Cornell University Law Library 
 
 The Moak Collection 
 
 PURCHASED FOR 
 
 The School of I <a w of Cornell University 
 
 And Presented February 14, 1893 
 
 IN nenoRY 'of 
 
 JUDGE DOUGLASS BOARDMAN 
 
 FIRST DEAN OF THE SCHOOL 
 
 By his Wife and Daughter 
 
 A. M. BOARDMAN and BI.I.FN D. WILUA^IS * 
 
Cornell University Library 
 KD 1384.A52M17 1855 
 
 Reports of cases relating to letters pat 
 
 3 1924 017 620 570 
 
C€ 
 
 Cornell University 
 Library 
 
 The original of tiiis book is in 
 tine Cornell University Library. 
 
 There are no known copyright restrictions in 
 the United States on the use of the text. 
 
 http://www.archive.org/details/cu31924017620570 
 
CONTENTS.'^ 
 
 Page 
 
 HARRISON'S PATENT - - - 1—32 
 
 Specification given in evidence. 
 Handcock's .... 3 
 
 Holmes v. The London and North Western 
 Railway Company. 
 Trial at Nisi Prius - - - - 4 
 
 Motion for Rule Nisi - - - 11 
 
 Argument on Rule - - - v . 13 
 
 Sufficiency of sfedjfication — Claim to a ma- 
 chine construed as extending to each of the 
 parts of which it is composed. 
 Application for Leave to enter a Disclaimer 31 
 
 Disclaimer ..... 32 
 
 TETLEY'S PATENT - - - 33—89 
 
 Disclaimer and Memorandum of Alteration . 39 
 
 Specifications given in evidence. 
 
 Rumsey's ..... 41 
 
 Delap's ..... 42 
 
 Hale's (1830) .... 42 
 
 Hale's (1831) .... 44 
 
 Clark's ..... 45 
 
 Kuthven'a .... - 46 
 
 Tetley v. Easton and Amos. 
 
 Trial at Nisi Prius (Exch.) - - - 48 
 
 Sufficiency of specification — Power to recall 
 a witness. 
 Application for Leave to enter Disclaimer and 
 
 Memorandum of Alteration - - 78 
 
 Trial at Nisi Prius (Q. B.) - - - 78 
 
 Motion for Rule Nisi - - - 82 
 
 Argument on Rule - - - - 82 
 
 Suffi,ciency of specification — Construction of 
 claim — Parts of a machine described and 
 not disclaimed must be deemed to be 
 claimed. 
 
11 CONTENTS. 
 
 Page 
 
 BATEMAN AND MOORE'S PATENT - 89—119 
 
 Disclaimer and Memorandum of Alteration - 91 
 
 Description of Eoe's spherical valved Hydraulic Kam 92 
 
 Bateman and Moore v. Gray. 
 
 Trial at Nisi Prius - - . - 93 
 
 Motion for Rule Nisi - . - 109 
 
 Argument on Rule - - - - 110 
 
 Pleading — Pleas to the novelty of an inven- 
 tion do not put in issue the sufficiency of 
 the specification. 
 Application for Leave to enter Disclaimer and 
 
 Memorandum of Alteration - - 116 
 
 CUTLER'S PATENT - - - - 119—140 
 
 Regina v. Cutler and Others. 
 
 Trial of Scire facias - - - 124 
 
 New application of an old article not the 
 subject of a patent — Burthen of proof in 
 scire facias. 
 Summons to enter Verdict for the Crown - 136 
 
 Power of Judge to enter verdict. 
 Motion for Rule Nisi - - - 136 
 
 Argument on Rule - - - - 137 
 
 Sufficiency of specification — Two modes of 
 performing the invention being described, 
 one of which is useless, patent fails. 
 Second Trial of Scire facias - - - 138 
 
 Patent for a new use or application of a 
 known article cannot be supported. 
 
 BUSH'S PATENT - - . . 140—177 
 
 Description of Hughes' Apparatus for sinking, &c. - 143 
 
 Lord Cochrane's Specification - - . 148 
 
 Bush v. Fox and Others. 
 
 Trial at Nisi Prius - - - - 152 
 
 Patent for a mere new application cannot be 
 supported. 
 Argument on Bill of Exception - - 166 
 
 Specification, construction of — Claim to a 
 machine for a purpose described, imports a 
 claim to the machine itself, irrespective of 
 its application. 
 
HARRISON'S PATENT. 
 
 To face p»ge 1. 
 
 z 
 
 - 2 
 
 ^ O 
 
 111 
 (A 
 
 
 05 
 I 
 
 H 
 O 
 
 ?5 
 
 Maorory'a Patent Cases, Vol. L 
 
HARRISON'S PATENT. 
 
 To face page I. 
 
 Macrory'a Pateat Cases, "VoL L 
 
REPORTS OF CASES 
 
 RELATING TO 
 
 LETTERS PATENT FOR mYEmONS. 
 
 HAEEISON'S PATENT. 
 
 [No. 8818.] 
 
 Letters patent, bearing date 28 th January 1841, granted to Patent, 
 William Currie Harrison, for " an improved turning table for ^s^AJTim. I84i. 
 railway purposes." 
 
 To all to whom, &c. Now know ye that in compliance with Specification, 
 the said proviso, I, the said William Currie Harrison, do hereby 28<AJu?y,i84i. 
 declare the nature of my said invention to consist in supporting 
 the revolving plate or upper platform of the turning table, as 
 also its stays, braces, arms, and supports, on the top of a fixed 
 post, well braced, and resting On oi* planted in the ground, the 
 top of which post forms a pivot for the table to turn on, while 
 support arms, radiating from a, framework (the weight of which 
 is also sustained on the post), moving round the bottom part of 
 the post with friction rollers, and fastened to the outer edges' of 
 the plate, stay the plate at all sides, and keep it steady to re- 
 ceive the superincumbent weight of carriages or whatsoever is 
 to be turned upon it i and in further compliance with the said 
 proviso, I, the said W. C. Harrison, 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 itiarked thefeon ; that is 
 to say,— ^ 
 
 DESCRIPTION OF THE DRAWING. 
 
 Figure 1. is a plan of the table with the rails, catch, &c., as 
 usaal ; the dotted lines sho\*^ the ribs on the under side,- to give 
 strength to the plate of the table. 
 
 Figure 2. is a section of the table complete, showing an up- 
 right post connected with a set of arms or framework at the 
 
2 HARRISON'S PATENT. 
 
 Specification, bottom, or Otherwise fixed, as may suit the purpose, and bearing 
 the weight of the table on its top, with arms supporting the ex- 
 tremity of the plate in as many places round the plate as shall 
 be found necessary, a is a cap on the top of the upright post, 
 which is to carry the weight of the table bb. The suspending 
 rods cc pass through the cap a, and are also connected with the 
 table, so that the table can be raised and lowered; and these sus- 
 pending rods go dowri and pass through the friction roller case d, 
 supporting it by the screw pins ee, formed at their lower ends ; 
 the bottom parts of the suspending rods become also the axis for 
 the friction rollers at the bottom of the post, and are also made 
 to receive the bottom ends of the support arms. The top ends 
 of these arms are connected near the extremity of the plate, and 
 transfer all the stress from the outer sides of the plate through 
 the arms on to the suspending rods, bringing the w^eight di- 
 rectly on to the top of the post ; and it will, therefore, move 
 very much more lightly and easily than with the rollers round 
 the circle in the ordinary manner, which is a matter of great 
 convenience as to expedition, but a matter of more importance 
 still when a turn table is in almost constant motion. On the 
 present or ordinary principle of construction, it is certain to be 
 very soon out of order ; but on this new construction it is evi- 
 dent, from the very few wearing parts, that it will continue 
 very much longer in use without the liability of derangement, 
 which is a great recommendation to its a,doption wherever a turn 
 table is required. The friction rollers in the frame at the bottom 
 of the support arms are, as will be seen, made to move round 
 the post near the bottom, along with the turning motion of the 
 table, while the post is to be stationary, fixed to a set of braces 
 J^f, which, with the bottom of the post, are to be laid on con- 
 crete, stone, or brickwork, economy deciding the choice of the 
 materials, of such a depth as the nature of the ground may re- 
 quire. The braces are here shown to be put together in parts, 
 for the convenience of making, and also of transportation ; they 
 are brought up in an inclined form, to connect with the outer 
 ring. 
 
 Figure 3. has part of the outer ring removed, showin"- an 
 elevation of the table entire, and the spaces h, for the braces/. 
 
 Figure 4. is a plan of the braces and outer ring, with the post 
 in its place. 
 
 Figure 5. is the centre piece for connecting the braces with 
 the post, showing a section of the post, and also the spaces h. to 
 receive the braces. 
 
 Figure 6, is a plan of the rollers and case, and cross section 
 of the post, the post being cast hollow. 
 
HARRISON'S PATENT. f 
 
 Figure 7. is a section of the end of the brace, which goes Specification. 
 
 , , , . „ ^ A.D. 1841. 
 
 into the spaces h, shown in ngure o. 
 
 Now, whereas I claim as my invention the improved turning 
 table hereinbefore described, as such my invention being, to 
 the best of my knowledge and belief, entirely new and never 
 before used within that part of her said Majesty's United King- 
 dom of Great Britain and Ireland called England, and her said 
 dominion of Wales, or town of Berwick-upon-Tweed, I do 
 hereby declare this to be my specification of the same, and that 
 I do verily believe this my said specification doth comply in all 
 respects, fully and without reserve or disguise, Avith the proviso 
 in the said hereinbefore in part recited letters patent contained ; 
 wherefore I hereby claim to maintain exclusive right and pri- 
 vilege to my said invention. In witness, &c. (a) 
 
 (a) At the trial of Holmes v. The 
 London and North Western Railway 
 Company, the specification of Elias 
 Kobison Handcock's patent of 18th 
 December, 1840, [No.8745] for "Cer- 
 tain improvements in mechanism ap- 
 plicable to turn tables for changing 
 the position of carriages upon rail- 
 roads, which improvements are also 
 applicable to castors for furniture 
 und other purposes," was given in 
 evidence by the defendants, the fol- 
 lowing extract from which contains all 
 that is material to the case, the other 
 parts of the specification relating 
 merely to castors for furniture and 
 cranked axles:" — 
 
 To all to whom, &c. Now know 
 ye that in compliance with the said 
 proviso, I, the said Elias Kobison 
 Handcock, do hereby declare the na- 
 ture of my said invention to consist, 
 first, in the application of anti-fric- 
 tion collars to axles, whether vertical 
 or horizontal ; secondly, in an im- 
 proved mode of retaining the oil 
 which is to lubricate the same ; and 
 lastly, in arranging and supporting 
 vertical axles on pivots, so as to sus- 
 tain heavy weights thereon ; and, in 
 further compliance with the said 
 proviso, I, the said E. E. Handcock, 
 do hereby describe the manner in 
 which my said invention is to be 
 performed, reference being had to 
 the drawing annexed, to the figures 
 and letters marked thereon ; that is 
 to say, — -■ 
 
 Description of the Drawing. 
 
 [For the drawing, see London Journal, 
 
 vol. xix. C. S. p. 126. plate vi.] 
 
 First, with reference to the appli- 
 
 cation of ^"my said invention to turn 
 tables for changing the position of 
 carriages upon railroads : 
 
 Figs. 1., 2., S., 4. (sheet A) ex- 
 hibit my improved turn table for 
 railways ; fig. 1 . being a plan of 
 the upper side of the table or plat- 
 form on which the carriages are 
 placed ; and fig. 2. a plan of the 
 framing, which is sunk into the 
 ground. Fig. 3. is an elevation of 
 the entire machine, in which the 
 parts shown in fig. 1. and 2. may 
 be seen in their proper positions. 
 Fig. 4. is a diametrical and vertical 
 section of fig. 3. in the direction 
 indicated by the dotted line 3 3 3 
 made through figs. 1. and 2. The 
 letters of reference, whenever they 
 occur, indicate the same parts, a is 
 a vertical bearing shaft, which is 
 fixed into the foundation from b by 
 its lower end, which is partly ta' 
 pered, and having at its upper end a 
 steel centre step c ; nt d are two 
 gun metal collars, which fit loosely 
 around the vertical bearing shaft a ; 
 and within recesses made in the 
 outer cylinder e e, f, is a circular 
 flange bolted to the centre of the 
 table or platform, gg, at its under 
 side. At the middle of this circular 
 flange is the conical pivot, the 
 apex of which is formed of steel, and 
 works in the steel step c ; ii is a 
 massive flange, cast to the outer cy- 
 linder ee, to which are bolted a 
 series of stay bars jj, the upper 
 ends of which are bolted at equi- 
 distant points near the periphery of 
 the tal)le or platform. The effect of 
 these stays is a general support and 
 stability to the table or platform. 
 At A A is a series of rails disposed in 
 
 B 2 
 
4 
 
 HARRISON'S PATENT. 
 
 the usual manner for the passage to 
 and fro of the carriages. The action 
 of this, my improved turning table, 
 is as follows : — A carriage being 
 placed upon the table, and the same 
 being turned in the usual manner, 
 the pivot h is thereby made to re- 
 volve on the steel cap c, and with it 
 the whole table, with its stay bars 
 
 around the central bearing shaft a. 
 * * * * 
 
 Having now described the nature 
 of my invention of certain improve- 
 ments in mechanism applicable to 
 turn tables for changing the position 
 of carriages upon railroads, and il- 
 lustrated their application to that 
 purpose, and to castors for furniture, 
 and axles for carriages, I wish it to 
 be understood that I don't limit the 
 application of my said invention to 
 the purposes hereinbefore pointed 
 out, but I claim my said invention 
 as applicable to all kinds of ma- 
 chinery in which axles are employed, 
 such as the collars of lathes, the 
 axles of pulleys, blocks, hinges, and 
 so forth. And I wish it also to be 
 understood that I do not claim as 
 my invention all the parts of the 
 apparatus or articles described in 
 this my specification, as many such 
 parts are or may be in common use. 
 IB ut I do claim as my invention, — 
 
 First.' Generally the combination 
 of parts which constitute the turn 
 table for railways hereinbefore de- 
 scribed and separately considered, 
 the loose cylindrical collars and pi- 
 
 vots or points, smaller than the caps 
 they work in, employed as anti-fric- 
 tion mechanism in turn tables here 
 shown ; also the stay bars radiating 
 from a central vertical shaft, or 
 centre of motion, to support the 
 table. 
 
 Second. The same loose, cylin- 
 drical, anti-friction collars, or rings, 
 when applied to castors fof furniture, 
 and tlie pivots hereinbefore de- 
 scribed applied in connection there- 
 with, as also the mode of supporting 
 the lower friction collar of the turn 
 table. 
 
 Third. The same loose cylindrical 
 collars or rings, as applied to the 
 axles of carriages, and illustrated by 
 the drawings and sheet D and E, 
 and combined with the screw-plug 
 A, sheet D, for preventing the said 
 plug from becoming unscrewed 
 therein, shown by means of the ring 
 key, the leather collar lying in a 
 metal collar, which is pressed for- 
 ward by springs for the purpose of 
 preventing the escape of oil, and the 
 fast collar e, fig. 5., sheet E, by 
 which the loose collar j is retained 
 in its place, and the whole of which 
 mechanism is equally applicable to 
 the vertical shafts of turn tables 
 supported on my principle. ,. 
 
 Pourth. The same loose cylin- 
 drical anti-friction collars applied to 
 the collars for lathes, to the axles of 
 pulley-blocks, the pins of hinges, 
 and other similar articles. 
 
 In witness, &c. 
 
 17th June, 
 1S52. 
 
 Declaration. 
 
 27th March, 
 
 1852. 
 
 In the Common Pleas. 
 
 Nisi Prius Sittings for Middlesex after Trin. Term, 1852. 
 
 Datid Holmes v. The London and North Westebn 
 Railway Company. 
 
 Cor. Sir John Jervis C. J. and a Special Jury. 
 
 The declaration, which was in the usual form (a), after stating 
 that letters patent, dated the 28th of January, 1841, had been 
 granted to one William Currie Harrison, for "an improved 
 turning table for railway purposes," and that a specification 
 thereof had been duly enrolled in Chancery, on the 28 th of 
 July 1841, and the assignment of the said letters patent by the 
 said W. C. Harrison to the plaintiff, on the 5th of March 1850, 
 assigned as breaches, that the defendants, after the making of 
 the said letters patent, and 'after the making of the said in- 
 («) Before the Common Law Procedure Act. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 5 
 
 denture of assignment, unlawfully, unjustly, and injuriously, (>mmon 
 
 and without the leave, license, consent, or agreement of the 
 
 plaintiff, " did work, use, exercise, and put in practice the T. Vac. 1852. 
 said invention, and divers parts thereof, &c.," and " made, 
 manufactured, and fabricated divers turn tables, and divers 
 parts of turn tables, according to and in breach of the said 
 invention, &c.," and " did counterfeit, imitate, and resemble 
 the said invention, and divers parts thereof, &c.," and " did 
 make, and also cause and procure to be made, divers addi- 
 tions to, and divers subtractions from, the said invention, and 
 from divers parts thereof, whereby to pretend, and whereby 
 the defendants did in fact pretend, themselves to be the in- 
 ventors and devisors thereof, &c.," and " sold, vended, and put 
 off divers turn tables, and divers parts of tui-n tables, which 
 had been and were then unlawfully, wrongfully, and injuriously, 
 and without the license, consent, or agreement of the plaintiff, 
 made, manufactured, and fabricated according to and by means 
 of the said invention, and in breach, &c.," and " did work and 
 use divers turn tables, which had been and were then unlaw- 
 fully, wrongfully, and injuriously, and without such license, 
 consent, or agreement as aforesaid, made, manufactured, and 
 fabricated according to and by means of the said invention, and 
 in breach of the said letters patent and privilege, and also 
 divers other turn tables, which had been and were then unlaw- 
 fully, wrongfully, and injuriously, and without such license, 
 consent, or agreement as aforesaid, made, manufactured, and 
 fabricated in imitation of, and so as to counterfeit and resemble, 
 and with divers parts thereof respectively constructed in imita- 
 tion of, and so as to counterfeit and resemble the said invention, 
 and in breach of the said letters patent and privilege, and did 
 then unlawfully, wrongfully, and injuriously, and without such 
 license, consent, or agreement as aforesaid, work, use, and ex- 
 ercise and put in practice, the said invention, and divers parts 
 thereof, in breach, &c." 
 
 Pleas : First, Not guilty. r pi^^^^ 
 
 Secondly, that the said W. C. Harrison was not the true and s 3i«« March, 
 first inventor of the said invention in the letters patent and 
 declaration mentioned. 
 
 Thirdly, that the invention was not a new invention within 
 this realm. 
 
 Fourthly, that the said W. C. Harrison did not, in and by 
 the said Instrument in writing in the declaration mentioned, 
 particularly describe and ascertain the nature of the said alleged 
 invention, and in what manner the same was to be and might 
 be performed, in manner and form as in the declaration alleged. 
 
 B 3 
 
6 I-IAERISON'S PATENT. 
 
 Issue was joined on all these pleas. 
 
 Watson Q. C., Hindmarch, and Price, for the plaintiff. 
 
 Knoiules Q. C, and Webster, for the defendants. 
 
 Price opened the pleadings. 
 Plaintiff's Watson stated the plaintiff's case as follows : — Mr. Holmes, 
 
 the plaintiff, is the assignee of a patent for turn tables, which 
 are used on railways, which patent he derived, by assignment, 
 from a person of the name of Harrison. The patent was ob- 
 tained by Mr. Harrison so far back as 1841. Mr. Harrison was 
 a working engineer, a person possessed of much scientific talent, 
 and he applied bis mind at the period in question to the im- 
 j)rovement of turn tables which were used on railways. At 
 the time this patent was obtained, the mode of constructing 
 turn tables was as follows : — The turn table had a centre 
 pin, round which the table moved, but which gave no support 
 to the table, and there was a circular frame under the table, 
 near to its edge, by which the table was supported. No sup- 
 port was derived from the centre pin, which was merely a guide 
 to keep the table in its proper place when being used. Be- 
 tween the edge of the table and the frame upon which it rested, 
 there were rollers either upon the edge of the table itself or 
 upon the frame, so as to facilitate the turning of the table. 
 Many inconveniences arose from this mode of suspending the 
 table : the dirt and dust got into the rollers and prevented 
 them from acting; the wet got in and injured the rollers; and 
 it was found that although it answered the purpose for light 
 weights, it was wholly unfitted for use of railways where 
 great weights are required to be moved. In making any im- 
 provement, the great object was to throw the pressure upon 
 the top of a post under the centre of the table so as to avoid 
 the friction at the edge, as in the old turn table, yet allowing 
 the table to be easily turned, and Harrison discovered the mode 
 of effecting this. [The learned counsel then described the 
 details of Harrison's invention.] The claim that Mr. Harrison 
 made in 1841 was, not to any particular part of this invention, 
 • not to the table or upper platform, not to the arms, not to the 
 friction rollers, not to the suspending rods, which are the several 
 parts I have adverted to; but what he claims is, the whole 
 in combination, as being a combination by which you may have 
 a perfect turning table. Now, gentlemen, I will call your 
 attention to the specification. [He then read the description 
 in the specification, (a)] The patentee concludes by saying, 
 *' Now, whereas I claim as my invention the improved turning 
 
 (a) See Harrison's specification, ante, p. 1. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 7 
 
 table hereinbefore described, and such my invention being to Common 
 the best of my knowledge and belief entirely new, and never ' 
 
 before used." And therefore he does not claim the radiating t. Vac. i852. 
 arms, he does not claim the rods as independent inventions, but 
 he claims the whole as a combination, by which he throws the 
 pressure from the outer side of the circle on the centre by means 
 of these rods. The real claim in this case is this, that by reason 
 of the suspension the pressure is thrown on the centre of the 
 table. That is the discovery which was patented, and would have 
 been brought into use, but for the following circumstances : — 
 There had been, before the present patent, an invention brought 
 out by a gentleman of the name of Handcock ; there were forty- 
 one days between the dates of the patents of Handcock and 
 Harrison ; the specification of Handcock's patent was enrolled 
 on the 17 th June 1841 (after the date of Harrison's patent), 
 and Harrison's specification on the 28th July following. 
 
 The principle of Handcock's table (a) was perfectly different 
 from the principle of Harrison's. When the weight comes on 
 Handcock's table it is not thrown on the top of a post under 
 the centre of the table as in Harrison's by reason of the sus- 
 pending rods. Handcock's table is not suspended, but rests on 
 the top of the anti-friction collars ; there is a vertical and a 
 lateral pressure, supposing a weight to be brought on not per- 
 fectly evenly on the whole surface of the table, and the conse- 
 quence is, that that side upon which the greater weight may 
 happen to be is borne down, and, instead of being suspended so 
 as to bring the weight on a pillar in the centre, the weight 
 bears wholly on the friction collars. An important matter to 
 observe upon in Handcock's table is, that the coat or jacket 
 surrounding the centre pillar does not come up to or join the 
 table above it, so as to suspend it to the underside of the table. 
 He claims the radiating arms, but his chief claim is to the anti- 
 friction collars. He says, " I declare the nature of my inven- 
 tion to consist, first, in the application of anti-friction collars 
 to axles whether vertical or horizontal. Secondly, in an im- 
 proved mode of retaining the oil which is to lubricate the same. 
 And, lastly, in arranging and supporting vertical axles on 
 pivots so as to sustain heavy weights." You will observe that 
 there are no suspension rods or supports of that nature. \Jervis 
 C. J. He cut the centre post, which received the jacket or 
 cylinder, into steps, and then put on rings of a different metal like 
 the packing of a steam engine.] Precisely so ; it was found in 
 one of the tables made according to Handcock's patent, that on 
 
 (a) See the extract from Handcock's specification, ante, p. 3. 
 B 4 
 
g- HARRISON'S PATENT. 
 
 Watson Q. c. bringing an engine aud tender upon it, it was so much pressed 
 
 ■frt th "PI ' OO.O ' l-" X 
 
 tiff. * '""" down on one side, and the friction was so great, that it was 
 impossible to turn the table with so unequal a weight upon it, 
 and the only mode in which that was to be remedied was by 
 putting in the suspension rods, binding the supports by the 
 suspension rods to the centre of the table beneath, and also 
 introducing that collar containing the friction rollers, and then 
 it could sustain any weight that was put upon it, and turn 
 with ease. It is clearly stated in Harrison's specification that 
 he claims a combination of the arms, rods, and pivot. He does 
 not claim the rollers, — they are old ; he does not claim the ra- 
 diating arms or the suspension rods, but he claims the whole in 
 combination, — the suspension rods, the rollers, and the radiating 
 arms. Another advantage to be derived from Harrison's mode 
 of suspension is the facility afforded for adjustment. If the 
 table be too high or too low, by turning the screws near the 
 pivot you can elevate or depress the table as circumstances may 
 require. 
 
 I now come to another question which you will have to de- 
 termine. Has there been an infringement of Harrison's patent? 
 I shall call witnesses before you who will prove what is the con- 
 struction of a table used by the London and North "Western 
 Railway Company, and I will prove that notice was given to the 
 company that they were not to use it without license from the 
 assignee of Harrison's patent. In defiance of that notice they 
 have gone on using it, and that which they have been using for 
 four years is not a colourable imitation, but the actual thing 
 itself; that is, the suspension rods and rollers, which are not in 
 Handcock's patent. Then the questions are, first, Was Harri- 
 son the first inventor? Now that brings the question whether 
 the discovery of Harrison was the discovery in Handcock's 
 patent ; — whether they are the same or different. And another 
 question is, whether the invention was new. 
 
 Webster. There will be a question upon the novelty ; and 
 there will be another question upon the infringement. 
 
 Watson. The next question is, whether the defendants have 
 infringed it ; — they have used the rollers and the suspension 
 rods in the table which I have mentioned. It will perhaps be 
 said, and what my friend means to say is, that although the 
 London and North Western Railway Company have had notice 
 not to use Harrison's patent, that as they did not make it 
 themselves, the mere user of the turn table is not an infringe- 
 ment of the patent. 
 
 Those, gentlemen, are the facts of the case. Whether the 
 patents are the same or different is one question ; and whether 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. -9 
 
 the London and North Western Railway Company, having used Common 
 
 the table for four years, have been guilty of an infringement of ' 
 
 Harrison's patent is another. T. Vac. 1852. 
 
 The patent, the specification, and the assignment were then Evidence. 
 put in evidence and read. 
 
 Witnesses were also called to prove the general construction 
 of the respective turn tables of Handcock and Harrison. That 
 until the date of Handcock's patent there was no instance of a 
 turn table being supported on a fixed post. That the table in 
 use before that time worked by having rollers on the outer edge 
 or periphery on which it turned guided by a centre pin. That 
 the turn table which was upon the defendants' premises at Cam- 
 den Town had friction rollers and suspending rods, similar to 
 Harrison's patent. That the difference between Handcock's and 
 Harrison's tables was, Harrison's had suspension rods in the 
 centre, and friction rollers round the upright post ; Handcock's, 
 on the contrary, has anti-friction collars. That rollers, although 
 known in mechanics as a means of reducing friction, had never 
 been applied to turn tables as described in Harrison's specifi- 
 cation. That a turn table of the defendants' at Camden Town, 
 made substantially according to Harrison's invention, had been 
 used there for upwards of four years. 
 
 The counsel for the defendants cross-examined the plaintiff's 
 witnesses upon Handcock's specification, which was put in evi- 
 dence, with a view to show the identity between several parts of 
 the turn tables of Handcock and Harrison ; and the evidence 
 showed that the radiating arms, and some other of the parts of 
 Harrison's turn table, were the same as Handcock's, although 
 the combination and effect of Harrison's was different. 
 
 A letter, dated 11th February 1851, from plaintiff's solicitor 
 to the defendants, giving them notice of the patent, and 
 cautioning them against the use of the turn tables, as bein" 
 an infringement, was put in and read. 
 
 This closed the plaintiff's case. 
 
 Jervis C. J. Mr. Knowles, in the event of my determining Defendantt^ 
 that there is a claim for a combination, and, therefore, a ques- "**' 
 tion to go to the jury, do you propose to call witnesses? Be- 
 cause, as my decision here will not be final, it is of no use to 
 argue it here, as it must be argued again in the Superior Court. 
 I merely wish to save your time and that of the jury. 
 
 Knowles. There may be two or three questions. It is 
 already in evidence, or may be easily made so, that the de-: 
 fendants purchased this turn table, which is said to be an in- 
 fringement, from the manufacturers, who are the assignees of 
 Handcock's patent, and the first question is, whether in point of 
 
10 
 
 HARRISON'S PATENT. 
 
 Knowles Q. C. 
 for the De- 
 fendants. 
 
 fact, we have used this invention in the sense in which the terra 
 " use " occurs in the patent. 
 
 Jerois C. J. I shall save that point ; I think it is a user, 
 and I shall so hold for the purpose of to-day. 
 
 Knowles. It is a point that has never been distinctly deter- 
 mined. 
 
 Jervis C. J. I shall hold that it is a user. Upon that you 
 will have liberty to move. 
 
 Watson. They have used the invention after notice. 
 
 Jervis C. J. They neither made the turn table nor vended it, 
 but used it. I should hold that to be a user in answer to the 
 plea of not guilty. The defendants shall have liberty to move 
 to set aside the verdict upon that point, if the Court shall be 
 of opinion that there has been no user of the invention. 
 
 Knowles. Then the next important question is, whether 
 this specification claims what, according to the case now before 
 the Court, Harrison was entitled to, or whether this does not 
 claim certain apparatus which are comprised in Handcock's pa- 
 tent, and therefore bad, as claiming too much, and as claiming 
 that which is not new. 
 
 Jervis C. J. I propose to save that point likewise. I will tell 
 you the course I propose to adopt : I shall, for the purpose of to- 
 day, and only for that (because I have at present no opinion on the 
 matter), rule that the claim is for a combination only, assuming 
 that upon this state of things there is no question that the pivot is 
 old (and whether it be upright or downright, it is the same) ; that 
 the radiating arms, which must necessarily entail a lateral pres- 
 sure, are old, and that the use of rollers to reduce the friction oc- 
 casioned by that pressure is equivalent to the use of collars for 
 the same purpose; and, therefore, not the subject of a patent. 
 And then I shall ask the jury whether in that turn table the 
 use of the suspension rods to adjust the table and relieve the 
 pressure is new in combination (upon which at present there is 
 no doubt), and whether that is a useful invention ; and whether 
 it is, in truth, the same as Handcock's, or something new. If the 
 jury find that it is new, and an addition to the other parts in 
 the combination, then I shall save you the point ; and if the 
 Court shall be of opinion that the claim is not for the combina- 
 tion only, but for the whole and each part, I shall give you liberty 
 to enter a verdict on the plea to the specification and upon the 
 novelty. You have now all the facts before the jury to raise 
 the question, and I shall save expense by so ruling. 
 
 Knowles. Then there will be only this further question 
 upon the plea of not guilty. I apprehend we shall be en- 
 titled to the verdict as to such parts of the assumed combina- 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. H 
 
 tion as are old, according to the case of Newton v. The Grand Common 
 
 Plfas 
 Junction Railway Company. I do not propose to offer any ' 
 
 evidence beyond Handcock's specification, which has already T. Vac. 1852. 
 
 been put in. , 
 
 Jervis C. J. I shall hold for the purpose of to-day that the 
 user is an infringement, and that you are guilty of the in- 
 fringement. I shall hold that what is claimed is a combination 
 of several things : of a pivot, of a case with rollers, of radiating 
 arms, and of a series of suspending rods. 
 
 Gentlemen of the Jury, I think yoii will agree with me that "^«™* C. J. to 
 the pivot is old, because it is in Handcock's specification ; that 
 the radiating arms are old, because they are also in Handcock's 
 specification ; that the roller case is the same as the bottom of 
 the jacket in Handcock's turn table ; and that the rollers are 
 the same as the collars, or equivalent to them ; but that the 
 suspending rods are new and useful, and that upon the evi- 
 dence they are useful in equalizing the pressure ; and therefore 
 the combination of three old things and one new one, A, B, C, 
 and D, form a new quality E ; therefore there will be then a 
 novelty. Then if the specification upon that view of the 
 finding is not properly drawn, so that it does not distinguish 
 what is new from what is old, the defendants shall have the 
 benefit of the point, and the Court will decide the matter. 
 Gentlemen, you will find your verdict in that way, subject to 
 the opinion of the Court, for the plaintiff. There is no question 
 of damages. 
 
 The Foreman of the Jury. As far as any consultation has 
 taken place between us, the result is this, that the introduction 
 of those rods makes a new instrument altogether. 
 
 Jeevis C. J. Then there will be a verdict for the plaintiff. 
 Verdict for the plaintiff, damages 40s. 
 
 Common Pleas. 
 Cor. Jervis C. J., Maule J., Williams J., and Talfourd J. 
 
 Mich. Term, 1852. Nov. 4. 1852. 
 
 Knowles, in pursuance of the leave reserved at the trial, Motion for rule 
 
 to CTltGy VCfulCt 
 
 moved for a rule nisi, calling upon the plaintiffs to show cause j-g^ defendants 
 
 why the verdict should not be set aside on the first and fourth "" thefrstand 
 
 I ^ n 1 1 o 1 fourth issues. 
 
 issues, and a verdict entered for the defendants upon those 
 
 issues. After explaining to the Court the nature of the turn 
 
 tables of Handcock and Harrison, and reading portions of the 
 
12 HARRISON'S PATENT. 
 
 Motion for two specifications, the learned counsel proceeded as follows : — 
 Harrison's claim is very important. What he says is, " I claim 
 as my invention the i:nproved turning table hereinbefore de- 
 scribed, and such my invention being to the best of my know- 
 ledge and belief entirely new." He claims, therefore, the im- 
 proved turning table, that is, he does not claim the improve- 
 ment made by the suspending rods, but he claims the whole 
 table ; the claim, therefore, extends to each of the elements 
 of the combination, and is too large ; the specification does not 
 point out what parts of that combination are old and what are 
 claimed as new, and therefore it is not sufficient. That is the 
 first point. There is another question upon the first issue which 
 is of some importance. The question is this, that there was no 
 evidence to show how the turn table, which was the subject of 
 the action, and which was on the defendants' premises, had come 
 into their possession. \Jervis C. J. That is on the plea of not 
 guilty.] There was no evidence whatever that the defend- 
 ants had "made" the turn table, or in any way infringed the 
 patent, except by having the turn table in their possession- 
 [Jervis C. J. The grant of privilege to a patentee in a patent 
 is to " make, use, exercise, and vend," the invention, and after- 
 wards comes tlie prohibition to others, " that neither they nor 
 any of them, either directly or indirectly, do make, use, or put 
 in practice the said invention."] Those are the words of the 
 patent, but the words of the statute are somewhat different. They 
 are, " the sole working or making of any manner of new manu- 
 factures." l^Maule J. My impression is, that the words " use and 
 put in practice the invention" in the patent, means the invention 
 of making such turn tables. Suppose a patent for an improved 
 cork screw : I never heard of a person being sued for infringing 
 the patent who drew a cork with it. Or suppose a patent for 
 breaking stones for Macadamized roads : if I hire a cab I am not, 
 in driving over the stones, using the invention. The railway 
 company, I apprehend, do not use the invention after the table 
 is put up, and merely because something is put upon it. Take, 
 as an illustration, the Railway Acts — there are running clauses 
 in some of those Acts enabling all the world, with fit carriages 
 and under due regulations, to use the railway. If this company, 
 by putting a carriage upon the turning table and turning it 
 round, use this invention, any other person, acting under the 
 running clause, would be using it too.] 
 
 Jekvis C. J. It is quite a fit question to be discussed. 
 Take a rule upon both points. 
 
 Rule nisi granted. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 13 
 
 Common Pleas. 
 Cor., Jervis C. J., Maiile J., Williams J., and Talfourd J. 
 
 Mich. Term, 1852. ^l-fCil^. 
 
 Watson, Hindmarch, and Price showed cause against the Argument on 
 
 rule. There are two questions raised in this Case. The first ™'^' 
 
 is, whether the specification of Harrison's patent is sufficient; A specification 
 
 and the second is, whether there is any evidence of an in- improved 
 
 fringement. As to the first question, it is contended for the '"^i"? t^We 
 
 ii€r€iiiD6ior6 
 
 defendants that, although this machine is new and useful, the described" 
 
 plaintifi" is not entitled to recover, because the patentee did not ™"„ed^as*'°°' 
 
 sufficiently describe his invention. That turns upon the con- claiming the 
 
 struction to be put upon the specification, and it is submitted ^l^^iot ^' 
 
 that it does not claim any of the parts of the patented article '^hich that 
 
 to be new, but it claims the whole in combination. The posed^arTreU 
 
 claim is not for the suspending rods, nor for the support, nor as-the table as 
 
 for the table, nor for the post, but it is a claim for an ar- the patentee' 
 
 rangement of machinery constituting an improved turninor obtained a 
 
 ,f J . . . / , ° i . , „ patent for "an 
 
 taoie, and it as quite clear that a patent can be sustained for improved 
 
 a new arrangement of machinery, of which all the parts are aU the^com^o-' 
 
 old as well as if all the parts were new ; and in the present "ent parts of 
 
 case the claim is for the whole in combination, whether the on^werr^^' 
 
 parts be old or new. We must not construe a specification comprised in a 
 
 with the same strictness with which we would a pleading on a the°specifica'- 
 
 special demurrer. [Jervis C. J. We are to look at it as a *'°" °'' w'"<='i 
 
 man with ordinary knowledge on the subject would read it.] rolled until 
 
 The title of the patent is, "an improved turning table for "f'^r the date 
 
 •1 II T p 1 .,. of A.'s patent. 
 
 railway purposes, and from the specification it appears that A. in his spe- 
 
 the object was to support the revolving plate or upper platform clafi^e^" ,u 
 
 of the turning table, as also its braces, arms, and supports, on improved 
 
 the top of a fixed post, well braced, and resting on or plant.ed in hereinbefore 
 
 the ground, and so to cause the weight to press entirely on the described," 
 
 top of the fixed post, by which means the table would be kept ing that any " 
 
 always horizontal. Then we come to his claim, which is, "I part of it was 
 
 1 • - • 1 ■ 1 • 111 • , n °^^- tliejury 
 
 claim as my invention the improved turning table hereinbefore found that the 
 described," that is, 1 claim the combination by which the effect infoductiou of 
 
 . . . . . . suspending 
 
 is produced ; and if the claim is for a combination, there is no rods made 
 necessity to show what part of that combination is old and what j,g^ instru- 
 new. [Jervis C. J. The claim in this case does not necessarily ment. Held, 
 limit the effect of the description contained in the specification, fication of A.'g 
 
 patent was bad, 
 and that the defendants were entitled to the verdict on an issue respecting the sufficiency of the 
 
 3cification, and that the plaintiff was entitled to the verdict on an issue respecting the novelty of 
 
 e invention. 
 
14 HARRISON'S PATENT. 
 
 Argument on Suppose a man had invented a new balance for a watch, and, 
 having obtained a patent, were to describe in his specification 
 all the works of the watch, including the balance, and then say, 
 I claim this " improved watch," without showing what was the 
 novelty. "Would that specification be suflScient?] Perhaps 
 not. The novelty there would consist in the new balance only, 
 without reference to combination. \Jervis C. J. Suppose the 
 turning table all Handcock's, and old; can you add the friction 
 rollers to Handcock's, and say you claim the combination ?] 
 If by that you obtain a result of novelty and of utility, and 
 a turn table wholly different in its operation by reason of these 
 friction rollers, it is a good claim. \_Maule J. Suppose a new 
 tire to a carriage wheel, and you describe every part of the 
 carriage, the body, the springs, and the wheels, and every 
 portion, including the tire, and say I claim the combination 
 of these things, would that specification do ?] You could in 
 such a case claim an arrangement of parts forming a wheel, if 
 not a carriage. Turning tables formerly in use were supported 
 on. rollers placed at intervals round the under side of the edge or 
 periphery of the table. Harrison supports his on the top of a 
 fixed post, dispensing with the rollers at the circumference, and 
 at the bottom of the post there are rollers. Even suspension 
 rods are themselves old, but they are new when applied in 
 combination to this machinery forming the turning table. 
 
 l^Maule J. Handcock's table had a good deal, if not all, the 
 parts of Harrison's table, and Harrison effected an improvement 
 upon Handcock's, though he was not aware of the existence of 
 Handcock's patent at the time. If he had known of Handcock's 
 patent, he probably would have specified his own very dif- 
 ferently, confining it, and excluding much that is in it. He 
 may regret he had not had that opportunity ; but still his legal 
 position would be the same as if he had. When Harrison found 
 out Handcock's patent, he should have disclaimed a great part 
 of his own.] The chief question is, what has Harrison claimed ? 
 And it is submitted that he has claimed tlie combination, and 
 not the separate parts. There is no authority for saying that 
 it is necessary to point out expressly what is old and what is 
 new ; it is sufficient if it can be gathered from the whole instru- 
 ment. Newton V. The Grand Junction Railway Company (a) is 
 an authority on this point, which was the case of a patent granted 
 for the application of a soft metal to the axle-boxes of carriages 
 for the purpose of lessening friction. In the specification there 
 were no words to point out that the use of tin or an alloy was 
 known ; and Pollock C. B. there held that, " The criterion to be 
 
 (a) 5 Exch. Rep. 331. ; s. c. 20 L. J. Rep. (N. S.) Exch. 427. n. 
 
PIOLMES V. THE LONDON" AND N, WESTERN KAIL WAY CO. 15 
 
 applied on inquiring whether the subject matter of a patent is Common 
 
 novel, is to look at the whole specification, and see what is there " 
 
 claimed. Now, referring to the language of this specification, it M. T. 1852. 
 appears to me that in substance what the patentee claims is the 
 lining of these boxes with an alloy of tin, and that the jury were 
 correctly told that they were to consider whether the inven- 
 tion was new as a whole, not whether it was new as to every 
 part ; because, in modern times, that is a novelty very rarely 
 met with ; the more getieral subject of a patent now is some 
 new combination or new application ; " and Alderson B., in his 
 judgment, said, "In considering whether the invention is new, 
 the proper mode is to take the specification altogether, and see 
 whether the matter claimed, as a whole, is new." "When im- 
 provements are claimed, it is only necessary to show that the 
 improvements themselves are new. In the case of Sellers v. 
 Dickenson (a), the title of the invention was " an invention of 
 certain improvements in looms for weaving." In his specification, 
 the plaintiff declared that his improvements applied to that class 
 of machinery called power-looms, and consisted in a " novel ar- 
 rangement of mechanism, designed for the purpose of instantly 
 stopping the whole of the working parts of the loom whenever 
 the shuttle stops in the shed." He then described the manner 
 in which that was done in ordinary looms, and proceeded thus : — 
 " The principal defect in this arrangement, and which my 
 improvement is intended to obviate, is the frequent breakage of 
 the different parts of the loom, occasioned by the shock of the 
 lathe or stay striking against the ' frog,' (which is fixed to the 
 framing). In my improved arrangement the loom is stopped in 
 the following manner : — I make use of the ' swell ' and the 
 ' stop-rod finger,' as usual ; the construction of the latter, how- 
 ever, is somewhat modified, being of one piece with the small 
 lever which bears against the swell ; but instead of its striking 
 against a stop or ' frog ' fixed to the framing of the loom, it 
 strikes against a stop or notch upon the upper end of a vertical 
 lever, vibrating upon a pin or stud. The lever is furnished with 
 a small roller or bowl, which acts against a projection on a 
 horizontal lever, causing it to vibrate upon its centre, and 
 throw a clutch-box (which connects the main driving pulley 
 to the driving shaft) out of gear, and allows the main driving 
 pulley to revolve loosely upon the driving shaft at the same 
 time that a projection on the lever strikes against the ' spring 
 handle,' and shifts the strap ; simultaneously with these two 
 movements the lower end of the vertical beam causes a break to 
 
 (a) 5 Excli. Kep. 312. ; s, c. 20 L. J. Kep. (N. S.) ExcL 417. 
 
1 6 , HARRISON'S PATENT. 
 
 Argument on be brought In contact with the fly-wheel of the loom, thus in- 
 stantaneously stopping every motion of the loom without the 
 slightest shock." After the date -of the plaintiff's patent, the 
 defendant obtained a patent for " improvements in and applicable 
 to looms for weaving :" and amongst them he claimed a novel 
 arrangement of apparatus for throwing the loom out of gear 
 when the shuttle failed to complete its course. In the defend- 
 ant's apparatus, the clutch-box was not used, but, instead of it, 
 the stop -rod finger acted on a loose pieCe, or sliding frog : and 
 instead of a rigid vertical lever, as in the plaintiff's machine, 
 the defendant used an elastic horizontal lever, and by reason of. 
 the pin travelling on an inclined plane, the break was applied 
 to the wheel gradually, and not simultaneously. The jury found 
 that the plaintiff's arrangement of machinery for stopping looms 
 by means of the action of the clutch-box, in combination with 
 the action of the break, was new and useful ; also, that the 
 plaintiff's arrangement of machinery for bringing the break into 
 connection with the fly-wheel was new and useful ; and that the 
 defendant's ai-rangement of machinery for the latter purpose 
 was substantially the same as the plaintiff's ; and the Court 
 held upon these findings, first, that the specification was good ; 
 secondly, that the defendant had infringed the patent. 
 Twofold object [-f^ervis C. J. The object of the condition in the patent 
 in requiring a requiring a specification is twofold : first, that useful novelties 
 that invention should be given to the public, of which, at the end of the term 
 should be granted to the patentee, they should have the full benefit ; and, 
 
 public ; and secondly, that no person should inadvertently infringe the rights 
 should°inad-°" '^^ *^^ patentee during the term for which the patent has been 
 vertently in- granted. Suppose Harrison had said Handcock's table consists 
 tentee's right' °^ ^' ^^' ^^^ ^ ' ■'- want a patent for an improved turn table ; 
 mine consists of A, B, C, and D ; then you would have shown 
 that A, B, and C were old.] \_Maule J. It is as plain as pos- 
 sible. Baron Rolfe, in Sellers v. Dickenson, says, that he un- 
 derstood the specification to be what I have no doubt Har- 
 rison's would have been if he had known of Handcock's patent. 
 He would have said in the descriptive part that there was 
 a turn table called Handcock's, which consists of such parts, 
 describing a great deal which he has described in his speci- 
 fication, and then that he had improved it by putting the sus- 
 pension rods; that would have been" exactly such a specification 
 as is there held to be good.] In the case of Cornish v. 
 Keene (a) the patent was granted for " an improvement or 
 improvements in the making or manufacturing of elastic goods 
 
 (a) 3 Bing. N. C. 570. ; s. c. 1 Webs. Pat. Ca. 513. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 17 
 
 or fabrics applicable to various useful purposes," and the Common 
 
 patentee in his specification described his invention in general .' 
 
 terms, " to be designed for the production of an elastic web M. T. 1852. 
 cloth or other manufactured fabric for bandages, and for 
 such articles of dress, as the same may be applicable to." He 
 then described more particularly three distinct objects which 
 he proposed. The third object was " to produce cloth from 
 cotton, flax, or other suitable material, not capable of felting, in 
 which shall be interwoven elastic cords or strands of Indian 
 rubber, coated or wound round with a filamentous material." 
 He afterwards described the mode of effecting his third object 
 to be as follows : — "I introduce into the fabric threads or 
 strands of Indian rubber which have been previously covered 
 by winding filaments tightly round them through the agency 
 of an ordinary covering machine or otherwise ; these strands of 
 Indian rubber being applied as warp or weft, or as both, ac- 
 cording to the direction of the elasticity required. By thus 
 combining the strands of Indian rubber with yarns of cotton 
 flax or other non-elastic material, I am enabled to produce a 
 cloth which shall afford any required degree of elastic pressure, 
 according to the proportions of the elastic or non-elastic material. 
 It only remains to add, that the strands of Indian rubber are 
 in the first instance stretched to their utmost tension, and ren- 
 dered non-elastic as described in my former specification, and 
 being in that state introduced in the fabric, they acquire tlieir 
 elasticity by the application of heat after the fabric is made." 
 And Tindal C. J., in delivering the judgment of tlie Court, 
 decided that the invention was such a manufacture as could 
 be made the subject of a patent, and was sufiiciently de- 
 scribed in the specification. Handcock's invention was not 
 published to the world until the enrolling of his specifica- 
 tion, which (as there were only forty-one days between the 
 two patents) was nearly five months after Harrison obtained 
 his patent; therefore Harrison was not obliged to distinguish 
 so accurately what was old from what was new, as he would 
 have been under other circumstances. \Jervis C. J. The spe- 
 cification relates back to the date of the patent.] No doubt, 
 so far as it confers a right to the invention, but not as a 
 publication, (a) In the case of iZwMeZ/ v. Coioley and Dixon (b), a 
 patent (granted many years before that, upon which the plain- 
 tiff brought the action) claimed the invention of manufacturing 
 tubes by drawing them through rollers, using a maundril in the 
 course of the operation. The plaintiff claimed the invention of 
 
 (a) See CornuA V. /feerae, 3 Binsc. (i) 1 C. M. & R. 861.; s. c. 1 
 
 N. C. 570.; s. c. IWebs. Pat. Ca. 513. Webs. Pat. Ca. 465. 
 
18 HARRISON'S PATENT. 
 
 Argument on manufacturing tubes by drawing them through fixed dies or 
 holes, but his specification was silent as to the use of the 
 maundril ; and it was held that the Court, taking the whole of 
 the latter specification together, would infer that the maundril 
 was not to be used. In that case Parke B., in giving judg- 
 ment, said, " I think we ought to read this patent without a 
 disposition to upset it, Avhich has been too frequently the case 
 in many instances on the subject ; that we ought to read it 
 fairly, in order to understand what the meaning of the patentee 
 is ; " and Alderson B., in his judgment remarks, " We ought 
 to give patents a fair and eandid construction, certainly not 
 by any means being astute to pick holes in the specifications." 
 
