which has been employed on the ings under its part of the defendant. It is admitted by the learned counsel, that this jurisdiction was exercised in the reign of Henry VII.; it has constantly been acted on ever since; and it is most beneficial to the parties, who would otherwise be driven to a court of equity. But looking at the words of the statute 5 & 6 W. 4, c. 83, s. 5, I think it falls clearly within the same construction as the statutes of set-off. I cannot see any objection to the court's looking at notices delivered by the defendant, and determining whether or not they are sufficient. At the same time there is a generality in the words of the section, which leaves it open to doubt, whether under the words “notice of objection” Doubtful whewe can require the defendant to furnish the names of those who he
10 be required. are alleged to have used the plaintiff's invention. We shall therefore rescind so much of the second order as requires the defendant to furnish the names and addresses of those other persons. The consequence will be that the judge at nisi prius will admit or reject evidence as to those persons, according as he may deem it to fall within the terms of the notice or not; and then one of the parties will tender a bill of exceptions. I regret that the defendant declines to preclude this inconvenience, by complying now with"the judge's order.
VAUGHAN, J.: It is true that the order is new in specie; but before the recent act and the new rules of pleading, the question was not likely to arise; because the defendant might give in evidence whatever he pleased, under the general issue. I think the notice of: the construction I put on the act was correct. It meant to
ant to meant to afford afford the plaintiff more specific information than was given by more specific
information than the defendant's plea (c), and therefore, I think the present the plea. notice insufficient; for if the defendant fail as to the alleged user by James Mann, he has only to resort to the others, as to whom the plaintiff must now be taken by surprise.
BOSANQUET, J.: I entertain no doubt as to the power of the The court may court to decide on the sufficiency of these notices of objection. Les
" sufficiency of I do not consider it to have been created by the late act of par- the notice. This liament, but the fifth section of the act engrafts itself on the po
created by the practice already existing. The practice as to notice of set-off is statute. exactly analogous. The defendant originally gave merely the heads of his set-off, which afforded the plaintiff little information; the courts therefore required him to furnish such particu
(e) Thus per Lord Abinger, C.B., the notice of objections is to apprise the plaintiff of what he
has to meet, ante 203.
lars as should enable the plaintiff to understand what was to be proved at the trial; not indeed to lay open his case, or the evidence by which it was to be supported, but give a reasonable account of the nature of the transaction. I have no doubt, therefore, of the power of a judge to order a further notice of objections: but I think the order goes too far in requiring the names of all the others, who are alleged to have used the invention. Andrews v. Bond (8 Price, 213, 538) is in point. There the plaintiff had been nonsuited, on the ground that a notice of set-off had given sufficient information of the sum intended to be set-off against the demand, and that the defendant was not precluded by his particular of set-off from entering into a proof of a counter demand not stated there; that nonsuit was afterwards set aside, and the court, considering that he was precluded, granted a new trial.
COLTMAN, J.: As far as the jurisdiction of the court is concerned, I think this question must be decided on the same principle as questions under the statute of set-off., The recent statute, no doubt, requires a pretty full notice to restrain the generality of a defence; but, perhaps, it would be throwing too great a difficulty on the defendant to require him to disclose the name and address of all persons who are alleged to have been seen using the plaintiff's invention. To that extent, therefore, I think the judge's order should be rescinded.
Rule absolute accordingly.
great a dihaddress of all persons w
To that extent, the
June 13, 1838.
FISHER v. DEWICK.
[4 Bing. N.C. 706.] A particular of To an action on the case for infringing a patent obtained by objections de William Sneath, and assigned to the plaintiff, for the manufaclivered by the defendant in an ture of bobbin net lace, the defendant pleaded, First, not guilty. action for in... Secondly, that W. Sneath, in the declaration mentioned, did not, fringing a patent right, must be by an instrument in writing, under his hand and seal, particu
and defi- larly describe and ascertain the nature of his alleged invention. nite. It is not sufficient to say Thirdly, that the said alleged invention was not an improvement that the im
in such machinery for making bobbin net lace. Fourthly, that provements, or some of them, he was not the true and first inventor of the alleged improve
"ments in the machinery. Fifthly, that the alleged invention was before; the de fendant should of no use, benefit, or advantage to the public whatsoever.. point out which. ci
· Sixthly, that the alleged invention was not, at the time when the letters' patent were granted, a new invention. Seventhly, that W. Sneath did not assign, transfer, and set over unto the plaintiff all that his said alleged invention, and also the said letters patent.
