Pleas.

Notice of objec

tions.

was not a new invention or manufacture within the realm, but had been and was publicly practised and used by others before and at the date of the said letters patent.

The following was the notice of objections:-1. That the said E. G. was not the first and true inventor of the said improvements, for which the patent in the declaration mentioned is alleged to be in force, but that all said improvements before the date and grant of the said letters patent had been and were invented, used, and in practice, by Messrs. M. and F., or one of them. And that the use of divided floats, applied according to the principle or mode described in the writing or specification in the declaration mentioned, was discovered, invented, and in practice, by the said Messrs. M. and F., or some or one of them, before the date and grant of the said letters patent. 2. That the said alleged invention, for which said patent was granted, is not an invention of any new manufacture within this realm, but is merely an invention of a principle; that is to say, the principle of arranging the floats of paddle wheels in divided portions, and in a form calculated to displace the least possible quantity of water in their immersion, and not for any specific means of applying that principle to practical purposes; and that said patent is calculated to prevent the said principle from being investigated and usefully applied by others. 3. And that the specification of said patent does not sufficiently describe and ascertain the nature of the invention, and in what manner the same was or is to be performed; and is ambiguous, obscure, and insufficient in this, that the specification does not give or suggest any specific means of determining the supposed point, called (in the drawings accompanying said specification, No. 1), at which it is necessary to place the floats at a less angle to the radius of the wheel than the angle Ide; nor does said specification state or show at what angle it is that said patentee places the bars or floats in such positions, that they will be nearer to each other than said position therein called d to l; nor does said specification state or show at what angle, or in what line, whether curved or straight, said bars or floats are to be placed, when the space between any two of them would be too great if arranged in the cycloidal form. 4. And that the principle of the said patent, and the application of that principle, had, previously to the date and grant of said letters patent, been discovered and known and used by Messrs. M. and F., or one of them; and also that said specification is too large and extensive, and claims too much, inasmuch as it includes a certain invention of a similar kind, made, used, and put in practice, previously to the date and grant of the said letters patent, by the said Messrs. M. and F., or one of them, and would, if valid, prevent the exercise of the said invention.

Sir J. Campbell, A. G., Richards, and M. Smith, were counsel

for the plaintiffs; M. D. Hill and R. Alexander, for the defendant. The nature of the case and the evidence will sufficiently appear from the summing up of the learned judge.

Sir N. TINDAL, C.J.: Gentlemen, this is an action against The summing the Secretary to the Commercial Steam Packet Company, to "p. recover nominal damages for the infringement of a patent for certain improvements in paddle wheels for propelling vessels. In answer to this action the defendants set up three grounds of defence: First, they say they are not guilty, that is, in other words, that the paddle wheels they have employed in the 'Chieftain,' and the other ship called the 'Grand Turk,' are not an infringement of the patent; then they say that the nature of the invention, and the manner of its performance, have not been truly described in the specification. Now that is a good answer in point of law; it is a condition on which the party to whom the patent is granted obtained it; and it being a condition, it must be performed strictly, that is, he must communicate by his specification to the world, a sufficient mode of making this improvement, of which he has the exclusive privilege for the fourteen years, in order that, when the patent has expired, the public may have the full benefit of it on reference to that specification. The third and remaining ground of the defence is, that the supposed invention was not a new invention, but was used in England before the grant of the patent; that again is a sufficient answer to the validity of the patent, if the crown was deceived, intending only to grant a patent to the original inventor of a commodity or thing that was not generally known or used in England before.

Now, with respect to the first, that the wheel is not an in- As to the infringement-that the paddle wheel used by the defendants is no fringement.. infringement of the patent granted to Mr. Galloway-the evidence lies in a very narrow compass. There have been two witnesses called on the part of the plaintiffs, viz. Mr. Carpmael and Mr. Cottam, and they were asked, having read the specification and seen the model which was produced before them, whether the wheels of the Grand Turk' and the Chieftain' are not an infringement, a copy made after and agreeing with the principle laid down in the patent; and they unequivocally say, they think they are. No witnesses have been called on the other side to whom that question has been distinctly put, who have been asked whether they believe it to be an infringement or not, but every witness was asked this question, whether it agreed with a certain wheel that had been supposed to be invented or discovered by Mr. Field, in 1833, and put on board the 'Endeavour.' That was the way in which every question was put; not a distinct question so as to bring forth a distinct answer on the subject of the infringement, but putting it in that collateral way, meaning, as the defendants contend, that the plaintiff's inven

The summing up.

As to the suf

ficiency of the specification. A studied or manifest am

biguity will

vitiate.

tion is borrowed from the one which was known before; virtually, therefore, they wish to show that the two inventions were in fact the same; but it certainly appears to me, that as they did not put the question distinctly and directly, whether, in the opinion and judgment of the defendants' witnesses, such infringement had taken place or not, that they rather fortified the plaintiff's case than weakened it, by drawing out from their witnesses, that it was made on the same principle as the wheel that was put on board the 'Endeavour,' it being a main part of their case that this was a discovery which the plaintiff Galloway has since adopted and got a patent for.

