1841. WALTON V. POTTER and HORSFALL. Thursday, Nov. 18th. THIS was an action upon the case for an alleged infringe- The plaintiff ment by the defendants of the plaintiff's patent. obtained a pa tent for "an invention of im provements in cards, for carding wool, cotton, silk, and other fibrous substances, and for raising the pile of woollen and other cloths." In his specification, he stated his invention to consist in "the application and adaptation of caoutchouc or India rubber as a substitute for the fillets or sheets of leather that were commonly used in the construction of ordinary cards, and thus giving a superior elasticity and durability to cards;" and in describing the mode of preparing the article, stated, that "the regularity of distance and uniformity of the dents or teeth of the cards were found to be better preserved by a piece of linen commonly called brown holland, or other the like cloth, well glazed, and cemented on to the back of the caoutchouc or India rubber;" that the cloth so placed rendered the action of the dents or teeth less uncertain in their elastic movements; that "the cloth so cemented to the India rubber or caoutchouc was to be affixed to the cylinder or board of the ordinary carding engine by nails, but, if it was to be affixed by cementing (which he recommended as the best mode of applying the cards), then it was desirable to remove the cloth;" and he then proceeded to shew the ordinary mode of pricking or piercing holes for the reception of the dents or teeth, the mode of cutting the India rubber, &c. The defendants subsequently obtained a patent also for "an improvement or improvements in cards for carding various fibrous substances, part of which improvements may be used as a substitute for leather;" and in their specification they stated their invention to consist in the manufacture of a new material or substance for receiving the wire teeth-which they described to be a woven fabric of a peculiar construction, soft and porous, saturated with a solution of India rubber by being repeatedly passed through it, and then dried and submitted to pressure; the object being to obtain a fabric extremely elastic in the direction of its thickness, so as to impart elasticity to the wire teeth when set therein. In an action for an alleged infringement by the defendants of the plaintiff's patent, by the manufacture and sale of the article so described in their specification, the defendants pleadedfirst, not guilty-secondly, that the plaintiff was not the true and first inventor—thirdly, that the alleged invention was not at the time of making the patent new as to the public use and exercise thereof in England-fourthly (setting out the specification), that certain cards, that is to say, sheet cards and top cards, were, before and at the time of granting the letters patent, cards for carding cotton and other fibrous substances, within the meaning of the letters patent and specification, and during all that time were ordinary cards within such meaning, and in general and known use; and that the said invention was and is unfitted and useless for the purpose of the construction of sheet cards and top cards, or either of them, as claimed and described in and by the latters patent and specification; wherefore that the said letters patent were void-fifthly, that the plaintiff did not in and by his specification "so set out as aforesaid," particularly describe and ascertain the nature of the invention, and in what manner the same was to be performed. Issue having been joined upon these pleas or upon the replications thereto, and the jury, after hearing a considerable body of evidence on both sides, having found for the plaintiff upon all the issues-The Court refused to disturb the verdict: AndHeld, that the specification as set out in the introductory part of the fourth plea was not upon the record so as to warrant a motion in arrest of judgment founded on a supposed insufficiency of the invention therein described to form the subject-matter of a patent: And that the invention was described in the specification with sufficient particularity. At the trial, the judge, having summed up the evidence and left to the jury the several questions of fact raised upon the record, was requested on the part of the defendants to put to them the following questions-first, "whether the mode adopted by the defendants of saturating the cloth with dissolved India rubber, was not known to and practised by one Hancock before the date of the plaintiff's patent"-secondly, "whether or not, if the dents or teeth were fixed in the fillet [meaning, the sheet of India rubber] and then cemented to the cylinder, without any linen at the back, it would answer the purpose of a sheet card:"-Held, that his refusal to comply with this request was no misdirection. 1841. WALTON v. POTTER. Declaration. The declaration-after stating that the plaintiff, before and at the time of the making and obtaining of the letters patent and of the committing of the grievances by the defendants as thereinafter mentioned, was the true and first inventor of certain improvements in cards for carding wool, cotton, silk, and other fibrous substances, and for raising the pile of woollen and other cloths-set out the letters patent, bearing date the 27th March, 1834; and then proceeded to aver, that the plaintiff did, afterwards, and within six calendar months next after the date of the said letters patent, to wit, on the 25th September, 1834, in pursuance of the proviso and of the said letters patent, by an instrument in writing under his hand and seal, particularly describe and ascertain the nature of his said invention and in what manner the same was to be and might be performed, and afterwards and within six calendar months then next and immediately after the date of the said letters patent, to wit, on the 27th September, 1834, cause the said instrument in writing to be inrolled in the High Court of Chancery, as by the said instrument in writing then remaining of record in the said High Court of Chancery more fully appeared; that the plaintiff did always, from the time of the making of the said letters patent as aforesaid, until the present time, by himself, his deputies, servants, and agents in that behalf, make, use, exercise, and vend his said invention, to his great advantage and profit; yet the defendants, well knowing the premises, but contriving, and wrongfully and injuriously