tute for leather-in which the elasticity of leather forms no A. D. 1841. ingredient according to his description, but, on the contrary, he uses materials by which his fabric would be less elastic than leather itself, for his plan is by inserting his composition between two layers of cloth, by which the elastic matter, even if it were elastic, would be confined between the two non-elastic substances-would be totally different in principle from that upon which the plaintiff rests his claim. There are, therefore, two objections to the identifying of Hancock's plan with the plaintiff's plan-first, that the composition which he makes use of is not India rubber, but India rubber mixed up with other substances, which destroy its elasticity; and next, that that composition when thus made is inserted between two nonelastic substances, instead of being next to the teeth of the card, which appears to me to be the main principle of Mr. Walton's improvement; and that is the ground upon which, as I understand it, Mr. Cowper's evidence was given, to show how that elastic principle would be of use in making cards according to Mr. Walton's process, when it would not be useful according to the process adopted by Mr. Hancock, even if the substance he had made use of had been India rubber in its original form.

Then, if this is not Mr. Hancock's plan, there is no evidence of any other plan by which India rubber was brought into use, and therefore I think, that so far from being a verdict against evidence, the jury could hardly have come to any other conclusion upon the proof that was given, that this was new as regarded public use, because there was no evidence to show it had formerly been used by others.

Then comes the issue raised upon the fourth plea, viz. that this invention was inapplicable to sheet cards and top cards. There was evidence on both sides; evidence, however, of witnesses on the defendants' part, who had not tried the experiment, but confined to judgment and belief; whilst the plaintiff's witnesses, equally entitled to credit, at least, with those on the part of the defendants, spoke of experiments that had been tried and had succeeded. It was for the jury to come to a conclusion which of them were giving the best reasons for the opinion they had formed, and I have heard nothing to convince me that the conclusion they have arrived at is wrong.

ment of the

Then there remains the first plea, by which it is denied that The defendants' the defendants had infringed the patent of the plaintiff, and that card an infringedepends upon whether the plan which the defendants have em- plaintiff's, both ployed, is in substance the same as the plaintiff's, and whether employing the elasticity of all the differences which have been introduced by them in the caoutchouc next manner of making their cards, are not merely differences in to the teeth. circumstances not material, and whether it is not in substance and effect a mere colourable evasion of the plaintiff's patent. The jury, it appears to me, have come to a right conclusion,

Judgment.

that this was in effect and substance the same as the plan of the plaintiff. The plaintiff's plan is, the insertion of the teeth through India rubber, giving to the teeth the additional elasticity of the India rubber, beyond what the wire had of itself. The defendant's plan is for the same purpose. The only difference is, that the plaintiff in employing the India rubber takes a slice either from the original block, as it is imported into this country, or from the improved block as it is used after it has been compressed, and places it upon a piece of holland, for the purpose of keeping the teeth more firmly in their places, and then afterwards placing it on the engine, by nailing that holland on the engine, or taking away the holland and cementing the India rubber to the cylinder, giving an elasticity to the teeth of the card by the India rubber which is next to them. The defendants' plan is to saturate a piece of cloth with India rubber dissolved, and then to lay upon the surface a further layer of India rubber on both sides, and then to insert the teeth through the substance of the cloth and the India rubber. But what is the principle upon which this becomes useful to the card, and the persons who employ these cards in the carding of wool? Why it is, that there is upon the surface and the substance of the cloth the elasticity of the India rubber; that the India rubber is there in its natural state, having been brought back into that natural state by the evaporation of the material in which it had been first dissolved for the purpose of first laying it on. The only difference, therefore, is in the mode of laying on the India rubber for the purpose of having it pierced by the teeth. That appears to me not to be a difference in principle, or a matter which so varies the plan of the defendants from the plan of the plaintiff, as to entitle them to call it a new invention, or different from the plaintiff's. It seems to me a mere difference in circumstances not material; and therefore it is an infringement of the plaintiff's right, and the verdict of the jury ought to stand.

But, it is said, the jury have come to this conclusion under a misdirection of my Lord Chief Justice, in not having put to them certain questions which were suggested by counsel to him. Now, it appears to me, the questions that were suggested by the counsel for the defendants were, in substance, put to the jury, so far as the issues raised any such questions for their consideration; and that it was not the duty of the judge to put them in the form which was suggested by the defendants after the summing up he had already made. If my lord had taken these questions, and put them to the jury substantively as asked by the defendants, then the plaintiff would have asked him to put further questions, according to his mode of arguing the case; and then there would have been a fresh summing up, quite in a new form, and the jury might have been confused by

these supplementary questions. What we have to look to is, A.D. 1841. what direction my lord had given before these questions were proposed, and it seems to me, he had put to the jury the questions they had to decide-had brought before them the considerations upon which those questions ought to be decided by them; and it was unnecessary for him, therefore, to go further and put the questions in the form suggested. Upon all these points, therefore, I am of opinion the verdict for the plaintiff was right, and that this rule ought to be discharged.

