ticular purpose is not good. Without a patent the plaintiff H. T., 1842. could not have used the hot blast; the using it with a patent is as much an infringement as the using of it without a patent. The proviso means that the grant shall not interfere with any previous grant. No case has been cited in which the subsequent patent included the use of the former patent; for such second grant would of necessity be void. Cur. adv. vult.

Sir N. C. TINDAL, C. J.: This was an action on the case for Judgment. the infringement of a patent, granted to the plaintiff on the 28th June 13, 1842. of September, 1836, for an improvement in the manufacture of iron. The declaration was in the usual form, and the defendants pleaded thereto, first, that they were not guilty; secondly, that the plaintiff was not the first and true inventor of the said improvement. Upon each of which pleas issue was joined. Thirdly, after setting out at length the plaintiff's specification, the defendants pleaded, that the alleged improvement therein described was not a new manufacture, invented by the plaintiff, within the intent and meaning of the statute, as to the public use and exercise thereof in England; which allegation was traversed by the plaintiff in his replication. Fourthly, the defendants pleaded, that the nature of the plaintiff's invention, and the manner in which it was to be performed, was not particularly described or ascertained by the plaintiff in his specification; upon which plea issue was joined. And in their last plea the defendants, after referring to the plaintiff's specification before set out in the third plea, stated the grant of letters patent, dated the 11th of September, 1828, to one James Beaumont Neilson, for an improved application of air to produce heat in fires, forges, and furnaces, where bellows and other blowing apparatus were required; that Neilson's invention was the production and application of a hot air blast, and was in public use, with Neilson's license, in the smelting and manufacturing of iron from iron stone, and was the hot air blast in the plaintiff's specification mentioned; that the plaintiff.could not use the hot air blast mentioned in his specification without Neilson's license; and that he had obtained such license before the grant of his letters patent; and that the using by the plaintiff of the hot air blast in the smelting of iron from iron stone, combined with anthracite or stone coal, as mentioned in his specification, was a using and imitating of Neilson's invention, whereby the plaintiff's patent was void. The plaintiff replied to this last plea, that Neilson's invention was not the same hot air blast; and that the machinery and apparatus adopted for the application thereof, mentioned and referred to

Judgment.

in the plaintiff's specification, was not nor was the using by the plaintiff of the invention as described in his specification a using and imitating of Neilson's invention, described in Neilson's specification: which allegation is traversed by the defendants in their rejoinder.

At the trial before me, the verdict was entered for the plaintiff on all the issues, subject to the opinion of the court upon the evidence given at the trial, as contained in a report agreed upon between the parties, the court being at liberty to draw the same inference from it as a jury might draw.

On the argument, it was contended by the defendants, that the verdict ought to be entered for them on each of the issues joined on the record; but as the main question between the parties turns on the third issue, which involves the question, whether the invention of the plaintiff is a manufacture within the intent and meaning of the statute of James; that is, whether it is or is not the subject-matter of a patent; and as the determination of this issue in favour of the one party or the other, will render the decision of the other issues free from difficulty, the simplest way will be, to apply ourselves in the first instance to that question.

Now, in order to determine whether the improvement described in the patent is or is not a manufacture within the statute, we must in the first place ascertain precisely what is the invention claimed by the plaintiff; and then by the application of some principles admitted and acknowledged in the application of the law relating to patents, and by the authority of decided cases, determine the question in dispute between the The invention parties. The plaintiff describes the object of his invention to claimed is the be, the application of anthracite or stone coal combined with and hot blast in hot air blast in the smelting or manufacture of iron from iron combination, for stone, mine, or ore, and states distinctly and unequivocally, at the

use of anthracite

the manufacture of iron.

end of his specification, that he does not claim the use of a hot air blast separately as of his invention, when uncombined with the application of anthracite or stone coal. Nor does he claim the application of anthracite, or stone coal, when uncombined with the using of hot air blast; but what he claims as his invention is, the application of anthracite or stone coal and culm, combined with the using of hot air blast, in the smelting and manufacture of iron from iron stone, mine, or ore. And the question, therefore, becomes this—whether, admitting the using of the hot air blast to have been known before in the manufacture of iron with bituminous coal, and the use of anthracite, or stone coal, to have been known before in the manufacture of iron with cold blast, but that the combination of the two together (the hot blast and the anthracite) were not known to be combined before in the manufacture of iron, whether such combination can be the subject of a patent.

