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Judgment. and the evidence was entirely unopposed ; upon this issue also
the verdict ought to be entered for the plaintiff.
With respect, however, to the issue raised in the rejoinder in the plaintiff's replication to the fifth plea, we are of opinion, that taking the whole evidence brought forward by the plaintiff, it is impossible to perceive any substantial or real distinction between the hot air blast and the machinery and apparatus described in Neilson's specification, from that described and referred to in the plaintiff's—or to say, that the using by the plaintiff of the invention described in his specification was any other than a using and imitating of the invention described in Neilson's specification (7). The plaintiff, indeed, worked by license under Neilson's patent at the time of his discovery, On this fifth issue, therefore, we think the verdict should be entered for the defendants. Then arises the question, whether the plaintiff is, or is not, entitled to the judgment, notwithstanding the verdict on this fifth issue; on which point, the argument on the part of the defendants is, that the taking out
a patent for an invention, which invention cannot be used or Patent good enjoyed by the public except by means of the former invenalthough its tion of another person, which former invention is itself the requires the use of that to subject-matter of a patent still in force, is void by law. Un
e doubtedly, if the second patent claims, as part of the invention bas an exclusive right, or described in it, that which had been the subject-matter of a
patent then in force, it would be void, on the double ground public, if that be not claimed that it claimed that which was not new (which indeed would in the specifica
equally be the case if the former patent had expired), and also that it would be an infringement of, and inconsistent with, a former grant of the king still in force, which latter consideration alone would make a new grant void (m). But in this case there is an express disclaimer of any part of the invention extending to the use of the hot air blast which was covered by Neilson's patent, the specification describing, that the application of the hot air blast was well understood and extensively applied in many places where ordinary fuel is employed. The validity, therefore, of the plaintiff's patent cannot be impeached on either of the grounds above adverted to. Unless, therefore, the grantee of the new letters patent is bound by law to specify whether such former invention, which is excepted, was so excepted on the ground of its being generally known and used by
(1) It should be borne in mind, that the trial at nisi prius was before, and the argument on the special case subsequent to, the proceedings esta blishing the validity of Neilson's patent. Neil. son's invention consisted in applying hot air to furnaces, that air being heated in a vessel intermediate between the furnace and the blowing apparatus; the vessel described in Neilson's specification was abandoned as of no value in com. parison with the series of pipes subsequently introduced, and which the plaintiff and Neilson's other licensees then used, and a main question in
Neilson's case was, whether the use of any vessel, and series of vessels, or receptacles, as a set of pipes, was protected by his patent, and the Court of Exchequer decided that it was. See Neilson v. Harford & others, ante 369.
(m) See “an act for avoiding second letters patent granted by the king" (6 H. 8, c. 15), whereby it was enacted, that in all cases of grants of second letters patent for the same thing, the determination of the former grant should be expressed. Law & Practice, tit. Statutes, and ante 397, n. i.
the public, or on the ground that it was the subject of a patent June 13, 1842. that secured the use of it to a former patentee, the new patent will be good. But that distinction is as much in the knowledge of the public as of the grantee of the patent. If indeed the new patent had been taken out for improvements or alterations in an invention secured by a former patent, there, for obvious reasons, greater particularity would be necessary to distinguish the new from the old. But the present specification expressly says, I take the whole of the invention already well known to the public, and I combine it with something else.
Now it is further argued, that in point of law, no patent can A patent includbe taken out which includes the subject-matter of a patent still
matter of a parunning or in force. No authority was cited to support this tent still in force, proposition, and the case which was before Lord Tenterden, and is in which he held, that where an action was brought for an infringement of improvements in a former patent granted to another person, and still in force, that the plaintiff must produce the former patent and specification; that at least affords a strong inference that the second patent was good (n). The case of Harmar v. Playne (o) is a clear authority on the same point; and upon reason and principle there appears to be no objection (p). The new patent, after the expiration of the old one, will be free from every objection, and whilst the former exists, the new patent can be legally used by the public by procuring a license from Neilson, or by purchasing the apparatus from him or some of his agents; and the probability of the refusal of a license to any one applying for it, is so extremely remote, that it cannot enter into consideration as a ground of legal objection.
On the whole, therefore, we think the verdict is to be entered for the plaintiff on all the issues except the fifth; that the verdict is to be entered for the defendants on the fifth issue; but that, notwithstanding such verdict, the judgment must be given for the plaintiff.
