Lords. In the House of that point.] The learned judge treated the patent as if it were for a principle, and because it was a patent for a principle, he decided that every possible way of doing the thing must be treated as matter of law, not of fact, with reference to the infringement of the patent. The withdrawing that from the jury was a misdirection in point of law. Argument for The Solicitor General (Sir W. W. Follett), and Rutherford, for the respondents. the respondents. The question in this case on the first exception is of great importance as a matter of Scotch pleading. Upon an issue framed as the present, it was not competent on the part of the defenders to offer distinct facts and circumstances relating to the prior use of that invention, unless they had averred them upon the record; the defenders having averred certain facts and circumstances are not at liberty to give evidence of other facts and circumstances. By the statute, the parties are to give in the one the condescendence, the other the answer; setting out without argument the facts which they aver and offer to prove in support of the summons and defences. According to the course of practice in Scotland the record is to be looked at, and the party is not to be allowed to travel out of the record or to go into other facts and statements. The judges of the Court of Session, well acquainted with the practice of the law in Scotland, have decided unanimously, that according to that practice it is necessary in such a case as the present that the prior use at particular places, and by particular persons, should be so stated, that the pursuer may be able to meet distinctly the particular use in which his invention is said to be traced. There was not a sufficient statement on this record to prevent surprise. If the general statement of user in England and Scotland be sufficient, why are any specific places added? If a party will not comply with the plain and well-understood course of practice, he can make no pretence of having sustained hardship. It has been said, that under an issue of prior use, a party would be at liberty to prove prior use any where, without any special averment as to time and place. This doctrine cannot be maintained, and was never raised in the court below; but that is not the issue. When particular proof is offered of the use in any particular place, or under any particular circumstances, the record is to be looked at, to see whether the party has given such notice as the practice of pleading in the Scotch court requires. The record is in the hands of the court for that purpose, and is to be looked to as a specification of what is intended to be proved on either side, of the grounds and circumstances intended to be offered in support of the case. Under the general averment of prior use, any thing that falls within that issue may be proved; but when the record is looked to, that general issue is limited by the special averments there stated. It could not be incumbent on the pursuers to watch A.D. 1843. the pleadings of their opponents, and to give them notice that they were not sufficiently specific. The defenders would have given no instances if they had not felt that the act of parliament required it; and then to these particular instances they add general words. The statute does not require the names of the witnesses or the evidence to be given, but the facts and circumstances intended to be proved must be averred. What are the facts and circumstances averred when you allege prior use in England and Scotland? If you must go further and state particular circumstances of prior use, if you do not mean to stand by those and those only, you are misleading the party, because you are drawing his attention to these particular averments in the case he is to meet, and you are leaving in a general averment, as to which you have given no notice and no intimation. You are misleading a party by pretending to give special information of a case which it is not your intention to make out. In all the instances given the pursuers were enabled to meet the evidence of the defenders, and the only point objected in the course of that investigation was this, that they were not allowed under the general averment containing the words 'among others,' to go into proof of the case at Irvine. Their lordships of the Second Division having expressed their opinion that Lord Brougham's act did not apply, and that the closed record, and the averments upon which the parties agreed to close, and of course to foreclose themselves as to all other averments of fact, place their judgment upon the fact, that the pursuer would have been misled by the record, since he could never have expected any proof against the invention from the examination of a smith at Irvine. The record led him to expect the proof of a different state of facts. No assistance can be derived from the cases upon Lord Brougham's act; the words of the Judicature Act are explicit; it is not enough to state the ground of defence, which here is prior use, but there must be facts and circumstances stated, by which that ground of defence, or the cause of action, is to be maintained. The learned judge did not state at the trial that the general averment of prior use would have been sufficient-he states on this point as follows: "The beauty of the Scotch system is, that without disclosing what is properly called evidence, you must at least state the line of defence, and the main facts and points in the inquiry on which you rest, so that the other party shall be fully able previously to investigate the case and be prepared for it. I am now asked to relax that system, and without a reason, for this is clear, that the facts to which this man from Irvine is to speak, might with perfect ease have been stated on record as much as the alleged use of hot blast at Bradley." The unanimous judgment of the Second Division of the Court Lords. In the House of of Session is fully supported by all the cases (c), and it must be taken to be conclusively settled, that you must look to the condescendence, and you will not find sufficient notice as to prior use, which will entitle the party to found upon it. As to the 11th exception-The learned Chief Justice Clerk is not speaking of a prior use in the ordinary sense of the term, that is, of an article openly made, sold, and applied, but he is speaking of experiments which failed and were abandoned prior to the date of the patent. The witnesses proved that at the works at Bradley certain experiments were made, and an apparatus constructed, which, looking generally at the character of the apparatus, might be characterized as one extremely similar to the one for which Mr. Neilson's patent is granted. Some time before 1808 (the date of the death of the proprietor, Mr. Wilkinson), according to the statement of four witnesses, between the blowing apparatus and the furnace was placed an old blowing cylinder; into this cylinder the air was passed between the blowing apparatus and the furnace, and the cylinder into which the air was thus thrown was exposed to heat. That experiment was made before 1808; it continued a short time, and was given up as wholly useless, though some of the witnesses say it produced a certain result in the smelting of iron. Here, then, was an experiment at the Bradley Works about forty years ago, continued for not more than three months, when it failed and was abandoned; the witnesses say that they never heated air afterwards, that