like (c). These particulars, as they stood, were calculated to mislead rather than to assist the plaintiff. Wightman, in support of the rule. Before the new rules the defendant, in cases like the present, pleaded the general issue, and the plaintiff never knew what objection would be taken to his patent. The object of this statute was to apprise him of the general nature of the objection, whether it was to the invention, or parts of it, or to the specification; but it was never intended to call on a defendant to disclose the particulars of his defence; and if the present order be sustained, applications of the same kind will be interminable. There is no instance of an order to amend notices of action; whether the notice is sufficient for the evidence which the plaintiff proposes to adduce, is always a question for a judge at nisi prius. In Bulnois v. Mackenzie, the particulars were amended to a very small extent. to limit the de prevent surprise. TINDAL, C.J.: I think this rule must be discharged. The The object of question is, whether on this particular of objections the matters the statute not alleged are so uncertain and indefinite, that they are calculated to feuce, but the mislead rather than to assist the plaintiff. The object of the sta- expense, and to tute was not, indeed, to limit the defence, but to limit the expense to the parties, and more particularly to prevent the patentee from being upset by some unexpected turn of the evidence. Under the fifth section, therefore, it was intended that the defendant should give an honest statement of the objections on which he means to rely; and I am not afraid of the prolixity which has been deprecated by the party applying for this rule, for defendants would soon find it better to go to the jury on the points on which they meant to rely, than to seek to mislead their opponents. The present particulars are so vague, that they can scarcely have been furnished with any other object. For instance, the objection, "That if any part be new the same is useless and unnecessary:"-the defendant should have pointed out what part. "That the improvements, or some of them, have been used long before:"-the defendant should have pointed out which. If he would, in the Scotch phrase, condescend upon the parts to which he objects, there would be an end of the difficulty. PARK, J. The protection of the patentee was the object of the statute, and particulars so general as these afford him no assistance. VAUGHAN, J.: The object of the statute was to limit the expense of actions, and let the patentee know what objection he had to meet. These particulars are an evasion. (c) Also under the bankrupt act, 6 G. 4, c. 16, s. 90; Trimley v. Unwin, 6 B. & C. 537; Moon v. Raphael, 7 C. & P. 115, and 2 Scott, 492; where it is held that a general notice of intention to dispute the bankruptcy is not sufficient; but with respect to the notice under the 5 & 6 W. 4, c. 83, s. 5, it is held that any objection may be taken at the trial which is within the terms of the notice. See post, in Neilson v. Harford, 332 and 352. COLTMAN, J.: I am of the same opinion. It is incumbent on the court to see that the objections are stated in a definite and intelligible form, before the parties go down to trial, that the patentee may not be taken by surprise. The defendant is not precluded from bringing forward any number of objections, but he must state with precision what they are. Rule discharged (d). Other cases. In an action for the infringement of a patent, the plaintiff will not be com of the patent ar CROFTS v. PEACH. This was an action brought against the defendant for an infringement of the plaintiff's patent for making lace by machinery. Wightman applied for an order to compel the plaintiff to propelled to produce to the defendant a specimen of the patent lace, which was duce a specimen produced by the plaintiff's machinery. The 5 & 6 W. 4, c. 83, ticles to enable was passed for the purpose of giving certain privileges to the defendant to patentees, and by section 5 the defendant is required to give the plaintiff notice of the objections on which he intends to rely at the trial of the action. It may be necessary for the defendant to prove at the trial, that the plaintiff's invention is not new, and unless he is furnished with a specimen of the lace, it prepare his de fence to the action. (d) Notice of Objections.-The effect of the two preceding decisions is somewhat different; the objections in both cases relate to the plea, that the invention is not new as to the public use and exercise thereof; the former, Bulnois v. Mackenzie, referring to the names and addresses of the parties by whom the alleged use and exercise had taken place; the latter, Fisher v. Dewick, referring principally to the parts of the invention alleged to have been so used. There is a great distinction between the two cases; and with respect to the former, the practice of the courts is not very settled, varying with the circumstances of the case; but with respect to the latter, and to the objections to the specification, the courts have required great particularity. In a recent case (Galloway v. Bleaden), Coltman, J., ordered names, addresses, and descriptions to be given, and the words "divers other persons" to be struck out. Chit. Arch. 1031; but in a subsequent case (Carpenter v. Walker), the objection stated the making of locks similar to the subject of the patent by the defendant and others, several years before the date of the letters patent, and their sale to divers persons, and among others to one S. T., of, &c. On summons to strike out the words "to divers persons, and among others," or to state the names and descriptions of the others besides S. T., to whom sales were made, the parties were referred to the court, who refused the application. In a recent case (Walton v. Bateman), Cresswell, J., intimated a very strong opinion that the notice should specify the pleas to which the objections were intended to apply. It certainly would be convenient that they should be drawn and arranged with reference to the pleas. They would thus generally be referred to three heads: 1. That the grantee was not the true and first inventor. 