Lords.

In the House of was not turned to account for public utility, and was not in public use and operation. With these directions as to the law of this first of the counter-issues, you will probably be able easily to dispose of this part of the case on the evidence, keeping in view that the defenders must prove that issue (p).

The specification being for

the benefit of

the trade, must

I have now to call your attention to the next two issues which the defenders seek to establish: "Whether the description contained in the said specification is not such as to enable workmen of ordinary skill to make machinery or apparatus capable of producing the effect set forth in the said letters patent and specification; and whether machinery or apparatus constructed according to the description in the said letters patent and specification, is not practically useful for the purposes set forth in the said letters patent?" Now, gentlemen, observe it is the effect set forth in the letters patent; it is not to produce the same effect with No. 7, which I take as a short description generally (q). On these issues there are matters for me to state to you in point of law. Workmen of ordinary skill, means those competent in the ordinary business and conducting of the particular trade-to furnish and construct apparatus for the purpose required. Certainly, the pursuer does not satisfy the condition of law, if he says men of the greatest science-first-rate engineers-could understand him, and trade; first-rate would know what to do, or what directions to give. That is engineers and not enough. The specification must be for the benefit of the bourers are to trade when the patent is out; it is addressed to those engaged in particular departments of trade, and who are to be employed in order to make apparatus for the purpose, those who are competent to make similar apparatus for similar purposes. But the terms in the issue do not denote common labourers or workmen employed under those who do furnish and construct such apparatus. We know that in many trades the most skilful workmen, in the subdivision of labour, are conversant only with parts and portions of machines, and could not put together the whole. The workmen referred to by the law are those con

be sufficient for

workmen competent to the

ordinary business of that

common la

be excluded.

(p) The above direction as to the legal requisites of the user, which will vitiate letters patent, was excepted to, and the exception allowed by the House of Lords, their lordships being of opinion, that the learned Chief Justice Clerk must be understood as speaking of the use of a complete and perfect invention, and not of that which could be strictly designated as trial or experiment only, by reason of its being an invention incomplete and not perfected. Their lordships were also of opinion, that abandonment was evidence only, and not proof, of the trial having been mere experiment. The following observations of the noble and learned lords during the argument are important.

Lord Brougham: If the learned judge had said the abandonment is an important question in con

sidering whether it is an experiment or perfected invention, he would have done no more than was right. It was an element for the consideration of the jury.

Lord Campbell: In point of fact, when at the bar, I always considered when I was dealing with the merits of a case, that abandonment was almost decisive to show that it was not a real invention, though in point of law it must be immaterial. It seems to me, that it must rest either on experiment or invention. If it be experiment, the continuance down to the time of the patent is immaterial-it will not invalidate the patent; but if it be an invention, the invention itself will be good, and the abandonment will not affect it.

(q) This No. 7 was a model of the improved apparatus used by the defenders, ante 688.

