Defendant's case. The introducer support a patent, that the invention be doing that which was always done before either by a brush or by some other means. There was a case of a chemical compound, where the party mentioned in his specification some ingredient that he did not use, and the patent was held to be void (u); but there the party deceived the crown, and I think that that case is quite distinguishable from the present. Here the party says, this is a part of my machine, but he no where says that it is essential. I think, therefore, that there is no weight in the objection. The defence was, that the mode of shearing from list to list, by means of rotary cutters, was not new at the time of the plaintiffs' patent; and it was proved, that in the year 1811, a specification was enrolled in America, for a machine to shear cloth from list to list by means of rotary cutters, and that in that year a model of an exactly similar machine was brought to England, and exhibited to three or four persons. It was also proved, that in the year 1811, Mr. Thompson, a manufacturer in Yorkshire, employed workmen to make a machine from the American specification, and that they had set about it, but that, in consequence of the Luddite riots, Mr. Thompson was afraid to have it completed. However, in answer to this, it was shown that, after the riots had ceased, the machine was left unfinished, and Mr. Thompson bought the plaintiffs' machine (x). Lord TENTERDEN, C. J.: The object of the plaintiffs' patent is a method of shearing from list to list by means of rotary cutters, and if the case rested on the evidence on the part of the plaintiffs, there is no doubt that the plaintiffs' was the first machine of this kind used in this country; but on the part of the defendant it is contended, that there is such a want of originality and novelty in the plaintiffs' machine, as will prevent their recovering in this action. It is no doubt incumbent on the plaintiffs to show that their is the inventor; machine is new, but it is not necessary that they should have it is sufficient to invented it from their own heads; it is sufficient that it should be new as to the general use and public exercise in this kingnew as to gene- dom. If it were shown that the plaintiffs had borrowed from ral use and pub- some one else, then, of course, their patent would fail. To show that the machine was not new, evidence is given that a model has been seen by three or four persons, and that the making of a similar machine was begun; but it appears to me, lic exercise. (u) The case supposed to be referred to is Turner v. Winter, 1 T. R.. 602, & ante 77. (r) It is stated in 4 Newton, Lon. J. 146, 2d Series, to have been given in evidence at the trial, that a person named Jones, a cloth-dresser, employed for several months several machines of this kind, having rotary cutters, shearing from list to list, in his factory at Bermondsey, nearly twenty years ago. Evidence of a similar kind is stated by Mr. Godson to have been given on the above trial. Godson on Patents, 43, 2d Ed. This fact is not adverted to by the Lord Chief Justice, or on the argument, and if the evidence were believed it shows an abandonment of the mode, and raises a strong presumption, that, as compared with what the plaintiff's had done, this was only an experi ment. See per Sir N. Tindal, C.J, post 508, and next note. that the defendant has failed to prove that such a machine was generally known or generally used in England, before the taking out of this patent by the plaintiffs (y). Verdict for the plaintiffs. Damages £200 (z). LEWIS & ANOTHER v. MARLING. Cor. Lord Tenterden, C. J.; Bailey, J.; Parke, J. [10 B. & C. 22; 4 Car. & P. 57.] Motion for a new trial. proved machine of it which that this did not cation not de essential to the machine. Where it appeared in evidence, that the patentee Case for infringing a patent granted to the plaintiffs for im- Where a paten provements on shearing machines, for shearing or cropping tee of an imwoollen and other cloths. Plea, not guilty. At the trial before claimed as his Lord Tenterden, C. J., at the Westminster sittings after last invention a part Trinity Term, it appeared that the patent in question was turned out to be granted in 1818, and the plaintiffs in their specification, which useless, held was accompanied by a drawing, claimed as their invention, vitiate the pathirdly, the application of a proper substance, fixed on or in the tent, the specificylinder A, to brush the surface of the cloth to be shorn; and scribing it as fourthly, the described method of shearing cloth across from list to list by a rotary cutter. The brush for the surface of the cloth was soon found to be useless, and the plaintiffs never sold any machines with it. On this ground the defendant contended that they had claimed too much, and therefore the patent was brought into use void. As to the fourth thing claimed, the defendant contended the machine for which the pathat it was not new, and proved that a similar machine was in tent was grantuse at New York twenty years ago, and that a specification of it ed, but before was sent over in 1811, to one Thompson, residing at Leeds, who other persons employed two engineers to manufacture a machine from it; but had seen a mothis was never finished, in consequence