Other affidavits set forth the number of parties who were A.D. 1840. paying license money. For the defendants, the affidavit of Mr. Thompson stated his partnership in the Pendarran Works; that in 1838 they began to erect the necessary works for heating one blast furnace with hot air, and in 1839 for a second; that Neilson's mode, as described in the specification, was a failure, and that a different mode was adopted by most of the iron masters in Scotland. That use of hot air in blast furnaces was known before the date of the patent, and used by Botfield and others; that the patent is disputed in Scotland, and that those persons who had taken licenses from the patentee had been greatly hampered thereby; that he received information from Scotland, that Neilson's invention had been used by a smith for eight fires twenty years ago. The affidavit then described the mode used by defendants, and stated it to be substantially different from that described by Neilson. 24th Dec., 1840. Knight Bruce, Jacob, and Campbell, having been heard for the injunction; Wigram, Richards, and Roupell, against it shown. Sir L. SHADWELL, V.C.: It seems to me, on these affidavits, that it is sufficiently made out that there has been a use of the patent in this sense, that the right of the patentee to the benefit of the patent has been submitted to where there has been a contest, and it does not at all appear to me that the general way in which the defendants on their affidavit state the mode by means of which the plaintiffs succeeded in establishing the patent, is at all an answer to the two cases which are stated in Mr. Blunt's affidavit. Then I have the Enjoyment for case of a patent having been obtained in the year 1828, and 12 years a prima facie case for an actually enjoyed by the patentee for upwards of twelve years. injunction, if an Prima facie, I apprehend that gives a right to the patentee to infringement be come into court in a case in which he can show an infringement; and the question is, has there been an infringement? Now, I do not mean to give any opinion upon the validity of the patent in the abstract; but it is plain to me, upon the specification, and upon the patent as stated in the plaintiffs' affidavits, that the patent is taken out for the invention of the application of hot air to furnaces; but inasmuch as the terms of the patent required that there should be a specification of what the invention was, and of the manner in which it was used, thereby the consequence follows that the specification commenced in these words,-I hereby declare, that the nature of my said invention for the improved application of air to produce heat in fires and forges, and so on, and the manner in which the same is to be performed, is particularly described,—and then he goes on to state what it is, and the thing seems simple enough. The invention, as I understand it, is the invention of driving hot air on the furnace. Now I have attended to the statement which is made in the defendants' affidavit, and I must say that it really does appear to me that their affidavit does represent that what they are doing is the thing which the plaintiffs claim as their invention. I am not now entering into the question whose invention it was, but substantially it appears to me that that which is claimed by the defendants is the thing which is in a general, simple, inartificial manner, disclosed by the plaintiff's specification, and although there seems to be a vast deal of improvement, according to what the defendants represent, in the mode in which they apply the air, with respect to the mode of bringing it into the furnace, and with respect to communicating the greater heat to it than it otherwise would have, according to the simple mode contained in the plaintiff's specification, my present opinion is, that their affidavit does amount to an admission that there has been an infringement; at least, quite enough for this court to act upon in this way, namely, that I think the court ought to grant the injunction, but put the plaintiffs on the terms of trying the question by bringing an action, which I think they are bound to do. Neilson and Others v. Harford and Others. v. Fothergill and Thompson. v. Homfray and Thompson. The principal facts of these three cases being nearly the same as in the preceding, the parties agreed that the same order should be made in all four cases. The circumstances peculiar to the second case will be seen in the report of the appeal before the Lord Chancellor. The order in the principal case was made on the Order accordingly. 