« ZurückWeiter »
vention was improved machinery in making lace; it was quite H. T., 1843. clear that could only be used by persons making lace. [Maule, J.: But the making of machinery is comparatively in few hands; it is not at all like a person exercising some handicraft, or producing some article in daily use. But when you say there is a patent for a steam engine, that is a different thing. There would be no difficulty in finding out all the steam engine makers.) There the case was limited. The objection was, that it was in use by certain persons who must necessarily be lace makers. [Maule, J.: No; makers of lace machinery.] (Tindal, C.J.: Is there any objection to insert the word generally?] Each party must then produce all the lace manufacturers to prove that it was generally or not generally used. There has never been a case in which such language was permitted; in every case some names have been given, and the only question has been, whether the words “other persons' should be retained, or some names given. It is of great importance that we should know some, because then we might trace out others. [Maule, J.: It may be that the defendant has no clue to find it out. Suppose his evidence to be that there is a great deal of lace in the market; you cannot tell who made it, but you may be able to tell that starch has been used in the manufacture.) If it had been said that lace had been sold in the market by certain persons, the case would have been different, but no clue whatever is given. In Fisher v. Dewick, the lace could be identified. There was a particular spot made in the lace, and by examination it could be ascertained whether the lace was made by that machinery. If the word “generally” were inserted, that would bind the defendant to show a general use, and they would not succeed by showing it used by one or two. (Erskine, J.: The statement is—“used by many persons."] Evidence of one person could be offered under such circumstances. [Erskine, J.: I should have very considerable doubt of that.] [Channel, Sergt. : I believe the process was generally known, but not generally used, because the trade knew a better.) [Erskine, J.: The objection is not to be made, unless the objection given be proved. If the notice of objection is, that it was used by many persons, and you only prove that it was used by one, you do not prove your objection.] In Fisher v. Dewick, the objection was, that previous to the patent, means were known and publicly used, whereby ornamental spots were formed, &c., and by divers other persons, in England and elsewhere. The Lord Chief Justice struck out the words “divers other persons,” and yet that related to a much more narrow view than this, for the persons using bobbin net lace and making the spots extends only to a branch of the lace manufacture. [Tindal, C.J.: That was a patent for some improvements in machinery, not for making lace.] The statute
contemplates a bond fide notice; the notice in this case practically gives no further information than the pleas, which state
the invention to have been in use before the patent. Judgment. TINDAL, C.J.: The new rules were made before the sta
tute (e); therefore, we are not at liberty to say that the legislature did not at the time contemplate the existence of those rules, or were not aware that, in an action for the infringement of letters patent, the plea of the general issue could no longer
be pleaded, but that the different objections must be raised on The notice of the record. And that being so, we think we are bound to suptended to point pose, that as the legislature directed a notice of the objections out the defence to be given with the plea, that they mean something more than with greater degree of particu
the plea itself—something more particular and definite, calling larity than the the attention of the plaintiff with a greater degree of particu
larity (what degree is a different question) than that on the record. The question, when it occurs before us, is, whether the direction of the statute has been virtually and substantially complied with.
On the present occasion, in the first objection, after the defendant has stated that the patentee was not the true and first inventor, he goes on to state his reasons for it; that there were two different specifications of former and ancient letters patent, in which he proceeds to say, the secret, now the subject-matter of this patent, had been discovered and disclosed to the public; then he adds these words (and these alone are objected to)“and also by other persons, in other books and writings, before the date of the said letters patent in the declaration mentioned.” The only question is, whether it is a more fair compliance with the statute, that he should disclose the name of those authors,
or of the publications on which he intends to rely. Perhaps on The defendant the whole, it is a fairer and more substantial compliance with should specify the act, if the defendant does specify in his notice what are the to be relied on, books and writings on which he intends to rely. It comes prejudiced by so more clearly within the analogy of those cases that have been doing. referred to; it subjects the defendant to no real hardship, for if
he discovers other books or writings before the trial comes on, he can take out a summons before a judge, and can add these, and will be at liberty to give them in evidence. It seems on the whole that it will be a means of diminishing the expenses of the trial, of directing the attention of witnesses who will be called to more specific points, and therefore would be a more complete compliance with the object and intention of the act.
