1841.

ΚΑΥ

V.

process, namely, that of macerating the flax, had to a considerable degree become unnecessary. It then complains of what the defendants have done, not as MARSHALL. interfering with the plaintiff's patent as regards the preparing of the flax for spinning, but as having invaded his patent so far as it was for an improved machinery for drawing and spinning flax; which machinery for drawing and spinning flax is stated to have been in use, and very generally adopted. That is the complaint made by the bill, to which the defendants pleaded, and by their pleas thus raised two objections to the plaintiff's title. The first objection was, "That the plaintiff had not before, and at the time of the making of the letters-patent in the bill mentioned, found out and invented any new and improved machinery, as in the said bill of complaint, and in the said letters-patent and specification, is alleged." That objection therefore was, that the patent was bad, because the invention described in the letterspatent and specification was not new, that there was not any novelty in it ;-alluding to the rule of law, that if any part of that which is claimed as a new invention, was not in fact new, the patent would be bad. First of all, upon the construction of this plea, I cannot entertain a doubt that the terms "any new and improved machinery, as in the said bill of complaint and the said letters-patent and specification is alleged," are to be construed as meaning any such machinery as is there alleged, and in respect of which the patent is claimed: but I apprehend that that does not now come before your Lordships for decision.

The two pleas having been set down for argument, an issue was directed, which was afterwards tried. No judgment was pronounced on the validity of the pleas, the parties having, although it is not expressed in

1841.

KAY

v.

MARSHALL.

terms in the order, thought it expedient to proceed to the trial of the truth of the pleas, not obtaining or asking the judgment of the Court as to the legality of the pleas, and as to how far they raised the important fact. They proceeded to a trial accordingly, and on the trial the jury found in favour of the novelty and of the usefulness of the invention; but there was an indorsement on the postea, which stated-[His Lordship read the indorsement, as before stated, p. 250:] -Now that indorsement, which is to be taken as part of the information which the Court was to act upon as ascertained before the jury, states the various distances at which the rollers were placed in the ordinary spinning machines, and states as a fact, which cannot now be in dispute, "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." We have it therefore as a fact, now to be assumed as true, that spinning machines were constructed with rollers, the distances between which varied according to the substance to be

spun.

Now all the variation which the plaintiff introduced into the ordinary spinning machine, which he claims as his invention, is fixing the rollers at 2 inches distance from each other; and that he states is such an improvement to the ordinary spinning machine as entitles him to be protected from all the rest of the world, against their using spinning machines with the rollers at that distance. It is not, as was argued at the bar, one invention, namely, the macerating the flax, and using the flax so macerated, with a particular machine. The earlier part of the invention he not only does not claim as against the defendants, but does not complain of the defendants as having

used that, which, in point of fact, it is quite clear they did not so use; and in point of fact, it is quite clear that he has not adopted that mode. Another mode has been adopted of macerating the flax, and the flax so macerated by another process has been used in a machine with rollers at the distance of 2 inches.

If the patent be good so far as the spinning machine is concerned, that is to say, if the plaintiff has a right to tell the defendants and all the rest of the world that they shall not use the common spinning machine with rollers at 2 inches distance, then the existence of the patent deprives the defendants and all the rest of the world of the right of using the ordinary spinning machine in the form in which they had a right to use it before the patent was granted. That is not the object of the patent: if he has discovered any means of using the spinning machine which the world had not known before, the benefit of that he has a right to secure to himself by means of a patent; but if this mode of using the spinning machine was known before -and the indorsement upon the postea states that it was known before-then the plaintiff cannot deprive them of having the benefit of that which they enjoyed before. The indorsement on the postea, stating that the rollers had been used at a variety of distances (not precisely specifying 24 inches, but stating that the distances had been made to vary according to the length of the fibre to be spun), appears to me to establish a fact which is of itself conclusive against the plaintiff. Some question was raised at the bar as to whether the effect of the maceration was to shorten the fibre: there is no very distinct evidence on the subject, but upon referring to what has taken place in the Court below, it does not appear that any doubt existed that the effect of the maceration was to detach

1841.

KAY

V.

MARSHALL.

1841.

KAY

บ.

MARSHALL.

one fibre from another; the substance consisting of a variety of fibres of the length of 2 inches each, which, when combined, constituted a compound fibre of considerable length, but when detached by means of maceration by the application of moisture, then each individual fibre was reduced to the length of 2 inches. It does not appear to me, however, that this case can depend upon this circumstance, because the real use of the spinning machine, before that process of maceration was introduced, was this,

-a machine for spinning with rollers at any distance at the option of the party using it, or according to the substance to be spun; and any substance might be spun that was capable of being so spun, with rollers at 2 inches distance, because the fibre was of that length, or for any other reason; that is quite immaterial. The question is, whether it is an innovation the placing the rollers at 2 inches distance from each other: but by the indorsement on the postea, we are told that the distance between the rollers varied according to the length of the fibre of the substance to be spun. Under these circumstances, the case now being reduced simply to the question whether the construction proposed by the patent is an improvement of the spinning machine, it appears to me that the judgment of the Court of Common Pleas is well founded, confined as it is now to that point; and that such a patent is not valid in point of law. Some objection was made to the course which was adopted in sending the case; that is to say, to the terms in which the case was sent. It appears there is no question that the parties below were willing to adopt the terms proposed, in order to put an end to the litigation; and that the Court therefore sent a case embracing the right of the parties, namely, the validity of the patent, confined to the particular point

raised. That of itself would be an answer to the objection now made to the form in which the case was sent; because this House will not permit parties, upon appeal, to raise an objection which they did not think proper to raise before, and on which they did not obtain the judgment of the Court below.

But even independently of that consideration, although the terms of the question for the Court of Common Pleas are as to the validity of the patent, you must take the whole case together: you have the facts stated which raise the objections to the validity of the patent, which are contained in the pleas; and these facts are confined to the question of novelty, and to the question of usefulness. In point of fact, therefore, although the terms in which the question is couched are larger than the plea, it is the very same question which was raised before his Lordship the Master of the Rolls, and that was the question on which the judgment of the Court of Common Pleas was pronounced. It does nothing more than establish this proposition, that the objection taken to the patent, namely, that it was not new and not useful (novelty is the question rather on which it turned), is a good objection; and that the patentee has failed to show that that for which alone he has claimed the patent is any novelty, and entitles him to the benefit of a patent.

Lord Brougham concurred.

Ordered that the appeal be dismissed, with costs, and that the orders and proceedings complained of be affirmed.

1841.

KAY

บ.

MARSHALL.