the statute are not strictly pursued. I think the plea is am- A.D. 1842. biguous, and that the plaintiff might be put in a difficulty how to meet it.

COLERIDGE, J.: I am of opinion that the declaration is good. The words of the statute extend to what has been done in this case; and the disclaimer has been made by the party who has obtained it within the meaning of the statute. The words 'assignee or otherwise" may be reconciled with our construction, "that the person who has obtained" means the original grantee, for the words "assignee or otherwise" may apply to a foreign invention, of which a party in this country may become the assignee, and be the first to obtain an English patent for it (e). The inconvenience which would result from allowing a person who has parted with his right to enter a disclaimer without any restriction, is obviated by the provisions with respect to the caveat, and by the control to which it is subjected of the officers of the crown.

The fourth plea is substantially defective; a person asked to advise upon the evidence to rebut it, would be in doubt as to the point to which it should be directed.

WIGHTMAN, J.: It is only by a forced construction that the word "obtain" could be construed to apply to any other person than the person to whom originally the letters were granted by the crown. The argument ab inconvenienti is answered by a reference to the provisoes in the first section.

If the fourth plea had omitted the words "within this realm," it might have been good; but as it stands, it applies those words to the invention, whereas the act applies them to the working or making (ƒ).

(e) Sec ante 256, n. a.

Judgment for the plaintiffs.

(f) The concluding observation of this learned judge on the construction of the statute, is of the greatest importance with reference to the question, whether the simple user of an invention or article imported from abroad, without any knowledge of the construction of that article, or its constitution, or of the source whence it came, there being no manufacture of the article within the country, will vitiate letters patent for the same invention granted to an independent inventor, who knew nothing of the existence of such an article; or, knowing of its existence, had no knowledge of how it was to be made, but who either received the knowledge of the manufacture from abroad, or invented it by his own wit and ingenuity, and introduced the working and making of such a manufacture into the realm through the medium of the specification of letters patent, and the putting the manufacture into practice, and the general notoriety consequent on such proceedings. In the case of any simple mechanical combination, as a lock of peculiar construction, the fact of the existence and user of such an article within the country would raise a strong presumption

against the grantee of such letters patent being an independent inventor; this however would be a question of fact. (See Lewis v. Marling, 10 B. & C. 22, and ante, 126.) But in the case of a compound, presenting little or no trace of its elements, and of their proportions, as a metal, a paint, a cement, a medicine, and similar articles, the discovery of the working and making of such a manufacture may be matter of great research and difficulty; the constitution of the article itself, together with the fact of its previous user in ignorance of its manufacture, would be evidence to raise a strong presumption in support of the claim of such grantee to be an independent and

real inventor.

The difficulty which this question presents, appears to arise from not distinguishing between the use of an invention or article as a consumer, and the using, exercising, and putting in practice, the invention spoken of in the letters patent as a manufacturer of an article, which is, in fact, the working and making of the manufacture spoken of in the statute. The purchaser, user, and consumer of a patent lock, cork-screw, medicine, and paint, does not use, exercise, and put in practice,

Nov. 25, 1837.

In actions for

Notice of Objections under 5 & 6 W. 4, c. 83, s. 5 (a).

BULNOIS V. MACKENZIE.

[4 Bing. N. C. 127.]

This was an action on the case for infringing a patent for an infringing a pa- improved cabriolet, invented by Moses Poole, and by him asof objection de- signed to the plaintiff.

tent, the notices

livered by defendant under 5 & 6 W. 4,

c. 83, s. 5, are

not conclusive

the court or a

The defendant pleaded several pleas, and delivered with them a notice of the following objections to the patent: First, that the alleged invention was not at the time of granting the patent peril; but new; secondly, that Poole was not the true and first inventor; judge, under thirdly, that Poole was not at the time of granting the patent in their general the possession of the alleged invention; fourthly, that at the time jurisdiction, as well as under of granting the patent the alleged invention had been used by others; fifthly, that the supposed improvements were not a new invention as to the public use thereof; sixthly, that the specification was imperfect, in not ascertaining the nature of the invention, and not showing the application of the alleged improved construction. These objections were a mere echo of the pleas.

the statute, may

order a further

and fuller no

tice.