 In Haworth v. Hardcastle {a) the plaintiff obtained a patent 
 for " machinery or apparatus adapted to facilitate the operation 
 of drying calicoes, muslins, linens, <ind other similar fabrics." 
 In the course of his specification, the patentee said, " I construct 
 the stove or drying-house in a manner nearly similar to that at 
 present in use ; and I arrange the rails or staves (over which 
 the cloth or fabric is intended to be hung or suspended) near to 
 the upper part of the stove or drying- house." And Tindal C. J.^ 
 in delivering the judgment of the Court, said, " We think upon 
 the fair construction of the specification itself, the patentee does 
 not claim as part of his invention either the rails or staves over 
 which the calicoes or other cloths are to be hung, or the placing 
 them at the upper part of the building. The use of rails or 
 staves for this purpose was proved to have been so general be- 
 fore the granting of this patent, that it would be almost impos- 
 sible a priori to suppose that the patentee intended to claim 
 what he could not but know would have avoided his patent ; 
 and the express statement he makes, ' that he constructs the 
 stove or drying-house in a manner nearly similar to those 
 which are at present in use, and that he arranges the rails 
 or staves on which the cloth or fabric is intended to be hung: 
 or suspended near to the upper part of the said stove or 
 drying-house,' shows clearly that he is speaking of those rails 
 or staves as of things then known and in common use ; for 
 he , begins with describing the drying-house as nearly similar 
 to those in common use. He gives no dimensions of the 
 rails or staves, no exact position of them, nor any particular 
 description by reference, as he invariably does when he comes 
 to that part of the machinery which is peculiarly his own in- 
 vention." There can be no rule of law which requires the 
 Court to make any forced construction of the specification so as 
 to extend the claim of the patentee to a wider range than the 
 (a) 1 Bing. N. C. 182. ; s. o. 4 Mo. & Scott, 720. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 19 
 
 facts would warrant : on the contrary, such construction ought Common 
 
 to be made, as will, consistently with the fair import of the Ian- _' 
 
 guage used, make the claim of invention co-extensive with the m. T. 1852. 
 new discovery of the grantee of the patent. And we see no 
 reason to believe that he intended under the specification to claim 
 either the staves or the position of the staves as to their height 
 in the drying-house as a part of his own invention." Lord 
 Eldon, in the case of Hill v. Thompson (a), has held it to be 
 clear law, " that there may be a valid patent for a new combi- 
 nation of materials previously in use for the same purpose, or 
 for a new method of applying such materials." \Jervis C. J. 
 The specification must give reasonable information. Suppose 
 a mechanic, wishing to make a turn table, looked at Harrison's 
 specification, would he not be thereby deterred from making . 
 it with radiating arms and friction rollers ?] A workman of 
 ordinary knowledge and skill would at once see that the table 
 could not be suspended on the top of the fixed post by the use 
 of the radiating arms alone. In the case of Harmar v. Playne{b\ 
 the plaintiff had obtained a patent for a certain machine, 
 of which he duly enrolled a specification, and afterwards obtained 
 another patent for " certain improvements in the said machine." 
 In the specification of the latter patent he described the whole ma- 
 chine so improved, without distinguishing the new improved parts 
 from the old, or referring to the former specification, otherwise 
 than as the second patent recited the grant of the first, and that 
 the plaintiff, Harmar, had invented considerable improvements 
 in the said machine ; and there the Court of King's Bench cer- 
 tified that they were of opinion that the specification was a per- 
 formance of the condition in the letters patent, requiring the 
 enrolment of a specification, particularly describing and ascer- 
 taining the nature of the said invention, and in what manner the 
 same was to be performed. \Jervis C. J. The Court in that 
 case did not give any reasons for their granting the certificate.] 
 Lord Ellenborough, in the course of that case, says, — " The 
 difficulty which presses most is, whether this mode of making 
 the specification be not calculated to mislead a person looking 
 at it, and induce him to suppose that the term for which the 
 patent is granted may extend to preclude the imitation of other 
 parts of the machine than those for which the new patent is 
 granted, when he can only tell by comparing it with some other 
 patent what are the new and what are the old parts ; and if this 
 may be done by reference to one, why not by reference to many 
 other patents, so as to render the investigation very complicated ? 
 
 (a) 3Menv. 626. ; s. c. 1 Webs. (J) 11 East, 101.; s.c. Dav. Pat. 
 
 Pat. Ca. 235. Ca. 311. 
 
 o 2 
 
20 HARRISON'S PATENT. 
 
 ^rsTMineni on j(. ^^^ ^q| ^^ necessary, indeed, in stating a specification of a 
 patent for an improvement, to state precisely all the former 
 known parts of the machine, and then to apply to those the im- 
 provement ; but on many occasions it may be sufficient to refer 
 generally to them. As, in the case of a common watch, it may 
 be sufficient for the patentee to say, take a common watch, and 
 add or alter such parts, describing them. And when, in the 
 case of Liardet v. Johnson (ci), Lord Mansfield said that the 
 meaning of the specification was that others might be taught to 
 do the thing for which the patent was granted, it must be un- 
 derstood to enable persons of reasonably competent skill in such 
 matters to make it ; for no sort of specification would probably 
 enable a ploughman, utterly ignorant of the whole art, to make 
 a watch." Now Harrison's mode of specifying his invention is, 
 I claim an improved turn table and I show you how I make it. 
 I do not claim the parts A, B, C, and D, but I claim the whole 
 put together in this way. \_Maule J. The specification amounts 
 in substance to this : I do not tell you what the invention is, I 
 tell you what the eifect is. I remember the case of Savory v. 
 Price (b)f where a man took out a patent for making seidlitz 
 powders, and in his specification he told exactly how the 
 powders were to be made ; in fact, he gave three distinct recipes 
 for preparing the ingredients, those three things being well 
 known before the date of the patent, and were sold in shops by 
 certain names. Now if he had mentioned how mixing certain 
 proportions of those three well-known ingredients together 
 would make seidlitz powders, that would have done, instead of 
 which he describes the whole process of preparing the well- 
 known substances; and the Court held that the specification 
 could not be supported ; Abbot C. J. saying, " It is the duty of 
 a patentee to specify the plainest and most easy way of pro- 
 ducing that for which the patent is granted, and to make the 
 public acquainted with the mode which he himself adopts. By 
 reading this specification, we are led to suppose a laborious 
 process necessary to the production of the ingredients, when, 
 in fact, we might go to any chemist's shop and buy the same 
 things ready made. The public are misled by this specification, 
 which tends to make people believe that an elaborate process is 
 essential to the invention." So in this case Harrison should 
 have said, " I take an old well-known turn table, and I vary it 
 in such a way," specifying the improvements he proposes to 
 make. J It is submitted that a patentee sufficiently complies with 
 the proviso, where his invention consists of a mere new com- 
 bination of old and well-known parts of a machine, when he 
 
 (a) BuU>^ N. P. 76. ; s. c. 1 Webs. (b) Ry. & ]V!oo. 1.; s. c. 1 Webs. 
 
 Pat. Ca. 54. n. (e) Pat. Cii. 83. >,. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 21 
 
 describes the whole machine as it is described here. It would (^mmon 
 
 be impossible otherwise to make the specification intelligible, ^ 
 
 the claim in which is, for a new arrangement of old parts M. T. 1852. 
 forming a new combination, and for nothing else. 
 
 As to the second point, that there was no evidence of an 
 infringement (a), it has been said that evidence of the mere use 
 by the defendants is not sufficient evidence of an infringement ; 
 but it is submitted that It is perfectly sufficient in this case. The 
 words used in the patent are, " make, use, exercise, and vend," so 
 that if you go and order an article, and use it, if it is a patented 
 article, that is suflScient to constitute an infringement. \_Maule J. 
 Mr. Knowles put it that the word " use " had dliFerent mean- 
 ings as applied to different subjects. If a patent is granted for 
 a new mode of manufacturing some substance — a new mode of 
 making garrancine, for instance (b) — if a person uses that mode 
 he infringes the patent ; but when the patent is for an improved 
 implement of ordinary use, not for the manufacture of a new 
 substance, the question is, whether the mere user of that im- 
 plement would amount to an infringement. Suppose there is 
 a patent for making an improved carriage, and a gentleman 
 buys a carriage of that improved construction, and drives 
 it on the road, is he guilty of infringing the patent when it 
 turns out that it was manufactured by a person who had not 
 a license from the patentee? Or, suppose* a man draws a 
 cork by a patent corkscrew, which he bought of some per- 
 son who had no licence to manufacture corkscrews under the 
 patent, is he infringing the patent ? It seems a different 
 sort of thing. Or, suppose a man had a patent for a walking- 
 stick, does a person buying such a walking-stick, and walking 
 with it, become guilty of a breach of the patent privilege ?] 
 [Jervis C. J. Take the case of a patent glove; It is the article 
 itself that is patented.] There is no difficulty in this case at all. 
 It is not the case of a corkscrew or a glove that you buy In 
 a shop, but you order certain things to be erected on your own 
 premises ; the post is brought there and fixed In the ground, 
 and the turn table Is erected there under the direction and by 
 the order of the defendants, the London and North Western 
 Railway. The observations of Tindal C. J., in the case of Gib- 
 son V. Brand (c), apply here. In that case Tindal C. J. said: 
 " The evidence Is, that an order was given for making articles 
 by the same mode for which the plaintlfis had obtained their 
 
 (a) Although the judgment of the ai'gument and observations of the 
 Court was not formally pronounced learned Judges on the subject, 
 upon this point, yet, in consequence (V) See Steiner' v. Heald. 
 of the importance of the subject, it (c) 4 M. & G. 179. ; s. c. 1 Webs. 
 is 6onsidered advisable to insert the Pat. Ca. 631. 
 
 c3 
 
22 HARBISON'S PATENT. 
 
 Argument on patent, which articles were afterwards received by the defend- 
 ant. This is quite sufScient to satisfy an allegation that he 
 made those articles; for he that causes and procures to be 
 made, may be well said to have made them himself." [_Maule J. 
 Then you may say in the case 1 put of the corkscrew, if a gentle- 
 man were to go to a person who has not the patent for manu- 
 facturing the corkscrew, and say, " Make me a corkscrew on the 
 plan of So-and-so's patent," that would be an infringement of 
 the patent ; but is there evidence that was done here ?] The 
 defendants having had the turn table four years in constant 
 use upon their railway, where it must have been erected at least 
 with their consent, is evidence to go to the jury that they had 
 caused it to be made ; and it is submitted that the ordering a 
 patented article to be made, and then using it, is sufficient to 
 constitute an infringement. [^Maule J. Suppose there is a 
 patent medicine which you can buy at such a price at a certain 
 shop, and you go to another druggist with a copy of the pre- 
 scription, or call it the specification, and you get it made up, 
 at half or a quarter of the price at which you could buy 
 the patent medicine, that would clearly be an infringement 
 of the patent ; but is the " using " of a patented article pro- 
 hibited by the words of the statute ?] The case of Caldwell and 
 Others \. Van Vlissengen {a), before Vice-Chancellor Turner, 
 was the case of a person bringing a patented screw propeller 
 to this country, attached to a vessel, and using it on the Thames, 
 and there an injunction was granted, although the making of 
 the propeller was not any infringement, for it was made by 
 foreigners in a foreign country, for the owners of a foreign 
 vessel, who were all foreigners. An interlocutory injunction is 
 not granted except in a clear case of infringement. {^Maule J. 
 They would grant an injunction if it was not a doubtful case, 
 and order an action to be tried. Before the statute of 21 
 James 1. c. 3. monopolies were very common, and were a 
 great grievance. Queen Elizabeth had put an end to some of 
 them, and then there was passed this Act of James 1. abolishing 
 all monopolies, but in which there is a clause specially exempt- 
 ing from the operation of the first section of that statute " let- 
 ters patents and grants of privilege of the sole working or making 
 of any manner of new manufactures." If the patent imports 
 a,nything beyond the granting of the sole working and making, 
 it grants something that the Crown has no power to grant. 
 You must restrain the sense of those words " make, use, exer- 
 cise, and vend," in the patent, to such a user as amounts to an 
 infringement of the prohibition as to the working and making.] 
 It must be deemed, in this case, that the turn table was 
 
 (a) 21 L. J. Rep. (N. S.) Ch. 97. ; s. c. 9 Hare, 415. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 23 
 
 wrongfully made, and that this is not the ordinary case of a sale. Common 
 
 There is enough proof to go to the jury as to a making. The ' 
 
 table must have been made by the procurement of the de- M. T. i852. 
 fendantp, and an order and a subsequent using is sufficient to 
 bring the case within the meaning of Gibson v. Brand, (a) Sup- 
 pose a person goes and purchases a patented article from a maker 
 and sells it again, would not that be sufficient to constitute an 
 infringement ? \Jervis C. J. If a man buys and sells, he may 
 be said to be making by the hands of another person.] As to 
 the argument that the word " use," is not mentioned in the 
 statute, the word " invention " does not occur in the statute, 
 and yet no one would contend that it was not contemplated or 
 intended by the Legislature. The word " working " itself does 
 not necessarily mean the mere making of the patented article ; 
 it may have a larger signification. \_Maule J. I think you ad- 
 vance a little in that argument by the consideration that the 
 working is not mentioned in the prohibition in any patent. The 
 word making is found in the Monopoly Clause in the statute of 
 James. The Crown may lawfully confer a monopoly of the 
 working and making. Now, if the defendant has infringed my 
 monopoly of working and making, that prevents my working to 
 the extent to which I otherwise might have worked and made. I 
 think that reduces the point to the case of a person making use 
 of a turn table that is on the same principle as the plaintiff's, 
 whether he may be considered as working and making it or not.] 
 If he deals with it as these defendants have dealt with this, 
 the tendency and effect of it is to diminish the exclusive working 
 of the plaintiff, and then he comes within the statute, ioi he de- 
 prives the patentee of a portion of the profit or reward which 
 the law intends him to have. \^Maule J. Supposing that you 
 could showj and there was no difficulty about it, that that 
 which these defendants have done with this turn table, has 
 a tendency to diminish the number of turn tables that the 
 plaintiff would otherwise have made, then, although these de- 
 fendants may not have made it at all, yet they will have in- 
 fringed the plaintiff's exclusive right to work it ; because you 
 may say it is not immediately, and as such, that the working 
 and making of the defendants is applicable ; it is only because 
 it impedes oi* diminishes the pldintifF's working and making.] 
 If the defendants could work and make without in any way 
 impeding or diminishing the eiXclusive working and making by 
 the plaintiff, then it might not be an infringement; but here 
 we find a railwa,y company with a number of these turn tables 
 used by them for years. It is hardly possible to say that this 
 
 (a) 4 M. & G. 179. ; s. c. 1 Wdbs. Pat. Ca. 631. 
 c 4 
 
24 HARRISON'S PATENT. 
 
 Argument on has not Operated to tlie prejudice of the patentee's right to the 
 sole working and making of these turn tables. The cases of 
 Russell V. Leadsam (a), Stead v. Anderson (b). Heath v. Un- 
 win (c), and Novello v. Sudloio (rf), were also referred to. 
 
 Knowles and Webster, in support of the rule. This rule must be 
 made absolute. The specification is clearly insufficient : there are 
 no words in any part of it that point out that the invention con- 
 sists of a novel arrangement of old machinery. The law as laid 
 down by the other side is not disputed. There is no question 
 but that a novel arrangement of old machinery may be the sub- 
 ject of a patent, and, in this case, Harrison has taken a num- 
 ber of old and well-known parts, and added to them the 
 suspending rods which is the only part of the invention which 
 the jury have found to be a novelty. In fact, he has only added 
 suspending rods to Handcock's table. That being so, it is sub- 
 mitted that the specification is not sufficient ; for if the patentee 
 claimed the combination as his invention, he ought to have 
 shown in his specification what parts of that combination v,rere 
 old, and what parts he claimed as new. The rule applicable to 
 a case such as the present is distinctly laid down by Gibbs- 
 C. J., in his direction to the jury in the case of Bovill v. 
 Moore, (e) In that case the patentee obtained his patent for 
 " a machine or machines for the manufacture of bobbin lace 
 or twist net," and the specification described the whole machine, 
 without pointing what parts of the machine were old, and what 
 the patentee claimed as his invention ; and his Lordship there 
 says, " If a patentee has in his specification asserted to himself 
 a larger extent of invention than belongs to him, if he states 
 himself to have invented that which was well known before, 
 then the specification will be bad, because that will aflPect to 
 give him, through the means of a patent, a larger privilege than 
 could legally be granted to him." And, further on, " If a pa- 
 tentee has only invented an improvement of the old engine, then 
 his specification by which he claims the whole to himself will be 
 bad ; if, on the other hand, he has invented an engine which 
 consists of a perfectly new conformation of parts, although all 
 the parts were used before, yet he will be entitled to support 
 his patent for a new machine, if a combination of a certain 
 number of these parts existed up to a given point before the date 
 of his patent ; and if the patentee's invention sprung from that 
 point, and added other combinations to it, then I think his spe- 
 cification stating the whole machine as his invention is bad." 
 
 (a) 11 M. & W. 647. ; s. c. 1 Dow. (d) 12 C. B. 177. 
 
 & Low. 347. (e) Dav. P. C. 361. ; s, c. 2 Mar- 
 
 (J) 4 C. B. 806. shall,' 211. 
 
 (c) 12 C. B. 522. ; s. c. 22 L. J. 
 Kep. (N. S.) C. P. 7. 
 
HOLMES V. THE LONDON AND N. WESTERN RAILWAY CO. 25 
 
 The case of Harmar v. Playne (a) only decided that a speci- Common 
 
 fication was sufficieDt, which, by reference to a former patent, ' 
 
 pointed out what was the old machine, for improvements in m. T. 1852. 
 which the second patent had been obtained ; and Mr. Hindmarch, 
 in his treatise on the law relative to patents, mentions this 
 case as follows (b) : — " There is one case, Harmar v. Playne, in 
 which it was held that a specification was sufficient, although 
 it could not be ascertained what the patentee's improvements 
 were, except by comparing the specification with a prior speci- 
 fication, which had been enrolled by the same patentee, and to 
 which he referred. The circumstances of that case were pecu- 
 liar, and the decision does not break in upon the principle of any 
 of the cases which have been cited." In Jessop's Case, cited in 
 the case of Boulton and Watt v. Bull (c), the patent was held to 
 be void because it extended to the whole watch, the invention, 
 as disclosed by the specification, being of a particular movement 
 only. None of the cases cited on the part of the plaintiff are 
 in any way disputed, but it is submitted that none of them are 
 sufficient to show that the specification, in the present case, 
 complies with the condition in the patent. 
 
 "With regard to the second point, there has been a great deal 
 of inaccurate language used in the cases cited, and when the 
 cases themselves come to be looked at, the construction of the 
 words " working and making " contended for here, will be 
 found to be the only one which can be sustained. In the case 
 of Chanter v. Dewhurst (d), in the Court of Exchequer, the 
 Judges thought that the words in a patent, saying that no one 
 shall make, use, or put in practice the invention, do not apply 
 to the case of a person buying a patented article in a shop and 
 using it. 
 
 [The Court here inquired if, supposing their decision to be in 
 favour of the defendants upon the first point, the counsel for 
 the defendants would press for a decision on the question as to 
 the infringement. 
 
 The defendants' counsel intimated that they would be satis- 
 fied with the judgment of the Court as to the sufficiency of the 
 specification.] 
 
 Jeevis C. J. The course the case has just taken renders it Judgment. 
 unnecessary for the Court to give any opinion on the difficult 
 question raised with respect to the use of the turn table being 
 an infringement of the patent. 
 
 (a) 11 East, 101. ; s. c. Dav. P. C. (c) 2 H. Bl. 489. ; s. c. Dav. P. 
 311. C. 182. 
 
 (i) Hindmarch on Patents, p. 191. {d) 12 M. & W. 823. 
 
26 HARRISON'S PATENT. 
 
 Judgment. Upon the other part of the case, I am clearly of opinion that 
 
 the rule must be made absolute. There is no question with 
 reference to the rule of law which will govern the Court in the 
 opinion it forms in this case. It is admitted as a general pro- 
 position that every patentee must, in his specification, describe 
 the nature of his invention either directly or in such a way as 
 that those who read the specification with common ordinary un- 
 derstanding, and fairly read it, may see and understand what is 
 new and what is old. And it is, likewise, on the other hand ad- 
 mitted as equally free from doubt, that a patentee may take a 
 number of old and well-known instruments, or parts of instru- 
 ments, and may have a good patent for a combination, of the 
 known instruments or parts if he so describes it in his specifica- 
 tion. The simple question here is, what is the construction to be 
 put upon this specification with reference to those well-known 
 rules ? These rules are not at all interfered with by the cases 
 which have been cited, but which, in fact, in the course of the 
 judgments, illustrate and confirm this general principle. In the 
 case of Rus&ell v. Ccnioley (a), referred to for the plaintiff, although 
 it was true that Jones and James had specified portions of the 
 same mode of making iron tubes, yet, what was regarded as, 
 and stated to be part of, the invention in the specification of 
 Whitehouse, was the making of iron tubes without the use of a 
 maundril or internal support, by means of passing the skelp or 
 metal, in a state of welding heat, through a scorpion or ring ; 
 and the Court, proceeding on the well-known rule, was satisfied 
 that that was the patent, and what the party sought to claim as 
 his invention. So, in the case oi Haworth v. Hardcastle{b), the 
 question was, whether the rails and staves were the subject 
 matter of the patent ; the Court said it was manifest, on 
 reading the specification, that when the patentee said he used 
 the ordinary stoves slightly varied, and that he supported the 
 rails and staves a little above the stove, he was speaking, 
 not of the new invention which he claimed, but of the appli- 
 cation of a known drying-stove, and a known means of sus- 
 pending the articles above the stove ; and the Court applied 
 the general rule, and decided that the specification was sufficient. 
 The same may be said of Sellers v. Dickenson (c), in which they 
 applied a new mode of stopping to a known machine, and in 
 which the patentee stated that he applied it to the old loom for 
 the purpose of employing the nCw stop. 
 
 So, in the case of Nkwton v. The Grand Junction Railway 
 
 (a) IC-M.&R. 861.; s.c. iWebs. («) 5 Excli. Rep. 312., s. c. 20 
 
 Piit. Ca. 46,1. Law J. Rep. (N. S.) Excli. 417. 
 
 {!)) 1 Bing. N. C, 182. ; s. c. 4 Mo. 
 & Scott, 720. 
 
HOLMES V. THE LONDON AND N. WESTERIT RAILWAY CO. 27 
 
 Company, (a) The objection there was, among other things, that Common 
 the patentee appeared to claim the application of hard and soft J-^- 
 metal to prevent friction. The Court said, although that was m. T. 1852. 
 used as part of the invention, the invention was not that of 
 itself, but it was the fixing of the soft metal in the interior of 
 the wheel by the adhesion of the alloy and by the use of flanges, 
 and, therefore, it did in truth specify sufficiently what was old 
 and what was new. 
 
 The same may be said of Harmar v. Playne. (a) That went a 
 considerable way, for in that decision it was held that the spe- 
 cification was sufficiently indicative of what the patentee claimed 
 as new, and what was old, when he said, " I have got a patent 
 for an old machine, to which I refer, and I seek to improve that 
 old machine," and then went on to specify the old machine as 
 improved. The Court said it was quite as easy by a reference 
 to the former specification to asicertain what was old as if he had 
 enumerated everything in the specification, and pointed out 
 what was old and what was new. They adopted the principle, 
 and reduced it in this case to a mere question of construction as 
 to what was claimed in the specification. 
 
 Now, nobody can read this specification without seeing that 
 at the time the specification was made, as the counsel for the 
 plaintiff admits, Harrison did not know that Handcock's patent 
 was in existence. Then how was it possible, if he did not know 
 of it, to point out what was old and what was new ? He thought, 
 possibly, but he was mistaken in that, that all was new, and there- 
 fore he proceeded to claim and to state his invention as if all was 
 new. The claim in substance is this, " for an improved turning -jhe claim 
 table." Now, that will not have the eff'ect of making everything !'*''°g " f<"" »" 
 that follows a combination, merely because he claims the turning turning table " 
 table. Although the surface rails and catches are old, he, by the '^'" °°' , 
 
 . ,. , 1 1. 1 . . T ^'°°^ make all 
 
 application of the other appliances, makes it an improved turning that follows a 
 table. He takes the old table, and then goes on to announce the «'"»'''°a"o°- 
 general principle of his invention in substance thus : " I support 
 upon a pivot in a post fixed in the centre, the turning table 
 with the braces and arms, by means of which I throw the pres- 
 sure on the centre, and relieve it of the rollers at the periphery, 
 or edge of the table." He then goes on to describe how he does 
 this : he does it by taking an old table, as usual, with the catches 
 and rails, &c. ; he does it by having a post which, for aught 
 that appears, is new, by having a pivot which is considered as 
 new, by having arms, and by having suspending rods, and each 
 of them and every one of them is equally described to be new ; 
 
 (a) 5 Exch. Eep. 331.; s. c. 20 (J) 11 East, 101.; s. c. Dav. Pat. 
 Law J. Kep. (N. S.) Exch. 427. n. Ca. 311. 
 
28 
 
 HARRISON'S PATENT. 
 
 Judgment. 
 
 Parts de- 
 Bcribed, and 
 not disclaimed, 
 must be con- 
 sidered as 
 claimed. 
 
 at le.ast, they are not stated to be old. The jury found, and it 
 was admitted, that the post, the pivot, the arms, and, in fact, 
 everything but the suspending rods, were old ; that he has only 
 added the suspending rods to an old well-known article. In 
 order to make the specification good in that respect, either for 
 the improvement of an old instrument or the combination of a 
 new one, he should have said, " My principle is to support the 
 turning table on a post in the centre by braces and arms, and 
 for that purpose, in substance, I take Handcock's patent," and go 
 through it, and say, " This is the old way, and then to that I 
 add a new thing, the suspending rods, which has the effect of 
 bringing' the bearing more effectually on the centre, and re- 
 lieving it from the pressure at the edge." No one can read the 
 specification without seeing that this is plainly the invention, 
 he supposing the whole of it to be new. Anybody looking at 
 it without any further knowledge would suppose that the arms 
 were as new as the suspending rods. He does not distinguish 
 the new from the old. He does not say he claims a combination 
 only, but he says all is new except the table, which, by the ap- 
 plication of new implements, he converts into a suspended table 
 on the top of a post. That being so, he does not comply with 
 the rules which require that he should distinctly state what was 
 new and what was old. Therefore, I am of opinion that this 
 specification is not suflficient, and that the rule should be absolute 
 to enter a verdict for the defendants on the fourth plea. 
 
 Maule J. I am of the same opinion. The construction of 
 the specification does not, I think, present any diflBculty. It 
 was attempted to be shown that it has a different construction 
 to that which it bears upon reading it without any view to 
 favour either side, but with the desire of knowing what it is 
 that the person drawing the specification seems to claim. It 
 seems to me to be very clear that the specification is for an im- 
 provement of a turning table, consisting in that part of the 
 turning table which lies below the visible or supei'ficial part, 
 which travellers are not in the habit of seeing. Those lower 
 parts afford a support to the table, and bring the weight to tlie 
 fixed point on which it is to be supported. Those parts are all 
 of them described together, without any distinction made by the 
 author of the description between any one part and any other 
 of those parts so described. The whole of them constitute 
 ]]is invention, according to the plain sense of the specification ; 
 there is nothing to distinguish one part from another ; there is 
 nothing said about one of those parts putting It in a different 
 situation from any other, and therefore whatever is impliedly 
 said about one part, is impliedly said about every other part. I^ 
 
ilULiMEb V. THJi LiUJNUUiN AND JS'. WESTEJiJN liAiLWAI (JU. JJiJ 
 
 it is impliedly said in the specification that the suspension rods are Common 
 
 newj and an improvement on what existed before, the same im- ' 
 
 plication arises as to every other part. I^ut, in fact, and that I M. T. 1852. 
 conceive to be the true sense, there is as much novelty in one 
 part as in another ; and there is nothing to distinguish between 
 them. It would be most wonderful if there were, because what 
 does the plaintiff say by the mouth of his learned counsel ? He 
 says, I never heard of Handcock's patent ; I supposed that the 
 whole apparatus for suspending and supporting my turn table 
 was equally my invention, and under that impression I drew 
 this specification. That is what he says with respect to the 
 state of mind under which he drew it. It is perfectly possible 
 that a person in that state of mind might, and it is no contra- 
 diction in terms, believing the whole was his invention, intend 
 to take out the patent for the whole, having no reason to make 
 any distinction between one part and another, none existing in 
 his own mind as to his invention ; but he, nevertheless, did so 
 describe his invention, as to make a distinction between one part 
 and another; and that the true sense of what he says is, that he 
 claims only the suspension rods, or the combination of the 
 suspension rods with the rest of the machine. It is possible a 
 man may mean one thing, having no reason to say another. A 
 man having no reason to make any distinction may, in fact, 
 make a distinction ; and that distinction, which, though he does 
 not know anything about it, is one that exists in fact. The 
 same sort of possibility that there is of a man turning out a 
 great number of type, throwing them together, and their coming 
 into the shape of a column of a newspaper. That is a kind of 
 possibility which is neglected in human affairs, even when the 
 question is one of life and death ; therefore it seems to me that 
 though it is possible that the plaintiff might have had such a 
 meaning, it may be treated as impracticable and impossible. 
 But one fact, without looking at anything external to the speci- Specification 
 fication, which is the true way of construing it, is most manifest, cj'ai^^ng ^ 
 that he claims every one part as much as he claims every other ; Ae parts 
 there is no distinction, and you must treat it as a claim to the ^ * ^' 
 whole. 
 
 Now, it is evident, upon the evidence in this case, and the 
 finding of the jury, that the whole Avas not his invention. He 
 now says his invention was the applying what the jury found to 
 be new to the old instrument — the suspending the turning 
 table on a post by means of certain apparatus which he uses as 
 well as Handcock ; his invention is the improving Handcock's, by 
 adding some suspension rods. Now, there is no denying, upon 
 the evidence, what his invention is ; but what he says is, that it 
 is described in his specification. It is not described, and I have 
 
30 ' HARRISON'S PATENT. 
 
 Judgment, already shown why it seems to me that it is not described. In 
 the first place, it is extremely improbable that it should be ; but 
 leaving that out of the question, if I saw upon the true con- 
 struction that it had that meaning, I should certainly then my- 
 self not believe that the person, when drawing this specification, 
 was wholly ignorant of the specification of Handcock's invention. 
 I have not the least doubt that it was not so, because it is, prac- 
 tically speaking, impossible. A man who tells me that he had 
 seen a ghost, or something perfectly impossible, — that he had 
 seen a statue walk across the street, and go back to its pedestal 
 again, I should not believe, because, although I may think 
 him the most veracious person, yet the thing is impossible. 
 And I think it is impossible that that could have taken place 
 which is suggested here, without a knowledge on the part of 
 Harrison of Handcock's machinery. There is no difficulty upon 
 this construction. I have dealt with it rather largely, from the 
 feeling that all parties engaged in the case have been very 
 strenuous and earnest in their comments ; ^but looking simply at 
 it with regard to our position here, there is really no difliculty 
 at all, and it appears to me upon that construction, taken with 
 the evidence, that the plaintiff has in his specification described 
 one thing, and in the evidence has shown that he has invented 
 another and different thing, and not that which he describes, 
 and, therefore, the specification fails. By agreement, we do 
 not pronounce any opinion upon the other point, viz., the ques- 
 tion of infringement, upon which, I confess, I individually have 
 no doubt. 
 
 Williams J. I am of the same opinion, and for the reasons 
 already fully expressed by my Lord and my Brother Maule. I 
 will only add, that in coming to this conclusion I do not consider 
 that we shall, as was suggested in the course of the argument, 
 be acting upon any new doctrine, but merely applying a rule of 
 law, long ago well established and vfell understood in the con- 
 struction of specifications, to the construction of the specification 
 which is the subject of the present action. 
 
 Talfourd J. I am entirely of the same opinion upon the only 
 point we are called on to decide, and upon which, throughout 
 the whole of the argument, I believe there has been no doubt 
 on the mind of any member of the Court. 
 
 [The defendants' counsel then contended that they were en- 
 titled to have the verdict entered for the defendants on the 
 third issue as to the novelty of the invention ; but after a short 
 argument the Court held that the defendants were not entitled 
 to the verdict on the third issue, and made the — ] 
 
 Eule absolute to enter a verdict for the defendants 
 upon the fourth issue. 
 
UN j-xijii ivirYj.±i!jii ua Jiui^iviJiiis a i-iii5VjijAii«Jiin. jjj; 
 
 Application for Leave to enter a Disclaimer. 
 Co7\, Sir Richard Bethell, S. G. 
 23rd April, 1853. 
 
 Mr. Holmes, the assignee of the patent and plaintiff in the Solicito- 
 preceding case of Holmes v. The London and North Western ^3^°"'','.jj 
 Railway Company, after the judgment of the Court of Common 1853. 
 Pleas above reported, applied to the Solicitor-General for leave to 
 enter a disclaimer of all the parts or elements of the turn table, 
 so as to confine the claim of invention to the combination of 
 parts comprising the suspending rods and anti-friction rollers, 
 forming an improved turn table, as described in the speci- 
 fication. The application, being opposed, now came on for 
 hearing before the Solicitor-General. 
 
 Hindmarch appeared in support, and urged that as the ap- liiiuhnarch in 
 plicant, the plaintiff in the abovA action, was taken by sur- ^PP'^'- 
 prise at the trial, specifications similarly Avorded having in 
 several previous cases been held to be sufficient, and that as 
 it was evident, from the language of the specification itself, 
 that the patentee only intended to claim the combination, or 
 the improved turning table as a whole, the Solicitor-General 
 would grant the applicant leave to enter the proposed dis- 
 claimer without imposing any restriction upon him with respect 
 to prior acts of infringement. 
 
 Webster opposed on behalf of the London and North Webster in 
 Western Railway Company, and also on behalf of Messrs. "PP"^'''""- 
 Lloyd and Co., the owners of Handcock's patent, and manu- 
 facturers of the turn tables on the London and North Western 
 Kailway, in respect of which the late action had been brought. 
 He urged that the applicant having failed in that action, in 
 consequence of the extensive nature of the claim in the pa- 
 tentee's specification which was large enough to include Hand- 
 cock's prior invention, now sought to confine the terms of his 
 claim, and if the disclaimer were allowed without condition, 
 the applicant might commence fresh legal proceedings for acts 
 which had been innocently done during the time when the patent 
 was void. It also appeared that the consideration paid by Mr. 
 Holmes, the assignee, for the purchase of the patent was small, 
 and that the turn tables alleged to be infringements were all 
 made befor^ the date of the assignment. Webster for the 
 parties opposing, therefore prayed the Solicitor-General either to 
 refuse the application altogether, or, if granted, to impose such 
 
32 
 
 HARRISON'S PATENT. 
 
 Decision (if 
 Solicitor- 
 General, 
 
 teroas as would protect the company and their manufacturers 
 from all proceedings in respect of the making or using of turn 
 tables made before entering the disclaimer. 
 
 Sir E.. Bethell S. G. said that although anxious to give an 
 opportunity of excising from the specification whatever was 
 objectionable, so that the patentee or his assignee might enjoy 
 the fruits of the invention, he must look also to the rights and 
 interests of others, and could not allow a disclaimer to be 
 entered which might have the effect of subjecting the railway 
 company, or the Messrs. Lloyd and Co., to another action at 
 the suit of the applicant after the decision of a Court of Law, 
 that they were not liable up to the present time. The ap- 
 plication would therefore only be granted upon the terms that 
 an undertaking be given not to bring or prosecute any action 
 or suit against the London and North Western Railway Com- 
 pany or Messrs. Lloyd and Company in respect of any turn 
 tables made or used before the date of the disclaimer, (a) 
 
 Applicdtion granted upon terms stated. 
 
 (a) The following is the form of 
 the proposed disclaimer as allowed 
 by the Solicitor-General. It was 
 not filed, the term for which the 
 patent had been granted having so 
 nearly expired, that any further 
 proceedings were deemed inexpe- 
 dient: — 
 
 To all to whom, &c. I, David 
 Holmes, send greeting [reciting 
 the grant of letters patent to W. C. 
 Harrison' on 2Sth Jan. 1841, the 
 enrolment of a specification, in pur- 
 suance of the proviso, on the Wth July 
 following, and the assignment to the 
 said D. Holmes on the 5th Nov. 
 1850.] And whereas it has been 
 deemed that the said specification 
 may be construed as claiming not 
 only the combination of parts form- 
 ing the improved turn table therein 
 described, but also each of the se- 
 veral parts forming such combina- 
 tion and improved turn table : And 
 whereas the said specification was 
 not intended to be construed so as 
 to extend the claim of invention 
 therein contained to several matters 
 and things combined together for 
 the purpose of forming an improved 
 turn table as described in the said 
 specification separate or apart from 
 the combination and application of 
 such matters and things for the pur- 
 
 pose of forming such improved turn- 
 table : And I, the said David Holmes, 
 am therefore desirous, with the 
 leave of Her Majesty's Solicitor- 
 General, to enter with the Clerk of 
 the Patents of England such dis- 
 claimer as hereinafter contained or 
 expressed : Now know ye, there- 
 fore, that I, the said D. Holmes, by 
 and with the leave of Sir Richard 
 Bethell, Knt., Her Majesty's Solici- 
 tor-General, do hereby disclaim the 
 revolving plates, or upper platforms, 
 stays, braces, arms, supports, posts, 
 matters, and things mentioned in 
 the said specification, and used in 
 forming improved turn tables as de- 
 scribed in (he said specification as 
 being individually, separately, or 
 apart from the combination or ap- 
 plication thereof for the purpose of 
 forming an improved turn table as 
 described in the said specification, 
 any part of the said invention men- 
 tioned in the said letters patent and 
 specification. And I, the said D. 
 Holmes, do further declare that the 
 above-written disclaimer is not in- 
 tended to extend the exclusive right 
 granted by the said letters patent, 
 and that these presents shall not 
 extend the said exclusive right in 
 any way whatsoever. 
 In witness, &c. 
 
TETLEY'S PATENT. 33 
 
 TETLEY'S PATENT. 
 
 [No. 11,081.] 
 •Letters Patent, bearing date 11th February 1846, granted tp ft^"'ri84fi 
 Charles Tetley for " Certain Improvements in Machinery for 
 raising and impelling Water and other Liquids [and also thereby 
 to obtain Mechanical Power]." (a) 
 
 To all to whom, &c. I, the said Charles Tetley, do hereby SpedficaHon. 
 declare that the nature of my said Invention, and the manner 
 in which the same is to be performed, are fully described and 
 ascertained in and by the following statement thereof, reference 
 being had to the drawings hereunto annexed, and to the figures 
 and letters marked thereon (5) ; that is to say : — 
 
 In order that my Improvements may be understood, refer- 
 ence must be had to the accompanying drawings, marked figures 
 1, 2, and 3., the first and last of which are drawn very nearly 
 to a scale of one-and-a-half inch to the foot, and the second to 
 a scale of very nearly three-quarters of an inch to the foot. 
 In reference to figure 1., a is a pipe, the lower extremity of 
 which is supposed to extend down into the water or liquid to be 
 raised ; the upper end at b diverges into two branches marked 
 c, c. At the top end of each branch is an air-tight iron box, 
 each of which is marked d, d, and each having a removable lid 
 at the side, marked e, e. f, f, f, is a pipe of small diameter, 
 forming a passage for air from one box to the other, by which 
 means one exhausting air-pump answers for both boxes, g, g,g,g, 
 is an iron case made air-tight ; i, i, is a wrought-iron shaft, at 
 one end of which is either a pulley or a toothed wheel, marked 
 j. k, k, are two journals or bearings fixed in the inside of the 
 boxes, d, d, for the purpose of carrying the shaft i, i. ?n is a 
 stuflSng-box, which makes the passage through which the shaft, 
 i, i, passes into the box, d, air and water tight, n, o, p, is a 
 pipe which joins to the under part of the case, g, g, g, g, by 
 means of the bend at o, and which may, when desirable, be 
 enlarged at o, and provided with valves opening upwards. In 
 the interior of the case, g, g, is placed a hollow wheel, having 
 hollow spokes, or radial arms, of which q, q, are two. r, r, I 
 call the nave, which is hollow ; and s, s, are two hollow shafts, 
 one at each side of the wheel, t, t, are two stuflSng-boxes, truly 
 
 _ (a) These words were afterwards (V) For the drawings, see Reper- 
 
 disclaimed. Throughout the speoi- tory of Patent Inventions, vol. viii., 
 
 fication the words between braces in Enlarged Series, p. 147., and plate 
 
 Koman type were disclaimed, and viii. ; the scale of which, however, is 
 
 those between braces in Italic were very much less than that mentioned 
 
 inserted. See the Disclaimer and above in this specification. 
 Memorandum of Alteration,;)os<, p. 39. 
 
34 
 
 TETLEY'S PATENT. 
 
 interior of the nave, r, there is a boss or plate of metal, marked 
 u, which is cast in at the time the wheel is cast, and which 
 carries the wheel in the manner shown in the other section, 
 marked figure 2. The shaft, i, i, passes through the centre of 
 this plate, and is firmly keyed in. On the end of each of the 
 hollow spokes, q, q, is fixed a short piece of pipe or tube, made 
 of leather or of India-rubber, or other flexible and water-proof 
 material or materials, and which are marked v and w, the one 
 marked v being shown as open, and the one marked w being 
 shown as shut or collapsed. These flexible valves are to be 
 secured in a firm and air-tight manner on to the ends of the 
 spokes by clamps or other secure means, x is an exhausting 
 air-pump for drawing air out of the machine, and y is the piston- 
 rod thereof, z, z, are two vanes, a front view of which (in the 
 interior side) is shown in figure 3., and which are fastened on to 
 the shaft, i, i, so as to revolve with it. A man-hole is to be 
 provided in some part of the case, q, q, but which is not shown 
 in the drawing. All the parts which have now been described 
 (in figure 1.) are represented in cross vertical section, with the 
 exception of the air-pump, the pipe, n, o, p, and the pipey,^,^^ 
 of which three the drawing shows merely an external view. 
 The top end of the pipe, n, o, p, the lower part of the pipe, a, 
 and the top end of the pump-rod, are represented as broken off, 
 it being to be understood that of the former the first may be 
 conducted where the liquid is desired to be conveyed, and the 
 second into the well or liquid to be raised, while the pump-rod 
 may be connected to the moving power in any way most con- 
 venient. Figure 2. represents a vertical section of the hollow 
 wheel already described in figure 1., taken through the dotted 
 line, (?, c^, or through the plane in which thp wheel revolves. 
 This figure is drawn to half the scale of figure 1. q, q, &c., 
 are the hollow spokes ; v, v, and w, w, &c., are the flexible 
 valves, five of which are shown as open, and three as collapsed. 
 u is the boss or plate of metal carrying the wheel, i is the 
 hole therein for the hollow shaft. From an inspection of this 
 figure it will be seen how the plate, u, is made to carry the 
 wheel, while, from an inspection of figure 1., it will be seen 
 that the hollow spokes are enlarged in their cross section at the 
 ends next the nave, so as to admit the liquid to pass at each 
 side of the plate, u, into the spokes. 
 
 The operation of the machine is as follows : — Let the at- 
 tendant first close all the flexible valves at the ends of the 
 hollow spokes, and then put the air-pump, x, into operation, to 
 exhaust the air from the interior of the wheel, the boxes, d, d. 
 
TETLEY'S PATENT. 35 
 
 the pipes, c, c, and a. As this exhaustion takes place, the Specification. 
 liquid will rise up the pipes, a, and c, c, and fill the boxes d, d, 
 and thewheel. After the exhaustion of the air just mentioned 
 has begun to take place, all the flexible valves will remain 
 closed and air-tight in virtue of the external pressure of the 
 atmosphere, so long as the machine is at rest. After the wheel 
 has become filled with the liquid, let it be put into rapid 
 rotatory motion by means of the pulley or toothed wheel, J. 
 The speed at which the hollow wheel revolves must be so regu- 
 lated as to communicate to the liquid, which now fills the 
 hollow spokes, such degree of tendency to fly off (or put), by 
 virtue of the centrifugal force imparted thereto, as will cause it 
 to force open the flexible valves, notwithstanding any pressure 
 of air externally thereon, and fly out. The liquid will be re- 
 ceived into the iron case, g, g. As one portion of the liquid 
 comes out of the hollow wheel, a corresponding portion will 
 ascend up the pipes, a, and c, c, to supply its place. Now, if 
 it be not intended to raise the water more than twenty-eight, 
 or from that to thirty-two feet, that is to say, not higher than 
 the force of the atmosphere would lift it in vacuo (computing 
 such distance from the surface of the water to be raised to the 
 hollow shaft), then the water or liquid may at once be drawn 
 from the case and conveyed where desired, the machine as now 
 described being suflicient. In such Instances, however, it is not 
 requisite the case should be air-tight, but may be open at the 
 sides, and, in some instances, there need be no case at all. But if 
 it be desired to raise the water higher than such distance without 
 employing two machines, then the case must be air-tight, and the 
 further operation will be as follows : — The pipe, n, o, p, may 
 be filled with the water or other liquid to be raised, and either 
 by the aid of a forcing air-pump, or any other ready method 
 known for such purposes, the air-tight case is to be filled or 
 charged with as much compressed air as will balance the 
 column of liquid in the pipe, n, o, p, whatever may be the 
 height of the column, without suffering the liquid to rise high 
 enough in the case to submerge any part of the wheel. Means 
 must also be provided to renew such compressed air from time 
 to time, as may be required. Inasmuch as this can always be 
 done by a forcing air-pump, as well as several other methods 
 which are well known, I have not exhibited any means of doino- 
 so in the drawings, it being unnecessary. Now, the case being 
 filled with air so compressed, and the hollow wheel with its 
 supply pipes being filled with the liquid to be raised, as before 
 described, then such speed in the rotation of the wheel must be 
 communicated as will throw the liquid out of the wheel into 
 
 B 2 
 
36 TETLEY'S PATENT. 
 
 Specification, the case, notwithstandins; the latter being charged with air so 
 
 A. D. 1846 o a 
 
 compressed. The liquid so thrown out of the wheel will fall to 
 the bottom of the case, and the pressure of the compressed air 
 on its surface will force it out by the pipe, n, o, p, with the 
 same velocity with which the wheel introduces it into the case, 
 and by that means prevent the liquid rising in the case to 
 impede the rotation of the wheel. By this means the liquid 
 may be raised the height desired above thirty-two feet, care 
 being taken to make the case, and all the other respective parts, 
 of the strength requisite to sustain the pressure. 
 
 I would, however, observe something upon that law of 
 hydraulics by which the motion of liquids ascending decreases 
 in speed in proportion to the height or length of the ascending 
 pipe or channel. For example, if the hollow wheel, in figure 1., 
 be thirty feet above the surface of the water in the well, then 
 the liquid would not rise up the pipes a, and c, c, with near the 
 same velocity as it would do if the wheel was but twenty feet 
 above the liquid to be raised.. Therefore, if the pipes, a, and 
 c, c, are made of such diameter as only to have the same area 
 for the passage of the water up them, as is the area of the 
 shafts of the hollow wheel, they will in such case not supply 
 sufficient water for the wheel. It is found that the decrease in 
 speed of water ascending perpendicular pipes is nearly as the 
 square root of the distance between the water to be raised and 
 the point of discharge. [Upon this I found one part of my inven- 
 tion or improvements^, namely to] [/J (a) make the pipes, a, and 
 c, c, of such internal area over and above the internal area of the 
 hollow shafts of the wheel as will cause them to pass as much 
 water, notwithstanding the slower motion thereof up such pipes, 
 in consequence of their length, as will supply the wheel with all 
 it can discharge. Now, in the drawing, these pipes are shown of 
 too small a diameter to give full effect to this improvement if 
 they are of any considerable length. This being understood, I 
 would now say that I prefer to make the area of such pipes as 
 many times greater than the area of the hollow shafts as is the 
 square root of the distance [in feet] («) between the surface of 
 the water to be raised and the said hollow shafts, or there- 
 abouts. I would next observe, in regard to the vanes, marked 
 z, z, in figure 1. [which form another part of my invention or 
 improvements,] (a) that although I do not consider them neces- 
 sary to the action of the machine, yet in cases where the height 
 of the column of water in the supply-pipes, a, and c, c, is such 
 as to become nearly a balance to the pressure of the external 
 atmosphere, then, by their oblique action upon the water, these 
 
 (a) Vide note (a), ante, p. 33. 
 
TETLEY'S PATENT. 37 
 
 vanes expedite or force the water into the wheel, which In some Specificaiim. 
 
 degree becomes necessary, in consequence of the water not 
 
 being pressed in by the atmosphere with the same force it 
 
 would when the cohimn of water in the ascending pipes is a 
 
 short one. The screw now in use for propelling steam-vessels 
 
 may be substituted for these vanes, or their configuration may 
 
 be varied in any manner, so long as such oblique action upon 
 
 the water is secured as will expedite its passage into the wheel. 
 
 The operation of the machine having now been explained, 
 and its general principles exemplified by the drawings, — 
 
 I now proceed to explain the several points following, 
 namely : where the terms " liquid " or " water " are used in 
 this my specification, I mean the same to imply either water or 
 any other liquid not injurious to the materials used in the con- 
 struction of the machine. In this sense, of course, acids are 
 excepted. I do not confine myself to the use of iron, where 
 other metals or other materials may be substituted. I do not 
 confine myself to the use of pipes or tubes, as channels for 
 conveyance of the liquids, but propose to use vessels of any 
 desired configuration. I do not in all cases propose to have a 
 solid shaft passing through and carrying the hollow wheel ; but 
 in some cases to dispense with the same, and to cause the 
 hollow wheel to revolve on its own hollow shaft, passing 
 through stuffing-boxes. In some cases I propose also to dis- 
 pense with hollow shafts for the wheel, and merely to have 
 an opening at each side of the nave for admitting the liquid. 
 In some special cases I propose to have an entrance for the 
 liquid into the wheel at one side thereof only, and to counter- 
 balance the suction arising therefrom by producing a corre- 
 sponding degree of suction at the other side, without admitting 
 the liquid at the last-mentioned side. Where the term 
 " suction " is used in this my specification, I mean and intend 
 the same to signify the diflPerence produced by the abstraction 
 or partial abstraction of air from the inside, and the pressure of 
 air externally to the supply-pipes. [If any gases or elastic media, 
 other than atmospheric air, are used, with which to charge the 
 case, I claim the sole right to do so.J (a) In reference to the 
 hollow wheel, I do not confine myself to the number or to the use 
 of hollow spokes ; but in some cases propose to substitute cir- 
 cular discs with a narrow water-channel between, and a valve, 
 or flexible valve or valves, on the circumference ; [and, generally, 
 I propose to construct the wheel of every variety of configura- 
 tion, so long as the same is constructed] (a) so as to have a chan- 
 nel or channels in the interior thereof for the passage of liquids, 
 
 (a) Vide note (a), ante, p. 33. 
 D 3 
 
38 TETLEY'S PATENT. 
 
 Specif cation, and [shall bel (a) adapted to neutralise the effects of suction by 
 
 4.D. 1846. ,.'- . . ^. 
 
 having a corresponding or proportionate degree of suction at 
 each side. Nor do I confine myself to a form, or configuration, 
 or manner of connecting together any other parts of the ma- 
 chine ; but I propose to vary the same. [The manner in which 
 I propose to obtain mechanical power, as signified in the title of 
 the patent granted unto me is, by using water raised by this 
 machine as a moving 'power, when wind is applied to this ma- 
 chine to raise the water, such water so raised forming a reservoir 
 of power during the existence of calms], (a) In reference to 
 the flexible valves at the ends of the hollow spokes, I prefer to 
 make each of them of two halves or pieces lengthwise, and 
 sewed or otherwise fastened up each side, by which means they 
 collapse according to their weakest form, and are thereby ren- 
 dered more air-proof. In lieu of the exhausting air-pump, the 
 machine may be primed by any more convenient and ready 
 method. In lieu of the stuffing-boxes, joints may be made air- 
 tight by leather or any suitable means. In some places I 
 propose to place the air-tight case in the liquid to be raised, 
 dispensing altogether with the supply-pipes, a, and c, c. I also 
 propose to place the hollow wheel horizontally, or in any other 
 position as may be desirable. 
 
 Having now explained the manner in which my machine 
 operates, or in which my inventions act, and pointed out that 
 the machinery by which the said inventions act may be varied 
 almost to an indefinite extent in the manner of its construction, 
 I shall now proceed to explain more particularly what I claim 
 as my invention or inventions. I do not claim to be the dis- 
 coverer that liquids may be raised by centrifugal force, nor do 
 I claim in any way the sole application of machinery for rais- 
 ing water or other liquids by centrifugal force, except only 
 when the same is used as a means of introducing liquids into 
 compressed air [or other elastic fluids, as specified hereinafter in 
 my fifth claim.] (a) 
 
 Now, therefore, [First] [First] (a), I claim as my invention and 
 application the means of neutralising or diminishing the effects of 
 suction at one side of the wheel, by causing the same degree 
 (or such other proportionate degree as may be required) of 
 suction at both sides thereof, whereby a considerable saving of 
 power is effected. 
 
 [Second] [Second] (a), I claim as my invention and application 
 the means of increasing the action of the machine, by causing 
 the liquid to enter the wheel at both sides. 
 
 [Third, I claim as my invention and application the means of 
 
 (a) Vide note (a), antf, p. 33. 
 
