Parke, B., to the jury.

to the title.

tion is to be

which appears to me, if you believe the witnesses, not to apply to the present case; therefore, probably you will have no difficulty in disposing of the second and third pleas.

But now comes the important plea in the case, as to the specification. And it will be necessary for me to draw your attention to that specification, and then apply the evidence to it; and first of all I will say a word upon the subject of the title to the patent, which objection the Attorney General has taken to-day, and which appears to be included in the objections which have been read, though not very distinctly pointed out in those objections (1). It is said that the title of the patent renders the patent void, because no one would conclude from that title that the invention was the discovery of a process for introducing hot air into the furnace. The title to the patent is, a patent for the improved application of air to produce heat in fires, forges, and furnaces. In my judgment, this question does not arise either for your decision or for mine, if there be any objection upon it; No plea directed and I rather apprehend it is an objection on the record, there being no pleas especially directed to the objection of the title to the patent. However, my present opinion certainly is very strong, that the title to the patent is not defective; that it is capable of embracing an alteration by introducing hot air. It The specifica- will suit either one or the other, and the specification and patent together make it clear what the discovery was it was the introduction of hot air by means of heating it before it was introduced into the furnace, between the blowing apparatus and the furnace; and unless this title had been really meant to be applied to some other discovery quite of a different nature, and afterwards by the specification applied to this, it does not appear to me that that generality of the title of the patent would make it void. It is quite different from the case (m) which has been referred to, where the patent was for preparing malt; and upon looking at the specification (as any body would infer from the title that it was malt to be used in the brewing of beer, ale, or porter)-upon looking at the specification itself, it was not in truth a preparation of malt for the purpose of brewing, but a preparation of malt for the purpose of colouring; and therefore entirely distinct from the title of the patent. Upon that ground that patent was held to be void. But in this case the description seems to me to suit the subject which is detailed, to the extent that it is detailed in the specification, and to be applicable to that; and there is no evidence in the case to induce you to believe that that was not the plaintiff's real discovery, which he meant to cover by the patent. Therefore, it seems to me

taken in con

nexion with the letters patent in determining the validity of the

title.

Generality of

title per se no
defect,
if employed
honestly.

(1) The notice of objections states, that it is doubtful whether the title is for the invention

of the application of hot air, or only an improved mode of applying hot air. Ante 296.

(m) The King v. Wheeler. 2 B. & Ald., 349.

that, whether this question arises upon the record, or whether it A. D. 1841. is one that can be disposed of by us (I think it arises on the record), that objection I think cannot prevail.

tween the blow

We now come to the specification (the learned judge then read the specification). The questions arising upon it are some of them for my decision alone, and some for my decision with your assistance. Now my impression of the meaning of this The claim in the specification specification is, that the patentee claims this invention; he is for heating air claims the discovery of heating air in any vessel of any size, in any vessel beprovided it is a close vessel, and exposed to heat between the ing apparatus blowing apparatus and the furnace. He states the size of the and the furnace. vessel and the form of the vessel to be immaterial (n). Now with respect to that clause, I own my strong opinion is, that that clause is an incorrect statement, and an untrue one; and therefore my opinion certainly is, as at present advised, that that being clearly untrue vitiates this specification, and prevents the patent from being a good patent. Nevertheless, I shall ask your opinion, whether notwithstanding the introduction of that clause into the specification, such persons as would be likely to work under the patent would, by their own judgment and good sense, correct that error in the patent. I am afraid you cannot allow the experience of competent workmen, to which I shall direct your attention afterwards, to explain or alter the precise words of the specification, or to correct the mistake in it; therefore, certainly, my judgment would be, that that is a defect in the specification which is not cured; but whether it may be cured or not by the application of science, which is proper to be taken into consideration upon questions of this kind, is a matter which will be disposed of by the court hereafter. My present impression is, that it is not; and therefore, that the present specification is invalid. However, it will be necessary for you to pronounce your opinion upon other questions which arise upon the specification, which questions I will put to you. Now, then, understanding the meaning of this specification to be the sense I have given to it, that he claims as his invention a mode of heating the blast between the blowing apparatus and the furnace, in a vessel exposed to the fire, and kept to a red heat, or nearly (and which description I think sufficient), of the size of a cubic foot for a smith's forge, or the other size mentioned, or of any shape, these questions will arise for your decision. It is said that, understanding it in that sense, the patent is void, because there are no directions given for any mode of constructing the instrument. But understanding the patent in that sense, it seems to me, that if you should be of opinion that a person of competent skill (and I will explain to

(*) The words are," the form or shape of the vessel or receptacle is immaterial to the effect." Ante 273.

jury.

sary that any

a person of competent knowledge would

construct a ves

sel productive of some good effect.

beneficial effect

immaterial.