versant with the construction, and principles, and rules, of A.D. 1843. apparatus for heating air, and with the object of the blowing apparatus, so that the heating of the air shall impede the blast as little as possible. The apparatus to attain the end is to heat vessels in order to heat the blast. Then you are to apply to persons who are conversant with the rules, purposes, and conditions to be observed, and usually acted upon in heating air, and who construct and furnish such apparatus. Another important direction I have to give you in point of law is thiswhen you are asked in the words of the second issue "capable of producing the effect set forth;" or of the third, "practically useful for the purpose set forth," &c.; the point is not, whether in first acting on the specification, persons would have furnished either Mr. Condie's pipes, or any contrivance at all so good, or giving so much benefit from the invention. You will see now the great importance of the general directions I formerly gave you as to the object of the patent, and the extent of the claim. The patentee does not profess to state any particular form of pipes for getting either a certain degree or the greatest degree of benefit from the hot blast, and this shows you the fallacy in a great part of the evidence for the defenders. The patentee says, "the hot blast will produce heat in the furnace. Heat the blast in any way, you will get benefit;" and then the question is, can apparatus be constructed, by those competent to construct the heating apparatus, so as to have some decided benefit, more or less. If that shall be proved, then we have no Not necessary question under this issue, whether the greatest benefit would at tus described first have been attained in acting on the specification. Here, I should produce prefer putting this point to you in the words of my brother the greatest judge in England, who tried this case. Mr. Baron Parke, in nefit. commenting on the opinion of a scientific witness, examined as to whether workmen could, from the specification, construct an apparatus which would be most efficaciously used, says (ante 317), "That, however, I do not think is the exact point. The point is, whether it can be used beneficially taking it in the simplest form. If in order to use it beneficially at all, experiments were necessary, about which a good deal was said by the Attorney General, then the specification would be void. If it were necessary to use experiments in order to have the benefit of the invention, in which it is claimed by the specification, in that case it would be void; but if, in this case, it is only necessary to have recourse to experiments, in order to have the full benefit that the subject is capable of, it appears to me, that it would not void the patent; because, though it is a subject beneficial in its simplest form of application, it is a vast deal more useful when the improvement takes place; and in order to make the greatest improvement, unquestionably many experiments are necessary, and even, at this very moment, not

that the appara

amount of be

Lords.

In the House of withstanding the great improvements that have taken place, there is no doubt that the matter is not in that state of improvement which, in all probability, it will be in the course of a few years. It does not appear to me, therefore, that what the Attorney General has dwelt upon, with reference to the evidence, all the evidence in the case, that that affects the patent. If experiments were necessary to produce any degree of benefit under the patent, then, in that case, I think the specification is void, for it does not give the requisite degree of temperature; but if the simplest form would be productive of benefit, it appears to me that the specification is good." And again (ante 320), Baron Parke says, "I have already told you, that if experiments are necessary in order to construct a machine to produce some beneficial effect, no doubt this specification is defective. If experiments are only necessary in order to produce the greatest beneficial effect, in that case I think the patent is not void." Then again (ante 322), Baron Parke says, "However, I think one may very well collect from the evidence as to Mr. Neilson's own acts, that he really was not fully aware either of the great value of his patent, and still more, was not fully aware of the beneficial mode of carrying it into effect. That was discovered by persons more acquainted than he himself was It is sufficient if with the science of heating air. Still, however, I think, if you persons acare of opinion that the specification does disclose such an quainted with heating air apparatus as to enable an ordinary workman, acquainted with would construct the subject of making blowing apparatus, and fitting up apparatus for forges" (I put it rather differently-I should say, workmen acquainted with the construction of apparatus for heating air, and so I observe Baron Parke ultimately (ante 327) put it), "to construct an apparatus of some value, so as to make it worth while;" it seems to me, that so far as this objection goes, the specification would not be insufficient. I take these passages, the more because that learned judge adopted a view of the specification, in which the court held he was wrong, and had throughout a decided impression at the trial, that the specification was defective, thinking that it told those who were to work on it to disregard the rules as to heating air. But even with that view you see how he puts this point. I have only to add, that I think he states this not so favourably as I can now do, and feel bound to do, guided by the judgment of the English Court of Exchequer and of Lord Lyndhurst. I have to tell you, in point of law, that under this patent, not claiming any or the best contrivance for heating the air, and at the least expense and trouble, the result which actually followed, viz. that persons in the trade, and in acting on the patent, contrived, from time to time, a great variety of contrivances, more or less valuable or costly, and at last came to settle generally into one form as better than others, was exactly the result which might be ex

an apparatus

productive of some benefit.

pected to follow under a patent of this general character; and A.D. 1843. that, if the patent is good in law, then it gave no form of apparatus for heating air, but claimed the contrivance generally, of heating the blast for the effect and end of producing heat in the furnace. The only point for you is-will any contrivance which heats the blast produce that beneficial effect and end? if so, then the defenders have failed to prove these two issues. I shall explain to you that, on this point, I think the defenders have, in the evidence of some of their own witnesses, given you the most decided and valuable evidence in the whole cause, in support of the pursuer's answer to these two issues.

