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provement, and, as I said before, it may be the subject of In the Exchequer a patent, yet the defendants are not the persons who did that. Other parties who have used this thing for years have paid Mr. Neilson regularly for a license, and your lordships will observe we are now approximating almost to the close of this patent, when these defendants have thought it right to set up this question, on the form in which they are using the vessel, as an answer to the claim of the plaintiff.

But on what grounds is it this specification is defective? Your lordships will observe, that it is not taken out even for the most effectual mode of smelting iron in a furnace-it is taken out for an improvement on the old method of smelting; it is said, this is an improved mode of introducing the air into the furnace for the purpose of smelting iron; that is all that the patent is for. And I apprehend, that if that specification had described an improved method-if it had shown an improved method of introducing the air into the furnace—there would have been no objection to the validity of the patent, although it might turn out that other improvements and other discoveries may show that the discovery of the patentee himself might be carried into still more beneficial effect; it would not make his patent void, because he has taken out his patent for an improvement on the old mode, and the question is, whether his patent be, or not, an improvement on the old mode, whether it can be carried into effect beneficially, so as to be a benefit on the old mode.

In this case, all the witnesses stated distinctly that no experiment was necessary, but that any person of ordinary skill[Parke, B.: That no experiment was necessary to produce a beneficial effect.] That is what I am stating; I am not stating that experiments might not be necessary to make improvements on the discovery; but I say the discovery is for an improvement in the mode of heating the furnace, and I say that no experiments whatever were necessary for that. Then I say, you have here upon the evidence a patent taken out for an improvement; you have a patent taken out for a principle carried into effect, which is said to be an improvement on the old course of proceeding, and every witness in the case states that, without any experiment of any sort or kind, no person of the most ordinary skill could fail in carrying it into effect. The patent says, I have discovered a valuable improvement in the smelting of iron; I tell you my improvement is, you are to introduce the air heated; I tell you how to do that, by placing the heating vessel in one part of this apparatus, pass your air through it, and into the furnace; there is no witness who does not say that that is an improvement— that it is a great improvement; that it is worth while for any person to adopt it. Taking the words which the learned judge thought it right to put to the jury, taking every thing into con

Sir W. Follett

in support of rule to enter

verdict for the plaintiff's.

sideration relating to the expense, that it is an improvement that no one would hesitate to adopt; that there is no one who could not carry it into effect, and that it is a great improvement, I ask, where is the objection to the patent? And if any one tells me that since the patent was taken out I have discovered other modes of applying this, which are more beneficial, that is no answer to the patent, because the patent does not profess this to be the most beneficial mode; it professes to be an improvement, and it points out the mode in which that improvement can be effected.

The whole question upon the specification, supposing we are at liberty to enter into a discussion upon the meaning of words here (which I apprehend after the finding of the jury we are not), is on the meaning of the word "effect." It means the form or shape of the vessel is immaterial to the effect to pass hot air into the furnace; that it is entirely immaterial as to the effect produced, that is, the passing of heated air into the furnace; it does not mean it is immaterial to the degree of heat to be given to the air in the vessel, but that it is entirely immaterial to the effect of my patent, that being for passing heated air into the blast furnace, and you may heat the air in a vessel of any shape you like. You may adapt your vessel to the local circumstances; you may heat your air by means of a vessel of a tubular shape, square shape, pipe shape, or any other shape you like-it is still entirely immaterial to the effect for which my patent is taken out, for the air will pass from that vessel so heated into the blast furnace in a heated state. [Alderson, B.: There is another sense to the word "effect," which would equally answer your purpose, which is this; if the vessel contain a certain number of cubic inches of air heated up to a certain point, the form or shape of the vessel is immaterial, because the access to the cold air, which is supplied from the blowing apparatus at a given rate, itself produces no effect, the effect depending upon the quantity and not on the shape; that will give full effect to the word.] Yes; but in this way of looking at it what I submit is, that the word "effect" does not mean the effect of the air in the vessel which is heating it, and that was the assumption which the learned judge made at the trial, and upon which the jury held it to be inaccurate.

