« ZurückWeiter »
subject is, that the plaintiffs have made some slight variation, In the C. P.,
“ E. T., 1842. by which a better article is produced, but without any novelty in the combination, or any novelty as to the construction of the instrument used. I see nothing in the evidence to induce me to come to a different conclusion from what the words of the finding by the jury naturally import; and upon the third issue, therefore, the verdict will be for the defendant.
The first issue has been already disposed of in the course of the case; and with respect to the motion in arrest of judgment, as the defendant obtains the verdict upon the third and main issue, I take it for granted, that he does not desire to have our judgment upon that point. I will only say, that I have not fully made up my mind on that point, if it were necessary to decide it, which it is not.
ERSKINE,J.: The first issue in this case has been given up by the defendant, and then we come to the question-how the verdict is to be entered up upon the second and third issues ? The second issue is, whether the plaintiffs were the true inventors or not; and the third is, whether the invention itself was new. If we take the first branch of the finding by the jury, they have in distinct terms negatived that issue, and found it in direct terms for the defendant; but they have added something upon which the plaintiffs rely, as tending to show, that though in terms they have found the issue against them, yet that in substance they have found it for them; and that, therefore, the verdict should be entered for them. As I understand the argument on the part of the plaintiffs, it is this—that the jury did not mean to negative the plaintiffs' right in the strict and legal form; but they meant merely to say, that although the invention was not new, there was a new process, which, in point of law, might amount to a new invention; and therefore, that although the terms of the finding of the jury are against the plaintiffs, according to the terms in which the issue is couched, yet that, in point of law and substance, it is a finding in their favour; and therefore, that the verdict may still be entered for them; and the way in which I understand the case to have been argued is this—that looking at the evidence which has been given at the trial, and comparing the evidence given with the finding of the jury, the court may see the jury have in some sense found, that the plaintiffs had discovered an improved process in the manufacture of silk yarn, and that the evidence shows that the nature of the discovery was such as would entitle them to a patent; and therefore, that the mere language of the finding by the jury was not such as to exclude the plaintiffs from the verdict upon those issues. Now, it appears to me, upon comparing the finding of the jury with the evidence given in the cause, that the plaintiffs have not made out any such case of an improved process as would entitle them to a
A process, if patent, as the inventors of a new manufacture. Although it sulting in a new
er may be true, that a party may have a patent for an improved manufacture, is process, under circumstances which would show that the imthe subject.
er letters provement in the process really amounted to a new invention, patent. and a new manufacture, within the terms of the act of parlia
ment, I think the evidence in this case does not show, that here there has been any such improvement. The plaintiffs by their specification put their claim under eight heads, and inasmuch as they claim a patent in respect of the whole of those eight heads as forming eight different branches of one process, for the purpose of manufacturing silk yarn, or silk yarn in combination with wool or flax, it is necessary for them to show, that the whole of that process is, as they maintain it to be, new. Now it appears to me, whatever degree of novelty there may be in the process by which they discharge the gum from the silk, which varies from the ordinary process, inasmuch as it takes place at a different stage of the manufacture from that at which it was previously employed, or whatever novelty there may be in the dyeing, to which the same observation applies, yet if the substantial parts of the alleged improvements, as contained in the other heads of the process, are not new, so as to make them the subject of a patent, then the plaintiffs must fail altogether. Now, the third head is—"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.” The third head, therefore, does not include either of the first two, because it is put in the alternative—“silk, either in the gum or discharged.” What, then, is the novelty of the process claimed by the plaintiffs as proved in evidence in respect of this third head? It appears from the evidence, that the process of spinning silk waste without cutting it had been previously practised-practised, it is said, in secret, and not made known to the public; and if that had been made out, I should have agreed with the learned counsel for the plaintiffs, that that would not have been enough. But it appears to me, that there is abundant evidence to show, that the yarn spun from silk waste in the uncut fibre had been manufactured to a considerable extent, and had been brought into public notice by sale, and after sale had been used for different purposes, though it appears not to have been brought to that state of perfection which would enable parties to apply it to the manufacture of articles, such as those that were produced from the silk yarn made by the plaintiffs. It had, for instance, been used in the manufacture of gold lace. There was, therefore, nothing new in the process of spinning silk yarn from silk waste, in the long fibre, nor in the machinery upon which it was spun. And all that can be claimed by the plaintiffs is, that they have more skilfully adapted a known machine to the preparation of materials previously known, by a process previously known,
and producing a known result, but still producing that result in The improvean improved condition. This appears to me the extent of the ment which the discovery and of the merit of the plaintiffs' invention. Now pear by the evi
dence to have this may be useful, as the jury have found it is; it may be made, is not that valuable; but it is not the improvement which the plaintiffs claimed by the
im specification, have described and claimed in this specification. I am, therefore, of opinion, that the verdict should be entered for the defendant on the second and third issues.
