aforesaid, whatever that thickness may be." The mode of rolling was described to be repeated as often as requisite "for reducing the said strip of conjoined metals to the required thinness for the manufacture of capsules." "The said new manufacture, or compound metal of lead combined with tin on one or both sides in manner aforesaid, may also be employed for other purposes; such, for instance, for making into very thin sheets, as a substitute for what is called tin-foil," for which it might be used as a substitute. Then was described the mode of making it when one side only of the lead was to be covered with tin. The union of the metals was produced by mechanical pressure as distinguished from older processes. The described processes of casting, cutting, and rolling were not claimed "except when the same are employed for the purposes of my said invention.” The claims were:

"Firstly, the manufacture of the new material lead combined with tin, on one or both sides of its surfaces, by rolling or other mechanical pressure, as herein described; secondly, the manufacture of capsules of the new material of lead and tin combined by mechanical pressure, as herein described."

At the trial it was proved that the patentee by his servants had manufactured large quantities of capsules before the date of his patent, but had not exposed them for sale, only making them in order to have a stock on hand by the time that the patent was sealed (27 L. J. Q. B. 154). Held by the Court of Queen's Bench that this was not such prior user as to invalidate a patent (28 L. J. Q. B. 361).

Lord Campbell, C.J.: There was no power in the Crown to grant monopolies "except with the conditions that are imposed by the reservation; but the reservation which must be relied on here is this, 'which others at the time shall not use.' Now, others had not used this before the patent was granted. It was used only by the inventor, the patentee himself; for the use of it by the servants and mechanics whom he employed must be considered his use; and therefore it was not used by others. But still, if it could be shown that the effect was really to extend the term of the monopoly, that would be fatal." 1

The jury at the trial found that persons of ordinary skill reading Dobbs' specification, and having no other information on the subject, could not at once proceed to make Betts' metal.2

It was decided in the Courts of Queen's Bench 3 and Exchequer Chamber that the invention disclosed by Dobbs in 1804 disclosed and anticipated that of the plaintiff Betts.

On appeal to the House of Lords.

The following questions were put to the judges:—

1. "Does it appear, on a comparison of the two specifications, that a material part of Dobbs' specification is claimed by Betts in his specification?"

2. "If so, can the Court pronounce Betts' patent void, simply on a comparison of the two specifications, without evidence to prove identity of invention, and also without evidence that Dobbs' specification disclosed a practicable mode of producing the result, or some part of the result, described in Betts' patent?"

It was held unanimously by the judges that (as regards the first question) the invention described by Betts was included in that described by Dobbs; but that in the absence of evidence of identity of inventions (it not being admitted that descriptions and terms of art were the same), and in the absence of evidence of Dobbs' specification being a sufficient description, there was no anticipation.

The following passage occurs in the reply of Mr. Justice Blackburn: "It is therefore for the Court alone to decide what is claimed. This must be ascertained by looking at the language used in the specification, and fairly reading it, so as to see what was the intention expressed, and this should be done without any reference to the object of the inquiry. Sometimes it is necessary to construe a specification, in order to ascertain whether or not any one may, subsequently to the date of the patent, do something alleged to be comprised in it without being guilty of an infringement. In such a case it is for the interest of the patentee to contend that the true construction of the specification includes that thing. Sometimes that same thing having been publicly done before the patent, the object of the inquiry is to ascertain whether the patent is void, because that thing which is not new has been claimed as part of the invention. In such a case it is for the interest of the patentee to contend that the true construction of the specification does not include this thing; but the Court is bound to give the fair interpretation to the language used in the same instrument, and say truly what is there described as the invention, whether the effect is favourable to the patentee or not."

