called before us, that I am aware of, in which any experiment A. D. 1841. has actually been made with a top card or a sheet card, and has failed. A great many witnesses have been called, who have stated their judgment and opinions that it would not succeed-one is surprised that the experiment has not actually been tried. The mode in which they state that the sheet card would not succeed, is, because the sheet card requires, as I understand them, a very great lateral pressure, for the purpose of fixing it upon the cylinder; and if you give it that great lateral pressure, it seems, according to the judgment of some of them, it would have the effect of loosening or altering the position of the teeth of the different cards-that they would tear off if you put nails in on the sides of the sheets—and such would be the violence of the pull in order to bring them together, that it would tear off the edges, through which the nails went, and then they would become damaged and altogether useless. However, you have the opinions of those persons, of whom Mr. Bohannan is one and Mr. Whiteby is the other, and you have on the part of the plaintiff Mr. Cottam, and I think one or two more, who state, they see no reason why one should not be as useful as the other. Now, this question the fifth plea raises, and whatever the value of it is, it will be necessary for you to determine it on the one side or the other.

Gentlemen, that is in effect the whole of the case for your inquiry; I can fill up that by going through the whole of my notes of the evidence on the one side and the other, if you wish it-if not, perhaps it is better to leave it to you, with this general view (e). Verdict for the plaintiff.

IN THE COMMON PLEAS.

Cor. Sir N. C. Tindal, C.J.; Coltman, J.; Erskine, J.; Maule, J. Nov. 18, 1841.

Sir T. Wilde, Bompas, Sergt., and Addison, showed cause against a rule nisi obtained in Easter Term last by Channel, Sergt.,

(e) The jury having intimated that they did not wish the whole of the evidence to be gone through, the counsel for the defendants requested the learned judge to leave to the jury the two following questions. 1. Whether the mode adopted by the defendants of saturating the cloth with dissolved India rubber was not known to Mr. Hancock, and practised by him before the date of the plaintiff's patent? 2. Whether or not, if the teeth were fixed in the fillet and then cemented to the cylinder, without any linen at the back, it

would answer the purpose of a sheet card? The counsel for the plaintiff objected that these two questions were neither on the record nor in the notice of objections, and the learned judge refused to leave these questions to the jury.

The defendants had leave reserved to enter a nonsuit, on the ground that it appeared from the specification that the alleged invention was not the subject-matter of letters patent, if that ground of objection was open to the defendants on the record.

Judgment.

to enter a verdict for the defendants (f), or to arrest the judgment, or for a new trial, on the grounds of misdirection and verdict against evidence.

The judgment was sought to be arrested on the ground that the invention was not the subject-matter of letters patent, being the application of a known substance to a purpose and in a manner well known, and it was contended on the part of the defendants, that this objection was open to the defendants both under the third and fourth pleas (g). On the part of the plaintiff it was contended that this objection was not open to the defendants; that the specification having been set out in the fourth plea as inducement to an allegation upon which an issue of fact had been taken and disposed of by the jury in favour of the plaintiff, the plea was altogether disposed of, and the defendants could not resort to the introductory matter for the purpose of raising an objection, which if intended to be raised should have been pleaded in a proper manner (h). That to admit of recourse being had to matter so stated as inducement, would be a violation of the rule of pleading, that matter not traversed in one plea was only admitted for the purposes of that plea.

The alleged misdirection was the refusal of the learned judge to leave certain specific questions to the jury, in addition to the issues on the record (i).

TINDAL, C.J.: I shall say but little in this case, because it is, in effect, an appeal from the direction I gave to the jury on the trial of the cause, and I would much rather hear the opinions of my brethren upon that, than rely much upon my individual judgment. I am bound, however, to state generally what the opinion I have formed is as to the effect of the verdict.

I take the motion to proceed, first, upon the ground that the

(f) The leave reserved at the trial was to enter a nonsuit, on the ground of the invention disclosed not being the subject-matter of letters patent, if that objection was open to the defendants on the pleadings. Ante 597, n. e.