have been used
The defendant delivered the following particular of objections: T. T., 1838. 1. That the grantee of the said patent was not the true or first inventor of the whole, or any part of the improvement or improvements described in the declaration, letters patent, specification, or either of them. 2. That the improvements alleged to have been invented by the said W. Sneath were not invented by him. 3. That the said improvements were not, at the time of the granting of the letters patent, nor was any part thereof, new. 4. That if any part thereof were new, the same was useless or unnecessary, and not the ground of any patent at all; and therefore ought not to have been described in the specification as part of the said improvements. 5. That the specification did not describe with sufficient certainty and precision the nature of the supposed improvements, or the manner in which they were performed; and particularly that they were not applicable to every sort and description of the machinery to which in the specification they were said to be applicable. 6. That the said improvements, or some of them, had been publicly and generally used long before the granting of the said letters patent. 7. That the alleged improvements, and the means of enabling the public to avail themselves of them, were so imperfectly described in the specification, or instrument in writing in the declaration mentioned, that a machine could not be made by the description in the specification, to produce the kind of lace therein mentioned. 8. That it was stated in the said specification, that the said improvements were applicable to machinery for making bobbin net lace, whereas there were several machines for making bobbin net lace, to which there was no adaptation of the alleged improvements stated or set out in the specification, and to which those improvements could not be applied by the means, and in the manner, stated in the specification. 9. That the said letters patent, as appeared by the title thereof, was granted to the said W. Sneath, for having invented certain improvements in machinery for the manufacture of bobbin net lace, whereas the said specification did not show any improvements in such machinery for the making bobbin net lace. 10. That the machinery for making bobbin net lace was complete in itself, and not improved by any part of the inventions for which the said letters patent were granted. 11. That such of the machinery as was set out in the said specification as applicable to the manufacture of bobbin net lace was not new, but was in general use before the date of the letters patent. 12. That the invention for which the said letters patent were granted was more extensive than that shown in the specification. 13. That the invention described in the said letters patent did not correspond with the invention described in the said specification. 14. That the said W. Sneath claimed as his invention those parts
Notice of objec. only of the machine which were described in the said specifica
tion by numeral figures, whereas many of the parts which were noted by letters in the said specification must form part of his alleged invention, or the same would be incomplete. 15. That many directions were inserted in such specification which were altogether useless, and only tended to mislead. 16. That the alleged invention was not an improvement, and ought not to be the subject of a patent. 17. That should the said alleged invention, or any part thereof, be an improvement, the same was not of sufficient consequence to be the subject of a patent. 18. That a certain part or parts of the said alleged invention had been, before the date of the said letters patent, combined and in common use, both severally and together. 19. That the description of certain parts of the said alleged improvement, as set forth in the said specification, and the description thereof as set forth in the plans thereto annexed, were at variance with each other, and did not correspond. 20. The defendant would further show all such objections to the said patent and the specification mentioned in the declaration, as should be considered by the court to be admissible under the pleas, and whereof the pleas themselves were sufficient notice (a).
The plaintiff objecting to these particulars as too general, and as giving no more information than the pleas, obtained a judge's order for further and better particulars ; which order
Wightman obtained a rule nisi to rescind, contending that to require particulars more specific would be to compel the defendant to disclose the whole of his case; and that the legislature, in passing the statute 5 & 6 W. 4, c. 83, s. 5, which directs these particulars to be furnished, never intended to proceed to such an extent.
Wilde, Sergt. and Hoggins, who showed cause, argued that these particulars, giving no explanation of the defendant's objection to the patent, were an evasion of the statute. The statute meant that the particulars should at least afford more information than the plea; and the defendant ought to specify what parts of the invention were, as he alleged, useless and unnecessary; which of the improvements had been used before, and where; Bulnois v. Mackenzie (6). A mere literal compliance with the statute was not sufficient; the compliance must be in a spirit of apprising the opposite party what was the real objection meant to be relied on, as in notices under statutes for the protection of magistrates, commissioners, dock companies, and the
(a) The above twenty particulars are extremely vague, furnishing no information as to the real objections on which it was intended to rely. The amended particulars, delivered in pursuance of the judge's order, stated with great minuteness of detail the particular parts of the invention, as de.
scribed in the specification, alleged to be old or useless; the name and address of the parties said to have used the parts alleged to be old; and the kind of machines to which the said improvements were alleged to be inapplicable.
(h) Ante, 260.