TETLEY'S PATENT. 39 
 
 economising the power required to move the wheel, by causing Specification. 
 the same to be mounted on a solid shaft (or a shaft of small 
 diameter) passing through its centre, to carry the same.] (a) 
 
 [Fourth, I claim as my invention and application to this ma- 
 chine, or to the hollow wheel, flexible and collapsible valves ; 
 that is to say, valves made of leather, or leather combined with 
 other suitable substance or substances, or other suitable flexible 
 and collapsible substance or substances without leather.] (a) 
 
 [Fifth] [ Third] (a), I claim as my invention and application 
 the constructing of machinery for raising and impelling water and 
 other liquids, by means of introducing such water and other 
 liquids into compressed air, [or other suitable elastic fluids,] (a) 
 in virtue of centrifugal force imparted thereto by such machinery, 
 and causing such compressed air [or other elastic fluid] (a) to 
 operate as the lifting, raising, impelling, or forcing power, to 
 impel such water or other liquid upwards. 
 
 ["Sixth, I claim as my invention the application of an exhaust- 
 ing air-pump to maintain a vacuum of air to such of these 
 machines as act by the maintenance of a vacuum of air in the 
 hollow wheel and its supply pipes.] (a) 
 
 [Seventh, I claim as my invention and application, where 
 pipes or channels are used to convey water or other liquids up 
 to the hollow wheel, to make such pipes or channels of such 
 internal sectional area over and above the area of the opening 
 or openings into the hollow wheel, as will enable them to pass 
 liquid to supply the wheel at a greater rate than could be done 
 if such pipes or channels were not of such increased area.] (a) 
 
 [Eighth, r claim as my invention and application the use of 
 vanes or screws, whose oblique action upon the water shall 
 impel the water more rapidly out of the supply vessels into the 
 hollow wheel.] (a) 
 
 [Ninth] \_Fourth'] (a), I claim the application of the before- 
 mentioned inventions, both when all used in combination, or 
 when used severally. In witness, &c. 
 
 After the trial in the Court of Exchequer of Tetley v. Maston and Amos, Disclaimer and 
 
 the patentee entered and filed with the Clerk of the Patents of England Memornndum 
 
 the following disclaimer and memorandum of alteration, which was enrolled of^lteration. 
 
 on the 14th of April, 1853 : — AprilU. 1853. 
 
 DiSCLAIMEE AND MEMORANDUM OF AlTEEATION. 
 
 Whereas the following part of the title of the said invention, namely, 
 " And also thereby to obtain mechanical power," and the part of the said 
 specification contained in the following words, namely, "The manner in 
 which I propose to obtain mechanical power, as signified in the title of the 
 patent granted unto me, is by using water raised by this machine as a moving 
 power when wind is applied to this machine to raise the water, such water 
 so raised forming a reservoir of power during the existence of calms," have 
 been respectively objected to as not describing or referring to anything of 
 
 (a) Vide note (a), ante, p. 33. 
 D 4 
 
40 TETLEY'S PATENT. 
 
 Disclaimer. practical value or utility, wherefore I do hereby declare that I hereby dis- 
 A.B. 1853. claim such part of the said title of the said invention, and such part of the 
 said specification respectively. And whereas it has been alleged that the 
 mailing pipes or channels for the supply of water of an area greater than 
 the area of the shaft of the wheel or the aperture of the raising apparatus 
 was Jinown at tlie date of the said letters patent, I do hereby declare that I 
 disclaim the part of the said specifiuation contained in the words following, 
 namely, " Upon this I found one part of my invention or improvements, 
 namely ;" and I also d'sclaim the part of the said specification contained in 
 the words following, namely, " which form another part of my invention or 
 improvements i, " and I also disclaim the seventh claim and claiming clause 
 contained in and being part of my said specification. And nhereas the 
 following passage of the said specification, " I do not confine myself to the 
 number or to the use of hollow spokes ; but in some cases propose to sub- 
 stitute circular discs with a narrow water-channel between, and a valve or 
 flexible valve or valves on the circumference, and generally I propose to 
 construct the wheel of every variety of configuration so long as the same 
 is constructed so as to have a channel or channels in the interior thereof 
 for the passage of liquids, and shall be adapted to neutralise the effects of 
 suction by having a, corresponding or proportionate degree of suction at 
 each side," has been alleged to include a wheel such as is described in the 
 two several specifications of Hale's Patents, which patents are respectively 
 dated the 12th day of January in the year of our Lord, 1830, and the 13th 
 day of October in the year of our Lord, 1831, wherefore I hereby declare 
 that I disclaim the words " and generally I propose to construct the wheel 
 of every variety of configuration so long as the same is constructed," and 
 the words "shall be," contained in the above-recited passage of the said 
 specification. And whereas it has been objected and alleged that the third, 
 I'ourth, sixth, and eighth claims contained in and being parts of the said 
 specification amount to and are respectively claims of and to distinct and 
 independent inventions, I do therefore hereby disclaim such last-mentioned 
 parts of the said specification respectively. And whereas no other elastic 
 fluid is more suitable or economical than air, I therefore disclaim in the said 
 specification that part thereof contained in the words following, namely, 
 " If any gases or elastic media other than atmospheric air are used with 
 which to charge the case, I claim the sole right to do so ; " and also that part 
 thereof contained in the words following, " or other elastic fluids," as specified 
 hereinafter in my fifth claim ; and also the words " or other elastic fluid " 
 in and part of the fifth claim of the said specification ; and also the words 
 " or other elastic fluid " also in and part of the same fifth claim. And in 
 order to make the said specification after the parts thereof hereinbefore men- 
 tioned shall have been disclaimed as aforesaid consistent, I do hereby declare 
 that I alter the said specification by expunging the word " to " in the part 
 of the said specification following, namely, " to make the pipes a and c c 
 of such internal area, and above the internal area of the hollow shafts of the 
 wheel as will cause them," &c. And I further alter the said specification, by 
 adding and substituting the word " I " in the place and stead of and for the 
 word " to," so expunged as last aforesaid. And whereas the sentence and 
 words following are contained in and form part of the said specification, 
 namely, " This being understood, I would now say that I prefer to make 
 the area of such pipes as many times greater than the area of the hollow 
 shafts as is the square root of the distance between the surface of the water 
 to be raised and the said hollow shafts, or thereabouts." And it has been 
 pretended and alleged that the said last-mentioned sentence is not so certain 
 as it might be. Now, therefore, I declare that I alter the said specification 
 by introducing to and into the said last-mentioned sentence, and part of the 
 said specification, the words " in feet " immediately after the word " distance," 
 and the word " between," also contained in the said last-mentioned sentence 
 and part of the said specification. And in order further to make the said 
 specification after the parts thereof hereinbefore mentioned shall have been 
 disclaimed as aforesaid consistent, I do hereby declare that I alter the word 
 " fifth " at the commencement of the fifth claiming clause contained in the 
 said specification to the word " third," and also the word " ninth," at the 
 commencement of the last claiming clause contained in the said specification 
 to the word " fourth." 
 In witness, &c. ^ 
 
TETLE^'S PATENT 
 
 41 
 
 in the" subsequent proceedings on 
 the above patent, frequent reference 
 is made to the following patents, the 
 specifications of which were given in 
 evidence by the defendants ; — 
 
 Kumset's Patent. 
 
 Letters Patent [No. 1903.] dated 
 24th of July, 1792, and granted to 
 James Rurasey, for " Certain new 
 methods of raising water and other 
 fluids, or applying their force to 
 milling or moving machinery." The 
 following extracts from the speci- 
 fication, contain all that is material 
 to the cases reported : 
 
 My new invented machines for 
 raising water and other fluids, or ap- 
 plying their force to the purposes of 
 milling or giving advantageous motion 
 or efiect to various machines and en- 
 gines, consist of the following general 
 principles, forms, and properties. 
 
 T^ flS Tp tP TP 
 
 Eighth. In some cases the construc- 
 tion of my machine for raising water 
 or other fluids (by the application of 
 any external force to give them a 
 rotary motion, consists simply of a 
 
 hollow axis of the height of the water Specifications 
 to be raised, which has at its bottom gioen in evi- 
 a pivot and valve (similar to those *™« *.'/ J^"- 
 of the centrifugal pump). On the top fendanU. . 
 of this hollow axis is placed a hollow 
 wheel, out of which (when the machine 
 is put into motion) the water issues 
 from apertures at its opposite sides. 
 This machine, with but little varia- 
 tion, besides being inverted and 
 causing the water from a fall to pass 
 through it, becomes a powerful mill. 
 Having above described the general 
 principles, forms, and properties of 
 my several machines or inventions, 
 I shall now more minutely designate, 
 by the following references and 
 drawings, the nature and manner of 
 their several applications, which will 
 more explain, not only their prin- 
 ciples, but also their various forms 
 and purposes to. which they may 
 with advantage apply, whereby it is 
 expected that their nature and pro- 
 perties may be sufficiently defined, 
 laid down, and explained. 
 
 Fig. 4. represents a section of the 
 machine inverted for a pump. It is 
 
 Fig. 4. 
 
 mentioned in article the 8th above. 
 A B is part of the box from which 
 the water is made to ascend by giving 
 the wheel C D motion by the crank 
 BS, or any other external power 
 applied to give motion to the wheel 
 EF, the axis' of which, GH, comes 
 
 round with it; the hollow wheel CD, 
 which delivers its water at apertures 
 such as are seen at I in the upper 
 box or cistern KL. When this ma- 
 chine is put into motion, the water 
 from below rises through the valve 
 M, from whence it ascends the fixed 
 
42 
 
 •TETLEY'S PATENT. 
 
 Specifications barrel N 0, and flies out of tlie wheel 
 
 given in evi- CD, at apertures such as I, the 
 
 dence by De- wheel has at its bottom a short cy- 
 
 findants. linder which moves ia a collar of 
 
 leather, screwed round it,' P Q, while 
 
 its axis is supported by the bearing 
 
 X Y, the height of the rising water 
 
 depending entirely on the motion of 
 the machine, which may be varied at 
 pleasure by the mechanic making the 
 same. This machine may be infinitely 
 varied in form, yet its principles, 
 as before pointed out, will for ever 
 remain the same, depending upon the 
 
 Fig. 5. 
 
 motion and the angle of the wheel (see 
 
 fig.5.) for the quantity and height of 
 
 the water delivered in any given time. 
 
 ***** 
 
 Fig. 5. represents the hollow wheel 
 
 formed of semi- diameters departing 
 from the circle represented by the 
 dotted line B F. 
 
 Deiap's Patent. 
 
 Letters Patent [No. 453.5.] dated 
 1st May, 1821, and granted to Robert 
 Delap for " Certain improvements in 
 producing rotary motion." 
 
 The following extract from the 
 specification, enrolled 19th October, 
 1821, contains all that is material : — 
 
 [For the drawing, see Repertory of 
 Arts and Manufactures, vol. xli., 2nd 
 Series, p. 129,, plate vii.] 
 
 Fig. 11. Centrifugal pump. A, the 
 pump with valve at bottom. B B, 
 hollow arms connected with the pump 
 at top, having discharging valves, 
 C,C, at their points. The valve on 
 the left appears : the other is on the 
 opposite side of the right arm (a 
 hollow circular drum of a diametei 
 equal to the length of those two arms, 
 with discharging valves, would an- 
 swer instead of the arms). DD, a 
 bucket- wheel, with its nutt cog-wheel 
 (nearly same size) firmly fixed to it, 
 which acts on the nutt cog-wheel, E, 
 fixed on the pump. F, the lower 
 cistern. GG, sections of the upper 
 cistern, which is a circular through, 
 the outer side of which is of sufficient 
 diameter to allow the arms (or drum) 
 of the pump to turn within it, and of 
 sufficient height to prevent any fluid 
 discharged from them to bee thrown 
 over. H, the trough of the sluice to 
 convey the fluid to the buckett- 
 wheeljfrom the cistern G G. I, the 
 
 trough to convey surplus fluid to 
 work other machinery, or for other 
 purposes. To give rotary motion 
 to the pump, it requires the upper 
 and lower cisterns, the pump and 
 arms (or drum) to be filled with the 
 fluid (water is best). Then open the 
 sluice of the trough, H. The fluid 
 flows from the cisterns G, into the 
 buckett-wheel, which revolves, and 
 carries the pump round by the nutt, 
 E, giving great velocity to the arms 
 (or drum). The consequent centri- 
 fugal force acquired by the contained 
 fluid, and the partial vacuum pro- 
 duced by that velocity at the points 
 of the arms, together with the pressure 
 of tlie atmosphere on the fluid in the 
 cistern in which the pump stands, 
 occasions a discharge of the fluid at 
 the valves, there, sufficient to work 
 this pump, and also a surplus fluid, 
 to be conveyed by the trough I, to 
 work other machinery, or for other 
 purposes, and then to be returned to 
 the lower cistern F, to be again taken 
 up by the pump, and go through the 
 same routine, and so in continuance. 
 
 Hai.b's Patjent op 1830. 
 Letters Patent [No. 5879.] dated 
 12th January, 1830, and granted to 
 William Hale, for '■' A machine or 
 method of raising or forcing water 
 for propelling vessels, which machine 
 or method is also applicable to other 
 purposes. The patentee, by his spe- 
 
XJiTLiJil a l-A±JfjiM. 
 
 43 
 
 cification, enrolled 12th July, 1830, 
 described his invention as follows : — 
 The nature of my said invention 
 consists in a vertical or horizontal 
 air-tight paddle-box, kept constantly 
 supplied with water, and the sides of 
 which, by means of a paddle-wheel 
 or propeller, turning in the said 
 water, are forcibly acted upon at all 
 points, except at an aperture where 
 the said water escapes, and where the 
 resistance offered to the action of 
 the said water is less than at the 
 other parts of the paddle-box, where- 
 fore the boat or other body to which 
 the said paddle-box is attached, will 
 be propelled in a direction from the 
 said aperture. And in further com- 
 pliance with the said proviso, I, the 
 said William Hale, do hereby de- 
 si-ribe the manner in which my said 
 invention is to be performed by the 
 following description thereof, re- 
 ference being had to the drawing an- 
 nexed, and to the figures and letters 
 marked thereon, that is to say : 
 
 Description of the Drawing. 
 
 [For the drawings, see Lend. Jour, 
 vol. ii. C. S. p. 22. pi. ii.] 
 
 The propeller, which gives motion 
 to the water in this machine, is com- 
 posed of one or more curved paddles, 
 and set at an angle to prevent any 
 vacuum behind them, revolving at 
 the extremity of spokes or arms 
 round on an axis nearly in the middle 
 of the machine; the dimensions of 
 these surfaces vary according to their 
 number, and the area of the aper- 
 ture through which the water is dis- 
 charged, that is, if the propeller has 
 one paddle only, the area of that sur- 
 face must be equal to the area of the 
 aperture; if two are used, the area 
 of each must be equal to half the area 
 of the aperture ; if four, then each 
 must be equal to one fourth of the 
 area of the aperture, and so on, that 
 whatever the number of paddles may 
 be, the area of the whole must be 
 equal to the area of the discharging 
 aperture. Figure 1. is a section of 
 the machine with a horizontal paddle- 
 box and a propeller haying curved 
 paddles. A A B B represent the sides 
 of an air-tight paddle-box in which 
 the propeller acts, a the centre, and 
 bJ>hb the arms of the propeller, cccc 
 are paddles securely attached to the 
 arms, and which act upon the water 
 in an eccentric curve, the eccentri- 
 city of each being measured by the 
 dotted line y and equal to one fourth 
 of the aperture X. The tangent h 
 drawn from the inner to the outer 
 
 circle is the measure of the distances Specifications 
 of the eccentric curves from each gimn in eoi- 
 other. The sides of the aforesaid Jence l»j De- 
 paddle-box A A B B must be struck fendants. 
 from a different centre to that on 
 which the arms turn, so that the 
 circle described from each meeting 
 at the point S may so diverge that 
 their distance apart at I, the oppo- 
 site point from S, may be equal to 
 twice the distance. of the eccentric 
 space y, leaving however an aperture 
 at X equal to the sum of the spaces 
 measured by the eccentric curves. 
 The water upon which the propeller 
 acts is admitted into the receiver 
 through apertures within the inner 
 circle dddd, these apertures to be of 
 such dimensions that during the ro- 
 tary motion of the propeller the 
 paddle- box may remain constantly 
 full. This figure represents a hori- 
 zontal machine to be placed in the 
 bottom of a vessel, when, if the arms 
 are turned in the direction of the 
 arrow the vessel will be propelled in 
 a direction from S to W. Figure 2. 
 represents a propeller with four plain 
 or straight paddles, each being as 
 before observed, equal to one fourth 
 of the aperture X in figure 1. Fi- 
 gure 3. represents a horizontal ma- 
 chine with two discharging apertures 
 at A and B. Figure 4. is a vertical 
 machine with one discharging aper- 
 ture at C, either of these positions 
 may be adopted with like effect, as 
 circumstances may require, the prin- 
 ciple of action in both being the same. 
 With reference to the application of 
 my said invention to propelling ves- 
 sels, 1 should observe first, with re- 
 spect to the horizontalr machine, that 
 it should be placed near the bottom 
 of tlie vessel, about the midships, with 
 the discharging apertures opening at 
 the stern, a firm flooring having been 
 first made to suit the figure of the 
 machine. And with regard to the 
 vertical machine, when applied to 
 propelling vessels, it will be neces- 
 sary to have two machines situate as 
 before described, near the midships, 
 one on each side of the keel, with the 
 discharging apertures leading out at 
 the stern, and fixed exactly fore and 
 aft, so that the water is freely dis- 
 charged in lines parallel with the 
 keel. The dotted lines x shew the 
 extent and direction of the supply- 
 pipe, with the opening r into the re- 
 ceiver. The end W is left open, in- 
 tending to go through the ship's 
 bottom, of a capacity to admit a suf- 
 ficient quantity of water for the full 
 action of the propeller. In large 
 
44 
 
 TETLEY'S PATENT. 
 
 Specijkations machines it will be better to have 
 
 given in evi- two supply-pipes, one on each end of 
 
 dence by De- both machines. Now, I claim as my 
 
 fendanls. invention the machine hereinbefore 
 
 described, whether applied vertically 
 
 to raise water or horizontally to force 
 
 water for the purpose of propelling 
 
 vessels, or for other purposes. 
 
 Hale's Patent of 1831. 
 
 Letters Patent- [No. 6180.] dated 
 13th October, 1831, and granted to 
 William Hale for "Improvements in 
 machinery or apparatus for propel- 
 ling vessels, which improvements are 
 also applicable for raising or forcing 
 water." 
 
 The patentee, by his specification, 
 enrolled 13th April, 1832, described 
 his invention as follows : — 
 
 My invention consists in the en- 
 closing of a certain kind or kinds of 
 rotary propeller or forcer within a 
 scrole or volute box or case, whereby 
 the water entering into such box or 
 case is driven by the propeller round 
 the spiral side of the box or case, and 
 is discharged forceably through a 
 tangential aperture, and thus force 
 or propel the boat or vessel forward 
 in which such apparatus is placed. 
 And secondly, such arrangements of 
 propelling box or case, when fitted 
 with suitable pipes, are applicable to 
 raising or forcing water or other 
 fluids. But in order that my inven- 
 tion may be fully understood and 
 carried into efiect, I will describe 
 the drawings hereunto annexed, in 
 which the same letters of reference 
 indicate the same parts in all the 
 figures. [For the drawings see 
 Jjond. Jour. vol. ii. U. S. p. 95. pi. v.] 
 Fig. 1. is a section of my apparatus, 
 a a being the box or case, the sides 
 of which continually diverge from 
 the point a to 6 in an eccentric curb, 
 the distance from a to J, which is 
 shown by the dotted line C, and is 
 an open space, which describes the 
 width of the discharging aperture. 
 Fig. 2. is a perspective view of the 
 box or case ; d is an aperture through 
 which the water is admitted into the 
 box or case ; e is a cross bar which 
 carries the end of the shaft or axle 
 of the propeller/. This propeller/, 
 shown in its place in connection with 
 the box in fig. 1., and separately in 
 perspective in fig. 3., and is com- 
 posed 'or consists of one diverging 
 curved plate /affixed to the plate g 
 at right angles or perpendicular, 
 leaving a space i between the two 
 ends of the plate/; the axis or shaft 
 j passes through the plate g, and is 
 
 strongly affixed thereto. The pro- 
 l)eller constructed as above described 
 is placed within the box aa, fig._2., 
 the end/ of the axle or shaft being 
 supported and carried in a bearing 
 formed in a bar e ; there is then to 
 be a, plate or cover placed over the 
 top of the box a a, and the same 
 tightly affixed thereto by screw bolts 
 and nuts, or by other means, the 
 other end of the axle or shaft, pass- 
 ing through a stuffing-box fixed on 
 the last-mentioned plate or cover, to 
 which end of the shaft the power is 
 communicated, that gives motion to 
 the propeller. The apparatus thus 
 constructed and arranged, and which 
 I prefer to be made of iron, though 
 I do not confine myself to that ma- 
 terial, I place in a boat or vessel in 
 such manner, that the discharging 
 aperture A passes through the stern 
 or afterpart of the vessel, whereby 
 the water may be projected, and 
 there being a corresponding opening 
 through the bottom of the vessel to 
 admit of the water flowing into the 
 box or case a, at the aperture d, to 
 supply the action of the propeller. 
 I now proceed to describe its action. 
 In doing which, I should observe, 
 that rotary motion is to be commu- 
 nicated to the shaft _/ by means of a 
 crank rigger, or wheelwork, to which 
 the power, as steam; animal strength, 
 or any other first mover is applied, 
 and the following result takes place, 
 that is to say, the revolution of the 
 propeller / in the direction of the 
 arrow (see fig. 1.), will give motion 
 to the water in box a a, the sides of 
 which allows the water thus put in 
 motion to continually recede further 
 and further from the centre of mo- 
 tion, so that no particle, at any in- 
 stant of time, is ever retained at the 
 same distance from that centre, con- 
 sequently a number of particles 
 equal to those acted upon by the 
 propeller must be continually es- 
 caping at the aperture h with the 
 same velocity that the propeller is 
 driven (provided the proportions of 
 the volute box a a are not more con- 
 tracted in relation to the propeller 
 then represented in drawings), and 
 a like quantity will be continually 
 passing through the aperture d and 
 space i in the propeller, to keep up 
 a perfect supply for the full action 
 of the propeller. A power thus 
 communicated to the water inside 
 the box a o, and allowed freely to 
 escape from the aperture k through 
 the stern of the vessel, will react to 
 propel the vessel or boat forward. 
 
TETLEY'S PATENT. 
 
 45 
 
 Fig. 4. shows "another arrange- 
 ment of the propeller, diiFering only 
 from that at fig. 3. that the plate g-, 
 in place of being affixed to the outer 
 edge of the curved plate _/, in this 
 instance is placed in the middle 
 thereof; in applying this propeller, 
 it is to be placed within the case a, 
 fig. 2., in like manner to that al- 
 ready described, but the covers of 
 the case a are to have each of them 
 an opening at d for the admission of 
 water ; in other respects the action 
 is the same. 
 
 Fig. 5. shows another arrange- 
 ment of the propeller, and consists 
 of four curved plates set outwards 
 from a given circle, as will be seen 
 in the drawing. These curved plates 
 ff are strongly affixed to a plate g- 
 in a similar manner to those already 
 described ; and through this plate g 
 there is a shaft or axis passes as 
 before described, and this descrip- 
 tion of propeller is placed in a simi- 
 lar box or ease, a a, as already de- 
 scribed, and the rotation of the shaft, 
 and, consequently, the propeller, in 
 the direction of the arrow, will pro- 
 duce a like result. 
 
 Fig. 6. shows another arrangement 
 of the propeller, and consists of three 
 flat plates or boards affixed tangen- 
 tial to a given circle in the manner 
 before described, with reference to 
 the curved places / in fig. 5.; by 
 this arrangement a similar effect will 
 be produced, and it will be evident 
 from the nature of arrangement with 
 reference to figs. 5. and 6., that the 
 number of the curved or flat plates 
 may be varied without departing 
 from my invention, provided the 
 same proportions are observed. Hav- 
 ing now described the manner of 
 constructing my invention, and the 
 application to the propelling of ves- 
 sels, I will now proceed to describe 
 its application for the purpose of 
 raising and forcing water or other 
 fluids. In this application of the 
 apparatus, to the part k is to be af- 
 fixed the pipe through which the 
 water is to be forced in any direction 
 it may be required, and the box or 
 case a is to be placed in a well or 
 other reservoir either in a horizontal 
 or vertical position, and by means of 
 a crank, or wheel-work, rotary mo- 
 tion is to be communicated to the 
 propeller /, which will force the 
 water through the opening k into 
 the pipe which is to convey it in any 
 direction, or in place of fixing the 
 case in the water or other fluid, there 
 may be a suction pipe affixed at the 
 
 opening d, and descending into the Specifications 
 
 well or other reservoir, having a given in evi- 
 
 common valve opening inwards ; by ilence by De- 
 
 this arrangement, when the box or fendants. 
 
 case and the suction pipe have been 
 
 filled with water or other fluid, the 
 
 revolution of the propeller will drive 
 
 the same through the opening k, to 
 
 which there may or may not be a 
 
 conducting pipe for conveying the 
 
 water to any desired place, and at 
 
 the same time as the water is forced 
 
 out at the opening k, there will be 
 
 constant flow of water up the suction 
 
 pipe into the case or box a. 
 
 Having now described the nature 
 of my invention, and the manner of 
 carrying the same into effect, I would 
 have it understood, that what I 
 claim as my invention, is the con- 
 structing the apparatus, so that the 
 propellers/ may freely revolve with- 
 in a box or case, the form of which 
 is a continually diverging curve as 
 above described, when such pro- 
 pellers and boxes or cases are ap- 
 plied to the purposes of propelling 
 vessels, or for raising or forcing 
 ■water or other fluids as above de- 
 scribed. 
 
 Clakk's Patent. 
 
 Letters Patent [No. 6365.], 'dated 
 15th January, 1833, and granted to 
 Alexander Clark for " Certain im- 
 provements in blowing machines." 
 
 The patentee, by his specification, 
 enrolled ]5th July, 1833, described 
 his invention as follows : — 
 
 [For the drawings, see Lond. Jour, 
 vol. iii. C. S. p. 20. pi. iL figs. 6, 7, 
 8, 9.] 
 
 My improvements in Blowing Ma- 
 chines consist in a modification of 
 the well-known rotary fan blowing 
 apparatus employed for winnowing 
 corn, for blasting furnaces, and for 
 other purposes, which improved mo- 
 dification of apparatus I construct on 
 a small scale in a portable form for 
 domestic and other uses, to be worked 
 by hand. In the drawings, fig. 1 . is 
 a section of the apparatus taken 
 longitudinally, showing its internal 
 construction. Fig. 2. is an external 
 view in the same direction. Fig. 3. 
 represents the reverse side, and fig. 4. 
 is a horizontal or top view, a a a 
 is the outer casing or box, which 
 must be so formed as to allow a 
 wheel with fans, b b b to revolve 
 within, the air being admitted into 
 the box through apertures C in the 
 sides made concentric with the axle, 
 and expelled from the box by the 
 
4G 
 
 TETLEY'S PATENT. 
 
 Speeifieations 
 ffiven in evU 
 ilence In/ De- 
 
 centrifugal force of the rotary fans 
 through a contracted tube or nozzle 
 d. The means by which I prefer to 
 give rotary motion to the fan is by 
 mounting a wheel E upon an axle 
 bearing on or attached to the casing 
 or box, the periphery of which wheel 
 as it revolves runs in contact with a 
 pinion F fixed on the end of the axle 
 of the fan-wheel, and by the friction 
 of contact between the two surfaces, 
 the wheel E causes the fan B to re- 
 volve with a considerably increased 
 velocity. The wheel E is turned by 
 a winch or handle, and to prevent 
 noise I cover its periphery with a 
 band of leather, attached by cement 
 or by any other convenient means, 
 and in order to accommodate any 
 slight irregularity on the periphei-y 
 of the wheel E, I support the end of 
 the axle of the wheel B in a vertical 
 lever G, which is pressed forward by 
 a spring H, and by these means the 
 pinion F is at all times kept in con- 
 tact with the periphery of the driving 
 wheel F. Though I have proposed 
 to drive the fan by friction, I do not 
 intend to confine myself to that mode, 
 as a toothed wheel E, and pinion F, 
 may be employed in the same situa- 
 tions, or the fan may be driven by a 
 hand and pulley. I have shown a 
 wheel B, with radial fans, which I 
 consider best suited to the purpose ; 
 but I do not intend to confine myself 
 to radial fans, as spiral or oblique 
 fans might be found to answer the 
 same purpose. 
 
 Kuthven's Patent. 
 
 Letters Patent [No. 8896.] dated 
 22nd March, 1841, and granted to 
 Morris West lluthven, for " A new 
 mode of increasing the power of cer- 
 tain media when acted upon by rota- 
 tory fans, or other similar apparatus." 
 
 The patentee, by his specification, 
 enrolled 22nd September, 1841, de- 
 scribed his invention, as follows : — 
 
 " My said invention consists in 
 causing the certain media by which 
 I mean to include air, gas, and water 
 about to be acted upon, to pass 
 through a series of rotary fans, so ar- 
 ranged that each succeeding fan shall 
 act upon the media which has been 
 previously acted upon by the next 
 preceding fan, whether such media 
 be gas, air, or water. And in further 
 compliance with the said proviso, T, 
 the said Morris West Ruthven, 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 the figures and letters 
 marked thereon, similar letters being 
 used to denote similar parts in all the 
 figures wherever they occur, that is 
 to say, — 
 
 Figure 1. is a side view of a series 
 of three fans, with their appropriate 
 cases so arranged as to effect the ob- 
 ject of my said invention, which in 
 this case I have, for the purpose of 
 this description, represented as ap- 
 plied to increase the power of an air 
 
 blowing apparatus. A is the first air 
 case, B being the air induction hole ; 
 C C C are the arms of the fans, and 
 
 D D D the framework for the bear- 
 ings of the axes of the fans ; E E the 
 exit channel for the air, after having 
 
 (a) Figs. 3. and 5. show all the portions of the machine material to the cases 
 reported, and (as " similar letters denote similar parts in all the figures ") will 
 sufficiently explain the whole of the description in this specification. 
 
TETLEY'S PATENT. 
 
 47 
 
 been acted upon by the fans, and by 
 which it passes directly into the fans 
 of the second air case F, there to be 
 acted upon again by the second set 
 of fans, and driven through the exit 
 channel G of the second air case into 
 the fans in the third air case H, 
 there to be again acted upon by the 
 third set of fans, and finally expelled 
 as a blast at the exit channel I, of the 
 third and last air case H. By this 
 arrangement it will be seen that the 
 air first taken in at the induction 
 hole B, of the first air case A, is the 
 same that is expelled in the form of 
 a blast at I, and has been acted upon 
 successively by the three sets of fans. 
 Figure 2. is the plan of fig. 1. Fig. 3. 
 is a section of one of the air cases, with 
 its fans, and here is shown what could 
 not be seen in the other figures, but 
 which is essential to be distinctly un- 
 derstood, viz., that there is an inner 
 case revolving with the fans inside of 
 the outer case ; this inner case is in 
 this figure marked K, and colored 
 blue, and to it the fans are fixed. 
 
 Fig. 5. is a separate view of the inner Specifications 
 case, with its fans, by which it will be g'wen in evi- 
 seen there is an opening L in the rim dence by De- 
 of the case at the front of each fan, fendanls. 
 the fans in fact dividing the inner 
 case into six compartments, or any 
 other number, dependant of course 
 on the number of fans. The air which 
 is received into the opening at the 
 axis rushes from the several com- 
 partments out of the opening L into 
 the outer or air case, and thence 
 tlirough the exit channel of the said 
 air case into the succeeding fan case. 
 The parts marked J are the driving 
 pullies. Fig. 4. is a longitudinal section 
 through the first air case A, showing 
 the form of the fans, and the mode 
 adopted in this case of fixing them 
 to the inner casing. It also shows 
 the induction hole to the second fan 
 case F, the exit channel E being re- 
 moved. Now whereas it is evident 
 that no particular form of fans is in- 
 volved in my said invention, pro- 
 vided only, that the medium to be 
 acted upon be conveyed directly 
 
 Fig. 5. 
 
 from one to the other of the series of 
 fans as hereinbefore described, and 
 that whether the object to be ob- 
 tained is a forcible jet of water or gas, 
 or a strong blast of air, the same 
 principle will prevail, the apparatus 
 being only varied to meet the known 
 necessity of the media employed. 
 And whereas I therefore claim as 
 my invention, increasing the power 
 of the said media, when acted upon 
 by rotary fans or other similar appa- 
 
 ratus, by causing the said media to 
 pass directly from one set of fans, 
 with their fan cases as aforesaid to 
 another through the whole series, as 
 many as there may be, each succeed- 
 ing set of fans acting upon it in the 
 state in which it left the preceeding 
 set, in consequence of the exit chan- 
 nel, for the air from one set of fans, 
 forming the induction hole for the 
 air to the succeeding sets of fans, as 
 shewn by the figures in the drawino-. 
 
48 TETLEY'S PATENT. 
 
 In the Exchequek. 
 Dec. 2 & 3. Sittings at Nisi Prius for Middlesex after Mich. Term, 1852. 
 
 1852. 
 
 Charles Tetlet v. James Easton and Charles 
 Edwards Amos. 
 
 Cor. Sir Frederick Pollock C. B., and a Special Jury. 
 
 Dechration. T The declaration, which was in the usual form, after stating 
 ^ is^^r*' I ^^^ grant of letters patent to the plaintiff, bearing date 1 1th 
 February, 1846, for an invention of " Certain improvements in 
 machinery for raising and impelling water, and other liquids, 
 and also thereby to obtain mechanical power," and also alleging 
 the enrolment of a specification on the 11th August in the 
 same year, in pursuance of a proviso in the patent, assigned, as 
 breaches, — That the defendants " did make, use, exercise, and 
 vend the invention," and " did put in practice the invention," 
 and " did make, use, and did put in practice a part of the said 
 invention," and "did counterfeit, imitate, and resemble the^aid 
 invention," and " did make additions to and subtractions from 
 the said invention, whereby to pretend themselves the inventors 
 or devisors of the said invention, in breach," &c. 
 Pleas. 1 Pleas : First, Not guilty. 
 
 ■if, March, ^ ' S> J 
 
 :s. 1 
 •rch, > 
 2. J 
 
 1852. ' J Secondly, that the plaintiff was not the true and first in- 
 ventor. 
 
 Thirdly, that the invention was not any manner of new 
 manufacture. 
 
 Fourthly, that the invention was not new as to the public 
 knowledge in this realm. 
 
 Fifthly, a traverse of the grant by the letters patent. 
 
 Sixthly, that the plaintiff did not, in and by an instrument 
 in writing, particularly describe and ascertain the nature of the 
 said invention, nor in what manner the same was to be or might 
 be performed. 
 
 Lastly, that the plaintiff did not cause the said supposed 
 instrument in writing to be enrolled. 
 
 Issue was joined on all the pleas. 
 Notice of Ob- The defendants gave notice of the following objections to the 
 
 j ections. p^^gjj^ . _ 
 
 That the plaintiff did not invent the invention mentioned in 
 the declaration, and in the letters patent. 
 
 That the plaintiff was not the true and first inventor of the 
 said invention. 
 
 That the invention was not new at the date of the letters 
 patent. 
 
TETLEY V. EASTON AND AMOS. 49 
 
 That the invention was not an invention of any manner of Exchequeb. 
 new manufacture. ^ Y^e. 1352. 
 
 That the letters patent, and gift, and grant of license, power, 
 privilege, and authority in the declaration mentioned, were not 
 letters patent, and grant of privilege of the sole working or 
 making of any manner of new manufacture. 
 
 That the invention was not an invention of certain improve- 
 ments in machinery for raising and impelling water and other 
 \ liquids, and thereby to obtain mechanical power as by the 
 N^ plaintiff suggested to her Majesty. 
 1^ That the invention was not of use to the public. 
 j^ That the plaintiff did not, within six calendar months after 
 ^^ the date of the said letters patent, particularly describe and as- 
 .^^^ certain the nature of the said invention, and in what manner the 
 \,^^ same is to be performed by an instrument in writing, under his 
 hand and seal. 
 f \ That the plaintiff did not within such six calendar months 
 
 ^ J cause the supposed instrument in writing under his hand and 
 r~^ seal in the declaration mentioned, or any other instrument in 
 ''"^v. writing under his hand and seal, particularly describing and 
 \ ascertaining the nature of the said invention, and in what 
 manner the same is to be performed to be enrolled in Chancery. 
 And also that the defendant will make and insist upon such 
 other defences, and matters of defence other than and except 
 objections to the said letters patent as respectively are or may 
 be admissible, under all or any of the pleas in this action, and 
 the defendants will avail themselves of the several objections 
 and matters of defence aforesaid, under all or such of the said 
 pleas as are or shall be applicable thereto. 
 
 Sir F. Thesiger A. G., Atherton Q. C, and Webster, for the 
 plaintiff. 
 
 Sir A. J. E. Cockburn, Hindmnrch, and Grove, for the de- 
 . fendante. x 
 
 Webster opened the pleadings. 
 
 Sir Frederick Thesiger A, G. stated the plaintiff's case, as Plaintiff's 
 follows : — This is an action brought by the plaintiff for the 
 alleged infringement of a patent which was granted to him on 
 the Ilth February, 1846, for " Certain improvements in 
 machinery for raising and impelling water and other liquids, and 
 also thereby to obtain mechanical power." There had long been 
 used a circular pump, by means of which water was raised by 
 centrifugal force, but it had this defect, the water being ad- 
 mitted only on one side of the wheel, and the atmosphere press- 
 ing with great force on the other ; the wheel was thrown out of 
 balance, and to a certain degree fixed, which rendered very 
 
 E 
 
§0 TETLEY'S PATENT. 
 
 Sir F. Thesiger considerable power necessary to work the pump. The plaintiff, 
 "™ '#• jjj ijjg ygjjj, 1845, turned his attention to this defect, and set 
 himself to work to discover means of overcoming it. By ad- 
 mitting the water on both si^es of the wheel he balanced it and 
 enabled it to work steadily, and thus less power was required 
 to raise water than was before necessary for that purpose. In 
 the plaintiff's pump a hollow wheel, having radial arms or spokes, 
 is carried by a solid shaft passing through the hollow axle of 
 the wheel ; rapid rotary motion is given to the wheel by a strap 
 passing over a pulley which is keyed to the solid shaft ; the hol- 
 low axle forms a channel to conduct the water from the supply 
 pipes into the hollow wheel from which it is expelled by centri- 
 fugal force, and passing out at the extremities of the hollow 
 spokes or radial arms, falls into any convenient receptacle. This 
 is the construction of the pump when the water is not required 
 to be lifted to any height ; but when it is desirable to force the 
 water to a greater height than thirty or thirty-two feet, the 
 plaintiff makes use of compressed air. For this purpose he 
 covers the wheel with an air-tight case, into which he pumps 
 air, and in consequence of this a pressure greater than that 
 exerted by the atmosphere is put upon the water, which causes 
 it when thrown into the case by the wheel to mount up the 
 discharge pipe to the required height. [The learned counsel then 
 read parts of the specification (a), and continued.] After the 
 patent was obtained, the plaintiff used all the means in his 
 power to bring his invention before the public ; he hired a room 
 at Bradford, and exhibited it on market days, where it was seen 
 by crowds of people ; he advertised it very largely in a great 
 variety of newspapers, but, with one exception, he did not meet 
 with the success he anticipated. 
 
 In the year 1851, Mr. Tetley heard that at the Great Exhi- 
 , bition there were three centrifugal pumps exhibited : one was 
 Gwynne's, another was Bessemer's, and the third was Appold's, 
 which was constructed by the defendants. The plaintiff, on 
 examination of this pump, found that it was an invasion of his 
 principle, and spoke to Mr. Appold on the subject. He dis- 
 covered afterwards by advertisements that the defendants were 
 manufacturing to a considerable extent what were called " Ap- 
 pold's pumps." He also saw one which had been put up for a 
 - gentleman at Whittlesea Mere, and another at Selby, in each 
 of which the important feature of his invention, — the balanced 
 wheel — is made use of. This is the nature of the case, and the 
 plaintiff says that however the defendants may construct their 
 wheels, if water be admitted on both sides of the wheel, so as 
 that thereby the wheel is balanced, it is an infringement of his 
 (a) Ante, p. 33. 
 
TETLEY V. EASTON AND AMOS. 51 
 
 patent, and they are, therefore, liable to answer in damages for Exchequeb. 
 such infringement. ,. Z r„,„ 
 
 ° M. Vac. 1852. 
 
 The letters patent, bearing date 11th of February, 1846, and plaintiff's 
 specification (a), enrolled 11th of August, 1846, were given in Evidence. 
 evidence. 
 
 Mr. Charles Tetley, the patentee and plaintiff, was then called, 
 and said : In the year 1845 I directed my attention to machinery 
 for raising and impelling water, and constructed a machine for 
 that purpose ; it consisted of a wheel placed in a chamber, the 
 water being admitted at one side only, the pressure of the 
 atmosphere at the other side caused a great deal of friction, 
 which was a very serious obstacle to its efficient working. I 
 then applied my mind to remedy this defect, and constructed a 
 balanced wheel. By admitting water at both sides I found 
 that the wheel delivered double the quantity of water, and the 
 suction at each side being equal, I found that I had greatly 
 reduced the friction and consequent loss of labour in driving 
 the wheel. Having devised this pump, I put it in the centre 
 of a foundry yard at Bradford, hired steam-power from the 
 foundry, and advertised the exhibition of it in all the local and 
 some of the London papers. It was exhibited on Mondays and 
 Thursdays, the market days at Bradford, during December 
 1846, and January 1847. Gi'eat numbers of people came and 
 saw it. Among others, a Mr. Diggle came to Bradford to see 
 it ; he wanted a pump to empty a coffer dam for the purpose of 
 getting the foundations of a pier laid in the middle of the river 
 Wharve. Many attempts had been made before this time to 
 clear the coffer dam of the water, but without success. I con- 
 tracted with Mr. Diggle to supply the machine, and to deliver 
 4000 gallons per minute ; 2000 gallons per minute had been 
 delivered by the pump in the foundry yard. In consequence 
 of the increased delivery required, I substituted curved arms 
 for the radial spokes in the wheel. It answered Mr. Diggle's 
 purpose very well, and he got his pier above water mark in a 
 fortnight. In the same year, 1847, I set up another pump in a 
 tunnel on the Leeds and Thirsk Railway, but as there was no 
 considerable body of water in that tunnel it was not kept there. 
 No other pump was constructed. In the year 1851 I went to 
 the Great Exhibition, and saw three pumps at work, — Gwynne's, 
 Bessemer's, and Appold's. [The witness here stated that he 
 had an interview with Mr. Appold relative to the pump in the 
 Exhibition, also, that the defendants acknowledged that they 
 had been making pumps similar in construction to that of 
 Mr. A,ppold exhibited at the Exhibition.] I have since seen 
 (a) Ante, p. 33. 
 
52 TETLEY'S PATENT. 
 
 Plaintiff's another pump in operation at Whittlesea Mere, and since that, 
 a third at Selby, all made by the defendants. There is a great 
 resemblance between Appold's wheel and mine. The water 
 in Appold's is admitted on both sides, and is a wheel with 
 circular discs with a channel or channels in the interior for the 
 passage of liquids ; it has also, passing through the central dia- 
 phragm, a solid shaft, by means of which it is driven. («) 
 
 On cross-examination, the witness said : I do not know 
 Hale's patent of 12th of January, 1830, by name, but I have 
 seen something very similar to the drawing of it now shown to 
 me. It has no centrifugal action whatever. In Hale's patent 
 of 13th of October, 1831, there is a figure which I recognize. 
 Before the date of my patent, suction had been produced by 
 centrifugal action, but to a wheel that takes the water on one 
 side only. The use of a solid shaft, on which the wheel is 
 carried, may have been old at the date of my patent ; it was a 
 well known thing in ordinary pumps to make the suction pipes 
 larger in diameter than the discharge pipes. I sometimes place 
 my wheel in the water to be lifted. The curvature of the arm 
 was not mentioned in my specification ; it was an addition to 
 my invention, which I introduced in 1847, in constructing the 
 wheel used at Thorpe Arch. I should not recommend at any 
 time to raise water above two or three feet above the wheel, 
 although it might be done ; by raising the sides of the box, the 
 water would rise up the interior, and flow over the top. The 
 wheels made by the defendants were worked in the water, and 
 have no air-chamber. The machine made by the defendants : 
 and put up at Selby, sucks the water up by a balanced wheel, 
 and has a suction pipe at each side. It has not flexible valves 
 at the periphery of the wheel. 
 
 Mr. Thomas Hawksley, civil engineer. I consider that in 
 1846, when this patent was taken out, the plaintiflT's invention 
 was new. The balancing of the wheel is an important and 
 essential feature ; it diminishes the amount of power necessary 
 to drive the wheel. When submerged in water without a case, 
 neither the plaintiff's nor Appold's wheel would raise the water, 
 they would simply churn it. I have seen the three infringe- 
 ments complained of, the one at the Exhibition, the Selby, and 
 the Whittlesea Mere pumps, and in each of them there was a 
 wheel balanced by the admission of water on both sides, and the 
 water was raised by the centrifugal action of the wheel. In 
 all these respects they resemble the invention of the plaintiff. 
 There is no substantial difference between those three machines 
 
 (a) For the description and draw- Mechanical Engineers in Blrming- 
 ings of Appold's pump, see Report ham, on the 28th July, 1852, p. 15a. 
 of Proceedings at the Institution of and plates 68. and 69. 
 
M. Vac. 1852. 
 
 TETLEY V. E ASTON AND AMOS. 53 
 
 and the plaintiff's. The specification is sufficient to enable an Excheqdek. 
 ordinary mechanic to construct the machine. 
 
 On cross-examination, this witness stated that the balance, 
 when the water enters at one side of the wheel only, is pro- 
 duced by making the air on both sides communicate, so that 
 whatever pressure there is on one side, there is a like pressure 
 on the other. A solid shaft had been frequently used, long 
 before the date of this patent, in fan-machines and paddle- 
 wheels. There is no hollow shaft in Appold's machine ; there 
 is a solid shaft which goes through the centre of the wheel or 
 disc, and on which the wheel revolves. With respect to the 
 passage in the specification, " as the square root of the dis- 
 tance between the surface of the water and the hpllow shaft, 
 &c.," the specification means this : that the first element to be 
 determined is the area of the hollow shaft. Then the area of 
 the hollow shaft is to be multiplied by the square root of the 
 distance from the surface of the water to the hollow shaft itself, 
 and the result of that is to be the area of such pipe. Suppose 
 the hollow shaft is sixteen feet above the surface of the water, 
 the square root of sixteen feet is four feet, then the plaintiff" 
 would make the area of the suction pipe four times the area of 
 • the hollow shaft. No doubt the multiplier depends upon 
 whether you take inches, feet, or yards, and each one would 
 give a different result; but persons connected with hydraulic 
 subjects always measure in feet. Referring to the seventh claim 
 in the specification, the law in hydraulics, that the resistance 
 diminishes by making pipes of a certain area, has been fre- 
 quently applied to pumps before. I do not remember ever 
 having seen " flexible or collapsible valves made of leather or 
 leather combined with other suitable substances " applied to 
 pumps before the date of this patent. I never saw Delap's 
 centrifugal pump. The centrifugal blower, if placed in water, 
 would admit the water on both sides of the wheel, and drive it 
 through the discharge pipe, but it differs from the plaintiff's 
 patent in being immersed in the fluid which it impels, and, 
 therefore, has no suction pipes. 
 
 Mr. Anthony Bower, an engineer, said : In the early part of 
 1847, I went to Bradford to see a machine exhibited by the 
 plaintiff. I examined it carefully both in operation and when 
 stopped, and consider it was new in many parts; the admis- 
 sion of water on both sides was new. None of the old centri- 
 fugal pumps admitted the water on both sides. 
 
 Mr. Joseph Diggle, the contractor for the Church Fenton 
 and Harrowgate Railway, corroborated the evidence of the 
 plaintiff as to the successful use of his pump at Thorpe Arch. 
 
 E 3 
 
54-. 
 
 TETLEY'S PATENT. 
 
 Plaintiff's 
 Evidence. 
 
 Defendants' 
 Case. 
 
 Mr. William Carpmael, a civil engineer, said : I am ac- 
 quainted with the centrifugal machines for raising water which' 
 have been tried before plaintiff's invention. The plaintiff', in his 
 specification, proposes to bring the water in on both sides of the 
 revolving wheel, and thus keep the wheel in a state of equili- 
 brium. Another peculiar feature is the carrying the wheel 
 itself upon a central small axis. There is no wheel described 
 in the specification except a balanced wheel. The specification 
 is sufficient to describe the invention. I have examined Ap- 
 pold's, the Selby, and the Whittlesea Mere pumps; they all 
 resemble plaintiff's invention in the following particulars : — 
 They have a revolving wheel, with recesses or passages, fixed 
 upon a solid axis, having the water coming in at both sides of 
 the wheel, and in a state of balance identical with that which is 
 described in plaintiff's specification. 
 
 Mr. Henry Smith proved that he had supplied, and had in 
 use a pump made by the defendants according to a model in 
 Court. 
 
 William Barber, a mechanic. I saw the pump put up for 
 Mr. Smith at Selby ; examined it, and made the model which 
 is in Court ; it is a correct model. 
 
 This was the plaintiff's case. 
 
 Sir A. E. Cockhurn. There are one or two points upon which 
 I will now take the opinion of the Court before addressing the 
 jury on behalf of the defendants. The plaintiff begins by say- 
 ing, at the commencement of his claim : " I do not claim to be 
 the discoverer that liquids may be raised by centrifugal force, 
 nor do I claim in any way the sole application of machinery for 
 raising water or other liquids by centrifugal force, except only 
 when the same is used as a means of introducing liquids into 
 compressed air or other elastic fluids, as specified hereinafter in 
 my fifth claim." We find that his only claim is the application 
 of centrifugal force " when the same is used as a means of in- 
 troducing liquids into ' compressed air or other elastic fluids, as 
 specified hereinafter in my fifth claim." Now, setting out with 
 that, I submit that that governs and overrides all that comes 
 after, and that consequently, whatever claims are made after 
 this introduction must be considered as claims made with refer- 
 ence to the case " where liquids are introduced into compressed 
 air or other elastic fluids ; " because he goes on to say : " Now, 
 therefore, first I claim as my invention and application the 
 means of neutralizing or diminishing the effects of suction at 
 one side of the wheel by causing the same degree (or such other 
 proportionate degree as may be required) of suction at both 
 sides thereof, whereby a considerable saving of power is 
 
TETLEY V. EASTON AND AMOS. 55 
 
 eiFected." Now, I submit that that is immediately connected ■ Exchequee. 
 with what went before. When a man begins with a general ^ vaT^ss" 
 statement of what he claims and does not claim, and then re- 
 duces the general statement he has made into distinct and sepa- 
 rate heads, it must be taken that those distinct and separate 
 heads have reference to the general claim which he has made, 
 and especially when he carries the one to the other by tbe inter- 
 position of the word " therefore." Then follow the second, 
 third, fourth, fifth, sixth, seventh, and eighth claims ; and all 
 these I submit can only be considered as claims which he is 
 entitled to set up when he is applying centrifugal force, and 
 the machinery for giving effect to that force, " as a means of 
 introducing liquids into compressed air or other elastic fluids ; " 
 and if that be so, it is quite clear that there is no case made 
 out against the defendants, because it is conceded that we have 
 not anything to do with compressed air. Then, in the third 
 claim, he claims as an essential part of his invention the mount- 
 ing of the wheel on a solid shaft passing through its centre. 
 Then, further on, he dispenses with that, and proposes to have a 
 hollow shaft instead of the solid one ; and then he dispenses with 
 both, without saying in what cases he uses the solid or in what 
 cases the hollow shaft, or when he dispenses with both. So that 
 a person going to make a machine of this kind would be at a 
 loss to know what he was to proceed upon. Then comes the 
 seventh claim, which I submit is clearly bad, as being a claim 
 to the mere application of a natural law, for which a person is 
 not entitled to take out a patent. 
 