intending to injure the plaintiff, and to deprive him of the profits, benefits, and advantages which he might and otherwise would have derived and acquired from the making, using, exercising, and vending of the said invention, after the making of the said letters patent, and within the said term of years in the said letters patent mentioned, to wit, on the 1st January, 1837, and on divers other days and times between that day and the commencement of the suit, 1841. WALTON v. POTTER. and within that part of the united kingdom of Great Britain and Ireland called England, unlawfully and unjustly, without the leave or license, and against the will of the plaintiff, made and sold and exposed to sale (9) divers, to wit, 10,000 cards for carding wool, cotton, silk, and other fibrous substances, and for raising the pile of woollen and other cloths, in imitation of the said invention of the plaintiff as aforesaid, and thereby hindered and prevented the plaintiff in the sole use, exercise, and enjoyment thereof. The defendants pleaded-first, not guilty, setting out First plea. the letters patent. Secondly-that the plaintiff was not the true and first inventor of the said alleged invention in the declaration (9) See Minter v. Williams, 4 Ad. & E. 251, 5 N. & M. 647, Webster's Patent Cases, 126, 135. There, in a declaration for infringing a patent which granted that the plaintiff, and no others, should "make, use, exercise, and vend" his invention, and forbade all persons to "make, use, or put in practice" the same, or to counterfeit or imitate it, without the plaintiff's license, the plaintiff alleged that the defendant, without his license, exposed to sale articles intended to imitate, and which did imitate, his invention: and it was held, on general demurrer, that the count was bad, as not stating anything which was necessarily an infringement of the patent. Coleridge, J., there said: "The granting part of the patent authorizes the plaintiff exclusively to make, use, exercise, and vend' his invention. The prohibitory part forbids all persons to 'make, use, or put in practice the said invention,' or counterfeit, imitate, or resemble the same,' or to make any addition thereun- Second plea— plaintiff not the true and first inventor. mentioned, in manner and form as the plaintiff had above in that behalf alleged-concluding to the country. Thirdly that the said alleged invention in the declaration mentioned was not at the time of making and granting the said letters patent, or of the said petition therein mentioned, a new invention as to the public use and exercise thereof in that part of the united kingdom of Great Britain and Ireland called England, but, on the contrary thereof, to wit, on the 1st January, 1824, and on divers days and times between that day and the time of the making and granting of the said letters patent, had been publicly practised, used, and exercised within that part of the united kingdom of Great Britain and Ireland called England, and by reason of the premises and the statute in such case made and provided [21 Jac. 1, c. 3], the said letters patent were and are wholly void, and the plaintiff ought not to maintain his action-verification. Fourthly-that the said supposed instrument in writing under the hand and seal of the plaintiff, and inrolled as in the declaration mentioned, was and is as follows, that is to say, "To all to whom these presents shall come; I, James Walton, of &c., send greeting: Whereas his present most excellent Majesty King William the Fourth, by his letters patent under the Great Seal of Great Britain, bearing date at Westminster, the 27th March, in the fourth year of his reign, did, for himself, his heirs and successors, give and grant unto me the said James Walton his especial license that I the said James Walton, my executors, administrators, and assigns, or such others as I the said James Walton, my executors, administrators, or assigns, should at any time agree with, and no others, from time to time and at all times during the term of years therein expressed, should and lawfully might make, use, exercise, and vend within England, Wales, and the town of Berwick-upon-Tweed, my invention of Improvements in cards for carding wool, cotton, silk, and other fibrous 1841. WALTON v. POTTER. invention. substances, and for raising the pile of woollen and other cloths;' in which said letters patent is contained a proviso that I the said James Walton shall cause a particular description of the nature of my said invention, and in what manner the same is to be performed, to be inrolled in his said Majesty's High Court of Chancery within six calendar months next and immediately after the date of the said in part recited letters patent, as in and by the same, reference being thereunto had, will more fully and at large appear: Now know ye, that, in compliance with the said proviso, I the said James Walton do hereby declare the nature of my invention to consist in the application and adaptation Nature of the of the material known by the name of caoutchouc or India rubber as a substitute for the fillets or sheets of leather which are commonly used in the construction of ordinary cards, and thus giving a superior elasticity and durability to such cards: and, in further compliance with the said proviso, I the said James Walton do hereby describe the manner in which my said invention is to be performed, by the following statement thereof, reference being had to the drawing annexed, and to the figures and letters marked thereon, that is to say, Description of the drawing: Figure 2 represents Description of an elevation of a card constructed with an India rubber or caoutchouc foundation or fillet, as shewn at a a, in which the wire dents or teeth are inserted; and the regularity of distance or uniformity of the dents or teeth of the cards is found to be better preserved by a piece of linen commonly called brown holland, or other the like cloth, well glazed, and cemented on to the back of the caoutchouc or India rubber, as shewn by a red line at bb: the cloth b b when fastened to the caoutchouc continues to keep the dents or teeth more firmly in their places when in use; and, the foundation or fillet being thereby made much stiffer, the action of the dents or teeth is less uncertain in their elastic movement. The cloth so cemented to the India rubber or caoutchouc is to be affixed to the cylinder the drawing. Figure 2. |