But then the defenders contend, that there are directions in As to the althe specification as to heating vessels, and as to the form of the tion in the speleged misdirecvessels, and that these directions are at variance with all the cification. rules as to heating air, and would mislead all persons conversant with heating apparatus, by directing them to act against all the known rules for heating air, in order to make the blast hot, and in order to attain the end of this patent on the furnace. I am under considerable doubt whether others may view this as matter of law. In case it should be so considered elsewhere, I will, if either party require it, state my opinion in point of law, so that they may not be cut out of the opportunity of making it matter of record. But individually I hold, under these issues settled to try this cause, that this is a question wholly for you, the jury, keeping in view the principles for construing the specification which I have stated to you, and proceeding as you will upon the view I have stated of the patent, in point of law, as a general patent for the application of hot blast to fires, forges, and furnaces, the air under blast being heated at a particular stage of the process, and not being a patent for any particular mode of heating air, so that directions to workmen on that subject are not to be presumed. Then another point is raised by the defenders, viz. that the heat of the blast, obtained even by the original forms of the apparatus, and before Condie's pipes were introduced, was such as to burn the old dry twires; that even the old water twires used at the great heat of refineries would not stand the heat obtained by the hot blast even before the pipes represented by 5 and 7 were introduced; that the patentee did not tell how the mouth of the aperture into the furnace, at which the hot blast was introduced, was to be guarded; and that on this account either the specification is defective in point of law, or does not enable benefit to be derived from the hot blast by Neilson's invention alone. I am not sure exactly which view the defenders stand on, whether it is defective in law because it does not guard the furnace from the effect of the hot blast, or whether objectionable in fact, because it is shown, as they allege, that without that invention the benefit would not be derived at all. On the evidence you

Lords.

The patentee

not bound to give any direc

tions as to the

water twires.

In the House of will consider, whether there can be, in point of fact, any circumstance of real evidence more conclusive as to the great heat obtained in practice with all the older contrivances, than that not only the dry, but even the old water twire would not standand whether the continuance of the use of the hot blast, notwithstanding these interruptions, is not decided real evidence also of the practical advantages to the trade. But on this point I must state to you, in point of law, that for the object and purpose of the patent, the specification is not defective so far as it does not state how, or in what manner, the mouth of the furnace was to be guarded, and that the patentee was not bound to do so. But I cannot say that this objection, in point of fact, is to be excluded from your consideration under the second and third issues, attending, however, to the rules I have given you in construing the specification, and also to the general nature of the patent, as I have stated it. The alleged difficulty of acting on and using the hot blast before the new water twire was invented, may be used as evidence to show that the invention was of no practical utility until a new water twire was invented, for it is said by the defenders, that even the old water twire was of no use, although in many of the English works Condie's twire is not yet used. But as a legal objection to his patent, I apprehend that it cannot be maintained, in point of law, that the patentee was bound to state how the sides of the furnace, where the hot blast was to enter, should be protected.

Now this brings to a close the directions which I have to give you in point of law. They have been certainly fuller, and perhaps more anxious, than necessary. But knowing that one of the parties thought that the benefit of trying the point of law was lost to them in England, I have thought it my duty to state the case most fully, so that every point may be before the parties as far as it occurred; and I have also thought it my duty not to withhold any points of law so far as their tendency and meaning might bear directly on the light in which you are to consider the evidence. You must, with your intelligence, perceive that the decision of the questions in the cause depends very little on the details of the evidence, but mainly on the general views you must take of the case in point of law, or on the general views you have as to the meaning of the specification. But still the details of the evidence must be anxiously attended to, in order to secure certain and safe judgment.

If your opinion on the whole cause shall be for the defenders, it will be sufficient that you find generally for the defenders. If your opinion shall be for the pursuer, then I have mentioned that, for various reasons, I shall ask you to answer certain additional questions, and I am persuaded that, by doing so, I shall save great uncertainty and embarrassment, especially as in England some points were held to be law for the court,