Parke, B., to the you what I mean by that) would nevertheless construct such a vessel as would be productive of some useful and beneficial It is not neces- purpose in the working of iron, that the patent nevertheless is good, though no particular form of vessel is given. Then it is particular form of vessel should to be recollected that this claim is a patent right,—a right of be described, if heating in any description of vessel; and in order to maintain that right, it is essential that the heating in any description of vessel, either the common form, the smith's forge, the cupola, or the blast furnace, that it should be beneficial in any shape you may choose for all those three purposes. Now, then, I think, therefore, that this is correctly described in the patent; and if any man of common understanding, and ordinary skill and knowledge of the subject, and I should say in this case that the subject is the construction of the blowing apparatus; such a person as that is the person you would most naturally apply to in order to make an alteration of this kind; if you are of opinion on the evidence, that such a person as that, of ordinary skill and knowledge of the subject (that is, the construction of the old blowing apparatus), would be able to The amount of construct, according to the specification alone, such an apparatus as would be an improvement, that is, would be productive practically of some beneficial result, no matter how great, provided it is sufficient to make it worth while (the expense being taken into consideration) to adapt such an apparatus to the ordinary machinery in all cases of forges, cupolas, and furnaces, where the blast is used; in that case, I think the specification sufficiently describes the invention, leaving out the other objection (to which I need not any further direct your attention), that there is not merely a defective statement in the specification, unless those conditions were complied with, but there is a wrong statement. But leaving out the wrong statement for the present, and supposing that it was not introduced, then if, in your opinion, such a person as I have described-a man of ordinary and competent skill-would erect a machine which would be beneficial in all those cases, and be worth while to erect; in that case it seems to me that this specification is good, and the patent, so far as relates to this objection, will be By competent good. It is to be a person only of ordinary skill and ordinary skill and know- knowledge. You are not to ask yourselves the question, wheordinary skill ther persons of great skill-a first-rate engineer, or a second class and knowledge, engineer, as described by Mr. Farey-whether they would do it; because generally those persons are men of great science and philosophical knowledge, and they would upon a mere hint in the specification probably invent a machine which should answer the purpose extremely well; but that is not the description of persons to whom this specification may be supposed to be addressed-it is supposed to be addressed to a practical workman, who brings the ordinary degree of knowledge and

ledge, is meant

as that possessed by practical workmen.

the ordinary degree of capacity to the subject; and if such a A.D. 1841. person would construct an apparatus that would answer some beneficial purpose, whatever its shape was, according to the terms of this specification, then I think that this specification is good, and the patent may be supported so far as relates to that.

At first sight it would appear, that the patentee had supposed that, in order to adapt what would answer in the case of a common forge, and would answer in the case of a cupola, to a larger description of furnace, it was only necessary to increase the size and dimensions of the vessel. It would at first appear to be so, but there are qualifying terms introduced into the specification itself, because it is said they are to be varied according to the blast and the heat necessary to be produced; and then, if you are of opinion that such a person as I have already described would make an alteration and qualify the patent in such a way, because here there is a qualification in the patent itself, so as to make the vessels applicable to the smelting furnace, as well as they are applicable to a common iron forge or a cupola; in that case, also, I think the specification will be good, and you are to say whether you are satisfied that that would be the case upon the evidence which has been adduced in the cause. It will be necessary, therefore, for me to draw your attention to that evidence. I do not propose to read the whole over to you, but the main points of that evidence; and with reference to the question, whether or no you think the specification could have been worked upon to a beneficial effect, so as that a vessel of any size would answer, according to the opinions of some of the gentlemen who have been called, there is no difficulty as to constructing a vessel of a particular shape; there is no doubt that a man of very little capacity or information on this subject would, according to the terms of the patent alone, construct a vessel-we will say a long box or a tubethere is no great science required to do that according to the terms of the specification; and if upon the evidence you are of opinion that that would answer a beneficial purpose, so as to make it worth while to introduce that alteration into the blowing apparatus, that is, that the saving in fuel and the advantages to be derived would compensate the additional expense-if that be the case, then there is no doubt that the patent is good so far as it relates to this. You will have to say, whether you think upon the evidence that is the fact.

Now, with reference to that part of the case, I may observe, that I believe you will find there is no person who has practically tried the cube or the oblong square without some addition to it. It appears that Mr. Neilson, when he was employed before the specification was taken out, at the Calder Iron Works, supplied them, not with a square box, but with a cylinder; first

sary that the

vessel described should have

been actually

tried and proved

that it would

sufficient.

Parke, B., to the of all with partitions, and afterwards without, about which I jury. will say a word by and by; but there is no evidence in the case It is not neces of any person having actually tried a square box, and of a square box actually answering. There is this opinion of a man of science upon the subject-that it would answer; but there is no evidence that that square box has been tried and has answered; to answer; the nevertheless you may be so well satisfied with the opinion of evidence of sci- these men of science as to entertain no doubt that it would entific persons, answer. There was, it appears by Mr. Russell's evidence, at answer, may be Wednesbury, something that looked like a square box; but upon looking at that there were other conditions; it was not a square, but a square with a hole in the centre of it to admit the flame, so that it did not exactly answer the description of a square box, and a larger surface was exposed to the flame there than would have been in the square box or oblong square. You will say whether you are satisfied of that. The square box seems to be the most simple, and seems to be also the most objectionable form that could be used; for one gentleman has said, that no person would think of introducing it—perhaps it might require some science to discover that; but supposing you are of opinion that a square box would answer a beneficial purpose, and that it was a description of apparatus which could be made pursuant to this general description of evidence, and would really answer, then I think there can be no doubt that the specification would be good.

Before, however, I draw your attention to what the witnesses have spoken in detail, as to the mode of operating under the specification, it may be as well that I should call your attention to one other objection which is raised; and that is with respect to a question which arises from an answer given by one of the first gentlemen who were called, who gave it as his opinion, that in order to adapt the hot air blast process to the furnace, it was necessary to introduce a different description of twire. You will find that some of the witnesses gave it as their opinion, in the early part of the case, that this apparatus could not be usefully employed unless there was an alteration of the common twire, and some other was substituted. It appears that in the ordinary mode of supplying the furnace with the cold blast, these twires, being metallic cases of the holes in which the pipes are introduced to supply the blast, are by the great action of the heat burned or melted, and it becomes frequently necessary to renew them. But it is agreed on all hands that the introducing hot air, especially at a temperature of 600 degrees, at a place where the heat is very great, would have a great tendency to melt those twires much more than if the hot air was not continually going through them; and according to the opinion of two of the gentlemen who were called on the part of the plaintiffs, they say that the process could not be beneficially