they were satisfied it would not do; the pipes and furnace stood up for two or three years, and cold blast Experiment can was worked through it. [Lord Brougham: What does the have no effect. learned judge mean by saying, "If the experiment continued down to the time, or about the time," if it is a mere experi ment? If it rests in experiment, is it less an experiment, provided it is never completed and matured into an invention, though it is continued down to the very date of the patent?] [Lord Campbell: The test would be, was it perfected or not perfected? Was it an invention or no invention ?] The statement of the learned judge to the jury is not as stated in the 11th exception; he told the jury, almost in the very words of Mr. Justice Patteson and Lord Chief Justice Tindal, that if a party is relying on experiments, and experiments abandoned, and that if those experiments are abandoned prior to the patent, they are no answer to the patent; the evidence applied only to experiment, and to that alone the observations of the learned judge are addressed. The machine which is to vitiate a subsequent patent must be made public, and given to the public; and The test is, was the invention perfected? (c) The cases of Wilson v. Beveridge, 10 Sh. & D. 110; Rutherford v. Carruthers, 1 Sh. & D. 1109, N.S., were referred to and distinguished from the present; and the case, Gye v. Hallam, 10 Sh. & D. 710, was relied on as conclusive of the question on the 1st exception. the learned judge said, that the existence of a machine, if not A.D. 1843. made public, is no answer. That was precisely the doctrine laid down in Morgan v. Seaward (d). [Lord Campbell: That case was well decided; one of the machines made at the manufactory in London had been sent to the Mediterranean.] The learned Chief Justice Clerk did not direct the jury in the manner stated in the 11th exception; that exception misstates the charge. The whole charge must be looked to for the purpose of ascertaining the general effect of the direction. There is no allegation of prior use except as to the novelty of the invention. There was no suggestion that Neilson had borrowed it from the Bradley Works, or that he had ever heard of the experiment. The whole prejudice of the iron masters was against it, so much so, that in some cases they had adopted means to cool the air, founded on the observation that the furnaces worked best in the depth of winter. The question of prior use does not arise on this record; at all events it can only arise in two ways-either under the words of the statute, which says, that letters patent shall only be granted for that which others at the time of making such letters patent shall not use; or as destroying the character of inventor, if it be shown that the invention has been used at a prior time. The question of prior use is not raised on the record, and the charge cannot be found fault with in respect of this, for there was no suggestion of any use at the time the patent was granted (e). [Lord Campbell: This being a court of appeal, we can only look at the record, and we must see whether there has been a misdirection upon some issue he was trying, and that upon some question put to the jury, they have, or may have, improperly answered by reason of the misdirection. The issue is, whether the invention is not the original invention of the pursuer, and it is only to that issue that the misdirection, supposing it to be one, can apply.] If the whole charge be looked to, it is perfectly clear that the learned judge was speaking exclusively of the proceedings at Bradley, and of the experiments and trials there. That cannot be said in any sense to have been a completed operation, or to have been treated by the party as a perfected and completed discovery. The proof amounts to an experiment, and to nothing but an experiment and trial that had not been successful, and was abandoned soon after it was instituted, and not kept on foot to the time. [Lord Brougham: I do not see how any experiment ever can vitiate a patent to whatever time it is continued. Let the experiments go on to the end of his life, the patent goes on at the same time.] That (d) Ante 194. The following cases were cited on the part of the respondents with reference to the question of the user, which would vitiate subsequent letters patent: Jones v. Pearse, ante 124; Lewis v. Marling, ante 496; Cornish v. Keene, ante 508 & 519; Galloway v. Bleaden, ante 525; and Carpenter v. Smith, ante 542. (e) See the observations of the Lord Justice Clerk in the summing up, ante 689. Lords. In the House of which was done at the Bradley Works was an experiment so far as Mr. Wilkinson was concerned; he had not attained any successful result. The law of the learned judge, if it influenced the jury at all, must have influenced them against the pursuers, and in favour of the defenders, because it amounts to a direction, that the patent is not good if experiments at the time of granting the letters patent shall have been in progress, producing a similar result, or in which an apparatus was used of the character described in the patent; that may be bad law, but no party can take advantage of it by a bill of exception, unless the direction be against his adversary and in favour of himself. The direction given must be taken to have reference to what took place at Bradley; that is the only user relied on to invalidate the title of the patentee. Suppose the learned judge to have said, I think the patent is bad if that experiment was continued down to the date of obtaining the letters patent: an objection might have been taken to that on the part of the pursuers, but the defenders cannot object that it was something to influence the jury against them. It is clearly settled, that if a judge state that which is not law, that would be no ground for exception, so as to set aside the trial, unless it might mislead the jury upon the issue joined on the record. [Lord Lyndhurst, L. C.: If the learned judge was speaking of experiment, it is quite clear that the defenders cannot be prejudiced by what he says of these experiments being continued down to the time of the patent. Suppose the cylinder spoken of at Bradley to be used now, would it not be heating air in a separate vessel, and, according to the judgment of the Court of Exchequer, an infringement of the patent; and if an infringement, is it not prior use?] The question is, whether by a use at Bradley of a few weeks, confined to those works, it loses the character of an experiment, and becomes a public use of a perfected invention? There is no announcement or publication to the world of the discovery; it begins and ends in experiment, and is abandoned as useless. The only ground of public use is, that there were many work-people employed; but witnesses well acquainted with Mr. Wilkinson prove that they never heard it mentioned, and the whole iron trade were so ignorant of it, that instead of heating, they took precautions for cooling the air. The reply. The Lord Advocate in reply. In arguing the first exception it may be assumed, that evidence of the use of the very same invention was rejected, on the ground that the fact so tendered had not been sufficiently stated on the record. The issue, whether Mr. Neilson was the original inventor, taken by itself, admits of every latitude, but the party is said to be precluded by the record. A party may be narrowed in his proof in two ways; the issue itself may be a limited one, or the issue being |