It was not the intention of Mr. Neilson in this case to give any direction, or to make any observation at all, on the effect of heating air according to the shape or form of the vessel; and I say so for this reason, that your lordships are aware, and it is proved indeed by the evidence, that there were many patents at that time in existence for particular shaped vessels for heating the air. Now, supposing that one of those vessels for heating the air had been made adapted to a furnace in one particular place or situation, why the party might use that vessel without

E. T., 1841.

any alteration of effect as regards the object of the patent, In the Exchequer namely, the passing of heated air into a furnace; but it may so happen, that another form of patented vessel for heating air might be used with much more economy of fuel, or might in fact produce a higher temperature with a less degree of expense, but still it would be perfectly immaterial to the effect on the furnace; the form or shape of the vessel would be wholly immaterial for that purpose, the purpose for which the patent was taken out. Therefore, the word "effect" here, I apprehend, does not mean at all to apply-it was never considered by the jury to apply at all—to the degree of heat to be given to the air. And if you were to take it even in the way Sir F. Pollock has, for the first time, suggested (for we never heard of this way of reading it at the trial), that the words in the other part apply to the vessel itself, that the vessel itself is to be heated to a certain temperature, that leaves still the question of the specification untouched, because if the vessel is to be heated to a proper temperature, no matter what its size may be, if the air be heated.

I submit to your lordships that the whole question upon the Some questions on the specificavalidity of the specification, that is, on the meaning of the spe- tion are for the cification, and whether it can or cannot be carried into effect, is jury. a question for the jury, and not for the court, and that the jury are to put their construction upon the meaning of the words, and that the jury are to say whether the words are or not sufficient, and that it is for them to say, whether the specification does sufficiently show the mode of carrying the invention and discovery, which the patentee supposed he had made, into practical effect. [Lord Abinger, C. B.: Why is the specification, which is a written instrument, more particularly to be considered by a jury than any other instrument? The meaning of scientific words must be matter of evidence.] [Alderson, B.: The construction of it is surely for the court.] I do not know quite the extent to which it is supposed the authorities have gone in stating that certain papers are for the court. In many cases, undoubtedly, written papers are for the court, but I apprehend that is by no means a general doctrine of law; but that written papers which involve a question of fact like this, whether or not the party has sufficiently described the invention, that that written paper is for the jury and not for the court, because it is for the jury to say, as a matter of fact, whether there be, or not, a sufficient description in that instrument to enable the parties to carry it into effect. That I apprehend to be a question entirely for the jury. Certainly the whole of this is a question of evidence, and a question of fact. It is a question of fact as relates to the paper; it is a question of fact as regards the evidence at the trial; it is not a question of law at all; and I do not know any

Sir W. Follett

in support of rule to enter

verdict for the plaintiffs.

is for the court,

terpreted by the

jury.

rule which is to say that the court is to construe that specification, and to take it from the jury, because, supposing the fact to be that evidence was given at the trial on scientific matters, which evidence would aid the meaning or the construing of the instrument, your lordships can have no judicial notice of that at all. If it be a written paper for your lordships to decide upon, it must be without evidence. It is not that your lordships can come to a conclusion upon the meaning of the paper, by looking at the evidence at the trial, but if it comes within the rule, that it is a written paper which the court is to act upon, then it must act upon the written paper alone. I think I can show your lordships, that in every single case in which any question has arisen, it has been submitted to the jury, not decided by the The meaning of court. [Lord Abinger, C. B.: Not consistently with my recolthe specification lections; I have always thought that the meaning of the specithe words of art fication was to be determined by the court. That meaning may having been in- be varied by the evidence of particular words. A man must gather as he goes along in order to construe the written instrument. It is quite new to me that it is not to be considered by the court.] [Alderson, B.: Surely the court is to tell the jury what the specification has said. If the specification contains words of art, the court is to say-If you believe these words of art to mean so and so, the specification has said so and so; leaving the question of words of art to the jury. But if there are no words of art, what the specification has said is to be construed by the court. Then it is to be left to the jury, whether the specification having so said, it is or not a sufficient description of the invention according to their judgment.] I do not mean the validity of the specification as to questions in which you may direct nonsuits in point of law arising out of objections of a different kind, but that this question, whether or not the specification sufficiently describes the mode of carrying the invention into effect, that every thing relating to that is for the jury, and not for the court-the meaning of the passages in the specification, and every thing. I should submit to your lordships that the whole of it was for the jury, and not for the court (d). [Alderson, B.: That there are some things in the specification which are questions of fact is true, and there are some things in the specification which are questions of law; the construction is to be given by the court, but the intelligibility of it is for the jury.] That is all I am contending-[Lord