The next answer that is put on the record is, that the plaintiff Galloway did not so describe the matter in the specification as by law he was required; that he has not, in the language of the plea, truly described his invention; and if there is a want of clearness, so that the public cannot afterwards avail themselves of it, much more if there is any studied ambiguity in it, so as to conceal from the public that which the patentee for a term is enjoying the exclusive benefit of, no doubt the patent itself would be completely void. This is also a question to be determined on the evidence brought before you. If it had ap peared on the face of this specification, that it was so manifestly ambiguous in the terms used, as that no person of ordinary sense and judgment on reading it could make out what the party professed to disclose and was bound to disclose, then the specification would not be a compliance with the patent; but it does not appear to me at all, upon looking at it, that there is such doubt and difficulty in the construction of the specification itself. There has been a great deal of stress laid on what we heard so often-the coincidence of the rolling cylinder, which is to represent the rate of going of the vessel, and the wheel which forms the circle or boundary of the lower part of the floats-and a great many observations have been made, that certain cases that may occur are not provided for in the specification. It does not, I confess, appear to me on the face of the specification that such is the necessary conclusion, because you are to take it, not by itself, but with reference to the figures; and when you look at that figure which is called Fig. 1, and compare it with the statement made in the specification, I confess I am unable to say, on merely perusing it, which is all I am bound to say, that there is that degree of difficulty, or, in fact, that I feel any great difficulty, on the subject. But the main question on this point is for you, and that is, whether it is such a fair and clear statement, that a person with a competent degree of knowledge upon the subject-matter to which the patent relates, would be able to make that which the plaintiff now enjoys the exclusive privilege of. The two first witnesses state, that in their judgment, a perusal of this by a workman, employed in

manufactures of this nature and description, would qualify him A. D. 1839. to make a wheel of the nature of those, in the same manner, and with the same properties as those, which the plaintiff at present enjoys under the patent. I do not find that even that is broken in upon by the other side, for there is no witness called to whom that question is put, except Mr. Field; and Mr. Field's answer to one part of it, where the question is put to him, is this-he says, "I have read the specification, and looking at the specification (which was the main point that was put to him about the rolling circle), I think the rolling circle and the inner circle of the floats are intended to be the same circle." He says, it is not expressed in the specification, whether d belonged to the rolling circle of the edges of the floats. If it belonged to the rolling circle, all he says is this, I do not think a workman would know whether the point d was the point belonging to the inner circle, or the rolling circle:-that is his judgment. If you have had an opportunity of looking at the figures as connected with the specification, I confess in my mind it does not appear a subject-matter of doubt that that d is the point that is formed by the surface of the common radial float with that inner circle, and this only gives you the point upon which to set off, on such occasion, to form your cycloid for the new form of floats, provided that may or may not be the case.

tion being in use before and

the patent being granted.

Now, gentlemen, the third and last is the main point in this As to the invencase, whether this was an invention new at the time, or whether this improvement was new as to the public use and exercise at the time of thereof in England. The date that I have to call your attention to is the date of the patent, namely, the 18th of August, 1835; what you have to ask yourselves is, whether, on the evidence, that which Mr. Galloway has described in his specification was new at that time; or whether it was known and practised before in the realm of England. Undoubtedly, if it was, there is an end of the patent; upon that point the law is undoubtedly now understood to be this—a mere experiment, or Experiment not a mere course of experiments, for the purpose of producing a brought to completion, or result which is not brought to its completion, but begins and conducted to a ends in uncertain experiments-that is not such an invention full result, will as should prevent another person, who is more successful, or patent of a more pursues with greater industry the chain in the line that has successful perbeen laid out for him by the preceding inventor, from availing line. himself of it, and having the benefit of it; therefore, the main point in this case is, whether all that is allowed to have been done by Mr. Field rested in experiment, and unsuccessful experiment not conducted to its full result, or whether it was a complete discovery of that which now forms the subject-matter of the patent. On that, the evidence of Mr. Carpmael and Mr. Cottam is, as you will suppose, only general, because they are called to negative that this was known before. Therefore,

not vitiate the

son in the same

The summing up.

The plaintiff can only make

a prima facie

case of novelty

all they can say is, that they are people who are conversant with subjects of this description, and pass their time and part of their lives in understanding the nature of patents, and in following up and discovering what are the inventions that are going on from week to week-and all that they say is, that they had not before heard that there had been such a discovery previously to the issuing of the patent in August, 1835. Therefore, that is enough to call on the other side, to show affirmatively, that it was not new, that it was an old matter, and used and exercised before within the realm of England, and you must say whether the evidence which they have brought before you, the way in which it seems to me it ought to be understood, has brought your minds to that conclusion, or not. That is a mere question of fact which you must decide for yourselves.

Upon that, Mr. Field is first called, and gives an account of all that he had done, in the way of invention, and carrying that invention to the purposes of practice, and the account he gives is this; he says, "In the year 1833, I made an improved wheel, a model of which I took to the Admiralty." Then he gives you the original model that he made at that time; he says, "This is the one I made it from, and I conceived the idea of dividing the board into a curve, which curve I obtained by holding my pencil at the edge of the supposed water line; I then placed the same quantity of surface of paddle in four bars, that is, a cycloidal curve." Then he says, "This model shows it better, that is the new model that I made; at that period we were employed by the Admiralty, and had just completed six large steam engines. I wrote to the Admiralty." Then he says, in consequence of that, he afterwards went and attended there. He says, "The model was produced and explained by myself and partner to the Admiralty; they were much pleased, and they determined to adopt it; they said, the next vessel that arrived should have the improvement." A vessel did arrive; however, he had not at that time the vessel, because it did not happen to be of their own make, but some other person's. And then he says, "The model remained about a week in the Admiralty; we kept it in the drawing office of our manufactory; we showed it to any one that came who wished to see it, and to any persons concerned in steam vessels." Then he goes on to say, "I made an experiment myself, in a small vessel of our own." The The question is, question you are to determine is, whether on the evidence the thing itself was complete, so as to be used, or whether only a series of experiments were going on? Up to this time the model had been shown, but not any actual paddle-wheel made, much less up to the time we are now discussing had any one been applied to any real practical use. Now comes in, what he calls himself, an experiment-"In a small vessel of our own, the Endeavour,' which is a steamer from London to Richmond;

whether the invention was

complete.