Cresswell, J., to the jury.

The specification must give

the best mode

known to the inventor, and must not mislead.

and you will see whether it is the case or not when I come to read the evidence; but I do not remember that any person called for the defendants was asked, whether he would have any difficulty in making a card according to the description given of the process in this specification. Now, gentlemen, with respect to that, I think I was called on to express some opinion as to whether the plaintiff claimed as an essential part of his patent the application of linen, but I cannot help thinking there is some little confusion in the use of the term, "what he claims as an essential part of his patent." He claims as distinctly as possible the application of India rubber as a substitute for leather in making the backs of cards in order to get an elastic bed; that is what he claims, and there is nothing about the cloth in that. But it is not sufficient that a man should claim a principle. He must add to it in his specification a mode of working out that principle practically, and that he does now, for you will find he recommends as the best mode of working that out the application of the cloth, but he does not profess to say it cannot be done without. If he had said, it cannot be done without, I should have thought he would have said the linen was essential to the working out of his principle. He says, however, that it is best worked out with that, not that it cannot be done without it. If he had said it cannot be done without it, and it could be done without it, he would have taken upon himself to assert a fact which might have misled the public-therefore he did, I think, wisely in not doing so. He says, "the best mode of doing it that I know of, and that information I am bound to give to the public, is, by the application of cloth." He does not take upon himself to say that that is essential. Now upon that subject I will just point out to you what has been the general rule on the subject of these specifications, to show what information a person must give to the public, because if a man knows a better mode than that which he states to the public, that would be very unfair and wrong, and his patent would be vitiated by it. For instance, in the case of Turner v. Winter (ante 77), it was held a patent is void if the specification is ambiguous, or gives directions which tend to mislead the public; as, for instance, if it states that by one process three things may be produced, and the process fail as to any one, or if the specification directs the same thing to be produced in several ways, or by several different ingredients, and any of them fail: so if the plaintiff had taken upon himself to recommend here, as a mode in which it might be done, that it might be made with cloth, or that it could not be made without, he might have misled the public. He says, it may be made with--and he does not say whether it can or cannot be made without. Then again, in another case it is said "a patent is void if the specification omit any ingredient, though not necessary for the composition

of a thing, for which the patent is claimed, as a more expeditious A.D. 1842. mode of producing the manufacture." It cannot be said that this specification is open to that objection, for here he has told them the best mode of doing it, and has introduced every ingredient necessary. In another case the specification stated that the cloth might be made of any suitable material, the patentee knowing from experiment at that time that one material and no other would answer; and the patent was held to be bad, because he had only said, "I prefer it to be made of this material," when he knew that no other would answer. There is no proof that the plaintiff knew that no other than the mode described would answer-on the contrary, it is proved that it may be made without the cloth. Then again, in another case, an invention for giving paper an enamel, the specification was held to be insufficient, because the party did not give the best information in his power as to the ingredients and the mode of doing it. But here the party has given the best information, and has not taken upon himself to say, no other mode would do; therefore, he has excluded nothing. I say, he does not make that essential, but that he gives to the public the best information that he himself has. Then, gentlemen, we come to another objection-I really do not know what plea it applies to-that The want of the invention claimed by the patent is not of any public use or missible under utility not adbenefit. It is supposed that that may be a question under the the plea denynew manufacture." I entertain great doubts upon that, be- ing the invencause a thing may be a new manufacture, and perhaps may not manufacture. be of any public use or benefit. However, it is said here that the invention claimed by the said letters patent is not of any public use or benefit. It has been suggested that that question might more fairly be raised under a plea, stating it was injurious to the public. There is no allegation here that it was. But, however, it would be as well, perhaps, that you should take into consideration the question, whether the invention was of any public use or benefit. I do not think the plaintiff would raise any objection to such a question being submitted to you. Then it goes on thus-" and that India rubber uncombined with cloth, or other fibrous substance, is not a useful or sufficient substitute for the fillets or sheets of leather, used in the construction of ordinary cards, and is useless for the backs of such cards." I really do not understand to what that applies-I do not understand how it is raised. Certainly, if, owing to my ignorance on that subject, this is a pitfall in which I may be caught in this case, they have laid it with success, for undoubtedly I do not know how that question fairly arises upon this record, because, looking at the specification, I do not find that he says it is to be made without linen. On the contrary, his mode of doing it is with linen. He does not say that it cannot be made without, but his mode of doing it is with. He intimates an

tion to be a new

Cresswell, J., to the jury.