24th of December, the day before the Christmas vacation, and the Lord Chancellor, under the peculiar circumstances of the case, that the defendants would be obliged to put out their blast furnaces, consented to hear the appeal on the 26th; but the case stood over, it being arranged between the parties, that the defendants undertaking to keep an account, the injunction should not be put in force until the appeal had been heard. Motion to dissolve injunction. NEILSON & OTHERS V. THOMPSON & FORMAN. Cor. Lord Cottenham, L.C. 21st Jan. 1841. This was an appeal to discharge the order of the Vice Chancellor. Several additional affidavits were filed on both sides. On the part of the defendants, stating that the apparatus made according to Neilson's directions did not succeed; that various experiments were made, and all the attempts before the syphon or arch pipes were not only unsuccessful, but injurious. That a person named Condie was the inventor of the present apparatus, now used so successfully. That the invention of Neilson is substantially the same as the prior one of Botfield, both in principle and apparatus, and both totally useless. That the H.T., 1841. apparatus of pipes in use is altogether different from any thing described by Neilson, both in principle and construction. That many parts of Neilson's specification are false, and calculated to mislead. That defendants applied the hot air to one furnace in November, 1838, and to another in November, 1839, and that the cost for each furnace of the requisite apparatus is £750. On the part of the plaintiffs, were affidavits by Neilson, stating his belief that he was the true and first inventor (b) of that for which the letters patent were granted, and which was described and claimed in the specification, and that air artificially heated while in current or blast had not been openly or publicly used prior to the date of the patent. That the invention was highly beneficial, and used by many iron masters under licenses. That no compromise ever took place on his part with any party except on the terms of paying one shilling per ton. It was stated in other affidavits, that thirteen parties in Scotland and fifty-eight in England had taken licenses; that the inventions of Botfield and Neilson were totally and essentially distinct; the former being mechanical, or a method of creating a blast, by which the air was necessarily rendered unfit to support combustion-the latter being chemical (c). Wigram, Richards, and Roupell, moved to discharge the order of the Vice Chancellor. tion. The utmost that the plaintiffs can ask, under the circumstances Argument to dissolve the injuncof this case, on the ground of the length of time which the patent has been in existence, is for an account, and this the defendants have always been ready to keep. The patentee does not in this case make his profit by selling the article, but by granting licenses to iron masters to use his patent on paying one shilling per ton on all the iron made. The defendants, until the validity of the patent was tried, ought not to be compelled either to pay the one shilling per ton, or to take a license, experience having shown that those persons who were so incautious as to pay one shilling per ton, or to take a license, were very much hampered in case of the patent being disputed. The action at law will be tried as soon as possible, but the defendants ought not in the mean time to have any other terms imposed than the keeping the account, and the undertaking to pay one shilling per ton in the event of the title to the patent being established, because the apparatus described by the specification did not come the (6) As to the omission of this allegation on the application for the motion, ante n. a, p. 276. (c) The peculiar nature of the invention, its utility, and a great variety of statements respecting the specification, and other matters, were set forth in other affidavits, but it is not necessary here to advert to them. The form of license granted by Neilson was verified; it contained the usual clauses, with proviso for rendering it void in case of rent in arrear. See Law and Practice, Pr. F., XIX. solve the injunccion. Argument to dis- into use at all, but an apparatus essentially different came into use some years afterwards. If an injunction be granted in the mean time, and the patentee fail in establishing his title, the defendants will lose all the expense which they have been at in preparing the furnaces, whereas, if he succeed, the plaintiffs will be paid eventually. It appears from the bill and the affidavits, that there was acquiescence for more than a year before the bill was filed; no agreement is stated, but simply acquiescence, in expectation that the defendants would pay on finding it answer. Supposing the patent good, there was no ground for a court of equity granting an injunction as the case stood upon the bill, namely, upon the expectation that a license would be taken. The case of a person making a patent article and selling that article is totally different from the present case, in which the profits arise entirely from the granting of licenses. In the former case irreparable mischief may be done, the party losing the benefit of the sale, and being liable to be prejudiced in his credit from the articles being of an inferior quality, so that the court may not be in a position to do complete justice to the patentee; but in the present case no