JAMES BROWN of Eskmills, near Edin burgh din-} Appellant. 1842: Feb. 24, 25. ALEXANDER ANNANDALE and SoN, Pa-l per Manufacturers at Polton, in the Respondents. County of Mid-Lothian It is essential to the validity of a Scotch patent that the invention THE question in this case originated in an application by the Appellant to the Court of Session for an interdict or injunction against the use, by the Respondents, of a certain apparatus or machinery in the manufacture of paper, at their works at Polton, in the county of Mid-Lothian. The Appellant's averment was, that he had invented certain improvements in the machinery for making paper, for which he had obtained letters-patent; that the machinery so invented by him had not been known to or practised by others before the date of the letters-patent; and that the Respondents, without his license or consent, had used and were continuing to use his said invention, or part thereof, to his serious injury and damage. The Respondents in their answers stated, that the machinery employed by them was purchased by them of Mr. John Evans, paper manufacturer, of Birmingham, who obtained a patent for it in 1839; and that it was substantially different from that described in the Appellant's specification; and even if it could be Patent. 1842. BROWN v. ANNANDALE. supposed that their machinery was the same with the machinery so described by the Appellant, that his patent was invalid on several grounds; but more particularly, because his alleged invention or improvements were not new, having been known and publicly used both in England and in Scotland prior to the date of the patent: in particular, that the alleged invention was previously known to and practised by the said John Evans; by Messrs. Turner, paper manufacturers at Fountain Mills, Bermondsey, near London; by Messrs. Smith & Allnutt, paper manufacturers of Great Ivy Mills, near Maidstone, in the county of Kent; and by several other paper manufacturers in England. The Respondents referred also to a patent for Scotland, which was obtained by a Mr. Dickenson, dated the 24th of December 1827 and 22d of January 1828, for certain machinery or apparatus invented by him; and they alleged that the invention of Mr. Dickenson was the same in substance and effect with the invention claimed by the Appellant, and was used in Scotland prior to 1836. While matters were in this state the Appellant instituted an action against the Respondents, in which he set forth his letters-patent, and recited the specification of his alleged invention: then he averred that the Respondents had infringed and were continuing to infringe the patent; and concluded against them for payment of 1,000l. in damages. The Respondents met this action as they had met the application for injunction. They denied the infringement, and averred that the machinery employed by them in the making of paper was substantially different from what the Appellant claimed as his invention; and they again pleaded the invalidity of the patent, inter alia, "because his alleged invention or improvements were not new; but, on the contrary, were known and publicly used both in England and Scotland prior to the date of the patent." The two processes having been conjoined, by an interlocutor pronounced by the Lord Ordinary on the 20th of February 1840, a record was made up in common form. The following admissions and issues were afterwards adjusted: viz. "It being admitted that, on the 4th day of February 1836, the pursuer obtained letters-patent under the great seal used in Scotland in place of the great seal thereof, whereby there was granted the exclusive privilege, during the period of fourteen years from the said 4th of February 1836, of using, as his original invention, certain machinery, as described in the said letters-patent and in the specification enrolled in the Court of Chancery, for the application, in paper-making, of a vacuum to the horizontal web of wire-cloth of a Fourdrinier machine, in the manner described in the said specification: "Whether, during all or any part of the years 1839 and 1840, at the paper-mill works of the defenders at Polton, subsequent to the date of the said letters-patent and the said specification, the defenders, by themselves or others, without the consent or permission of the pursuer, wrongfully and in contravention of the said letters-patent, used in their said works machinery in imitation of, and substantially the same with, the machinery described in the said specification, to the loss, injury, and damage of the pursuer?" Or, "Whether the said machinery described in the said specification is not the original invention of the pursuer? "Whether a machine or machines, constructed according to the description in the said letters-patent 1842. BROWN v. ANNANDALE. 1842. BROWN v. ANNANDALE. and specification, is not practically useful for the purposes therein set forth? "Whether the description of the machine contained in the said specification, is not such as to enable workmen of ordinary skill to make a machine capable of producing the effects set forth in the said patent?" On the trial of these issues before Lord Mackenzie and a jury, in May 1841, after the evidence on the Appellant's part had been concluded, the counsel for the Respondents, in his address to the jury, stated that it would be part of their case to bring evidence to prove, inter alia, their averment on the record (already recited), that the invention specified by the Appellant had been publicly used in England before the date of his patent: Whereupon the admissibility of any such evidence was objected to by the Appellant's counsel, on the ground that previous public use of the invention in England was not a ground for invalidating the Appellant's patent in Scotland. Lord Mackenzie repelled the objection, and ruled that the evidence was admissible as proving a ground of the invalidity of the patent. Against this judgment the counsel for the Appellant excepted, and lodged in process this minute : "In respect of the opinion of the Judge, that the use and practice averred as to England is competent, in evidence, to establish the first issue for the defenders, the pursuer admits that the verdict must, in point of fact, go on that first issue for the defenders, subject to exception to the opinion of the Judge; the pursuer admitting that, if the above point of law is decided against him, the defenders are entitled to judgment in the cause." Upon which the jury found for the defenders on the first issue. The bill of exceptions came to be argued before the Lords of the First Division of the Court of Session, on the 8th of July 1841, and was disallowed by an interlocutor of that date; and on the 13th of July this interlocutor was pronounced:-" The Lords, in respect of the verdict of the jury in this cause, apply the same; and, in the process of suspension and interdict, find the letters orderly proceeded, and dismiss the suspension; and, in the action of declarator and damages, assoilzie the defenders from the conclusions of the summons, and decern: find the defenders entitled to expenses in said conjoined actions (a).” The appeal is against both those interlocutors. The Attorney-general (Sir F. Pollock), for the Appellant: The question to be considered is, whether according to the laws of England and Scotland, as they now stand with regard to letters-patent for inventions, the condition of novelty inserted in the grants extends beyond those parts of the United Kingdom respectively for which the grants are made? that is, whether it is not sufficient that the invention be new in that part of the United Kingdom for which the patent is granted? English as well as Scotch patents derive their force solely from the prerogative of the Crown, immemorial usage, and common law, and not from any statute laws. The only difference between them is, that in England there is a statute, 21 James 1, c. 3, restraining the prerogative as to the duration of the grant: in Scotland there is none; each country is perfectly distinct. By that statute it is declared, that all monopolies and letters-patent heretofore granted. or hereafter to be granted for the buying, selling, making, working, or using anything within this realm (a) 3 Dunl. B. M. & D. 1189. Ин VOL. VIII. 1842. BROWN v. ANNANDALE. |