against the rule. The patent is ciple, but for the mode of car rying the principle into practice. Sir F. Pollock give the world the information they had a right to ask, and in consequence of that has fallen into that error, then, I say, this doctrine of R. v. Wheeler applies. [Alderson, B.: I take the distinction between a patent for a principle, and a patent not for the prin- which can be supported, is, that you must have an embodiment of the principle in some practical mode described in the specification of carrying the principle into actual effect, and then you take out your patent, not for the principle, but for the mode of carrying the principle into effect. In Watt's patent, which comes the nearest to the present of any you can suggest, the real invention of Watt was, that he discovered that by condensing steam in a separate vessel a great saving of fuel would be effected by keeping the steam cylinder as hot as possible, and applying the cooling process to the separate vessel and keeping it as cool as possible, whereas before the steam was condensed in the same vessel; but then Mr. Watt carried that practically into effect, by describing a mode which would effect. the object. The difficulty which presses on my mind here is, that this party has taken out a patent, in substance like Watt's, for a principle, that is, the application of hot air to furnaces, but he has not practically described any mode of carrying it into effect. If he had, perhaps he might have covered all other modes as being a variation] (c). With respect to what has fallen from your lordship, about taking out a patent for a (c) At a subsequent part of the case, the following remarks, closely connected with the preceding, occurred Alderson, B.: It is very difficult to see why Watt's patent was not for a principle. Sir W. Follett: It was not for the principle alone. Alderson, B.: It is very difficult to see what is a patent for a principle, and for a principle embodied in a machine, because a patent can only be for a principle embodied in a machine. Sir W. Follett: Your lordship sees, if any strict rule is laid down on such a subject, what effect that would operate, because all great discoveries are in fact discoveries of principles; and, therefore, if the principle is at all capable of being carried into effect, it seems extremely hard that a party who has made a most valuable discovery should not be protected. Alderson, B.: Only you cannot take out a patent for a principle. Sir W. Follett: Unless you point out a mode of carrying the principle into effect. Parke, B.: It must be for a manufacture. Alderson, B.: I have always thought that the real test was this; that in order to discover whether it is a good or a bad patent, you should consider that what you cannot take out a patent for must be considered to have been invented pro bono publico-that is to say, the principle must be considered as having had an anterior existence before the patent. Now, supposing in Watt's case it had been known that to condense in a se parate vessel was a mode of saving fuel, then Watt certainly would have taken out a patent for carrying into effect that principle by a particular machine; but then his patent would have been for a machine; and if I invented a better machine for carrying out the principle, I do not infringe his patent, unless my machine is a colourable imitation. Sir W. Follett: That would depend on the nature of the machine. Alderson, B.: But you must embody the prin ciple in the machine, and you stop all possible improvements, because you infringe the principle, which you have no right to do; it is the principle of the machine. It is very difficult for a jury to distinguish that, but it is the most essential thing possible. Now, here, supposing it had been known that hot air applied to a furnace was a great improvement on cold air, and that this person had taken out his patent, and this patent was a patent for the application of a well-known thing, the hot air to furnaces; then he takes out a patent for applying it, by means of an intermediate reservoir between the blast furnace and the bellows; then surely any body else may apply the same principle, provided he does not do it by a reservoir intermediately between the blast fur nace and the bellows, and the question for a jury is, whether or not a long spiral pipe is a reservoir; if it be not a reservoir, or a colourable imitation of a reservoir, it is no infringement. Printed case, 222. See per Sir F. Pollock on the same subject, ante 145. E. T., 1841. Practically principle, it is theoretically true, but practically it is not true. In the Exchequer Practically, you can have a patent for a principle, that is, if you embody your principle in any clear, definite, and distinct form, speaking there no other person shall be allowed to take that principle and may be a patent for a principle. embody it in some other form merely copied from yours. [Alderson, B.: But then you must perform the previous conditions, and embody it in some practical form.] Yes, you must develope your principle, and you must correctly develope it, and you must put it in some shape, and when you put it in that shape no person can be allowed to come and steal the spirit of the invention, and put it into some other shape different from yours, provided the jury think that that other shape is an imitation of your shape. Here the party states that the shape and form are immaterial, whereas not only the witnesses did prove the fact, but without proof it is abundantly obvious, and it is quite clear, that the shape and the form are of the very essence of carrying it out to the extent of which Mr. Neilson complains, that is, an imitation or an infringement of his patent. [Alderson, B.: You see you do not interfere with any benefit which the inventor has, if the inventor knows of no particular mode of carrying his principle into effect; you do not interfere with any benefit which he ever had, if he never had a practical mode of carrying it into effect. Your practical mode of carrying it into effect does not interfere with him. Then the question is, whether that is so?] I trust that the direction of the learned judge who presided at the trial will be considered as perfectly correct, that the specification contains an important statement with reference to carrying into effect the supposed invention, which statement is not true; and that it is contrary to the first principles of law, that with reference to an instrument of this description a jury might be permitted to say, that because a person coming with skill adapted to the subject might correct that blunder or misstatement, that, therefore, the specification is in compliance with the proviso contained in the letters patent. Sir W. Follett (Kelly and Butt with him), in support of the Sir W. Follett rule to enter a verdict for the plaintiffs. It is necessary, my rule. in support of lords, that we