tion is the sub

sult be a new,

We are of opinion, that if the result produced by such a com- Any combinabination is either a new article, or a better article, or a cheaper ject-matter of a article to the public, than that produced before by the old me- patent, if the rethod, that such combination is an invention or manufacture or a better, or a intended by the statute, and may well become the subject of a cheaper article. patent (b). Such an assumed state of facts falls clearly within the principle exemplified by Abbott, C. J. (c), where he is determining what is or what is not the subject of a patent, namely, it may, perhaps, extend to a new process to be carried on by known implements or elements acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or a better or more useful kind. And it falls also within the doctrine laid down by Lord Eldon (d), that there may be a valid patent for a new combination of materials previously in use for the same purpose, or even for a new method of applying such materials. But the specification must clearly express, that it is in respect of such new combination or application.

a known man

known effects, a

There are numerous instances of patents which have been The use of a granted, where the invention consisted in no more than in the known thing, in use of things already known, and acting with them in a manner ner, to produce already known, and producing effects already known, but pro- subject-matter. ducing those effects so as to be more economically or beneficially enjoyed by the public. It will be sufficient to refer to a few instances, some of which patents have failed on other grounds, but none on the ground that the invention itself was not the subject of a patent (e).

We may first instance Hall's patent, for applying the flame of gas to singe off the superfluous fibres of lace; where a flame of oil had been used before for that same purpose (f). Derosne's

(b) See per Buller, J., in R. v. Arkwright, ante 71, and note e.

(c) In The King v. Wheeler, 2 B. & Ald. 349. (d) In Hill v. Thompson, ante 237.

(e) It may be observed, that no case is reported or mentioned in any of the books in which a patent has failed, simply on the ground of the invention not being the subject-matter of letters patent; some other ground, as want of novelty, or defective specification, having been the real cause of failure. In Brunton's case (Brunton v. Hawkes, 4 B. & Ald. 541), a careful examination of the judgments of the learned judges will show, that the real objection was want of novelty, a particular description of anchor having been made in the same way before. The dictum of the learned judge, that there could not be a patent for making in one entire piece what before had been in two pieces, evidently had reference to the particular case, and must be received and applied with great caution, inasmuch as it is clear that cases may occur, in which the making in one piece, so as to avoid a joining, would be an essential and material improvement. Whether an improvement or not, would appear to be the real question. See ante 205, n. b.

In Saunders' or the button case (Saunders v. Aston, 3 B. & Ad. 881), the real invention was the substitution of a flexible shank, which was old, by the special aid of a toothed collet; had this been properly claimed, the patent would have been good.

In Kay's case (Kay v. Marshall, 5 Bing. N. C. 491), the real defect was not in the subject-matter, but in the subject-matter as disclosed on the face of the letters patent and in the specification. The result of the invention was, the introduction of a new mode of spinning, which has since been applied to many other manufactures, and the placing the flax on a similar footing with the cotton manufacture. No one can doubt inventions such as those being the subject-matter of letters patent; but Kay, and his great forerunner Arkwright, in the other branch of the manufactures of the country, both failed to secure to themselves the full benefit of their industry and ingenuity from the same cause, namely, a defective specification. See ante 74, n.

(f) See ante 97. The particular fact here mentioned, does not appear in the evidence on the trial for the infringement of this patent (Hall v. Boot, ante 100-103); but it has been repeatedly

Judgment.

patent, in which the invention consisted in filtering the syrup of sugar through a filter, to act with animal charcoal, and charcoal from bituminous schistus, where charcoal had been used before in the filtering of almost every other liquor except the syrup of sugar (g). Hill's patent, above referred to, for improvements in the smelting and working of iron; there the invention consisted only in the use and application of the slags or cinders thrown off by the operation of smelting, which had been previously considered useless for the production of good and serviceable metal, by the admixture of mine rubbish. Again, Daniell's patent was taken out for improvements in dressing woollen cloth, where the invention consisted in immersing a roll of cloth, manufactured in the usual manner, into hot water (h).