 Pollock C. B. That depends upon whether, generally, in 
 other pumps, the same principles had been obeyed and followed ; 
 if they had been, that cannot be the subject of a claim. How- 
 ever, I shall reserve these points upon the specification. 
 
 Sir A. E. Cockburn to the jury. The first question which you 
 will have to decide is, — Are the machines manufactured by the 
 defendants in all respects the same as that patented by the 
 plaintiff? I would say certainly not. The plaintiff's wheel is 
 a wheel with spokes or hollow tubes, from the ends of which 
 water is ejected into a sort of reservoir or case, and then the ac- 
 tion of the compressed air forces it out, and gives it the neces- 
 sary degree of momentum. There is nothing of the kind in 
 Appold's wheel ; he wants no long radial spokes — no air-tight 
 vessel or compressed air ; but the water is drawn in at the 
 centre of the wheel, forced up inclined planes, and delivered out 
 at the periphery of the wheel ; and it comes with a power which 
 enables him to effect all that the plaintiff does with compressed 
 air and the long arms. -Nov^f, the two machines are essentially 
 
 £ 4 
 
56 
 
 TETLEY'S PATENT. 
 
 Sir A. E. Cock- 
 bum for the 
 Defendants. 
 
 The inventor 
 of a useless 
 machine is not 
 entitled to ap- 
 propriate a 
 subsequent un- 
 patented im- 
 provement 
 which makes 
 it useful. 
 
 different ; but theu the plaintiff says, " There are two points in 
 which you clearly infringe my patent ; the one is the balanced 
 wheel, and the other is the causing the wheel to revolve on a 
 solid shaft passed through the hollow axle, and then the hollow 
 axle passed through the centre of the wheel." In the first, 
 I shall show that there is no novelty ; and as to the second, 
 we do not use a solid shaft passed through a hollow axle in the 
 manner he states, because we have no hollow axle whatever. 
 We pass our solid shaft through the centre of the wheel itself, 
 as has been done for time out of memory. Therefore, in respect 
 of that part of the case, he cannot prevail against us. Xow 
 comes the question, whether or not he is entitled to claim 
 the balanced wheel as a novelty. I contend that it is not 
 new, because I am prepared to show that in two patents taken 
 out by a person named Hale, the application of water on both 
 sides of the wheel, to produce equality of pressure, had been 
 published to the world as far back as the year 1830. There 
 are other points in the plaintiff's specification to which attention 
 must be directed. His fourth claim is for the " application to 
 the hollow wheel of flexible or collapsible valves." I am prepared 
 to prove that that is not new either, but was patented by a 
 person of the name of Delap, and was in considerable use. I 
 shall show you in three or four instances, which I shall mention, 
 that there is no novelty in the plaintiff's invention — that these 
 matters had been before patented and used by other people ; 
 and then I shall be entitled to your verdict. I put it in the 
 alternative. We have either not infringed, or, if you say we 
 have infringed, then your invention is not new ; and it must be 
 observed that this is an invention which really has come very 
 little into practical use. 
 
 \_PoUock C. B. here recalled the plaintiff, and asked him the 
 sum for which he could make another machine such as was 
 used at Thorpe Arch ; to which the plaintiff replied that if he 
 now had 300Z. to empty a similar coffer dam, he would get 
 about 1-50/. of profit, after paying all expenses of making and 
 working the machine. He also stated that he could make the 
 machine itself for 50Z. 
 
 Pollock C. B. I must say at once, that the machine has 
 apparently never come into general use. I shall certainly state 
 my opinion to be, that if one man invents the most ingenious 
 thing in the world, and it is not so advantageous to the public 
 as to come into use, it really cannot be deemed useful to the 
 public ; and if any other person improves it to such an extent as 
 to make it useful, that the first inventor cannot come and say, 
 " I will not let you use your improvements, and as you have 
 
TETLEY V. E ASTON AND AMOS. 01 
 
 given them to the public, I will use them myself, and I will get Exchequkr. 
 all the profit of your ingenuity." That is why I made this -^^ y^ jg-^. 
 inquiry, and it appears to result in this, that according to the 
 plaintiffs account of the transaction at Thorpe Arch, it seems to 
 have been very profitable ; and the inference, therefore, is, that 
 the invention is useful in some degree, at least, to the public] 
 
 Sir A. E. Cockburn, in continuation. The plaintiff's inven- 
 tion has failed to come before the public, and here is another man 
 whose invention is likely to be very useful to the world. If the 
 plaintiff succeeds in getting your verdict, the consequence will 
 be, that he will be the only one throughout her Majesty's do- 
 minions who will be entitled to use and vend this machine, the 
 result of the invention (the indisputable invention as regards 
 the greater part of it) of the gentleman connected with my 
 clients, Mr. Appold. The portion invented by Mr. Appold is 
 now common property, if to that be added anything that is 
 the exclusive property of the plaintiff, he can use that exclu- 
 sively, so that if the verdict is for the plaintiff, he alone will be 
 entitled to use this invention. I hope that the result will be, 
 that that which Mr. Appold has made the common property of 
 all the world, will not, by this action of Mr. Tetley's, be appro- 
 priated to him to the manifest exclusion of the real inventor, 
 and the public. 
 
 The following evidence was given for the defendants: — Defendants' 
 An office copy of the specification of a patent granted in the 
 year 1792, to James Eumsey (a) for "Certain new methods 
 of raising water and other fluids, by applying their force to 
 the purpose of milling or giving advantageous motion or effect 
 to various machines or engines," showing a wheel having a 
 hollow shaft and a solid axle ; the water was, however, admitted 
 on one side of the wheel only. 
 
 The specification of a patent granted to Kobert Delap (5), 
 dated the 1st of May, 1821, for " Certain improvements in pro- 
 ducing rotary motion," was then put in evidence to show that 
 collapsible valves at the periphery of the wheel had been used 
 prior to the date of the plaintiff's patent. Also the specification 
 of a patent granted on the 21st of January, 1830, to William 
 Hale(c) for " A machine or method of raising or forcing water 
 for propelling vessels, which machine or method is also appli- 
 cable to other purposes." Also the specification of another 
 patent, granted on the 13th of October, 1831, to William 
 Hale {d) for " Improvements in machinery, or apparatus for 
 
 (a) Ante, p. 41. (c) Ante, p. 42, 
 
 (ft) Ante, p. 42. \d) Ante, p. 43. 
 
 Evidence. 
 
58 TETLEY'S PATENT. 
 
 Defmdanta' propelling vessels, which improvements are also applicable for 
 raising or forcing water." The two last-mentioned specifica- 
 tions were used to show that a balanced wheel had been used 
 or published before the date of the plaintiff's patent. 
 The following witnesses were then called : — 
 A workman in the employment of Messrs. Watkins and 
 Hill, produced a working model of a centrifugal pump, which 
 he proved had been made according to the specification of Hale's 
 ipatent of 1831. 
 
 Mr. Charles Cowper, engineer, proved a model made accord- 
 ing to Rumsey's specification, which had a solid spindle passing 
 through a hollow axle. The wheel rotates upon the solid 
 spindle, and has centrifugal action. In Delap's specification of 
 1821, collapsible valves at the periphery of the wheel are 
 described. In Hale's specification of 1830, water is admitted on 
 both sides of the wheel. In this wheel of Hale's, if the water 
 were admitted on one side only, it would be in balance, because 
 it has merely arms ; there is no central disc, but the water has 
 a free passage from one side of the case to the other. Each of 
 the machines in Hale's specification of 1832 will produce cen- 
 trifugal action. There is a wheel there described having a 
 central plate or disc, and there are supply pipes at both sides of 
 the wheel. I have examined the Selby pump ; it is intended to 
 work above the water ; it is very similar to Hale's, but has a rim 
 on each side of the blades to obtain additional strength. There is 
 no substantial difference between Clark's blower and Appold's 
 pump, except that in Appold's pump, the blades are curved, 
 and there are suction pipes. The central hole in Appold's 
 wheel cannot be called a hollow axle. In Tetley's pump, if the 
 hollow shaft on one side of the wheel were closed, the wheel 
 would be nearly balanced, or if the pipe ff were taken away, 
 and the end of the hollow shaft stopped up, there would be to 
 a certain extent a balance. There is a term wanting in that 
 part of the specification which relates to the rule respecting the 
 size of the suction pipes. The advantage of making the suction 
 pipes larger than the discharge pipe, was well known and in prac- 
 tice before the date of the plaintiff's patent. 
 
 Pollock C. B. I am of opinion that in point of law this 
 patent cannot be sustained. There are difficulties which I con- 
 sider insurmountable. Assuming the model produced by the 
 plaintiff as the infringement of which he complains, the claim 
 made by him upon that point is, " In reference to the hollow 
 wheel I do not confine myself to the number or to the use of the 
 hollow spokes, but in some instances propose to substitute cir- 
 cular discs, with a narrow water channel between, and a«valve 
 
TETLEY V. EASTON AND AMOS. 5i^' 
 
 or flexible valve or valves on the circumference, and generally I Exchequer. 
 propose to construct the wheel of every variety of configuration j^ ^^^ jgg^ 
 so long as the same is constructed so as to have a channel or chan- 
 nels in the interior thereof," clearly pointing out that there may 
 be only one channel. Now, Hale's patent is taken out specifically 
 for raising water by suction, and is constructed so as to have a 
 channel in the interior. I thought in an early part of the case 
 that the plaintiff was impregnable on the subject of drawing 
 the water up to the pump from the pond, and that though the 
 defendants had a right to put their machinery in the water and 
 drive it up, they had no right to draw the water up to the pump 
 by the use of suction pipes. There is, however, in the latter 
 part of Hale's specification of 1832 this passage : " In place of 
 fixing the case in the water or other fluid, there may be a suction 
 pipe affixed at the opening d, and descending into the well or 
 other reservoir, having a common valve opening inwards ; by 
 this arrangement, when the box or case, and the suction pipe 
 have been filled with water or other fluid, the revolution of the 
 propeller will drive the same through the opening k, to which 
 there may or may not be a conducting pipe for conveying th 
 water to any desired place ; and at the same time as the water is 
 forced out at the opening k, there will be a constant flow of 
 water up the suction pipe into the case or box u. Now, it 
 appears to me that if Mr. Tetley's patent be good, nobody could 
 use Hale's invention, which has now become public property. 
 
 [On the plaintiff's counsel stating that the production of 
 Hale's specifications had been a surprise to them, and that they 
 had no notice of it so as to examine their witnesses on the sub- 
 ject, and assuring the Chief Baron that they could show a 
 material difference between Hale's wheels and those of the 
 plaintiff or defendants, and further, that Hale's patents were 
 practically useless, the case was allowed to proceed.] 
 
 Examination of Mr. Cowper resumed. I have seen experi^ 
 ments made with Hale's wheel, and it raised large quantities of 
 water. I consider it a much more efficient pump than Tet- 
 ley's, even with the curved spokes. 
 
 Mr. Charles Edwards Amos, one of the defendants. I am an 
 engineer, and I have manufactured the pumps commonly called 
 Appold's pumps. Appold's pumps, without sides or circular 
 discs, are practically as good as with them. I have seen Hale's 
 wheels at work, and they worked very well. I consider Hale's 
 wheels much better, than Tetley's for all purposes. Witness 
 agreed generally with the evidence of Mr. Cowper. 
 
 On cross-examination. The influence of the blades would 
 carry the water round, but care is taken in the construction of 
 
60 
 
 TETLEY'S PATENT. 
 
 Defendants' 
 Evidence. 
 
 Plaintiff's 
 Evidence in 
 reply. 
 
 a pump case to stop this rotation of the water by placing the 
 wheel in the case with sufficient eccentricity. In the drawing 
 attached to Hale's specification the cases are shown eccentric 
 for this very purpose. Appold's pump is a modification of 
 Hale's. 
 
 Mr. James Hann. I am professor of mathematics at King's 
 College. I have read that part of plaintiff's specification which 
 relates to making the suction pipes of larger diameter than the 
 orifices into the wheel, and could make no sense of it at all. 
 The rule applicable in such a case is old and well known. There 
 is not anything in plaintiff's specification to enable any one to 
 ascertain the diameter of the suction pipe in proportion to its 
 length. 
 
 Mr. Hensman. I am a civil engineer. Appold's pump is a 
 modification of Hale's. It does not resemble Tetley's more 
 than that they are both centrifugal pumps. Circular discs at 
 each side of the wheel are not essential. In some cases, the 
 wheel would work better without them. I ao;ree with Mr. 
 Cowper and Mr. Amos in their evidence. 
 
 Mr. Joseph Glynn. I am a civil engineer. I agree generally 
 with the evidence of Mr. Cowper, Mr. Amos, and Mr. Hens- 
 man. 
 
 Mr. James Murdoch Napier. I am a civil engineer. I agree 
 generally with all the evidence given by the former witnesses. 
 I have seen Hale's pump at work. It worked well, and de- 
 livered large quantities of water. 
 
 This closed the defendants' case. 
 
 Atherton. With your Lordship's permission, I now propose 
 to call witnesses upon the points of difference or identity of the 
 defendant's pump, and the inventions of Hale, on the ground 
 that the introduction of Hale's specifications came upon us by 
 surprise, and we have not had an opportunity of considering 
 their merits and examining our witnesses upon them. 
 
 Sir A, Cockburn. I object to my learned friend now calling 
 witnesses. Hale's specifications were handed to the plaintiff's 
 first witness on cross-examination, for the very purpose of giving 
 the plaintiff notice that on these specifications the defendants 
 intended to rely. 
 
 After some discussion, the plaintiff was allowed to recall some 
 of his witnesses. Upon which 
 
 Mr. Bower was recalled and examined. I was not acquainted 
 with Hale's specification before this trial commenced, but since 
 that I have examined both the specifications and the drawings, 
 and find essential differences between them and Tetley's. One 
 essential difference between both of Hale's patents and Tetley's 
 
TETLEY V. EASTON AND AMOS. fi I 
 
 is, that Hale's machine would not work without a case ; whereas Ex chequ er. 
 Tetley's, in some instances, would work better without a case ^ ^^^ ^^^^^ 
 than with one. Another difference is, that Hale's has no chan- 
 nels complete in the revolving wheel itself. A further difference 
 is, that in Hale's machine the admission of water on both sides 
 is perfectly useless as a balancing power against the effects of 
 suction. Again, in Hale's, the water is continually in contact 
 with the case, while in Tetley's it is ejected without touching 
 the case. I consider Hale's pump no better than the common 
 pump. 
 
 On cross-examination. I have not tried Hale's pump, nor 
 have I seen it tried. A complete water channel is necessary in 
 the plaintiff's pump. If there be no complete water channel in 
 a wheel, that is not Tetley's wheel. Without the circular discs 
 or sides, the wheel would not be an infringement of Tetley's 
 wheel. 
 
 Mr. Carpmael recalled. I am acquainted with Hale's patents, 
 and drew the specifications. 
 
 Pollock C. B. Then I cannot allow Mr. Carpmael to be Where a plain- 
 re-examined. Mr. Carpmael was perfectly acquainted with a part of his 
 Hale's patents, for he drew them, and if it was intended to dis- evidence on 
 tinguish the plamtiff s invention from anything that had gone novelty, and, at 
 before it, it was quite competent to you to ask him the ques- ^gn^t"^™;^"'^^' 
 
 tion. case, has had 
 
 Atherton. The complaint is, not what was in Mr. Carpmael's ^aUe"to a°" 
 
 mind, but what was in the mind of counsel ; we were not put prior speeifica- 
 
 in a position to examine Mr. Carpmael as to this matter. recall a -witness 
 
 Pollock C. B. I think Hale's patent having been produced, in r^ply to give 
 
 , evidence re- 
 
 and the plaintiff examined upon it, that is suflScient notice, so specting the . 
 that the gentleman who prepared Hale's patent, if there were coiitents of it. 
 any difference, might have then pointed it out. 
 
 Atherton, Of course Mr. Carpmael could not have volun- 
 teered answers. I thought your Lordship had decided that 
 we were at liberty to give evidence in reply. 
 
 Pollock C. B. You are at liberty to give any evidence of any 
 person who said, I knew nothing of Hale's patents before the 
 trial commenced, but I cannot allow this evidence. 
 
 Sir A. Cockburn then addressed the jury on the evidence Sir A. Cuck- 
 in reply. The only question in the cause is, whether the o"'«Ae°w'deic?' 
 plaintiff is or is not entitled to stop the defendants in the use of in "p/y. 
 their pump in consequence of their having applied the principle 
 of the balanced wheel, which the plaintiff alleges is part of his 
 invention. How does my learned friend meet our case ? "We 
 put in Hale's patent, and we put in the drawings. You 
 have seen a model of Hale's machine at work, which clearly 
 
62 : TETLEY'S PATENT. 
 
 Sir^. Cock- shows that the water, upon Hale's system, is introduced on 
 on euidmce in ^ ^^^^ sides, and produces equalized pressure, or what they call 
 reply. tj^ balanced wheel. How does my learned friend meet that ? 
 
 He puts a witness into the box, who says that Tetley's and 
 Hale's inventions are not the same. We do not say that 
 Tetley's and Hale's are the same, but we say that Appold's and 
 Hale's are the same ; that is, as regards that part of Hale's and 
 Appold's which is now under consideration as the question at 
 issue between Tetley and Appold. Tetley's and Hale's are not 
 the same, but Hale's and Appold's are. One of two things 
 necessarily follows. If it be said that Tetley's and Hale's are 
 not the same, but if it is not disproved that Appold's and Hale's 
 are the same, you are on one or other horn of this dilemma ; if 
 Hale's and Appold's are the same, either Appold's and Tetley's 
 are not the same, or, if they are, then Tetley's and Hale's clash 
 in this respect, that Hale's was anterior to Tetley's, and, there- 
 fore, Tetley's was not novel at the time he took out his patent ; 
 and we are entitled to the benefit of Hale's invention, it being 
 now the common property of all the world. 
 Atherton in re- Atherton, in reply on the whole case, said that it never was 
 ^aJf" '^"" pretended, nor has it been put forward in this case, that a 
 solid spindle in a hollow axle was by itself a novelty. The 
 same remark may be made with respect to the valves, and 
 also with respect to the increased area of the suction pipe. 
 The plaintiff never intended to represent any one of these 
 three portions of the machine, which in the whole he claims 
 as his invention, to be in itself a novelty. There is another 
 point which must be omitted from the consideration of this 
 case, and that is, the use of compressed air. The plaintiff 
 does not for one moment pretend that in that particular the 
 defendants have infringed, or that their machine resembles his 
 patent. Leaving aside these points, we are brought at once 
 to the real and substantial question in the cause, which is. Has 
 the plaintiff established that the balanced wheel of his machine 
 is a novelty ? The only ground upon which its novelty has 
 been assailed is, by the introduction of Hale's machines, but in 
 neither of Hale's patents does the wheel answer the description 
 of the wheel contained in the plaintiff's specification. In 
 neither will a narrow water-channel between circular discs be 
 found. Had not Hale's patents been found, Clark's blower 
 would have been boldly put forward as fatal to the claim of 
 originality and novelty on the part of the patentee, but Hale's 
 happens to be most like the plaintiff's, and, therefore, is brought 
 forward. Something was said in the course of the case as to 
 the small success the plaintiff's machine has met with, but 
 
TETLET V. E ASTON AND AMOS. 63 
 
 M. Vac. 1852. 
 
 it must be remembered that the utility of the invention is Exchequer. 
 not in issue. Some wheels have been produced, called Ap- 
 pold's wheels, which have no side discs ; but this action is 
 brought for particular infringements, — one pump put up at 
 Whittlesea Mere, and another at Selby ; and in each of these 
 machines there were these side discs ; therefore, in weighing the 
 evidence in this case, this wheel without side discs must be left 
 out of the consideration. "Whether Mr. Appold or the defend- 
 ants could make it work well or not is not the question ; suflSce 
 it to say, that in every case in which a pump has been put up, 
 the side discs have been used. 
 
 Pollock C. B. to the jury. Gentlemen of the jury, this Pollock C. B. 
 is an action brought by the plaintiff against the defendants „, 
 
 . ° • ^ ^ I he summing 
 
 for the infringement of a patent taken out on the 11th of up. 
 February, 1846. The specification was enrolled exactly on 
 that day six months, namely, on the 11th of August in the 
 same year. The declaration contains the usual averment that 
 the patent was taken out, the specification enrolled, and then 
 complains that the defendants infringed the patent by making 
 something imitating it, and copying it without the leave of the 
 patentee. The defence consists of a great variety of pleas, 
 which deny almost everything. There is, however, certainly one 
 thing which is not denied, and that is the utility of the inven- 
 tion ; and probably the history of the machine was sufficiently 
 well known to make it perfectly useless to deny its utility ; 
 because, if it had been denied, the evidence of Mr, Diggle and * 
 
 the evidence of the plaintiff would have abundantly made out 
 that the machine was useful ; and if the machine could do that 
 which apparently no other machine could be got to do, I think 
 it must have been pronounced useful, even if the expense had 
 been very considerable. But for the purpose of ascertaining To support a 
 whether it was worth while to make it for the purpose of use, necessary A°t' 
 I asked Mr. Tetley himself, and you remember that he gave its utility 
 an account of the expense for which he would make another, ^s to exclude 
 how much he could fix it for, and how he could apply it ; and everything else 
 it appears very clear that he received 300Z. for that which 
 would not have cost more than 1 50Z. The machine, therefore, 
 was undoubtedly commercially useful, and would have been 
 worth his while to make, even if other machines might be got 
 which could do the work better. It is not necessary that a 
 patent should be so useful as to exclude everything else ; it is 
 quite sufficient if on any occasion it is useful. 
 
 I believe nothing turns now upon the declaration or the 
 pleadings. When .the cause began on the part of the plaintiff, 
 
64: TETLEY'S PATENT. 
 
 fo1heju?y.^' ^^- ^^t'^y himself was called, and after him Mr. Hawksley, 
 Mr. Diggle, Mr. Carpmael, Mr. Henry Smith, and Mr. Bower. 
 I am not aware of any other witness having been called. Sir 
 A, Cockburn addressed you for the defence, and the evidence 
 on the part of the defendants was entered into. It was pro- 
 posed, on the part of the plaintiff, to call witnesses in reply, and 
 I thought that the criterion was this, — that you could not call 
 witnesses in reply to any matter that had really been the sub- 
 ject of any specific evidence given on the part of the plaintiff, 
 either on examination in chief or cross-examination. It ap- 
 peared to me that Mr. Tetley was distinctly examined on the 
 subject of these two patents of Hale's, and, therefore, I thought 
 it not right to allow Mr, Carpmael to be re-examined. He had 
 given his evidence, and, it turned out, had actually drawn the 
 specifications of those patents ; therefore, it appeared to me to be 
 contrary to the rules of evidence, to allow a witness, having 
 heard the case stated on the other side, aware of what was to 
 be proved, to wait until the defendants had closed their case, 
 and then to be recalled to contradict their witnesses. On that 
 ground, it appeared to me, according to the rule on which these 
 matters are administered, that I ought not to allow Mr. Carp- 
 mael to be re-examined ; if I am wrong, I shall be set right on 
 another occasion. "With respect to the plaintiff and defendants, 
 probably no patent case ever came before a jury in which the 
 parties were so entirely free from everything like reproach. 
 The plaintiff, who is an ingenious man, apparently has for some 
 years applied his attention to the subject of rotary pumps, and 
 in the year 1846 he had so far completed his scheme as to have 
 determined on taking out a patent for it. The defendants 
 themselves do not profess to be inventors. They have taken 
 out no patent : all that they have done has been to comply with 
 the directions and to fulfil the orders of Mr. Appold. The 
 plaintiff appears, as well as the defendants, to be perfectly free 
 from personal blame of any sort ; and I think you will come to 
 the consideration of the question in this action without having 
 any prejudice of any sort to contend with. The real question 
 is, What are the facts laid before you for consideration, and what 
 is the effect upon your minds of the evidence produced before 
 you? Now, I will state what occurs to me to be the material 
 points which will ultimately have to be considered with re- 
 ference to the validity of the patent, and I will point out that 
 upon which I shall ask your opinion as a question of fact. 
 Where the matter is for the Court, there I shall take upon 
 myself to decide as I am bound to do, subject to revision by the 
 Court above. Now, the patent having been taken out in tiiQ 
 
TETLEY V. EASTON AND AMOS. 65 
 
 year 1846, Mr. Tetley, early In 1847, began to make a machine ; Excheqceb. 
 later in the year he was applied to, to use it at Thorpe Arch, jyj ytic. 1852. 
 He had publicly exhibited it, and the machine was used at Thorpe 
 Arch. Mr. Tetley has not been able apparently to make it prac- 
 tically useful to himself; but, in the year 1851, at the Great Ex- 
 hibition, he met with a pump. He desired to look at it, and it was 
 shown to him immediately ; there was no disguise or conceal- 
 ment about the matter. Mr. Tetley, when he saw it, said, 
 " This is my machine." He was told it was not, and the ques- 
 tion now between the parties, as far as it is a question of fact, is 
 substantially this : Is Mr. Appold's machine the same as Mr. 
 Tetley's invention ? Now, I will endeavour to explain to you 
 the history, of the case from the beginning. There seems to be 
 no doubt that in a common pump there is a very great waste of 
 power. The attention of persons was very early drawn to modes 
 of raising water which should be free from that sort of objection. 
 It seems that in the month of July, 1792, a patent was 
 granted to James Rumsey. The specification was put in, and 
 there is a hollow spindle displayed. Gentlemen, it occurred to 
 me very early in this case that the question of the spindle was not 
 a very important one, and I may here make a remark generally 
 upon the manner in which I think a specification should be dealt 
 with. There have occurred in the course of this inquiry several 
 objections which, I believe, forty or fifty years ago, would have 
 been fatal to this patent ; beyond all doubt I think very early In 
 the case the plaintiff would have been nonsuited. Specifications 
 were then expected to be framed, not merely with accuracy, but 
 with the greatest nicety ; very little allowance was made for the 
 state and condition of a person who often had a patent. Modern Specification 
 authorities have taken a very different view of specifications. *";®<=;™t '*■ in- 
 
 T- 111P- 1 .„. telligible to a 
 
 it IS now held, tor instance, that a specification is sufficient workman, and 
 if it be intelligible to a workman ; and if it be so intelligible u'nder^t^d. 
 that you can see what the man means to claim, however he has 
 expressed it. There are some of the objections in this case 
 which I own do not appear to me to be well founded; but 
 there are others, which I am afraid arise out of the disposition 
 on the part of patentees to do the foolish act of grasplno- at 
 everything ; not content with making a machine of great utility 
 by means of an ingenious device, but saying I grasp at every 
 machine of every possible variety of form and shape in which 
 the same can be done. On that I shall presently have a word 
 to say. 
 
 Now, after the patent of 1792, which was introduced by the 
 defendants to show that the spindle was not new, the next case is 
 that of the valves, and Delap's patent of May, 1821, was given 
 
 F 
 
66 TETLEY'S PATENT. 
 
 ^fftf'-^'^' ™ evidence to show that the valves had been used before the 
 
 to the jury. , . . t p 
 
 date of the plaintiff's patent. Then the patents of Hale of 
 1830 and 1831 were put in, and those patents certainly appear 
 to me to bear with importance on the case ; and upon this 
 point I think I am bound to state the view that I take of one 
 of those patents, namely, Hale's first patent, which he states 
 expressly is for the purpose of raising water, and points out 
 various wheels. There is no doubt they are wheels turning 
 upon spindles in the inside of a case, which admits the water 
 through holes in the case to come in on both sides of the wheel, 
 and then the motion of the revolving fan pushes the water out, 
 and gives to the water a movement so strong that it will rise 
 conveniently to a certain height. If the motion were strong 
 enough it would probably rise twenty-five to twenty-seven, 
 twenty-eight, or thirty feet, but it would not rise beyond the 
 height of a column of water which would balance the weight 
 of the atmosphere, that is, about from thirty-two to thirty-three 
 or thirty-four feet high, according to the state of the barometer 
 at the time the experiment might be made. Now, it appeared 
 to me that this was clearly a pointing out of a mode by which 
 you plunged the revolving substance into the fluid itself, and 
 there made it turn, and so raise the water above the point ; but 
 whether this will amount precisely to an instance of such a 
 wheel as the plaintiff describes, is certainly a different matter. 
 Then the second patent was put in, which was in the year 
 1832, and which goes very much further. It appeared to me 
 that as the plaintiff's patent was for raising water by suction by 
 the first part of his invention, and by pressing it upwards 
 through the medium of compressed air, which was the second 
 part of his invention, that his patent in no way met the case 
 of putting the machine down into the water, and raising it out 
 of the reservoir itself. There is no intimation that I can per- 
 ceive, from the beginning of the specification to the end of it, 
 that his machine can be so used. I own I thought, therefore, 
 that as far as any part of the machine was in the water entirely 
 immersed, so that the wheel was in the water, so far there was 
 no violation or infringement of the plaintifi''s patent at all ; but 
 that still it was open to contend that wherever there was suc- 
 tion used the plaintiff had a right to say, " "Well, though I have 
 never proposed in my specification, and have never, in point of 
 fact, used my machine by putting the wheel or machine down 
 into the water, I do claim a right to forbid you by suction to 
 draw up and distribute the water, or carry it to a height above 
 that by means of a wheel." 
 
 I do not think that Mr. Tetley ever contemplated that his 
 
TETLEY V. EASTON AND AMOS. O i 
 
 M. Vac. 1852. 
 
 machine should be put down into the water. That is the first exchequer. 
 part of it ; the compressed air part of it is wholly out of the 
 question. Whether that machine for compressing air is of any 
 use or of no use, we have only general evidence : I think we 
 are bound to take it that it is of use, but there is no very dis- 
 tinct evidence given upon it. Mr. Tetley says compressed air 
 was used ; it was certainly of no use when he had only to raise 
 water some eight, ten, twelve, or thirteen feet high ; it was of 
 no use for that purpose; and he confesses himself that that 
 compressed air part of the machine was chiefly useful when you 
 wanted to raise more than the height of a column of water of 
 equal weight with the general weight of a column of the atmo- 
 sphere. Now, at the end of the specification of 1832, Mr, Hale 
 says this : " Having now described the manner of constructing 
 my invention, and the application to the propelling of vessels, I 
 will now proceed to describe its application for the purpose of 
 raising and forcing water or other fluids. In this application of 
 the apparatus, to the part k is to be affixed the pipe through which 
 the water is to be forced in any direction it may be required ; 
 and the box or case a is to be placed in a well or other reservoir, 
 either in a horizontal or vertical position ; and by means of a 
 crank or wheel-work, rotary motion is to be communicated to 
 the propeller f, which will force the water through the open- 
 ing k into the pipe which is to convey it in any direction; 
 or, in place of fixing the case in the water or other fluid, 
 there may be a suction pipe affixed at the opening d" (the 
 opening d is on both sides of the instrument) ; " and descending 
 into the well or other reservoir, having a common valve opening 
 inwards ; by this arrangement, when the box or case and the 
 suction pipe have been filled with water or other fluid, the revo- 
 lution of the propeller will drive the same through the opening k, 
 to which there may or may hot be a conducting pipe for con- 
 veying the water to any desired place ; and at the same time as 
 the water is forced out at the opening k, there will be constant 
 flow of water up the suction pipe into the case or box a." Hale's 
 patent, therefore, includes also a suction pipe, taking water up 
 and delivering it at d. There are two letters d, one on each side 
 of the wheel ; that would leave the question still open, whether 
 the wheel is the same. But I now point out what is the effect of 
 the figures that are here. One of these is figure 4., which is a 
 wheel. It is put into a case, figure 2., and it is then made to 
 revolve ; and in revolving it will either suck up water from a 
 tank or reservoir below, or, if it be put into the reservoir, and 
 made to revolve, it will push and propel the water upwards, so 
 as to make it easily rise eight, ten, twelve, fourteen, or fifteen feet; 
 
 r 2 
 
68 TETLEY'S PATENT. 
 
 PollochC. B. and more easily, apparently, than a common pump would. Now 
 
 the specification of the plaintiff, to which I must now call your 
 
 attention, appears to me to contain distinctly a claim which 
 
 includes that wheel of Mr. Hale's. I can see no escape from 
 
 this, that if this patent had preceded Hale's, and Mr. Hale had 
 
 taken that case and put into it that wheel, and used it for the 
 
 purposes of sucking up water, and then raising it to an upper 
 
 level, Mr. Tetley might have said to him : " You shall not do 
 
 that; that is an evasion of my patent." Now, gentlemen, I 
 
 will read this specification ; and when we come to that part of 
 
 Thequestionas '*' ^ ^'^^^ J^^* draw your attention to it. It is for me and the 
 
 to the identity Court to put our Construction upon that which is admitted and 
 
 tions described patent before us by the comparison of different specifications. 
 
 in specifica- Whether this was specified before in substance or not, I believe 
 
 tions IS for the . „ , , , „ t r. i 
 
 Court. to be a question tor law rather than for you. xi there were a 
 
 question as to any matter of fact, or as to the identity of two 
 instruments that were not so presented to the Court, that would 
 be one thing ; but here, this specification coming from the 
 Patent Office, and the other specification coming from the 
 Patent Office, there they are, and a reasonable person can form 
 an opinion upon their identity. It is for the Court to decide, 
 and not for you. There are, however, some facts upon which 
 I must ask your fair and candid opinion. Now, gentlemen, 
 the specification of Mr. Tetley first describes his instrument. 
 It consists of figure 1 . ; and there the wheel is given in 
 profile with straight arms, not with crooked arms at all ; and 
 having described the whole of that by letters, he goes on thus : 
 •' The operation of the machine is as follows : — Let the at- 
 tendant first close all the flexible valves at the ends of the 
 hollow spokes, and then put the air pump into operation to 
 exhaust the air from the interior of the wheel, the boxes d,d, 
 the pipes c,c and a. As this exhaustion takes place, the 
 liquid will rise up the pipes a, and c, c, and fill the boxes d, d, 
 and the wheel." And I think that the attempt to show that 
 the pipe ff would not supply the place of the hollow shaft, and 
 would not equalize the atmospheric pressure on both sides, fails. 
 You remember when the first witness was called upon the part 
 of the defendants, and when that question was put to him, 
 obviously in the expectation that he would say that that would 
 not do so, he answered, " It will do so," and if you suppose 
 there is any objection upon that ground, it is a mistake. "After 
 the wheel has become filled with the liquid, let it be put into 
 rapid rotatory motion by means of the pulley or toothed wheel J. 
 The speed at which the hollow wheel revolves must be so re- 
 gulated as to communicate to the liquid, which now fills the 
 
TETLEY V. E ASTON AND AMOS. 69 
 
 M. Vac. 1852. 
 
 hollow spokes, such degree of tendency to fly off (or out) by Exchequer. 
 virtue of the centrifugal force imparted thereto as will cause it 
 to force open the flexible valves, notwithstanding any pressure 
 of air externally thereon, and fly out. The liquid will be re- 
 ceived into the iron case ffff. As one portion of the liquid 
 comes out of the hollow wheel, a corresponding portion will 
 ascend up the pipes a and cc to supply its place." That is, as 
 you by this force squirt away the water into the case, or where- 
 ever it is convenient to send it, the water will rise up from the 
 bottom and supply its place according to the mechanical laws 
 of fluids, and all that is plainly stated. Then he says this : " Now, 
 if it be not intended to raise the water more than twenty-eight 
 or from that to thirty-two feet — that is to say, not higher than 
 the force of the atmosphere would lift it in vacuo (computing 
 such distance from the surface of the water to be raised to the 
 hollow shaft), — then the water or liquid may at once be drawn 
 from the case and conveyed where desired ; the machine, as 
 now described, being sufficient. In such instances, however, 
 it is not requisite that the case should be air-tight, but may be 
 open at the sides, and in some instances there need be no case 
 at all." You must have something to catch the water as it is 
 thrown out by the centrifugal force, but there need not be any 
 such case as is described here ; that case is only necessary when 
 you apply the second part of the invention, which is, by means 
 of compressed air, to have an artificial atmosphere in which the 
 wheel can turn freely so as to bring up water, and when the 
 water has come up, the pressure of the air will force it upwards 
 so as to make it rise above the standard level of the water, that 
 is, raised against the atmosphere. For instance, there need be 
 no case at all when you merely want to draw the water out and 
 scatter it over the surface of the ground, if you do not want to 
 use it ; as, for instance, in drawing the water out of the coffer dam 
 at Thorpe Arch, there was no occasion to have a case at all. 
 That is merely an instance where the water is not wanted to be 
 collected. But if it be desirable to raise the water hi>i-her, then 
 you would use the case. The rest of this paragraph relates to 
 the invention with compressed air, upon which, either by ob- 
 servation or by evidence, no attack has been made, nor is it 
 alleged that the defendants have in any degree infringed ; that 
 part is left untouched. Mr. Tetley proved tliat he had used it, 
 and everybody agrees that the arrangement is sufficiently de- 
 scribed here to effectuate the object. Therefore, I pass that by ; 
 it must be taken that that part of the patent is good, that that 
 part has not been infringed, and we have nothing to do with it. 
 I pass on now to more general matters. He then comes to 
 
 F 3 
 
70 TETLEY'S PATENT. 
 
 Pollock C. B. the question of that law of hydraulics, by which the motion of 
 
 to thejury. ,. . , •,• ■, • , . . ^i i. • Uf 
 
 liquids ascending decreases in speed in proportion to the neignt 
 or length of the ascending pipe or channel. He states that, 
 and he then gives this rule : " It is found that the decrease in 
 speed of water ascending perpendicular pipes is nearly as the 
 square root of the distance between the water to be raised and 
 the point of discharge." My opinion is, that if this part (as is 
 objected) is without a term, all you can do is to say it is non- 
 sense, and reject it. It strikes me, and I thought Mr. Hann 
 agreed in that, that there is here a principle or doctrine which 
 is laid down, from which (though in expounding it, and giving a 
 more particular explanation, the fourth term in the proposition 
 is not given) you have here the means of finding what the 
 fourth term ought to be, and here is a sufficient general descrip- 
 tion to enable you to find out what that is to be. But there is 
 an objection to this, which I take for granted is reserved ; the 
 objection is this : you have here stated that as a specific im- 
 provement in your pump, which was very well to have been 
 put in as a guard against anybody making a mistake, and 
 having the aperture for supply only as large as the discharge pipe. 
 It was quite right to put that in, but I find that he makes it 
 the subject of a specific claim in these words : " I claim as my 
 invention and application, where pipes or channels are used to 
 convey water or other liquids up to the hollow wheel, to make 
 such pipes or channels of such internal sectional area over and 
 above the area of the opening or openings into the hollow 
 wheel, as will enable them to pass liquid to supply the wheel at 
 a greater rate than could be done, if such pipes or channels 
 were not of such increased area," and then he adds this at the 
 end: "Ninthly. I claim the application of the before-men- 
 tioned inventions, both when all used in combination, or when 
 used severally." And I should certainly lay down the law to be 
 this : if pumps of this construction, namely, with the aperture of 
 supply varying according to the perpendicular height, had not 
 been made before, in my judgment, in point of law, nobody 
 could have applied that to any pump of any sort without Mr. 
 Tetley's permission. But the evidence is, that this was 
 perfectly well known ; it was common to all pumps ; and that 
 one might not be merely wandering in the uncertainty of 
 parol testimony, they have produced no less than two or three 
 books in which this specific arrangement is communicated to the 
 public in works published a great many years ago, certainly in 
 both of them long before Mr. Tetley's patent was taken out. 
 Well, then, I believe the criterion whether a claim of that sort 
 is well founded or not is this : If this were entirely new, what 
 control would it have given you over the construction of 
 
TETLEY V. E ASTON AND AMOS. 71 
 
 pumps ? My opinion is, if this enlargement of the supply pipes Excheqoek. 
 was entirely new, and the world, up to this time, had made ^ y^^852. 
 pumps having the apertures of the supply pipes only of the same 
 size as those of the discharge pipes, that nobody would have had 
 a right to use this mode of constructing supply pipes ; and if they 
 had used it, Mr. Tetley might have said, " You are taking part 
 of my invention ; and I have said distinctly that I claim the 
 application of the before-mentioned inventions, both when all 
 are used in combination, or when they are used separately ;" for 
 he distinctly says, " I claim as my invention and application to 
 have discovered that the size of the tubes below must be larger 
 than the size of the tubes above." I think there is no founda- 
 tion for that claim of the plaintiff, and upon that point my 
 present opinion certainly goes a long way beyond merely 
 reserving the point, as has been suggested. Gentlemen, the 
 next part of the specification to which I would direct your 
 attention is this : — He says : " In some special cases," and cer- 
 tainly without saying what the special cases are when that is to 
 be done, " I propose to have an entrance for the liquid into the 
 wheel at one side thereof only, and to counterbalance the suc- 
 tion arising therefrom by producing a corresponding degree of 
 suction at the other side, without admitting the liquid at the 
 last -mentioned side." And there is no doubt, in my opinion, 
 that the witnesses on both sides have made out that the pipe ff 
 is sufficient to admit of that being done, reserving still the 
 general character and features of the invention. He goes on 
 thus:— "If any gases or elastic media other than atmospheric A patentee can 
 air are used, with which to charge the case, I claim the sole right ^]J^ h "carT 
 to do so." I have no hesitation, in point of law, to say he had give the public 
 no such right. If it were discovered by any other person that faciiUy'to^uae. 
 the introduction of hydrogen, or some other gas, or the getting 
 rid of the oxygen in the atmospheric air, would produce some 
 important and useful result, I am of opinion that Mr. Tetley' 
 had no right to say, "I have used atmospheric air: I knew 
 nothing about anything else, for I never used anything else ; but 
 nobody shall use anything else ; and although I cannot give 
 )ou the slightest information about it, — I cannot tell you whether 
 one air will do better than another, — if anybody should make 
 out that some particular air, not dissolvable in water, is capable 
 of producing some effect by reason of its peculiar elasticity, 
 which may be more or less, and therefore better adapted for the 
 purpose, I claim that." I beg to lay down distinctly that no 
 man can do that — no man can say, " I have found out that 
 one fluid will produce such an effect, now I claim the right to 
 exclude everybody from using any fluid ; " it is a sort of claim 
 
 r 4 
 
72 
 
 TETLEY'S PATENT. 
 
 Polloch. c. B. a man is not permitted to make. A man can only claim that 
 which he can give the public a convenient means and facility to 
 use. If you can say, " I have used such an air, such a parti- 
 cular gas, and I find it will answer just as well as atmospheric 
 air," you have a right to say, " You may use either atmospheric 
 air or such a gas ; " but having tried no other than atmospheric 
 air, you have no right to say, " I claim to use any other air, 
 whatever it may be." 
 
 In the same spirit he goes on; and having given to the 
 public no wheel except that which is in profile, a wheel with 
 straight arms, &c., not having pointed out that it would be 
 beneficial to bend them, leaving that to be a matter of experi- 
 ment with any person who should take the subject up, he says : 
 " In reference to the hollow wheel, I do not confine myself to 
 the number or to the use of hollow spokes ; but in some cases 
 propose to substitute circular discs, with a narrow water-channel 
 between, and a valve or valves on the circumference ; and, 
 generally, I propose to construct the wheel of every variety of 
 configuration, so long as the same is constructed so as to have 
 a channel or channels in the interior thereof for the passage of 
 liquids ; and shall be adapted to neutralize the eflfects of suction 
 by having a corresponding or proportionate degree of suction at 
 each side." I must say that it appears to me that when the 
 wheel No. 4. (for No. 4. in the second patent of Hale is a wheel) 
 is put into the case No. 2., and then is made to rotate, there is 
 in that wheel a channel in the interior thereof for the passage of 
 liquids ; and the effects of suction are neutralized, so as to 
 prevent the suction, either on the same side or on the other, 
 . producing an impediment to the motion of the wheel ; and it 
 appears to me perfectly clear that if, after the plaintiff''s patent 
 had been taken out. Hale had proposed to put his wheel No. 4. 
 into his case No. 2., Mr. Tetley (if this patent had been valid), 
 would have had a perfect legal right to say, " You shall not do 
 that; that is an evasion of my patent." And again, gentlemen, 
 I have not the slightest doubt that scientific men could have 
 been brought, with perfect sincerity and truth, to say that the 
 principle of the one and of the other is precisely the same ; and 
 that Mr. Hale had merely been doing something a little worse, 
 but certainly within the scope, object, and principle of Mr. Tet- 
 A patentee ley's invention, in order to evade the patent. Gentlemen, it ap- 
 cannot claim a pg^rs to me that that is the true criterion when we are consider- 
 
 Tiiere subject ot t , ^i -a ..• ^ ■ .i i 
 
 speculation not ing whether a specmcation claims more than a patentee has a 
 "'""tedV^iiim ^'§'^* *° claim. If it does, the patent cannot be sustained. The 
 law will not permit a patentee to claim more than he has in- 
 vented. It will permit him to claim that which he has invented 
 by means of successful experiments or otherwise, and which he 
 
TKXLt^X V. KAbXUN AJNJL* AiVlUS. 73 
 
 has given to the public, but not that which is the mere subject Exchequek. 
 of his speculation or imagination, or of his endeavouring to grasp ~ ~ 
 more than he is entitled to. The specification goes on to say, 
 " Nor do I confine myself to a form or configuration or man- 
 ner of connecting together any other parts of the machine, but 
 I propose to vary the same." What variation ? One variation 
 that has been given in evidence, is the very machine in question, 
 namely, Hale's. The variation in Hale's is this: there is a 
 disc in the centre, and on the outside of the disc there are those 
 blades in certain curved forms, the object of which is, to propel 
 the water. The witness on the part of the plaintiff, thiit gen- 
 tleman who was called to-day, says, " That is no evasion of the 
 plaintiff's patent." Is it not ? Then is the patent merely for 
 putting side covers to that wheel of Hale's ? Is that wheel of 
 the plaintiff's, without the case, identified with Hale's patent, so 
 that the plaintiff cannot claim it ? Then, if that be so, is Mr. 
 Hale, who took out that patent, prevented from putting a side cover 
 on one side of his wheel and a side cover on the other side, if that 
 be more convenient ? But the witnesses who have been called to- 
 day say that it makes really little or no difference, and that it is 
 no essential part of the discovery. Then the plaintiff says, " The 
 manner in which I propose to obtain mechanical power, as 
 signified in the title of the patent granted unto me, is by using 
 water raised by this machine as a moving power." There is no 
 objection to that at all. Then he says, " In lieu of the ex- 
 hausting air pump, the machine may be primed by any more 
 convenient and ready method. In lieu of the stuffino- boxes, 
 joints may be made air-tight, by leather or any suitable means. 
 In some places I propose to place the air-tight case in the liquid 
 to be raised, dispensing altogether with the supply pipes a 
 and c c." He dispenses with the pipes a and c c, but he does 
 not dispense with any other part of it, which shows that 
 when he put it down into the fluid, what he meant to use was 
 the whole machine, minus the pipes a and c c ; that is, the com- 
 pressed air part of it, and to that he has a perfect right. " I 
 also propose to place the hollow wheel horizontally, or in any 
 other position as may be desirable. Having now explained the 
 manner in which my machine operates, or in which my inven- 
 tions act, and pointed out that the machinery, by which the said 
 inventions act, may be varied almost to an indefinite extent in 
 the manner of its construction, I shall now proceed to explain 
 more particularly what I claim as my invention or inventions. 
 I do not claim to be the discoverer that liquids may be raised 
 by centrifugal force, nor do I claim in any way the sole appli- 
 cation of macliinery for raising water or other liquids by cen- 
 trifugal force, except only when the same is used as a means of 
 
74 
 
 TETLEY'S PATENT. 
 
 Pollock C. B. 
 to the jury. 
 
 Specifications 
 are to be con- 
 strued in a 
 candid and fair 
 spirit; 
 
 and if any 
 mistake in one 
 part can be 
 corrected by 
 other parts of 
 the specifica- 
 tion, such cor- 
 rection should 
 be made. 
 
 introducing liquids into compressed air or other elastic fluids as 
 specified hereinafter in my fifth claim." I think that these words, 
 taken literally, would limit his claim to the case of compressed 
 air. But again, I say here that I think one is bound to view 
 this in a candid and fair spirit, which I think is the more 
 enlightened and the more liberal and just view which the modern 
 administration of the law has gone upon. I have no doubt that 
 fifty or sixty years ago Mr. Tetley would have been at once 
 nonsuited, but I cannot take that course. 
 
 It appears to me that there is some mistake in the passage 
 " I do not claim in any way the sole application of machinery 
 for raising water or other liquids by centrifugal force, except 
 only when the same is used as a means of introducing liquids 
 into compressed air, or other elastic fluids ;" and that it is not 
 consistent with the rest of the specification ; and that reading 
 the whole together, although no doubt that appears to exclude 
 him from what may be called the former part of his invention, 
 I think it d6es not practically exclude him, and I think it ought 
 not ; that point, however, is reserved for the opinion of the Court 
 above, I expressing no opinion upon it except this, that I think 
 we ought always to give effect to what a specification means, and 
 if there is a mistake which can be corrected by any other part of 
 the specification, I think we are bound to make that correction. 
 
 Then come the claims. " Now, therefore, First, I claim as 
 my invention and application the means of neutrafizing or di- 
 minishing the effects of suction at one side of the wheel, by 
 causing the same degree (or such other proportionate degree as 
 may be required) of suction at both sides thereof, whereby a 
 considerable saving of power is effected." There is no doubt 
 that is the great benefit of all these arrangements,-^Mr. Hale's, 
 the plaintiff's, Mr. Appold's, and all the others, where the wheel 
 is allowed to move freely in water, so that there shall be no 
 unequal suction on either side — no pressure on account of the 
 difference of the incumbent atmosphere, which is the great 
 point of the invention in all these machines. " Second, I claim 
 as my invention and application the means of increasing the 
 action of the machine by causing the liquid to enter the wheel 
 at both sides." That is scarcely different from the former part, 
 and that really is the principle of the invention. " Third, I 
 claim as my invention and application the means of economising 
 the power required to move the wheel, by causing the same to 
 be mounted on a solid shaft (or a shaft of a small diameter), 
 passing through its centre to carry the same." I do not think 
 it necessary to give my opinion on this. I own, at one time I 
 thought it a very inconsiderable part of the case ; if anything 
 turns on this it is reserved for the learned counsel to move upon. 
 