(d) The learned counsel referred to the case of Hill v. Thompson, where Lord Eldon says, "the utility of the discovery, the intelligibility of the specification, &c., are all of them matters of fact proper for a jury; but whether or not the patent is defective in attempting to cover too much, is a question of law." Ante 237. He also cited and

relied on Boulton & Watt v. Bull, 2 H. Bl. 463, in support of the position, that the finding of a jury on the sufficiency of the specification was con clusive; and the case of Minter v. Wells, ante 134, in illustration of a patent for a principle. The case of Turner v. Winter, ante 77, and Bickford v. Skewes, ante 218, were also referred to.

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Abinger, C. B.: The intelligibility means with reference to In the Exchequer words of science, or matters in it which persons may explain so The meaning of as to satisfy the jury. You are discussing an abstract principle the specification where it is not necessary; if you take an abstract principle, I is matter of law, the judge having must say the meaning of the specification is a matter of law, been informed of and that the judge must be informed, by evidence, of the facts, the facts. and then he must leave those facts to the jury, for them to find whether they be true or not.]

One of the points made in this case was, as regards the sufficiency of the notice of objections. "That the said specification was calculated to deceive," is said to be a sufficient notice of objection. Now, for a moment, suppose that it is. The learned judge was good enough to leave to the jury, in the very words, whether or not there was any thing in this specification calculated to deceive, and the jury found distinctly that there was not (e); but in this act of parliament it is said, that the plaintiff is entitled to recover, unless the defendant prove the objection at the trial. The objection relied upon is, that the specification was calculated to deceive-the jury have found that it was not calculated to deceive. That was the objection upon which the learned judge said the defendants are at liberty to offer the objection in evidence. The jury found all of the objections, in fact they found that the specification was sufficient, and they found that the description of the apparatus to be employed was such, that any workman of ordinary skill could make it, and they found that the specification was not calculated to deceive. The jury have found that the specification is sufficient to enable any workman of ordinary skill to construct the apparatus. [Parke, B.: A person acquainted either with the blowing apparatus or with the heating apparatus.] In fact, that the specification is sufficient on the face of it, without any other help, to enable a person of ordinary skill, acquainted with the mode either of constructing a blowing apparatus, or of constructing machines for heating air, to carry into effect this patent without any experiment, and without any thing else than the specification itself; so that the jury have distinctly negatived the point so much insisted on-namely, of the necessity of experiments. Now, it does seem extremely difficult to say, after this finding of the jury, that any objection can be made to this specification. But the notice is not sufficient to let in the objection to the particular passage which is supposed to vitiate the specification.

(e) It having been decided (ante 209, n.), that the certificate of the judges under 5 and 6 W. 4, c. 83, s. 6, is to be with reference to the parts of the notice of objections proved, it will frequently be important to obtain the opinion of the jury on the notice of objections for the purpose of such certificate, as well as on the ground here stated

by the learned counsel. But in the case of Walton v. Potter, the Court of Common Pleas held, that the learned judge having, in the exercise of his discretion, declined to take the opinion of the jury on particular parts of the notice of objections, was no ground for disturbing the verdict.