1841.

KAY

n.

MARSHALL.

the patent was extended for a term of three years beyond the 14 for which it was originally granted.

The appeal is against the orders of the 31st of January 1837 and the 16th of July 1839, and also against the proceedings subsequent to the first of those orders.

Sir Frederick Pollock and Mr. Kindersley, for the Appellant:-The order of the 31st of January 1837, for the case to the Court of Common Pleas, ought not to have been made. The Respondents' pieas, their only defence, having been falsified by the verdict of the jury, the Appellant was entitled to a decree in the terms of the prayer of his bill. The Respondents tried every sort of defence: first by demurrer, in which they failed (e); then by plea and answer, in which they had no better success; and, lastly, by a trial at law, in which they were defeated and the Appellant's patent was established. The Respondents having put their defence to the bill on pleas-which they were allowed by the extraordinary indulgence of the Court to plead, in a very objectionable form, after the time of pleading had elapsed (f)—it was not competent for them to abandon that defence and set up another, but they ought to be held to stand or fall by the pleas they put on the record. Lord Redesdale, in his Treatise on Pleading, says, if a plaintiff conceives a plea defective in form or substance, he may take the judgment of the Court on its sufficiency, and upon argument of the plea it may be allowed simply, or the benefit of it may be saved to the hearing, or it be ordered to stand for an answer. may If a plea is

(e) 1 Myl. & C. 373.

(f) 1 Keen, 190.

may

allowed, or a plaintiff without argument thinks it, though good in form and substance, not true in fact, he take issue on it, and proceed to disprove the facts on which it is endeavoured to be supported; for in that case the truth of the plea is the only subject of question remaining, so far as the plea extends. If the defendant then fails in proving the facts suggested by the plea, so that at the hearing the plea is held to be no bar, and the plea extends to the discovery sought by the bill, the plaintiff is not to lose the benefit of that discovery (g). In this case the defendants did fail to prove the truth of the facts of their pleas. The issue was directed, in the terms of the pleas, to try the facts suggested by them; and the verdict negativing the facts ought to be held conclusive against the defendants, not only in reference to the practice of pleading, but also in reference to the third and fifth sections of the new Patent Act (h). Prior to that Act a defendant was at liberty to make any defence he pleased to a suit for infringing a patent; but now, by the fifth section of the Act, he is required to give notice of any objections to the patent on which he means to rely at the trial, and no other objection shall be allowed to be made. The question is, whether under these circumstances, the Master of the Rolls, seeing, when the case came before him on the verdict, that the pleas were falsified by it, ought not to have given his judgment for the Appellant, instead of ordering a case for the Court of Common Pleas. The question annexed to the case was, as construed by that Court, immaterial to the issues raised by the pleas, and the order so construed was irregular, as varying on motion the decree made on the original hearing of the pleas.

(g) Mitf. Plead. 301, (Edit. 1827.)

(h) 5 & 6 W. 4, c. 83.

1841.

KAY

v.

MARSHALL.

1841.

KAY

The opinion of the Court of Common Pleas cannot be supported in law; it did not apply to the letterspatent, or to any defect on the face of them, but to MARSHALL the form of the specification-a point which was not

raised by the pleas at all. The points raised by the pleas and by the issue, and also on the case sent to that Court, was whether the machinery of which the plaintiff claimed to be the inventor was new, and whether the invention was of public utility. That machinery, though the defendants attempted by their pleas to divide it into two distinct processes, was one combined operation, by maceration of the fibres and contraction of the reach, spinning flax at a distance of 2 inches between the rollers: and the jury having found it to be new and useful, there was nothing on the face of the patent to make it void. The verdict of the jury was not neutralised or invalidated by their finding of the facts indorsed on the postea; that indorsement applied to matters stated in the specification.

[The Lord Chancellor :-A Court of Equity regards as much the indorsement on the postea as the verdict; the whole inquiry being for the information of the Judge in equity.]

It is not denied that the indorsement is part of the finding of the jury. Both together showed no good defence in law to the relief prayed by the bill. Some parts of the plaintiff's machinery described in the specification were not, nor alleged by him to be new; but the whole combination was new, and produced the most important results to manufacture. It seldom happens that the most useful inventions are perfectly new, or the result of pure science. Sir H. Davy's lamp is one of the few exceptions: philosophical instruments are also to be excepted. The patent laws protect every new combination or variation of machinery

applicable to useful purposes. Of that description was Neilson's patent for blowing blasts of hot air into furnaces; and also a patent taken out for cleaning lace by an Argand lamp lighted with gas, the novelty of which was the substitution of gas for oil. It was no part of the judgment of the Court of Common Pleas that the Appellant did not discover what was new and useful; but they held that his specification containing two separate things, both useful, but one only new, was bad, and therefore the patent was void. The jury found that the Appellant invented something deserving a patent; the Court did not deny that finding, but said the specification claimed something that was not new, and that vitiated the patent. This case is distinguishable from Brunton v. Hawkes (i) and Boulton v. Bull (k).

The opinion of the Judges of the Court of Common Pleas forms no part of the record in the Court of Chancery, and consequently is not the subject of appeal; but the judgment of the Master of the Rolls declaring the patent invalid, and dismissing the Appellant's bill with costs, which is appealed from, is founded on the same misapprehension of the claim of invention as described in the specification, instead of what is actually protected by the patent; and to that judgment the same objections apply. If the opinion certified by the Court of Common Pleas cannot be sustained, neither can the judgment of the Master of the Rolls; which ought therefore to be reversed, especially when it is remembered that the Appellant had 14 years' enjoyment of his patent, which he defended and established by several actions; and now he has obtained from the Privy Council an extension of it for three years more.

(i) 4 Barn. & Ald. 541.

(k) 2 H. Blac. 463.

1841.

KAY

v.

MARSHALL.

1841.

KAY

V.

MARSHALL.

June 18.

Mr. Pemberton and Sir William Follett, for the Respondents:-What the Appellant claims as new machinery is not new. The placing the rollers at 2 inches distance is not new: they have been placed nearer in cotton-spinning.. They have always varied in distance, according to the length of the fibre of the substance to be spun. Suppose the macerating of the flax is new, then the patent ought to be taken out for that only, and not for two processes, one of which is not new. If part of the invention claimed fails, the patent for the whole is void. The Appellant does not claim anything in respect of the macerating process, which he says is now unnecessary: he claims for the machinery for spinning; which, not being new, cannot be the subject of a patent.

[The reports of the argument on the demurrer (1 Myl. & C. 380), of Sir W. Follett's argument on the case in the Common Pleas, and of the reasons given by the Judges of that Court for their opinion (5 Bing. N. C. 492), and again of the judgment of the Master of the Rolls (1 Beav. 535), together with the following judgment of the Lord Chancellor, make it quite unnecessary to give here more than the above outline of the arguments on the present occasion.]

The Lord Chancellor :-In this case the plaintiff complains of the defendants' having infringed his patent, and of the course which has been taken below; one, certainly, not of very ordinary occurrence, as your Lordships will see when I call your attention to the mode in which the case was disposed of in the course of the proceedings. The bill sets forth the letters-patent and specification, and states that the invention was in respect of machinery for preparing and spinning flax, hemp, and other fibrous substances. It states the specification, and then states that the first