On the 14th of June last, Park, J., after hearing counsel on both sides at chambers, upon a summons for further and better objections, ordered the defendant's attorney to deliver a further and better account in writing of the objections to be relied on. Whereupon the defendant added to his fourth objection, that the alleged invention had been used by James Hargrave Mann, in England, and by divers other persons in other parts of the kingdom; altered the fifth, into an objection that the specification did not describe the nature of the invention; that every matter or principle stated in it was already known to the public, and open to public use; and that it contained no new combination:

the manufacture of those articles, or the said inventions, within the meaning of the letters patent; if he did, such purchaser, user, or consumer, would, in the words of the letters patent, require a license to use the same, in writing, under the hand and seal of the patentee. The not attending to this distinction, between the using an invention, and the working and making of the manufacture, of which the invention is the result, has given rise to some difficult questions in the law of patents, and which would appear not to be well founded. See that suggested by Lord Eldon, ante, 7 & 48; see also ante, 216, in notes.

(a) The fifth section is as follows: "And be it enacted, that in any action brought against any person for infringing any letters patent, the defendant in pleading thereto shall give to the plaintiff, and in any scire facias to repeal such letters patent

the plaintiff shall file with his declaration, a notice of any objections on which he means to rely at the trial of such action; and no objection shall be allowed to be made in behalf of such defendant or plaintiff respectively at such trial, unless he prove the objections stated in such notice; provided always, that it shall and may be lawful for any judge at chambers, on summons served by such defendant or plaintiff on such plaintiff or defendant respectively, to show cause why he should not be allowed to offer other objections, whereof notice shall not have been given as aforesaid, to give leave to offer such objections, on such terms as to such judge shall seem fit." On the general construction of this section and the practice under it, see the subsequent case, and also Neilson v. Harford, post 332, 352, 362, and

$70.

and the sixth into an objection, that vehicles with two wheels, drawn by one horse, and entered behind, were in public use before the granting of the letters patent; and that the specification did not set out with any certainty what Poole claimed as his invention.

The plaintiff then took out a summons, calling on the defendant to furnish the name, description, and place of abode, of the persons referred to in the fourth objection, and further and better objections in lieu of the fourth, fifth, and sixth, or to be precluded from calling witnesses in support of the fourth.

VAUGHAN, J., after hearing counsel on both sides on the 22d of June, made an order to that effect. The defendant then added to the first objection, that the details of the alleged invention (specifying them), as well as the alleged invention, were not new; and in the place of the fourth, fifth, and sixth objections, substituted a minute detail of defects in the specification, concluding the whole with a statement of the address and description of Jams Hargrave Mann.-Early in the present term,

Sir F. Pollock obtained a rule to rescind the two orders of the 14th and 22d of June, and for the defendant to be at liberty on the trial of the cause to rely on the objections originally delivered with the pleas. He contended that, under the late statute, the defendant must deliver in a particular of objections, at his own peril, and that the judges had no authority to interfere under their general jurisdiction.

Wilde, Sergt., and Hoggins, who showed cause, insisted that even if the late statute did not confer any authority in this matter, the court had a right to interfere by virtue of their general jurisdiction in regulating the proceedings in a cause; as, in ordering particulars of a plaintiff's demand; further particulars; the production and inspection of documents, and the like; for which orders there was no authority by statute. In Blackrey v. Porter (1 Taun. 386), they ordered a copy of an assignment of a lease, to enable the plaintiff to commence an action of covenant. And, in general, where a party can obtain an inspection of documents in equity, this court will compel it in the progress of a cause. Under the statutes of set-off the defendant may said to act at his peril, and no express jurisdiction is given to the court; and yet it is the constant practice to order amended particulars of set-off. But the proviso in s. 5 of the late patent act, seems to point expressly to a discretion in the court.

be

Here, the first notice of objections was altogether illusory and vague, and gave no more information than the plea. The plaintiff was at all events entitled to know the names and addresses of the other persons besides Mann, who were alleged to have used the plaintiff's invention; otherwise, if the evidence as to

Mann were answered, the plaintiff might still be taken by surprise as to the others who were not named.