2. That the invention was not new as to public use and exercise. 3. That the specification does not particularly describe and ascertain the nature of the said invention, and in what manner the same is to be performed. The evidence under the first of these generally consists of the production of the specification of some prior patent, or of some well-known work containing the invention, and thus proving the patentee not to be the true and first inventor, such prior publication showing some one else to have that character. Notices of objection seldom specify these, but are drawn so as to admit them-the consequence is, that plaintiffs are taken by surprise, and fail; whereas, if they had been apprised of such sources, they would never have gone to trial. This is a class of objec tions in which the greatest particularity might be required without any prejudice to defendants, and with a great saving of expense to the plaintiffs. No case, however, has yet occurred, in which this ques tion has been before the courts. The objections under this and the next head are generally so intermixed, that unless the salutary suggestion of the above learned judge be adopted practice, the question is not likely to arise. Defendants could not be prejudiced, since the statute provides for their giving notice of any additional defence, or evidence of any kind, which may unexpectedly be discovered after the notice of objections and pleas have been delivered. See section of the statute, ante 260, n. a. will be difficult to obtain the necessary evidence. The specification was not filed until September, 1835, so that the article is not commonly known. TINDAL, C. J.: The effect of this application is to ascertain! the evidence which the plaintiff will produce at the trial. The defendant may plead that the invention is not new, if that is the fact. The specification gives the necessary information. PARK, J., VAUGHAN, J., and BOSANQUET, J., concurred. Rule refused. PERRY V. MITCHELL. In the Exchequer, M.T., 1840. will be ordered This was an action for the infringement of two letters patent, Particulars of of the 28th of January, 1832, and 19th of November, 1833, for infringements improvements in pens, and the specification set forth and de- in certain cases. scribed thirteen different pens, containing an indefinite number of slits and adjustments. The declaration assigned as breaches, the making, &c., pens and nibs, in imitation of parts of the said invention, with divers additions thereto, and subtractions therefrom. Petersdorff for the defendant, on affidavit of the above circumstances, and that inasmuch as neither the parts nor the additions or subtractions were mentioned, it would be impossible to prepare the notice of objections to be delivered with the pleas, or to know what evidence to adduce, obtained a rule calling on the plaintiff to show cause why the plaintiff should not deliver particulars in writing of the infringements on which it was intended to rely, and specify and point out the particular pens shown in the drawings annexed to the specification, in respect of which such infringements had taken place. Sir F. Pollock showed cause, and cited Crofts v. Peach (a). The Court of Exchequer made the rule absolute, and ordered the plaintiff to give particulars by the number of the pens on which infringements were alleged. The following notice was given accordingly: "The pens to which the declaration in this cause refers, and the numbers of such pens in the specifications referred to in the declaration, are as follows:-(setting forth the numbers and figures of the diagrams (b). (a) Ante 268. (b) The circumstances of the two preceding cases are very different, and it should be remarked that the applications are not in pursuance of any statute, but to the general jurisdiction of the court. 270 SUFFICIENCY OF PLEAS AND CERTIFICATE. M. Vac., 1839. To an action for the infringe GILLETT AND ANOTHER v. WILBY. [9 Car. & P. 334.] The plaintiffs in their declaration complained of an infringement of a patent ment by the defendant of a patent they had obtained for certain for certain im- improvements in a cabriolet. The pleas were, First, the genecabriolet, three ral issue; secondly, that the alleged improvements were not pleas were new; and thirdly, that the plaintiffs were not the true and first 1st, the general inventors. provements in a pleaded: issue; 2d, that the alleged im. provements were not new; The allegation in the declaration was, that the defendant unlawfully, &c., did use and put in practice one of the said description of vehicles, called cabriolets, with the said improvements, and that the cabriolet so used by the defendant did imitate and true and first in- resemble the said improvements. and 3d, that the plaintiffs were not the ventors of the improvements: Held, that on The patent and specification were put in, from which it appeared that there were five different things which