As to the last plea.

opinion that if people choose, after it is made, to take the linen off, and fit it by cement on to the cylinder, that may be done. The justice of that opinion is a matter of controversy, as to which you have had evidence called on both sides, but there is one piece of evidence given on the part of the plaintiff, which has not been met by any evidence of the same quality on the part of the defendant. The plaintiff produces a roller, which he says has been used, and they do not show on the other side any experiment made which has failed.

Then we come to the last plea, which is this-"The defendants say, that sheet cards and top cards were long before the time of the making and granting of the letters patent, and from thence hitherto have been cards in public use and exercise for the purpose of carding wool, cotton, silk, and other substances, within the meaning of the letters patent, and the supposed improvements therein mentioned, and during that time were and have been the cards and instruments principally used for that purpose, and that the supposed invention was, and still is, unfitted for and useless in respect of sheet cards and top cards." Now the plaintiff has not contented himself with denying one part of that plea, but he has replied to both parts. He puts in issue the whole of it, and says, that sheet and top cards were not principally used for carding, and that this invention. was fitted and useful for that purpose. Therefore the defendants, in order to succeed upon that issue, must make out, not only that this invention or alleged invention was unfit for sheet cards and top cards, but must make out that they were the cards principally in use. Now, according to the evidence, the cards principally in use beyond all question were fillet cards; therefore, on that ground they would fail, even supposing that there were any question remaining unsatisfactorily disposed of in your minds respecting the fitness of this article for sheet cards and top cards. I do not see upon the evidence that there is any great difference in the value of them for the one purpose or for the other. This is not said to be merely cards without cloth backs; this applies to the whole of the invention-that with the cloth back it is not fitted for sheet cards or top cards.

Those are the various questions, gentlemen, which you will have to try: whether the defendants have imitated or counterfeited the whole or any essential part of that which the plaintiff claims. You have to dispose of those two questions, ascertaining whe ther this is a new invention-first, whether any thing corresponding with it was ever made before; secondly, whether, if ever made, it was in use and operation publicly, or was a failing experiment a trial which was abandoned. The third question I have disposed of myself, with the exception of that part you may take into your consideration, namely, whether the invention was of any public use or not? because it is said that it

which

is included in that plea, and although I doubt it, I would rather A.D. 1842. you should consider it as involved in it in order that there may be no failure on my part to leave any thing to you which I ought to have left, so as to render useless the investigation we have been so long engaged in. Then the fourth question is, whether the plaintiff in his specification gave such a description of his invention as would enable a workman of competent skill to act upon it; and the fifth is, whether sheet cards and top cards were principally in use; and whether, if they were, this material was fit to make such cards. Those are, as distinctly as I can lay them before you, the questions which you have to try. [The learned judge, after reading over and commenting on the evidence, concluded as follows:] Your attention, as I told you before, will be directed to the particular issues raised, which are-first, whether one or both of the articles sold by the defendants were such that, in making or selling them, they did, directly or indirectly, do, make, use, or put in practice, the said invention of the plaintiff, or any part of the same, or in any wise counterfeit, imitate, or resemble the same, or make any addition thereunto, or subtraction from it, whereby to pretend themselves to be the inventor or inventors? Then, the next question that you have to determine is, whether it was a new invention as to the public use and exercise thereof? That, again, involves the two propositions I mentioned before; first, whether the article sold before was of such a nature as to embody in it the principle and valuable qualities of Walton's article? If it was not of such a nature, then there is nothing to impeach the plaintiff's claim; if it was of such a nature, then there follows this question-whether it was a new invention as to the public use and exercise thereof? And, in determining that question, I beg you to bear in mind those opinions I have read as having fallen from other judges, rather than state to you any opinion of my own. With respect to the third plea-that the invention was not nor is a new manufacture, as far as that involves the question whether it can be considered as within the statute, that is a question for the court, which I have already determined. As far as it depends upon the question of utility, that, gentlemen, is a question for you. Then the fourth is, whether the plaintiff, in his specification, particularly described and ascertained the nature of the invention and the manner in which the same was to be produced? That again is for you, bearing in mind the evidence which has been given as to the power of a competent workman to work from the specification which has been put in. As to the fifth plea, whether these top cards and sheet cards were principally used for the purpose of carding, and whether this invention was unfitted for them?-that also is for you, and I think the defendant ought to make out both parts of

