think they are entitled at all to take into consideration the facts mentioned in the introductory part of the plea. The meaning of the replication is, "with respect to all the facts, except those I think fit to deny, I, the plaintiff, will not raise any question, but I deny that fact;" that fact is found for the plaintiff, and I think that puts the previous allegation of the plea entirely out of the question. But, supposing the facts had been found the other way, and those facts had been immaterial, I do not think a party who pleads a plea informally, and concludes with the averment of an immaterial fact, can afterwards, if that fact is found for him, have recourse to the previous matters in the plea in combination with the rule which provides certain liberal modes of intendment in favour of pleas not specially demurred to. This is not like a plea where there is an issue upon a material fact, or where there is a general demurrer, but the defendants state the specification here to be the specification mentioned in the declaration. It may be, therefore, that if they had concluded there, and stated that this they were ready to verify, and so shown that they relied upon the insufficiency of the specification, it may be, that upon general demurrer the plaintiff would not have been entitled in reply to say—“ you have not stated there is no other specification;” but I apprehend, he is entitled to say so, when the plea which is pleaded is one that does not require that allegation in point of form, and when he is entitled to take issue upon it. I think, therefore, that upon this plea the question-whether the invention is a novel invention, so as to be the subject of a patentis not a question which is upon the record. It often happens that the invention may be very good, and the specification very bad-and here it is the badness of the invention, and not the badness of the specification, which is suggested. Therefore, I think the judgment ought not to be arrested.

With respect to the alleged misdirection, from the two questions not being put to the jury which were suggested, I think, although it is sometimes convenient that a question not upon the record—a question of fact, not raised by any of the issues— should be put to the jury, that it is an informal proceeding, which can be only by the consent of all the parties, and that it is subject to many limits. One of them is this—that it ought to be some very short simple matter, about which there is little or no doubt, and which may be easily decided, and which it may be convenient for the parties upon a motion for a new trial, to take to have been decided one way or the other. But where it is likely to lead the jury to a wrong conclusion-where there may be a good deal said about it on both sides, and where there are actually upon the record a considerable number of questions which the jury must decide, then, I think, it ought not to be done, because, it might have the effect of creating

confusion, which may be a thing for the interest of the party A.D. 1841. who is in the wrong, but not a thing for the interest of justice; and it may very often happen that those intermediate questions, these questions of fact, which are incident to the issue to be decided upon the record, may be questions which the jury ought not to be asked. They cannot be asked, I apprehend, without their own consent; they cannot be compelled to give a verdict upon it for this reason-it may be, that there is an issue joined which involves twelve questions of fact, we will suppose, and if any one of them is found one way, that would sustain a verdict on the issue for the plaintiff or defendant. Possibly, upon each of these twelve questions of fact, there is one juryman who has no doubt at all, but would find otherwise upon the other eleven. In such a case the jury may be unanimous in finding a verdict for the plaintiff or defendant, and they ought to find for the plaintiff or defendant without further inquiry; but it may be, and most likely would be, impossible they could all agree upon some one of these facts, and the consequence would be, that they could not give a verdict, or if they did at last do so, the verdict might be against the opinion of the jury upon the rights of the parties in the whole matter. There is no rule that a verdict cannot be sustained unless each juryman arrives at his conclusion of fact by the same road. There may be several correct processes of reasoning differing from each other, in which different facts may be considered as proved by different jurymen, by which they may all arrive at the same end-that end being the issue of fact joined upon the record. Upon all these grounds, I think the rule should be discharged.

Rule discharged.

WALTON V. BATEMAN & OTHERS.

Cor. Cresswell, J.

May 10, 11, 12, 13, A.D. 1842.

This was an action for the infringement of the same patent as in the preceding case. The declaration was in the usual form, and the pleas were-1. Not guilty. 2. That the invention was Pleas. not a new invention as to the public use and exercise thereof. 3. That the invention was not a new manufacture within the meaning of the statute. 4. That the plaintiff did not in and by the said specification particularly describe and ascertain the nature of the said invention, and in what manner the same was

Notice of objec

tions.

