In Chancery. defendants cannot now be allowed to contest the validity of the Dec. 23, 1842. patent. Injunction Kenyon Parker, Q.C., and Hetherington, for the defendants: The issue to be tried is, whether or not the plaintiff's patent is valid. The Repertory of Arts for the year 1800 contains the specification of a patent granted to a Mr. Collins, precisely similar to that alleged to be the invention of the plaintiff; this at once destroys the originality of the patent. The plaintiff has had no exclusive uninterrupted enjoyment of his patent. It was never worked until September, 1837, and during the period that elapsed between that year and the dissolution of the partnership, frequent infringements of the patent occurred. It is true a bill was filed against Messrs. Vivian and Walker (d) to restrain them from infringing the patent; but the plaintiff has never, as he might have done, tried his right at law. The only point in which the plaintiff attempts to show that his invention differs from that of Mr. Collins is, that it is made of the "best selected copper," an article which he contends did not exist in the year 1800; but this distinction, supposing it to exist, would only tend to show that the plaintiff is entitled to have a patent for an improved mode of making copper sheathing, and not for the discovery of any new principle. Sir J. L. KNIGHT BRUCE, V.C.: The first question is, wheagainst parties ther, for the limited purpose of the present interlocutory appliwho have occu- cation, and as between these parties only, the patent is or is not pied and worked a patent under to be taken as valid. The utility of the process is not quesarticles of part- tioned. The specification has not been strongly attacked; and nership. it appears that there has been a conviction on the part of the defendants that the invention is the plaintiff's, and that the specification is not insufficient. Another question is as to the originality of the invention. Now, how does that stand on the evidence? The patent is dated the 22nd of October, 1832. Negotiations took place during the following year between the plaintiff and defendant for the purpose of working (as it is called) the patent in partnership together. That negotiation ripened into a contract on the 24th of September, 1833, by which the plaintiff and defendants agreed to carry on the business for a term commensurate with the duration of the patent, subject to the notice for the dissolution which has been mentioned. The articles of agreement, though not in precise terms, recite the validity of the patent, proceeding upon the notion, that they were dealing with a valid patent. In 1835, the specification of a former expired patent was observed in a scientific publication, which was brought to the attention of the plaintiff and defendants as being likely to affect the validity of the (d) Ante, 87. patent in which they were jointly interested. On that occasion, Judgment. the plaintiff, in substance, offered the defendants to close his connection with them if they were dissatisfied. This offer was refused: and the partnership went on as usual until May, 1842, when the parties not being able to agree (why was not shown), notice of dissolution was given by the defendants to the plaintiff, in accordance with the articles of agreement. On the 17th of June, 1842, the partnership expired, the result of which was to revest the patent wholly in the plaintiff. Some time before this, Vivian was supposed to have infringed the plaintiff's patent, and a bill was filed against him in this Court by the present plaintiff and the defendants, jointly as co-plaintiffs, and an injunction was moved for. That suit was conducted by the private solicitor of the present defendants, as I collect, and they used as a main part of the materials on which they applied for the injunction, an affidavit made by Mr. Muntz, in which he swore precisely as to the originality of the patent. Under these circumstances, can I, for the present limited purposes, and as between the present parties, refuse the injunction? If I were of opinion that I ought so to do, then the question of enjoyment or disturbance becomes of less importance than otherwise it would be. It appears that the plaintiff, from the first, has manu- Enjoyment and factured sheathing upon his patented plan. He endeavoured to by the plaintiff make his invention public for the purpose of selling it. It ap- from the first. pears that there existed a strong impression in the trade against it, and as it would appear from prejudice and ignorance of its real merits, for no one seemed to dispute that it was a meritorious invention. At first, therefore, it had no considerable sale; but in 1837, the patent appeared to be set actively at work, and was more known and taken up by the trade. Between 1838 and 1841, there was an attempt made to invade it by a party named Cutler, but he soon desisted. There are only three other instances of infringement, one by Vivian, another by Lyon and Newton, and a third by Freeman. Against this, there is that species of enjoyment by the plaintiff, which has taken place to the extent before mentioned previously to the partnership, and a substantial, full and complete enjoyment during 1838, 1839 and 1840. If the view I take be correct, as to the manner in which I have for the present purpose treated the question of the validity of the patent, I think I must consider the infringement as a slight circumstance. manufacture Question of infringement not considered when working after determi nation