Judgment for the plaintiff.
(n) The case of Lewis v. Davis, 3 Car. & P.502.
O) 14 Ves. Jr. 130; 11 East, 101; Dav. Pat. C. 311. See also
For, Ex parte. Lord Eldon, L.C.: “If the petitioners have invented certain improvements upon an engine for which a patent has been granted, and those improvements could not be used without the original engine, at the end of fourteen years the petitioners could make use of a patent taken out upon their improvements; though before that period expired they would have no right to make use of the other's substratum. At the end of that time, the public has a choice between the patents." i Ves. & B.67., & post,
The preceding was an opposition to a patent by careat at the great seal, on the ground that it was borrowed from an existing patent; the patent was granted. Many patents on which litigation has taken place were open to the objection of being improvements on an existing patent, but the question does not appear to have been made in any of the cases,
(p) For suppose a particular article, starch for instance, to be the subject of letters patent, and that all the starch in the country was patent starch; there are attached to the making and selling of that article certain exclusive privileges, but the individual who has purchased it of the patentee has a right to sell it again, and to use it at his will and pleasure; the exclusive privileges are, in respect of that particular portion of the article so sold, at an end, and do not pursue it through any subsequent stage of its use and existence, otherwise every purchaser of starch would be obliged, according to the terms of the letters patent, to have a license in writing, under the hand and seal of the patentee; the absurdity of which is manifest. Hence it is obvious, that if a person legally acquires, by license or purchase, title to that which is the subject of letters patent, he may use it or improve upon it in whatever manner" he pleases; in the same manner as if dealing with property of any other kind.
sive or not.
In the Eschequer
PROTHEROE v. MAY AND OTHERS.
[5 Mee. & W. 675.] 16 exclusive lic
By order of the Vice-Chancellor, the following case was sent cense to use a for the opinion of this court :patent does not Letters patent were duly granted under the great seal of invalidate the patent itself, Great Britain, bearing date the 29th day of August, 1838, to although the A
e Arthur Dunn, for his invention of certain improvements in the vested in iwelve manufacture of soap. persons; and it is wholly imma. The case then set forth the letters patent, which were in the terial to its va- usual form, and of which the following only is material to be Jidity, in what number of per. stated :-“ Provided nevertheless, and these our letters patent sons such an are upon this express condition, that if at any time hereafter license is vested, whether exclu-' these our letters patent, or the liberties and privileges hereby by
us granted, shall become vested in or in trust for more than Such a li cense would not the number of twelve persons or their representatives at any be invalid, if one time as partners, dividing or entitled to divide the benefits the districts or district covered or profits obtained by reason of these our letters patent (reckon
se ing executors or administrators as and for the single person whole extent of whom they represent, as to such interest as they are or shall be the patent.
entitled to in right of such their testator or intestate), that then these our letters patent, and all liberties and advantages whatsoever hereby granted, shall utterly cease, determine, and become void, any thing hereinbefore contained to the contrary thereof in anywise notwithstanding : Provided, that nothing herein contained shall prevent the granting of licenses in such manner and for such consideration as they may by law be granted.”
A proper and sufficient specification of the said patent invention was duly enrolled in the High Court of Chancery, within the time limited by the said letters patent for that purpose.
Before the month of July, 1839, and at the time of granting the license next after mentioned, the said letters patent, and the liberties and privileges thereby granted, became and were vested in twelve several persons, partners, dividing or entitled in their own rights respectively, and not by representation, to divide the benefits or profits obtained by reason of the said letters patent. On the 1st July, 1839, the said twelve patentees, or persons in whom the said letters patent were so vested as aforesaid, signed and executed an instrument in writing, whereby, after reciting that they had agreed with Samuel Guppy and Philip Protheroe to grant unto them an exclusive license for the use and exercise of the said invention within the city of Bristol, and at such other place or places within thirty-five miles therefrom, as
described on the map with a compass, having Bristol for its In the Exchequer centre, as they should think proper, and in consideration thereof, the said Samuel Guppy and Philip Protheroe had agreed to be bound by such terms, restrictions, stipulations, and agreements thereinafter mentioned and expressed; it was by the said license witnessed, that in pursuance of the said agreement, and in consideration of the covenants, provisions, and agreements thereinafter contained, they, the said twelve patentees or persons in whom the said letters patent, and the liberties and privileges thereof, were so vested as aforesaid, did give and grant unto the said Samuel Guppy and Philip Protheroe, and the survivor of them, during the remainder of the term of fourteen years mentioned in the said letters patent, and for which the said letters patent were granted, the full and free liberty, sole and exclusive license and authority, to and for them the said Samuel Guppy and Philip Protheroe, and the survivor of them, for their and his own use and benefit, subject to the provisoes and stipulations thereinafter contained, to use the said discovery or invention within the city of Bristol, and at such other place or places within thirty-five miles from the said city as aforesaid, as the said Samuel Guppy and Philip Protheroe, or the survivor of them, should think proper (a).