(g) The court being of opinion that this objection was not open to the defendants, no express decision took place on the question, whether the invention was the subject-matter of letters patent; but it is evident from the judgment of the court and from the course of the argument, that no doubt was entertained on this point. (See remarks of Cresswell, J., post 620.) It is clear that caoutchouc, cards, and the various processes and modes described, were well known, but they had not been combined, applied, and adapted for the manufacture of a card in which elasticity was the essential characteristic.

In the course of the argument the court intimated that the third plea must be taken to admit that the invention was a manufacture, and might

be the subject-matter of letters patent, but denied its novelty; and to assert simply, that the article had been used before-also, that the assertion, that the invention was not the subject-matter of letters patent, meant, that if ever so new or useful, it was for some other reason, as being too simple, or too abstract, or from its peculiar character and nature, not the class or kind of thing intended to be protected by the statute of James.

(h) The defendants, in addition to the third plea (ante), wished to plead, "That the said invention was not at the time of making the said letters patent or petition a new manufacture within the realm of England, according to the form of the statute." A judge at chambers refused to allow this plea together with the third, and the defendants elected to rely on the latter. The ad. ditional plea in the subsequent case of Walton. Bateman, post 613, differed from the plea sought to be pleaded in this case.

(i) See the questions, ante 597, n. e.

verdict of the jury upon the several pleas that were put upon A.D. 1841 the record is against the evidence; secondly, that in the course and progress of the trial there was a misdirection on my part to the jury; and, thirdly, that on the face of the record itself there is that which shows the invention is not the subject-matter of a patent within the statute of James.

With respect to the first ground, the cause was debated at very considerable length and with great ability by the counsel on both sides, and I think there was scarcely a point that arose upon the evidence which was not submitted in its turn to the jury, according to the particular view which the respective counsel entertained of it. It was a case in which there was a considerable body of evidence on both sides, and the jury were to form upon the issues that were before them a just conclusion according to the preponderance of the evidence, and I must say, I see no reason whatever to be dissatisfied with the conclusion at which they arrived. They were first to say, upon the plea of not guilty, whether the mode which had been used by the defendants was virtually and substantially the same as that described in the plaintiff's specification-a mere matter of fact upon which they had the evidence of the plaintiff's and the defendants' witnesses, and they arrived at the conclusion, that the defendants had borrowed their mode from that described in the plaintiff's specification.

Then, upon the two next pleas, the question that was specifically raised for their determination was-whether this was a new invention, or whether it was known before the time when the plaintiff obtained his patent, and they determined, as far as the public use was concerned, that it was new, and not known in England before the date of that patent; and I see no reason for saying, that after they have exercised their judgment upon it, and had the patent of Hancock fully explained to them, and arrived at that conclusion, we should set it aside, and send the case to a new trial. Then there was only one other issue which is material, which was-whether sheet cards and top cards were useful or not, according to the mode of adaptation described in the specification; and upon that they also found their verdict for the plaintiff the evidence upon that point being of the actual user of sheet cards and top cards and the trial of experiments, though, perhaps, since the action was brought, yet still bearing upon the question-the same subject-matter which produced the same results. There being, therefore, on the part of the plaintiff, positive evidence that it would answer for the purpose of sheet cards and top cards, and on the part of the defendants nothing but judgment and belief that it would not, why are we to set the verdict aside? Therefore, as far as that ground comes into consideration, I think the cause ought not

Judgment.

to be sent back to another jury for the purpose of a second trial.

