length of the staple or fibre of the flax; and that such machinery was not adapted to the spinning of flax in a wet or macerated state: That the Appellant, after many experiments, discovered that by a new combination of the drawing and retaining rollers, that is, by placing the drawing rollers at a distance of 2 § inches only from the retaining rollers, the skein of flax or roving might be drawn out and spun in a wet or macerated state; and that when drawn out and spun in such prepared state, a thread of a much finer and stronger texture could be produced than could be produced from the skein or roving drawn and spun with the machinery, and according to the method in use prior to the Appellant's invention: That the Appellant having made such discovery, and having contrived machinery more convenient for preparing flax by macerating or wetting the same, than any theretofore in use, and having also invented new and improved machinery for spinning flax in such macerated or prepared state, constructed on the principle of such new combination of the rollers, he obtained the aforesaid letters-patent, applicable as well to his improved method of preparing flax as to his improved machinery for spinning flax when so prepared: That by reason of improvements made in the preparation of flax subsequently to the date of the letters-patent, the process of macerating flax in the mode described in the specification had become altogether or in a considerable degree unnecessary; the skein of flax being, by reason of the improved preparation thereof, rendered capable of being sufficiently wetted for drawing and spinning, by being made merely to pass through a trough of water previously to being drawn out and spun, which, prior to such improved mode of prepa

1841.

KAY

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MARSHALL.

ration, and when the Appellant obtained his letterspatent, was not the case; but the Appellant's said improved machinery for spinning flax when so prepared was a new invention, of great public utility, and used to a great extent; and that by means thereof flax could be spun into a thread of a much finer and stronger texture than by the old method; and that since the promulgation thereof, machinery made upon the principle thereof had been substituted for the machinery formerly in use, and great profit had been derived from the use of such new and improved machinery.

The bill then stated that the patent granted to the Appellant was a valid patent, and still in full force; but that nevertheless the defendants had, without his licence or authority, caused great quantities of new and improved machinery for spinning flax to be constructed upon the principle of his said invention, and had used, and continued to use the same in their spinning mills, without making any compensation to him for the use thereof. And the bill charged, that since the Appellant obtained his patent, new machinery had been introduced into the defendants' mills, constructed on the principle of the said invention, and especially with regard to the position of the drawing and retaining rollers, which was a material part of the invention: that the Appellant had brought many actions at law against parties infringing his patent, who had all submitted and paid him damages; and in particular against one William Renshaw, against whom he had recovered a verdict for damages, and thereby established the validity of his patent. The bill, after further charging that the defendants had much increased their business of flax-spinners, and derived

great profits from the use of the Appellant's invention, prayed that they might be restrained from all further infringement of his patent; and that they might account for the profits derived from the use of the said invention in the spinning of flax.

The defendants, having allowed the regular time for demurring to the bill to expire, obtained the special leave of the Court to put in, and they accordingly put in a general demurrer, which came on to be argued in June 1835, before the Vice-Chancellor, when his Honor ordered that it should stand over, with liberty to the Appellant to bring an action. That order was afterwards discharged by the Lord Chancellor, and the demurrer overruled by an order, dated the 1st of February 1836 (a). The defendants then, by leave obtained on a special application to the Master of the Rolls to file a double plea (b), put in two pleas to the bill, and an answer in support of them :

1st, That the Appellant had not before and at the time of the making of the letters patent, found out and invented any new and improved machinery, as in the bill and the letters patent and specification was alleged.

2dly, That the Appellant's alleged invention, as in the bill and letters patent and specification described, was not before and at the time of the making of the letters-patent of much or any public benefit and utility.

The cause came on to be heard upon the pleas and answer in June 1836, before the Master of the Rolls, when it was ordered that the parties should proceed

(a) 1 Myl. & C. 373.

(b) 1 Keen, 190.

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MARSHALL.

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to a trial at law upon two issues, directed in the terms of the pleas; the Judge before whom the trial might be had, to be at liberty to indorse special matters on the postea.

The issues accordingly came on to be tried at the Summer Assizes for the county of York in 1836, before Mr. Baron Parke, under whose direction a verdict was found for the Appellant on both issues, with the following indorsement on the postea, of facts found by the jury; viz. "That before the granting of the patent, flax, hemp, and other fibrous substances were spun with machines with slides, by which the reach was varied according to the length of the staple or fibre of the article to be spun, and that that has been a fundamental principle of dry spinning known and used before the granting of the patent; the reach having varied in cotton spinning between ths of an inch to 14 inch; in flax or line spinning from 14 to 36 inches; in tow spinning from 4 to 9 inches; in worsted spinning from 5 to 14 inches. But before the granting of the patent, it was not known that flax could be spun by means of maceration as having a short fibre at a reach of 2 inches, or about those limits. But before that time Horace Hall had taken out a patent for, &c., with a specification as annexed; and the machines manufactured according to that patent were constructed with the reach of 4 inches."

The defendants moved before the Master of the Rolls that a new trial might be directed, or that a case might be directed for the opinion of the Court of Common Pleas. On the hearing of that motion on the 31st of January 1837, his Lordship, with the acquiescence of both parties, as the Respondents

alleged, ordered a case for the opinion of the said Court; and that it be referred to the Master to settle such case, if the parties should differ about it.

To the case afterwards settled by the Master, exceptions were taken by the Respondents, and allowed. The case, as finally settled by the Master and approved by the Court, stated the letters-patent and specification, the due inrolment of the specification within six months after the date of the letters-patent, the said order directing the issues, the issues so directed, the verdict found on them, the indorsement on the postea, the letters-patent mentioned therein as having been granted to Horace Hall, with the specification thereto belonging, and that the finding of the jury on the issues and the facts, as found and indorsed on the postea, were to be assumed to be true. The question for the opinion of the Court was, "whether the Appellant's patent was valid in point of law."

The Judges of the Court of Common Pleas, after hearing the case argued, certified that they were of opinion that the patent was not valid in point of law; and their Lordships sent with the certificate their reasons for their opinion (c).

The cause came on to be heard on further directions before the Master of the Rolls, on the 27th of May 1839, and afterwards stood for judgment till the 16th of July 1839; when his Lordship being of opinion that the patent was invalid, ordered that the Appellant's bill should stand dismissed, with costs both at law and in equity, except the costs of the issues (d).

By an order of the Privy Council, dated the 13th of June 1839, between the last hearing and judgment,

(c) See 5 Bing. N. C. 492.

(d) 1 Beavan, 535.

1841.

ΚΑΥ

v.

MARSHALL.