CRESSWELL,J.: I am also of opinion, that the verdict should be entered for the defendant on the second and third issues. This patent right, as explained by the counsel for the plaintiffs, is undoubtedly of a very singular character. The plaintiffs do not claim any article produced by the process, they do not claim the machinery used in producing it, nor do they claim any ingredient used in producing it. They claim, it is said, merely a process. Certainly, there are dicta in the books, that a process may be the subject-matter of a patent. Whenever that question arises, of course, I shall be prepared to give it every consideration, and form the best judgment I can upon it. I may remark, however, that I do not find any distinct decision, stating that the mere omission of a part of a process, which this in substance is, would form sufficient subject matter for a patent right. I do not propose, in considering the question now before the court, at all to inquire into the nature of the evidence which was given in the cause. The jury have come to a finding, against which no complaint has been made. It appears, that both parties are content to say, that the jury have really come to the right conclusion, and that they have found certain matters, which the parties on the one side and on the other contend to be in substance a finding for them. The jury have found, that it is not a new invention nor a new combination; have the plaintiffs claimed by their patent a new invention or a new combination? If they have, then the jury have said there is neither; and if they have claimed a new invention, and the jury have found there was none, of course they could not be the inventors. Now, if there could be any doubt, that the plaintiffs intended to claim each of the eight parts mentioned at the beginning of the specification as a portion of their invention, they fix it by the concluding part of the specification, where they say, “we desire it to be understood, that we disclaim those parts of the process or mechanism which may have been, previous to the granting of our patent, well known; but we restrict our claim to the eight several heads of invention mentioned in the early part of this specification, all of which we believe to be new, and of great public utility.” Now, do they claim any mechanism? I apprehend it is quite clear that they do. The sixth head of invention may be doubtful as to its meaning. I have considerable doubt in deciding, whether they
Judgment. mean in that head to claim the throstle machine as part of their
invention, or whether they merely use the throstle machine for the purpose of spinning this article when prepared in this particular mode; and if any question were clearly before the court,
as to the validity of this specification, whether it ought not to The invention be held void as being too ambiguous in its terms (for every party distinctly ap
must is bound to tell the public clearly by his specification what he pear by the spe- claims, and what they may do, or not do, without risk of an cification.
action for infringing his patent), I should certainly have been disposed to think, that it would be difficult for the plaintiffs to get over that objection to that part of their specification. But in the seventh head, they distinctly claim certain improvements effected in the throstle machine; and in describing the drawings they say, “they represent the well-known spinning machine called a 'throstle, which machine, combined with the improvements we have applied to it,” &c., clearly claiming certain improvements in it as their own; and again, in the concluding part, “we disclaim those parts of the process or mechanism
which are old,” thereby again claiming some of the mechanism If any part as new. Now the jury have said, there is no new invention. or improved be
be This finding is equally fatal to the plaintiffs, whether they meant not so, the pa- to claim the whole machine as improved, or parts of it only. tent is invalid.
Again, do they mean to claim a new combination of the parts of the machinery? If they do, the jury say, there is no new combination. It is perfectly clear to my mind, that they have claimed some new mechanism, some portion of the machinery used for the purpose of producing this manufacture, or carrying on this process, whatever they please to call it. This the jury have distinctly negatived; there is no doubt on the meaning of the terms they have used; and I think, therefore, these two issues must be found for the defendant. And this makes it immaterial to inquire, what was the meaning of the jury in finding that there was an improved process; whether they meant that the difference in the stages through which the work was carried was an improvement, or whether they found that the plaintiffs carried the works through those stages which were previously known in a better manner, is quite immaterial, because, whatever may be the improvement of the process, it does not relieve the plaintiffs from the difficulty of having claimed this as a new invention, or combination of this machinery with other parts, which the jury have distinctly negatived. The rule, therefore, for entering a verdict for the defendant on the second and third issues must be made absolute, and the plaintiffs' rule must be discharged.
Rule absolute accordingly.
In re Sharp's Patent, ex parte Wordsworth.
Cor. Lord Langdale, M. R.
Chancery a me
This was an application to the Master of the Rolls, as keeper The M. R. has of the records of the Court of Chancery, to remove from the ,
" to remove from rolls of that court a memorandum of alteration, which had been the records of
the Court of duly enrolled under the authority of the fiat of the Solicitor General, according to the provisions of the statute (a). The fol- morandum of
alteration enrollowing were the circumstances of the case, as stated in the led under the petition (6) and affidavits.
Letters patent, dated the 8th of October, 1836, had been granted to John Sharp, of Dundee, for “ certain machinery for converting ropes into tow, and certain improvements in certain machinery for preparing hemp or flax for spinning; parts of which improvements are also applicable to the preparing of cotton, wool, and silk, for spinning.” The specification was duly enrolled sth of April, 1837. In the same year Mr. Sharp obtained letters patent for Scotland, for the same invention. On the 31st of May, 1838, letters patent were granted to the petitioner Joshua Wordsworth, for “improvements in machinery for heckling and dressing flax, hemp, and other fibrous materials," the specification under which was duly enrolled 30th Nov. 1838.
On the 18th of August, 1838, a petition was presented to Sir R. M. Rolfe, her Majesty's Solicitor General, for leave to enter a memorandum of alteration in the specification of Mr. Sharp's English patent(c). The Solicitor General ordered advertisements to be inserted in the Gazette and two London papers, and in a Scotch newspaper circulating in the neighbourhood of the residence of the patentee (d); which, having been done on the 8th of September, he granted the fiat for enrolling the said memorandum of alteration, which was enrolled accordingly on the 20th of September, 1838.
The petitioner alleged, that certain portions of the said memorandum of alteration described a new machine or arrangement of machinery, and extended the exclusive right granted by the letters patent, and was in substance the same machinery as had been invented by the petitioner, and described in the specification of his patent; and prayed that such portions might be ex
(a) 5 & 6 W. 4, c. 83, s. 1. See the section, ante 250.
(6) The petition was presented 9th of April, 1839; first hearing on the 29th of May, 1839; amended and finally heard 22d of December, 1840.
(c) A memorandum of alteration in the specifi
cation of the Scotch patent, had been enrolled some time previously in the office at Edinburgh.
(d) The advertisement was inserted in the “Gazette,” “ Times," and “Chronicle," of the 24th of August, and in the “Dundee Courier" of the 28th of the same month.