on the record for than the issue.

other purposes

specific allega- the jury have found that issue in favour of the plaintiff, it does tion, upon which an issue in fact not appear to me that the defendants can afterwards turn round is taken, is not and make that which was only inducement and not issue, a substantive ground of allegation upon the record of the invalidity of the patent itself. Such appears to my mind at present to be the proper reasoning upon it, but there it is upon the record if the parties upon further consideration should think me wrong. Therefore, upon the whole, I think the judgment must be given for the plaintiff.

COLTMAN, J.: It appears to me that in this case there is no sufficient ground for a new trial. As to the first issue which went to the jury, whether the defendants were guilty or not of an infringement, the main pressure of the argument upon that point, as I understand it, has been this-that the jury were misled, and induced to consider that the question for their determination was, whether the manufactured article of Messrs. Potter and Horsfall was an imitation of the manufactured article of Mr. Walton, rather than whether it was an infringement of his patent; and that was founded chiefly upon this, that it was treated, as it is alleged, in the course of the argument on one side, and the other, as if the use of the non-elastic linen at the back of the card was an essential part of the patent; and it is said that it was not so that the patent was merely for the simple application of caoutchouc as the fillet, and that the cotton and linen at the back of it is no part whatsoever of the patent, or of that which is claimed as the patent, but only a part of the manufactured article which is produced; but, I confess, I do not accede to that view of the patent, because the terms of the specification being, "I confine my claim of invention to the application and adaptation of caoutchouc as the fillet in which the dents or teeth are to be set together, as above described"-that does appear to me to be, not simply a claim to the use of caoutchouc, but to the adaptation of it to the reception of the dents or teeth by putting at the back of it a linen cloth, which in the original manufacture is proved to be an essential part of the invention; for although the cloth may be removed afterwards, yet it is by means of having some stiff and permanent substance of that nature that the dents are to be inserted into the caoutchouc, the caoutchouc of itself being a matter so elastic. Therefore, there is something more than the simple application of caoutchouc to the manufacture of a card and the inserting of the dents in the fillet. So that it appears to me, there is nothing in the application of the argument arising from the use of the linen at the back of the fillet which should lead me to say, that the jury have been misled or induced to take a wrong view of this matter when they found their verdict that the defendants were guilty of an infringement.

As to the second plea, that the plaintiff was not the first

inventor, certainly it seems the evidence is quite satisfactory, A.D. 1841. ̧ that if it was a new invention he was the inventor of it. As to the third plea, or the circumstance whether the invention was new or not, it is said it was not new in respect of its similarity to Hancock's patent; but I think the answer which has been given by the court on that subject is quite satisfactory, and that any other verdict by the jury upon that point would have been wrong, because in Hancock's patent, although undoubtedly caoutchouc is used, yet it was chemically combined in a way which entirely destroyed its properties as caoutchouc, and made it a perfectly different substance-as different as water from the gases of which it is compounded; and there is this peculiarity in that patent, that according to no chemical process that is known could the caoutchouc, after being reduced to the state to which Hancock reduced it, be afterwards brought again into the state of caoutchouc; it had permanently ceased to be that which has the chemical qualities or the natural properties of caoutchouc. With regard also to the other question, that the patent does not apply to top cards and sheet cards, it appears to me that the jury had good grounds for the verdict that they have found upon that point. It is said also in the last plea, the description in the patent is not sufficient. Upon that very little stress has been laid in the argument, and I think, upon the whole, there is no ground for saying that there is any difficulty in the understanding of this patent by a person of competent skill. Of course it cannot be expected that I should understand the parts of it in the way in which a person used to the work can, but at the same time I do not know that even an ordinary person like myself, quite unacquainted with manufactures, would find any difficulty in understanding any part of this patent. It seems to me to be explained with sufficient distinctness.

Then it is said there was a misdirection. Now, upon that, the first point is, the not putting those two questions to the jury. It appears to me those questions were the natural foundation of arguments in the course of the cause, but they were not the issues to which the attention of the jury was to be directed; and they rather seem to have been suggested for the purpose of betraying the jury into a sort of inconsistency in the verdict they should find, than questions really calculated to advance the fair trial of the cause, because, by a very dexterous mode of putting a question, there may be an apparent inconsistency in the finding upon it, and the ultimate result the jury may come to, when substantially they have understood, with all that reasonable degree of certainty with which juries can ever be supposed to understand questions of this nature, the whole bearing of the question before them.

Now, to come to the last point in the case-the question of

Judgment.

what is, or what is not, on the record. Upon that subject, I do not at all feel confident that this question is not upon the record, because it appears to me that in substance the defendants in this case have pleaded a plea, which if good is an answer to the action, and have added to it some immaterial allegation, assuming that the specification is bad (k), because they set out the specification. I am rather disposed to think that it does appear upon the record; that this plea, if the specification is bad, would raise that question. Then, though they have gone to trial upon an immaterial issue, I do not feel confident, if the plea were good, that the right course would be to give judgment against the defendants upon that point. But it appears to me that in this case the plea is not good, because I think the patent is a valid patent. It is true that the invention is very simple in its nature; but upon the best consideration I can give to this subject, I think, though it is a very simple adaptation of caoutchouc as a fillet, still it is an adaptation of The adaptation caoutchouc as a fillet, in a manner not practised before; a subof a substance stance, indeed, well known before, but whose properties and perties to a par- qualities for the purpose of being adapted to this particular ticular purpose, purpose had never been known or used before; and, therefore, letters patent. it was properly the subject of a patent; and if it were properly the subject of a patent, then it becomes quite immaterial to see whether, if a different conclusion were come to upon the subject of this specification, the question does or does not arise upon this record.