Sir F. Pollock and R. V. Richards, in support of the rule, argued, that to enforce those orders would be an unfair exposure of, and interference with, the defendant's evidence; that the jurisdiction of the court in controlling the proceedings in a cause, appeared by the year books to have commenced in the reign of Henry VII., when pleadings were ore tenus: the court then compelled a defendant to produce a document; but that was a usurpation which the court would not now be disposed to extend; otherwise it might become impossible to draw a line. The court might be called on to order particulars of every plea that was pleaded; the time, place, and manner of son assault demesne, and the details of the trading, debt, and act of bankruptcy, which the plaintiff's assignees must prove upon being required to do so. The defendant being precluded from giving evidence of any objection of which he has not given notice, the sufficiency of the notice will be determined at the trial. And as to the names and addresses of the other persons mentioned in the notice, the defendant may be able to prove that several persons have been seen using it, with whose names he is unacquainted. In Crofts v. Peach (b), in an action for the infringement of a patent, the court held, that the plaintiff could not be compelled to produce a specimen of the patent articles to enable the defendant to prepare his defence to the action. If these orders be enforced, it will rest with a judge at chambers, and not with the defendant, to say on what evidence he shall go to trial: he proceeds on notices given by the judge, and not on those for which the statute has made him responsible. The analogy of set-off has no application, for a set-off is a species of cross action, of which the party is bound to furnish all the particulars; and this is the first time that an order like the present has been made.

TINDAL, C.J.: This is an application to set aside two orders of a judge at chambers; one for further and better objections in answer to an action for infringement of a patent; that has been complied with, and therefore there is no occasion for setting it aside the other, for the address of James Mann and other persons, who are alleged by the defendant to have used the invention before the plaintiff. To a certain extent, that order has also been complied with, for the address of James Mann has been furnished: to that extent, therefore, it is unnecessary to

:

(b) Post 268; but see Perry v. Mitchell, post 269. These two cases are, however, clearly distinguishable; the application in the former case was refused on the ground that the specification furnished the requisite information. In the latter,

the plaintiff sought information as to which of several inventions contained in the specification the infringements were alleged; but the court did not order specimens of his manufacture under those several parts to be furnished.

tion.

rescind it; and the only question is, whether it should be rescinded as to the name and address of the other persons. I accede to the proposition, that the court has the right to model The court a these proceedings under its general jurisdiction; and I protest these proceedright to model against the word usurpation, which has been employed on the ings under its part of the defendant. It is admitted by the learned counsel, general jurisdicthat this jurisdiction was exercised in the reign of Henry VII.; it has constantly been acted on ever since; and it is most beneficial to the parties, who would otherwise be driven to a court of equity. But looking at the words of the statute 5 & 6 W. 4, c. 83, s. 5, I think it falls clearly within the same construction as the statutes of set-off. I cannot see any objection to the court's looking at notices delivered by the defendant, and determining whether or not they are sufficient. At the same time there is a generality in the words of the section, which leaves it open to doubt, whether under, the words "notice of objection" Doubtful whewe can require the defendant to furnish the names of those who are alleged to have used the plaintiff's invention. We shall therefore rescind so much of the second order as requires the defendant to furnish the names and addresses of those other persons. The consequence will be that the judge at nisi prius will admit or reject evidence as to those persons, according as he may deem it to fall within the terms of the notice or not; and then one of the parties will tender a bill of exceptions. I regret that the defendant declines to preclude this inconvenience, by complying now with the judge's order.

ther names can

be required.

VAUGHAN, J.: It is true that the order is new in specie; but before the recent act and the new rules of pleading, the question was not likely to arise; because the defendant might give in evidence whatever he pleased, under the general issue. I think The notice of objections the construction I put on the act was correct. It meant to meant to afford afford the plaintiff more specific information than was given by more specific the defendant's plea (c), and therefore, I think the present the plea. notice insufficient; for if the defendant fail as to the alleged user by James Mann, he has only to resort to the others, as to whom the plaintiff must now be taken by surprise.

information than

decide on the

created by the

BOSANQUET, J.: I entertain no doubt as to the power of the The court may court to decide on the sufficiency of these notices of objection. sufficiency of I do not consider it to have been created by the late act of par- the notice. This liament, but the fifth section of the act engrafts itself on the power is not practice already existing. The practice as to notice of set-off is statute. exactly analogous. The defendant originally gave merely the heads of his set-off, which afforded the plaintiff little information; the courts therefore required him to furnish such particu

(c) Thus per Lord Abinger, C.B., the notice of objections is to apprise the plaintiff of what he has to meet, ante 203.