In delivering judgment, Lord Westbury, L.C., based the decision of the case in the answer to the second of the above questions, and said (p. 243): "That answer involved two conclusions; first, that as the specification described external objects, though the language in both specifications should be identically the same, it would be impossible to predicate of the two that they described exactly the same identical external object, unless the terms of art used in both specifications could be ascertained to have been the same at the date of both the patents. The question of identity of signification belonged to the province of evidence, and not to the province of construction. The second branch of the answer involved this important conclusion, that to defeat a new patent, it must be clear that the antecedent specification disclosed a practicable mode of producing the result which was the object and effect of the subsequent discovery.'

1 31 L. J. Q. B. 237.

2 This was quoted and followed in Patterson v. Gas, Light & Coke Co., 3 App. Ca. 245; Shaw v. Jones, 6 R. P. C. 336; Gadd v. Mayor of Manchester, 9 R. P. C. 516.

Lord Cranworth, in his judgment, said: "The two specifications might be identical, and the judge might be warranted in telling the jury not to find for novelty. But here they were not identical, and the earlier was deficient in those practical directions which constituted the essence of a valid specification. Dobbs supposed that, by pressure, tin and lead might be so combined as to form a new material. But it did not clearly explain how this was to be done, and it was therefore defective."

1868. BETTS v. NEILSON, L. R. 3 Ch. Ap. 429.

Construction-Subsidiary Claim-Prior Manufacture without SaleProportions.

In this case the same patent was sued on as in Betts v. Menzies, anticipation by Dobbs' specification was also alleged, and objections raised to the validity of the patent on the grounds of (1) prior user, (2) that the specification did not specify the proportions of lead and tin, (3) that the claim for the manufacture of capsules from the patented article (claim 2) was not subject-matter for a patent. Infringement was denied.

The evidence of prior user broke down, as to which Lord Chelmsford, L.C., said (p. 431): "If the evidence which I am about to examine establishes the fact that lead coated with tin by mechanical pressure, and capable of useful application, has upon any occasion been manufactured openly, not by way of experiment, but in the course of business, although not a single piece of that material was actually sold, I should hold that Betts' patent was invalidated." 1

On appeal to the House of Lords (Neilson v. Betts, 5 H. L. 15).

Alluding to Hills v. Evans (31 L. J. Ch. 457) as to what is necessary in an anterior publication, Lord Westbury said: "My opinion was that the antecedent process, if it be relied on as forestalling the second, must be so clearly and distinctly described, that those who read it, bringing to it competent mechanical skill, would be enabled to work it out to the same result as that arrived at by the process described in the subsequent patent"

2

As to the objection to the specification not specifying the proportions of lead and tin, Lord Westbury held that this was no objection to validity, as "he assigns these relative proportions, not as things which are in themselves unchangeable, but as being the best for the purpose which he desired to accomplish, and they are given rather as illustrations of the mode of user of the process than as certain definite termini which could not be exceeded or diminished either on the one side or the other."

As to the last objection, Lord Westbury pointed out that the material was claimed as the result of the process, and (as to the second claim) “the

1 Quoted as authority in Gill v. Coutts, 13 R. P. C. 136.

* Authority for the proposition that a book-description must be equivalent to a specification in regard to the fulness of information given. Plimpton v. Malcomson, 3 Ch. D. 567, 568; Haslam v. Hall, 5 R. P. C. 19.

manufacture of capsules out of the material would be one purpose only to which the material could be applied; and if a claim to the material can be substantiated by the patent, the specification of a particular user of it, comprehended in the general user claimed, cannot for a moment be accepted as a ground for vitiating the patent." 1

1862. HORTON 7. MABON, 12 C. B. N. S. 437; 16 C. B. N S. 141; 31 L. J. C. P. 255.

Subject-matter-No Invention.