M. Vac. 18C2. 
 
 TETLEY V. E ASTON AND AMOS. 75 
 
 " Fourth, I claim as my invention and application to this ma- Exceequek. 
 chine, or to the hollow wheel, flexible and collapsible valves." I 
 say nothing about this now, but if anything turns on it, there is 
 no doubt that a patent has been produced here having valves at 
 the extremities of the arms; if that has any effect on the plaintiff's 
 patent, the learned counsel will have the benefit of it. " Fifth, 
 I claim as my invention and application the constructing of 
 machinery for raising and impelling water and other liquids, by 
 means of introducing such water or other liquids into compressed 
 air, or other suitable elastic fluids." This is the specific claim of 
 the second method of raising water, by sending it into com- 
 pressed air — compelling the compressed air, as the water falls 
 down from the wheel into the case, to press upon its surface, and 
 so make it rise up in the tube ; as to that there is no objection. 
 " Sixth, I claim as my invention the application of an exhaust- 
 ing air pump, to maintain a vacuum of air to such of these 
 machines as act by the maintenance of a vacuum of air in the 
 hollow wheel, and its supply pipes." I should have thought 
 that that claim was of no value whatever, and very likely might 
 be a serious objection to the specification. But there is no evi- 
 dence that an air pump was ever used before, and for aught I 
 know, in this cause, Mr. Tetley may have invented the air pump 
 — if he has, he is fully entitled to use it. Then he says, 
 " Seventh, I claim as my invention and application, where pipes 
 or channels are used to convey water or other liquids up to the 
 hollow wheel, to make such pipes or channels of such internal 
 sectional area, over and above the area of the opening or open- 
 ings into the hollow wheel, as will enable them to pass liquid to 
 supply the wheel at a greater rate than could be done if such 
 pipes or channels were not of such increased area." That I have 
 already adverted to, and I must say it appears to me from the 
 evidence that that raises a serious question, which I shall 
 not dispose of now, but it must be reserved for the opinion of 
 the Court above. " Eighth, I claim as my invention and ap- 
 plication the use of vanes or screws, whose oblique action upon 
 the water shall impel the water more rapidly out of the supply 
 vessels into the hollow wheel. Ninth, I claim the applica- 
 tion of the before-mentioned inventions, both when all used in 
 combination or when used severally." He calls every one 
 of these an invention, and then he claims, not only the use of 
 the whole in conjunction with reference to his machines, but he 
 claims the use of them severally, — each by itself. I must say, 
 it appears to me that that also constitutes a very questionable 
 point. I do not mean to decide it now, but I cannot help 
 thinking that the specification, when it comes to be examined 
 in the Court above, will turn out to be one of those specifica- 
 
76 TETLEY'S PATENT. 
 
 PoHocAC. B. tions which cannot be supported. I must say I very much 
 ej'^n/. j.ggpgj. ^jjjj^ ]^j._ Xetley, before he sat down to frame this, had 
 not consulted somebody, by whom he would have been told 
 with respect to these matters, " You had better not put it in 
 that way ; you have invented a machine ; you had better say, 
 ' I do it so and so ; and I claim to do it by means of that 
 machine,' " leaving it to the intelligence, and candour, and 
 fairness of a jury to protect him, if anybody was really inter- 
 fering with him in that machine. Now, gentlemen, having 
 told you the position of the cause in point of law, I shall now 
 call your attention very shortly to the facts which you have 
 to decide. Substantially you have to decide whether Hale's 
 method of having a wheel in a case discloses the principle of 
 Appold's pump. Is Appold working with the materials that 
 Tetley has supplied, or is he working with the materials that 
 Full effect Hale has supplied? That is the question. Because, in con- 
 toaninveution sidering patents; — I hope no one is more ready than I am to 
 but not so as to respect genius; to give the fullest effect to any discovery that 
 not coutem- <^ man may make, however humble his situation, however im- 
 plated by the perfect his education, and however little he may be able to set 
 
 patentee. * . , . .„ i i -i ,. i • ■ • -r 
 
 out. With scientific accuracy, trie details ot his invention; — 1 
 think we are bound to give, as far as possible, the fullest effect to 
 an invention; but, on the other hand, I think we are also bound 
 to oppose, in every possible degree, where the case calls for it, 
 the endeavours to make a patent grasp at and embrace a 
 number of matters that never were in the head of the inventor. 
 I have pointed out one or two such here. I cannot help saying 
 I think it is very likely that Mr. Tetley had not in his mind, at 
 the time when he took out his patent, any idea of using bent 
 arms. If he had, there is no doubt that his patent was worth 
 nothing, because he did not, in his specification, give the public 
 the full benefit of it. 
 A patentee is A m.an has no right to patent a principle, and then give to 
 bound to give ^j^g public the humblest Instrument that can be made from his 
 
 the public the _ 1 _ 
 
 full benefit of principle, and reserve to himself all the better part of it, and to 
 on the°sabject ^^^ "P ^'^^ improvements, and say to the world, " You are 
 ofhisinven- at liberty and may use the straight arm if you like; it will be 
 of very little use ; " and, if you believe the testimony of one of 
 the witnesses to-day, it would not do more than one third of 
 the work. I collect from what Mr. Tetley himself says, it 
 would not do half the work, for it would not do more than 
 2000 gallons a minute ; but, when he put the curved arms on, 
 it delivered 4000 gallons a minute directly. He said, " I had 
 no idea of it." This suggests probably to you, as it does to my 
 mind, to be on your guard against letting a patent extend in 
 this way, and extend to things that a man never dreamt of at 
 
 tion, 
 
THilLiJiJI ». JliASrUJN AJNJJ AiUUS. VV 
 
 the time he took out the patent. Had you, Mr. Tetley, at the Exchequer, 
 same time you took out the patent, any idea of the curved 7^ " 
 arms? " No ; " he says, " I had nothing of the kind." Then, 
 I say, you had not made the proper experiments on the subject ; 
 and you approached the drawing of your specification with a 
 degree of ignorance on the subject which I think no man ought 
 to have had when he took out a patent. Has a man a right to 
 discover an imperfect thing, such as these straight arms are, and 
 then to say, " Oh, but I claim them in every possible shape, 
 no man shall do this in any shape whatever ? " Have you ascer- 
 tained that there is any shape better than this ? " No, I have 
 not at all; I know nothing about it; but nobody shall do it." 
 What the effect of this is, you may suppose from what 
 you have seen in Court. I did not know, until to-day, how 
 a rotary wheel to raise water acted ; I never saw it in use ; 
 but the moment I had my attention directed to it, it struck 
 me immediately that the proper shape of the tubes out of 
 which the water was to go, was that curve which the witness 
 to-day produced, and which I think was handed to you. See 
 what the effect is : another person comes into the field, 
 and says, " Seeing Hale's patent, if this were apphed in that 
 particular manner, it would pi'oduce certain effects." He ap- 
 plies it ; then comes Mr. Tetley, and says, " You cannot have By making a 
 that ; and I will not only have the poor machine which I have | p°'i^„tee''can- 
 given to the public, and alone told them how to make, but I not claim im- 
 wlU claim every improvement ; and when anybody has made an ^vhich he was 
 improvement, I will say, ' You cannot do this ; ' and why ? ignorant at the 
 Because I have claimed every variety of configuration.' " I patent, 
 must say that it would be to give a reward to a man who had 
 rashly and ignorantly taken out a patent on a subject he had 
 not appreciated ; for Mr. Tetley tells you, that at the time he 
 took out the patent he had not the least idea of using curved 
 arms ; and yet curved arms are almost essential to the success 
 of the machine ; and according to the evidence of the witnesses 
 to-day, curved arms actually treble the effect of it. Then what 
 is the patent worth without the curved arms? The curved 
 arms are never mentioned in the specification. He says : " I 
 claim every possible shape in which it may be used hercaft e 
 I claim every species of effect which any man can possibly dis- 
 cover." I do not think that can be done. Now, gentlemen, 
 what you have to decide is, where you think the principle is to 
 be found which Appold has used ? If you think it is to be 
 found in Hale's patent, I think the defendants are clearly en- 
 titled to your verdict. I think all the rest is matter of law. Now 
 the question is really this : Which is Appold's Invention like, — 
 Hale's or the plaintiff's ? Certainly there is some evidence on 
 
78 TETLEY'S PATENT. 
 
 PollockC. B. both sides. I quite agree with what was said by Mr. Atherton, 
 
 to the jury ^ . . 
 
 that you will look and judge for yourselves ; — take the whole 
 into your consideration, — do not be tied down by the opinion 
 of any one, neither by the opinion of a witness who is giving 
 evidence upon a matter of fact which you can judge of as well 
 as he can, nor by the argument of counsel ; and last of all let 
 me say, by anything that has fallen from me, unless it goes 
 along with your sober and fair judgment. If you think the 
 defendants have used the plaintiff's invention, and that what 
 they have done is not capable of being identified with Hale's 
 patent, then the plaintiff is entitled to your verdict ; but if you 
 think that what they have done is fairly to be found within the 
 scope of Hale's invention, and that it has been taken from Hale 
 and not from the plaintiff, then the defendants are entitled to 
 your verdict. You will consider your verdict. 
 
 Verdict for the defendants. 
 
 Application for Leave to enter a Disclaimer and 
 Memorandum of Alteration. 
 
 Cor., Sir Richard Beihell, S. G. 
 April 13. 1853. 13th April, 1853. 
 
 Application for Mr. Tctlcy, the patentee, after the trial of the above case of 
 
 Disclaimer and Tetley V. Easton, applied to the Solicitor-General for leave to 
 
 Memorandum enter a disclaimer and memorandum of alteration of part of his 
 
 title and some of the parts of his specification, in pursuance of 
 
 the statute 5 & 6 W. 4. c. 83. s. 1. for the purpose of obviating 
 
 the defects in his patent. 
 
 The application was not opposed, and, accordingly. 
 
 Leave was granted. 
 
 [The disclaimer and memorandum of alteration was enrolled 
 on the 14th April 1853 (see ante, p. 39.), after which the follow- 
 ing action was brought for a subsequent infringement.] 
 
 In the Queen's Bench. 
 July 18 & 19. York Summer Assizes, 1853. 
 
 1853. 
 
 Charles Tetley v. James Easton and Charles Edwards 
 
 Amos. 
 
 Declaration, 1 
 10. May, )■ 
 1853. J 
 
 Cor., Wightman J., and a Special Jury. 
 
 The declaration stated the grant of the patent and the enrol- 
 ment of a specification, as in the declaration in the previous 
 
XJiiXiJil V. Jl/B.i3±UiN J\nu Alvx<Ji3. 
 
 action, and that on the 14th of April, 1853, the plaintiff, accord- 
 ing; to the statute, entered with the Clerk of the Patents of 
 England a disclaimer of part of the title of the said invention, 
 and a disclaimer and memorandum of alteration of parts of the 
 said specification : that the disclaimer and memorandum of 
 alteration was duly filed by the Clerk of the Patents, and en- 
 rolled with the specification : and that the defendants during 
 the term and after the entry and enrolment of the disclaimer 
 and memorandum of alteration, infringed the patent. 
 
 Pleas : First, a traverse of the grant by the patent. J 
 
 Secondly, that the plaintiff was not the true and first inventor. \ 
 Thirdly, that the invention vras not any manner of new 
 manufacture. 
 
 Fourthly, that the plaintiff did not within six calendar months 
 next after the date of the said letters patent cause to be enrolled 
 in the Court of Chancery an instrument in writing, under his 
 hand and seal, particularly describing and ascertaining the nature 
 of his said invention and in what manner the same was to be 
 performed. 
 
 Fifthly, Not Guilty. 
 Issue was joined on all the pleas. 
 
 Atherton Q. C, H. Hill Q. C, and Kemplay, appeared for 
 the plaintiff. 
 
 Knowles Q. C, and Hindmarch, for the defendants. 
 The letters patent, the specification (a), and the disclaimer (i), 
 were given in evidence for the plaintiff. 
 
 The greater part of the other evidence given in support of the 
 plaintiff's case was nearly the same as on the former trial ; the 
 infringement for which this action was brought being shown to 
 be subsequent to the entry of the disclaimer. 
 
 In support of his case on the plea of not guilty, the plaintiff 
 relied on that part of his specification which states that in 
 reference to the hollow wheel he does not confine himself to 
 "the use of hollow spokes, but in some cases proposes to sub- 
 stitute circular discs with a narrow water channel between, 
 and a flexible valve or valves in the circumference so as t 
 have a channel or channels in the interior thereof for the 
 passage of liquids, and adapted to neutralise the effects of 
 suction by having a corresponding or proportionate degree 
 of suction at each side." And it was contended that the 
 defendants used in their pump a wheel which was nothing 
 more than discs within the meaning of this part of the 
 specification; and that the curved blades added by the 
 
 Quekn's 
 Bench. 
 
 A. D. 1853. 
 
 Pleas, 
 
 3. JuJie, 
 
 1S53. 
 
 Plaintiff's 
 Case. 
 
 (a) Ante, p. 33. 
 
 (i) Ante, p. 39. 
 
80 TETLEY'S PATENT. 
 
 Plaintiff's defendants were nothing more than additions which would be 
 made by any ordinary workman reading that part of the speci- 
 fication and proceeding to carry it into effect, although the 
 specification did not in terms direct them to be inserted. 
 Several of the specifications given in evidence by the defendants 
 at the former trial, were, however, put into the hands of the 
 plaintiff's witnesses (with the plaintiff's consent,) and those 
 witnesses were cross-examined with reference to the inventions 
 they described being substantially the same as parts of the 
 invention claimed by the plaintiff. The specifications thus 
 given in evidence were those of Delap's Patent of 1821 (a), 
 Hale's Patents of 1830 (i) and 1831 (c), and Clark's Patent 
 of 1833 ((^), also Kuthven's Patent of 1841 (e), which was not 
 in evidence at the former trial. On cross-examination of the 
 plaintiff's witnesses, they admitted that a workman who would 
 from the description contained in the plaintiff's specification in- 
 troduce curved blades between the discs of the plaintiff's wheel, 
 might also introduce similar blades between the discs of Delap's 
 wheel, and that Delap's wheel would then be similar to plaintiff's 
 wheels, but when used as described in Delap's specification, the 
 water would not be admitted on both sides, and that it would 
 not therefore be balanced. It was also admitted that a workman 
 would know from the one specification as well as from the 
 other, that the wheel must have blades. 
 
 With respect to Hale's Patent of 1831, it was admitted 
 that water was introduced on both sides of the wheel, and 
 even if the water were admitted only on one side, the wheel 
 would be balanced ; and that if sides were put on the wheel, 
 figure 4., it would be a wheel with a sort of water channel. 
 
 That if sides were put to the wheel in Clark's patent, it 
 would be a colourable imitation of the plaintiff's wheel; that for 
 many purposes, if plaintiff's wheel were taken out of the 
 case, and Clark's wheel with sides introduced, it might work 
 usefully. And if such a wheel were made, it would be 
 an infringement of plaintiff's patent ; or if such a wheel had 
 been patented before 1846, plaintiff's patent would have been 
 an infringement of it. 
 
 The witnesses also stated that the plaintiff's wheel was 
 substantially the same as Euthven's (/), but improved in this 
 respect, that the water gets in and out of the machine more 
 freely ; and it was also stated that Ruthven's wheel was a 
 hollow wheel composed of side discs and blades, having a water 
 
 (a) Ante, p. 42. (c) Ante, p. 44. (e) Anie, p. 46. 
 
 (V) Ante, \i. i'i. (d) Ante,-pA5. (/) See Kuthven's wheel, a«<e, p. 47. 
 
TETLEY V. EASTON AND AMOS. 
 
 81 
 
 channel between, and the water, gas, or other media, was 
 admitted on both sides of the wheel, and thereby the wheel was 
 balanced. 
 
 At the close of the plaintiEf's case, Knowles and Hindmarch, 
 on behalf of the defendants, submitted that the defendant* were 
 entitled to a verdict. The plaintiff's specification is clearly 
 bad, because it describes and claims as part of the invention 
 a wheel which has been admitted by the plaintiffs own wit- 
 nesses to be old. According to the plaintiff's specification, 
 improvements in machinery for raising and impelling water 
 by centrifugal force are claimed, and, as part of that ma- 
 chinery, a wheel of a particular configuration is described. 
 Now, if that wheel is an essential part of the patent (as has 
 been admitted), and if it was old and there is nothing in the 
 specification to point out that it was old, the whole specification 
 is vitiated, inasmuch as the claim must be -taken as extending 
 to the wheel : and it appeal's from the evidence of the plaintiff's 
 witnesses that there is nothing new in the plaintiff's wheel, nor 
 in the admission of water on both sides of it. The plaintiff in 
 his specification should have stated that the wheel was not new 
 of itself; he claimed a combination, part of which might be 
 new, but part of which was certainly old, and he ought to have 
 pointed out what part of that combination was new and what 
 part was old, otherwise his specification is bad. 
 
 Atherton, for the plaintiff, contended that the wheel, by itself, 
 is no part of plaintiff's claim. 
 
 Wightman J. Look at the plaintiff's last claim : " I claim 
 the application of the before-mentioned inventions, both when 
 all used m combination, or when used severally." 
 
 Atherton. Notwithstanding these general terms in the spe- 
 cification, the claim must be understood, upon the reasonable 
 and fair construction to be put upon documents like this, as a 
 claim, not to any portion or fragment of any part of the inven- 
 tion or to any combined part of a machine, but to the whole 
 combination — to a machine or apparatus as a whole. 
 
 Qdeen's 
 
 IJENCH. 
 
 A. D. 1853. 
 
 Defendiint's 
 Case. 
 
 Wightman J. It may be taken as admitted that the ele- 
 ments are old, and the combination only new. During the 
 course of the trial, I have endeavoured to find from the specifi- 
 cation which of the parts the plaintiff claims, and I cannot find 
 that any part is disclaimed. If he had claimed the combination 
 only, it might have been held that the parts themselves of that 
 combination were not claimed. He now says that that is sub- 
 stantially expressed by what appears in his specification, but the 
 language seems to show that the whole of the parts were in- 
 
 G 
 
 IViyhtman 3, 
 to the Jury. 
 
82 
 
 Wightman J. 
 to the Jury. 
 
 TETLEY'S PATENT. 
 
 tended to be claimed. The last claim strongly strengthens me 
 in this construction. It is a principle of the patent law that a 
 specification must not be too large, and it has, I think, been 
 violated in this case. I shall, therefore, rule that the objection 
 taken by Mr. Knoioles is a fatal one, and that a verdict must 
 be entered for the defendants on the second and third issues. 
 
 Verdict accordingly for the defendants upon the 
 second and third issues. 
 
 Queen's Bench. 
 
 Cor.,ljorA Campbell C. J., Coleridge 3., Wightman 3., s^xd Erie 3. 
 
 Not. 7. 1853. Mich. Term, 1853. 
 
 Motion for rule Atherton moved* for a rule calling upon the defendants to 
 show cause why the verdict should not be set aside and a new- 
 trial had, on the ground of misdirection on the part of the 
 learned Judge. 
 
 Eule nisi granted. 
 
 Queen's Bench. 
 
 Cor., Lord Campbell C. J., Coleridge J., and Wightman J. 
 
 Mich. Term, 1853. 
 
 Knowles and Hindmarch now showed cause against the rule. 
 The question in this case is, whether the plaintiff's specification 
 claims the wheel as part of his invention, it having been ad- 
 mitted at the trial that such a wheel was not new. The same 
 question would have arisen if it had been proved that the wheel 
 was new, and the defendants were now contending that it was 
 not included in the specification. It is submitted that this 
 specification, even as altered by the disclaimer, does claim the 
 wheel as part of the plaintiff's invention, and that, being ad- 
 mitted to be old, the specification is too large in its claim, 
 
 parts of which 
 
 such combination is composed. A specification described a centrifugal pump, consisting of a 
 hollow wheel, revolving within a case furnished with proper pipes for conveying the water, 
 and the wheel was not disclaimed or stated to be old. Various modes of coustructitg the pumps 
 were described. The specification also contained (amongst other claims) one, in general terms, 
 to " the machinery for raising and impelling water," &c., and another to " the application of the 
 before-mentioned inventions, both when all used in combination or when used severally." Held, 
 that the specification claimed the wheel. 
 
 At the trial of an action for the infringement of the patent, evidence having been given that a 
 wheel substantially the same had been used before the date of the patent for acting in a similar 
 manner upon water and air, though not applied in precisely the same way, the Judge directed a 
 verdict to be entered for the defendants on pleas putting in issue the novelty of the invention. 
 Held, that the direction was right. 
 
 Nov. 24. & 25. 
 1853. 
 
 A specification 
 describing a 
 patent inven- 
 tion must, 
 unless a con- 
 trary intention 
 appears, be 
 deemed to 
 claim all that 
 it describes, 
 not only as a 
 whole taken in 
 combination, 
 but also all 
 the essential 
 
±lii±LiJliX V. J^Ji.i3 J.yjl'^ Anu AIYIUP. Q0 
 
 and therefore cannot be supported. The general rule is, that Queen's 
 
 where a specification describes a machine composed of several ' 
 
 things, it must be taken prima facie to claim, as part of the in- M. T. 1853. 
 yention, whatever is nol distinctly disclaimed. In Hindmarch on 
 Patents (a), the rule is thus laid down : — "If the specification 
 describes more than the invention itself, it must clearly point out 
 which of the things described are old, and which of them are 
 new ; and if the subject of the patent privilege be an addition 
 to, or an improvement upon, an old machine or other article, the 
 specification must not describe the whole machine or article 
 without distinguishing between the old and new parts; for 
 the proviso in the patent requires that the invention not only 
 be ascertained, but ascertained with particularity, and it is 
 impossible to contend that an invention is so ascertained by a 
 specification, if it describes without distinction many things 
 which are old, as well as the invention itself." And in support 
 of this assertion, Williams v. Brodie (b) is there referred to, and 
 the same principle has obtained in the more recent case of Holmes 
 V. The London and North Western Railway Company, (c) In the 
 case of Smith v. The London and North Western Railway Com- 
 pany (d), the question was, whether the defendants, by adopting 
 a part of the invention, were guilty of an infringement of the 
 patent, and it was held by this Court that they were, inasmuch 
 as a general claim to the patented article extended to each part 
 of it. In the present case the title of the patent is for " Im- 
 provements in machinery for raising and impelling water." 
 Now the most important part of the machine described in this 
 specification, which either raises or impels water, is the wheel, 
 and if a contrary intention on the part of the patentee does not 
 appear, the specification must be deemed to claim all the im- 
 portant parts of that machinery for "raising and impelling 
 water." It is therefore submitted that, unless this wheel be 
 disclaimed by some express words in the specification, it must 
 be considered as included in the patentee's claim. The only 
 words which can be relied on by the plaintiff, as being a dis- 
 claimer of the wheel, are those preceding the claims : " I do 
 not claim to be the discoverer that liquids may be raised by 
 centrifugal force, nor do I claim in any way the sole application 
 of machinery for raising water or other liquids by centrifugal 
 force; " but these words have not the effect of excluding the 
 wheel, which all through the specification is treated as an es- 
 sential part of the machine, and was admitted to be so by the 
 plaintiff himself in his evidence at the trial. The specification 
 
 fa) Hindmarch on Patents, pp. 183, 184. (c) Ant^, p. 13. 
 
 (J) Dav. P. C. 96. (cQ 2 El. & B. 69. 
 
 G 2 
 
84 
 
 TETLEY'S PATENT. 
 
 Argument on 
 rule. 
 
 Argument in 
 upport. 
 
 does not in terms state that it is only the combination which is 
 claimed ; so far from this being so, in his last claim the patentee 
 says, " Fourthly, I claim the application of the before-mentioned 
 inventions, both when all used in combination or when used 
 severally." It would be difficult to find words better suited 
 for a claim to the whole and each of the parts of the machine 
 than those used in this specification. It is therefore contended 
 by the defendants that the learned Judge was right in his direc- 
 tion, and that this rule must be discharged. 
 
 Atherton, Hugh Hill, and Kemplay, in support of the rule. 
 The chief object of the plaintiiFs invention was to counteract 
 certain defects which, up to that time, had existed in the wheels 
 used for raising water by centrifugal force, and he accomplished 
 this end by combining certain machinery with the wheel. It is 
 not, nor can it be denied, that a wheel in one or other of the 
 forms described in the specification is an essential part of the 
 invention, or that wheels of both the forms there described were 
 known and used before the date of the plaintiflp's patent for the 
 purpose of impelling water by means of centrifugal force ; but 
 thp plaintiff does not claim as his invention the wheel alone, or 
 the mere use of it alone, to impel water ; but what he does 
 claim is, the combination of certain parts, so as to balance the 
 wheel by admitting water on both sides of it. The wheel, until 
 combined with these other parts, was put out of equilibrium by 
 the vacuum being at one side only, and this the plaintiff has 
 neutralized or diminished by causing the same degree of vacuum 
 on both sides thereof. It is also not denied that, if a specifi- 
 cation describes a combination, parts of which are old and parts 
 new, the patentee must be taken to claim in respect of them all, 
 unless he makes it appear that there are some which he does 
 not claim. [Lord Camphell C. J. Unless he makes that 
 clearly and distinctly appear. J That is the general rule ; but 
 he may do this without express words of disclaimer. As long 
 as the intention of the patentee is to limit his claim, if that is 
 fairly to be collected from the interpretation of his specification, 
 the Court will not stand nicely or rigorously on the insertion of 
 words of actual disclaimer. Where the general description of a 
 number of processes making up a machine is followed by claims 
 to certain parts, these claims are equal, as a matter of interpre- 
 tation, to a disclaimer of all that is not comprised precisely in 
 the claims. It is, therefore, quite sufficient if, upon a reasonable 
 construction of the specification, the claim is so limited ; and the 
 question is, whetlier such appears to be the case here. It is 
 submitted that this specification, taken with the disclaimer 
 (which by the statute 5 & 6 Will. 4. c. 83. sec. L, is to be 
 
TETLEY V. EASTON AND AMOS. 85 
 
 taken as part of the specification), satisfies that rule. The spe- Queen's 
 
 cification distinctly shows that the patentee ''does not in any ' 
 
 way claim the sole application of machinery for raising water or M. T. 1853. 
 other liquids by centrifugal force, except only when the same is 
 used as a means of introducing liquids into compressed air." It 
 has not been contended on the other side that this application 
 of compressed air is old. The first and second claims distinctly 
 show that no claim is made to the wheel alone. The first 
 claim is confined to " the means " {i. e., the means before de- 
 scribed) " of neutralizing or diminishing the effects of suction on 
 one side of the wheel, by causing the same degree of suction on 
 both sides thereof, whereby a considerable saving of power is 
 effected." Then the second claim is confined to " the means " 
 " of increasing the action of the machine by causing the liquid 
 to enter the wheel at both sides." The essential part of the 
 third claim is the use of compressed air ; and the patentee 
 claims " the constructing of machinery for raising and impelling 
 water and other liquids, by means of introducing such water and 
 other liquids into compressed air in virtue of centrifugal force 
 imparted thereto by such machinery.'' [Lord Campbell C. J. 
 You must show that the wheel is no part of the plaintiff's 
 patent. Now, if the wheel had been new, could not the plain- 
 tiff, with this specification, have maintained an action against 
 any one who used it?] It is true that the water is to be 
 introduced into the compressed air by centrifugal force ; but 
 the wheel Itself is in effect disclaimed by the patentee stating 
 that he does not " claim to be the discoverer that liquids may 
 be raised by centrifugal force ;" and that he does not "claim in 
 any way the sole application of machinery for raising water or 
 other liquids by centrifugal force, except only when the same is 
 used as a means of introducing liquids into compressed air." 
 This exception is expressly referred to in the third claim, which 
 is a claim for the combination of the machinery before described 
 as a means of introducing water and other liquids into compressed 
 air in virtue of centrifugal force imparted thereto by such ma- 
 chinery. [ Coleridge J. Such centrifugal force cannot be produced, 
 except by the use of the wheel. Should he not have said, there- 
 fore, that, the wheel was old ?] The wheel is only claimed as a 
 means and for the purpose of introducing the water into the com- 
 pressed air, not otherwise. The previous disclaimer destroys the 
 claim for anything but that particular combination ; and this 
 distinguishes this case from Holmes v. The London and North 
 Western Railway Company, for in that case the patentee liad 
 described his turn table in such a manner, that it was not 
 possible from the specification to distinguish which of the parts 
 
 G 3 
 
86 
 
 TETLEY'S PATENT. 
 
 Arjjument oh 
 rule. 
 
 were old, and which he claimed as new. This remark also 
 applies to the authorities which have been referred to in the! 
 passage cited from Hindmarch on Patents. [Lord Campbell C. J. 
 If the wheel had been new, Smith v. The London and North 
 Western Railway Company would have been a very strong 
 authority in your favour to prove an infringement ; and I thinlc 
 it is equally strong against you to show that the wheel is 
 claimed.] The plaintiff could not say that the use of the wheel 
 by itself is an infringement, from the limited nature of the 
 claim in this specification, but if he uses it in combination with 
 the other contrivances which are described in the specification, 
 he undoubtedly does commit an infringement of the patent. It 
 has been attempted by the other side to show that the wheel is 
 the essential part of the whole machine, and, to a certain extent, 
 this is so, but the claim is for the improvement in its application. 
 The wheel is necessarily introduced in the specification when 
 describing the combination, but it is disclaimed except when 
 used as part of that combination. Suppose a means of reducing 
 the friction of an ordinary carriage wheel were invented, the 
 patentee might claim it without claiming the invention of the 
 wheel itself, and he might do so by using language very similar 
 to that of the specification now before the Court. So also 
 where a patentee is the first to apply wheels to railway carriages, 
 he may support his specification, in which he says that he does 
 not claim the use of wheels in ordinary carriages, but only when 
 applied to railway carriages. The fourth and last claim is for "the 
 application of the before-mentioned inventions, both when all 
 used in combination, or when used severally." The construction 
 to be put upon this depends upon the sense in which the word 
 "Invention" has been used throughout the specification. It is 
 therefore submitted that the specification clearly and distinctly 
 explains that the wheel for raising water by centrifugal force, 
 by itself, is not claimed as the invention of the plaintiff^ and that 
 this rule must be made absolute to set aside the verdict. 
 
 Juilgmenf. LdRD CAMPBELL C. J. I am of opinion that this rule must 
 be discharged. It is quite clear that the patentee in his specifi- 
 cation has described the wheel as part of his machinery for rais- 
 ino- and impelling water and other liquids. This appears both 
 from the description of the machinery and from the diagram. 
 Now, it was proved at the trial, and is now admitted, that the 
 wheel itself is not new. That being so, prima facie the specifi- 
 cation is bad, because prima facie all must be taken to be 
 claimed which is described as part of the machinery. It then 
 lies on the patentee to show that he has clearly pointed out in 
 
TETLEY V. E ASTON AND AMOS. 87 
 
 his specification what is new and what is old, — what he claims as Qtoen's 
 
 part of his invention, and what he does not so claim ; for the ' 
 
 rule is, that this must be done clearly. I am of opinion that M- T- 1853. 
 there is nothing in this specification to show that the wheel is not A part so de- 
 comprehended in the claim ; and if it were new, it would be specification, 
 protected by the patent. It is true that there is a disclaimer by that, if new, it 
 
 PI . 1 • . T 1 1 • J would be pro- 
 
 the patentee or his being the discoverer that water may be raised tected by the 
 by centrifugal force ; but that does not amount to anything like pate°t. "'"st 
 a clear disclaimer of the wheel ; and when we come to the third claimed. 
 and fourth claims, we find that the wheel is expressly claimed. 
 In the third claim, the wheel clearly is a part of the " machinery 
 for raising and impelling water by means of introducing such 
 water into the compressed air," and it does so " in virtue of cen- 
 trifugal force imparted thereto by such machinery." Then the 
 fourth claim includes " the application of the before-mentioned 
 inventions, both when all used in combination, or when used 
 severally." Now, according to the law laid down in Holmes v. 
 The London and North Western Railway Company, there must 
 be a clear explanation in the specification, so that the public 
 may know what is claimed and what is not claimed. Had the 
 wheel been new, and the plaintiff had been suing for an 
 infringement of the patent by the mere use of such a wheel, 
 this fourth claim would have furnished him with a most powerful 
 argument to show that the patent had been infringed ; and the 
 action would clearly have been maintainable, according to the 
 law as laid down in Smith v. The London and North Western 
 Railtoay Company. But, even supposing that this were not so, 
 the exclusion of the wheel is at least equivocal, and I think 
 that the speci^cation is so ambiguous as to make the patent 
 bad.. 
 
 Coleridge J. I am also of opinion that this rule must be 
 discharged. We are to see what does the plaintifi^ claim aflSrm- ^ patentee 
 atively, and what does he disclaim. He says that he does not to claim all 
 
 claim in any way the sole application of machinery for raising described m 
 . . ° his specifica- 
 
 water or other liquids by centrifugal force, except only when tion, unless he 
 
 the same is used as a means of introducing liquids into com- jlisclaims what 
 
 pressed air. He does, therefore, claim it when it is so used, „ , 
 
 111- II. 1-1 1 c 1 ^^^^ ™''y ^® 
 
 and that being the claim, we are to see what is the rule of law modified in 
 
 applicable to this case ; and I will take it as well expressed by [uin™ u^i- 
 
 ^r. Atherton, in his argument, that if a specification includes versally known 
 
 what is old as well as what is new, the patentee must be taken 
 
 to claim all, unless he clearly makes it appear that he does not 
 
 claim as his invention that which is old. Indeed, this rule may, 
 
 perhaps, admit of some modification in favour of the patentee, in 
 
 G 4 
 
88 TETLEY'S PATENT. 
 
 Judgment, respect of things incidentally mentioned which are old and univer- 
 sally known to be so; for, if he had occasion to introduce a hinge 
 into his machinery, it would be absurd to expect that he should 
 point out that the hinge was not new. But here there is an elabo- 
 rate description given of the wheel as one of the things to be used 
 in working the invention — it is one of the things which go to 
 make up the machinery. Then, has he anywhere stated that this 
 wheel, which is admitted to be old, is old? or does he treat it as 
 an old invention, and such an invention as was too notoriously 
 old to require disclaimer? On the contrary, we find an ela- 
 borate description of the wheel ; and it is introduced into the 
 patent as one of the things necessary to make up the machine. 
 Now, we have heard three very ingenious arguments in defence 
 of the specification : yet, in no one of them has the counsel 
 ventured to say that any one reading this specification would 
 think himself at liberty to use this wheel, unless he happened 
 to know, aliunde, that it was not new. According to Mr, 
 AthertoTLS own rule, the claim comprehends too much, and I 
 therefore think that the specification is bad, and that the rule 
 must be discharged, 
 
 WiGHTMAN J, It clearly appeared that the plaintiff" claimed 
 machinery composed of several elements, parts of which were old 
 and parts new. It is a settled rule of law, that in describing such 
 an Invention It should be made clear on the face of the specification 
 that the patentee does not claim as new what is old. Here the 
 invention, as described, would no doubt include the wheel, unless 
 there was something to show that the patentee excluded it from 
 being considered as a part of his Invention. Looking at the spe- 
 cification the wheel Is the primary part of the niachlne. It de- 
 scribes the mode of constructing the wheel, and says, " In re- 
 ference to the hollow wheel, I do not confine myself to the num- 
 ber or to the use of hollow spokes, but in some cases I propose 
 to substitute circular discs," &c. ; thus explaining that the con- 
 struction of the wheel Is to vary under diff'erent circumstances, 
 Now, It Is admitted that the wheel is not new. Can it be said 
 that the epecificatlon shows It Is not so ? There Is nothing in 
 the seneral disclaimer to show that he disclaims the wheel. The 
 wheel is not claimed, indeed. In the first and second claims ; but 
 In the third he claims the constructing of machinery for raising 
 and Impelling water into compressed air in virtue of centrifugal 
 force imparted thereto by such machinery ; and, looking at the 
 diagram, any person would conclude that the wheel was claimed 
 as part of the invention. I have heard no answer to this. 
 There is no doubt that, upon the authority of the cases cited, 
 the claim is too large, and that upon this specification an action 
 
B AXEMAN AND MOOKE'S PATENT. ' 89 
 
 might have been maintained for an infringement by the use of Qheen's 
 
 ,1 111 Uench. 
 the wheel alone. 
 
 Erle J. I did not hear the whole of the argument, and M. T. i853. 
 
 therefore abstain from pronouncing an opinion. 
 
 Kule discharged. 
 
 BATEMAN AND MOORE'S PATENT. 
 
 [No. 12,032.] 
 
 Lettees Patent, bearing date 18th January 1848, granted to Patent, 
 John Fredericlc Bateman and Alfred Moore for " Improve- 
 ments in Valves or Plugs for the Passage of Water or other 
 Pluids." 
 
 To all to whom, &c. I, the said John F. Bateman, on Specification. 
 behalf of myself and of the said Alfred Moore, do hereby 
 declare the nature of our said invention, and in what manner 
 the same is to be performed, to be particularly described and 
 ascertained in and by the following statement, and the draw- 
 ings (a) hereto annexed ; that is to say : — 
 
 Our improvements in valves or plugs for the passage of 
 water or other fluids, apply principally to cocks or valves, used 
 for drawing of water from the main or service pipes of Water 
 works, for the supply of mills, works, or buildings, for the 
 extinction of fire, the watering of roads, streets, or gardens, the 
 irrigation of land, the cleansing of vvater pipes, the flushing of 
 sewers, and other similar purposes, and relate — First, to the 
 use and application, for the purpose of drawing off water or 
 other liquids, of a valve (of a globular or other form), of a 
 specific gravity lighter than water, and constructed of of 
 covered with vulcanized India rubber, gutta percha, or other 
 compressible elastic substance, the closing of such valve being 
 effected by the pressure of the water. Secondly, to the use and 
 application, for the same purposes, of a valve of a globular form, 
 of the same or greater specific gravity than water, constructed 
 or coated as above described, and closed in a similar manner. 
 
 Thirdly, to opening valves for the passage of fluids by means 
 of a moveable opening key, consisting of a hollow tube or pipe 
 with proper adjuncts, so a])plied as, without the aid of any 
 thread or screw Upon the barrel, or any fixed part of the valve 
 itself, or the parts necessarily jiermanently connected therewith, 
 to force the valve open against the pressure of the fluids, the 
 
 (a) For the drawings see Lond. Jour. vol. xxxvi. C. J. p. 253. and pi. 12. 
 
90 BATEMAN AND MOORE'S PATENT. 
 
 Specification, key Or tube being so constructed that the fluid, when released, 
 shall pass off through the said tube. 
 
 The practical application of our improvements will be readily 
 understood by referring to the drawing accompanying these 
 presents, in which, by way of illustration, one mode of applying 
 the -opening key is exhibited as applicable to a street cock or 
 plug. Fig. 1. shews our improved valve or cock in section, 
 shewing also the opening key or tube in elevation and dis- 
 connected therefrom. Fig. 2. is a section shewing the valve , 
 open, and the opening key connected thereto ; and fig. 3. is a 
 front elevation of the v^lve box or barrel, and the opening key 
 disconnected. The drawing is made about one-fourth the real 
 size, and has figures and letters of reference marked thereon 
 corresponding with the following explanation thereof: a a is 
 the branch or connecting pipe from the water " main," to the 
 flange of which is bolted the valve box b b the neck of which 
 is closed by means of the globular val ve c, formed of or coated 
 with vulcanized India rubber, gutta percha, or other com- 
 pressible elastic material, the pressure of the water being suf- 
 ficient to keep the valve closed ; d d ia the discharge or 
 drawing off tube, which is furnished at its upper end with 
 a screwed nozzle e, for screwing on the hose pipe ; ff is a 
 bracket fixed upon the elbow of the pipe d; this bracket carries 
 the internal screwed nut ff (see fig. 2.), which turns loosely 
 therein, but is kept in its place by a pin h (see fig. 1.), working 
 in a groove upon the outside of the nut ff. Upon the upper 
 part of the nut ff is fixed the winch handle i; k is a screw, 
 the upper part of which works in the nut ff, the lower part 
 being squared and working through the guide I. At the lower 
 end of the screw k is attached by a joint the catch m. When 
 it is desired to discharge or draw off water from the " main " 
 through the plug or cock, the opening key is taken to the plug, 
 and the part n thereof is lowered into the neck of the valve 
 box b b until the lower end of the tube rests upon the valve 
 c, at the same time that the lower end of the catch m (having 
 been sufficiently depressed prior to the insertion of the tube) 
 passing outside, or sliding over the projecting rim p upon the 
 valve box, falls by its own gravity under such projecting rim, 
 thus locking or attaching the opening key or tube to the valve 
 box. The opening key being thus attached, the turning of the 
 winch handle i will force the tube downwards, and gradually 
 depress the valve c when the water will flow freely around the 
 valve and upwards through the discharge tube d. Fig. 2. 
 shews the valve open. When it is desired to withdraw the 
 opening key or tube and close the valve, the handle must be 
 
BATEMAN AND MOOKE'S PATENT. 91 
 
 turned in the reverse direction, which will allow the tube d to Specification. 
 rise in the neck of the valve box b, being forced out of the 
 position shewn in figure 2., by the pressure of the water acting 
 on the ball or valve c, until the valve closes the aperture. The 
 turning of the winch handle being then continued, the pro- 
 jecting part q of the catch acting against the flange r upon the 
 discharge tube, will throw the catch into the position seen in 
 fig. L, when the key or tube may be withdrawn, the catch 
 passing clear of the rim p^ The opening key may be attached 
 to the plug or cock in other ways, without the aid of screws, 
 such as by projecting lugs or ears, under or by means of which 
 the opening key or the tube through which the water is drawn 
 off may be secured or connected, or in various other ways by 
 which the same purpose would be effected, and which would 
 readily suggest themselves to a practical mechanic. The valve 
 just described will allow of the escape of air from water pipes 
 by the falling or opening of the valve whenever the water is 
 not in contact with the valve, or the pressure sufficient to keep 
 the valve closed. 
 
 Having now described the nature and objects of our said Claimi. 
 improvement, we would remark that we claim as our invention, 
 
 [First] (a), the application for the purpose of drawing or 
 letting off water or other fluids of a valve of a less specific 
 gravity tlian water, constructed of or coated with vulcanized 
 India rubber, gutta percha, or other suitable compressible 
 elastic material, and which closes, or is kept closed, by the 
 pressure of the water. 
 
 [Secondly] [or] (a), the application for similar purposes of a 
 globular valve of the same or greater specific gravity than 
 water, and constructed or coated as above described, which 
 without mechanical aid will close by the pressure of the water. 
 
 [Thirdly] \_and'\ (a), the opening of valves by means of a key 
 or tube, so applied as to force the valve open against the pres- 
 sure of the water or other fluid, and through which key or tube 
 the fluid escapes, such key or tube being attached to the box or 
 barrel, or other fixed part of the valve, without the aid of a 
 thread or screw on such box or other fixed part. In witness, &c. 
 
 The patentees afterwards entered with the Clerk of the Patents of Eng- 
 land the following disclaimer and memorandum of alteration, which was 
 enrolled with the specification on the 2nd of March, 1854 : — Dischimer 
 
 and Memuran- 
 DlSClAIMEB AND Memokandum Or Altbhation. tlum of Altera- 
 
 To all to whom, &c. Whereas we, the said J. P. Bateman and A. Moore, n J M ■ is"-! 
 lately brought an action in the Court of Exchequer at Westminster, for an 
 
 (a) The words between bi'aokets in disclaimer and memorandum of al- 
 Koman type were struck out, and teration. 
 those in Italic were inserted, by the 
 
92 
 
 BATEMAN AND MOOKE'S PATENT. 
 
 Disclaimer. infringement of the above letters patent against a certain defendant, T. W. 
 
 A. D. 1854. Gray, and obtained a verdict against tlie said defendant : And wliereas 
 upon an unsuccessful application by the defendant to the said Court to set 
 aside such verdict, the Lord Chief Baron, in delivering the judgment of the 
 said Court upon that application, intimated that there was weight in an ob- 
 jection urged on behalf of the defendant, that the invention, as claimed in 
 and by the specification, was not the combination of parts which the jury 
 had found to be new and to have been invented by us, but the several 
 parts of such combination : And whereas the said Lord Chief Baron, in 
 delivering his said judgment, suggested that the plaintifis would do well to 
 consider whether it might not be advisable to apply to the law officer of 
 the Crown to prevent that question as to the specific£),tion arising at any 
 future time : And wher^s we, the said J. F. Bateman and A. Moore, are 
 desirous, for the reasons aforesaid, to enter a disclaimer and memorandum 
 of alteration as hereinafter contained and expressed, and have obtained 
 leave of Sir Kichard Bethel!, Knt., her Majesty's Solicitor- General, to enter 
 such disclaimer and memorandum of alteration : Now know ye, that we, 
 the said J. F. Bateman and A. Moore, do hereby alter the said specification 
 by omitting the words "First," "Secondly," and "Tliirdly" at the com- 
 mencement of the claiming clauses at the conclusion of the said specification; 
 and in place of the said word " Secondly," we do substitute the word "or"; 
 and in place of the said word " Thirdly," we do substitute the word " and," 
 so that the concluding paragraph of the said specification, as the same will 
 stand when altered as aforesaid, will be as follows : — " Having now de- 
 scribed the nature and object of our said improvements, we would remark 
 that we claim as our invention the application for the purpose of drawing or 
 letting oiF water or other fluids of a valve of a less specific gravity than 
 water, constructed of or coated with vulcanized India rubber, gutta percha, 
 or other suitable compressible elastic material, and which closes, or is 
 kept closed, by the pressure of the water ; ob the application, for similar 
 purposes, of a globular valve of the same or greater specific gravity than 
 water, and constructed or coated as above described, which, without me- 
 chanical aid, will close by the pressure of the water ; and the opening of 
 valves, by means of a key or tube so applied as to force the valve open 
 against the pressure of the water or other fluid, and through which key or 
 tube the fluid escapes ; such key or tube being attached to the box or bar- 
 rel or other fixed part of the valve, without the aid of a thread or screw on 
 such box or other fixed part." 
 In witness, &c. 
 
 Registration The following is a description of 
 
 given in evidence the spherical- valved hydraulic ram 
 by the Defend- registered by Mr. Freeman Roe, on 
 ant. the 6th December, 1847, to which 
 
 reference is made by the defendant 
 in the case of Bateman and Moore 
 V. Gray. For the drawing see Me- 
 chanic's' Magazine, vol. xlviii. p. 1 2. : — 
 The air-vessel and the body of the 
 ram upon which the air-vessel and 
 pulse-valve are fixed are constructed 
 in the usual manner. The valves, 
 both of the air-vessel and pulse- valve, 
 are of the description known as the 
 spherical valve, but possess the pe- 
 culiarity of being elastic or flexible. 
 
 consisting of vulcanized India rubber 
 or gutta percha, which tbrms an air- 
 tight and fluid-tight obstruction to 
 the return of the fluid after having 
 passed through the valve into the 
 air-vessel. The supply-pipe is com- 
 posed of several lengths of piping, 
 joined by passing a ring of vulcanized 
 caoutchouc or gutta percha round 
 the small end of one pipe and insert- 
 ing it into the large end of the next 
 preceding length, and so on until a 
 sufficient length has been obtained. 
 The injection-pipe is joined in a 
 similar manner. 
 
BATEMAN AND MOORE v. GRAY. 93 
 
 In the Exchequer. 
 Nisi Prius Sittings for Middlesex after Hilary Term, 1853. 7th Feb. 1853. 
 
 John Feederick Bateman and Alfred Moore 
 V. Thomas "Wood Gray. 
 
 Cor,, Martin B. and a Special Jury. 
 
 The declaration stated that the plaintiffs were the first and c Declaration. 
 true inventors of a certain new manufacture, that is to say, of > issa*^' 
 " Certain improvements in valves or plugs for the passage of 
 water or other fluids;" and thereupon her Majesty, by letters 
 patent, granted to the plaintiffs the sole use of the said invention 
 for the term of fourteen years, from the 18th of January 1848, 
 subject to a condition that the plaintiffs should, within six ca- 
 lendar months next after the date of the said letters patent, 
 cause to be enrolled in the High Court of Chancery, an instru- 
 ment in writing under hand and seal, particularly describing 
 and ascertaining the nature of their said invention, and in what 
 manner the same was to be, and might be, performed ; and that 
 the plaintiffs did, within the time prescribed, fulfil the said con- 
 dition, and that the defendant, during the said term, did infringe 
 the said patent right. 
 
 The defendant pleaded : First, Not guilty. C Pleas. 
 
 Secondly, that the plaintiffs were not the first and true } igsa.""' 
 inventors of the said supposed new manufacture, as in the decla^ 
 ration alleged. 
 
 Thirdly, that the said alleged invention was not an invention 
 of any manner of new manufacture which others, at the time of 
 making and granting the letters patent, did not use. (a) 
 
 Issue was joined on all the pleas. 
 
 The defendant gave notice of the following objections to the Notice of 
 
 1 • ^•ir f i i Objections. 
 
 plamtiiTs patent : — 
 
 That the plaintiffs were not the true inventors of those parts 
 of the invention included in the first and second claims. 
 
 That Freeman Roe was the inventor of the said parts, and they 
 were publicly used, made, and exposed to sale by him before the 
 patent was granted to the plaintiffs at No. 70. Strand, in the 
 county of Middlesex, on the 6th of December, 1847. 
 
 (a) The want of aplea, putting in p. ]3.) seems to show that the patent 
 
 issue the sufficiency of the specifica- could not have been sustained ; and 
 
 tion, was the cause of much incon- Tttley v. Easton (anti, p. 82., but de- 
 
 venience to the defendant in the cided subsequently to Bateman v. 
 
 subsequent proceedings. Had such a Gray), seems to overrule the decision 
 
 plea been on the record the case of in the latter case. The specification 
 
 Holmes v. The London and North was amended \>j disclaimer after the 
 
 Western Raihvay Compavy, (ante, judgment. See ante, p. 91. 
 
94 BATEMAN AND MOORE'S PATENT. 
 
 Notice nf That the parts claimed by the plaintiffs' first and second 
 
 Objections. claims are respectively described in the said Freeman Roe's 
 registration, dated the- 6th day of December 1847, as "Im- 
 provements in valves," which registration was made on or about 
 its said date, and is to be seen at No. 70. Strand aforesaid. 
 
 That the last-mentioned parts were respectively colourable 
 imitations of what the said Freeman Eoe so registered. 
 
 That the stand-pipe used by the defendant is similar to those 
 used as stand-pipes to fire-cocks for drawing off water by one 
 Edward Chrimes, at E-otherham in the county of York, and at 
 the Sheffield Waterworks, Sheffield, in the said county of York, 
 before the plaintiffs obtained their patent. 
 
 That the stand-pipe used by the defendant is similar to those 
 used by the London Fire Brigade in "Watling Street, in the 
 city of London, before the granting of the plaintiffs' patent; 
 such user was in manner following : the stand-pipe was let into 
 the fire-plug in the street, and fixed thereto without the aid of 
 a screw, on the box or barrel of the plug, through which stand- 
 pipe a spindle is used to open a valve for the passage of water, 
 and formed part of the fire-plug. 
 
 That a stand-pipe similar to the one used by the defendant 
 was described by Mr. Baddeley in the Mechanics^ Magazine of 
 the 9th of May, 1837. 
 
 That the London and North Western Railway Company, at 
 their watering-cranes at the Camden JDown, Watford, Tring, 
 and Wolverton stations respectively, and the Great Western 
 Railway Company at the Bristol goods station, in the year 
 1846, and since and before the granting of plaintiffs' patent, 
 used stand-pipes similar to those used by defendant ; and such 
 stand-pipes were used by such companies in letting off water to 
 wash carriages and supply the tenders with the water required 
 for the working of the engines. 
 
 That stand-pipes attached to valves called Kingston's valves, 
 and used by Messrs. Bolton and Watts, at London Street, in the 
 city of London, and by Messrs. Miller and Ravenhill, of Glass- 
 house Fields, in the county of Middlesex, and by Messrs. Mauds- 
 ley, Field, and Co., of Westminster Road, in the county of Surrey, 
 before the granting of plaintiffs' patent, were respectively 
 similar to that used by defendant ; and the said stand-pipe with 
 Kingston's valve was used as a valve for the passage of water, 
 having a stand-pipe attached, with a spindle passing through it 
 for the purpose of opening the valve. 
 
 That the principle of balls as valves, and balls of less specific 
 gravity than water used for valves, was known and used by 
 defendant, before the date of plaintiffs' patent, at No. 10. Wark- 
 
BATEMAJ^J AIMU MOOHJE j;. GKAX. t)5 
 
 worth Terrace, Limehouse, in the county of Middlesex, and Exchequeb. 
 were also patented and used by John Read, at his premises at g- y^TTsss 
 Horsmonden in the county of Kent, as a valve for the passage of 
 water, and that the same was described in the specification of 
 the said John Read, enrolled as the specification of his patent, 
 in the month of September 1820. 
 
 That stand-pipes similar to that used by defendant were, 
 before the date of plaintiffs' patent, used for letting off water 
 by Mr. Hawksley, of Great George Street, Westminster, at the 
 Nottingham Waterworks, at Nottingham, in the county of 
 Notts, being fitted on without the aid of a screw on the valve- 
 box or barrel. 
 
