1829-11-11 The Law Journal for the Year - Lewis and Another v Marling
LEWIS AND ANOTHER v. MARLING.
Patent-Specification.
1. The patentees of a shearing machine claimed in their specification four things, among which was a brush for raising the pile of the cloth. It was proved that the brush had only been used once by the patentees them- selves, and that they had not sold one with a brush: and that, as to some cloths, it was entirely useless.
The Court held, that, inasmuch as the brush had not been claimed as essential, the mention of it in the specification did not affect the patent; for that every substantive part of a patent need not be useful, although every part claimed must be new.
The patentees claimed that they were the inventors of a machine for shearing cloth from list to list by means of a rotatory cutter. It was proved that the idea could be extracted from the specification of an older patent- that a specification of it had been received from America, and shewn to several persons -that a model of such a machine had been in England before this patent, and seen by several persons, but no machine had been made from it-and also, that a similar machine had been made, and used for a very short period, a long time ago.
The Court held, that these circumstances did not amount to a publication, and consequently that the patent was valid.
•S.C.1 Lloyd & Welsby, 28
This was an action on the case for the infringement of a patent. The patent in question had been the subject of an action in a cause, Lewis v. Davis (1); and the proceedings at Nisi Prius in this court will be found reported in 4 C. & P. 52.
The declaration stated, that the plaintiffs and William Davis were the inventors of certain improvements in shearing machines for shearing or cropping woollen and other cloths that might require such a process, the same being further improvements on a patent obtained by the said John Lewis for an improved shearing machine, dated 27th July 1815; and thereupon the King, on the 15th day of January 1818, did give and grant unto the plaintiffs and William Davis, their executors, administrators, and assigns, by his royal letters patent, his especial licence, full power, sole privilege and authority, of making, using, exercising, and vending the said invention for the term of fourteen years; that the specification was enrolled on the 14th July 1818; that William Davis, on the 24th January 1820, assigned all his interest to the plaintiffs; that the plaintiff's had used and exercised the invention to their great advantage and profit. Yet the defendant, without the licence of the plaintiffs, did make and use shearing machines for shearing or crop- ping woollen cloth and other cloths in imitation of the invention of the plaintiffs and William Davis, in breach of the said letters patent.
Second count-That defendant made ma- chines for shearing or cropping woollen and other cloths on the said improved plan, and in imitation of the said invention. Third count-That defendant used such machines.
Fourth count-That the defendant counterfeited the said invention, and did use and put in practice such counterfeit shearing machines.
Fifth count-That the defendant did use and put in practice shearing machines in imitation of the said invention.
Sixth count-That the defendant did imitate in part the said invention.
Seventh count-That the defendant did use and put in practice shearing machines resembling those of the said plaintiffs and the said William Davis.
(1) S Carr. & P. 502.
Plea-General issue.
It appeared, at the trial, before Lord Tenterden and a special jury, on the 3rd Nov. 1829, that the plaintiffs were machine- makers and manufacturers at Brinscomb, near Stroud, in Gloucestershire; and that the defendant was a woollen cloth manufacturer at Lodgemoor and Vatch Mills, near Stroud; that this invention contained in the patent on which the action was brought, was an improvement upon a patent which had been granted to one of the plaintiffs; and that the machine used by the defendant was made according to and under a patent granted to Messrs. Herbert & Taylor, dated 18th Dec. 1824.
Formerly, the operation of shearing or cropping was performed with the hand by men with single shears, and always from list to list: afterwards, it was managed with two shears at a time. The Rev. Mr. Harmer invented an engine in 1787, by which shears were moved by machinery from list to list. It became a desideratum among clothiers that a method should be invented of shearing from end to end, and many attempts were made to accomplish it.
In 1811, Mr. James Mallory invented a machine for shearing cloth by means of rotatory blades, but he did not state whether the cloth was to be sheared longitudinally or transversely; but at that time the latter method was the only one then gene- rally known; and it is to be presumed, that, if the desired mode of going from end to end had been intended, it would have been pointed out.
In 1812, Mr. William Henry Hart obtained a patent for cutting, cropping, or shearing woollen or other cloths and furs from peltry.
In 1815, Mr. Jonah Dyer, Mr. Stephen Price, and Mr. John Lewis, obtained pa- tents for shearing cloth, but neither of them claimed the rotatory cutters.
J. Lewis's patent, dated 27th July 1815, was entitled" For an improved shearing machine;" and the invention is thus de- scribed by him-" The new machine is so constructed, that it will shear a piece of cloth in the longitudinal direction with great accuracy and rapidity, and without any intermission of that operation being
necessary before the whole piece is shorn from one end to the other." It was soon found that the advantage gained by time was lost by the inferiority of the work.
