wards speak to them separately. On the patent, my remarks A.D. 1843. way open upon the novelty, or in tion. I have much doubt, whether the objection as to the patent The objection claiming too much, is within the issues. The pursuers do not matter of the that the subjectprofess to claim an invention for heating air. If the defenders patent is for a intended to contend that the patent did, however, contain such principle, is not a claim, and on that account was void, they might have stated issues of want of this plea to the court, before and in bar of trial. I think they sufficiency of were bound to do so; or they might have made it the ground the specificaof substantive issue. The way they get at the point now is by saying, we insist that this is the reading of the patent, and if so, then the objections apply; for, on that view of the patent, viz. that it applies to the mode or process of heating air, it is not a good patent. My own opinion is, that this point is not raised -competently raised-under these issues; and holding that opinion, it is right that I should give the pursuers the benefit of it (d). But, at the same time, it is expedient that no point in this case should not be embraced in any bill of exceptions which either party may wish to present. And on that account, and partly also because the defenders may have some countenance from some uncertainty of proceeding in a prior case (e), I shall (d) This point was attempted to be raised on the appeal in the House of Lords under the second, third, and fourth exceptions (post), but their lordships having in the course of the argument intimated their opinion that the objection, that the patent claimed a principle, was not open under the issues, the objection was abandoned by the counsel for the appellants. (ante 455,) and in which it was held, that in an action by the holder of letters patent, concluding for interdict and damages, the patent afforded prima facie evidence of the originality of the alleged invention, but that the defender was entitled to take an issue of denial of the invention. It was also held that, under the usual issues of infringement and denial of the originality of the invention, an objection to the patent, founded on the vagueness of the specification, was not duly raised. 1 D. B. & M. 893. The precise objection wished to be raised in that case would (e) In the case of Russell v. Chrichton, ante 552, which was an action for the infringement of the pursuer's Scotch patent for the "improvements in manufacturing tubes for gas and other purposes," Lords. ton of the pa In the House of assume at present the competency of this objection. If this matter ought not to be taken as included in the issues, the pursuers can also take an exception to my entertaining the point at all; and my own opinion is distinctly, that the point should not be entertained under the present issues. But taking this matter as open to the defenders, then the question, what the patent The construc truly claims, is a point for the court. The construction of the tent is for the patent to that extent, and on that question, is matter of law for court, the intel- the court. The intelligibility of the patent, to use an expression gibility for the of Lord Eldon's, is for the jury (ƒ). But the inquiry, what is jury. the subject-matter of the patent, is a question of law, and for the court. It depends upon a great variety of matters, settled by previous decisions, on the style and form of specifications, their title, structure, and the legal import of their phraseology. It is not a question fitted for each jury in each case, else there would be no fixed law on the subject. But the meaning and intelligibility of the actual description in the particular specification is for the jury in each case, taking the specification with the evidence of practical and scientific men in that department of arts and manufactures; and the issues here assume that the intelligibility of the specification is for you. The title of the the object of the invention. Let me now explain the patent and specification. The title of patent discloses the patent-" an invention for the improved application of air to produce heat in fires, forges, or furnaces, where bellows or other blowing apparatus are required." That is the object of the patent, that is what the law calls its title; the parties are entitled to maintain that the specification ought not to go be yond it. On the other hand, the patentee is justly entitled to say, that the presumption is that he did not mean to go beyond it. Observe those terms, "an improved application of air to produce heat in the furnace or fires." The effect here stated and claimed is, the effect on the fire or furnace, not on the air itself, though by heated air. There is no object stated in reference to the state or quality of the air, except as to the result of producing heat in the furnace. This is most material for you to keep in view in considering what meaning is to be put on the prac tical directions in the specification. If the specification clearly means throughout to claim, as the improvement, increase of heat in the furnace-then, of course, it will be for you to consider, whether you can so construe particular expressions respecting "the effect," as to interpret them to allude to a different appear to have been, that the specification covered the old mode of manufacturing gas tubes. If that were the construction of the specification, which is for the decision of the court, that objection would be clearly admissible, as being the very issue, namely, the originality of the invention claimed. See per Alderson, B, ante 129, as to the letters patent being prima facie evidence on the part of a plaintiff; and in Walton v. Pater, ante, as to the proper plea to raise the question. whether the invention is the subject-matter of letters patent. (f) See ante 350 for the proper construction to be placed on these words of Lord Eldon, and the observations of the Lord Justice Clerk at the conclusion of this paragraph. effect than that which is the object of the patent. It is not an A. D. 1843. improved mode of heating air that is claimed, but an improved application of air to produce heat in fires. The air was previously applied cold in order to produce heat-to produce that same result in a better and more effectual way, Neilson's invention is an improved application of air. How the air is to be applied in an improved manner, the specification is afterwards to tell us. Hence, I have to state to you, in point of law, that the object and summary of the invention is this. I think a correct title does not profess to include the mode of heating the air, that any mode of heating the air under blast is within the professed object and title of the patent, provided that subsequent words of practical direction in the specification do not restrict the claim to one particular mode of heating the air. But the specification, although such is the object, and the only object of the patent, might have gone too far, and been liable to another objection taken by the defenders, if it should turn out to be a patent only for an abstract philosophical principle. fication consti Turn now to the specification. The specification and patent The letters paare to be taken together as one instrument--and I give you this tent and specias a suggestion in common sense-though it is, nevertheless, a tute one instrudirection in point of law, viz. the terms are to be understood in ment, and are to be interpreted the plain, ordinary, and