PART II.

ABSTRACTS OF LEADING AND ILLUSTRATIVE CASES.

BEFORE any selection of the following cases was made all the reported cases (about 350 in number) in which the validity of a patent was in issue were examined, each being separately compared with every reported judgment in which it was mentioned. The results of such investigations are (in the cases of which abstracts are here given) embodied in the notes to each. The precise weight attached to any authority by the learned judges in the subsequent cases can thus be easily ascertained.

The foregoing method of procedure enabled the author to ascertain those cases which are the most suitable for illustrating the principles on which the validity of a patent depends, as, for instance, those in which any rule was first enunciated or modified.

As to the practice of referring to cases as authorities for, or as illustrations of, the application of legal principles, one may here quote the Lord Chancellor's remarks in recent cases: "There are two observations of a general character which I wish to make, and one is to repeat what I have very often said before, that every judgment must be read as applicable to the particular facts proved, or assumed to be proved, since the generality of the expressions which may be found there are not intended to be expositions of the whole law, but governed and qualified by the particular facts of the case in which such expressions are to be found. The other is that a case is only authority for what it actually decides. I entirely deny that it can be quoted for a proposition that may seem to follow logically from it." 1 And again :-"Occasional observations made by a learned Judge upon the subject of the facts in a particular case have been from time to time misunderstood, as conveying some opinion upon the subject of the general law, and have given rise to confusion." Hence the importance of being acquainted with the facts of the cases relied on as authorities. In the following pages the facts are given as fully as can conveniently be done, and especially in cases on Disconformity and Sufficiency, which are of importance to the inventor. The effect of the decisions is given, and in some cases extracts from the judgments. The latter are either those that have become

1 Per Lord Halsbury, L.C., in Quinn v. Leathem (1901), A. C. 5c6.
2 Per Lord Halsbury, L.C., in Pickard v. Prescott, R. P. C. 2co.

classical through subsequent decisions, or such as explain the reasons for the decisions arrived at.

The cases are selected from those decided in the Courts of Appeal or the House of Lords; some have been omitted as being of such a technical character that they could not be conveniently explained in the space at the author's disposal; a few decided in the Courts of First Instance, of special application, have been included. The earlier cases have been selected as above mentioned, and the later ones as being "on the border line,” and therefore useful as examples of the limits of the rules.

In making the following abstracts, no trouble has been spared to elucidate the facts; in addition to the usual reports, the original specifications have always been used, and the author has had the advantage of frequent reference to the cases and appendices of the parties in cases before the House of Lords collected in the library of the Inner Temple.

In many cases, however, he has been enabled to use original verbatim reports and exhibits by the courtesy of the proper custodians of them. An analytical list of the abstracted cases will be found in the Table of Contents.

1785. R. v. ELSE, I Webs. 76.

Claim too wide.

A patent was granted to A. Else (1779) for "a certain new invented manufacture of lace, called French or wire-ground lace, which is much stronger than any hitherto invented or found out, and also of an entire new construction." The specification described the mixing of silk, or other substance, to accomplish the same purpose with thread, flax, cotton, etc., so as to produce an even lace.

It was proved in proceedings for a scire facias to repeal the patent that silk and cotton threads had been mixed before on the same frame, but that the resulting product had not the same evenness, firmness, or strength as that produced by the newer process.

Per Buller, J.: The patent claims the exclusive liberty of making lace, composed of silk and cotton thread mixed; not of any particular mode of mixing it; and therefore, as it has been clearly proved and admitted that silk and cotton thread were before mixed on the same frame for lace, in some mode or other, the patent is clearly void, and the jury must find for the Crown."

Bull. N. P. 76.

"The patent must not be more extensive than the invention; therefore if the invention consist in an addition or improvement only, and the patent is for the whole machine or manufacture, it is void. Per Lord Mansfield in different cases, and by Buller, J., in R. v. Else, sittings at Westminster after M 1785."

Note.

The last paragraph was quoted by Park, J., in Bovill v. Moore, 2 Marsh 214; by Lord Denman, C.J., in Cooke v. Pearce, 8 Q. B. 1052; and regarded as settled law by Lord Penzance, in Harrison v. Anderston Foundry Co., 1 App. Ca. 591, but as inapplicable to a case where the Court has no evidence before it but the specification itself.

1787. TURNER v. WINTER, I Webs. 77; 1 T. R. 602.

False Suggestion-Insufficiency-Misleading.

The patent was granted for "a method of producing a yellow colour for painting in oil or water, making white lead, and separating the mineral alkali from common salt, all to be performed in a single process."

The specification contained directions (1) to "take any quantity of lead and calcine it, or minium, or red lead"—whereas minium would not produce the result required without calcination and fusion; (2) to "add half the weight of sea salt, with a sufficient quantity of water to dissolve it, or rock salt, or sal gem, or fossil salt, or any marine salt, or salt water, proper for the purpose"-whereas "fossil salt" was a generic term, and included sal gem, which was the only one mentioned that would serve the purpose; and (3) white lead could not be produced, but a substance very like it.

It was proved that scientific persons would know or discover the necessity of prolonging the process until fusion took place; that "marine salt" was the basis of the process, and no scientific person would take a “fossil salt” that was not also a "marine salt;" that the substance called "white lead," although not common ceruse, was a white substance with a basis of lead.