that proposition, for both are put in issue. They must make out both that top cards and sheet cards were principally used, and that Mr. Walton's alleged invention was insufficient and inapplicable to those purposes (d).

Verdict for the plaintiff (e).

Title.

Specification.

GIBSON & CAMPBELL'S PATENT.

Letters patent 19th November, 1836, to John Gibson and J. G. Campbell, for "a new or improved process or manufacture of silk and silk in combination with certain other fibrous substances."

I declare (a) that the nature of our said invention consistsFirst, in a part of our process by which we discharge the gum from that peculiar kind of silk denominated silk waste, when the same is in the state of the sliver or rove. Second, in a part of our process, by which we dye silk waste when in the state of sliver or rove. Third, in a part of our process, by which we spin yarn from dressed or heckled silk waste of long fibres, either in the gum or discharged. Fourth, in a part of our process, by which yarn from silk waste with long fibres may be spun in combination with flax of a similar length of fibre. Fifth, in a part of our process, by which yarn from silk waste with long fibre is spun in combination with wool. Sixth, in the application of our improved process to the throstle machine, on

(d) At the conclusion of the summing up, and before the jury retired, Sir W. Follett, S. G., on the part of the defendants, excepted to the direction of the learned judge, in that it had been left as a question for the jury, whether what had been done by Mr. Hancock in 1826 and 1827 was an experiment, whereas upon the evidence the question of user by way of experiment did not arise; that it ought only to have been left to the jury to say, whether they believed the evidence of the witnesses, because if that evidence was true, a public user of the article was proved; he also excepted to the direction of the learned judge, expressed in the words of Chief Justice Tindal; also, in that the jury had been directed that the above patent might be valid, though extending to every mode of applying caoutchouc to the backs of cards, whereas a party could not have a patent except for the particular mode of applying it, and if that mode failed, the patent was invalid.

No decision took place on these exceptions; a compromise having taken place after the proceedings in the following case.

The Queen v. Walton.

This was a scire facias to repeal the above pa

tent of the defendant: the trial took place at the sittings after Trinity Term, 1842, when there was a verdict for the crown on the issues of novelty. In addition to the evidence of user under Hancock's. patent, adduced from the defendants on the two preceding trials, the statement, ante 585, in the Journal of the Royal Institution,' was given in evidence on the part of the prosecution.

The court of Queen's Bench granted a rule nisi for a new trial, but the rule was not argued, a compromise having been made, whereby all proceedings on the bill of exceptions in Walton v. Bateman, and in some other actions standing for trial, were stayed.

(e) The jury found a verdict for the plaintiff on all the issues, and in reply to a question from the learned judge with respect to their finding on the issue as to public use, said, they were of opinion that the article made and sold by Hancock in 1826 and 1827, was not the same as that of the plaintiff.

(a) The specification is expressed to be enrolled by Gibson, in behalf of himself and his copatentee.