 That stand-pipes similar to those patented by the plaintiffs in 
 respect to their fixing on to the valve-box or barrel without the 
 aid of a screw, were, before the granting of the patent to the 
 plaintiffs, used by the Water Company at Sandgate, in the 
 county of Kent, and by the Glasgow Fire Brigade, at Glasgow, 
 in Scotland, and were made and used by Mr. Simpson, engineer, 
 of Pimlico, in the county of Middlesex, Mr. Lambert and Mr. 
 Wilson, both of the New Cut, Lambeth, in the county of 
 Surrey, 
 
 Atherton Q. C. and Webster for the plaintiffs. 
 
 Sir A. J. E. Cockburn A. G., Hindmarch, and Grove for the 
 defendant. 
 
 TVebster opened the pleadings. 
 
 Atherton stated the case for thfe plaintiffs. The inven- P^'^t'ff"' 
 ■tion patented by the plaintiffs is particularly applicable to, 
 and extensively employed in, the waterworks of several towns 
 throughout the kingdom for the purpose of drawing off supplies 
 of water from main-pipes as occasion may require. 
 
 The water supplied to towns is carried by large main-pipes 
 laid down in the streets, and it is necessary that means should 
 be adopted affording ready access to these mains, and enabling 
 supplies of water to be obtained at various places when required 
 on an emergency, as in the case of fire. Before the plaintiffs' 
 patent the method adopted was — the openings in the main- 
 pipe were stopped up by wooden plugs, and, before water 
 could be obtained, these had to be withdrawn and the end of a 
 tube or stand-pipe driven into the opening. Expedition in 
 obtaining water in case of fire is of great importance, and in 
 using this method considerable delay arose, both in extracting 
 the plug and also in inserting the stand-pipe, for the water in 
 the main-pipe is always at a very high pressure, and, conse- 
 quently, when the plug was withdrawn, and the water rushing 
 out with great force, it was a work of much difficulty to fix the 
 
96 
 
 BATEMAN AND MOORE'S PATENT. 
 
 Atherton for 
 the plaintiffs. 
 
 Plaintiffs^ 
 Evidence. 
 
 stand-pipe in the hole for drawing off the water to supply the 
 hose of a fire-engine. The inconvenience amounted to a danger. 
 These difficulties were removed by the plaintiffs' invention, 
 which consists of a valve-box permanently fixed to a branch 
 pipe connected with the main, and having its neck or outlet 
 closed by a globular valve and a moveable discharge or drawing- 
 off tube, (a) 
 
 The globular valve is made of or coated with vulcanized 
 India rubber, gutta percha, or some soft elastic substance, and 
 the water which is admitted into the valve-box presses the valve 
 against the outlet at its top with great force, and so renders tlie 
 opening water-tight. The drawing-off tube or stand-pipe forms 
 the moveable opening key ; when used to draw oif the water its 
 lower extremity is introduced into the top of the valve-box; it 
 is then locked by means of a screw and hook fixed on the out- 
 side of the tube, which, being forced down on the globular 
 valve in the box, pushes it away from the outlet, against which 
 it was pressed by the force of the water ; the water then rushes 
 upwards through the tube or stand-pipe, and is conducted off as 
 required. Now, what the defendant has done, and of which the 
 plaintiffs complain as an infringement of their patent, is — they 
 have a drawing-off tube or stand-pipe, they have a globular 
 valve in the valve-box, which is attached to the main-pipe, and 
 they have also a spindle ; but, instead of the spindle being outside, 
 it passes down through the centre of the hollow tube, and forms 
 the opening key ; then, tlie ball-valve used by the defendant, 
 instead of being made of or coated with a soft elastic substance, 
 is rigid, and he puts a soft elastic substance on the valve-seat- 
 ing. Again, the mode of attachment is somewhat different; for, 
 instead of a hook, which catches upon a rim on the valve-box, 
 he attaches to the outside of the valve-box lugs, into which the 
 stand-pipe is fastened by what mechanics term a " bayonet 
 joint." It, however, is substantially the same thing as the 
 plaintiffs' invention, and for which they obtained their patent. 
 
 The specification, enrolled 18th of July, 1848, was put in 
 evidence. 
 
 The following witnesses were called and examined on the 
 part of the plaintiffs : — 
 
 Mr, Benjamin Fothergill. I am an engineer, practically ac- 
 quainted with water-works. Water at a high pressure is naucli 
 used in the street mains, and it is a matter of great importance 
 to provide a safe and easy means of connecting hose with the 
 main-pipes. One means employed was to drive plugs into the 
 holes in the main-pipes : in order to get at the water, these had 
 (a) See the specification, ante^ p. 89. 
 
BATEMAN AND MOORE v. GRAY. 97 
 
 to be extracted by means of chisels, and then the lower part of Exchequer. 
 a tube or stand-pipe was forced into the hole. This stand-pipe h. Vac 1853. 
 had a cock at the top, and the hose was screwed on to that; 
 the operation w^as very dangerous, owing to the force with 
 which the water gushed out. [The witness described the 
 invention of the plaintiffs, and explained it^ by a model made 
 according to the specification.] The plaintiffs' opening key 
 is also the conducting tube for the water; it is moveable, 
 and can be locked to the valve-box when in use. All the 
 opening keys are made of one size, and fit all the valve- 
 boxes. There is no thread or screw required to connect the 
 key to the valve-box, which is a great advantage, as the thread 
 of the screw which has to remain in the ground is liable to be 
 injured, and put out of order. [The witness here described a 
 model, alleged by the plaintiffs to be made upon the same prin- 
 ciples as the former one, but with slight and improved alter- 
 ations.] In this case the stand-pipe is fastened to the valve- 
 box by lugs, or what is known as a bayonet joint. In this 
 model [of defendant's stand-pipe] the attachment of the tube 
 to the valve-box is complete before the key is depressed upon 
 the ball-valve so as to push it from the orifice, and allow the 
 water to flow. In each the locking is a distinct operation ; in 
 the plaintiffs', while the locking is proceeding some water 
 escapes ; in the defendant's, the stand-pipe is inserted in the 
 neck of the valve-box, and by means of the lugs is locked com- 
 pletely before the water is allowed to escape from the main ; 
 then a screw is turned, which depresses a spindle, passing 
 down the inside of the tube so as to act upon the valve, and 
 thus allow the water to flow out. This stand-pipe manufac- 
 tured by the defendant [the infringement complained of] 
 consists of a tube attached, like the plaintiffs', by lugs to the 
 valve-box ; the valve is of copper, and is pressed against an 
 elastic seat made of India rubber or gutta percha ; the tube 
 being thus connected, the screw is turned which depresses the 
 spindle upon the globular valve, and water flows through the 
 tube or stand-pipe. This stand-pipe is substantially the same 
 as the plaintiffs'; but instead of covering the ball with the soft 
 elastic substance, he has covered the seat of the valve with that 
 material. 
 
 On cross-examination. The plaintiffs, in their specification, 
 make no mention of a spindle for opening the valve. The use 
 of a screw is old; so is the use of lugs as a means of attaching 
 the tube to the valve-box. The application of the ball for a 
 valve is old in the water-cranes used for supplying water to 
 locomotives. Freeman Roe also applies it in his hydraulic 
 
 n 
 
98 BATEMAN AND MOORE'S PATENT. 
 
 Flamtiffs' ram. The application of spindles to valves for the purpose of 
 opening them is old. Stand-pipes, spindles, and ball-valves were 
 separately all old at the date of this patent. 
 
 On re-examination. If the lugs are used instead of the 
 bracket and outside screw, some contrivance is necessary to act 
 upon the valve. The defendant's method is an obvious mode 
 of getting rid of the difficulty. He does not employ screws. 
 There is nothing in the water-cranes, nor in Freeman Roe's 
 hydraulic ram, like the plaintiff's invention. 
 
 Mr. Richard Chrimes. I am acquainted with the two inven- 
 tions of the plaintiffs and defendant. If I resort to lugs as a 
 means of attachment, I find that an alteration from the in- 
 vention as specified by the plaintiffs is necessary. An in- 
 ternal instead of an external screw is the only difference. 
 There is no difference between the plaintiffs' invention and 
 that claimed by the defendant : the parts are the same and 
 operate alike. They both have a valve-box, a globular valve, 
 and a stand-pipe. No screw is necessary in either, as a means 
 of attachment. The water-cranes are not stand-pipes, nor is 
 the ram used for drawing off fluids. 
 
 On cross-examination. I am interested with the plaintiffs, 
 and I have a patent for a stand-pipe. My stand-pipe has 
 lugs, and a screw, a spindle, and flexible valve. The spindle 
 must be inside. In the plaintiffs' specification the screw and 
 the bracket are outside. There is a great difference between 
 my stand-pipe and the plaintiffs'. The stand-pipe in my patent 
 must have a screw, which, being left in the ground, is liable 
 to damage and not easily repaired. The valve also is flat, 
 and anything in the water will obstruct it. 
 
 Mr. M'Connell and Mr. Glynn, civil engineers, and Mr. Rose, 
 superintendent of the fire brigade, were also called on behalf of 
 the plaintiffs, and deposed that the invention of the plaintiffs, as 
 far as their knowledge went, was new at the date of their 
 patent; and that there was no substantial difference between 
 the plaintiffs' invention and that claimed by the defendant. 
 On cross-examination, however, Mr. Glynn admitted that all the 
 parts were old, but that the combination of these parts formed 
 a new instrument. 
 
 Mr. Bateman. [For Mr. Bateman's evidence see the " sum- 
 ming up " of the learned Judge, post, p. 103.] 
 Sir A. Cock- Sir A. J. E. Cockburn A. G., addressing the jury on behalf of 
 ai^defendanu the defendant, contended that all the parts were admitted to have 
 been old, at the date of the plaintiffs' patent, and that there 
 was no specific claim to the combination ; that no part of the 
 plaintiffs' specification was applicable to the defendant's in- 
 
BATEMAN AND MOORE v. GRAY. 99 
 
 strument, and the defendant had put the parts together in a Exchequeb. 
 different way to the plaintiffs. The plaintiffs can make no h. Vac. 1853. 
 claim to the valve. That invention was registered by Free- 
 man Roe more than twelve months before the date of their 
 patent. The spindle is no part of the invention described in 
 the plaintiffs' specification : if they knew of it they were bound 
 to communicate their knowledge to the public. The opening- 
 key in the plaintiffs' patent is the hollow tube or pipe with 
 proper adjuncts, in the defendant's stand-pipe the opening-key 
 is the spindle, a totally different contrivance for acting on the 
 valve. Since all the parts were old, and could not be claimed 
 per se by the plaintiffs, and they make no specific claim to the 
 combination, the defendant's invention, which consists of a com- 
 bination differing materially from the one they have specified, 
 cannot be said to be an infringement. 
 
 The following evidence was given on behalf of the de- Defendant m 
 fendant:- ^'''^'^'- 
 
 Mr. Freeman Roe. I am a hydraulic engineer. I have seen 
 the plaintiffs' specification and drawings : they use a gutta 
 percha ball-valve similar to one invented by me. There is no 
 difference between the valve used by plaintiffs and the one I « 
 
 invented. 
 
 On cross-examination. I am the inventor of the hydraulic 
 ram : it is used for raising water from a low to a higher level ; 
 ■ the valves act alternately as closing valves. 
 
 Mr. Thomas Hawksley. I am a civil engineer of 25 years' 
 standing. I have been acquainted with stand-pipes for 21 years, 
 and have known them used without a screw as a mode of attach- 
 ment ; globular valves are not new ; valves and spindles, like 
 those used by the defendant, have been used long ago at Notting- 
 ham. We tried India rubber valves in a cock used in a private 
 house ; the valve was kept closed by the pressure of water, and it 
 was opened by a spindle. I tried the plaintiffs' curved stand- 
 pipe, and it did not answer, the water flew about, and the ball 
 was almost immediately destroyed ; the defendant's stand-pipe 
 answered perfectly, and was completely attached before the 
 valve was depressed. I do not think that there is any thing 
 new in the plaintiffs' specification; nor is anything like the 
 defendant's instrument described in it. 
 
 John Cliff Bridges. I am foreman to the Fire Brigade at 
 Watling Street, and have been employed in the brigade for 
 fifteen or sixteen years. I have known stand-pipes for fifteen 
 or sixteen years, and have used them to draw water from the 
 mains, by placing them in the plug-box after the plug has been 
 withdrawn. 
 
 H 2 
 
100 ^ BATEMAN AND MOORE'S PATENT. 
 
 Defendanes Mr. Charles Edwards Amos. I am an engineer. I have 
 
 - examined the stand-pipes of the plaintiffs and defendant. There 
 is a decided difference between the instruments. The plain- 
 tiffs' is an intermediate improvement between the old plug and 
 Mr. Gray's invention. 
 
 Mr, Gray, the defendant. I invented my stand-pipe at the 
 end of the year 1849. I saw the plaintiffs' specification before 
 I took out my patent. My invention entirely differs from the 
 plaintiffs'. I would not have used it if I had not thought so. 
 Theirs has no screw ; there is a screw on the lower part of my 
 tube; it is used to tighten the contact between the tube and 
 the valve-box. There is no escape of water. My tube might 
 remain a fixture. In the plaintiffs' there is a great escape of 
 water while the stand-pipe is being fixed ; the valve is opened 
 by means of the tube, which forms the opening-key. I open 
 the valve by means of a spindle passing through the tube ; a 
 ball coated with India rubber is useless. The plaintiffs' ma- 
 chine, as specified, will not answer its purpose. 
 
 Messrs. Cooper and Baddeley stated that they believed every 
 part of the plaintiffs' specification to be old, and the defendant's 
 invention quite distinct from that of the plaintiffs'. 
 
 Mr. W. Carpmael. I am acquainted with valves used for 
 hydraulic purposes. I have read plaintiffs' specification, and 
 have examined the drawings. I am acquainted with Roe's 
 hydraulic ram, and his ball-valves. The ball-valves used by 
 the plaintiffs are similar to Roe's valve. In 1848 elastic seat- 
 ings were not new. The plaintiffs' specification would not 
 suggest a spindle; in every case the globular valve must be 
 opened by pressing down upon it the bottom of the tube. The 
 defendant's stand-pipe differs from the plaintiffs' in principle; 
 he uses a spindle to press down the valve by screwing it down 
 after the stand-pipe is fixed to the ifalve-box. The plaintiffs 
 press down the tubular key itself upon the valve. The de- 
 fendant's differs from the plaintiffs' in every part; no two 
 parts are alike. In both inventions all the parts are old, and 
 the combinations differ from each other. 
 
 After Atherton had addressed the jury in reply, the learned 
 Judge summed up as follows : 
 
 Martin B. to Martin B. to the Jury. The plaintiffs in this cause, 
 
 the Jury. Messrs. Bateman and Moore, bring this action against Mr. Gray 
 
 for the infringement of a patent for " Improvements in valves 
 
 or plugs for the passage of water and other fluids," granted to 
 
 them in January 1848. 
 
 The answer which the defendant makes to this is threefold. 
 
BATEMAN AND MOORE v. GRAY.; IQl 
 
 He first saysj that he is not guilty of infringing the plaintiff's Exchequer. 
 patent ; secondly, that the plaintiffs were not the first and jj. Vac. I853. 
 true inventors of the said supposed new manufacture; and 
 thirdly, that the plaintiffs' invention was not an invention of 
 any manner of new manufacture, which others at the time of 
 making and granting of the letters patent did not use. 
 
 In bringing the matter to your consideration I would recom- 
 mend you to consider the two last answers first ; whether or 
 not you are satisfied that the plaintiffs were the inventors of 
 the machine which is described in the specification enrolled by 
 them in the year 1848, and whether that Avas a new invention, 
 and if you should be of opinion that it, was, then you will after- 
 wards consider whether the defendant is guilty of infringing 
 that invention. 
 
 It is obvious from the evidence in the cause, and from what was 
 stated by one of the gentlemen who was called on behalf of the 
 plaintiffs, that there is no part of the invention of the plaintiffs 
 of itself new. Mr. Glynn says that no part of the plaintiffs' 
 invention is new, but that as an implement it is new, and in his 
 opinion very useful : he says that all the parts of it were old, 
 but that in his judgment the combination was entirely new. 
 And you will recollect that Mr. Hawksley also says there is 
 nothing new in the separate parts, but that the entirety is new. 
 It is my duty to tell you that though all the parts of an instru- A patent may 
 ment are old, yet that it is competent for the Crown to grant a ^^ granted for 
 
 •^ , , , '^ a new combi- 
 
 patent for the combination of old known things if they produced nation of old 
 the effect for which the patent is taken out ; and I cannot do '^^^^' 
 better than read to you a passage of a judgment of Lord 
 Ellenborough, the Lord Chief Justice of the Queen's Bench, upon 
 that subject. He says (a), "I suppose it will not now be 
 disputed that a new combination of old materials, so as to pro- 
 duce a new effect, may be the subject of a patent." And his 
 Lordship afterwards said to the jury in the same case, " In 
 inventions of this sort, and every other through the medium of 
 mechanism, there are some materials which are common, and 
 cannot be supposed to be appropriated in the terms of any 
 patent. There are common elementary materials to work with 
 in machinery, but it is the adaptation of those materials to the 
 execution of any particular purpose that constitutes the in- 
 vention; and if the application of them be new, if the com- 
 bination in its nature be essentially new, if it be productive of 
 any new end and beneficial to the public, it is that species of 
 invention which, protected by the King's patent, ought to 
 
 (a) Snddart v. Cfrimshaw, Dav. P. C. 265., the learned Judge read the 
 passage as cited in Hindmarch on Patents, p. 124. 
 
 H 3 
 
102 
 
 BATEMAN AND MOORE'S PATENT. 
 
 Mb)7m B, to continue to the patentee the sole right of vending it." So' 
 that what you will have to consider in respect of this is, whether 
 in the year 1848, when the patent was granted, the invention 
 for which that was taken out was a new invention — an in- 
 vention of the plaintiffs — and you will dismiss in the consi- 
 deration of that question entirely what the defendant has done ; 
 for whether a patent be valid or not depends upon the state of 
 things at the time the patent is taken out, and does not in the 
 slightest degree depend upon what takes place afterwards. 
 
 Supposing you are of opinion that the plaintiffs were the 
 inventors, and that it was a new invention at the time it was 
 taken out (and its utility is not denied), it will then be for 
 you to consider whether or not the defendant has infringed it. 
 Use of equiva- If a person takes an invention of this kind, and makes one 
 effecUlTe same ^''^^ ^^' *^^* ^® ^° infringement. It is my duty to tell you that 
 end as that for the law will not permit a person to take an article that has 
 tenrwas*ob^ ^^®° patented and to give a substitute in place of it for the 
 tained is an in- purpose of effecting the same end, by the use of equivalents, 
 thTpaten?' ° losing the skill and knowledge which he may possess to evade 
 the patent. If you believe that the defendant's instrument, 
 though he might have employed skill and knowledge upon it, 
 was taken by him substantially from the plaintiffs', and that 
 what he has produced is nothing more than a substitution of 
 other and equivalent means for producing the same end, even 
 though the means employed might be better than those of the 
 plaintiffs, it is my duty to tell you that that is an infringement 
 of the patent. If that were not the law no patent would be 
 safe, for a patentee is forced to produce to the public a speci- 
 fication of his invention, and he has had no opportunity of 
 testing it so as to point out every application of it for public 
 use. If it were permitted to persons of ingenuity to substi- 
 tute in lieu of the patent some equivalent, it would be useless 
 to grant patents of this kind, for an ingenious man could at 
 any time infringe them by adopting other and possibly better 
 means than those specified. 
 
 It would be as well that I should read to you what the Lord 
 Chief Justice Tindal said in reference to a case of this kind {a): 
 " Where a party has obtained a patent for a new invention, or 
 a discovery he has made by his own ingenuity, it is not in the 
 power of any other person, simply by varying in form or in 
 immaterial circumstances the nature or subject matter of that 
 discovery, to obtain either a patent for it himself, or to use it 
 without the leave of the patentee, because ,that would be in 
 
 (a) Walton v. Potter, 1 Weba. Pat. Ca. 586., as cited in Hindmarob on 
 Patents, p. 495. 
 
BATEMAN AND MOOEE v. GRAY. 103 
 
 effect and in substance an invasion of the right ; and therefore E xcheqpe r. 
 what you have to look at upon the present occasion is, not h. Vac. 1853. 
 simply whether, in form or in circumstances that may be more 
 or less immaterial, that which has been done by the defendants 
 varies from the specification of the plaintiff's patent, but to see 
 whether in reality, in substance, and in effect, the defendants 
 have availed themselves of the plaintiff's invention in order to 
 make that fabric, or to make that article which they have sold 
 in the way of their trade, — whether in order to make that they 
 have availed themselves of the invention of the plaintiff." And 
 Mr. Baron Alderson, in the case of Morgan v. Seaward (a) said, 
 "that in order to ascertain whether the defendant's machine was 
 only colourably different, that is, whether it differed merely in 
 the substitution of mechanical equivalents for the contrivance 
 I'esorted to by the patentee, it was necessary for the jury to 
 look at the substance, and not to the mere form of the de- 
 fendant's machine ; and if it is in substance an infringement they 
 ought to find it so." With these statements of the law upon the 
 matter I proceed to call your attention to the evidence in the 
 case. First, in respect to the validity of the patent. Upon 
 that point it may be that there is not any great doubt, for it 
 certainly seems to me that the more important question is on 
 the plea of not guilty. 
 
 Mr. Bateman was the last witness called on behalf of the 
 plaintiffs, and I think I had better read his evidence first, as it 
 gives the whole history of the invention. He says he is a civil 
 engineer, in Manchester, and has been so for nineteen years. 
 That he is chief engineer at the Manchester waterworks, which 
 office he has held for ten or twelve years. That he has had his 
 attention directed to the defective system of. drawing off the 
 water from the works. That he turned his attention to the 
 nature of it in order to improve it. That the old system was 
 exceedingly defective, and he was anxious to adopt any im- 
 proved method that could be suggested ; and for that purpose 
 he applied to all the makers of water-fittings to assist him,— to 
 Mr. Simpson, to Mr. Lambert, and to all others from whom he 
 could get information, but did not find any thing sufficiently 
 simple and cheap. He says that Mr. Moore was the person 
 who suggested the ball-valve, and he the stand-pipe; and he 
 simplified the plan, as shown in the specification. I think the 
 Attorney-General made no point in his address to you that Mr. 
 Bateman and Mr. Moore did not conjointly make the discovery. 
 A part of his cross-examination was rather directed to that, as 
 
 («) 1 Webs. Pat. Ca. 171., as cited in Hindmarch on Patents, p. 495. 
 
 H 4 
 
104 BATEMAN AND MOORE'S PATENT. 
 
 ai^Jur ^' '° '^^ '^ ^^® ^^' ^°°i"6'8 invention and not Mr. Bateman's. It is 
 for you to say whether or not the account which Mr. Bateman 
 gives satisfies you, that he and Mr. Moore conjointly were the 
 persons who made the discovery, that is, that they both applied 
 their minds to bring out the invention for which the patent was 
 ultimately taken out. If you are of that opinion, you will say 
 ^ whether they conjointly were the first inventors, and not Mr. 
 Moore alone. He goes on to state that he proceeded to manu- 
 facture the article, and that he has had manufactured a stand- 
 pipe exactly according to the description given in the specifica- 
 tion, and that it was tried at Kendal, Haywood, "WaiTington, 
 and other places, with success ; and that it was actually in use in 
 Warrington. So that there is actually used at Warrington a 
 stand-pipe made exactly according to the mode described in the 
 specification. He says further, that he is aware of the descrip- 
 tion of stand-pipe which the defendant has manufactured. And 
 the account he gives with respect to that is this, that he became 
 acquainted with Mr. Chrimes, a manufacturer of brass wares at 
 Rotherham. That Mr. Chrimes produced to him a model of 
 the machine, which he said he had invented himself. Then he, 
 Chrimes, gives an account of the observations he made at 
 Bristol. I presume that Mr. Chrimes having heard that Mr. 
 Bateman was working it out, came to see him, to show him 
 what he had done. He says, that before he made his specifi- 
 cation, Mr. Chrimes produced that to him, which is now used, 
 and which is exactly the same as that used by the defendant, 
 and that it was shown to him before he made his specification. 
 That he having consulted some one in the matter, elected to 
 specify in the manner in which he did. That the invention 
 for which the patent was obtained was the combination of parts 
 forming " the improved stand-pipe," and that he did not in the 
 specification intend to make any claim to the parts separately. 
 That the stand-pipe described in the specification and shown 
 in the drawings was only by way of illustration, and was not the 
 only mode of carrying out the invention. I have not the slightest 
 doubt that this was for the reason given by one of the witnesses 
 for the defendant, because it produced the action of letting in 
 the water by one and the same action. That is the account 
 which Mr. Bateman gives with respect to the invention of this 
 machine. 
 
 You are aware that the Crown has the power of granting 
 patents for new inventions; and this is clearly a matter in 
 respect of which a patent may be granted ; and by the terms of 
 the patent, the patentees are bound, within six months, to give 
 a description of the patented article, that is, they are to give 
 
BATEMAN AND MOORE v. GRAY. 105 
 
 such a description of the thing, and such an explanation, as Exchequer. 
 would enahle a competent person, who is acquainted with ma- h. vac. 1S53. 
 chines of the sort, to make that for which the patent was granted. 
 The plaintiffs proceed to state, " Our improvements in valves or 
 plugs, for the passage of water or other fluids, apply principally 
 to cocks or valves, used for draAving oif water from the main or 
 service pipes of waterworks for the supply of mills, works, or 
 buildings, for the extinction of fire, the watering of roads, 
 streets, or gardens, the irrigation of land, the cleansing of water- 
 pipes, the flushing of sewers, and other similar purposes." The 
 first observation which I make as to that is, that they obviously 
 state that they are improvements in valves or plugs, which 
 valves or plugs are used for the passage of water for rough 
 purposes. It was not intended by them to be used for any 
 purpose where the escape of a small quantity of water is of 
 great importance, but to be used for the extinction of fire, to 
 draw ofl" water from the main pipes : it was not intended for 
 delicate purposes, such as taking wine or other valuable liquors 
 out of casks, but for rough work, such as supplying water for a 
 house on fire. They say, " Our improvements relate, first, to 
 the use and application^ for the purpose of drawing off" water or 
 other liquids, of a valve (of a globular or other form) of a spe- 
 cific gravity lighter than water, and constructed of or covered 
 with vulcanized India rubber, gutta percha, or other compres- 
 sible elastic substance, the closing of such valve being effected 
 by the pressure of the water. Secondly, to the use and appli- 
 cation, for the same purposes, of a valve of a globular form, of 
 the same or greater specific gravity than water, constructed or 
 coated as above described, and closed in a similar manner." I 
 have not been able, during the whole of the inquiry, to ascer- 
 tain what is the difference between light specific gravity and 
 heavy specific gravity. As far as I can collect from the 
 evidence, none of the witnesses has said anything upon that 
 matter. " Thirdly, to opening valves, for the passage of fluids, 
 by means of a moveable opening key, consisting of a tube or 
 pipe with proper adjuncts, so applied as (without the aid of 
 any thread or screw upon the barrel, or any fixed part of the 
 valve itself, or the parts necessarily permanently connected 
 therewith) to force the valve open against the pressure of the 
 fluid, the key or tube being so constructed that the fluid, 
 when released, shall pass off through the said tube." Now it 
 has been stated that this patent has been taken out for three 
 things : — First, for drawing off water by means of a valve 
 of a specific gravity lighter than water ; secondly, for the use 
 and application, for the same purposes, of a valve of globular 
 
106. BATEMAN AND MOORE'S PATENT. 
 
 Martin B. to form, of the same or greater specific gravity than water;- 
 ' " "'^^ and, thirdly, for the mode of opening and applying it. What 
 
 follows at the end of the specification is this: the patentees 
 say, "Having now described the nature and objects of our 
 said improvements, we would remark, that we claim, as our 
 invention, first, the application for the purpose of drawing or 
 letting off water by means of a valve of less specific gravity 
 than water, constructed of or coated with vulcanized India 
 rubber, gutta percha, or other suitable compressible elastic 
 material, and which closes or is kept closed by the pressure of 
 the water ; secondly, the application, for similar purposes, of a 
 globular valve, of the same or greater specific gravity than 
 water, and constructed or coated as above described, which, 
 without mechanical aid, will close by the pressure of the water ; 
 thirdly, the opening of valves by means of a key or tube, so ap-' 
 plied as to force the valve open against the pressure of the water 
 or other fluid, and through which key or tube the fluid escapes, 
 such key or tube being attached to the box or barrel, or other 
 fixed part of the valve, without the aid of a thread or screw, on 
 such box or other fixed part." 
 
 I own it seems to me that this is not the true construction of 
 the specification; and that what the patentees obtained their 
 patent for is, an entire apparatus for the purpose of effecting 
 one object. It is clear, as it seems to me, that if this were for 
 any one thing separately — for the use of the ball being pressed 
 by water on the hole in the main pipe — it would be utterly 
 useless. It seems to me that the true construction of the spe- 
 cification is, that the patent is for an improved method of 
 opening valves and plugs for the passage of water. If I am 
 wrong in that respect I shall be corrected hereafter. In 
 my judgment, the claim in the specification is for the entire 
 apparatus altogether for the purpose of getting water from 
 the main. They say " the practical application of our im- 
 provements will be readily understood by referring to the 
 drawing accompanying these presents, in which, by way of 
 illustration, one mode of applying the opening key is exhibited 
 as applicable to a street cock or plug; so that they proceed to 
 tell you this : " We tell you one mode of doing it ; we do not 
 profess to tell you every mode, but we point out one mode by 
 which the thing can be done." According to the evidence of 
 Mr. Bateman, this is the one in use at Warrington, which is a 
 considerable town ; and, after having shown the figure, and the 
 mode of applying it, he goes on to say, " The opening key may 
 be attached to the plug or cock in other ways, without the aid 
 of screws; such as by projecting lugs or ears, under or by means 
 
BATEMAN AND MOORE v. GRAY. 107 
 
 of which the opening key or tube through which the water is Exchequer. 
 drawn off, may be secured or connected, or in various other jj y^c. 1853. 
 ways, by which the same purpose would be effected, and which 
 would readily suggest themselves to a practical mechanic." 
 
 Mr. Carpmael tells you he considers the meaning of it is this: 
 " that it might be carried into effect by means of lugs or ears 
 externally fixed, though the valve was to be depressed in the 
 same way that the ball was to be operated upon by the tube." 
 I cannot myself see that that is entirely correct ; it is for you to 
 judge of that matter when I shall call your attention to the 
 question of infringement. All I would ask you to do is, not to 
 be led away by the opinion of people, for you will find 
 witnesses of equal respectability called on the other side ; but 
 you must use your own judgment on the subject. 
 
 Then Mr. Fothergill, an engineer at Manchester, tells you 
 what the old system was, — that there were wooden plugs which 
 were driven in and got out by means of chisels ; that the old 
 stand-pipe was forced in, and the cock at the top of the stand- 
 pipe was opened and the water rushed out. He says that, so far 
 as he knows, these were the only means of getting out the 
 water. When the stand-pipe was removed, the plug was put in 
 again. He described the models, and there is no difficulty in 
 understanding them. It is nothing but applying force, whereby 
 the two parts are brought together ; and the effect of that is, 
 the tube is brought down on the ball, and it lets the water 
 escape, which flies up and is carried away through the hose 
 pipe. He says there is a great advantage in a moveable key. 
 "We have 3000 or 4000 valve-boxes, and valves fixed to the 
 main pipes, in the streets in Manchester. We have twenty 
 or thirty stand-pipes ; they are constantly taken to places as 
 required. The principal part of the expense is the key. The 
 advantage of the absence of the thread and screw is, that the 
 key can be driven home with less trouble ; the thread of the 
 screw is liable to be broken. The working the invention without 
 the aid of a screw is an important feature in the plaintiffs' 
 invention. Mr. Chrimes is next called. He makes the same 
 statement ; he says he has an interest in the plaintifis' patent. 
 Then there was called Mr. M'Connell, who is said to be a 
 person of considerable experience, connected with the London 
 and North Western Railway. He says cranes are now used 
 for the purpose of supplying the engines with water : he says 
 he has made himself acquainted with the valves, and so far as 
 he knows them they are new. Mr. Glynn tells you the same 
 thing, and that all the parts are old. Mr. Rose is the super- 
 intendent of the Fire Brigade ; he says that it is new as far as. 
 
108 BATEMAN AND MOORE'S PATENT. 
 
 Martin B. to he knows, and a great improvement. The other witness is 
 '"^^' Mr. Bateman himself. As far as I know, there is not one 
 
 witness who is called for the defendant, who says that in his 
 opinion the entirety is not new. They all say that all the 
 parts are old. Gentlemen, I do not know that it would be 
 of any use for nie to read to you the evidence as to that; it 
 is for you to ask yourselves whether the invention as specified, 
 that is, the ball-valve with the external adjuncts, was invented 
 by the plaintiffs in the year 1848. If so, you will find your 
 verdict for the plaintiffs, on those issues which would es- 
 tablish the validity of their patent ; if not, you will find your 
 verdict for the defendant. 
 
 Now we come to the most important part of the case, whether 
 or not the defendant has infringed. What the defendant has 
 done, is — he has made a stand-pipe attached to the rim of the 
 valve-box by lugs. You will first ask yourselves, whether there 
 is substantially any difference between that mode and the one 
 claimed by the plaintiffs, where the fastening is by a hook let 
 down by a screw. The next question is, whether there is any 
 substantial distinction between the plaintiffs' ball-valves where 
 the balls are made of gutta percha or some hard substance 
 covered with gutta percha, and the employment by the 
 defendant of a hard ball pressed against a soft elastic seat, 
 fixed on the iron neck of the valve-box — whether it w^ould not 
 be one of the first things which a person wishing to devise a 
 way of infringing the patent would do, to substitute for a ball 
 covered with elastic compressible substance, and pressing against 
 a hard seat, a hard ball, uncovered, pressing against an elastic 
 compressible seat. 
 
 Sir A. E. J. Coekburn A. G. I would call your Lordship's 
 attention to the fact that there is not one word in their claim as 
 to the " seating " (as it is called) being soft or rigid, nor is 
 there anything in that claim as to the fastening. 
 
 Martin B. (after having read the claim). I should say 
 myself, that the true construction of the claim is, that it did not 
 mean two pieces of India rubber to come against each other, 
 one forming a facing on the iron, and the other the India 
 rubber on the ball ; and if I understand this rightly, what he 
 means is, the ball covered with India rubber, and the pressing 
 against the box which would necessarily be of metal or a similar 
 substance. The question is this, do you believe that the plaintiffs 
 in their specification meant it to be understood that there was 
 to be a ball covered with soft material to come in contact with 
 a similar soft material in the valve-box ? I know the conclu- 
 sion at which I should arrive, but the question is for you. 
 
BATEMAN AND MOORE «. GRAY. 10& 
 
 The next step is, that, instead of that ball being forced back Exchequer. 
 by means of the tube or stand-pipe bearing down upon the ball h. Vac 1853. 
 inside the neck of the valve-box, the defendant's tube or imple- 
 ment itself is attached to the valve-box by means of lugs, and an 
 internal screw is worked at the top, which depresses the spindle 
 inside the tube, and, pushing back the valve-ball, so opens the 
 valve. And they say (and it may be true) that that is a better 
 mode of carrying the thing into operation than that adopted by 
 the plaintiffs. In my judgment that is not the only matter for 
 your consideration. The real question is, do you believe that 
 the defendant, having obtained a knowledge of this specification, 
 devised that as a means of carrying out something which might 
 be an improvement, but with the real purpose of making a 
 machine similar to the plaintiffs ? If you are of that opinion, 
 that is a thing which the law will not allow to be done. 
 
 With respect to that matter, Mr. Fothergill says, that in his 
 judgment the things are the same ; that they are in principle 
 the same, and that they are in great measure the same in de- 
 tail ; and Mr. M'Connell says the same thing. 
 
 [The learned Judge was proceeding to comment on the evi- 
 dence given on behalf of the defendant, when the jury intimated 
 that they were all agreed to find a verdict for the plaintiffs.] 
 
 Verdict for the plaintiffs. Damages 40s. 
 [A bill of exceptions was tendered by Sir A. J, E. Cockburn 
 A. G., to the learned Judge's direction to the jury ; but it was 
 subsequently abandoned, and a motion made for a new trial.] 
 
 Exchequer. 
 Coi:, Pollock C. B., Alderson B., Flatt B., and Martin B. 
 
 Easter Term, 1853. April 19.1853. 
 
 Sir A. J. E. Cockburn A. Gr., moved for a rule nisi £or a new Motion for nde 
 trial on the ground of misdirection by the learned Judge in ^'"' " "*"' ' ' 
 three particulars. 
 
 First, that although all the parts were old, and there was 
 no claim in the specification to the combination, the learned 
 Judge told the jury that if the invention as a whole was new, 
 they should find a verdict for the plaintiffs, although all or any 
 of the parts were old, which, on the authority of the cases of 
 Carpenter v. Smith (a), and Holmes v. The London and North 
 Western Railway Company (h), is submitted was a misdirection. 
 
 Second, that the Judge told the jury that if the defendant, 
 
 (a) 9 M. & W, 300.; s.c. 1 Webs. (6) Ante, p. 13. 
 
 Pat. Ca. 540. 
 
110 
 
 BATEMAN AND MOORE'S PATENT. 
 
 Motion for rule havmg obtained his knowledge from the specification of the 
 
 for a new trial ■, . ^./v. ,.,,.. „ , i.^ii 
 
 plaintiiis, devised his instrument to effect the same object as the 
 plaintiffs' by a different means, that was an infringement, even 
 though the defendant's instrument were an improvement on 
 the plaintiffs'. 
 
 Third, that part of the patent was for using a ball-valve, 
 made of or coated with a soft elastic material coming against a 
 rigid seating, and the defendant had used a hard ball, but put 
 upon the valve-seating a soft elastic material ; and the learned 
 Judge left it to the jury to say whether or not that was an in- 
 fringement. There was no mention made of this in the bill of 
 particulars delivered with the declaration. 
 
 Rule nisi granted. 
 
 Exchequer. 
 
 Cor., Pollock C. B., Alderson B., Piatt B., and Martin B. 
 
 Trinity Term, 1853. 
 
 Atherton and Webster showed cause against the rule. The 
 invention, in this case, was of a new combination, or of the use 
 and application of old things to form a new implement. The 
 valve, of itself, is not new ; the valve-box is not new ; the 
 stand-pipe is not new ; but the combination of these three old 
 things formed a new and useful instrument. Now, when it is 
 borne in mind that a specification should be read in fairness, 
 the Court will take that view of the subject which was taken 
 by the jury at the trial. Bolfe B., in his judgment in Newton 
 V. The Grand Junction Railway Company (a), says, " The 
 mentsinvalves language of a specification is not to be discussed as if it were 
 a plea or replication specially demurred to. That is not the 
 spirit in which a specification should be inspected. The proper 
 mode is to construe it, and see what is the good sense of it, and 
 whether that which the patentee claims as his invention is there 
 distinctly and clearly explained." And in the case of Sellers v. 
 Dickenson (b), the observations of Pollock C. B., and Rolfe B., 
 
 June 7. 9. & 13. 
 1853. 
 
 Under a plea 
 that the pa- 
 tentee was not 
 the inventor 
 or that the in- 
 vention was 
 not a new 
 manufacture, 
 no objection 
 can be taken 
 to the specifi- 
 cation. 
 
 The pa- 
 tentees of an 
 invention for 
 • improve- 
 
 or plugs for 
 the passage of 
 water or other 
 fluids " in their 
 Specification 
 (which they 
 gave in evi- 
 dence at the 
 trial of an 
 action for an 
 infringement 
 of the patent) 
 described the 
 
 whole apparatus; and made three distinct claims ("first," " secondly," and " thirdly") to the parts, 
 each of which, taken by itself, was admitted to be old, but had not been before used in combination. 
 One of the patentees, in his evidence, stated that the invention he claimed was the apparatus as a 
 whole ; and the Judge at the trial directed the jury that the question as to the novelty of the 
 invention raised by the pleas was, whether the apparatus as a whole was new, without regard to 
 the want of nov^ty of the parts. The jury, having found a verdict for the plaintiffs, Hdd, that 
 there being no plea putting in issue the sufficiency of the specification, there was no misdirection. 
 Semble. That if there had been such a plea, the patent could not have been sustained. 
 
 (a) 5 Exch. Rep. 3.SI. ; s. c. 20 
 L. J. Rep. (N. S.) Exch. 427. n. 
 
 (6) 5 Exch. Rep. 312.; s. c. 20 
 L. J. Rep. (N. S.) Exch. 417. 
 
BATEMAN AND MOORE v. GRAY. HI 
 
 were to the effect that specifications were to be read with fair- Exchequer. 
 ness, to see what was the intention of the patentee. \_Mariin B. t. T. 1853. 
 A specification is only required to describe the nature of the 
 invention, and in what manner the same is to be performed ; 
 and if the patentee in this case has done that, he has done 
 all that was required of him. The evidence of the plaintiff 
 Bateman shows that the instrument, as a whole, was what 
 he claimed as his Invention.] If our construction of the 
 specification is right, no doubt there has been an infringe- 
 ment; and that it is right, and that the patent is for the 
 combination, sufficiently appears from the specification Itself, 
 without the aid of the plaintiffs' evidence : for the ball-valve 
 is not of any use by itself and without the other apparatus, 
 and therefore it could not have been intended to claim it 
 alone. There is nothing in the specification to show that 
 the valve is claimed as new ; there is no claim to any par- 
 ticular part of the combination as a novelty : the title of the 
 patent must be considered, and when it Is read in connection 
 with the specification, it will clearly appear that what is claimed 
 is the application of the several parts, in combination, for the 
 purpose of drawing off water and other liquids. Haworth v. 
 Hardcasile (a), and Crossley v. Beverley (b), are authorities in 
 favour of the plaintiffs upon this point ; and if we were in doubt, 
 from the wording of the specification itself, as to what was in- 
 tended to be claimed by it, the evidence of the plaintiff Bateman 
 confirms the opinion that the claim was for the combination only, 
 and not for the separate parts forming that combination. The 
 jury might have disregarded the specification, and considered the 
 plaintiffs' evidence as to the nature of the Invention. But the 
 defendant cannot question the sufficiency of the specification, 
 as he has not put any plea upon the record to raise the point. 
 [Pollock C. B. The defendant contends that this specification 
 describes one entire thing, and then claims the parts, which 
 have been admitted to be old.] It is submitted that the defen- 
 dant cannot take that objection, as the record now stands ; for 
 such a question could not be raised by either of the pleas, that 
 the plaintiffs were not the first and true inventors, or that the 
 invention was not any manner of new manufacture. There was 
 no necessity for the plaintiffs to put the specification in evi- 
 dence ; nor was there anything to prevent them giving parol 
 evidence of what was their invention, without the aid of the 
 specification. [^Alderson B. Surely it is for the jury to say 
 
 (a) 1 Bingh. N. C. 182.; s. c. 4 (4) 9B. & C. 63.; s. c. 3 C. & P. 
 
 Mo. & Scott, 720. ; s. c. 1 Webs. Pat. 513. ; s. c. Mo. & Mai. 283. 
 Ca. 480. 
 
112 
 
 BATEMAN AND MOORE'S PATENT. 
 
 Argument on 
 rule. 
 
 Argument in 
 support 
 
 what the invention really is. J The jury have found it is for 
 a combination of the three parts of the machine, and that the 
 defendant has infringed it. ^Pollock C. B. Might not the 
 defendant have pleaded that the specification claimed what was 
 not new ?] No doubt ; but he has not done so : and a valuable 
 invention should not be lost to the plaintiffs because an error 
 has been made in the form of their specification. 
 
 Sir A. J, E. Cockburn A. Gr., Hindmarch, and Grove, in 
 support of the rule. The plaintiflPs in their specification clearly 
 describe and claim the three several parts as " improvements,' 
 and it is not possible to put any other construction than this on 
 the specification. The defendant does not deny that the plain- 
 tiffs have specified their invention, but he contends that in that 
 specification they have claimed more than they had any right to; 
 that the claim which, as has been proved, was new when applied 
 to the combination only, extends to what is not new, i. e. the 
 parts composing that combination. [Alderson B. The question 
 is whether, without a proper plea, the defendant can raise that 
 objection ?] The plea that the invention was not any manner 
 of new manufacture, raises the point. It denies the novelty of 
 the invention described in the specification. If the three parts 
 described in the specification were new, the patent would be 
 perfectly valid; but the evidence is that they are old, and the 
 claim as shown by the authority of Holmes v. The London 
 and North Western Railway Company (a) extends to them, and 
 the plaintiffs are not entitled to maintain their patent. It is a 
 doctrine well established in the law of patents, and on which 
 no question can arise, that a patentee cannot claim in his spe- 
 cification more than he had invented, and was new at the date 
 of his patent. In Hill v. Thompson {b), Lord Eldon says, 
 " Not only nmst the invention be novel and useful, and the speci- 
 fication intelligible, but the specification must not attempt to 
 cover more than that which, being both matter of actual dis- 
 covery 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 be otherwise fairly entitled. On 
 the other hand, there may be a valid patent for a new combina- 
 tion 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 
 
 (n) Ante., p. 13. 
 
 (J) 3 Merivale, 626. ; s. c. 1 Webs. Pat. Ca. 235. 
 
BATEMAN AND MOORE v. GRAY. US 
 
 only." Kaj/ v. Marshall (a) decides, that where an invention Exchequer. 
 for which a patent has been obtained, consists of two distinct x. T. 1853. 
 parts, or even if it is to be considered as one entire invention, if 
 part of what is claimed is not properly the subject of a patent, 
 or not new, the whole must be void. The same was decided by 
 this Court in the case of Dobbs v. Penn (b), in which the patent 
 was for " improvements in the construction of racks and pulleys 
 for window-blinds, and other useful purposes : " one of the im- 
 provements claimed by the specification was for " the con- 
 trivance of fixing the stud of the pulley by means of a clamp 
 and screw, as above described." It was contended that this was 
 substantially the same as was contained in a patent more than 
 twenty years before the date of the plaintiffs', the specification of 
 which was given in evidence by the defendant. Under the 
 direction of the learned Judge before whom the case was tried, 
 the plaintiff had a verdict, which was afterwards by this Court 
 set aside, and a rule for a new trial made absolute, on the 
 ground that part of the alleged invention was not new. Now 
 here the evidence on behalf of the defendant clearly is, that 
 the separate parts of this invention were old and well known 
 before the date of the plaintiffs' patent. The condition upon 
 which a patent for a new invention is granted is, that the 
 patentee shall accurately specify the nature of his invention, 
 and in what manner it is to be performed ; and the patentee is 
 estopped from saying that his invention is anything other than 
 that he has described in his specification. [Martin B. There 
 is no authority for saying that the specification is an estoppel as 
 to that which the patentee has invented.] No authority to the 
 contrary can be produced, and it has never been denied hitherto. 
 \_Martin B. How were the plaintiffs obliged to give their 
 specification in evidence?] To prove what their invention 
 really was. In former times the description of the invention 
 was inserted by way of recital in the patent itself, and formed 
 part of the grant ; but in the reign of Queen Anne the present 
 practice of enrolling a specification was adopted, but the speci- 
 fication has always been considered as part of the patent. 
 \_Alderson B. The patent is granted upon the condition that the 
 patentee shall afterwards, within a certain period, particularly 
 describe his invention by a specification. The plaintiffs were 
 not bound to put the specification in evidence, which was not 
 in any way in issue.] In the case oi Hornhlower v. Boulton (c), 
 Grose J. says : — ''I consider the patent and specification so 
 connected together as to make a part of each other ; and that , 
 to learn what the patent is, I may read the specification, and 
 
 (rt) 5 Bingh. N. C. 492. (6) 3 Exch. Rep. 427. (c) 8 Term. Rep. 95. 
 
 I 
 
1 14 BATEMAN AND MOORE'S PATENT. 
 
 Argument on consider it as incorporated in the patent." And further on (a), 
 the same Judge says : — " The patent is nothing without the speci- 
 fication, and the patentee can gain no advantage by it, for the 
 specification, describing the thing as required by the patent, 
 must be resorted to, and may fairly be deemed a part of the- 
 patent itself." Crossley v. Beverley (b), cited on behalf of the 
 plaintiffs, is an authority in favour of the defendant. [^Platt B. 
 Suppose an action for infringement brought to trial before the 
 expiration of the six months allowed for the enrolment of the 
 specification, how would the invention then be ascertained ?] 
 No such case has ever happened, but it would probably be neces- 
 sary that, before the trial, the specification should be enrolled, 
 \_PoUock C. B. An injunction might be obtained before the 
 enrolment of a specification.] If patentees could depart from 
 their specifications they might rest their claims upon matters 
 ■ not within their patents, and so the plaintiffs might claim 
 inventions which they had not described. The specification 
 having been put in, parol evidence was not admissible to explain 
 the intention of the patentee. The case of Neilson v. Harford^c) 
 decides that the construction of specifications, as of all written 
 instruments, belongs to the Court. \_Martin B. The defendant 
 did not object at the trial to the admissibility of the evidence 
 as to what the plaintiffs' invention was.J Because it was 
 applicable to other portions of the plaintiffs' case, but it must 
 not be applied to the consideration of the sufficiency of the 
 specification. It would be a most extraordinary proposition, 
 and never urged before, that a patentee may recover in an 
 action because the defendant has infringed an invention which 
 existed in the patentee's imagination only, and was a different 
 invention from that which had been described and claimed in 
 the specification of his patent. Russell v. Cowley (d), Newton 
 V. Voucher (e), Muntz v. Foster (_/), Bentley v. Goldthorp {g), 
 and Gamble v. Kurtz (A), were also referred to. 
 
 Pollock C. B. In this case we think the rule must be dis- 
 Judgment. charged. The action was for the infringement of a patent for 
 " improvements in valves or plugs for the passage of water or 
 other fluids." The pleas were : — 1st. Not guilty. 2nd. That the 
 plaintiffs were not the first and true inventors. And 3rd. That 
 the invention was not a new manufacture. 
 
 {d)Horn'blowery.Boullon,6Tl%xm (d) 1 C. M. & E. 864.; s. c. 1 
 
 B. p. 105. Webs. Pat. Ca. 465. 
 
 (b) 9 B. & C. 63. ; s. c. 3 C. & P. (e) 6 Exch. 859. 
 513. ; s. c. Mo. & Mai. 283. ; s. o. 1 (/) 6 M. & Gr. 734. 
 Webs. Pat. Ca. 112. (g) 1 C. B. 368. 
 
 (c) 8 M. & W. 823. ; s. c. 1 Webs. {h) 3 C. B. 425. 
 Pat. Ca. 331. 
 
BATEMAN AND MOOKE v. GRAY. 115 
 
 It appeared at the trial, that, on the examination of one of the Exchequer. 
 plaintiffs, he stated that his invention consisted of a combination x. T. i853. 
 of certain machinery, each portion of which was old, but (as the 
 jury found) the combination itself was new, and it was admitted 
 on all hands to be very useful. In the course of the trial the 
 specification, which had been duly filed, was also put in evidence. 
 
 It was, on this, contended that the claim in the specification 
 was that, of the three parts of the machinery therein mentioned, 
 each was new, and that the invention claimed was not (as the 
 plaintiffs contended it was) the combination which alone the jury 
 found to be new. 
 