of known pro

the subject of

ERSKINE, J.: I am also of opinion that this rule should be discharged. It has been applied for on several grounds. First of all, an application has been made to enter a verdict for the defendants; secondly, to have a new trial; or thirdly, to have the judgment arrested, on the ground that the subject-matter of the invention claimed by the plaintiff in his specification is not a legal subject of a patent. As to whether a verdict should be entered for the defendants, or whether a new trial should be granted, both turn upon the same question, namely, whether there is any issue upon this record to raise this question before the jury? Because, if there is no issue upon the record to raise this question before the jury, it could not be a misdirec tion of my lord, who tried this cause, omitting to state to the jury whether this was, according to the specification, a fit subject of a patent or not; and, of course, there can be no verdict

(k) The learned judge, it is conceived, must be understood to speak of the specification being bad, by reason of its not disclosing a sufficient invention as the subject-matter of letters patent. The specification may be good, as a sufficient compliance with the proviso, inasmuch as it particule

scribes and ascertains the nature of

the invention, and in what manner the same is
to be performed; but the invention so disclosed
and described may not be the subject-matter of
letters patent; it may be, as expressed by the
Lord Chief Justice, an abstract principle,
may be an invention not within the scope of the
patent laws.

or it

of the invention

entered for the defendants if there were no issue upon the record A.D. 1841. to raise that question. Now, it appears to me there is no issue upon the record to raise the question before the jury, whether this was a fit subject for a patent; because the only plea upon which it is attempted to be raised is the third plea, and that plea does not assert, as the defendants might have asserted, that The plea denythis invention was not a new manufacture within the statute of ing the novelty James, upon which the plaintiff might, by demurring, have admits that it is raised the question of law; or might, by plea, have put the defendants to demur: but it is an averment, that this invention was not new as far as regards the public use; admitting therefore, in substance, that it was such a manufacture as might have formed the subject of a patent, yet that it was an old manufacture known before, and therefore that the plaintiff, in point of fact, would fail by the proof that it was not a new invention, and that he was not the inventor of it.

Then as to the question-whether the judgment should not be arrested on the same ground, that depends, first, upon the construction and effect of the fourth plea, and next upon the legal effect of the specification set out upon that plea, if the plea is sufficient to raise that question of law; but I agree with my Lord Chief Justice, that the fourth plea is not sufficient to raise that question of law; therefore, upon the point of law, I shall forbear giving my opinion. Now the fourth plea sets out the specification, and then avers that sheet cards and top cards were useless according to the specification; that this invention is useless as regards sheet cards and top cards. To this the plaintiff might have replied, either denying that this was the specification that he had enrolled, and setting out some other specification which he had enrolled, in which the matter alleged here as a legal defect might have been cured, or he might have taken issue upon the facts alleged as to the utility of the patent with respect to sheet cards and top cards. He chooses the latter course, and for the purpose of trying that question he admits that this is the specification to which he alludes in his declaration, and therefore, as far as this question is concerned, he is willing to abide by this specification: but it does not appear to me that he admits it for any other purpose, and therefore we are not at liberty to look to that specification, as set out in this plea, for the purpose of deciding whether this is, in point of law, a good patent or not.

Then if, as, according to my opinion, the defendants rightly failed upon the ground, that this is not the subject of a patent, the other questions arise, and then the defendants say-they are entitled at all events to a new trial; first, because the verdict is a verdict against evidence; and next, because, even if the evidence might warrant the verdict, the jury were misdirected by the judge, and they have not had an opportunity of con

a manufacture.

Judgment.

consists in ren

caoutchouc for

of cards.

sidering that evidence in its proper light. Now, as to its being a verdict against evidence, it is said, that it is so upon the ground of the second and third pleas; the second being, that the plaintiff was not the inventor, and the third plea being, that it was not new in regard to its public use; and then it is said, that this process, by which the plaintiff made his cards for carding wool, was well known to the public before: that, first of all, Mr. Hancock had used it; and next, that he had actually taken out a patent for it, and had named it in his specification; but that at all events it was known to Mr. Hancock and known to the public, partly by Mr. Hancock using it, and partly by his having described it in his specification. The first question, therefore, in considering whether this was a verdict against evidence, will be to see-whether what Mr. Hancock used and described is, in substance, the same as that described by the plaintiff in his specification; and it appears to me that, looking at the principle upon which the plaintiff claims this invention, and looking upon the principle upon which Mr. Hancock claims The invention his, they are essentially different. The plaintiff claims his proof the plaintiff cess in respect to the elasticity of the India rubber, which is dering available the material he professes to use for the purpose of making these the elasticity of cards, and of applying the elasticity of this substance in a parthe purpose of ticular manner, namely, in having the India rubber, the elastic substance, next to the teeth of the card. In the course of his description of how he uses that India rubber, he specifies the employment of a piece of holland or other linen for two purposes; first, for the purpose of enabling the card maker to put in the teeth at equal distances, and next for the purpose of fixing the card to the machine, if it be not cemented to the machine; but still his principle is the placing India rubber, as a very elastic substance, next to the teeth of the card, so that in its operation you shall have, not only the elasticity of the wire of which the teeth are made, but also the elasticity of the substance upon which the teeth in the first instance rest, using as the mode by which the elasticity is to be in some degree checked and controlled, and made useful, either the cloth at the back, or the frame of the machine at the back, if the India rubber be cemented to the machine. Well, then, what is Mr. Hancock's patent? He does not profess to have invented some substance which for its elasticity shall supersede the use of leather in the manufacture of cards, but he professes to have discovered a composition, applied to cloth, by which that new manufacture may be substituted for leather for various, and indeed for all, purposes. Now the plaintiff's invention claims for its merit, that this is a substance more elastic than leathernot that it resembles leather, but it differs from leather by being more elastic and by being more equable in its thickness, and in all its qualities. So that Hancock's plan, being merely a substi