should understand the position in which the parties were at the time this patent was taken out, what it was taken out for, and what it is that has been done under it; for I do not deny that improvements may have been made on the patent of Mr. Neilson-that parties may, by experiment, have improved on what he discovered. It may or may not be so. The form of vessel used by the defendants may be the best adapted, or it may not be, for heating the blast furnace. If it be an improvement, or if there be any thing in that invention, or in that mode of carrying it into effect, which is an improvement on the patent of Mr. Neilson, it may be that the parties might have Sir W. Follett in support of rule to enter verdict for the plaintiffs. that you are to been entitled to a patent for that improvement; but I deny their right to use that vessel, or to use that mode of heating the furnace, during the existence of Mr. Neilson's patent. Now I would pray of your lordships to consider the position in which the parties stood at the time the patent was taken out. It is said to be a patent for a principle. The real discovery in truth was this, that inasmuch as prior to Mr. Neilson's discovery the iron masters and smelters of iron had used the blast for the blast furnaces cold, that they had considered the cold blast the best adapted for the purpose of the furnaces for smelting ironthat was the course adopted prior to this patent-the prinThe principle of ciple of this discovery, and the principle for which the patent is this invention is taken out, accompanied with the mode of carrying it into effect, use hot air in- is, that instead of using cold air, it will be an improvement in the smelting of iron to use heated air in the furnace. That is the valuable discovery. I agree that that in itself is a mere principle; it is, that you are to use hot air instead of cold-a very valuable discovery, and a most important one. Then it is necessary that the patentee should not only have discovered that principle, which is in itself so valuable, but that he should find out a mode by which air may be introduced in a heated state into the furnace, and if he finds out a mode by which air may be introduced in a heated state into the furnace, then I apprehend he is entitled to take out a patent for the valuable discovery he has made, accompanied with the mode of carrying it into effect. That is the position in which Mr. Neilson stood. stead of cold. It has been said that Mr. Neilson was not aware of the nature and principle of his discovery. It arose from the knowledge of the fact that, if you poured the air in a cold state into the furnace, the operation of the heat would be employed to heat that cold air, and that if you put it in a hot state that degree of heat would not be taken from the combustible materials in the furnace. That was a discovery partly from knowledge and partly from experience in the heating of furnaces. Now that is to be carried into effect. The way of heating air was not a discovery of Mr. Neilson's, and I cannot help thinking that a great part of the argument on the other side, and a great part of this discussion, have arisen from confounding the heating of air with the application of heated air to the furnace. The mode of heating air was perfectly well known; it was no discovery of Mr. Neilson's, every body knew it. Air had been heated, and there had been different shaped vessels employed for heating the air; for heating the air economically, and for heating it to a higher or lesser degree of temperature; all that was perfectly well known. Mr. Neilson, therefore, does not profess to take out a patent for heating air, nor does he profess to give any instructions or give any directions as to the mode in which air can be heated, because that was a matter per E. T., 1841. fectly well known before; and I apprehend that if he had In the Exchequer made as a part of his patent any statement with respect to the principle of heating air, as that of giving a more extended surface for heating, or described any mode by which the temperature might be increased, and had inserted that as a part of the specification of his patent, the patent would have been altogether bad, because that was perfectly well known and practised at the time. The mode of heating air being known, and the principle of Mr. Neilson's discovery being that it would be better to apply air heated to a furnace, what is it he claims by his patent? Does he give any mode of carrying that principle into effect? Now I will read, without any statements of my own, the observations of one of your lordships on that point, because it puts the matter in a very clear light. I do not read it in the way of a judgment, but as a suggestion coming in as to what really was done by Mr. Neilson with regard to this patent. The learned judge at the trial stated the ground thus: "If the specification is to be understood in the sense claimed by the plaintiffs, the invention of heating air between the time it leaves the blowing apparatus and is introduced into the furnace in any way in any close vessel which is exposed to the action of heat, there is no doubt that the defendants' machinery is an infringement of that patent." What the learned judge there referred to was, the question upon this passage in the specification, which has been the subject of discussion before your lordships, not that the patent was not good, because it was only for a principle, because here there is a mode of carrying that principle into effect, and the mode of carrying that principle into effect is this-that you shall heat the air in a closed vessel, between the blowing apparatus and the furnace, and the air is to pass from the common blowing apparatus into a closed vessel; and in that closed vessel it is to be heated, and then to pass from that closed vessel into the furnace. Now, there may be many other modes suggested, for aught I know, in which heated air may be introduced into blast furnaces. It may be so; but the patent of Mr. Neilson is for introducing heated air into blast furnaces, by means of a vessel which is to heat the air between the blowing apparatus and the furnace. Now that is the patent which Mr. Neilson takes out. There is, therefore, a distinct mode of carrying the principle into effect. Now, one of your lordships observed, that the blowing apparatus was perfectly well known before; the heating of air was perfectly well known before: you, therefore, have a blowing apparatus well known, you have the heating of air well known, and you have the mode of smelting iron in a furnace well known. What is this patent taken out for? Why the patent is taken out for passing the air hot instead of cold, and by doing it in this mode, namely, by having one close vessel between the blowing appa Sir W. Follett in support of rule to enter verdict for the plaintiffs. ratus and the furnace. What is there, therefore, to find fault |