1802. TENNANT'S CASE, I Webs. 125.

Patentee adopted Suggestion from Another-Prior Secret Use.

Plaintiff's patent was dated 1798, for a method of using certain calcareous earths in bleaching. The defendant proved that a bleacher had used the same means of preparing his bleaching liquor five or six years previously, but had kept it a secret from all persons save his two partners and two servants connected with preparing it. A chemist deposed that, in conversation, he suggested to the plaintiff as an improvement, agitation of the bleaching liquids. This the plaintiff subsequently declared in his specification to be the spirit of that part of the invention. Lord Ellenborough, C.J., nonsuited the plaintiff on the grounds (1) of prior user and (2) that the plaintiff was not the true inventor of the process of agitation of the lime water, which process he had claimed.

Note.

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

1809. HARMAR V. PLAYNE, II East, 101.

Sufficiency-Improvement-Distinguishing

New from Old.

The plaintiff obtained a patent in 1787 for a machine for dressing woollen cloths. The specification was duly enrolled.

In 1794 a second patent was granted to Harmar. This patent recited the first, but not the first specification, and also "that he had invented considerable improvements in the said machine," and granted him the monopoly "to make, use, and vend his said invention."

The specification of this second invention gave, by letterpress and 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 hereinbefore particularly mentioned." The specification did not distinguish what was new from what was old, the improvements could only be ascertained by a comparison of the two specifications.

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 which persons of reasonable skill ought to know.

Lord Ellenborough, C.J., pointed out that references to standard works would be inconvenient for those who did not possess them, and leave the specification wholly unintelligible if the description were confined to the newly invented parts, the object of the specification being " to enable persons of reasonable intelligence and skill in the subject-matter to tell from the inspection of the specification itself what the invention was for which the

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.

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

In Foxwell v. Bostock (4 De G. J. & S. 312) Lord Westbury distinguished Harmar v. Playne because the previous patent and specification were recited in the second, and treated it as an exception to the rule that the specification of an "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.

The patent was for "certain improvements in the smelting and working of iron."

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 or 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.

of lime to limestone, or other substances consisting chiefly of lime, and free or nearly free from any ingredient known to be hurtful to the quality of iron, will sufficiently prevent or remedy that quality in iron, from which iron is called 'cold short,' and will render such iron more tough when cold." Details of the application of this principle were given.

An injunction was obtained against the defendants (3 Mer. 622).

The plaintiff having obtained a verdict moved to revive the injunction. (p. 626). But the defendants intended to move for a new trial. In refusing the injunction 1:

Lord Eldon, L.C., said (1 Webs. 237): "In 2 his direction to the jury, the judge has stated it as the law on the subject of patents-first, that the invention must be novel; secondly, that it must be useful; and thirdly, that the specification must be intelligible. I will go further, and say, that not only must the invention be novel and useful, and the specification intelligible, but also that the specification must not attempt to cover more than that which, being both matter of actual discovery, and of useful discovery, is the only proper subject for the protection of a patent. And I am compelled to add, that if a patentee seeks by his specification any more than he is strictly entitled to, his patent is thereby rendered ineffectual, even to the extent to which he would otherwise be fairly entitled. On the other hand, there may be a valid patent for a new combination of materials previously in use for the same purpose, or for a new method of applying such materials. But in order to its being effectual, the specification must clearly express that it is in respect of such new combination or application, and of that only, and not lay claim to the merit of original invention in the use of the materials.3 If there be a patent both for a new machine and for an improvement in the use of it, and it cannot be supported for the machine, although it might be for the improvement merely, it is good for nothing altogether, on account of its attempting to cover too much..

...

6

"The (p. 238) question of law, upon the whole matter, is, whether this is a specification by which the patentee claims the benefit of the actual discovery of lime as a preventive of 'cold short,' or whether he claims no more than the invention of that precise combination, and those peculiar processes which are described in the specification."

A rule nisi was obtained to set aside the verdict, enter a nonsuit,

ог

1 Owing to the present procedure being quite different (Bacon, V.C., in Coles v. Baylis, 3 R. P. C. 182), as " there is no other Court than that in which the action is brought to which any recourse can be had," only a portion of the judgment is now in point.

2-3 This passage was quoted and followed by Best, J., in Brunton v. Hawkes, 4 B. & Ald. 5554-5 Quoted and followed by Tindal, C.J., in Crane v. Price, 12 L. J. C. P. 86, also by Hill, J., in Harwood v. G. N. Ry. Co., 29 L. J. Q. B. 200. In Clark v. Adie, L. R. 2 Ap. Ca. 334. Lord Blackburn distinguished that case from this, saying that in this case Lord Eldon first enunciated the principle that old things used in a combination producing different or new results may be the subject of a patent." This case and principle were expressly followed by Bristowe, V.C., in Proctor v. Bennis, 4 R. P. C. 339.