The patent upon which the action was brought was granted to the plaintiffs and Mr. Davis, and the title of it has been mentioned. The specification after a description of the machinery, ran thus-
"In the machinery which we have de- scribed we claim as our invention-
"1st. The application of the flat spring NO, fig. 3, and of the spring or springs N and the bar O, in fig. 6 and 7, for douching and pressing the cloth to be shorn against the cutting edges, so that the strain of the said cloth shall be as much as possible in the direction of the length of the spring or springs N, in order that it may have no power to remove the spring bed from the cutting edges.
"2nd. The application of the triangular steel wire B on the cylinder A.
"3rd. The application of a proper sub- stance fixed on or in the cylinder A to brush the surface of the cloth to be shorn; and,
"4th. The described method of shearing cloth across from list to list by a rotatory cutter." (2)
On cross-examination of one of the plaintiffs' witnesses, it appeared that no machine had ever been sold with a brush; that only one had been made with it, and that the brush was quite useless, but not prejudicial, to all kinds of cloths.
Mr. Pollock objected that the patent was void on that ground, because the plaintiffs had claimed it as a substantive part of their invention, and being useless, it destroyed the patent, on the principle, that if one part claimed is bad, the whole is bad.
Mr. Attorney General, Mr. Brougham, Mr. Campbell, and Mr. Rotch, for the plaintiffs, contended, that the mere circum- stance of its being afterwards discovered that a part of the machinery was not necessary, did not vitiate the patent, provided that part was not relied upon in the specification as essential.
Lord Tenterden was of this opinion; it not appearing, that, at the time, the patentee did not himself use the article he mentioned in his specification. In this respect, his Lordship thought the case differed from that of Turner v. Winter (3), where the party falsely mentioned in his specification, an ingredient which he did not use.
(2) This claim was held to be good in the case of Lewis v. Davis, 3 Carr. & P. 502
The defendant then sought to impeach the patent, on the ground that the invention was not new, or, if it was, that the plain- tiffs were not the first and true inventors of shearing cloth from list to list by a rota- tory cutter, inasmuch as it might be gathered from Mallory's specification to his patent; that 'specifications of a patent granted in America was received in England by a gentleman who shewed them to several persons between the years 1815 and 1818; and also that during that time a model of a machine for shearing cloth from list to list by a rotatory cutter was seen by a gentleman in North America, who ordered a model, which was sent after him to England. A machine was made from that model, except as to a small part, but in consequence of the riots by the Lud- dites, it was never used. It was exposed in the shop, and seen by a great number of persons. The defendant also proved that a person of the name of Coxon had, about the year 1811, made a machine to shear cloth from list to list by a rotatory cutter, but that his master, Mr. Jones, pre- ferring the old method of shears, did not use it above two or three months.
Mr. Pollock, Mr. Alderson, and Mr. Godson, contended that these facts clearly shewed that a prior publication had taken place, and, consequently, that the patent could not be supported.
Lord Tenterden observed, that it was a question for the jury; and said, that, al- though it was incumbent on the plaintiffs to shew that their machine was new, it was not necessary that they should have invented it of their own heads; and that it was sufficient, if it was new, as to general use in this kingdom; that if it were proved that the plaintiffs had borrowed from some one else, then of course their patent would fail.
His Lordship, therefore, left the question to the jury, giving it as his opinion
(3) 1 Term Rep. 602.
that the defendants had not proved that such a machine was generally known, or generally used in England before the plain- tiff's took out their patent.
The jury returned a verdict for the plaintiff's with 2001. damages.
Mr. Pollock (Mr. Godson with him,) now moved for a rule nisi for a new trial on three grounds-1st. In the description of the brush, it ought to have been stated when it was of use and when it was not; and to what kind of cloths it could be ap- plied, and to what it could not: and, consequently, the description was insufficient. The fact that not one machine has ever been sent out of the factory with the brush, was sufficient to shew that the patentees knew that it was useless. It was said at the trial that it was merely a thing which had become unnecessary by a better know- ledge of working the machine; but it is one of the things claimed, and therefore other persons are prevented from using it. Brunton v. Hawkes (4), Crompton v. Ibbot- son (5), Turner v. Winter, and The King v. Arkwright (6). 2nd. There had been a prior publication of the same invention. It had been hinted at in Mallory's specification: it had been put in practice at Jones's factory: it had become known to several persons by the specification which had been sent from America, and it was truly exhibited to the public by the model which had been for several years exposed in the work-shop of a manufacturer: Dol- land's case (7), Tennant's case (8), Forsyth v. Reviere (9), and other cases (10). 3rd. On
(4) Barn. & Ald. 541.