The summing up.

to be performed. 5. That the said invention was unfit and useless for sheet cards and top cards (a).

The notice of objections was a repetition of the pleas, and also various other grounds, some of a general and others of a specific nature, upon which the defendants intended to rely (6).

Sir T. Wilde, Bompas, Sergt., and Addison, were counsel for the plaintiff; Sir W. Follett, S. G., Talfourd, Sergt., Channell, Sergt., Cowling, and Cardwell, for the defendants.

Some of the cards, sold by the defendants and alleged to be an infringement of the plaintiff's patent, were made according to the plan described in the specification of Potter & Horsfall's patent, which had been the subject of the preceding action; and others of the cards, as to the fabric into which the teeth were set, or the back of the cards, were manufactured in the manner of the Macintosh waterproof cloth, a thin film of India rubber or caoutchouc cement being spread over cloth, and five or more cemented surfaces of such cloth being placed and pressed so as to adhere together. The general nature of the evidence will appear from the following portion of the summing up of the learned judge (c).

CRESSWELL, J.: This is an action in which the plaintiff seeks to recover compensation in damages for an alleged infringement of his patent right, and before I proceed to read over to you the mass of evidence, I will endeavour to point out the law upon the subject of patents, and the manner in which the various questions are raised on this record. Gentlemen, patent rights, or rather monopolies, having for a considerable time been a subject of contention and complaint in this country, in the 21st year of James the First's reign an act of parliament was passed to put down monopolies, and to enact that all parties should be disabled from using monopolies, except in certain instances; and in the sixth section it was thus enacted-"That any declaration

(a) The defendants had applied to plead in addition to the above, the two following pleas: That the cards mentioned in the petition and letters patent were generally known previously, and that the alleged improvements were not an invention in respect of which the said letters patent could lawfully be granted-That parts of the cards so mentioned were generally known, and that the alleged improvements were not an invention in respect of which the said letters patent could lawfully be granted. But Coltman, J., at chambers, refused to allow these pleas. A rule having been obtained by the defendants calling on the plaintiff to show cause why the above order should not be rescinded, and the two pleas added; Bompas, Sergt., showed cause on the ground that nothing could be given in evidence under those pleas which would not be admissible under the third plea.

Tindal, C. J.: It seems to me that the defence which the defendants are desirous of setting up under these additional pleas, may be set up under the third plea. That plea involves, as well the question of novelty, as whether or not the alleged

invention is a manufacture within the statute of James, and therefore I think the pleas properly disallowed. 4 Scott's N. C. 397.

(b) See observations of Cresswell, J., in his summing up, post, as to the inconveniences of this form of notice of objections.

(c) At the close of the plaintiff's case, Sir W. Follett, S.G., took several objections, in point of law, to the validity of the plaintiff's patent, and amongst others the following: That if the invention was for the use of India rubber in any way for the back of cards as an elastic base, that would amount to a claim for the use of a material, and, as such, could not be the subject-matter of a patent: That the claim as to the use of the cloth was uncertain, since it did not appear whether it was essential or not. Cresswell, J., having expressed his opinion, that the specification was sufficiently clear, and that it did not claim the cloth as essential, but recommended it as an important addition, and also that the invention claimed was the subject-matter of letters patentSir W. Follett, S.G., on behalf of the defendants, tendered a bill of exceptions to such direction.