 This point was also argued before us, and we are inclined to 
 think that there is much weight in the objection to the validity 
 of the specification on that point. But we do not think it ne- 
 cessary to decide this question, because it does not arise on the 
 present pleadings. The only issues on the record are as to the in- 
 fringement (about which there is no doubt), and the novelty of the 
 invention. We think that what was the invention was a question 
 for the jury, and that the production of the specification did 
 not conclude it ; it was evidence to be considered by the jury, 
 but no more, that the plaintiffs had so described their invention. 
 But it may be, even if the defendant's construction be the true 
 one, that the invention was new as a combination, and yet this 
 description of it in the specification erroneous. Now, here the 
 jury have clearly found the invention to be that of a new com- 
 bination of old parts ; and if this be so, the real and true ob- 
 jection which was open to the defendant was, that the plaintiffs 
 had not complied with the condition in their patent, by truly and 
 correctly describing it in the specification which they had filed. 
 But this could only be taken advantage of by a plea to that 
 effect. There was no such plea upon the record ; so that the 
 defendant cannot now avail himself of this objection. We do 
 not regret that this is the result. It seems to be a valuable and 
 new Invention, in fact ; and the defendant has actually taken out 
 a patent for the very same combination. This the jury thought 
 to be a plain infringement, of the plaintiffs' patent ; and in this 
 opinion of the jury we entirely concur. We should, therefore, 
 have been very sorry if a very arguable but somewhat doubtful ' 
 construction of the words used to describe the plaintiffs' claim 
 in the specification should have deprived meritorious inventors 
 of their proper reward. The plaintiffs may perhaps do well to 
 consider whether it may not be advisable to apply to the Attor- 
 ney-General or the Solicitor-General, to prevent the question 
 as to the specification arising at any future time. 
 
 ' Kule discharged. 
 
 12 
 
116 
 
 BATEMAN AND MOOKE'S PATENT. 
 
 Solicitor- 
 General, 
 llthFeb.1854. 
 
 Webster in 
 support. 
 
 In the Matter of Bateman and Mooee's 
 Disclaimer. 
 
 Application for Leave to enter a Disclaimer and 
 Memorandum of Alteration. 
 
 Cor., Sir Richard Bethell, S. G. 
 
 nth Feb., 1854. < 
 
 The patentees, in consequence of the suggestion of the Court 
 of Exchequer, in their judgment in the case of Bateman and 
 Moore v. Gray, above reported, applied to the* Solicitor- General for 
 leave to enter a disclaimer and memorandum of alteration, for the 
 purpose of amending the claim contained in their specification. 
 
 The application was opposed by the defendant in the late action ; and, in 
 consequence of the novelty of the point discussed and the importance of the 
 case, the proceedings are here reported at length. 
 
 By the proposed disclaimer it was sought to disclaim the words " first," 
 " secondly," and " thirdly," at the commencement of the claim, and also to 
 substitute the word " or " for the word " secondly," and the word " and " for 
 the word " thirdly," and further to alter the specification by inserting the 
 words " in combination with," between the second and third claiming 
 clauses at the end of the specification. 
 
 Webster, in support of the application, stated the terms of the judgment 
 of the Court of Exchequer, that the object of the application was to alter 
 the specification, so as to make it disclaim all the elements, and claim only 
 the combination of parts described. For this purpose, he stated, that the 
 patentees proposed to disclaim the words "first," "secondly," and "thirdly," 
 at the commencement of the claiming clauses at the conclusion of the speci- 
 fication, and in place of the word " secondly," to insert the word " or," and in- 
 stead of the word "thirdly," the word " and," and to make the other alterations 
 above mentioned. [Bethell S. G. By this specification you claim the matters 
 mentioned after the words " first," " secondly," and " thirdly," as three 
 separate and independent inventions. Now, by striking out these words 
 and inserting the words " or " and " and," the efiect is to convert this specifi- 
 cation from a specification claiming three things into a specification claiming 
 a combination of those three things.] It is the combined apparatus which 
 constitutes the invention, and so the jury found in Bateman v. Gray. 
 [Bethell S. G. Upon the application for a disclaimer, I think the matter 
 must be decided on the words of the specification itself. I cannot accept 
 the finding of a jury on such a point as an argument in favour of the ap- 
 plication. If you can show, from the body of the specification itself, that 
 your invention is described as a combination, that might be an argument in 
 favour of your being allowed to strike out words which may have been 
 inserted by mistake, and to insert others, so as to make the claim consistent 
 with the other parts of the specification.] The title of the patent is " Im- 
 provements in valves or plugs for the passage of water and other fluids." 
 These improvements consist in this combined apparatus. Take away any 
 one part, and you render all the apparatus useless, as a valve or plug. 
 Throughout the whole specification it is treated and spoken of as a whole. 
 [Bethell S. G. Does not the third part describe a perfect machine !* You 
 claim merit in the construction of each separate part.] The merit of the 
 invention was not in each part, but in adapting all the parts to one another, 
 which shows that it is for a combination. There is no use in any one part 
 separate from the others. The merit consists in adapting the opening Icey 
 
m RE BATEMAN and MOORE'S DISCLAIMER. 
 
 117 
 
 to this peculiar valve. [Bethell S. G. Your argument is directed to the Solicitoe- 
 nature of the apparatus, whereas I wish you to direct it to the construction General. 
 
 of the specification, and point out from it that the intention of the patentees 
 
 was to claim only the combination.] That sufficiently appears from the llthFeb. 1854. 
 
 descriptive part of the specification. [He then read the description of the 
 
 drawings contained in the specification from "Figure 1. shows," &c., to the 
 
 end of the description.] The specification never speaks of there being any 
 
 merit in the separate parts. If nothing but the drawing and this description 
 
 had been enrolled, the patentees would not have had any trouble in showing 
 
 that their invention consisted of the combination, and of nothing else. Now, 
 
 if this be correct, all that is now sought is to make the other parts of the 
 
 specification consistent with this. {Bethell S. G. I never saw anything so 
 
 unfortunate as the wording of this specification. Your strong argument in 
 
 favour of the application is, that the lower instrument which is described is 
 
 so constructed as to be suited to receive the upper instrument, which 
 
 enables you to efiect the operation of depressing the valve, and that the 
 
 upper instrument is so constructed that it conveniently fits into the lower or 
 
 valve-case. But when we come to look at the specification, there is not the 
 
 slightest intimation whether or not any merit exists in one part without the 
 
 other. The specification has been framed upon the supposition that the 
 
 patentee had a right to claim everything separately.] Tlae descriptive part 
 
 and drawings show that the combination is the only thing which the patentee 
 
 intended to claim. The object of the Act 5 & 6 Will. 4. cap. 83. was, that, 
 
 if it was quite clear what the patentee intended to claim as his invention, the 
 
 law officer might grant leave to amend the specification either by disclaimer 
 
 or by alteration. 
 
 Hindmarcli, in opposition. It was admitted by the witnesses of the Hindmarch in 
 plaintifis at the trial in Bateman v. Gray, that each and every part of this opposition. 
 invention was old at the date of the patent. The valves were old, the valve- 
 box was old, and the opening key was old. There is no claim to, or mention 
 made of, a combination in the specification, if combination there be. The 
 stand-pipe described, is constructed so that it may be applied to open any 
 one of the numerous valves in a street main, by means of a screw. This 
 hardly amounts to a combination ; it is like a claim to the combination of a 
 lock and a key, both being old, the lock having been previously opened by a 
 different key, and the key previously used for opening a different lock. The 
 patentees are either entitled to the combination, upon the construction of the 
 specification as originally framed, or they are not. If they are, there is no 
 need for the alteration they now seek to make. If they are not so entitled, 
 they cannot alter their specification so as to claim the combination ; for the 
 language of sect. 1. of the 5 & 6 Will. 4. cap. 83. is peremptory with respect 
 to a disclaimer or memorandum of alteration "not being such disclaimer, or 
 such alteration as shall extend the exclusive right granted by the said letters 
 patent." The effect of the disclaimer and alferation sought to be made is, to 
 transform a claim to the elements into a claim to the combination of the parts ; 
 and if it be allowed, it will be impossible to see whether the combination of 
 the valve with the opening key is claimed or not ; for a claim to two things, 
 A and B, does not necessarily impart a claim to a combination of them. And 
 there is this additional objection, that, after the alteration, it will be doubtful 
 whether the patentees intend to claim one combination or two, for either of 
 the two valves may be opened with the key. The claim will be to the valve 
 A or the valve B, and the key C. It will be left in doubt whether both of 
 the combinations are claimed, or only one ; and if only one, then which ? The 
 public ought not to be put in such a position, but are entitled to have clear 
 distinct claims, pointing out the extent of the exclusive right conferred in 
 the patent. It is clear that the disclaimer and alteration, if altered, would 
 have the effect of extending the exclusive right granted by the letters 
 patent. [Bethell S. G. Suppose I reject the words proposed to be inserted, 
 and confine the disclaimer to the words " first," " secondly," and "thirdly?"] 
 The words which would be disclaimed are words which restrict the claim to 
 the parts of the apparatus described ; and if such a disclaimer could be 
 valid and have any effect, it would extend the exclusive right granted by 
 the patent, and, therefore, it is not authorized by the statute. The case of 
 Kay V. Marshall (a) shows the effect of these words. The specification in 
 
 (a) 5 Bing. N. C. 492. 
 I 3 
 
118 
 
 BATEMAN AND MOORE'S PATENT. 
 
 Hindmarch in that case described the preparation of flax by maceration, and also the spin- 
 opposition. ning of flax so prepared. The spinning being old, it was there contended, as 
 
 here, that the invention was one and entire, and consisted of the spinning of 
 macerated flax. But the Court of Common Pleas held that such a construc- 
 tion could not be sustained, for the specification itself divided the invention 
 into two distinct parts. This specification must be construed as if the pa- 
 tentees had a patent for each and every of these three things which are 
 claimed ; and they now come and ask to have such a patent, which is now, 
 in fact, used for three old things, turned into a patent for two combinations of 
 these old things. There is no authority for such a course. The object of a 
 memorandum of alteration is to alter the descriptive matter in the specifi- 
 cation. Insufficient description may be amended and added to, but not so 
 as to extend the right. [Bethell S. G. The claim in every specification is 
 a very important clause to construe. There is no difficulty in the construc- 
 tion when the specification describes very clearly what the patentees claim ; 
 but the claim at the end must distinctly show that the body of the specifi- 
 cation agrees with it. Now, I cannot allow the applicants to enter this 
 memorandum of alteration, unless they can show me, from the body of the 
 specification, that their invention is the aggregate combination.] 
 Webster in Webster, in reply. You must read this specification with the knowledge 
 
 reply. of an engineer, and then it will be quite clear that what was intended to be 
 
 claimed was the combination. The descriptive part of the specification 
 begins by saying, " The practical application of our improvements will be 
 readily understood by referring to the drawing, in which, by way of illus- 
 tration, one mode of applying the opening key is exhibited." What is the 
 invention is the mode of applying the opening key. If the disclaimer extends 
 the right then the disclaimer itself is void, and a defendant in any action 
 upon the patent may put in a plea to that effect. A refusal of the fiat 
 would be conclusive against the patentees, for they have no appeal. If the 
 disclaimer be not within the Act, the public has an ample remedy, for it will 
 be void. 
 
 Decision of Bethell S. G. I have been very anxious about this case, and my atten- 
 
 Solicitor- tion has been directed exclusively and entirely to the wording of the speci- 
 
 General. fioation. I am considerably moved by the circumstance that the Court of 
 
 Exchequer seems to have recommended that a disclaimer should be had 
 recourse to ; and I am further influenced by the fact that my decision 
 against the application would be final and irrevocable. To the patentees the 
 consequences might be very serious, if I were to disallow the disclaimer, and 
 they have no appeal ; whereas, the public, if I do allow it, have other reme- 
 dies, should it turn out that I have been wrong in granting my fiat, or that 
 the patent is invalid in other respects. Looking at this specification, there 
 is, on the face of it, some evidence that the patentees intended their inven- 
 tion to comprise the entire apparatus, but they have expressed themselves in 
 a very . unfortunate manner. The title is, " Improvements in valves or 
 plugs for the passage of water and other fluids ; " the title, therefore, relates 
 to an entire machine, for a valve or plug is to be operated upon. The plug 
 cannot be operated on without a key. The first part of the specification is 
 very ambiguous. Then, when we come to the claims, each expresses, in a 
 distinct and separate form, both description of valves. There is, however, 
 enough to show that they claimed the key in connection with the rest of the 
 apparatus ; it may be argued, if not inferred, that they did not claim the key 
 alone, for they say that their invention relates to the operation of that key 
 upon valves for opening them. The patentees then refer to the drawing; and 
 this operates strongly upon my mind as an argument that this is what the 
 patentees intended to claim as their invention. They say, " When it is de- 
 sired to discharge or draw off" water from the ' main,' through the plug or 
 cock, the opening key is taken to the plug, and the part n thereof is lowered 
 into the neck of the valve- box hi), until the lower end of the tube rests 
 upon the valve c, at the same time that the lower end of the catch m, 
 passing outside or sliding over the projecting rim p upon the valve-box, 
 falls by its own gravity under such projecting rim, thus locking or attaching 
 the opening key or tube to the valve-box." I take that sentence to be a 
 description of the use of the apparatus in its complete form. All that pre- 
 cedes that passage is intended to describe the several parts which are to be 
 put together, and when put togethei-, shall form the " apparatus herein 
 described." I must therefore say, that the patentees have described several 
 
IN RE BATEMAN AND MOORE'S DISCLAIMER. 
 
 119 
 
 parts, and apparently with a view of claiming them conjointly. I have, Solicitor- 
 therefore, applied to this specification the rule which I wished Mr. Webster General. 
 
 to apply during his argument ; and I would not have allowed the disclaimer 
 
 unless I had found in the description some indication of an intention to claim llthFeh. 1854. 
 
 the apparatus as a whole. The several parts of the apparatus are made so 
 
 as to fit and agree with each other, so as to have a several and joint use ; 
 
 and if I have arrived at a just conclusion, they intended to claim the joint 
 
 use of them. With respect to the patentees' intention, I find, on looking at 
 
 the conclusion of the specification, that their claim is at variance with the 
 
 construction which may be put upon the body of the specification by the 
 
 operation of the words " first," '• secondly," and " thirdly," and they make 
 
 separate sentences of what otherwise might be said to be combined. In order 
 
 to make the claim consistent with the description, these words must be 
 
 altered ; and I think I may allow the patentees, at their own peril, to reject 
 
 these words. But I cannot allow the residue of the application, for the 
 
 insertion of the words " in combination with" clearly have a tendency, at 
 
 all events, to extend the patent. I doubt very much whether the disclaimer 
 
 will be of any service to the patentees ; but, for the reasons I have given, I 
 
 shall allow them to disclaim the words " firstly," " secondly," and " thirdly," 
 
 and to substitute the word " or " for the word " secondly," and the word 
 
 " and " for " thirdly," which, if the construction of the specification contended 
 
 for be correct, does not, in my opinion, extend the claim of the invention 
 
 beyond what the patentees originally intended. If this be so, I shall be 
 
 acting within the provisions of the statute ; and if not, the disclaimer will 
 
 not be of any avail. 
 
 Fiat granted. 
 [In pursuance of the fiat of the Solicitor-General, granted in this case, the 
 disclaimer was afterwards entered, filed, and enrolled, according to the 
 statute 5 & 6 Will. 4. c. 83. § 1. See the Disclaimer, ante, p. 91.] 
 
 CUTLER'S PATENT. 
 
 [No. 9140.] 
 
 Letters Patent, bearing date 6th November 1841, granted 
 to Job Cutler for " Improvements in the Construction of the 
 Tubular Flues of Steam Boilers." 
 
 To all to whom, &c. Now know ye, that in compliance with 
 the said proviso, I, the said Job Cutler, do hereby declare the 
 nature of my invention and the manner in which the same is to 
 be performed, are particularly described and ascertained in and 
 by the following description thereof, reference being had to the 
 drawing hereunto annexed, and to the figures and letters marked 
 thereon, that is to say, my invention consists. 
 
 First, of improvements in the construction of welded iron 
 tubes used as flues for steam boilers ; and 
 
 Secondly, consists in constructing the tubular flues of steam 
 boilers of coated iron tubes ; and in order to give the best 
 information in my power, I will proceed to describe the manner 
 in which I construct or weld tubular flues of steam boilers. 
 
 Firstly, I take a strip of rolled or hammered iron or steel, 
 of the required length, breadth, and thickness, depending 
 on the diameter and length of tube required, and proceed 
 to convert it into a tube in the following manner: If for 
 
 I 4 
 
 Patent. 
 6th Nov. 1841. 
 
 Specification. 
 6th May, 1842. 
 
120 " ' CUTLER'S PATENT. 
 
 Specification, a lap joint tube, I first bevel or chamfer the two opposite 
 edges as is well understood ; when this is accomplished, I proceed 
 to bend, strip, or narrow a sheet of iron into a cylindrical shape, 
 by bringing the edges together, or nearly so, as heretofore prac- 
 tised when making wrought iron w^elded tubes. When the tubes 
 are thus far prepared, they are to be placed in a furnace, so as 
 to bring the two edges to a good welding heat, and when in this 
 state, the tubes, having a mandril within each of them, are to be 
 drawn through dies or between grooved rollers. At the mouth of 
 the furnace, I place the end of a drawbench ; upon this bench, I 
 place two stops ; against these stops, a die or dies or a pair of 
 grooved rolls, of the required size for the tube about to be 
 welded. A mandril, made in the form of that shewn at Figure 1, 
 is then placed upon the drawbench, as is shewn; one end is to be 
 made secure at the back end of the bench, the other end of the 
 mandril is to be passed through the die or groove of the rolls ; a 
 ring of iron or steel is to be placed into the end of the tube, and 
 capable of sliding over the stem of the mandril or triblet. (See 
 Figure 2.) When these instruments are provided, and the iron or 
 steel scalp or tube is at a welding heat, the mandril is to be 
 pushed through the die, and inserted sufficiently far into the 
 scalp or tube, to allow the end which was previously made 
 smaller being passed through the die or groove of the rolls ; the 
 steel ring is then to be forced inside the scalp. The pliers should 
 then take hold of that part of the scalp or tube in which the 
 ring is inserted ; the chain, being then attached to the plyers, 
 should be set in motion, when the hot scalp or tube will be 
 drawn along the mandril through the die or dies, or through the 
 groove of the rolls ; the compression on the outer surface of the 
 edges of the hot scalp or tube, and the resistance of the 
 mandril within, will have the effect of welding the joint more 
 firmly and substantially than is now done by only com- 
 pressing the external surface of the scalp or tube without any 
 resistance being within. The iron or steel I should prefer for 
 welding into tubes upon this principle, would not be stronger 
 than eleven wire guage, but oftener thinner ; but I do not confine 
 myself to the thickness of the iron or steel. The mandril should 
 be made taper for some inches, but that part which is in 
 the die or dies, or in the groove of the rolls, where the 
 final welding of the tube is efiected, should be the size that is 
 necessary to ensure a good cementation, incorporation, or weld, 
 and to leave the inside perfectly smooth. I do not confine myself 
 to any particular form in the mandril or triblet, but have found 
 the one described to answer my purpose. I prefer that the die or 
 dies should be about ten or twelve inches through, and bell- 
 
CUTLER'S PATENT. 
 
 To face page 120. 
 
 FIG. I LONGITUDINAL SECTION 
 
 MANDRILL 
 
 NOTE.^This end orscsdp or tube Is to be made rather 
 smaller for the purpose of passing it through the die 
 alter the iqaadnl has been forced into the tube. 
 
 Wa 
 
 END VIEW OF DIE 
 
 Suction of scalp or lulta 
 betore welding. 
 
 Section of Iron or steel 
 tube when coated with 
 brass or other metal. 
 
 PLAN OF, PLIARS 
 
 MERS 
 
 "°°yon . 
 
 Washer to supiiorl the back 
 end of the mapdril. 
 
 FIG. a 
 
 @ 
 
 STEEL RINS 
 
 „„■.^.■..^.,^.,.,. > .^jf-^^fT'm^-^-^^r:) 
 
 Section of a coated iron or steel tube as applied 
 to the end plates of* steam boiler. 
 
 ^^^^ssss^^^^^^^^^s^^^^ 
 
 IswaceorAnvilHd fe 
 
 
 STEM OF MANDRILL 
 
 
 Maorory's Patent Cases, Vol. I. 
 
CUTLER'S PATENT. 121 
 
 mouthed at the entrance at the end next the fire, and very Specification. 
 slightly conical throughout. A buttrjoint tube can be made by 
 this means and i^)on this principle ; in doing so, however, the two 
 edges of the scalp should stand up a little, or should be bent or 
 prepared a little more egg shape in section, for the purpose of 
 welding. After the welding is accomplished, I draw the tubes 
 through a hole in similar dies, either in a hot or cold state, upon 
 a mandril or triblet, for the purpose of equalizing the thickness 
 of the tube throughout, and for smoothing both the inside and 
 the outside of the tube, and for closing the pores of the metal, 
 and laying the grain all one way : this will have the effect of 
 encreasing the consistency and durability of the tube, and will 
 be found most advantageous in making tubular flues of steam 
 boilers. The shape of the die or dies, and the means of opening 
 and closing them may be varied, and such as are now commonly 
 used in making what are known as Eussell'e tubes may be used ; 
 this part of the invention not depending on the construction 
 of the dies, but on the mode of using them in conjunction with 
 a mandril, and means of drawing tubes to weld them through 
 such dies, and over mandrils as above explained. If a welded 
 iron or steel tube, made according to the above described 
 process, or by the means of welding, is thicker than I require 
 for making tubular flues for steam boilers, I heat it in a furnace, 
 and insert a mandril inside the tube, and proceed to pass it 
 through a pair of groove rolls, rolling the hot tube off the 
 mandril in the same manner as described by Henry Osborn in 
 his patent for welding guns barrels, dated 1st May 1817; or 
 I draw them through a hole or dies, when on a mandril or 
 triblet in the same manner as I have described above for the 
 welding of iron or steel tubes. If drawn on a mandril as above 
 described, there will be no difficulty in extracting the mandril, 
 as the stem is of smaller diameter than the mandril, and 
 therefore the tube can be slided off. For the purpose of still 
 further improving the iron or steel tubes, I would place them 
 in a trough and cover them with a solution of two parts of 
 muriatic acid and three parts of water; after they have re- 
 mained a sufficient time, I take them out and scour them with 
 some gritty substance, to clean them from any oxide that may 
 remain, and then wash them free from the acid, and grease 
 them -well inside with any oily or greasy matter, and if mixed 
 with a little powdered black lead it will be better, I then insert 
 a mandril or triblet, and draw them through a hole or bed as 
 before described ; this has a very beneficial effect, inasmuch as it 
 hardens the metal ; renders both the inside and outside of the 
 tube perfectly smooth and uniform ; equalizes the thickness 
 
122 CUTLER'S PATENT. 
 
 "^T? Tsis' *^™"g'^0'i* 5 closes up the pores, lays the grain all one way ; and 
 renders it more durable, and otherwise more suitable for making 
 tubular flues of steam boilers. It should be remarked, that when 
 grooved rollers are used to weld in place of dies, that the rollers 
 are not driven by machinery, but simply revolve by the draft of 
 the tube being drawn between them. 
 
 Another mode of producing welded iron tubes, according to 
 my invention, is as follows : at the end of the draw bench, and 
 also close to the mouth of the furnace, I fix on the bench an anvil, 
 having a groove or not, but I prefer having a groove (and made 
 bell-mouthed at the end next the furnace), of near three fourths 
 of a circle upon its face ; this must be regulated to the sized tube 
 about to be welded. I then have hammers so placed that their 
 faces shall be brought to bear upon the tube or pipe about to be 
 welded, as it is drawn through the groove of the swage or anvil, 
 and over a mandril. These hammers I have worked by machinery 
 very fast, so that a continual succession of blows shall fall upon 
 the iron or steel tube as it keeps progressing over the mandril. 
 The faces of these hammers may vary in size and form, and 
 may be made a little hollow on their faces, or flat. A few inches 
 from the swage or anvil, lower down the bench, are to be placed 
 two stops for dies, or pair of groove rolls. A mandril or triblet is 
 then passed through the dies, or between the groove of the rolls, 
 until its tapered end reached to the mouth of the furnace, when 
 it is inserted into the end of [the heated tube which is about to 
 be drawn out and welded: the other end of the rod of the mandril 
 being firmly secured at the back end of the bench, the end of the 
 hot scalp or tube is then brought on to the mandril through the 
 groove in the anvil, and through the dies, or between the groove 
 of the rolls: when the ring is inserted inside the scalp or tube, and 
 the pliers attached to the chain belonging to the draw-bench 
 are to take hold of the end of the tube or pipe, at that part 
 where the ferule or ring (which is made to slide over the stem 
 of the nSandril or triblet) is inserted, the bench and hammers are 
 then set in motion. As the chain and pliers continue to draw the 
 tube over the mandril or triblet, which is stationary inside the 
 tube or pipe, and made to bear on that part where the hammers 
 are continually striking, causes a resistance inside the tube or 
 pipe to the blows given on the outer surface of the tube or pipe, 
 for the purpose of welding the two edges together. This process 
 will not produce a good shape of tube, but by the tube passing 
 through dies, or between grooved rolls, while in a hot state, with 
 a mandril within the tube ; and this may be done either while the 
 hammering process is going forward or afterwards, and such 
 means will have the effect of bringing the tube or pipe into a 
 
CUTLER'S PATENT. 123 
 
 circular or cylindrical form externally; and the mandril will Specification. 
 
 A.i> 1842 
 
 have the effect of equalizing the thickness of the iron or steel 
 throughout. I cause the welding to be effected by means of 
 the hammers, and the metal to be smoothed both inside and out, 
 and to be equalized throughout by means of the dies or grooved 
 rolls, and also to bring them into a perfectly cylindrical form. 
 
 I wish it to be understood, in respect to these parts of my in- 
 vention, that I do not claim the welding of iron or steel tubes by 
 means of hammers worked by machinery, nor do I claim their 
 being welded upon a mandril. 
 
 I will now describe another part of my invention. I take a 
 strip of rolled or hammered iron or steel of the required length, 
 breadth, and thickness, and by any of the known methods con- 
 vert it into a tube ; I then secure the two edges by either 
 brazing them or by welding them together; I then take a tube 
 made of copper, brass, or other metals, or alloys of metals, and 
 draw it upon the outer surface of the iron or steel tube ; I then 
 pass them through a hole or dies by means of a draw-bench, or 
 this may be done by means of grooved rolls, either upon a man- 
 dril or without a mandril. They must be then either drawn or 
 rolled, until they are reduced to the required sizes and thickness, 
 which process is well understood by tube makers. I also take 
 the iron or steel tube when prepared as above described, but 
 without being soldered or brazed, and proceed to cover it in like 
 manner with copper, brass, or other suitable alloy of metals. I 
 also proceed to cover or coat a welded iron or steel tube with 
 copper, brass, or other alloys of copper, in manner as before 
 described. I would remark, that I do not claim the making of 
 coated tubes above described: this part of my invention relating 
 to the application of coated tubes in constructing the tubular 
 flues of steam boilers. 
 
 What I claim, as the first part of my invention, is, the mode 
 of welding iron or steel tubes, by drawing them through dies or 
 between grooved rolls when and at the same time as drawing such 
 tubes on mandrils, the mandril being a necessary and important 
 part of the mechanical apparatus in producing the welding. 
 
 Secondly; I claim the welding of iron or steel tubes, by ham- 
 mering upon a mandril at the same time I am drawing the tube 
 from the fire along a mandril, so that the tube is welded on and 
 drawn over a mandrill at one process. 
 
 Thirdly ; I claim the application of either iron or steel tubes, 
 when coated with copper, brass, or other alloys of copper, in the 
 construction of tubular flues for steam boilers. And, 
 
 Fourthly ; I claim, in the construction of tubular flues of steam 
 boilers, the application of welded iron or steel tubes, which have 
 
124 CUTLER'S PATENT. 
 
 Specification, been drawn through a circular hole or die, or between rollers, 
 and which have been drawn over a mandril for the purpose of 
 smoothing the external and internal surfaces of the tubes, and 
 for regulating the thickness of the metal. [In witness &c.] 
 
 In the Queen's Bench. 
 Dec. 1. and 2. j^igj p^us Sittings for Middlesex after Mich. Term, 1847. 
 
 1847. ° 
 
 Scire facias io K.EGINA V. JOB CUTLEE, ThOMAS SlANEY, EdWARD BoWEE, 
 
 repeal letters AND GeOEGE SeLBT. 
 
 patent. 
 
 Cor., Lord Denman C. J., and a Special Jurj. 
 The applica- This was an action of scire facias brought on the Common 
 
 IrticlIto'Tnlw ^^'^ si*^^ °f t**e Court of Chancery (called the " Petty Bag"), 
 use, the mode against Cutler, the patentee, and Slaney, Bower, and Selby 
 not^beingnew, (who it was suggested claimed some interest in the patent), to 
 but having he- repeal the letters patent granted to the defendant Cutler, and 
 
 fore lieeii used. . 
 
 in applying issue having been joined as of Hilary Term, 10 Vict. (1847), 
 
 analogous arti- ^ venire was issued, returnable in the Queen's Bench, and a 
 cles to the same . ^ , , i • i ^ p i • i 
 
 purpose, can- transcript 01 the record was brought into that Court tor the trial 
 
 not be made of the issues. 
 
 the subject ot 
 
 a patent. The declaration set out the writ of scire facias, and stated the 
 
 tion of aTpatent S^^^^ ^^ ^^^ patent to the defendant Cutler, 6th November, 
 
 for " improve- 5 Vict. (1841), reciting the patentee's petition for a patent for an 
 
 construction of invention intituled " Improvements in the construction of the 
 
 the tubular tubular flues of steam boilers : " and then that the letters patent 
 
 flaes of steam ■, /• ^ i /> % i i i . -i ,. 
 
 boilers," claim- granted (in the usual, torm) to the patentee the sole privilege oi 
 ed the apphca^ working and vending his alleged invention, subject to the usual 
 
 tiouofiron . . „ .... 'J 
 
 tubes coated Condition for a specification, requiring that the patentee should 
 
 formsuchflu'es- Particularly describe and kscertain the nature of his invention, and 
 
 the tubes them- in what manner the same was to be performed, by an instrument 
 
 new neither ~^^ Writing under his hand and seal, and cause the same to be 
 
 ■was the mode enrolled in Chancery within six calendar months after the date 
 
 them so 'as to of the letters patent; the statement of the patent concluding 
 
 form flues new, ,yjtb a reference to the enrolment in Chancery in the usual way. 
 
 before used in The writ then suggested that the defendant Cutler had en- 
 
 the application j-oHed a specification, 6th May, 1842, with drawings annexed; 
 
 ofuncovered ,. i , i n / .„ . . 
 
 tubes to a simi- and then set forth the enrolment or the specification m words at 
 
 ^ffeM^^t^TihT l^^gt'i (with a refeaence to the enrolment), and copies of the 
 patent could drawings were annexed to the declaration and to the record. 
 
 not be sus- 
 tained. 
 
 The specification stated two modes of performing one part of the invention, either of -which, it 
 •was stated, would produce the effect. The learned Judge directed the jury that if either mode 
 would produce the effect, the patent would not fail in consequence of the other being imprac- 
 ticable : Hnld, that this was a misdirection. 
 
 Semble, that in a scire facias to repeal a patent, the burthen of proof is on the prosecutor, and he 
 must make out, not only a. prima facie case, but must prove it to the satisfaction of the jury. 
 
REGINA V. CUTLER AND OTHERS. 125 
 
 The writ then set forth several suggestions qf grounds for the Queen's 
 repeal of the patent. ' 
 
 The 1st, 2nd, 3rd, and 4th alleged, in different forms, that M. Vac. i847. 
 the patentee was not the inventor; after which the writ pro- 
 ceeded as follows (numbers being here added for the purpose of 
 reference) : — 
 
 5. And also that the said supposed invention in the said 
 petition, letters patent, and specification respectively mentioned 
 was not an invention of improvements in the construction of the 
 tubular flues of steam boilers, as by the said petition of the said 
 Job Cutler falsely suggested and represented unto Her Majesty. 
 
 6. And also that a certain part of the said supposed inven- 
 tion in the said petition, letters patent, and specification re- • 
 spectively mentioned (that is to say), that part of the said 
 invention which is in and by the said specification claimed and 
 described as " the mode of welding iron or steel tubes by draw- 
 ing theni through dies when and at the same time as drawing 
 such tubes on mandrils," was not an invention of any improve- 
 ment in the construction of the tubular flues of steam boilers, as 
 by the said petition of the said Job Cutler falsely suggested 
 and represented unto Her Majesty. 
 
 7. And also that a certain part of the said supposed inven- 
 tion in the said petition, letters patent, and specification re- 
 spectively mentioned (that is to say), that part of the said sup- 
 posed invention which is in and by the said specification claimed 
 and described in the words following (to wit), " the welding of 
 iron or steel tubes by hammering upon a mandril at the same 
 time I am drawina; the tube from the fire along a mandril so 
 that the tube is welded on and drawn over a mandril at one 
 process," was not an invention of any improvement in the con- 
 struction of the tubular flues of steam boilers, as by the said 
 petition falsely suggested and represented unto Her Majesty. 
 
 '8. And also tliat a certain part of the said supposed inven- 
 tion in the said petition, letters patent, and specification re- 
 spectively mentioned (that is to say), that part of the said sup- 
 posed invention which is in and by the said specification claimed 
 and described as " the application of either iron or steel tubes 
 when coated with copper, brass, or other alloys of copper in 
 the construction of tubular flues for steam boilers," was not an 
 invention of any improvement in the construction of the tubular 
 flues for steam boilers, as by the said petition falsely suggested 
 and represented unto Her Majesty. 
 
 9. And also that the said supposed invention in the said 
 petition, letters patent, and specification, respectively mentioned, 
 at the time of the making of Her Majesty's said letters patent, 
 
126 CUTLER'S PATENT. 
 
 Declaration. was not a new invention as to the public knowledge, use, and 
 exercise thereof in this realm. 
 
 10. And also that the said supposed invention in the said 
 petition, letters patent, and specification respectively mentioned, 
 was not an invention of any manner of manufacture. 
 
 11. And also that the said privilege which Her Majesty's said 
 letters patent purport to grant, was not and is not a privilege 
 of working or making any manner of manufacture. 
 
 12. And also that the said privilege which Her Majesty's said 
 letters patent purport to grant, so far as the same privilege 
 includes, applies to, and respects a certain part of the said sup- 
 posed invention in the said petition, letters patent, and specifi- 
 cation respectively mentioned (that is to say), that part of the 
 same supposed invention which in and by the said specification is 
 claimed and described as " the application of either iron or steel 
 tubes when coated with copper, brass, or other alloys of copper 
 in the construction of tubular flues for steam boilers," was not a 
 principle of working or making any manner of new manufacture. 
 
 13. And also that the said privilege which Her Majesty's 
 said letters patent purport to grant, so far as the same privilege 
 includes, applies to and respects a certain part of the said sup- 
 posed invention in the said petition, letters patent, and speci- 
 fication respectively mentioned (that is to say), that part of the 
 same supposed invention which is in and by the said specification 
 claimed and described in the words following, to wit, " I claim 
 in the construction of tubular flues of steam boilers the applica- 
 tion of welded iron or steel tubes which have been drawn 
 through a circular hole or die or between rollers and which 
 have been drawn over a mandril," was not a privilege of working 
 or making any manner of new manufacture. 
 
 14. And also that the said supposed Invention in the said 
 petition, letters patent, and specification respectively mentioned, 
 was not, at the time of the making of the said letters patent, of 
 any use, benefit, or advantage to the public. 
 
 15. And also that the said Job Cutler did not, by the said 
 instrument in writing, called a specification, or by any other in- 
 strument in writing under his hand and seal, particularly ascer- 
 tain and describe the nature of the said supposed invention, and in 
 what manner the said supposed invention is to be performed. 
 
 16. And, moreover, that the said Job Cutler did not, within 
 six calendar months next and immediately after the date of Her 
 Majesty's said letters patent, cause any instrument in writing 
 under his hand and seal, particularly ascertaining and describing 
 the nature of the said supposed invention, and in what manner 
 the same is to be performed, to be enrolled in Her Majesty's 
 
REGINA i>. CUTLER AND OTHERS. 127 
 
 said High Court of Chancery, Ijut hath neglected so to do, con- Queen's 
 trary to the form and effect of Her Majesty's said letters patent, ^™'^^- 
 and of the said proviso in that behalf in Her Majesty's said M. Vac. 1847. 
 letters patent mentioned. 
 
 The writ then alleged that for these reasons the patent was 
 void, and after stating that the defendants, Slaney, Bower, and 
 Selby, claimed some interest in the patent, concluded with the 
 usual command to the Sheriff to summon each of the defendants. 
 
 The declaration, after setting out this writ, stated a return of 
 scire fecihj the Sheriff, the appearance of each of the defendants 
 in Chancery, and concluded with the usual prayer of judgment 
 by the Attorney-General, that the patent and enrolment be 
 repealed, cancelled, vacated, &c. 
 
 The defendants severed in their pleas. Cutler and Slaney Pleas of Cutler 
 pleading (jointly), a single plea, traversing all the suggestions " ""''^' 
 for the repeal of the patent, and concluding to the country ; upon 
 which the Attorney-General joined Issue. 
 
 The other defendants. Bower and Selby, pleaded (jointly) a Pleas of Bower 
 separate plea to each suggestion (traversing its allegations) and "" ^ ^' 
 issue was joined in like manner upon each of those pleas. 
 
 Sir John Jervis A. G., M. D. Hill Q. C., and Hindmarch 
 appeared for the Crown. 
 
 Talfourd S. L., Whitehurst Q. C, and Webster appeared for 
 the defendants Cutler and Slaney ; and, 
 
 John Henderson for the defendants Bower and Selby. 
 
 Hindmarch opened the pleadings, after which 
 
 Sir J. Jervis A. G. stated the case on behalf of the prosecution. Sir J. Jervis 
 This is an action of scire facias, brought to repeal letters patent ^ mjn '" 
 granted by Her Majesty to the defendant Cutler, for certain al- 
 leged improvements in the manufacture of tubes for the flues 
 of tubular boilers. The defendants, in order to establish their 
 right to the monopoly comprised in the patent, must prove, 
 first, that the invention for which the patent was granted is of 
 utility to the public, and, secondly, that it is a new invention. 
 Moreover, in order that, when the monopoly has expired, the 
 public may have the full benefit of the invention, and that other 
 persons may not innocently infringe upon the rights of the 
 patentee during the continuance of the patent, it is necessary, 
 that a specification accurately describing the nature of the in- 
 vention, and also the manner of performing it, should be made 
 and enrolled within a certain time, namely, within six months 
 after the date of the patent. In every case where it can be 
 shown that the invention is not of utility to the public, or was 
 not new at the date of the patent, or has not been sufficiently 
 specified, the law presumes that the Queen has been imposed 
 
128 CUTLER'S PATENT. 
 
 T^Gfbrlh "^°"' °^ *^^ patentee has failed to perform his bargain to enrol 
 Crouin. a proper specification; and in such cases the proceedings by 
 
 scire facias are allowed by law to be instituted for the purpose 
 of repealing the patent. If in this case it could be proved on 
 behalf of the defendants that the invention was new at the date 
 of the patent, and that it is of utility to the public, nevertheless, 
 we submit, under the direction of his Lordship, that the invention 
 has not been properly described in the specification so as to 
 instruct a workman how to perform it. Gentlemen, you will 
 have to consider what was the mode adopted for manufacturing 
 the tubular flues of steam boilers up to the month of May, in the 
 year 1841, when the defendant Cutler took out this patent. The 
 original mode of manufacturing tubes was, to hammer together 
 the edges of the strips of iron to be made into tubes when at a 
 weldingheat; this process was performed by manual labour, and was 
 found to be both tedious and laborious, and consequently many 
 efforts have been made, from time to time, especially since the 
 introduction of gas (which occasioned a great demand for tubes), 
 to discover an improved method of manufacturing tubes by ma- 
 chinery. [He then described the various patents for manu- 
 facturing tubes which had been taken out since the year 1809, 
 and which were afterwards given in evidence (a), with the view 
 of showing that the various parts of the invention were deficient 
 in novelty.] The defendant, in his specification, claims the 
 following as his invention : — " First, The mode of welding iron 
 or steel tubes by drawing them through dies or between grooved 
 rolls, when and at the same time as drawing such tubes on 
 mandrils, the mandril being a necessary and important part of 
 the mechanical apparatus in producing the welding." " Secondly, 
 The welding of iron or steel tubes by hammering upon a man- 
 dril at the same time I am drawing the tube from the fire along 
 a mandril, so that the tube is welded on and drawn over a 
 mandril at one process." " Thirdly, The application of either 
 iron or steel tubes, when coated with copper, brass, or other 
 alloys of copper, in the construction of tubular flues for steam 
 boilers." And, " Fourthly, In the construction of tubular flues 
 of steam boilers, the application of welded iron or steel tubes 
 which have been drawn through a circular hole or die, or be- 
 tween rollers, and which have been drawn over a mandril for 
 the purpose of smopthing the external and internal surfaces of 
 the tubes, and for regulating the thickness of the metal." Now, 
 those being the claims which the defendant has made in his spe- 
 
 (a) These specifications are not given in this report, because they did not 
 affect the decision of the case. 
 
REGINA V. CUTLER AND OTHERS. 129 
 
 cification, what we contend is, first, that those portions of the Queen's 
 
 invention which are useful were not new ; and, secondly, that ; 
 
 those portions which were new are not of any utility; and with M. Vac. 1847. 
 respect to the third and fourth parts, I say they cannot be made 
 the subject of letters patent. It will be clearly shown that at 
 least one part of the process described in the specification is im- 
 practicable. The defendant Cutler entered into an agreement 
 with a Mr. Russell, a manufacturer of tubes at Birmingham, for 
 the manufacture of tubes according to this patent; but when 
 the necessary experiments were made by the defendant, at Mr. 
 Russell's manufactory, for the purpose of testing the practica- 
 bility and value of the invention, it was found to be wholly 
 useless. Mr. Russell will prove before you what was the 
 result of the experiments. At one time the tubes were 
 broken, at another the machinery itself gave way ; so that, in 
 the end, Mr. Russell, though he had under the agreement ac- 
 quired an interest in the invention, was obliged to give it up 
 altogether. The invention has recently been put to the test of 
 actual experiment, the defendant Cutler having the opportunity 
 aflTorded him of attending if he chose, when it was found, and 
 will be proved here to-day, that tubes could not be made in the 
 mode described and claimed as part of the invention. These 
 are the main facts of the case to be laid before you ; and, when 
 they have been proved, I apprehend, as to some of the issues 
 which seem to raise questions of law more than of fact, I shall 
 be clearly entitled to your verdict ; and, under the direction of 
 the learned Judge, as to several if not all the other issues on 
 this record, the evidence will, I believe, entitle me to a verdict 
 for the Crown. 
 
 Mr. RusseU and several other manufacturers were then called Evidence for 
 as witnesses for the prosecution, to prove the want of novelty 
 and want of utility in each part of the invention, and that the 
 first part of the invention was impracticable, and that tubes 
 could not be made in the manner described in the specification. 
 Mr. Russell proved the facts mentioned by the Attorney- 
 General, as to his agreement with the defendant Cutler, and aban- 
 donment of the invention as impracticable after repeated trials. 
 He and the other witnesses who were called also proved that, in 
 order to test the practicability of the fitst part of the invention, 
 they had carefully followed the instructions contained in the speci- 
 fication, for the welding of iron tubes by drawing them through 
 dies and over a mandril; and that, although every eifort was 
 made to insure success, they failed in their endeavours to make 
 the tubes, sometimes by the material breaking, sometimes by the 
 destruction of the apparatus ; and the conclusion to which the 
 
 K 
 
 the Crown. 
 
130 CUTLER'S PATENT. 
 
 thTcrown^ prosecutor's witnesses arrived was, that this mode of manufac- 
 turing tubes was utterly impracticable. 
 
 The mode of welding tubes, by drawing them between grooved 
 rollers and over a mandril, had not been tried ; but the witnesses 
 stated that, in their judgment, it was not practicable. 
 
 The specifications of the several prior patents, mentioned by 
 the Attorney-General (a), were put in, for the purpose of proving 
 the want of novelty in the modes of making tubes described in 
 the specification ; and, with respect to the third part of the in- 
 vention claimed in the specification (which, it was objected, could 
 not be made the subject of a patent), it was shown, and admitted 
 that the mode of coating the iron tubes with brass was well 
 known before the date of the patent, and that the application of 
 such tubes as claimed for the purpose of forming tubular flues in 
 the ordinary manner was the only novelty in that part of the 
 invention. 
 Talfourd s. L. Talfourd S. L. then addressed the jury on behalf of the 
 ants Cutler and defendants Cutler and Slaney, in support of the patent. After 
 Slaney. complaining of the diflSculty cast upon him by the conduct of 
 
 the defendants Bower and Selby, who, though only nominally 
 defendants, as licensees under the patent, were, in reality, ren- 
 dering all the assistance in their power to the prosecutor, the 
 learned Serjeant proceeded, — It has been said that this inven- 
 tion is not sufficiently described in the specification ; and yet, ac- 
 cording to the evidence, it appears that a common workman of the 
 prosecutor's has been able, from the drawings alone, contained 
 in the specification, to construct the apparatus, and to prove that 
 it is wholly useless. There certainly does not appear to be a 
 very great amount of consistency in this course of argument. 
 We contend, however, that the tubes made by the patentee are 
 much more useful than any made previous to the date of the 
 patent ; the great object to be attained was to procure tubes 
 thin, and yet of sufficient strength in the joints, so as to allow of 
 a more rapid generation of steam. The patentee secures that 
 object by making the joints of his tubes bevelled, and then 
 overlapping them. Joints so made become thoroughly incor- 
 porated in the process of welding. The patentee's method of 
 manufacture also secures a perfect smoothness of the internal and 
 external surfaces of the tubes or flues. The process of " furring," 
 as well as the accumulation of foreign substances in the tubes, 
 is thereby prevented. [The learned Serjeant then described, 
 by means of a model, the mode of manufacture adopted by the 
 patentee. He also explained that the mode of manufacturing 
 
 (a) See note (a) ante, p. 128. 
 
REGINA V. CUTLER AND OTHERS. 131 
 
 tubes in use prior to the date of this patent, was by making Qtoen's 
 
 Bench. 
 
 what are known as " pump-joints," that is, where the edges of 
 
 the skelp or plate of metal were merely placed in juxtaposi- ^- '^^=- i^*^- 
 
 tion, and so welded ; but the patentee's mode of manufacture, 
 
 in which the edges of the plates were bevelled and overlapped 
 
 (and thence called lap-welding), was so superior to the old 
 
 method, that it had to a great extent superseded it.J If the 
 
 invention of the patentee is as useless as is represented, why 
 
 should the prosecutor (whoever he is) incur all the trouble and 
 
 expense to procure a repeal of this patent ? If a man were to 
 
 take out a patent for building castles in the air, no one would 
 
 be silly enough to proceed by scire facias, in order to repeal 
 
 such a patent. All the witnesses who have been called on the * 
 
 part of the prosecution have admitted that the objects proposed 
 
 are most desirable, though they denied that those objects have 
 
 been accomplished. 
 
 "Witnesses were then called on behalf of the defendants to Evidence for 
 prove the novelty, practicability, and utility of the invention. '^^ '^«/«'«^™*s- 
 They produced a model of the apparatus, through which they 
 passed strips of lead so as to show the action of the machinery 
 in forming tubes, and this, it was contended, sufficiently proved 
 the practicability of the invention. It was, however, admitted 
 that the lap-welding, mentioned by Talfourd S. L., in his 
 opening, was not new, and that the defendants' apparatus was 
 not in use in England. 
 
 J. Henderson addressed the jury on the part of the defendants Henderson for 
 Bower and Selby, and said that he appeared to defend the Bower^and 
 rights of the patentees ; and that his clients (being necessarily ^«%- 
 made defendants) had acted bona fide, though he thought it un- 
 necessary to cross-examine the witnesses for the prosecution, or 
 to tender any evidence, which was only because it had been 
 done so much more ably by his learned friend Serjeant Tal- 
 fourd. 
 
 M. D. Hill for the Crown, in reply. The defendant Cutler, m. D. Hill in 
 In his third claim, says, " Thirdly, I claim the application of ''^^y- 
 either iron or steel tubes, when coated with copper, brass, or 
 other alloys of copper, in the construction of tubular flues for 
 steam-boilers." He says in substance, " I am the man to sug- 
 gest that if you take a compound tube, having iron on the 
 inside and brass on the outside, that compound thing will be a 
 very good thing for tubular flues." Now, suppose that were 
 so, as there is no novelty in a tube of that sort, it is only the 
 application of an old article to a new purpose, and that will 
 not support a patent for an invention. In the case of Losh v. 
 
 K 2 
 
132 CUTLER'S PATENT. 
 
 M. D. Hill in Hague (a), tried before Lord Abinger C. B., the subject of the 
 "^^' patent was a wheel to be used on railways; it appeared that 
 
 the wheel had been invented ten years before, when railways 
 were not used, and it was quite clear that the inventor of the 
 first wheel never intended it to be applied to railways, and that 
 the patentee of the second wheel intended it for .railways ; and 
 "hor A Abinger C. B. said that would not support a patent. A man 
 cannot have a patent for applying an old and well-known 
 article to a new use. If there is any invention on the part of 
 the patentee in inventing the mode by which it is to be applied; 
 if it is a thing to be fastened, and he fastens it in a particular way, 
 he may have a patent for that, if new ; but if he says, "here is 
 an old article and here is a new use," he cannot have a patent for 
 that, — and 'Lor A Abinger C.B. illustrates it thus: " Because a spoon 
 has been found a useful instrument to eat soup with, suppose 
 that it had never been applied for the eating of peas, a man 
 could not have a patent for eating peas with a spoon." This is 
 a familiar illustration, but it is conclusive. So in the case of 
 Kay V. Marshall, in which the decision of the Common Pleas 
 (5) was sustained in the House of Lords (c), it appeared that 
 before the time of the patent in question, cotton and silk had 
 been spun with a short reach, but this had never been applied 
 to flax. Mr. Kay found out how he could apply it in spinning 
 flax, namely, by macerating the flax ; and he took out a patent 
 for macerating the flax and for the short reach, and he claimed 
 the short reach distinctly and separately as Mr. Cutler has here 
 claimed the iron tubes ; and it was held that inasmuch as the 
 short reach had been used in other spinning machines, it was an 
 old mode of spinning cotton ; by merely applying it to a new 
 substance Mr. Kay could not sustain a patent for it. With 
 respect to the other part of the case, I submit that as one of the 
 modes of efiecting the object of welding, namely, by the dies, is 
 impracticable, the patent entirely fails. 
 
 Lord Denman C. J. Is there any authority for the propo- 
 sition that if there are various methods for carrying an inven- 
 tion into effect, and one is good and the other bad, that the 
 whole patent is bad ? 
 
 M. D. Hill. In the case of Lewis v. Marling (d), the in- 
 ventor in the specification had stated that a certain part of the 
 machine was necessary and useful. It turned out that, whether 
 the machine had it or had it not, the machine, as he described it, 
 would perform the operation ; and it was held that this did not 
 
 (a) 1 Webs. Pat. Ca. 202. (d) 10 B. & C. 22. ; s. c. 1 Wets. 
 
 (J) 5 King. N. C. 492. Pat. Ca. 493. 
 
 (c) 8 CI. & Fin. 245. 
 
REGINA V. CUTLER AND OTHERS. 133 
 
 avoid the patent : but it' has always been considered, that if you Queen's 
 
 describe distinct improvements or distinct modes of proceeding, , ! 
 
 and one fails, the whole fails ; because the public are deceived. M. Vac. 1847. 
 
