jury, without hearing the summing up, found a verdict for the defendants. 3 Rep. Arts, 2nd Series, 232.

Taylor v. Hare. [1 N. R., 260.]

The plaintiff was the surviving partner of the defendant Harford in the above case, and this was an action for money had and received, which came on to be tried before the Lord Chief Justice at the sittings after last Hilary term, when a verdict was found for the plaintiff for 4251., subject to the opinion of the court on the following case :--

On the 12th of September, 1791, the defendant took out a patent for the invention of an apparatus for preserving the essential oil of hops in brewing. By articles of agreement, dated 5th of November, 1792 (which were set out at length at the end of the case), and made between the defendant of the one part, and the plaintiff and his said late partner of the other part, reciting the defendant's patent, and that it gave him the sole power, privilege, and authority of using, exercising, and vending his said invention for the term of fourteen years, the defendant granted to the plaintiff and his said late partner the privilege of making, using, and exercising the said invention for the residue of the said term of fourteen years; and in consideration thereof, the plaintiff and his partner covenanted that they would secure to be paid to the defendant, during the said term, an annuity of 1007., and would give their bond for that purpose, and a bond was accordingly given, conditioned for the payment of the said annuity. The plaintiff and his said late partner used the apparatus (for the making and preparing of which they paid a distinct price) from the date of the said agreement until the 25th day of March, 1797, and during all that time regularly paid the said annuity to the said defendant. The defendant was not the inventor of the invention for which he obtained his patent. The invention was not new as to the public use and exercise thereof in England, but it was the invention of one Thomas Sutton Wood, and had been publicly used in England by the said Wood and others, before the defendant obtained his patent. But the patent had never been repealed. The amount of the annuity that they had paid was 4251. If the court should be of opinion that the plaintiff was entitled to recover back the money that was paid on the bond, the verdict was to stand. If the court should be of a contrary opinion, a nonsuit was to be entered.

Bayley, Serjt., for the plaintiff: To support the present action, it is not necessary to prove that any imposition has been practised. If it appear that the plaintiff has received nothing in return for the money that he has paid, he is entitled to recover back his money in this form of action. He was induced to pay his money upon the supposition that the defendant had the power of communicating some privilege. But as it now appears that the defendant's invention was not new, and that the patent was therefore void, the consideration upon which the plaintiff paid his money has wholly failed, and the plaintiff has derived no benefit whatever. Where an estate is conveyed, the vendor professes to convey nothing but his title to that estate. But here the thing itself, which was the subject of the agreement, had no existence. It was the understanding of all parties that the defendant was

entitled to a patent right; but it now turns out that they were mistaken; the plaintiff therefore is entitled to recover the money which he has paid under a mistake. He had a right to make use of the invention without paying any thing for it. The defendant has no right to the annuity, and indeed he has already failed in an action on the bond, in which the validity of the patent was put in issue.

Sir James Mansfield, C.J. (stopping Cockell, Serj., for the defendant): It is not pretended that any action like the present has ever been known. In this case two persons equally innocent make a bargain about the use of a patent, the defendant supposing himself to be in possession of a valuable patent right, and the plaintiff supposing the same thing. Under these circumstances, the latter agrees to pay the former for the use of the invention, and he has the use of it non constat what advantage he made of it; for any thing that appears, he may have made considerable profit. These persons may be considered in some measure as partners in the benefit of this invention. In consideration of a certain sum of money, the defendant permits the plaintiff to make use of this invention, which he would never have thought of using had not the privilege been transferred to him. How then can we say that the plaintiff ought to recover back all that he has paid? I think that there must be judgment for the defendant.

Heath, J. There never has been a case, and there never will be, in which a plaintiff having received benefit from a thing which has afterwards been recovered from him, has been allowed to maintain an action for the consideration originally paid. We cannot take an account here of the profits. It might as well be said that if a man lease land, and the lessee pay rent, and afterwards be evicted, that he shall recover back the rent though he has taken the fruits of the land.

