Where the defendant alleged a secret process in an action for infringement, the hearing was conducted in camerâ, and the shorthand notes of the trial impounded by order of the Court (9).

QUESTIONS FOR COURT AND JURY.

We have seen that, as a rule, actions for the infringement of letters patent are directed to be tried before the Court without a jury. Still, under special circumstances, the parties, or either of them, may obtain an order to try before a jury. Under these circumstances it will still be material to consider what are the questions which the Court should leave to the jury, and which are left to the decision of the Court.

As to the specification. The construction is for the Court (h); and the rules of construction are similar to those which govern the construction of other documents (i). In Hills v. Evans (k), Lord Westbury said: "It is undoubtedly true, as a proposition of law, that the construction of a specification, as the construction of all other written instruments, belongs to the Court; but a specification of an invention contains most generally, if not always, some technical terms, some phrases of art, some processes, and requires generally the aid of the light derived from what are called surrounding circumstances. It is, therefore, an admitted rule of law that the explanation of the words or technical terms of art, the phrases used in commerce, and the proofs and results of the processes which are described (and in a chemical patent the ascertainment of chemical equivalents), that all these are matters of fact upon which evidence may be given, contradictory testimony may be adduced, and upon which undoubtedly it is the province and the right of a jury to decide. But when these portions of a specification are abstracted and made the subject of evidence, and therefore brought within the province of the jury, the direction to be given to the jury with regard to the construction of the rest of the patent, which is conceived in ordinary language, must be a direction given only conditionally, that is to say, a direction as to the meaning of the

(g) Badische Anilin und Soda Fabrik v. Levinstein, L. R., 24 Ch. D. 156.

(h) Ante, p. 93, et seq.
(i) Ante, p. 95.

(k) 31 L. J., Ch. 457.

patent upon the hypothesis or the basis of the jury arriving at a certain conclusion with regard to the meaning of those terms, the signification of those phrases, the truth of those processes, and the result of the technical procedure described in the specification. And so the rule is given by Parke, B., in delivering the judgment of the Court of Exchequer in the case, I think, of Neilson v. Harford (1). The language of the learned judge, which I adopt, is in these words: The construction of all written instruments belongs to the Court alone, whose duty it is to construe all such instruments as soon as the true meaning of the words in which they are couched and the surrounding circumstances, if any, have been ascertained as facts by the jury; and it is the duty of the jury to take the construction from the Court, either absolutely, if there be no words to be construed as words of art or phrases used in commerce, and no surrounding circumstances to be ascertained, or conditionally, when those words or circumstances are necessarily referred to them.' Now, adopting that as the rule in the comparison of two specifications, each of which is filled with terms of art and with the description of technical processes, the duty of the Court would be confined to this-to give the legal construction of such documents taken independently. But, after that duty is discharged, there would remain a most important function to be still performed, which is the comparison of the two instruments when they have received their legal exposition and interpretation; and as it is always a matter of evidence what external thing is indicated and denoted by any description, when the jury have been informed of the meaning of the description contained in each specification, the work of comparing the two, and ascertaining whether the words, as interpreted by the Court, contained in specification A, do or do not denote the same external matter as the words, as interpreted and explained by the Court, contained in specification B, is a matter of fact, and is, I conceive, a matter within the province of the jury, and not within the function of the Court."

Epitomising this elaborate judgment. When the language used is that which has an ordinary and legal meaning the question is, what has the man said? not what did he intend to

(7) 8 M. & W. 806.

say? and, therefore, the Court will place the legal meaning on his words. When the language used is that which has no ordinary legal meaning, or which under different circumstances may have two or more ordinary legal meanings, the question is, as a fact, with what meaning did the writer use the words or expressions which he has used? and that is a question which the Court should require the jury to solve. The matter could not be placed more lucidly than it is by Lord Westbury in the last dozen lines of the judgment which we have quoted.

It is for the jury to say whether the specification is intelligible (m) or not, and it is for the Court to direct the jury as to the class of persons to whom it must be intelligible (n).

It is for the jury to say whether the specification is sufficient or not, that is, whether it contains a sufficient description of the invention; but it is for the Court to inform the jury the degree of sufficiency which the law requires in specifications (o).

The novelty of the invention is a question for the jury. Questions of prior user or prior publication are always questions of fact, and it is for the jury to compare what has been done before and what is set up as being new, and to say whether or not they are identical. And so any document which is said to amount to prior publication must be construed by the Court, but it is for the jury to compare it with the specification and to say whether the described matter is the same or not (p).

The utility of the invention is also for the jury, subject to the directions of the Court as to the degree of utility which the law requires for the purpose of supporting the validity of a patent (g).

The question of infringement is for the jury. In De la Rue v.

(m) Ante, pp. 93, 99, et seq. (n) Ante, p. 99, et seq.