The only question, therefore, that ought to be considered on the evidence is, was the iron produced by the combination of the hot blast and the anthracite a better or a cheaper article than was before produced from the combination of the hot blast and the bituminous coal; and was the combination, described in the specification, new as to the public use thereof in According to England. And, upon the first point, upon looking at the eviyield is greater, dence in the cause, we think there is no doubt, that the result the quality bet- of the combination of the hot blast with the anthracite on the ter, and the exyield of the furnaces was more, the nature, properties, and quapense less. lity of the iron better, and the expense of making the iron less, than it was under the former process, by means of the combination of the hot blast with the bituminous coal.

the evidence, the

It is to be observed, that no evidence was produced on the part of the defendants, to meet that given by the plaintiff on these grounds; and that it was a necessary consequence, from the proof in the cause, that from the substitution of the anthracite coal, in whole or in part, instead of or in the place of bituminous coal, the manufacture of the iron should be obtained at less expense (i).

It was objected, in the course of the argument, that the quality or degree of invention was so small, that it could not become the subject-matter of a patent; that a person who could procure a license to use the hot air blast under Neilson's patent, had a full right to apply that blast to coal of any nature whatever, whether bituminous or stone coal. But we think, if it were necessary to consider the labour, pains, and expense, incurred by the plaintiff, in bringing his discovery to perfection,

mentioned in argument in subsequent cases, as well as on the present occasion. See per Lord Abinger, C. B., in Losh v. Hague, ante 207. This fact was probably stated in the affidavits, on the motion for a new trial, on which occasion Lord Tenterden, C. J., is reported to have said, that no man could tell a priori what would be the effect on the article of a change from oil to gas.

(g) See ante 152.

(h) See ante 71, n. e, and The King v. Daniel!, Godson on Pat. 274.

(i) The plaintiff's works being situate on the stone coal district, other species of coal was obtained at increased expense of carriage, or of carriage and coking. See ante 386.

that there is evidence in this cause, that the expense was consi- June 13, 1842. derable, and the experiments numerous. But in point of law, The labour of the labour of thought, or experiments, and the expenditure of thought, or cost of experiments, money, are not the essential grounds of consideration on which expended on an invention, not the question, whether the invention is or is not the subjectessential in matter of a patent, ought to depend. For if the invention be new and useful to the public, it is not material whether it be the result of long experiments and profound research, or whether by some sudden and lucky thought, or mere accidental discovery.

The case of monopolies (k) states the law to be, that where a man, by his own charge or industry, or by his own wit or invention, brings a new trade into the realm, or any engine tending to the furtherance of a trade that never was used before, and that was for the good of the realm, that the king may grant him the monopoly of a patent for a reasonable time. If the combination now under consideration be, as we think it is, a manufacture within the statute of James, there was abundant evidence in the cause, that it had been the great object and desideratum, before the granting of the patent, to smelt iron stone by means of anthracite coal, and that it had never been done before; there was no evidence on the part of the defendants to meet that which the plaintiff brought forward. These considerations, therefore, enable us to direct, that the verdict ought to be entered for the plaintiff on the third issue; that it was a new manufacture-new as to the public use and exercise thereof within England and Wales.

On the same ground, also, the second issue is disposed of in favour of the plaintiff. No evidence was produced on the part of the defendants, to show any inventor earlier than the plaintiff; nor does the fact, that there was an earlier inventor, appear from the cross-examination of the plaintiff's witnesses.

As to the first issue, namely, whether the defendants have infringed the patent, we think it clearly appears on the evidence, that the defendants had used, either in part or in whole, the combination described in the specification of the plaintiff's patent. The plaintiff's evidence goes fully to show certain infringements, and that is not met by any explanation on the part of the defendants. Indeed, the defendants' case did not appear to rest on this point at the trial, so much as on the important question raised by them-whether the improvement described in the specification, was a manufacture within the statute of James.

point of law to the validity of letters patent.

Upon the fourth issue, which raised no more than the usual inquiry, whether the nature of the invention was sufficiently described in the specification, the usual evidence was given, that persons of competent skill and experience could, by following the directions, produce the manufacture described with success,

(k) See ante 6; and 11 Co. Rep. 84; Noy 178.