Rooke, J. I am of the same opinion.

Chambre, J.: The plaintiff has had the enjoyment of what he stipulated for, and in this action the court ought not to interfere, unless there be something er æquo et hono which shows that the defendant ought to refund. Here both parties have been mistaken: the defendant has thrown away his money in obtaining a patent for his own invention; not so the plaintiff, for he has had the use of another person's invention for his money. In the case of Arkwright's patent, which was not overturned till very near the period at which it would have expired, very large sums of money had been paid; and though something certainly was paid for the use of the machines, yet the main part was paid for the privilege of using the patent right, but no money ever was recovered back which had been paid for the use of that patent. I am therefore of opinion that judgment of nonsuit should be entered.

Judgment of nonsuit, Bowman v. Taylor and others,

[2 Ad. & E., 278.]

This was an action of covenant, and the declaration stated that by indenture of the 10th of May, 1824, between, &c., after reciting that the plaintiff had invented certain improvements in the construction of looms for weaving, and had obtained letters patent for the same, and that the plaintiff had particularly described and ascer tained the nature of the invention by an in

strument in writing, and caused the same to be enrolled, and that the plaintiff had agreed with the defendants to permit them to use the said invention for the considerations therein mentioned, the plaintiff covenanted to permit the use of the said invention, and the defendants covenanted for payment, &c. The declaration then averred enjoyment of the invention, and assigned as breach non-payment and non-fulfilment of other cove

nants.

The defendants pleaded, 1. Setting out part of the letters patent, and the proviso as to want of novelty, and averred that the said supposed invention in the declaration and letters patent mentioned was not a new invention. 2. That the plaintiff was not nor is the true or first inventor of the said improvements. 3. That the plaintiff had not caused an instrument in writing to be enrolled particularly describing the nature of the said invention.

General demurrer to these pleas and joinder. November 21, 1834. For the plaintiff, in support of the demurrer, it was contended that the defendants were estopped from alleging the matter stated in the pleas; the recital in the indenture, as stated in the declaration, admits that the plaintiff invented the improvements for which the letters patent were granted; the defendants cannot then deny, as is attempted by the pleas, that the invention was new, or that the plaintiff was the inventor. The recital, taking the word invented in the popular acceptation, is directly contradictory to the pleas, and if the sense now assigned by the plaintiff is that in which the parties to the indenture meant to use it, the estoppel is completely raised. On the third plea no doubt can arise, the words of the recital and of the plea being expressly contradictory to each other.

On the part of the defendants, it was contended that the word invented did not necessarily imply that the party was the first inventor, and of a new invention; he might have made the invention fifty years ago, and suffered it to be used by so many persons, since that the license to use it now was of no benefit to the defendant; in that case the plaintiff would be the inventor, and yet the defendant would not be estopped from saying the invention was not new. That an estoppel being strictissimi juris, will not be held to attach upon any statement which can by possibility be consistent with that of the deed, and nothing is to be taken in favour of an estoppel by inference or argument.

Lord Denman, C.J.: The plaintiff contends that these pleas are bad, because the defendant is estopped by his deed from pleading them. It is answered as to the first plea, that it is not inconsistent with the deed; but we think it is so, and if not, that it is no defence. If by saying that the supposed invention is not new, it is only meant that it was discovered by the plaintiff fifty years ago, that is no reason that he should not now have taken out a patent for it. So as to the second plea, that the plaintiff was not the first or true inventor: that averment either denies that he invented the contrivance, or denies that he was the sole inventor. The answer is the same as that just given; in the one case the defendant states what he is estopped from, alleging, because it eontradicts the recital of his own deed: in the other, he gives no answer to the declaration. The third plea puts a fact in issue in direct con