MAULE, J.: I also think that this rule ought to be discharged. A new trial is asked for, on the ground that the verdict was against the evidence. That will depend in some measure upon the sense in which the issues are to be understood; and what has been thrown out in the course of the argument, by my Lord Chief Justice and my learned brothers, points out what the view of the court is as to the sense of the pleas. With respect to the third plea-that it was not a new invention as to the public use-the meaning of that is, that it was not a new invention, but an old one; that, whatever it was, it might be a thing which was the subject of a patent, but it was a thing which other people had used before.

circuitous mode

With respect to the issue of not guilty, in order to determine The defendants whether or not the verdict has been correctly found for the practise by a plaintiff on that issue, it is necessary to consider what is the that which falls subject of the defendants' patent; for it is quite clear that what within the claim of the plaintiff's the defendants have done they claim to do under their patent. patent. By their specification the defendants claim to be the inventors of a new material for forming the backs of cards; and they describe the mode of preparing it thus, viz. "by repeatedly passing a woven fabric of a peculiar construction through, and saturating it with, a solution of caoutchouc or India rubber, and then drying it in order to evaporate the solvents, and leave the fabric impregnated and coated with caoutchouc or India rubber, and afterwards submitting it to pressure ;" and the object they describe as being to render the fabric so dealt with "extremely elastic in the direction of the thickness of the fabric, so as to impart, as it were, elasticity to the wire teeth when set." That is, in effect, producing by a circuitous process a cloth with a layer of caoutchouc or India rubber on each side of it, so as to give a great degree of elasticity to the basis of the dents or teeth of the card. The plaintiff, by his specification, claims the exclusive right of making cards with caoutchouc or India rubber, as the fillet, or sheet, or medium in which the dents or teeth are to be set-the object being, like that of the defendants, the attainment of a superior degree of elasticity and durability; and, in describing his mode of attaining that object, he states that he inserts the wire dents or teeth in a foundation or fillet of caoutchouc or India rubber-a slice of India rubber in its

Judgment.

The invention

no elasticity in

natural state—and that, with a view to preserve the regularity of distance and uniformity of the dents or teeth, and to render their action less uncertain, he cements to the back of the caoutchouc or India rubber a piece of brown holland or other like cloth. The plaintiff does not confine his claim to using India rubber by means of slicing it; he claims the exclusive right of making cards, by fixing the dents or teeth in India rubber, using for that purpose cloth, some texture of linen, or cotton. In some instances, he says, the cloth may be removed. That does not, in point of fact, make it less a part of the process, by which he applies cloth, for the putting the dents into the layer of India rubber. If that be so, I think it is evident the defendants claim to do a thing falling within the generality of the plaintiff's claim. Taking that to be so, the evidence is abundant to justify the jury in finding—and it seems to me to require them to find —for the plaintiff.

With respect to the issue of its not being new as to the pubof Hancock has lic use, it is alleged that Hancock's patent is the same thing; the sense of the that Hancock's patent had been used before, and, therefore, plaintiff's inven- that this is not new as to the public use. That conclusion is

tion.

perfectly just, supposing the premises to be supported; but that Hancock's patent is the same thing, is a proposition which I think is wholly untenable. Hancock's patent was for making a non-elastic substance as a substitute for leather; when I say "non-elastic," I mean only in a certain popular sense, that is, having no perceptible quantity or degree of elasticity; it was a substitute for leather, leather not being elastic. But with respect to the subject in hand, which is the application of a substance so elastic, as in a very small space to yield to so great an extent as to permit the dents, without changing the form of the material of which they are composed, easily to bend to a considerable angle from the surface upon which they are placed— with respect to that degree of elasticity, the substance produced by Hancock, or attempted to be produced by him, certainly was not elastic-it was not an elastic substance, nor was it India rubber, to which elastic substance the plaintiff confines his claim. Although Hancock used India rubber in the compound, that compound might just as well be called size, or glue, or pumice stone, or whiting, as India rubber, for all these things are used, and the result is, a substance which is none of these things, but something else, which if you wanted a short name for, you would call artificial leather.

Now, with respect to the fifth issue, as to the invention not being particularly described, it was very ably urged in argument, that if you construe the relative with reference to the last antecedent, so as to make glaring nonsense of the specification, it was not a sufficient description; but if you are allowed to employ your understanding, it would be quite intelligible. I do

not think there is any objection to the specification with respect A.D. 1841. to its want of particularity; so that, with respect to the verdict being against the evidence, I do not think there is any reason for disturbing the verdict.

Then, with respect to the arrest of judgment; for the reasons which have been thrown out during the argument, I think the question of the sufficiency of the specification-the question, whether the invention is one that is the subject-matter of a patent certainly does not arise upon the third plea, because, as I have said before, that third plea means, it is not new but old, admitting it to be a manufacture for which a patent might be granted. I think the same observation, if necessary, applies to the objection delivered in by the defendants to the plaintiff, which has been relied upon as raising this point. That objection, I think, points, and was intended to point, to the novelty of the invention. There is no doubt, in the course of this litigation between the parties, the defendants were more disposed to rely upon the difference, which superficially is considerable, between their own patent and the plaintiff's, and to insist it might stand very well with the plaintiff's, than to say, they were the same thing, and both were old, and so let them both open to the public. As to arresting the judgment on the fourth plea— the fourth plea states the specification (mentioned in the declaration to have been duly enrolled) as "a certain specification," which is set out, and then it does not allege that no other specification was enrolled, but it goes on to state, "the invention is not useful for the purpose of sheet cards and top cards," and upon that there is an issue, which has been found for the plaintiff. Now, it seems to me, upon this state of the pleadings, the de- As to the plea fendants cannot raise the question, whether this invention be to raise the question of the an invention which is the subject of a patent. Whether, sup- invention being posing they could raise it-supposing we could look at the the subject of letters patent. specification, it would raise the question, whether the invention was not a manufacture within the statute, is a question which I do not think it necessary to decide. If it was sufficient technically to raise that, there ought to have been an averment, that the invention was not an invention within the statute; but there was no such averment upon this fourth plea. It states the specification, mentioned in the declaration, to be as set out in that plea; it assumes that the specification shows an invention not within the statute, or does not show an invention within the statute. Still, it may be that the patent is good, or it may be that it is bad, for a patent may be good if the invention really was of a description within the statute, and another specification was duly enrolled. This plea does not show, whether the defendants relied upon the insufficiency of the specification, or upon the invention itself being insufficient, and after the issue has been joined and found against the defendants, I do not