The invention was for "improvements in the construction of gasholders." It consisted of improved pillars, vertical travelling guides, fixed instead of movable guide roller bars, and improved construction of hydraulic cups or joints. The third claim was for the mode of constructing the hydraulic cups or joints of gasholders, "in which the top or bottom of the hydraulic joint or valve is formed of plates of iron made or bent into a cup shape, so as to admit of the valve being made complete and attached to the gasholder without the necessity of employing angle iron and double sets of rivets, as is usually the case." It was proved that previously to the patent those joints. were constructed of angle iron in three pieces, made to the curve of the gasholder, and fastened with four rows of rivets. Two pieces of angle iron were riveted to the bottom plate. By the patentee using double angle iron he saved two rows of rivets. Double angle iron had been substituted for two pieces of single angle iron in other cases. In this case the result was beneficial, and was a cheaper and better way of using known things.

Held, that the case was much weaker than Harwood v. G. N. Ry. Co., and the patent could not be sustained.2

Confirmed on appeal, 16 C. B. N. S. 142.

1862. LANG V. GISBORNE, 31 L. J. Ch. 769; 31 Beav. 133.

Prior Publication-Sale of Foreign Publication in England. The patents sued upon were applied for in February, 1860, and May, 1861.

A description of the invention had been published in a French book in 1857. One copy was sold in England to Mr. Wheatstone on December 31, 1859, another to the Cambridge University Library on May 6, 1858, others to persons during the months of August, 1858, and March, 1859.

Lord Romilly, M.R., held that there was publication of the invention sufficient to invalidate the patent. In his judgment the learned judge stated

A subsidiary claim (one that does not extend monopoly) for a detail or particular advantage does not raise an objection to a patent: Plimpton v. Spiller, 6 Ch. D. 427, 434; followed in British Dynamite Co. v. Krebs, 13 R. P. C. 199.

2 At the trial the learned judge, Erle, C.J., directed the jury that the invention was not subject-matter. The facts of the case were compared with those of Harwood v. G. N. Ry. Co.

the law generally, and continued (p. 771): “A publication, however, takes place when a person who is the inventor of any new discovery, either by himself or by his agents, makes a written description of that, prints it in a book, and sends it to a bookseller to be published in this country. It is not at all necessary to establish the fact that one volume of that book has been sold. As soon as an inventor informs the public of what his invention is and publishes that in a book, which he sends to a publisher to sell, the moment that book is exposed in the shop for the purpose of purchase, then that becomes a complete publication in point of law. . . . There is no difference when the inventor is a Frenchman or any other foreigner who publishes a book in his own language, but sends it over to a bookseller in this country for the purpose of being sold."

Notes.

In Plimpton v. Malcomson (3 Ch. D. 561, 562), Jessel, M.R., quoted the above remarks as a dictum, holding that publication was a question in each case for the judge on the facts proved. It was cited, as an authority for the proposition that the fact of the book being foreign makes no difference, by Chitty, J., in Harris v. Rothwell (3 R. P. C. 389); in the same case, on appeal, Lopes, L.J. (4 R. P. C. 234), quoted the above passage as being the law, and said that the lodging of a German speciñcation in the Patent Office was stronger evidence of publication than sale in a shop.

The remarks of Lord Romilly, M.R., above, were part of his declaration of the law, "so that there should be no ambiguity" as to his view of the law. When the case was quoted in argument in the House of Lords, in Pickard v. Prescott (9 R. P. C. 200), Lord Watson declined to consider any case as precedent on facts. In that case Lord Halsbury, L.C., said that “occasional observations made by learned judges on questions of fact in a particular case have been from time to time misunderstood as carrying some opinion upon the subject of the general law, and have given rise to confusion" (p. 200). Lord Watson (p. 204) expressed the same opinion.

1862. HILLS v. EVANS, 4 De Gex F. &. J. 288.
Paper Anticipation.

This was a suit in equity for an injunction against the defendant to restrain him from infringing the plaintiff's patent, which was the subject of the action of Hills v. The London Gaslight Co. (ante, p. 208).

In addition to the defences there raised,1 the specification of Heard (No. 2941 of 1806) was put forward as an anticipation. The object of Heard's invention was the "withdrawal of the sulphur from the gas obtained from coal." He described a process of mixing lime with coal and the passing

1 See specifications of Croll and Laming, ante, p. 210.