of the disturbances made fication of such by the Luddites. This specification was shown to several which were persons, but the machine was never brought into use. It ap- brought over peared also that in 1816, a model for a machine to shear from held, that the list to list, by means of a rotary cutter, was brought over from patentee was, invented and that time several del and a speci from America; (y) This direction of the learned Chief Justice as to a general use and knowledge has been disputed on high authority. It appears admitted that the use or exercise must be public, but it is much doubted whether the use or exercise need be at all general in order to vitiate a subsequent patent. See in Cornish v. Keene, post, and Carpenter v. Smith. See the observations of the same learned judge on the motion for a new trial. (1) I am not aware of any subsequent case in which a plaintiff has recovered more than nominal damages. The damages are generally obtained by way of account in equity; but there is no reason why real damages should not be recovered at law, as has been done in several earlier cases. The provisions of the act 5 & 6 W. 4, c. 83, s. 3, giving treble costs in second actions, which provisions are now, however, substantially repealed by 6 Vict. c. 97, acted as a penalty against subsequent infringers, and in lieu of damages. be considered the inventor within the meaning of the statute 21 Jac.1, nevertheless, to America by one Smith, and he showed it to three or four persons in his manufactory, but no machine was ever made from it, nor was it publicly known to exist, and Smith always used machines manufactured by the plaintiffs. It appeared also, that many years ago one Coxon had made a machine to shear from list to list, which was tried by a person called on behalf of the defendant, but he did not think it answered, and soon discontinued the use of it (a). For the defendant it was c. 3, s. 6, no machine having been manufactured and brought into use from the cification, and evidence that model and spe- contended that this evidence deprived the plaintiffs of the right there being no to a patent, as their invention was not new. Lord Tenterden, C. J., told the jury, that the first objection failed, as the plainthe patentee had ever seen them. tiffs had not described the brush to be attached to the cylinder as an essential part of their invention, and therefore the patent might be good, although further investigation proved that part of the invention to be useless. And as to the other, that as the invention of the machine for shearing from list to list by a rotary cutter had not been generally used or known in this country, the plaintiffs might be considered the inventors within the meaning of the statute 21 Jac. 1, c. 3, s. 6, notwithstanding the specification and the model which had been brought over from America, and the making of a machine to work in that manner by Coxon; and his lordship left to the jury the questions, whether it had been generally known, and whether the patent had been infringed by the defendant. The jury found a verdict for the plaintiffs; and now— F. Pollock moved for a rule nisi for a new trial, on the grounds urged at the trial. First, the patent was void on the ground that the plaintiffs claimed as part of their invention the application of a brush for the purpose of raising the nap on the cloth. That proved to be entirely useless, if not prejudicial, and, in fact, they never sold any machines with the brush attached. The public, therefore, would be misled, if at the expiration of the time for which the patent was granted, they attempted to manufacture a machine on the patent principle. The answer given to this objection at the trial was, that the specification did not describe the brush as an essential part of the machine. But that is no answer in law, the defendant has a right to consider the case as if the patent had been taken out for that only. In every patent all that is claimed must be new and useful. Turner v. Winter (b), Crompton v. Ibbotson (c). [Parke, J.: The specification there stated that a certain article would produce the desired effect. The evidence was, that nothing else would do it.] Secondly, Lord Tenterden did not leave the question of novelty to the jury in the manner warranted (a) See ante 492, n. r, as to other evidence of thas same kind having been given. (b) 1 T. R. 609; ante 77. by former decisions. The substance of the invention was the application of a rotary cutter in shearing cloth from list to list. The evidence was, that thirty years ago one Coxon made such a machine; in 1811 a specification, in which that principle was stated, was brought over from America, and a machine commenced, but never finished. In 1816 a model of such a machine was brought over, and although no machine was made from it, the model was shown to various persons. The person who brought it over could not, after that, have maintained a patent for it; and if he could not, it is difficult to understand why the plaintiffs should be in a better situation. [Parke, J.: It might be new in use, although the principle was known before.] Affidavits were then produced as to the knowledge of that whereof the plaintiffs claimed to be inventors before the patent was granted. Lord TENTERDEN, C. J.: I am of opinion that we