of license continued as I shall, therefore, order the injunction, as between the present before. parties, the plaintiff undertaking to abide by such order as the Injunction on Court may think fit as to compensation, and undertaking imme- undertaking as diately to bring his action to try the question of the validity of tion and action the patent, the trial to be in Middlesex, the plaintiff to com to compensa at law. Judgment. mence within a week, unless prevented by the defendants, and to deliver the declaration in three weeks (e). Injunction granted. In Chancery. MUNTZ v. FOSTER AND Others. Cor. Sir J. L. Knight Bruce, V. C. June, 1843. The injunction sought was to restrain the defendants from making, using, exercising and putting in practice the invention of the plaintiff. The bill charged, that the invention of William Collins (f) was not the same as complainant's invention: that the materials and mode of manufacture are not the same as plaintiff's said invention: and that the material called “best selected copper," a necessary article in complainant's invention, was not made or known in the year 1800; that is the year in which the specification of the said William Collins was first published. The defendant's affidavit stated "best selected copper" to have been made very extensively in the last century; and in precisely the same manner as it is now made. The plaintiff's affidavit in reply stated, that there were many and important distinctions between his own and Collins' invention, such as that 60 per cent. of copper to 40 per cent. of zinc, are the precise proportions which produce the metal best qualified for sheathing vessels; that the variation of one or two parts of copper or zinc on one side or the other of these proportions makes a very material difference in the results: that 60 per cent. of copper to 40 per cent. of zinc are the proportions stated in the plaintiff's specification: that before plaintiff's invention, it was not possible from the mixture of any copper of the qualities then used with zinc to obtain a metal which would roll hot or cold, and was at the same time capable of being used successfully for the purpose of sheathing vessels; that deponent's metal will roll both hot and cold, but that hot rolling is used by him as being much less expensive than cold rolling,— being in fact performed at one-fourth of the cost. The affidavit also stated that the advantages of this invention were, that it was less expensive and more durable than copper; and that it was not necessary that the alloy should be heated to render it capable of bearing the process of rolling. Injunction granted and action ordered (g). (e) The action was brought, but an arrangement was subsequently come to between the par ties. See specification, ante, 86. (9) Some of the subsequent proceedings will appear from the following case : MUNTZ v. FOSTER AND OTHERS. Cor. Lord Lyndhurst, L. C. July 28, 1843. Appeal by the defendants from the order of Vice-Chancellor Appeal. Knight Bruce, in the preceding case. Bethell, Q. C., J. Russell, and Lloyd, for the appellants. MUNTZ v. FOSTER AND OTHERS. Cor. TINDAL, C. J.; COLTMAN, J.; ERSKINE, J.; MAULE, J. January 30th, 1844. The action was brought on the 21st July last, in pursuance of the above orders, and issue having been joined, the cause was set down for trial and stood No. 3 on the list of special juries' causes for Middlesex, at the sittings after the present term, and was likely to be the first tried. A writ of scire facias to repeal the patent issued on the 3rd of May last, at the instance and on the prosecution of one of the defendants; the proceedings on the scire facias having been duly prosecuted, the record thereof was carried into the Court of Queen's Bench on the 25th of May, and the cause was set down for trial at the sittings for Middlesex, after last Trinity term-prior to the commencement of this action, and prior to the institution of the proceedings in Chancery. Upon affidavits of the above facts, and also stating that the scire facias had been appointed for trial in the Queen's Bench sittings for Middlesex after this term (on the 5th of February), and that the leading counsel for the prosecutor, in the action of scire facias, was also retained as the leading counsel of the defendants at the trial of this cause, and that the witnesses for the prosecutor in the said action of scire facias, and for the defendants in this cause, were for the most part, if not altogether, the same persons, and that the attorneys for the plaintiff in this cause, and the defendant in the scire facias, and for the defendants in this cause, and the prosecutor in the scire facias, were respectively the same; that the witnesses for the prosecutor in the scire facias, were in number about thirty, one of whom lived in Dublin, another in Glamorganshire (who would be unable from his infirm state of health to travel to London at this season of the year), several at Liverpool, several at Birmingham, several at Bristol, and several in the north of Staffordshire: and that the expense of keeping them in London would be very considerable. Channell, Serjt., on the part of the defendants on a former day in this term, obtained a rule, calling upon the plaintiff to show cause why the trial of this cause should not be postponed until after the trial of the scire facias. Bompas, Serjt., now showed cause upon affidavit, stating that the trial of the scire facias had been definitely fixed for the 13th of February instead of the 5th. There is nothing in the circum