injury can be done by requiring the patentee to establish his patent, an account being kept in the mean time, there being no doubt as to the abilities of the parties to pay. An expense of more than £5000 has been incurred by the plaintiffs' acquiescence in the erection of the works, and in cases of acquiescence the court will say keep an account, and the parties will be interested in trying the question at law with despatch. The extraordinary relief of an injunction will not be granted to a patentee unless he states distinctly what he claims, whether for a principle or a method; if the specification be obscure in this respect, the court will not interfere until the question has been decided at law. The specification mentions two things, the use of hot air for smelting, and the apparatus; in respect of both the patent is bad. The use of hot air in furnaces was known to others, and Botfield's patent was taken out for the express purpose of applying hot air; so that the application of heated air to a furnace was certainly known at the time of Neilson's patent, the only difference being, that Neilson calls that a receptacle which Botfield calls an oven (d). But sup (d) See ante, 274, n. The objects of these two inventors, or the ends to be attained by the inventions, are clearly distinct. That air had been applied in a heated, as well as in its natural atmospheric state, to different kinds of fires and furnaces, under certain circumstances and conditions, before the date of Neilson's patent, is undeniable; but no practical success had attended the application; and the ends proposed, and nature of the inventions, are quite distinct from Neilson's. The real question would appear to be, what is the principle of the invention as disclosed in and by the specification for to suppose that the doing or using a thing with one object, will deprive the doing or using the same thing with a different object, of the character of an invention, is unreasonable. The omission of one of several processes, or a posing Neilson's patent to be for an apparatus distinct from H. T., 1841. that described by Botfield, then the whole evidence shows the apparatus to have been a complete failure and perfectly useless. In fact, the apparatus used by defendants and other iron masters is something totally separate and distinct. Under these circumstances, the length of enjoyment will not aid the plaintiff, since he never was a patentee within the sense and meaning which he ought to be as a plaintiff in this court. His right to possession is shaken, and whatever the number of licenses granted makes no difference. These may have been taken in ignorance of there being any other patent in existence. The order of the Vice Chancellor is incorrect, on the ground of the time which the defendants are alleged to have used the invention. It is quite clear, that if a party who represents himself to be a patentee permits an individual to go on for a certain time using that which he alleges to be his patent, without coming to the court, the court will not give the patentee an injunction at once, but will direct him to enforce his right at law. The parties in this case are found with notice in 1839-the bill is not filed till December, 1840; they have not therefore used that due diligence which the court requires, or which entitles them to ask for an injunction, especially when no benefit can accrue to the plaintiff, and irreparable detriment must be occasioned to the defendants. Knight Bruce, Jacob, and Campbell, for the plaintiffs, in Argument to support of the order of the Vice Chancellor. continue injunc The questions raised are, the validity of the patent; that if valid, it has not been infringed; that if valid and infringed, the plaintiffs have so conducted themselves as not to be entitled to an injunction. The Vice Chancellor was of opinion, that there was an infringement, that the age of the patent and the enjoyment there had been under it precluded him, according to the course of the court, from acting on any notion that it was invalid; nor did he intimate any opinion respecting the validity, his expression being, that it was within the principle laid down by Lord Eldon (e). The enjoyment which there has been under the patent, and the circumstances under which the present defendants have tion. change in the order of a series of processes, may Hare v. Harford and Taylor. The plaintiff had a patent for an improved brewing apparatus, whereby the essential oil of bops was preserved. It appeared that the same thing had been, in fact, effected before by another apparatus, but that object formed no part of the prior invention, as expressed in the specification. The defendants had a verdict; but see report of case, post 291. Its authority has been doubted, and cannot be relied on. See per Lord Denmun, C. J., in Minter v. Mower, ante 140. See also ante, 156, n. c. (e) In Harmar v. Playne, 14 Ves. Jun. 130. See also Boulton & Watt v. Bull, 3 Ves. Jun. 140. and Bickford v. Skewes, ante 213. |