before mentioned shall not extend to any letters patent and A.D. 1842. grants of privilege for the term of fourteen years or under, hereafter made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of the making of such letters patent and grant shall not use, so as also they be not contrary to the law nor mischievous to the state by raising of the prices of commodities at home, or hurt of trade, or generally inconvenient." The power of the crown, therefore, to grant a patent is limited to such cases as are within this, which is in the nature of a proviso on the more general clause. The power is to grant the "sole working or making of a new manufacture," therefore there must be a new manufacture, "to the true and first inventor." The party obtaining the patent must be the true and first inventor in this country. If he import from a foreign country that "which others at the time of the making of such letters patent and grants did not use," it will suffice. Now that has been held (as I shall point The user which out to you more particularly by and by) to mean a user not by way of experiment, but a public user; in distinguishing which, be public, and not by way of the knowledge of the parties as to the article in use will be material for your consideration. Then, it is not to be " contrary to law or mischievous to the state." Now there is no plea upon this record stating that this is contrary to law or mischievous to the state. In one shape the question of its being contrary to law is raised, because it is alleged not to be a new manufacture, and if not a new manufacture it would be contrary to law. But what is or what is not a new manufacture in that sense, excluding the consideration of who is the first and true inventor-whether it is a manufacture within the meaning of this act, I apprehend to be a question of law, and that question, as far as I can, I have disposed of in this case, and I am happy to think that, if it is of any importance to the parties, and if they think they can successfully controvert the opinion I have expressed upon that point, they will have the opportunity of carrying it to the highest court in the kingdom, provided your verdict should make it necessary for them to do so.

Now, the plaintiff represented that he was the first and true inventor of "improvements in cards for carding wool, cotton, silk, and other fibrous substances, and for raising the pile of woollen and other cloths." That is the thing he professes to have invented-" certain improvements." That is the patent. The patent says nothing at all, nor is it necessary it should, about the particular nature of his improvements, and still less about the means by which he carries those improvements into operation. The patent grants this-" that no person shall at any time during the continuance of the term of fourteen years hereby granted, either directly or indirectly make, use, or put in

will vitiate letters patent must

experiment.

What constitutes an infringement.

Cresswell, J., practice the invention, or any part of the same; nor in any to the jury. wise counterfeit, imitate, or resemble the same; nor shall make or cause to be made any addition thereunto, or subtraction from the same, whereby to pretend himself or themselves the inventor or inventors, deviser or devisers thereof, without the license, consent, or agreement, of the said James Walton." Therefore, they are not to resemble or counterfeit; they are not to make any addition to, or any subtraction from, it; availing themselves of that which is in truth the subject-matter of his patent; so as by such alteration to pretend that they are the true inventors of that article. Now the defendants, in the first place, say that they are not guilty—that is, they say they have not directly or indirectly made, used, or put in practice the invention, or any part of it-that they have not counterfeited, imitated, or resembled the same, nor made or caused to be made, any addition thereunto, or subtraction from the same, whereby to pretend themselves to be the real and true inventors. The defendants deny that they have done any part of that, and if you find that they have, then the first issue must be found for the plaintiff. They next plead, "that the alleged invention was not nor is a The object of new invention as to the public use and exercise thereof." It is the notice of right I should direct your attention now to a subsequent statute, objections to prevent surprise. which was passed for the protection of patentees, because it was found that when actions were brought for infringements of patents, objections were frequently started by surprise upon the party, which he might have been prepared to meet if he had had due notice of it, but which, not having had that notice, he could not meet; and so it was supposed injustice was sometimes done to patentees; and an act of parliament was accordingly passed, which provided that a defendant in such an action intending to avail himself of objections to the patent, should, at the time of pleading, give a notice of the nature of his objections; and I cannot help thinking, after reading carefully the notice of objections given in this case, that it would be a very good rule to establish that, with the notice, the party should be compelled to say under which plea he means to bring forward the different objections; for I protest, looking as carefully as I can at these objections, I have had very great difficulty in knowing how the defendants mean to apply them, and I fear that in this case, and in others, objections so drawn, without any such specific statement as to the plea under which they are to be given in evidence, instead of serving to help us in the due administration of justice, may serve as traps and pitfalls for judges and juries to be caught in. Gentlemen at the bar will do the best for their clients, but I think it would assist the administration of justice if the parties had distinct notice how the objections were to be applied.

With respect to this not being a new invention, the nature