stances of this cause that should induce the Court to prevent the plaintiff from proceeding to trial of this case, according to his ordinary rights. The trial of the scire facias may not be conclusive; there may be a motion for a new trial, the effect of which would be to suspend the cause for a very considerable period; and seeing the short time the plaintiff's patent has to run, his exclusive privilege may be gone before the judgment of the Court is pronounced. Besides, the plaintiff is, by the order of the Vice Chancellor, put under terms to proceed with all due diligence to his action. These applications are not entitled to favour. (Haworth v. Hardcastle, 1 Pat. C. 486 n.) A similar application was made to the Lord Chief Justice in the recent case of Walton v. Bateman (1 Pat. C. 613), but without effect. Channell, Serjt., in support of his rule. The scire facias was the first proceeding here: in Walton v. Bateman it did not issue until long after the commencement of the action: and the prosecutors were the defendants in that action. The decision in Haworth v. Hardcastle proceeded on the ground of the great delay. [MAULE, J.— The Court of Chancery being in possession of all the equities between the parties, would not the proper course be to make in that Court any application tending to accelerate or retard the action?] The course of proceedings here can only be regulated by the practice of this Court, to whose discretion, therefore, this application is, it is conceived, properly addressed. TINDAL, C. J.-I feel very great difficulty where a plaintiff has duly put his cause in the list, in depriving him under any circumstances of that which may be called his common law right to try. Undoubtedly there are cases in which we should be justified in interposing; as, for instance, where public convenience requires it, or where such a course would manifestly be in furtherance of justice. But I do not think a case of sufficient strength has been made out to induce us to do so on this occasion. If it had been deemed expedient that the scire facias should be tried first, that should have been made matter of arrangement when the parties were before the ViceChancellor. ERSKINE, J.-I am of the same opinion. It is impossible to anticipate all the inconveniences the plaintiff might be put to by the postponement of the trial of this cause. I see no ground for stepping in to deprive him of his right to proceed. The rest of the Court concurring Rule discharged. July and August, 1843. In Chancery. stoppage of the defendants' manufactory, and thereby thrown between forty and fifty men out of employ. Its continuation will cause irreparable mischief to the defendants; whereas by dissolving it, and ordering an account to be kept, no injury will be done to Mr. Muntz. No infringement has been committed, as the defendants have been using Collins's expired patent. Judgment. November 3rd, 1843. tion. Sir W. W. Follett, S. G., Wigram, Q. C., and Follett, for the plaintiff. The injunction ought to be sustained. The plaintiff has been in possession of his patent for more than eleven years, during which time it has been the invariable practice of the Court in similar cases, to grant an injunction until an action could be tried. Besides, there is no proof of Collins's invention having ever been in general use. Lord LYNDHURST, L. C.—I have read the affidavits carefully and the proceedings in this case. The object of Mr. Muntz's Object of inven- invention was, to produce by a composition of copper and zinc, an alloy that would oxydate less than copper, but at the same time sufficiently to keep the bottom of the vessel clean, and possessing a degree of oxydation necessary for the purpose of sheathing; such a sheathing would be cheaper and more durable than the copper sheathing in ordinary use. Peculiar quality of metal essential. Novelty of patent not impeached by a process not producing the patent article. This object, as was found by experiments, could only be effected by copper and zinc of the purest quality, or, as he describes, of the quality known by the name of "best selected copper," and zinc of the quality distinguished as "foreign zinc." These qualities appear to be essential to the success of his invention; the process would be defeated by the mixture, except in very minute quantities, of foreign ingredients. I think these facts are sufficiently established by the evidence. But it is contended that the invention is not new, and that the patent is therefore invalid, and reference is made for the purpose of establishing this case to a patent obtained by one Collins, as far back as the year 1800, the object of which was, among other things, to manufacture sheathing of a mixture of copper and zinc; but, although this patent was obtained upwards of forty years ago, it does not appear that the article was ever introduced into use, or a single sheet of sheathing ever manufactured under it. If it ever attracted public notice, it appears to have been long since forgotten. I am satisfied on the evidence that it was unknown to Mr. Muntz at the time when he obtained his patent, and I am further satisfied the object would not have been accomplished by ordinary copper and zinc united according to Collins's process; that any attempt made to effect this would have failed, which may well account for no public use having been made during so long a period of this patent. It was said, indeed, by the defendants, that the sheathing manufactured by them, was made according to Collins's specification, but this |