6-7 This passage is quoted by Lord Denman, C.J., in Cooke v. Pearce, 8 Q. B. 1053, along with R. v. Else, ante, p. 180, and Jessop's Case (2 H. Bl. 463), as containing an authoritative statement of the law.

have a new trial, on (1) the grounds urged at the trial, and also (2) that the verdict was against the weight of evidence, as lime had previously been used to prevent "cold short," and as bar iron had been produced from slags and mine-rubbish before the date of the patent.

The rule was granted and judgment delivered by Dallas, J., who first dealt with the want of evidence as to infringement; he then commented on the cases of Dollond (ante, p. 50) and Tennant (ante, p. 182), contrasting them and illustrating want of novelty (including question of true and first inventor) by the case of Arkwright's roller and crank, and applying those precedents to the case before him. He then commented on the evidence of want of novelty in the use of lime, as described, to prevent "cold short," and continued: "So far, therefore, the application of lime is, in terms, claimed as an improvement, and nothing is said of any previous use, of which the use proposed is averred to be an improvement; it is therefore, in substance, a claim of entire and original discovery. The recital should have stated, supposing a previous use to have been proved in the case, that 'whereas lime has been in part, but improperly, made use of, etc.,' and then a different mode of application and use should have been suggested as the improvement claimed."

The learned judge discussed the specification with respect to the alleged discovery of the prevention of "cold short" by the use of lime, and held it was (1 Webs. 247) "a claim of discovery in the most extensive sense, of the effect of lime applied to iron to prevent brittleness not qualified and restrained by what follows as to the preferable mode of applying it under various circumstances; and therefore rendering the patent void, if lime had been made use of for this purpose before, subject to the qualification only of applying it subsequently to the operations in the blast furnace." The learned judge referred to Arkwright's case and Aiken's Dictionary and evidence of witnesses, and continued (p. 249): "On this part of the case I will only further remark, that if any part of the alleged discovery, being a material part, fail (the discovery in its entirety forming one entire consideration) the patent is altogether void; and to this point, which is so clear, it is unnecessary to cite cases." Held that the patent was invalid.

Notes.

In Brunton v. Hawkes (4 B. & Ald. 541) the patent was for improvements in the construction of anchors, windlasses, and chain cables. The improvements in anchors had been anticipated. In that case Abbott, C.J. (at p. 551), and Best, J. (at p. 555), referred to the facts and judgments in Hill v. Thompson as being decisive on the question that a patent taken out for more than the patentee was entitled to is void altogether. Baron Parke, in Morgan v. Seaward (1 Webs. 196), puts the avoiding of the patent on the ground of false suggestion. "It is on the same principle" (that a false suggestion of the grantee avoids an ordinary grant of lands from the Crown) "that a patent for two or more inventions, when one is not new is void altogether, as was held in Hill v. Thompson and Brunton v. Hawkes.”

1819. R. v. WHEELER, 2 B. & Ald. 345.

Disconformity-Sufficiency.

Scire facias to repeal a patent for "a new and improved method of drying and preparing malt."

The specification was as follows:

"My invention consists in the heating of malt to 400° F. and upwards, according to a process or processes hereafter described, and in so heating it that the greater part of the saccharine and amylaceous principles of the grain become changed into a substance resembling gum and extractive matter, of a deep-brown colour, readily soluble in hot or cold water." Different kinds of apparatus and methods were next described. "The proper degree of heat and time of exposure will be easily learned by experience, the colour of the internal part of the prepared grain affording the best criterion."

No statement was made as to what was the colour which was to be the criterion.

In delivering the judgment of the Court, Abbott, C.J., pointed out that the patent was for "preparing" (i.e. making) malt, and the specification described only a method of drying malt already made. Hence there is a false suggestion to the Crown. "Manufacture" includes processes.1 The patentee in his specification claims to be the inventor of a process for making malt more soluble in water and colouring the liquor, the latter being the object in view. He does not describe a process of "preparing" malt.2

If this process was in truth a "preparing" of malt for a particular purpose, that purpose should have been mentioned. The patentee has not described any certain or precise process; nor the state in which the malt was to be used; nor the length of the process; nor maximum temperature. "A specification which casts upon the public the expense and labour of experiment and trial is undoubtedly bad." But if these points would be known to persons of competent skill, then the patentee has not discovered anything.

1822. HALL V. JARVIS, I Webs. 100.

Inventive Ingenuity-Combination of Old Things.

In 1817 a patent was granted to J. S. Hall for "a method of improving every kind of lace or net, or any description of manufactured goods whose fabric is composed of holes, or interstices, made from thread or yarn, etc."

1 See also Gibson v. Brand (1 Webs. 633); Crane v. Price, 12 L. J. C. P. 86; and Harwood v. G. N. Ry. Co., 29 L. J. Q. B. 200.

2 This is the real ground of decision. See Neilson v. Harford, 1 Webs. 312, 373, where this case is distinguished from that one.

* Quoted as authority in Stevens v. Keating, 2 Webs. 194, and in Lane Fox v. Kensington, &c., 9 R. P. C. 248.