(0) Hill v. Thompson, 1 Web. P.C. 235; Bickford v. Skewes, 1 Q. B. 938; Neilson v. Harford, 1 Web. P. C. 295; Walton v. Bateman, 1 Web. P. C. 621 ; Beard v. Egerton, 19 L. J., C. P. 38; Wallington v. Dale, 7 Ex. 888; Parkes v. Stevens, L. R., 8 Eq. 358; L. R., 5 Ch. 36.

(p) Cornish v. Keene, 1 Web. P. C.

519; Elliott v. Aston, 1 Web. P. C. 222; Muntz v. Foster, 2 Web. P. C. 107; Spencer v. Jack, 11 L. T., N. S. 242; also cases quoted ante, p. 96.

(q) Hill v. Thompson, 1 Web. P. C. 237; Bloxam v. Elsee, 1 C. & P. 565; Cornish v. Keene, 1 Web. P. C. 506; Morgan v. Seaward, 1 Web. P. C. 186; Macnamara v. Hulse, C. & M. 471.

Dickenson (r), Campbell, C.J., said :-" There may well be a case where the judge may and ought to take upon himself to say that the plaintiff has offered no evidence to be left to the jury to prove infringement, as if there were a patent for a chemical composition, and the evidence was that the defendant had constructed and used a machine for combing wool. But, if the evidence has a tendency to show that the defendant has used substantially the same means to obtain the same result as specified by the plaintiff, and scientific witnesses have sworn that the defendant actually has used such means, the question becomes one of fact, mixed with law, which the judge is bound to submit to the jury."

In Seed v. Higgins (s), Lord Chelmsford in the House of Lords said:"What the defendant had done in any case was of course a question of fact, but whether, on proof of certain acts having been done by a defendant, the plaintiff had any case to go to a jury, was a question for the judge” (†).

CERTIFICATES.

SECT. 31 of the Patents, &c., Act, 1883, is as follows:-" In an action for infringement of a patent, the Court or a judge may certify that the validity of the patent came in question, and if the Court or a judge so certifies, then in any subsequent action for infringement, the plaintiff in that action, on obtaining a final order or judgment in his favour, shall have his full costs, charges and expenses as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same."

Similar provisions were contained in 5 & 6 Will. IV. c. 83, and also in the 43rd section of the Patent Law Amendment Act, 1883.

The object of these sections is to prevent patentees of important inventions being ruined by successive actions, which they are bound to bring to restrain infringements, manufacturers banding themselves together to defeat a patentee's rights in this manner.

(r) 7 E. & B., at p. 755.

(s) 30 L. J., Q. B., at p. 317.

(t) See also Walton v. Potter, 1 Web. P. C. 586; Macnamara v. Hulse, Car. & M. 471; Newton v.

Grand Junction Rail. Co., 5 Ex. 331;
Stevens v. Keating, 2 Web. P. C. 191 ;
Sellers v. Dickinson, 5 Ex. 323;
Curtis v. Platt, 35 L. J., Ch. 852.

The Act of William IV. cited above gave the patentee a right to treble costs, but this was taken away by 5 & 6 Vict. c. 97, which gave him full costs; and now, as we have seen, costs as between solicitor and client are substituted for full costs.

To acquire the protection of the 31st section a certificate is requisite, and this should be applied for at the trial of the action, and the application must be made to the Court or judge who have tried the cause (u).

The Court has no power to order full costs upon the first trial in which the validity of the patent came in question, the words of the statute being " in any subsequent action for infringement" (x).

When a certificate of validity has once been granted, the Court will not grant another in a subsequent action upon the same patent (a).

An action was compromised at the trial by a verdict being entered for the plaintiff in the action for 40s. damages and costs, with all usual certificates. Subsequently, upon an ex parte application, the judge endorsed on the record a certificate that the record in a certain action, wherein Bovill was plaintiff and Keyworth was defendant, and the certificate thereon endorsed was given in evidence at the trial of this action (Bovill v. Hadley), it was held that this certificate was improperly granted, the record and certificate in the former action not having been given in evidence, and it not being under the circumstances a " usual certificate" within the contemplation of the parties (b). Upon the trial of the second action the record of the first action with the endorsement must be produced, but not before the verdict, in such a manner as to prejudice the second trial (c).

It does not appear clear whether or not a certificate might be granted in an action to restrain threats, that the validity of the patent came in question. This point arose in Crampton v. The Patents Investments Co. (d), which was an action under section 32.

(u) Gillett v. Green, 7 M. & W. 347. (x) Penn v. Bibby, L. R., 3 Eq. 308.

(a) Edison v. Holland, 6 P. O. R.

(b) Bovill v. Hadley, 17 C. B., N. S. 435.

(c) Newall v. Wilkins, 17 L. T. 20. (d) 5 P. O. R. 382.