Then, was there any misdirection? I take the grounds of misdirection, which have been pointed out in the course of the argument, to be these: first, that two certain questions, which at the close of my summing up to the jury the learned counsel for the defendants wished me to ask the specific opinion of the jury upon, I declined putting to them; and secondly, that I ought to have told the jury that, looking at the whole of the patent and the specification, this was not the subject-matter of a patent within the statute of James. With respect to the first point it appears, I think, almost to be admitted in argument, that there was no necessity that I should put to the jury any specific questions which suggested themselves to the minds of the counsel. If they were points which I had overlooked in the course of my summing up, it would be very well to remind me of them, and to request that they should be put more pointedly than they had been in the course of such statement of the evidence to the jury; but it is a very inconvenient thing indeed, if after the cause has been left to the jury upon the specific issues raised upon the record, certain insulated questions should obtain specific answers, and come back to the court out of which the record proceeded. It may sometimes be useful and necessary. very In many cases where the jury may come to a decision upon a point upon two different grounds distinct from each other, and it does not appear what If the parties was passing in their minds, or whether they found their verdict consent, the jury on one ground or the other, with the consent of the parties, but the grounds of not without, if the jury choose to give an answer to the quesnot otherwise. tion, it may be useful to ask, whether they are satisfied that

may be asked

their verdict, but

such a point was proved in the affirmative, or to answer some question according to the circumstances of the case upon which the verdict may turn; but that is to be exercised, I think, very sparingly, because otherwise the counsel for the defendant may put his two questions, and the counsel for the plaintiff may put two more, and the consequence would be, not that a special verdict would be found by the jury, where all the facts would be before the court, the law being to be determined by it, but certain insulated facts, not embodying the whole, would be found by the jury, which might produce more intricacy and confusion rather than be a real and effectual help in ascertaining the points that were joined in issue between the parties. Therefore, I cannot think, as at present advised, that I did improperly, or indeed unwisely, in declining at that period of the trial to leave these questions to the jury.

I come now to the second ground upon which it is contended that there was a misdirection. I am not prepared to deny-on

not a new ma

a manufac

ture, and puts

the contrary, am ready to admit-that if there were an issue A.D. 1841. raised upon the record, which involved the validity of the patent, I was bound to give my opinion, one way or the other, to the jury, that it was a void or a valid patent; but looking at these issues I do not see any one which raises the questionwhether this was, in the sense in which it has been argued before us, a manufacture within the meaning of the statute of James, that is, in effect, whether the invention is one for which, in point of law, a patent can be granted—as for instance, whether it is a mere abstract principle not embodied at all, or The plea that not involving any combination or process to carry it into effect, the invention is or any other objection of that nature. The one that comes nufacture nearest to it is the third issue, which is, merely whether it is a known in England, admits the new manufacture known in England in the exercise and practice invention to be thereof at the time the patent was granted; but that directs the mind of any person who looks at it to a very different in- in issue the quiry from that involving the question-whether the invention novelty. is, within the meaning of the statute of James, a manufacture for which a patent may be granted-taking it for granted that it is a manufacture, and only raising the question whether, being a manufacture, it was in public use and exercise at the time the patent was granted or not-and therefore, to leave that inquiry, and suddenly to decide upon the other in the course and progress of the trial, would be to mislead the party who had come into court to contest the question before the jury. I think there is another objection also which would equally stop me from declaring that opinion, namely, that when we look at the notice of objections delivered under the authority of the act of parliament, and out of which the court cannot go, I do not see one which is pointed to that specific ground of invalidity; but, in fact, it is no more than carrying our minds to that third plea, whether it was a new manufacture within the kingdom of England when the patent was granted; and therefore I think, upon both these points, as a matter of evidence or as a matter of direction to the jury, I should not have been warranted in raising or putting that objection to them.

Then, the last ground is—is this upon the record so that error may be assigned, and that the court may be called upon to arrest the judgment; for unless the court can be called upon to arrest the judgment, we have nothing to do but to let it pass in its ordinary course. I think, looking at the terms of the fourth plea, the question does not come properly before us. There is an allegation in that plea, that the specification which was enrolled was so and so, stating it in hæc verba. That is only used as matter of inducement upon which afterwards to state a new allegation, that top cards and sheet cards within the meaning of that specification are useless. That is the question which Matter stated in is raised upon the record, and after that has been raised, and a plea as in

ducement to a