The second objection is, that the specification does not sufficiently distinguish between what is old and what is new. The ground of objection to this form of notice has been given up;
(e) The new rules came into operation Easter Term, 1834 ; the statute (5 & 6 W. 4, c. 83) received the royal assent Sept. 10, 1835.
that lies on the surface of the case; the specification is enrolled, H. T., 1843. and must be within the knowledge of the party now objecting to the notice of the objections (f).
The third is, “that the said invention was in use by many persons before and at the time of the date of the said letters patent, and particularly that the use of rice as and for starch, and the preparing rice flour to be used as starch, and the preparation of starch from whole rice, and from rice flour, were known and practised by persons engaged in the manufacture and finishing of lace and similar fabrics, and in the clear starching and otherwise dealing with lace and similar fabrics at Nottingham and elsewhere.” Therefore it appears to me, that The words ' and if the words “and elsewhere” are struck out, substituting the elsewhere to be places afterwards, if new evidence should arise within the de places to be fendant's power to produce at the trial, that there is no objec-specified should tion to this form of stating the objections in the notice. For I arise. think this case is distinguishable from that of Fisher v. Dewick, in which the patent was for alterations and improvements in the manufacture of the machinery by which lace was made. And it is a very possible thing that the use of particular wheels or cranks, or mode of making machines, may have been known and used in the particular manufacture, or in houses, but only known by those persons who were so using them. And therefore, unless the names of those persons were given, nothing is disclosed at all. At all events, if you are at liberty to add the names of persons and of others, you may only mislead the party. But this is a patent for the making of starch generally; and this notice of objections does limit the inquiry to a particular species and class of persons, who are using it in a particular trade. The defendant says, I mean to object you shall not have your patent for making starch generally, because the invention was in use among persons of this particular class, namely, lace manufacturers and clear starchers in the town of Nottingham, and by many of them. It is quite as open for the plaintiff to make inquiry in Nottingham, among persons of that description, as for the defendant to do it. I think he is not misled, but the field is open to him; the words “and elsewhere,” would open it too much against the plaintiff, and, therefore, those words should be struck out.
ERSKINE, J.: I am of the same opinion, that the legislature must be taken to have intended that something more particular than the form of pleading, as then established by the rules of the judges merely, should be included in the objections given. What the court has to say is, whether the objection is stated with reasonable particularity. It appears to me that the limita
(f) The general words at the end of the se- argument, and the court intimated that the objeccond objection had been abandoned during the tion so amended was sufficient.
Judgment. tion my lord has just stated as to the objection made on the
present occasion would give sufficient intimation to the party of the nature of the objections, so as to prevent his being misled by them, which is all the court are called on to do.
Maule, J.: I also think that, with respect to the notice of objections and the naming the persons, the act of parliament requires some statement more precise and narrowing the objections intended to be relied on than that required by the rules of pleading, which must be taken to have been known by the legislature at the time the act passed.
The case of Fisher v. Dewick, was for an improvement in machinery for the manufacture of lace, and the reason why the objection in effect was held not to be sufficient there, was, because the machinery for making lace, that is to say, the invention for which the patent was obtained, was itself in use by certain persons named and by other persons. That is no restriction or particularization of the simple objection or statement in the plea, that the alleged invention was in use before
the patent. So that there the objection was quite as wide as The pleas may the plea. And in order to narrow it, the way in which it was be narrowed by suggested it should be narrowed, was by naming the persons who sons, or limiting had so used that alleged invention. The objection here is not the nature of the inquiry.