the plainthis state of the tiffs claimed as their invention. pleadings it contended, that claimed must be shown to be Ball, for the defendant, was contending that the patent was illegal. M. D. Hill, for the plaintiffs, objected to this line of argument, on the ground that there was not an issue to which it could apply. COLTMAN, J.: If such a defence were intended to be relied new, yet it need on, it ought to have been specially pleaded. not be shown that the defend Ball submitted that under the statute (a) it was sufficient to ant's cabriolet have given the notice of the objection, which the defendant in was an imitation this case had done. of the whole of them, but an imitation of one was sufficient to be considered as COLTMAN, J.: That is not sufficient. Ball then contended, that the plaintiffs must show, under the maintain the ac- words of the declaration, that the defendant's cabriolet imitated tion. Also, that the validity of and resembled all the improvements. [Coltman, J.: It will be the patent might sufficient if it resembled any one. It is a divisible statement.] having come in In Morgan v. Seward it was held, that if a patent be for several question under improvements, and the jury find one of them not to be such, as to entitle the the patent is void altogether. I contend that every part must plaintiff to a be new, or it is void altogether. the 2d plea, so certificate to that effect, un COLTMAN, J., in summing up, said:-The defendant's first der the 3d sec- plea is, that he is not guilty of the infringement. The question tion of the stat. upon this will be, whether the cabriolet was used by the defendant, and whether it is an infringement of the patent right. The second plea is, that the improvements claimed are not new; and the third, that the plaintiffs were not the true and first inventors of them. On the first point the patent is put in, (a) 5 & 6 W. 4, c. 83, s. 5. See section, ante 260, n. a. from which it appears that the plaintiffs claim not only the seat M. Vac., 1839. Iehind, but the mode of entry in front, &c. It is true that the plaintiffs must make out to your satisfaction that the whole of the improvements were new, and that some of them have been pirated. It is not necessary that they should all have been used, but they must be shown to be all new, and if they are all new, and the defendant has infringed any one of them, it will be sufficient to support the action, and it is not necessary that he should have infringed them all. There are five different points in which the plaintiffs claim the invention as new, and if you are satisfied of that, then on the other point there is no evidence that they were not the first inventors, and then will come the question, whether the defendant has infringed any part of that which the plaintiff's claim as new. Verdict for the plaintiffs. M. D. Hill applied for a certificate, under the 5 & 6 W. 4, c. 83, s. 3 (b), that the validity of the patent came in question. COLTMAN, J.: I think you are entitled to the certificate. Ball objected, that he was not allowed to question the validity of the patent. COLTMAN, J.: I think that the validity of the patent has in part come in question, under the plea that the invention was. But I will look further into the subject. not new. The certificate was afterwards granted. GILLETT V. GREEN. [7 M. & W. 347.] H.T., 1841. treble the case for the Whately moved for a rule, calling upon the defendant to show An action on cause why the master should not tax the plaintiff his costs, pursuant to the statute 5 & 6 W. 4, c. 83, s. 3. (b) The following is the section: "And be it enacted, that if any action at law, or any suit in equity for an account, shall be brought in respect of any alleged infringement of such letters patent, heretofore or hereafter granted, or any scire facias to repeal such letters patent, and if a verdict shall pass for the patentee or his assigns, or if a final decree or decretal order shall be made for him or them, upon the merits of the suit, it shall be lawful for the judge before whom such action shall be tried to certify on the record, or the judge who shall make such decree or order, to give a certificate, under his hand, that the validity of the patent came in question before him, which record or cer tificate being given in evidence in any other suit or action whatever touching such patent, if a verdict shall pass, or decree or decretal order be made in favour of such patentee or his assigns, he or they shall receive treble costs in such action, to be taxed at three times the taxed costs, unless the judge making such second or other decree or infringement of This a patent, is with This section is repealed by 5 & 6 Vict. c. 97, entitled, "An act to amend the law relating to double costs, notices of action, limitation of actions, and pleas of the general issue, under certain acts of parliament." The certificate, however, will still be necessary, in order to entitle the party to the full and reasonable indemnity preserved to him by s. 2 of the last-mentioned act, which is as follows: "And be it enacted, that so much of any clause, enactment, or provision, in any public act or acts, not local or personal, whereby it is enacted or provided that either double or treble costs, or any other than the usual costs between party and party, shall or may be recovered, shall be, and the same are hereby repealed: Provided always, that instead of such costs, the party or parties heretofore entitled under such last-mentioned acts to such double, treble, or other costs, shall receive such |