tradiction to the recital of the deed. The doctrine of estoppel has been guarded with great strictness; not because the party enforcing it necessarily wishes to exclude the truth, for it is rather to be supposed that that is true which the opposite party has already recited under his hand and seal; but because the estoppel may exclude the truth. However, it is right that the construction of that which is to create an estoppel should be very strict. As to the doctrine laid down in Co. Litt. 352 b, that a recital doth not conclude, because it is no direct affirmation, the authority of Lord Coke is a very great one; but still, if a party has by his deed recited a specific fact, though introduced by "whereas," it seems to me impossible to say that he shall not be bound by his own assertion so made under seal. This point was much considered in Lainson, executor of Griffiths, v. Tremere (1 Ad. & E. 792; 3 N. & M. 603). There could have been no case in which the court would have been more strongly inclined to struggle against the doctrine of estoppel than that. The action was upon a bond. The condition, set out on oyer, recited that, by indenture of lease between the plaintiff's testator and the defendant, the testator demised premises to the defendant at the yearly rent of 1701.; and the condition was, payment to the testator of that sum. The defendant pleaded, that the lease in the condition mentioned was a lease the reddendum of which was 1401. only, and that that sum had always been paid; to which the plaintiff replied, that the yearly sum of 170l. had not been paid. On demurrer it was held, that the defendant was estopped from pleading a lease at 1401., which was in effect the same as saying that there was no lease at 170l. as mentioned in the bond. This was as strong a case as can be conceived; and the averment creating the estoppel was introduced by way of recital: yet this court, upon the greatest consideration of the cases ancient and modern, decided for the estoppel. I do not think it necessary, in deciding the present case, to enter into a minute examination of the authorities: they were fully considered on that occasion; and I think the case of Hayne v. Maltby has been sufficiently distinguished from that before us in the course of the argument.

Taunton, J.: The law of estoppel is not so unjust or absurd as it has been too much the custom to represent. The principle is, that where a man has entered into a solemn engagement by deed under his hand and seal as to cer tain facts, he shall not be permitted to deny any matter which he has so asserted. The question here is, whether there is a matter so asserted by the defendant under his hand and seal, that he shall not be permitted to deny it in, pleading. It is said that the allegation in the deed is made by way of recital, but I do not see that a statement such as this is the less positive because it is introduced by a "whereas." Then the defendant has pleaded that the supposed invention, in the declaration and letters patent mentioned, was not nor is a new invention. These words "was not nor is a new invention," must be understood in the same sense as the words "had invented" in the recital of the deed set out in the declaration, and must refer to the time of granting the patent; and if the invention could not then be termed a new invention, it could not, I think, have been truly said in the deed that the plaintiff “had invented” the improvements, in the sense in which

the deed uses the words. Then the plea directly negatives the deed, and comes within the rule that a party shall not deny what he has asserted by his solemn instrument under hand and seal. As to the case of Hayne v. Maltby, I acknowledge, with unfeigned respect, that it does not become me to criticise the opinions of judges so great and eminent as those who sat here when that case was decided; but it is not necessary to examine into the grounds of the judgments there delivered, because I think Mr. Tomlinson has distinguished that case from the present. Here there is an express averment in the deed, that the plaintiff is the inventor of the improvements: there the articles of agreement averred nothing as to the originality of the invention, but merely stated that the plaintiffs were the assignees of the patent, which they might have been though the assigner was not the original inventor. And, besides, though I do not rely much upon that, the judges there differed in the reasons which they assigned for their judgments. It is sufficient, however, to say, without derogating from the authority of those learned judges, that that case is very distinguishable from the present. I am of opinion that the demurrers here are well grounded, and the plaintiff entitled to judgment.

