most beneficial

bodied.

the proper form of vessel, and he had specified as your In the Exchequer lordship suggests, the patent clearly would have been void. E. T., 1841. [Lord Abinger, C. B.: Yes, if he had known it at the time.] Because he was bound to disclose to the public the most bene- The patentee is ficial mode he was aware of for carrying it into operation. I bound to disclose in his speshould doubt whether such a specification would be sufficient, cification the at all events it would not be untrue; it might be defective, it mode with which would not be false. [Parke, B.: I left the question to the jury, he is acquainted. whether he had improperly concealed the discovery he made that the vessel would be better with divisions in it, because he had clearly tried that before the specification. The jury were of opinion that he had not been guilty of a fraud in that respect.] There was no fraud imputed to him, it was pure ignorance. [Alderson, B.: The blowing apparatus was perfectly well known; the heating of air was perfectly well known; the twire was perfectly well known as applicable to blast furnaces; then what he really discovered is, that it would be better for you to apply air heated up to red heat, or nearly so, instead of cold air as you have hitherto done. That is the A principle, to be the subject principle; that is the real discovery; but, in order to take out of a patent, a patent, you must have an embodiment of the principle, and must be emhis embodiment of the principle is the heating of air in a separate vessel, intermediately between the blowing apparatus and the point where it enters the furnace. Then, he says—" I do not mean to claim any shape in which it is done; it may be done in a vessel of any shape, provided only you have such a vessel of such a shape, and fire so applied as that, in the intermediate space between the blowing apparatus and the furnace, the air arrives at the red heat."] And to gain that object, the size is to be always increased in proportion to the effect that you wish to gain, and the form and shape of the vessel are altogether immaterial; this is what he tells you. [Alderson, B.: Immaterial to the effect in the furnace, but not immaterial as to the mode of obtaining heated air. That is the point of my difficulty.] It being the true legal construction to be put upon it, that the effect is the degree of heat to be produced, and the jury having found that the shape of the vessel is most material as to the degree of heat that is to be produced, here is a false description which at least has a tendency to mislead. The jury have found, in answer to questions that were submitted to them, that a person skilled in the blowing apparatus, and a person skilled in the heating apparatus, would not be misled by this false statement to be found in the specification. Is it to be a cure for a false statement, in a material part of the specification, that it is so very false that persons of skill could see that it was false, and instead of going by the specification, that they would throw the specification aside, and enter on a course

Sir J. Campbell directly different from that which is recommended? A specifiagainst rule to enter verdict for cation must be a full communication of what is to be done, and the plaintiffs. how it is to be done, and it has been repeatedly laid down, that a specification which requires experiments is bad. Most of the witnesses in this case said they would make experiments as to what was the best shape. If a specification is bad without pointing out the modus operandi, if it points out a modus operandi which, if followed, would defeat the object, must it not, a fortiori, be bad? and it is not enough to say, that a skilful and scientific person would find out that there was a gross blunder. A person who is to follow a specification is not to draw on his own resources, he is to follow implicitly the directions he receives, and if those directions would mislead him the specification is bad, although a person of skill and science, canvassing it and reasoning upon it, would discover that there was a blunder, and the jury have gone so far as to say that a workman of ordinary skill would discover that it was wrong. [Parke, B.: Is there any case (the impression I had at the trial was, that there was no case) which went so far as to say that you might correct a blunder in the specification by the testimony of ordinary workmen only; that they were to read expressions that were obscure to ordinary men? Is there any case, supposing this to be a blunder, in which it has been allowed to correct that blunder by means of the testimony of men of ordinary knowledge on the subject?] We can find no such case. What then does the case turn out to be? That Mr. Neilson had a notion that hot air might be used beneficially. He supposes that the form and shape of the vessel are immaterial. It is said that some benefit will arise whatever the form or shape of the vessel may be; he either does not tell you what is the proper form of the vessel, or he misleads you entirely by saying the form and shape of the vessel are immaterial. If they are material, he has stated in an important part of the specification what is false, what will mislead a workman in carrying his specification into effect; and after that, how can it be said that he has truly ascertained and described the manner in which his invention is to be performed? On these grounds, I submit that the defendants are entitled to retain the verdict on the fourth issue.

Sir F. Pollock, against the rule: After what has fallen from the court, it is unnecessary for me to dwell on the notice of objections, or on the objection to the title, and I propose to point out what is the meaning of the specification, and the objection which arises upon it, if it be one, and then whether that be cured by any finding of the jury. An expression which fell from Mr. Baron Alderson appears to be the key of the intention of the patentee, that he confounded the heat of the

air vessel with the heat of the contained air. The directions In the Exchequer given throughout the specification do not apply to the air, but E. T. 1841. to the vessel which is to contain the air.