ought not to grant a rule to disturb the verdict in this case. It is con grounds for re will not be re trial. trary to the usual practice to grant a rule in such a case on affidavits. If the facts disclosed in them are sufficient to vitiate New facts, the patent, it may be repealed by scire facias (d). As to the which would be objection on the ground that the application of a brush was pealing a patent, claimed as a part of the invention, adverting to the specifica- ceived on a motion, it does not appear that the patentee says the brush is an tion for a new essential part of the machine, although he claims it as an invention. When the plaintiffs applied for the patent they had made a machine to which the brush was affixed, but before any machine was made for sale they discovered it to be unnecessary. I agree, that if the patentee mentions that as an If any thing essential ingredient in the patent article, which is not so, nor even useful, and whereby he misleads the public, his patent may to be useless, be void; but it would be very hard to say that this patent should voidable, but the patent is be void because the plaintiffs claim to be the inventors of a aliter if not decertain part of the machine not described as essential, and sential. which turns out not to be useful. Several of the cases already decided have borne hardly on the patentees, but no case has hitherto gone the length of deciding that such a claim renders a patent void, nor am I disposed to make such a precedent. The next point was, an alleged misdirection on my part to the jury. To impugn the novelty of the invention, evidence was given that one Coron had previously made a machine for shearing from list to list; but it was not approved of, and never came into use. Another piece of evidence was, that a model had been sent over from America and exhibited to a few persons, but no machine was made from it, and the very persons who had the model bought and used machines manufactured claimed as essential turn out scribed as es tor within the statute who has seen the model He is not a true by the plaintiffs. It was also proved that a specification had and first inven- been brought over from America, and two persons employed to meaning of the make a machine from it. But that was never completed, so that until the plaintiffs' invention came out, no machine was pubor specification licly known or used here for shearing from list to list. I told the jury that if it could be shown that the plaintiffs had seen the model or specification, that might answer the claim of invention, but there was no evidence of that kind, and I left it to use and opera- them to say, whether it had been in public use and operation before the granting of the patent. They found that it had not, and I think there is no reason to find fault with their verdict. of a machine subsequently patented, but which had not been in public tion. BAYLEY, J.: I think there should be no rule. However, our refusing a rule will not hinder the defendant from applying for a repeal of the patent, if he should be so advised. To support a patent it is necessary that the specification should make a full disclosure to the public. If the patentee suppresses any thing, or if he misleads, or if he does not communicate all he knows, his specification is bad. So, if he says that there are many modes of doing a thing, when in fact one only will do, this will also avoid the patent; but if he makes a full and fair communication, as far as his knowledge at the time extends, he has done all that is required. Mr. Pollock objects to that part of the specification which respects the use of the plush. Now, at the period when this specification was made, the plush was in use, and there is no reason to believe that this patentee did The subsequent not think it was a useful part of the machine. His patent is discovery that for an instrument where something of that kind was always something described may be thought material, and I am of opinion that the subsequent disdispensed with, not vitiate covery that the plush was unnecessary, is no objection to the a patent, if there validity of the patent. If the party knew that it was unnecessary the patent would be bad, on the ground that this was a deception, but if he thought it was proper, and only by a subsequent discovery finds out that it is not necessary, I think that it forms no ground of objection. has been no deception. Another ground of objection is this-it is said that communications were made from America; if it had been shown that the plaintiff had seen the model, and had borrowed from it, he would not have been the true inventor, and would, therefore, The party intro- have misled the crown: but if I make a discovery, and am enducing the in- abled to produce an effect from my own experiments, judgment, public use is the and skill, it is no objection that some one else has made a true and first in- similar discovery by his mind, unless it has become public. So vention into ventor. if I introduce a discovery, bond fide made, I may have a patent for it (e), though a person might have received privately a com (e) This principle of the patent law, that the introducer is the party entitled to the protection and privilege of letters patent, has not been so distinctly stated in any other modern case. In |