popular sense of the terms used, unless according to the ordinary sense the usage of the trade in question has fixed a peculiar meaning of the terms. on the terms, or the context necessarily gives another sense than the plain, ordinary, and popular sense. The general title is the same as in the patent. Then there is the statement of the object; it quotes, you will observe, the words in the patent: the letters patent are for "my invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required." Then there is the condition under which he gets the patent, in which letters patent there is contained a proviso, obliging me, "the said J. B. Neilson, by an instrument in writing, under my hand and seal, particularly to describe the nature of my said invention, and in what manner the same is to be performed." Then, at the commencement of the specification, it goes on, "Now, know ye, that in compliance with the said proviso, I, the said J. B. Neilson, do hereby declare"-he must comply with it in order to satisfy the law; then he repeats the terms of his title; he says "that my invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required, consists." So here he repeats, in the general terms of the patent, the object of his invention. Then he says, "consists in introducing into, and applying to, fires, forges, and furnaces, atmospheric air. in the following manner." I think it is of great importance in telling you what the patent does not claim, as this is to be considered by the court, to men In the House of tion, that it does not here say it is heated air, but it is intro Lords. ducing atmospheric air in the following manner; the air is to be heated, as you will see presently; but you will observe, it consists in introducing and applying "atmospheric air in the following manner." Now these terms I hold to be important; they relate distinctly to the introduction into and application of air to the fires. This marks very plainly the coherence with the patent of the specification. Then the blast is material to be produced; it is admitted that the patent is not meant to be applied to that. Then he begins with the following particulars: "1. The air in blast is to be passed into an air vessel or receptacle before it goes to the fire. 2. That vessel (of sufficient strength) is to be heated." You would observe, that some of the defenders' witnesses always interposed-nothing is said of heating the air. I must say, plainly, that whatever else is thought of the patent, it would be an outrage on common sense to pretend that the contrivance is not to heat the blast, and so they admitted this was a necessary inference-a distinction to the practical man without a difference; if red hot, it is said, so much the better; but that is not essential. 3. The materials of the air vessel are said to be not important-iron best. 4. Size is not fixed; though some proportions are given, and increase in size and numbers pointed at as necessary. I am going over some particulars at present which must be for your consideration; but I must state them, in order to explain to you what the patent does claim; I am not prejudging the points to be left to you. 5. Then he says, "the form and shape of the air vessel is immaterial to the effect." 6. He 66 says, the manner of applying heat is immaterial, if you keep up the air to a proper temperature." He says, "the form and shape are immaterial;" and he says, "the manner of applying the heat is immaterial." This is of great importance in regard to the defenders' evidence. Construction of On all these passages, the question arises-Immaterial to the specifica tion. what? important to what? This is a point on the intelligibility of the patent. Some of the witnesses of the defenders say, this means effect in heating air during the blast. On that view the specification is not only untrue, but absurd, and ludicrously so-framed in utter ignorance. One witness says, this means immaterial to economy, and in that sense of the term the sentence is still more absurd. Now, these are singular illustrations of ignorance and absurdity-if such should be your view-to find in a patent, under which such a host of witnesses conceive there is contained the discovery of a physical principle of great novelty, and of unspeakable importance in point of utility. Whether, in saying these things, he has given wrong directions, which will mislead practical men, is another matter, on which I shall take your opinion. But I am at present only considering what he says, and in the question of what he claims or does not claim in the specification, it is important A. D. 1943. and necessary to see what he says, and what he professes to claim. It may be, that a specification truly claims more than a party says and professes to do. But the legal presumption is, that he does not claim, that which he says he gives no directions about, as immaterial to his object, i. e. the effect he has in view to produce, provided you obtain the agent by which he means to work, viz. heated air. I have stated the grounds of my opinion on this first point, because the observations I have made may be of use to you when you deliberate on the specification, in regard to the questions which belong to your functions on it. I am of opinion, that Neilson does not claim as any part of his invention the mode or manner, or profess to describe any mode or manner of heating the air under blast, which is to be passed into an air vessel interposed between the blowing apparatus and the fire. I hold, in point of law, that this is no part of his claim under the patent or specification. Whether the specification is bad on this account, as resulting in a patent for an abstract principle, without any mechanical contrivance, or mode of reducing it to practice, is a different matter, and is also a question of law, to which I shall immediately advert. But at present, what I wish to state to you is, that the manner of heating the air-the particular contrivance or shape of vessel, or of constructing the surface and shape so as to secure heat-is no part of the claim of invention contained in the specification. This direction in The questions point of law, on a point which all must admit to be law for the of fact for the jury must be court, you will see to be of great importance for you in con- controlled by sidering the meaning of the patent. Indeed, I do not conceal the construcfrom you, that while the intelligibility of the patent is for you; patent. yet when the previous question-what the patent claims-occurs in any case and is raised, and must be decided by the courtthat question of law must very much guide you as to the intelligibility of the patent on the matters to which it does lay claim. The defenders say, it claims either one thing or another. It is my duty to tell you, what it does not claim. That direction, in point of law, does not leave it open to you to take any other view than one of the claims under the patent, viz. that the mode of heating air is no part of the claim patented, nor is intended to be set forth as any part of the patent invention. If that is so, then you will see that my direction, in point of law, gives you only one other sense, between which you can decide, and an interpretation which makes nonsense of the specification. His invention, then, consists, according to the fair meaning of the specification, taken as a whole, and candidly considered, in passing the blast into an air vessel or receptacle, in order to be heated-in order at that stage of the process of application tion of the |