Under the said license, the said Philip Protheroe and Samuel Guppy have used and exercised the said patent invention within the city of Bristol, and such other places within thirty-five miles thereof as they have thought fit, and they have since assigned the said license, and the benefit thereof, to or in trust for a company or copartnership consisting of more than twelve persons, who are now using and exercising the same, and have duly paid the rents made payable by virtue of the said license.
On the 2d of July, 1839, the said twelve patentees or persons in whom the said letters patent and the liberties and privileges thereof were so vested as aforesaid, gave and granted twelve other similar exclusive licenses to use and exercise the said patent right and invention, in twelve several districts other than the said city of Bristol and places within thirty-five miles thereof, of which said twelve licenses eleven were granted severally to eleven individuals (that is to say, each to one distinct person), and the twelfth was granted to a certain partnership consisting of thirteen persons.
The districts covered by the licenses are parts of England only—they do not comprise the whole of England.
(a) Here followed the usual covenants by the licensees — to manufacture a certain quantity weekly, to pay the license dues, to deliver accounts of the quantities made, and penalty for non-compliance. Power on part of licensees to determine the license. Not to prejudice letters patent by any aets, but assist in supporting them.
To keep regular accounts, and proviso that no other licenses should be granted on more favourable terms. Covenant on the part of the grantors not to grant any other licenses within the same district, or themselves use the invention. Power of revocation on default. See as to the usual form of licenses, Law & Practice, Pr. F., XIX.
The questions for the opinion of this court are :
Ist. Has the grant of the said first-mentioned exclusive license to the said Philip Protheroe and Samuel Guppy invalidated the letters patent of itself, without reference to the subsequent facts ?
2d. Has the assignment to, and vesting of, the said firstmentioned license in the said partnership of more than twelve persons, invalidated the letters patent of itself and without reference to the other facts stated ?
3d. Has the grant of the said twelve last-mentioned exclusive licenses, or of any and which of them, invalidated the said letters patent?
4th. If the third question should be answered in the affirmative, would the result be the same if the last of the twelve licenses had been granted to a less number than twelve persons?
5th. If all the grantees of all the licensees were to coalesce and become jointly interested in such licenses, would the letters patent be thereby invalidated, if not otherwise invalidated ?
6th. Would the letters patent, if not otherwise invalidated, have been so if the districts covered by the licenses had included the whole of England, Wales, and Berwick-upon-Tweed?
7th. Would they have been so if such districts had included the whole of England, Wales, Berwick-upon-Tweed, and the Colonies ?
Roupell, for the plaintiff: The points for the consideration of the court are in substance two only-1st. Whether, under the present form in which patents are granted, as contrasted with the form in use before the year 1832, an exclusive license to use a patent invention can or cannot be legally granted, and so as not to invalidate the patent when the patent itself is invested in twelve persons. 2d. Whether an exclusive license, if granted, can be legally assigned so as to become vested in more than twelve persons without invalidating the patent. He was proceeding to argue these points, when he was stopped by the court, who called upon
Rotch, for the defendants. [Parke, B.: Do you mean to contend that the license is to be considered as part of the patent? If not, how can it invalidate it?] That has been considered as doubtful, and is untouched by any decision. He intimated that the parties merely wished to have the opinion of the court.
The court expressed a decided opinion that an exclusive license was no more than a common license, and that it was wholly immaterial to the validity of the patent in what number of persons a license was vested, whether such license were an exclusive license or not; and they said, that the questions must all be answered in the negative except the fourth, which required no answer, not having arisen before the court.
of the court com in which patents, 1832, an exclusived and