(5) 1 Danson & Lloyd's Rep. 33; 6 Law Journ. K. B. 214.
(6) Printed case, p. 182; Godson on Patents,
p. 60.
(7) 2 Hen. Bla. 487. Boulton v. Bull. (8) Dar. Pat. Cas. 429.
(9) Chitty, jun. Prerog. of Crown, 182, n.
(10) See Godson on Patents, p. 164. The case of The King v. Daniel is thus described by Mr. John Farey, in the Appendix to the Parliamentary Reports on the law relative to patents for inventions. "The merit and utility of the invention was fully proved; one witness was brought to prove that he had prac- tised the same method some years before the date of the patent. He swore that he operated exactly as directed in Daniell's specification, but he could not make out that he had pursued the method, or that he had obtained any good result from it, nor was any corroborating evidence given. On this evidence the patent was repealed."
affidavits, it was sworn that one of the inventors had admitted that there was not any novelty in the invention, and that it could be proved that a very great number of persons in Yorkshire had seen the American specification and the model.
Lord Tenterden.-I am of opinion that we ought not to grant this rule. If the parties can find any better evidence than that produced at the trial, they can give it on a writ of scire facias. As to the objection to the specification respecting the brush, I think that it cannot prevail. It is nowhere stated that it is essential. Before the patent was granted, a brush had been used. When the plaintiffs applied for their patent, they had made a machine with a brush on it, but before a machine had been sold, they had discovered that the brush was not of any use. If it had been mentoned as essential, and it had turned out. to be neither useful nor necessary, then the patent would have been bad; but I think that it was put in bond fide at the time the patent was obtained, and only omitted when experience had shewn its inutility. As to my direction, I think that it was correct. Jones gave some loose evidence about Coxon having made a rotatory cutter to go from list to list; but it did not succeed, and Jones himself preferred shears. The machine had never passed out of his shop, and no one knew what had become of it. The model was not a machine; no one had ever made a machine from it. The possessors of it bought the machines of the plaintiffs. The persons in possession of the specification from America never made a machine from it; there was not, there- fore, any public use of shearing from list to list with a rotatory cutter. If these patentees had seen the machine made by Coxon; if they had read the American specification; if they had viewed the model; then the patent could not have been supported. It is on the act of parliament that we must decide; and we cannot say bat that the plaintiffs are the inventors of a manufacture which others, at the time. of making the letters patent, did not use" (11). I think it would be a very hard construction to deprive the patentee of the benefit of his patent: and, indeed, I must say, that I think the previous cases have gone very far against patentees.
(11) Section 6. of 21 Jac. 1. c. 3. VOL. VIII. K.B.
Mr. Justice Bayley.-I also think that in this case there should not be any rule. There may hereafter be a scire facias, if the defendant should persevere in his objections. The specification contains a full description of what the party knew at the time; if he had suppressed anything, or had stated anything calculated to mislead, the specification would have been bad. If he says that there are many modes, and knows of only one, he deceives. And so, if he omits anything which is essential, as in the case respecting trusses: Liardet v. Johnson (12), which the inventor tempered with tallow in the making, but omitted to mention that fact. The brush was used at first. It was a proper part, but not essential. If it had been proved that the plaintiffs had seen the communications from America, either the specification or the model; or if there had been evidence that could have raised a probability that they knew it, then the case would have been different. If a man invents from his own skill, then it is no objection that the matter is known, unless it has been used and exercised within the kingdom.
Mr. Justice Parke.-I concur in opinion with the rest of the Court. The objection to the patent is explained by the evidence. Although it has been decided that all the, independent parts of an invention must be new, yet it has not been decided that they must all continue to be useful. The law has not gone to that extent. Novelty is a condition precedent. The statute does not impose it as a condition that it shall, in all its parts, be useful. The patent is, by the statute, to be granted to the true and first inventor of a manufacture, which others at the time of granting the patent shall not use. In the letters patent itself the grant is to be void, "if the invention is not a new invention as to the public use and exercise thereof" in England, &c. It ap- pears from the evidence that there had not been any public use or exercise of this invention. It would be mischievous for us to extend the law, that the invention must be useful in all its parts.
(12) Ball. N.P.76; Godson on Patents, 121.
Rule refused (13).