I entirely agree with what fell from one of your lordships, that if it had been distinctly stated in terms like these—a blowing apparatus is old, methods of heating air are as various as any other processes in the arts, and my invention consists in raising the temperature of the air to 600 degrees Fahrenheit, or thereabouts, by any process known to the scientific or to the mechanical world, and then applying the air so heated-that might have been an exceedingly good patent for aught I know. But that is not the patent which Mr. Neilson has taken out. He had never made any experiment as to what was the proper temperature; he had some vague notion that the heating of air was beneficial, without ever having reduced that notion sufficiently into practice, or made it the subject of experiment, so as to give it to the world. He appears to have made some experiments upon a small scale with smith's forges-where you would use a vessel so small that it would not present the difficulty of heating the air, on account of the surface to which the air was exposed being very considerable in comparison with the volume-and to have succeeded; and then, by a process of induction, to have come to the conclusion that the multiplication of that process on a larger scale would be attended with beneficial results, without ever attending to the important element in enlarging these vessels advantageously, that you must take care, as vessels in point of capacity increase as the cube, and in point of surface increase only as the square, you must take care to alter your shape when you come to increase the size, you must alter your shape if you enlarge your dimensions, so that the surface, which increases as the square, shall be in the same proportion to the volume, which increases as the cube, in order to produce the same effect on a large scale that you would on a small one. You will see, both from the evidence at the trial, and from the specification, that this is the true solution of the difficulty into which Mr. Neilson ultimately got when he came to specify the invention. It is never mentioned that the air is to be heated, except as a sort of general conclusion. Air is never the nominative case at all. The heating the air vessel is the only one. [Alderson, B.: It is so throughout.] I contend that the vice of the specification is, that it directs nothing but the heating of the vessel, and assumes the heating of the air as a consequence, and yet tells you that the shape and form of the vessel which is to be heated for the purpose of producing the result, are quite immaterial to the effect to be produced. I have no doubt that Mr. Neilson thought so; that the experiments he had performed, the progress he had made in this discovery, were such only as to induce him to form that opinion; he had not the

tion will not

you

Sir F. Pollock least idea of the important principles that are involved in the against the rule. extension of this discovery to larger and other matters, and therefore he gave a statement which was, so far as he was then concerned, perfectly candid; that was, as far as he knew, perfectly true; but when it comes to be applied to the larger and to the greater and more important objects, of which he had some notion, there is no doubt the information he communicated, that the shape and form are immaterial, turned out to be without foundation. Every witness was obliged to admit it was not true, and ultimately the jury found it was not true, and then we come to this-is this to be corrected by the jury saying that a workman of experience would not be misled by it? because that is after all the only point my friends can rest on as getting rid of the objection. It appears to me, looking at all the cases, that the rule laid down is something of this sort. If Every mistake you make a mistake, as by calling air an imponderable substance, in a specificawhere have described what you mean you have described vitiate a patent. air—and it is manifest from the rest of the specification, that what you mean is the atmospheric air which we breathe-it is of no importance whatever, whether you have made the blunder of calling it an imponderable substance; and the way in which that objection was put was this-that it might mislead the public to apply other imponderable substances; but as the only imponderable substances which the philosophers admit are light and electricity-[Alderson, B.: That is only a question whether it is imponderable because they cannot weigh them, or because they are not to be weighed at all.] [Rolfe, B.: So you say that a fixed star is at an immeasurable distance, because there is no means of computing it.] Your lordships are aware, that if the modern, and apparently the more correct theory concerning light be true, that it is the vibration of a medium, and not the transmission of the particles-then light can no more be weighed than sound. I believe most persons who are competent to entertain the opinion at all, are now of opinion that it is a vibration, and not the transmission of an actual substance. I think, also, there was a case, which is not reported, where sulphur was spoken of as a metal.

Where therefore, by referring to another part of the specification, suppose to the drawing, an obvious mistake made is corrected there are several cases of this sort not reported where it was left to the jury—where, for instance, two parts in a drawing appeared to be connected, but in the description it was quite obvious, that by some incaution a connexion was left which ought to have been cut off-you are to take the whole together, and if you may correct the statement by the drawing, you may correct the drawing by the statement. You have no right to fix on a particular blunder, and say, this is what the man meant. No, he says, I do not mean that, here is a

mistake, you must collect my meaning from the whole. But is In the Exchequer there any case which says this-that if a man in the manipula- E. T., 1841. tion, or in the statement of the machine that is made, deliberately states something, not by mistake, but deliberately states it, and it turns out to be wrong and to be material—that in the very operation itself he makes a mistake--is there any case which will justify this doctrine, that a skilful person coming in will see this, though an ingenious man, did not thoroughly understand the subject; it is a pity he did not make himself better acquainted with certain parts of it but I, coming in, can correct that, and I will do so? Is there any pretence for saying that any case decides any thing like that doctrine for your lordships? It would place the whole law of patents altogether at the mercy of a jury. [Alderson, B.: Lord Eldon lays down the principle so long ago as 1800. He says, patents are to be The patent, a considered as bargains between the inventor and the public, to the patentee and bargain between be judged of on the principles of good faith, by making a fair the public, to be disclosure of the invention, and to be construed as other bargains. That is the principle which must be taken to be the good faith. sound principle.] Exactly. [Lord Abinger, C.B.: I take the true distinction between a specification that a man of science may construe, and another man may not understand, is this: Where the specification uses scientific terms, which are not understood except by persons acquainted with the nature of the business, the specification is not bad because an ordinary man does not understand it, provided a scientific man does; but where the specification does not make use of technical terms, where it uses common language, and where it states that by which a common man may be misled, though a scientific man would not-when it does not profess to use scientific terms, and an ordinary man reading the specification is misled by it-it would not be good.]

construed on the

principles of

experiments or

The judgment in R. v. Wheeler (2 B. & Ald. 349) is conclusive. "A specification which casts upon the public the A specification expense and labour of experiments and trial, is undoubtedly which requires bad. If it be said that all these matters will be well or easily correction is known to a person of competent skill (and to such only the bad. patentee may be allowed to address himself), then the invention will not in reality have given any useful or valuable information to the public; so that, in either way of viewing the case, there is either no certain and clear process described, or the process described is such as might be practised without the assistance. of the patentee." If a person of skill is to come in, and by means of his skill and experience without experiment is to correct the blunder, and not to follow the directions, because he says that the writer of those directions did not understand the subject upon which he was writing, and had not sufficiently matured his discovery, or performed his experiments so as to