Patteson, J. The third plea distinctly raises the question of estoppel: the first and second not so directly. The declaration sets out a recital in the deed between these parties; and it is necessary to consider the meaning of the words there used. It is said that in the case of an estoppel nothing is to be taken by way of intendment. But before we come to the question of estoppel, we must examine the construction of the deed. The

words are, "that the plaintiff had invented certain improvements," and had obtained his majesty's letters patent for the sole use of the said invention. This recital can only mean that he had invented new machinery, for which he had obtained the patent. If it meant that he was not the first inventor, it would be absurd. That being so, the pleas are, first, that the invention is not new; secondly, that the plaintiff is not the first inventor. Then, if those assertions are used in the same sense as the words "had invented" in the deed, they contain a direct denial of the matter there recited; if not used in the same sense, they are no answer to the declaration. The only authority cited for the proposition, that no estoppel can be by recital, is that from Co. Litt. 352 b. It is not denied, however, that there has been many cases in which matter of recital has been held to estop; but then it is said that the recital in those cases has been inseparably mixed with the operative parts of the deed. But, if that be a test, the case is so here. The deed recites that the plaintiff has invented improvements, and obtained a patent for the invention, and then it proceeds to a demise of the very subject-matter for which the patent is so granted. I cannot separate these things, and I therefore think the recital here comes within the description which Mr. Wightman has given of the law laid down by the old cases. The passage in Lord Coke must be taken with some little qualification; and Lainson v. Tremere is a direct authority to show that there may be an estoppel by matter of recital. In Hayne v. Maltby, the recital contained no assertion of right in the plaintiffs except as assignees; and the plea did not deny that. The case was not properly one of estoppel.

How far the principle of eviction was applicable, it is not now material to consider. In Oldham v. Langmead, there cited, where the action was brought by the assignee of the patentee against the patentee, Lord Kenyon would not allow the latter to show that the invention was not a new one against his own deed. As estoppels are mutual, that is a strong authority to show that the assignee, if he had by deed admitted the invention to be new, would have been estopped from pleading the contrary. And the current of authorities, and particularly the late case of Lainson v. Tremere, show that there may be an estoppel by recital in a deed. The plaintiff is entitled to judgment.

Williams, J.: I am of the same opinion. A passage has been cited from Lord Coke, in which he says that an estoppel must be certain, and not be taken by argument or inference. But to give the words of this recital the sense ascribed to them by the plaintiff, is no argument; it is only making use of the common understanding of a phrase in the English language. When it is said, as in this deed, that a party "had invented" an improvement, it means that he was the inventor of it so as to make that invention available under the law of patents. The words "had invented" must then, without any argument, mean that, the contrary of which is averred in the first and second pleas. The question, therefore, upon these is the same as upon the third plea, as to which there is no doubt. Then the only question is, whether a recital, not being a direct assertion, can estop the party who has made it no decision has been cited to the contrary; and this court lately determined in favour of such an estoppel in Lainson v. Tremere, where the doctrine of estoppels was carefully and fully considered, and where the estoppel in question depended as much upon a recital as that in the present case.

Judgment for the plaintiff.
Collinge v. Bowman.

November 20, 1834. This was a motion to restrain the defendant from proceeding in an action at law, or, if the court should be of opinion that the action at law should proceed, to obtain liberty for the plaintiff to give evidence of the invalidity of a patent obtained by the defendant. In 1824, the plaintiff Collinge and his partner took a license from the defendant to use certain looms with improvements, alleged to be the defendant's invention, in consideration of a sum paid immediately and certain annual rents. The license deed contained a proviso, that in case the plaintiff should furnish evidence of any person infringing the defendant's patent, he (the defendant) would bring an action or proceed by injunetion. In December, 1825, the validity of the patent was disputed, and an agreement was entered into between the plaintiff and the defendant, by which the plaintiff agreed to pay the sum of 2021., then alleged to be due in respect of the annual rents, and the defendant agreed to abandon all further claim on the plaintiff. Eight years after the date of this agreement, the defendant brought an action to recover from the plaintiff the arrears of rent then said to be due; and the court having held in a similar case, that the defendant was estopped by his license deed from denying the validity of the patent, Collinge had no remedy but the present application.