that certain persons and certain other persons before the patent The words and had used the same process for operating on farinaceous matter elsewhere not in obtaining starch and improving the making of starch gene
rally, but it narrows it extremely. The objection excludes all publicity except the public use of a particular kind of starch, namely rice starch, and for a particular purpose. I think that is clearly much narrower than the objection of the public use of the patent, and it seems to me to be a reasonable particularization if it points out to the party who is to sustain the patent, sufficiently the nature of the inquiry that the objector intends to rely on as to the patent. It seems to me not unreasonable to say “at Nottingham and elsewhere;" for the nature of the fabric being specified, and the particular kind of starch also specified, it might well be, as my brother Bompas has argued forcibly, that there might be fabrics of that kind in the market, which could be shown to have been made of that kind of starch, though you may not be able to trace where they came from. I don't think it worth while to differ from my Lord Chief Justice in that respect; I dare say it will make no difference to the
parties if the words “and elsewhere" are struck out. Prior publica- As to the naming of the book, I think it is an objection to tion in a book
the or specification
patent, and not evidence simply of an objection, that there an objection, has been a previous patent and a specification enrolled, and and not simply therefore published being enrolled, containing the invention. objection. In the same way, I think it is an objection to a patent that it
been published in such a book; and in order to state the objection within the meaning of the act of parliament, applying
a reasonable discretion to it, I think a party may be fairly called H. T., 1843. on to state, if he can, the names or some description, whether of books or publications, in which he says that has been published.
CRESSWELL, J.: It would be difficult indeed to lay down a general rule applicable to such a case as this. Had this act of parliament been passed before the new rules of pleading were made, I should be disposed to think that the fifth section was intended to give that protection to the patentees they now have under the new rules. But as the statute passed after the new rules, I cannot but suppose the legislature was aware of them, and that something more was intended by the section than that they should have the benefit of a special plea.
As to the first part of the case, taking the objection to be that the subject matter of this patent—the invention-had been known to the public before by certain publications, I think we are authorised in calling on the defendant to give a reasonable degree of particularity to that objection, by giving some description of the publication to which he refers.
In respect to the other parts of the case, I concur in the opinions that have been already given.
Rule accordingly ().
(f) The above decision recognises and con- patent,” were struck out of the objection, that the firms the doctrine of the preceding cases, that the plaintiff was not the true and first inventor of the notice of objections must afford some more specific whole, or of any part of the said improvements. information as to the nature of the defence than The objection stated that " a particular improveis disclosed on the record, subject of course to the ment had been used by A. B., &c. (giving names exception pointed out by the Court of Exchequer, and addresses), and divers other people within in case the objection should be so fully and com- this kingdom, and elsewhere ;" his lordship struck pletely expanded on the record, as to render a out the words " and divers other people," adding, mere transcript of the plea sufficient. Ante 370. that “if the defendant discover other persons not
The distinctions adverted to between the above named in the objections, he has the power of apcase and that of Fisher v. Dewick are of considera- plying to a judge to add such persons.” ble importance, and would appear to rest on the An objection stated, that there were several difference between the use by the public as the machines, such as (naming them) and others, consumers or employers of an article, and the use to which the said improvements are inapplicable;" by others as the manufacturers or producers of his lordship struck out the words “and others." the article. The exclusive privileges granted On the objection, “ that the invention for which by the letters patent are of the latter class, that is, the said letters patent were granted, is more exthe working and making of the new manufacture. tensive than, and did not correspond with, the
invention described in the specification,” his lordFisher v. Dewick.
ship remarked, “I think the attention of the
plaintiff should be called to the particular part or The patent in this case was for improved lace parts.” His lordship made the same remark on machinery, and the invention consisted in adding an objection of discrepancy between the drawings certain parts to the existing machinery, for the and specification. purpose of forming spots. In the report of this On the objection, that "before the patent, means case (ante 266, n. a.) the result only of the appli- were known and publicly used, whereby ornacation for an amended notice of objections is mental spots might be formed in bobbin-net lace, stated. On the delivery of the amended particu- whilst the same was in progress of fabrication by lars, in pursuance of that application to the court, machinery, and that such spot was formed by a summons for further amended particulars was A. B., &c. (names and addresses), and by divers taken out, and heard before the Lord Chief other people in England and elsewhere," his Justice Tindal, at chambers. His lordship, after lordship struck out the latter words. time taken to consider, made the following remarks and alterations. The words “that the
Heath v. Unuin. plaintiff was not in possession of the said alleged improvements before or at the date of the letters In this case the notice of objections stated that