On a motion for a new trial the following propositions were laid down :By Ashurst, J.: The specification must be unequivocal; if ambiguity be introduced or anything tending to mislead the public the patent is void. I Webs. 80; 1 T. R. 605 (followed in Coles v. Baylis, 3 R. P. C. 180).

By Buller, J.: "If the patentee says that by one process he can produce three things, and he fails in any one, the consideration of his merit and for which the patent was granted fails, and the Crown has been deceived in the grant. Slight defects in the specification will be sufficient to vacate the patent." Liardet v. Johnson (ante, p. 75) was then referred to as an example of this.

The patent was held void for false suggestion and insufficiency.

Note.

This case has been followed in Boulton v. Bull, 2 H. Bl. 492; Hill v. Thompson, 1 Webs. 243; Crompton v. Ibbotson, D. & Ll. 34; Derosne v. Fairie, 1 Webs. 164; Walton v. Bateman, 1 Webs. 622; Wegman v. Corcoran, 13 Ch. D. 77; Coles v. Baylis, 3 R. P. C. 178. It has never been questioned.

I

1802.

TENNANT'S CASE, I Webs. 125.

Ι

Patentee adopted Suggestion from Another-Prior Secret Use.
ent was dated 1798, for a method of using certain calcareous
The defendant proved that a bleacher had used the

Plaintiff's pate earths in bleachin

same means of preparing his bleaching liquor five or six years previously,

but had kept it a servants connected

secret from all persons save his two partners and two with preparing it. A chemist deposed that, in converThis the plaintiff subsequently declared in his specifica

sation, he suggested to the plaintiff as an improvement, agitation of the be the spirit of that part of the invention. Lord Ellenborough, C.J.,

bleaching liquids.

tion to

not

user and (2) that the

the true inventor of the process of agitation of the lime water, which process he had claimed.

plaintiff was

Note.

case as to the second point was followed by Dalles, J., in Hill v. Thompson & Forman, 1 Webs. 245.

This

cloths.

the

1809

Sufficiency

HARMAR V. PLAYNE, II East, Ioг.
-Distinguishing New from Old.

The specification

was duly enrolled.

considerable improvements in the said machine," and granted him the mono

The plaintiff obtained a patent in 1787 for a machine for dressing woollen In 1794 a second patent was granted to Harmar. This patent recited first, but not the first specification, and also "that he had invented The specification of this second invention gave, by letterpress and "to make, use, and vend his said invention." drawings, a full description of the whole of the machine, and concluded: And I do hereby declare that my said invention is intended to be worked in the manner herein before particularly mentioned." The specification did not distinguish what was new from what was old, the improvements could During the argument for the plaintiff it was urged that the specification need not give everything at length, but might refer to sources of knowledge Lord Ellenborough, C.J., pointed out that references to standard works would be inconvenient for those who did not possess them, and leave the rts, the object of the specification being "to enable persons 1ligence and skill in the subject-matter to tell from the

Only

be ascertained by a comparison of the two specifications.

1

patent was granted." The specification might mislead as to inclusion of old machine.

Le Blanc, J. (p. 111), pointed out that a mere description of the new parts would be unintelligible unless the reader was familiar with the first specification. "Refer

Lord Ellenborough, C.J. (p. 113), agreed with this proposition. ence must, indeed, often necessarily be made in these cases, to matters of matter with him in order to clearly comprehend specifications of this nature." general science, or the party must carry a reasonable knowledge of the subjectsubsequently decided that the specification had duly described and ascerThe Court [Lord Ellenborough, C.J., Grose, Le Blanc, and Bayley, JJ.]

tained the nature of the invention.

Notes.

This case was quoted as an authority that a

patent may be taken out which includes the subject-matter of one still running: Tindal, C.J., in Crane

v. Price, 12 L. J. C. P., 88.

of an

were recited Specification

In Foxwell v. Bostock (4 De G. J. & S. 312) Lord Westbury distinguished Harmar v. Playne because the previous patent and specification in the second, and treated it as an exception to the rule that the "improvement" invention must describe the novel improvement; but in Parkes v. Stevens Lord Hatherley, L.C. (L. R. 5 Ch. Ap. 37) remarked on the divergence between this case and Foxwell v. Bostock (post, p. 225), and said, “I think there is so much good sense and justice in the doctrines established by Harmar v. Playne that it is not a case that ought to be easily impeached by a later decision."

1817-18. HILL V. THOMPSON & FORMAN, I Webs. 225. Construction—Absence of Reference to Previous Use-Failure of Part is Failure of Consideration.

of iron."

The patent was for "certain improvements in the smelting and working The specification described in detail three improvements. First: The process by which the iron contained in various sorts of slags or cinders is made into bar iron. Secondly: "In the use and application of lime to iron, subsequently to the operations of the blast furnace, whereby that quality in iron from which iron is called 'cold short,' howsoever and from whatever substance such iron be obtained, is sufficiently prevented remedied, and by which such iron is rendered more tough when cold." Details of the methods employed with quantitative proportions were given. Thirdly: "And I do further declare that I have discovered that the addition 1 Referred to with approval by Lord Westbury, L. C., in Foxwell v. Bostock, 4 De G. J.

& S. 312.

or