 Webster, for the defendants Cutler and Slaney. In the case 
 of Lewis V. Marling Mr. Justice James Parke said, " There is 
 no case deciding that a patent is void because it is found not to 
 be useful ; although cases have gone the length of deciding that 
 if a patent be granted for three things, and one of them is not 
 new, it fails in toto. The prerogative as to granting patents 
 was restrained by the statute 21 Jac. 1. c. 3. s. 6. to cases or 
 grants ' to the true and first inventors of manufactures which 
 others at the time of granting the patent shall not use.' The 
 condition, therefore, is that the thing shall be new, and not that 
 it shall be useful ; and although the question of its utility has 
 been sometimes left to the jury, I think the condition imposed 
 by the statute has been complied with when it has been proved 
 to be new." (a) 
 
 Lord Denman C. J. (to the iury,"summing up). This is -^'■'^ Denman 
 
 . ,., ^> "" / f * C.3.tothejury. 
 
 a proceedmg in which the prosecutor comes to prove to your 
 
 satisfaction that the patent is open to some objection which is 
 fatal to it. It is not for the patentee to defend his right in the In scire facias 
 first place, unless he is attacked in such a manner as to require tent theTora^*' 
 that defence. He comes here to defend the patent which he probandi is on 
 has obtained from the Crown, and which, for the purposes of ^ P^secu or- 
 this proceeding, must be taken to be good unless it is shown to 
 be bad for some of the objections stated in this writ of scire 
 facias. [His Lordship then read his notes of the evidence to the 
 jury, and, after explaining so much of the specification as related 
 to the first part of the invention, proceeded as follows.] There 
 is an objection taken to the first part of the invention as claimed 
 by the patentee, that it is stated that the tubes may be made by 
 drawing them either through dies or between grooved rollers ; 
 and it is said that the dies will not produce the effect. But, in 
 my opinion, if either of these modes is practicable, and if it is 
 proved to be useful and new, as to this part of the invention it 
 seems to me that the patent will be good ; and you are to form 
 your opinion on the evidence — is it useful, is it new ? 
 
 With regard to the third and fourth of those claims, in which 
 the defendant Cutler claims the application of tubes in the con- 
 struction of tubular flues, it appears to me that he has no right 
 
 (a) See the observations upon the 542, 543. ; and also the observations 
 
 case oi Lewis -v. Marling; of Lord tipon the same case of.4Mer.soBB. and 
 
 Abinger C. B. and AMerson B. in Par'ke'B.ui Morganv. Seaward,'2M.. 
 
 Carpenter v. Smith, 9 M. & W. pp. & W. pp. 553—562. ; s. c. 1 Webs. 
 
 303, 304. ; s. c. 1 Webs. Pat. Ca. pp. Pat. Ca. pp. 190—196. 
 
 K.3 
 
134 CUTLER'S PATENT. 
 
 Lord Denman to take out a patent for the mere application of particular things 
 V.J. to the jury. , ,. , t^, , •, , , • x- 
 
 to any particular purpose. If he had made a new combination, 
 
 that might have been a new discovery, and a proper subject for 
 
 a patent ; but I think Lord AUnger's illustration (a) is a striking 
 
 one, and applicable to the present case — " It is like sweeping a 
 
 carpet of a new manufacture with an old broom." If he had 
 
 introduced a new article which required the application of a new 
 
 principle to the production of it, it might have formed a subject 
 
 of a patent ; but the mere application of a thing which existed 
 
 before does not appear to me to be a subject for a patent. 
 
 The mere ap- And in general terms, I think that the application of an article 
 
 plication of a ^q produce any particular result, the party having no claim either 
 known article * ipi. iio i- 
 
 to a new use, to the mode of producing the article or to the mode of applying 
 
 am)lkatk>n^not ^* ^^^ attaining that result, forms no ground for a patent. It 
 being new, appears from the specification, and indeed it is admitted by the 
 ground for a defendants, that.thS coated tubes mentioned in the specification 
 patent. are not new ; and I think, therefore, that the third part of the 
 
 invention which is claimed in this specification cannot be made 
 the subject of a patent. It seems to me, also, that the same 
 objection applies to the fourth part — nothing more is claimed 
 than the mere application of the tubes. This is, however, 
 a matter of law ; and I wiU not, therefore, trouble you with it, 
 for there is not any question of fact as to that. You will say 
 whether the other two parts of the invention are new and use- 
 ful : if either the first or the second part be not practicable, it 
 is not useful, and this is not a valid patent ; and if either part 
 was not new, the patent is not valid. The prosecutor under- 
 takes to make out both of those propositions. If you think he 
 proves either, your verdict wiU be for the Crown ; but if he 
 does not prove either to your satisfaction, your verdict wiU be 
 for the defendants. 
 
 M. D. Hill proposed to tender a biU of exceptions to the 
 ruling of the learned Judge, that if the process of welding, 
 either by means of the rollers, or by means of the die, was 
 practicable, the patent could be supported; and also to his 
 Lordship's ruling, that the onus lay on the prosecutor of 
 proving more than a. prima facie case that the alleged invention 
 was not new, and not useful. 
 
 Lord Denman C. J. You begin by attacking the patent. 
 M. D. Hill. If the result of the evidence leaves the matter 
 in doubt, I apprehend that the Crown would be entitled to a 
 verdict. In answer to a prima fade case on behalf of the 
 Crown, it is for the patentee to make out a clear case against 
 the Crown and the public in support of his title to a patent, 
 (a) See Losh v. Hague, 1 Webs. Pat, Cas. 202. 
 
REGINA V. CUTLER AND OTHERS. 135 
 
 Whitehurst (for the defendants Cutler and Slaney). Surely "^"^^^^ 
 that is not so. ' 
 
 M. D. Hill There can be no doubt, I apprehend, that a H. Vac. 1847. 
 patentee must prove the truth of his statement to the Crown 
 that his alleged invention is new and useful. 
 
 Lord Denman C. J. On the third claim, the proposition I 
 mean to lay down is, that the application of an old article is 
 not in itself the subject of a patent. 
 
 Whitehurst. To that direction of your Lordship I shall re- 
 spectfully except. 
 
 M. D. Hill. Do I understand your Lordship correctly that 
 no application of an article, not in itself claimed, can be the 
 subject of a patent unless the mode of application is claimed ? 
 
 Lord Denman C. J. Yes, or unless there be some new com- 
 bination. On the third and fourth claims in this case, I tell 
 the jury that there are no grounds for a patent ; and on the 
 questions of fact, that the prosecutor is to satisfy the jury that 
 the letters patent are void, that is, that the burthen of proof 
 lies on him. 
 
 Whitehurst then excepted to that part of the learned Judge's 
 charge relating to the third and fourth parts of the invention, 
 in which his Lordship had laid it down that those parts of the 
 invention could not be made the subject of a valid patent, (a) 
 
 The jury found that the whole of the invention was new and 
 practicable ; and on Lord Denman C. J. asking them if they 
 had formed an opinion that coated tubes were an improvement, 
 the foreman said, " We did not consider it ; " and after con- 
 ferring with the rest of the jury said, " My Lord, the jury are 
 desirous of returning a general verdict for the defendants, if 
 your Lordship will accept it in that way." 
 
 Verdict for the defendants. 
 
 Lord Denman C. J. I think that the question of burthen 
 of proof does not now arise, as the jury have found affirm- 
 atively that they consider the invention new and practicable. 
 
 Hindmarch, for the Crown. There being a verdict directed 
 for the Crown on one part of the plea of the defendants Cutler 
 and Slaney, that entitles the Crown to a verdict on the whole. 
 There is only one plea by those defendants, and if it be partly 
 untrue, the whole must be found against the defendants. The 
 pleas of the defendants Bower and Selby to bfe found for the 
 Crown are those pleaded to the 10th, 11th, 12th, and 13th sug- 
 gestions. 
 
 Lord Denman C. J. The mode of entering the verdict may 
 
 (a) Both bills of exceptions were afterwards abandoned. 
 e4 
 
136 CUTLER'S PATENT. 
 
 be considered hereafter, but I think the patentee's claims are 
 sustained as to the first two parts of the invention. 
 
 Summotis to After the trial, a summons was taken out on behalf of the 
 
 7he'"crown. Crown, for the purpose of having a verdict entered for the 
 
 Crown upon the pleas, so far as they related to the 10th, 11th, 
 
 12th, and 13th suggestions. The summons was attended by 
 
 the counsel on both sides. After hearing the arguments, 
 
 LoED Denman C. J. observed that there was only one plea 
 by the defendants Cutler and Slaney to the whole declaration, 
 and the jury having found a general verdict for the defendants, 
 he felt some difficulty in entering a verdict for the Crown upon 
 that part of the issue which he had taken upon himself ~ to de- 
 termine at the trial, and that the whole matter had therefore 
 better be brought before the Court. 
 
 His Lordship therefore made no order. 
 
 Queen's Bench. 
 Cor,, Lord Denman C. J., Patteson J., Coleridge J., and Erie J. 
 14. Jan. 1848. Hilary Term, 1848. 
 
 Motion for rule Sir John Jervis A. G. moved for a rule to show cause why 
 for a new trial, ^q^q should not be a new trial on two grounds. First, that the 
 learned Judge should not have directed the jury that if either 
 of the modes of welding iron tubes mentioned in the specification 
 — that is by drawing them through a die, or between grooved 
 rollers, was practicable, the patent was good; and, secondly, 
 that a verdict ought to have been entered for the Crown upon 
 the suggestions with respect to the third and fourth claims of 
 the patentee not being the subject of a patent. He also moved 
 for judgment non obstante veredicto. 
 
 Lord Denman C. J. I should have had the verdict entered 
 as you suggest ; but when I came to look at the issues, and to 
 consider that the jury persisted in their general verdict, I did 
 not think that I had authority to do it, and that it must come 
 froip the Court. 
 
 Rule nisi granted. 
 
EEGINA V. CUTLER AND OTHERS. 137 
 
 Queen's 
 
 Queen's Bench, ^^''°°- 
 
 Cor., Lord Denman C. J., Coleridge J., Wightman J., and JErle J. ^- '''• i^^^. 
 
 Mich. Term, 1848. I6. 8c 17. Nov. 
 
 1848. 
 
 Talfourd Serjeant, Whitehurst, and Webster, showed cause for Argument on 
 
 the defendants Cutler and Slaney. J. Henderson, for the other ™ "' 
 defendants, was not heard. 
 
 Hindmarch was then heard in support of the rule; after 
 which the Court intimated that they would call upon Jervis A. G., 
 and M. D. Hill, if they should, upon , consideration, think it 
 necessary, but they were not called on. (a) 
 
 Hilary Term, 1849. so. Jan. 1849. 
 
 Judgment was now delivered, as follows, by Judgment. 
 
 Lord Denman C. J. In the case of The Queen v. Cutler and K a patentee 
 
 Others, which was an action oi scire facias to repeal letters patent tion states that 
 
 for improvements in tubular flues to steam boilers, several issues ^'^ invention 
 
 . . -, .11.1 1-. ™^y "^ psr- 
 
 were jomed on the suggestions by which numerous objections formed by 
 
 were taken to the patent. The fifteenth suggestion was, that "*eroftwo 
 
 the specification did not particularly ascertain and describe the proved that one 
 
 nature of the invention. The hammers to be applied to the ^jUnotpMduce 
 
 iron tubes are described, and it is said that there are to be the effect, the 
 
 placed two stops per die, or a pair of grooved rolls, and a man- x^.e'specifica- 
 
 dril is to be placed between the dies, or between the grooved tion of a patent 
 
 rolls. On the trial there was evidence that neither the dies nor ments in the ' 
 
 the grooved rolls would do the work here assigned them ; and in construction of 
 
 . , PI T Ti 1 • 1 -P the tubular 
 
 commenting upon that part of the case, 1 told the jury that 11 flues of steam 
 
 either of those methods were proved satisfactorily to do the '>oiJ«rs." de- 
 
 ^ ■' , scribed two 
 work, the patent might be good, notwithstanding the imper- modes of per- 
 fections of the other. The case of Leuyis v. Marling (b) had pa^o^hrL 
 been quoted as establishing that doctrine, but on examination vention, either 
 we find that the Court then only said that the claim of some stated would^ 
 part of the machine which turned out to be useless did not produce the 
 
 6£f6Ct I £lt t}l6 
 
 vitiate the patent. This is certainly a very different thing from trial the Judge 
 
 describing a part of the machine as capable of co-operating in *?''^*^^-^?''y 
 
 the work, when in fact it is incapable, even though at the same mode suc- 
 
 time other means are described which might be effectually ^ten^^^^t 
 
 employed. The reader of the specification, relying upon it, begood, not- 
 
 might attempt to use the former mode in constructing the Jheiinp"i^c- 
 
 machinery, which would fail of its purpose from being too ac- tion of the 
 
 curately made according to the patentee's instructions. The that this was' a 
 
 rule, therefore, will be made absolute. misdirection. 
 
 Kule absolute for a new trial. 
 
 (a) It is deemed unnecessary in (6) 10 B. & C. 22. ; s. c. 1 Webs, 
 
 this case to give the arguments of Pat. Ca. 493. 
 counsel. 
 
138 CUTLER'S PATENT. 
 
 Queen's Bench. 
 2. July 1849. ^ Nisi Prius Sittings for Middlesex after Trin. Term, 1849. 
 
 Secotid trial of EeGINA V, JOB CUTLEK, ThOMAS SlANET, EdWAED BoWEB, 
 scire facias to r^ n 
 
 repeal the AND GeOEGE SeLBY. 
 
 patent. 
 
 Cor., Wightman J., and a Special Jury. 
 
 The mere ap- The above action of scire facias to repeal the patent granted 
 
 known article *° *^^ defendant, Job Cutler, now came on for trial a second 
 
 to a new use, time. 
 
 application not ®i^j «^o/tre Jervis A. G., M. D. Hill Q. C, and Hindmarch, 
 
 being new, but, appeared for the Crown. 
 
 of the patent, Talfourd S. L., Whitehurst Q. C, and Webster for the 
 
 having been defendants Cutler and Slaney, and 
 
 used m apply- '' 
 
 ing analogous John Henderson for the defendants Bower and Selby. 
 
 articles to the gj^ j^^^ Jervis A. G., having opened the case for the Crown, 
 same purpose, ^ /^ ' 
 
 is not a manu- said — If your Lordship rules in my favour on the third and 
 
 the meaning'of foT^J^^h claims, I may with perfect safety consent to a discharge of 
 
 the statute, and the jury as to the issues on the first and second ; for even if I 
 cannot be made . .. ., , , ,i- .,i 
 
 the subject of a were to go mto evidence, and succeed on the issues as to the 
 
 patent. £j.gt and second parts of the invention, and there was a mis- 
 
 ruling as to the third and fourth parts, there must be a new 
 trial. 
 
 Wightman J. Supposing that the Attorney- General should 
 induce me to treat the objections on the third and fourth claims 
 as matters of law, and rule the same way as was ruled before, 
 whatever becomes of the first and second claims, if I am 
 wrong with respect to the third and fourth the cause must come 
 down again to another trial. If, on the other hand, I am right, 
 the issues as to the first and second claims become unimportant. 
 
 Talfourd S. L. Except as to costs. 
 
 Sir J. Jervis A. G. We are not liable, because if the third 
 and fourth claims are bad the patent will be repealed (unless 
 the defendants disclaim), and the defendants will not be entitled 
 to any costs. 
 
 Wightman J. As the matter stands, I think that I must 
 direct a verdict for the Crown on the 10th, 11th, 12th, and 
 13th issues, in point of law. 
 
 Talfourd S. L. We will except to that direction. 
 
 Wightman J. I understand you to except, and that what- 
 ever ground you think fit now to take as to the exception, you 
 can shape the bill of exceptions hereafter accordingly. 
 
 Talfourd S. L. We would prefer to have a verdict on the 
 other issues instead of discharging the jury. 
 
REGINA u. CUTLER AND OTHERS. 139 
 
 Sir J. Jervis A. G. The jury, by consent, may find the Queen's 
 
 other issues for the defendants, but it must be clearly under- .' 
 
 stood that we are not to be bound upon the matters of fact T. Vac. 1849. 
 involved in those issues, as if we had offered evidence, and bad 
 an adverse verdict given against us on those issues. 
 
 Wightman J. This arrangement is made simply for the 
 purpose of making the record complete, and must not be used 
 to the prejudice of the parties consenting to the entry of the 
 verdict against them on the other issues. It was then agreed 
 that the learned Judge, directing a verdict to be given for the 
 Crown on the 10th, 11th, 12th, and 13th suggestions, a verdict 
 should, as a matter of form, be entered for the defendants as to 
 the other suggestions; this entry of the verdict not to be used to 
 the prejudice of the prosecutor in a Court of Error upon the 
 argument of the bill of exceptions. 
 
 Wightman J. to the jury. The patentee claims for matters Wightman J. to 
 
 as to two of which, namely, the first and second claims in the 
 specification, questions are raised, which would be for your con- 
 sideration ; but the third and fourth claims raise no question at 
 all for your consideration ; but questions of law, whether that 
 which was claimed was a manufacture within the meaning of 
 the statute, or was not a claim for any particular process or 
 manufacture, but for an application of certaia matters. Now, I 
 entertain a strong opinion on this question, as to whether a mere 
 application can be made the subject of a patent; for when once 
 you have got a material, you may apply it as you may think fit. 
 Therefore, it is truly said, that if the law is against the patentee 
 with respect to the third and fourth points of this invention as 
 claimed, the patent must fail, and it would be useless to try 
 matters of fact as to the other parts of the claim. It is there- 
 fore proposed, as I shall direct you, that in point of law you 
 must, upon that part of the case which relates to the appli- 
 cation of these tubes, find a verdict upon the issues for the 
 Crown, that as to the other issues a verdict shall, as a matter of 
 form, be entered for the defendants. This direction of mine 
 is proposed by the defendants to be made the subject of a bill 
 of exceptions; and I therefore direct you to find a verdict for 
 the Crown upon the 10th, 11th, 12th and 13th issues; and, for 
 the purpose of to-day merely, that the record may be complete ; 
 and by consent you may find a verdict for the defendants upon 
 the other issues. 
 
 Verdict accordingly. 
 No further proceedings were taken. 
 
 the jury. 
 
140 
 
 BUSH'S PATENT. 
 
 Patent 
 Zlst Sept. 18il. 
 
 Specification 
 
 2 1st March, 
 
 1842. 
 
 BUSH'S PATENT, 
 
 [No. 9094.] 
 
 Letters Patent, bearing date 21st September, 1841, granted 
 to William Bush for " Improvements in the Means of and in 
 the Apparatus for building and working under Water." 
 
 To all to whom, &c. I, the said William Bush, do hereby 
 declare, that the nature of my invention, and the manner in 
 which the same is to be performed, are fuUy described and 
 ascertained in and by the following statement thereof, reference 
 being had to the drawing hereunto annexed, and to the figures 
 and letters marked thereon, that is to say : My invention relates 
 to means and apparatus for working under water, in order to 
 produce excavations and building foundations of lighthouses, 
 piers, jetties, and other structures under water. And in 
 order that the invention may be most fully understood and 
 readily carried into effect, I will proceed to describe the drawing 
 hereunto annexed. 
 
 Description of the Drawing, (a) 
 
 Figure 1. represents the elevation or an external view of a 
 caissoon having my improvements applied thereto. Figure 2. 
 represents a section of figure 1., by which the mode of arranging 
 and combining the apparatus for working according to my in- 
 vention will be readily traced: AAA is the caissoon, which is 
 constructed of a series of cast-iron plates, affixed to each other 
 by. flanges, by the aid of the screws, bolts, and nuts. This 
 caissoon will be made of a height depending on the depth of 
 water, and also on the depth to which the lower part is to be 
 sunk before it comes to that solidity of bottom as will be proper 
 for commencing the building or foundation for the building. 
 The interior of the caissoon is divided into several compart- 
 ments, the nature and use of which I will now describe. The 
 lower part of the caissoon is open, and the lower chamber, 
 marked No. 1., is that in which the workpeople work, and is, 
 in this respect, when under water, similar in its use to a diving- 
 bell, as the workmen receive a constant supply of air (in the 
 chamber No L), which will be in a state of pressure depending 
 on the depth to which the chamber No. 1. of the caissoon is 
 sunk below the water's surface; this chamber No. 1. is formed 
 
 (a) For the drawings see Mechanics' Magazine, vol. xlvi. p. 169. 
 
BUSH'S PATENT. 141 
 
 by the partition B B, which is composed of a series of plates of Specification. 
 cast-iron, affixed together by their flanges, and by screw bolts 
 and nuts, the upper portion of the partition having a man-hole 
 C, with a suitable valve D, which, when on its seat, may be 
 securely fixed by screws and other means, as are well understood 
 by engineers, so as to make it air and water-tight when re- 
 quired, and it will be seen that the partition B constitutes a 
 floor of the next chamber : and it should be stated that the 
 joints of the caissoon, and of the various partitions and floors 
 and other parts, are all to be made water and air-tight, as is well 
 understood by engineers in putting together similar works, 
 therefore will not require to be described in this specification. 
 EE is another partition put together the same as that BB, thus 
 producing the chamber No. 2. between the partitions E E and 
 BB. FF is another floor or partition, put together in the 
 same manner as those at EE and BB. There are two man- 
 holes, Gr and H, which are respectively closed by the valves 
 I and J, such valves being capable of being closed water and 
 air-tight, by screws and other means, as are well understood by 
 engineers. To the underside of the man-hole H is afiixed the 
 trunk K, having at its lower end the valve L as is shown, and 
 M is a cock to allow air to pass into that trunk, in order that 
 the air therein may become as compressed as that contained in 
 the chambers No. 1. and No. 2. The object of this trunk is 
 to enable a workman to enter into and pass from the chamber 
 No. 2. to the chamber No. 3., with as little waste of compressed 
 air as possible ; the valve L being closed, and the stop-cock 
 closed, the valve I is to be opened when a workman enters the 
 trunk ; the valve I is again closed and made tight, when the 
 workmen within the trunk will open the cock M, by which the 
 pressure of the air in the trunk K will be equalized with that 
 in the chamber No. 2., when the valve L may be opened and 
 the workmen descend into the chamber No. 2. It should be 
 remarked, that although from the manner of making the section 
 of the apparatus shown in figure 2., it appears that the trunk K 
 is on the same plane as the opening into the chamber No. 2., 
 such is not the fact, for the trunk K is nearer to the side of the 
 caissoon, as shown in the plan of chamber floor at F F in 
 figure 3., and out of the way of the valve to the chamber No. 1. 
 On the chamber floor FF is constructed the chamber No. 3. 
 which rises up to any required height above the level of the 
 water, so as to exclude the water from entering into that part 
 of the caissoon, or into the chambers No. 3. or No. 2. There 
 is a fourth chamber formed at the upper part of the caissoon 
 
142 BUSH'S PATENT. 
 
 Specification marked No. 4., which is closed at the upper part by two man- 
 holes ER : hence it will be seen that the chamber No. 3. is the 
 only one which is generally open to the outer atmosphere, ex- 
 cepting at low water, when the chamber No. 4. is open to the 
 outer atmosphere by means of the valves N N, which are kept 
 in their places or removed from their seats by the rods 00 
 passing through stuffing boxes SS into the chamber No. 3. 
 P P are pipes or tubes rising to the upper part of the chamber 
 No. 4., and at their lower ends they are connected to air pumps, 
 one of which is shown at Q, affixed on the chamber floor F, 
 figure 2., it being worked by a crank and fly-wheel as is shown. 
 
 Having thus explained the mode of arranging the parts of the 
 apparatus, I will describe the manner of using the same. The 
 chambers Nos. 2, 3, and 4. being full of air, the valves NN are 
 to be kept closed, and the caissoon is to be floated out to the 
 place where it is to be used. The valves NN are to be opened, 
 and the water will flow into the chamber No. 4, and the lower 
 end of the caissoon descends below the water, and the chamber 
 No. 1. wiU also be filled therewith, but the chambers Nos. 2. and 
 3. will be kept free from water, the valve C at the upper part 
 of the chamber No. 1. having been closed before putting it afloat. 
 The caissoon having been lowered down into its position, work- 
 men are to be lowered down or are to descend by ladders into 
 the chamber No. 3. of the caissoon, some of them descending 
 into the chamber No. 2 ; the valve over the man-hole GH is 
 then made fast, and the pumps set to work, by which the air is 
 compressed to a degree proportioned to the depth to which that 
 chamber is sunk below the surface of the water, when the valve 
 on the opening into the chamber No. 1. is opened, and the 
 pumps are kept constantly at work, which will keep the water 
 out of the chamber No. 1. in a similar manner to which water is 
 kept out of a diving-bell, and the workmen will be enabled to 
 descend into the chamber No. 1. and excavate the sand or earth 
 and throw it into the chamber No. 2., and when a considerable 
 quantity of sand or earth has been raised into the chamber 
 No. 2., the workmen ascend into the chamber No. 2., and close 
 the valve at C into the chamber No. 1., the valve J over the 
 man-hole G of the chamber No. 2. is opened, the air in the 
 chamber No. 2. being allowed to escape gradually, so as to equa- 
 lize the pressure of the air in the chamber No. 2. with that of 
 the outer atmosphere. The earth or sand in the chamber No. 2. 
 is then to be raised out of the caissoon through the man-hole G, 
 and through the chamber No. 3. by suitable tackle and buckets ; 
 and in this manner is the sand and earth to be raised from the 
 bottom into the chamber No. 2. and thence away through the 
 
BUSH'S PATENT. 143 
 
 chamber No. 3., the caissoon progressively sinking till it comes ^f"^-^l^^" 
 to a sufficiently solid bottom to allow of commencing the found- 
 ation of concrete or other materials, or if the bottom be a rook, 
 then by masonry, till the chamber No. 1. is considerably filled 
 therewith ; then the chamber partition or floor B B is to be re- 
 moved, and the building continued, and, if it be well done, it 
 will prevent the flow of water, and then the whole of the inte- 
 rior works of the caissoon may be removed, and the building 
 continued ; and the upper part of the caissoon may be removed 
 above watermark, or remain and constitute an external casing 
 to the building. 
 
 It has been above stated that the air pumps receive a supply 
 of air from the chamber No. 4. by the pipe PP : the object of 
 this arrangement is to take advantage of the compression of air 
 which may be obtained by the rising of the water in that 
 chamber, and thus to save labour in using the pumps, as they 
 will be working with compressed air; for it will be evident 
 that, if the valves NN be placed in a position to be above 
 water line at low- water mark, atmospheric air will enter and fill 
 the chamber No. 4. : and when the water rises, the air within 
 the chamber No. 4. will be compressed in proportion to the rise 
 of the water therein ; at the same time there are to be stop cocks 
 on the pipes or tubes from the chamber No. 4. in order to stop 
 them, should the supply be exhausted, and ways opened from 
 the chamber No. 3. into the pump, for the supply of air thereto. 
 
 Having thus described the nature of my invention, and the 
 manner of performing the same, I would have it understood that 
 I do not confine myself to the precise details shown, provided 
 the peculiar character of my invention be retained ; but what I 
 claim is, the mode of constructing the interior of a caissoon in 
 such manner that the workpeople may be supplied with com- 
 pressed air, and be able to raise the materials excavated, and to 
 make or construct foundations and buildings, as above described. 
 
 In witness, &c. 
 
 At the trial of the action of Bush Eoohester, under the direction of our Description of 
 
 V. Fox and Others, a paper read at President, Mr. Cubitt, is designed to the alleged in- 
 
 the Institution of Civil Engineers, consist of 3 large openings, spanned fringement. 
 
 on the 13th May, 1851, by Mr. by cast-iron segmental girders, and 
 
 John Hughes, one of the defendants, of a passage to admit masted vessels 
 
 was given in evidence by the plain- to the upper parts of the river, 
 
 tiff. The following contains all that across which a moveable bridge wiU 
 
 is material : — be placed. 
 
 On the Pneumatic Method adopted Of the large openings, the central 
 
 in constructing the Foundations of the one is 170 feet wide, and the two 
 
 New Bridge across the Medway at others are 140 feet each. 
 Rochester. The site selected for it is in a line 
 
 The bridge which is now in course with the principal streets of Roches- 
 
 of being erected over the Medway at ter and Strood, and identical with 
 
144 
 
 BUSH'S PATENT. 
 
 Description of the position of an ancient wooden 
 the alleged in- bridge, which existed before the 
 Jnngement. erection of the present stone struc- 
 
 ture. 
 
 * M * M # 
 
 The river piers of the new bridge 
 each occupy an area of 1118 square 
 feet, having a width of 17 feet 8 
 inches, and a length between the 
 points of the cutwaters of 70 feet ; 
 they will stand upon a series of cast- 
 iron cylinder piles 7 feet in diameter, 
 carried into the solid ground, suffi- 
 ciently below the bottom of the 
 river to ensure a substantial support 
 for the insistent weight. 
 
 The whole of the material will be 
 excavated and rempved from the 
 interior of the piles, which are to be 
 filled up with concrete and brick- 
 work, and covered by massive cast- 
 iron bed-plates to carry the masonry. 
 
 The cylinder piles of the river 
 piers are at central distances of 9 
 feet longitudinally, and of 10 feet 
 transversely ; there being 14 to each 
 pier. 
 
 The cylinder piles in the abut- 
 ments are 6 feet in diameter; the 
 Strood abutment requiring 30, and 
 the Rochester abutment 12. 
 
 Each pile consists of 2, 3, or more 
 cylinders, 9 feet long, bolted together 
 through stout flanges ; the bottom 
 length has its lower edge bevelled, 
 so as to facilitate the penetration of 
 the ground, and all the piles are 
 pitched with the most studied ac- 
 curacy, to ensure their being in true 
 position, horizontally and vertically. 
 
 A substantial timber stage was, in 
 the first instance, erected over the 
 whole site of each pier, chiefly for 
 the purpose of accomplishing this 
 accuracy in pitching the piles, as 
 , well as for furnishing the means of 
 
 maintaining it during their descent 
 into the ground ; it provides, too, the 
 necessary accommodation for the 
 movements of the workmen, and for 
 placing, with convenience, the ma- 
 chinery and materials employed. 
 
 The arrangements first made for 
 forcing the cylinder piles into the 
 ground, were framed in reliance upon 
 a section of the bottom of the river, 
 which indicated beds of soft clay, 
 sand, and gravel, overlaying the 
 chalk, found at a depth of about 44 
 feet below average high water line ; 
 and accordingly they contemplated 
 the application of Dr. Potts' pneu- 
 matic method, so successfully carried 
 out in other similar places. 
 
 A few trials on the piles of the 
 Strood pier gave abundant evidence 
 
 that the bottom there consisted of a 
 mass of hard rock or stone, closely 
 packed together ; and an unusually 
 low tide afibrded the opportunity, 
 shortly after, of examining the 
 ground, and of confirming the opi- 
 nion that a mere action upon the 
 piles, brought about by a partial 
 vacuum would be totally misapplied 
 in such a situation. 
 
 When uncovered by the tide, the 
 entire surface to be occupied by the 
 pier was found to consist of a com- 
 pact mass of Kentish rag stone, of a 
 thickness or depth that could not 
 readily be ascertained, the surface, 
 for the depth of a few inches, being 
 composed of loose small stones and , 
 mud. 
 
 Upon these facts, it was imme- 
 diately decided that the pneumatic 
 process should be reversed, so as to 
 give to each pile the character of a 
 " Diving-bell " during the operation 
 of excavating and removing the 
 material from its interior, and 
 during the filling up with brick- 
 work and concrete. 
 
 The arrangements and contri- 
 vances consequent upon this change 
 were prepared forthwith ; and having 
 been successfully applied, with very 
 satisfactory results, some account of 
 them is offered, as forming the prin- 
 cipal subject of this paper. 
 
 The conditions to be answered 
 were : — That the cylinder pile should 
 be kept free from water until it had 
 been sunk at least 30 feet into the 
 bottom of the river, in order that 
 the men inside might excavate with 
 ease; — that the stone, earth, &c., 
 when excavated, should be promptly 
 removed from the interior of the 
 pile, and conveniently disposed of; 
 — and that the pile should descend 
 in every respect truly placed. 
 
 One of the cylinders, 7 feet in 
 diameter and 9 feet long, was fitted 
 with a wrought-iron cover securely 
 bolted to it ; through this cover two 
 cast-iron chambers, which may ap- 
 propriately be called air locks, pro- 
 jected 2 J feet above the top of the 
 cylinder, and 3 feet 9 inches below 
 the cover; they are D-shaped in 
 plan, with a sectional area of about 
 6 square feet. 
 
 The top of each air lock is pro- 
 vided with a circular opening, 2 feet 
 in diameter, and with a flap, working 
 on a horizontal hinge, that serves to 
 close it air-tight when the chamber 
 is filled with compressed air. 
 
 The communication from the 
 chamber to the inside of the cylinder 
 
BUSH'S PATENT. 
 
 145 
 
 is made through a rectangular open- 
 ing 2 feet by 3 feet 4 inches on the 
 flat side of the chamber, and has 
 an iron door, working on vertical 
 hinges, to close it air-tight when re- 
 quired. The flap is analogous in its 
 use to the lower gate of a canal lock, 
 and the door answers a purpose cor- 
 responding to that of the upper gate. 
 These air locks ai-e placed upon 
 opposite ends of the same diameter 
 of the cylinder, and the lock doors 
 open so as to communicate with 
 opposite semi-cylinders. 
 
 Two light wrought- iron cranes are 
 fixed inside the cylinder, the jibs of 
 which sweep over the space between 
 the air locks, and extend into the 
 chambers when the doors are open, 
 so that a loaded bucket suspended 
 from' the crane may be deposited in 
 the chamber with the least amount 
 of labour. 
 
 A chain passes over the sheaves of 
 these cranes, and round the barrel of 
 a windlass, worked by two handles 
 in the ordinary way, and carries a 
 loaded and empty bucket at opposite 
 ends. 
 
 The air locks are furnished with 
 cocks, communicating from the in- 
 terior of the cylinder to the chamber, 
 and from the chamber to the atmos- 
 phere. 
 
 Of these, each air lock has two 
 sets; one set, accessible from the 
 inside of the chamber, is designed 
 for the use of men passing into or out 
 of the cylinder, with the view of 
 giving them perfect command over 
 their own movements, and of freeing 
 them from dependence upon the at- 
 tention of others. The other set of 
 cocks is for use in passing buckets or 
 materials through the air locks. One 
 cock, communicating between the 
 chamber and the atmosphere, is 
 placed in charge of a man inside 
 the cylinder, who, having closed the 
 door, can then let off compressed air, 
 and so pass a bucket from in to 
 outside. 
 
 Another, communicating from the 
 interior of the cylinder to the cham- 
 ber, is worked by a man outside, who 
 has thus the power, on closing the 
 flap, to fill the chamber with com- 
 pressed air, and to pass a bucket 
 from out to inside. 
 
 Two stout glass lenses, 9 inches in 
 diameter, are fixed in the cover of 
 the cylinder, and give light during 
 the day to men working the cranes 
 and look doors. Two similar lenses 
 admit light to the chamber of the air 
 
 locks, so that men passing through Description of 
 are not left in darkness. the alleged 
 
 A boarded stage, that can be fixed infringement. 
 or removed with ease and dispatch, 
 is fixed in the pile at a convenient 
 height for the men working the 
 winch and the air locks ; and open- 
 ings are left in it, of the same dia- 
 meter, for the passage of buckets to 
 and from the bottom of the pile. 
 
 Compressed air is supplied to the 
 cylinder pile by a double-barrelled 
 pump, 12 inches in diameter and 18 
 inches stroke, with double action, 
 and driven by a six-horse power 
 non-condensing steam engine. The 
 air-supply pipe is 2J inches diameter, 
 formed of iron lap-welded tubes, 
 with hose pipes at the ends, so as to 
 accommodate it to the various posi- 
 tions in which it may be required. 
 The air pipe is terminated within the 
 cylinder by a valve opening inwards, 
 to obviate any accidents that might 
 arise from the bursting of the pipe. 
 
 Each cylinder composing the pile 
 is fitted up with a light frame of 
 timber, carrying a short ladder ; and 
 the ladders being alternately pitched 
 to the right and left, on a diameter 
 of the cylinder, which is at right 
 angles to the bucket way, afford at 
 all times free communication from 
 bottom to top, and the reverse, 
 without interruption to the passage 
 of the buckets. 
 
 Another advantage sought in this 
 arrangement was, that all the tim- 
 bers and ladders, being of small di- 
 mensions, are light enough to be 
 fitted and adjusted or removed by 
 one man, and the addition of suc- 
 cessive cylinders does not disturb 
 the preceding existing state. 
 
 At first the expelled water was 
 made to pass into the river, under- 
 neath the lower edge of the pile ; 
 but so soon as the bottom became 
 consistent enough to oppose a high 
 degree of resistance to such an out- 
 let it was found necessary to provide 
 other means for its escape. 
 
 The most obvious one appeared in 
 the adaptation of a pipe leading from 
 the interior of the pile to the water 
 level, through its circumference ; 
 but objections to this as naturally 
 occurred, not so much on account 
 of the fluctuation of the tide, which 
 in itself would not have increased 
 the unavoidable column to be con- 
 tended against, as that, by reason of 
 the depression of the pile into the 
 ground, an outlet so placed would 
 be beyond the reach of control, and 
 
146 
 
 BUSH'S PATENT. 
 
 Description of might become blocked up, and com- 
 tne alleged paratively useless in the course of a 
 
 infringement. ghort time. 
 
 Other reasons, resting upon eco- 
 nomy of labour, had their -weight in 
 suggesting an outlet through the side 
 of the uppermost cylinder, which al- 
 ready contained all the other requi- 
 site fittings for the work, and in 
 leading to the adoption of a pipe 
 having the form of a syphon, the 
 longer leg of which depended to the 
 bottom of the pile, and was subject 
 to the pressure of the condensed 
 air on the surface of the water 
 within ; whilst the shorter leg, lead- 
 ing into the river, had the effect 
 , of relieving the amount of compres- 
 
 sion for nearly the difference as a 
 column of water between the sum- 
 mit of the syphon and the surface of 
 the river outside, by the action of 
 the external atmosphere, provided a 
 vacuum was once obtained in the 
 body of the syphon. 
 
 Such an effect was readily pro- 
 duced by connecting the summit 
 with the exhaust side of the air 
 pumps by a pipe which could be 
 opened or closed at pleasure, and a 
 very few revolutions of the pumps 
 then sufficed for the purpose. 
 
 Practically the employment of the 
 syphon was attended with even more 
 simple preparation than this, when 
 the difference in level between its 
 summit and the surface of the river 
 was not much. 
 
 A few pounds additional pressure 
 was in this case enough to start it. 
 
 Sometimes it has happened that 
 the pressure was sufficient, in con- 
 junction with the resistance of the 
 bottom, to prevent any influx of 
 water from the river. 
 
 In such cases the air rushed 
 through the syphon pipe until the 
 resistance of the ground became re- 
 duced, and the water again rose. 
 This proved to be attended with 
 much inconvenience, in the shape of 
 a dense fog, caused by the sudden ex- 
 pansion of the compressed air, and 
 was frequently so great as to prevent 
 men, who were at work on the bot- 
 tom, from seeing clearly the objects 
 around them, although each provided 
 with a lighted candle. It was at 
 once remedied by placing a cock on 
 the internal leg of the syphon, which 
 could be closed or opened as the 
 workmen desired. 
 
 The syphon, when fairly at work, 
 did the duty ofa safety-valve, as well 
 as of an outlet for the continual change 
 of air ; and when it was closed, by 
 
 shutting the cock just mentioned, 
 the air locks were worked at regular 
 intervals, so as to abstract a portion 
 of the air contained in the pile, and 
 to replace it by fresh air through the 
 pumps. 
 
 "When the water was driven out 
 under the bottom of the pile, as was 
 the practice in the beginning, the air 
 escaped in bursts of more or less 
 violence at regular intervals ; the 
 amount of such violence, and the 
 period of the intervals depending 
 upon the depth of water. 
 
 The burst of air from the interior 
 of the pile occasioned a heavy surge 
 in the water immediately surround- 
 ing it, and was quickly succeeded by 
 a reaction from the river. 
 
 When working under a column of 
 30 or 40 feet of water, the escape of 
 air suddenly gave rise to a depres- 
 sion of 2 or 3 lbs. on the square 
 inch, as indicated by the pressure 
 gauge, which, from the continued 
 action of the air pumps, and the flow 
 of water from the outside, was as 
 rapidly reversed. 
 
 Two disadvantages of importance 
 arose from this alternately preponde- 
 rating action and re-action. 
 
 The first followed the escape of 
 air, when the fog consequent in the 
 pile obscured the lights and chilled 
 the workmen ; the second resulted 
 from the rush of water out of the 
 river, rising to some height in the 
 pile, so as to wet the men up to their 
 loins. 
 
 When the syphon was adopted, 
 such effects entirely ceased, and the 
 bottom was kept as dry as could be 
 desired, by a very little management, 
 whilst the workmen proceeded in 
 more comfort and with increased 
 confidence. 
 
 It is evident, on a slight conside- 
 ration of the subject, that a relation 
 would be found to exist between the 
 upward pressure exerted by the 
 compressed air and the action of gra- 
 vity on the mass of the pile, which, 
 according to circumstances, would 
 give a preponderance to one force or 
 the other, or would bring them into 
 exact equilibrium. It was as ob- 
 viously requisite to insure the down- 
 ward action of the pile, and to give 
 it weight, which should at all times 
 be superior to the upward pressure. 
 With this object, two stout trussed 
 beams of Dantzic timber were laid 
 on the top of the cylinder, in a di- 
 rection suitable to bring the adjacent 
 piles into action, as counterbalance 
 weights, by four chains passing over 
 
BUSH'S PATENT. 
 
 147 
 
 cast-iron sheaves. One end of each 
 chain was attached to the flange of 
 the adjoining pile, and the other was 
 secured to one of the 6 feet cy- 
 linders, which, for this occasion, was 
 so suspended inside the 7 feet cy- 
 linders forming the pile, as to travel 
 freely up or down. 
 
 A little contrivance was requisite 
 to place any desired limit upon the 
 space through which the counter- 
 balance weight should act, and also 
 to bring the weight at each end of 
 the truss beams into effect at the 
 same instant of time. 
 
 This contrivance will be readily 
 understood by an inspection of the 
 drawings, and it is merely proper to 
 o.bserve, that a weight of 40 tons, 
 additional to that of the pile, could 
 with facility be placed upon it, and 
 kept under every necessary control 
 as to its range and period of action. 
 
 Lastly, a windlass was fixed on the 
 outside, for the purpose of hoisting 
 the loaded buckets out of the air 
 locks, and for lowering the empty 
 ones into them, or the reverse ; and 
 this completed the mechanical ar- 
 rangements of the apparatus. 
 
 At a period much before this stage 
 was reached, it became an object of 
 anxious interest to gather from past 
 experience what was the probable 
 limit to which the employment of 
 such an apparatus could be con- 
 ducted with safety ? and an answer 
 to the question was naturally sought 
 in the records of diving-bell work. 
 
 [The paper here contained extracts 
 from Beckman, Ure, and other pub- 
 lications, describing prior operations 
 carried on under water by means of 
 diving-bells and similar apparatus.] 
 
 Such evidence, then, made it con- 
 clusive that there was nothing in 
 the problem presented at Rochester 
 Bridge which had not already been 
 successfully contended against, so far 
 as the agency upon the human frame 
 of air compressed to the degree there 
 required, was the question. 
 
 Other inquiries were pursued as 
 to the supply of air necessary to sup- 
 port life and combustion, the requi- 
 site amount of ventilation, and the 
 probability of encountering noxious 
 gases during the excavation of the 
 bed of the river, and their species or 
 nature; but it is not proposed to 
 develop these inquiries here. 
 
 The method followed in working 
 the apparatus was regulated by these 
 results, and had for one of its objects 
 simplicity of detail, so as to be per- 
 fectly intelligible to 41 the workmen 
 
 employed ; and it proved unneces- Description of 
 sary to give more than a short period ^*« alleged 
 of instruction in the part assigned to infringement. 
 each man, to bring the whole into 
 systematic and efficient operation. 
 
 The pumps being set in motion, 
 the flap of one of the air locks and 
 the door of the other were closed, a 
 few strokes compressed the air within 
 the pile sufficiently to seal the joints, 
 and every subsequent stroke deli- 
 vered an additional quantity, until 
 the density was sufficient to expel the 
 water, and to leave the bottom dry. 
 This required a period proportioned, 
 in general, to the depth of water 
 inside the pile, and to its length. 
 Fifteen feet of water were practically 
 cleared out in less than five minutes, 
 when the joints were tolerably made, 
 the leakage of air small in amount, 
 and when the nature of the bottom 
 was open, or presented little resist- 
 ance to the passage of the water 
 through it. In a pile which h ad been 
 sunk thirty feet in the ground, and 
 with a depth of water in the river of 
 six feet, the principal outlet being 
 the syphon, it required nearly forty 
 minutes to lay the bottom dry, in 
 consequence of the tenacious chalk 
 opposing the passage of water under 
 the pile. 
 
 Whilst the pumping was in pro- 
 gress, the workmen passed through 
 the air locks to their respective sta- 
 tions. 
 
 Each man dropped into one of the 
 air locks, of which the flap was open, 
 this he closed with one hand, and 
 with the other opened the cock, 
 which admitted compressed air from 
 the pile into the lock, and as soon as 
 equilibrium was established between 
 the two, the door opened with the 
 least force applied, and the man 
 stepped down to the stage. 
 
 It is evident that a man could pass 
 from the inside of the pile to the out- 
 side through the same Ipok, by closing 
 the door, and opening the cock which 
 communicated with the atmosphere. 
 
 The excavation being proceeded 
 with, the material was sent out in 
 buckets, and discharged into a lighter 
 alongside the stage. 
 
 The method of passing' the buckets 
 through in either direction will be 
 readily understood from what has 
 been already stated on the subject. 
 
 When the water is shallow, the 
 pile descends by scarcely sensible 
 degrees, as fast as the excavation 
 below permits it ; but when the water 
 is deep, and the weight of the pile 
 and elasticity of compressed air con- 
 2 
 
148 
 
 BUSH'S PATENT. 
 
 Description of 
 the alkged 
 infringement. 
 
 Specification 
 given in evi- 
 dence by the 
 defendants. 
 
 tained in it are nearly in equilibrio, 
 the excavation is carried down four- 
 teen or more inches below the edge 
 of the pile, which then descends at 
 once through the whole space, as 
 soon as the pressure is eased off. The 
 work is carried on night and day, 
 candles are burnt during the whole 
 of the time to give light to the ex- 
 cavators, but they are not necessary 
 
 on the upper stage during the day. 
 * » * ♦ ♦ 
 
 Three drawings accompany this 
 paper, exhibiting the details of the 
 engine employed at Rochester. 
 
 The following specification was 
 given in evidence by the defendants 
 at the trial oiBush -v. Fox and Others^ 
 
 Lord Cochbane's Patent. 
 
 Letters patent, [No. 6018.], bear- 
 ing date the 20th October, 1830, and 
 granted to Lord Cochrane for " Ap- 
 paratus to facilitate excavating, sink- 
 ing, and mining." The patentee by his 
 specification, enrolled April 20. 1831, 
 described his invention as follows: — 
 
 [For the drawings see Lend. Jour, 
 vol. vii. O. S. p. 304. pi. xiii. fig. 5.] 
 
 My invention consists in an appa- 
 ratus (hereinafter described) for 
 compressing atmospheric air into 
 (and retaining the air so compressed 
 within) the interior capacity of sub- 
 terranean excavations, sinkings, or 
 mines, or within those portions of 
 that capacity where the operations of 
 excavating, sinking, and mining are 
 going on, in order that the additional 
 elasticity given to, and maintained 
 in, the included air by aid of my ap- 
 paratus (over and above the ordinary 
 and natural elasticity of the atmo- 
 spheric air which is contained in ex- 
 cavations and mines) may counteract, 
 in part or wholly, the tendency of 
 superincumbent water (or of such 
 superincumbent earth as is rendered 
 semi-fluid by admixture with water) 
 to flow by gravitation into such ex- 
 cavations which (as aforesaid), are 
 filled with compressed air, and main- 
 tained full of compressed air by aid 
 of my 'said apparatus ; and which 
 apparatus, at the same time that it 
 is adapted to retain the said included 
 air in a state of compression, in order 
 to prevent or diminish the influx of 
 water, or of semi-fluid earth, is also 
 adapted to allow workmen to carry 
 on their ordinary operations of ex- 
 cavating, sinking, and mining, by 
 working underground within the 
 space which is filled with compressed 
 air, and also to allow workmen ready 
 
 passage to and from the said space 
 into the open air, or to and from the 
 said space into those parts of the 
 subterranean excavations or mines 
 which contain air in a natural and 
 ordinary state of elasticity. 
 
 And other parts of my said appa- 
 ratus facilitate the passage of mate- 
 rials to and from the open air into 
 and out of those parts of the subter- 
 ranean excavations or mines, which 
 filled, as aforesaid, with and retained 
 full of condensed air by aid of my ap- 
 paratus, or the said parts facilitate the 
 passage of materials into and out of 
 those parts of the subterranean ex- 
 cavations which contain compressed 
 air, to and from other parts of such 
 excavations which contain air in 
 its natural and ordinary elasticity. 
 
 The construction of my said ap- 
 paratus must be greatly varied, ac- 
 cording to the circumstances of the 
 situation in which it is to be applied. 
 The essential properties of my in- 
 vention will be explained by the fol- 
 lowing description of an apparatus, 
 which is made according to my in- 
 vention, for the purpose of sinking a 
 perpendicular shaft at the shore by 
 the side of a river, and then exca- 
 vating a drift or tunnel from the 
 bottom of that shaft to extend hori- 
 zontally (or nearly so) beneath the 
 bed of that river ; being a similar 
 undertaking to that which is now 
 executing beneath the river Thames 
 at Rotherhithe : — AB, figure 1, re- 
 presents a column of cast-iron cylin- 
 ders, joined together one above the 
 other by internal flanges, which are 
 united by screw bolts, so as to make 
 air-tight joints by the aid of packing 
 or cement interposed between the 
 flanges, the column being smooth on 
 the outside of the cylinders. This 
 column, being raised to a suflicient 
 height to give it weight, will descend 
 as fast as the earth or soil within it is 
 excavated. Suppose this shaft to be 
 thus sunk in the earth until it reaches 
 a bed of loose soil, which admits water 
 so copiously that the surface of that 
 water cannot be kept down to the 
 bottom of the shaft by ordinary 
 means. In such case I fix an air- 
 tight cover over the top of the upper- 
 most of the iron cylinders to close its 
 aperture, and I apply a condensing 
 air pump, worked by steam power or 
 other power, to force air into the in- 
 terior capacity of the shaft or column 
 of iron cylinders, until so much ad- 
 ditional air is condensed therein be- 
 yond that quantity which the inte- 
 rior capacity of the said shaft would 
 
BUSH'S PATENT. 
 
 149 
 
 naturally contain, as that the said 
 included air will exert a strong force 
 of pressure to repel and keep out the 
 water from entering into any part of 
 the interior capacity thereof. The 
 workmen who are employed to ex- 
 cavate, sink, or mine the earth at the 
 bottom of such shaft, must work 
 within the compressed air; but to 
 give them ready entrance to and 
 exit from the open air into the com- 
 pressed air, I apply an ante-chamber 
 to the air-tight cover over the top of 
 the uppermost iron cylinder, that 
 ante-chamber having two doors, — an 
 outer door and an inner door ; both 
 opening inwards, towards the space 
 which is filled with compressed air ; 
 when the outermost door of the ante- 
 chamber is open, the innermost door 
 will retain the compressed air within 
 the shaft : the opening of that outer 
 door gives free entrance into the 
 ante-chamber, and the workman can 
 enter therein with his tools, and with 
 such other articles as he may require 
 to take into the shaft with him, then 
 shutting the outermost door after 
 him he pushes open a hanging or 
 flap- valve in the inner door, to allow 
 a quantity of condensed air to enter 
 into and fill the ante-chamber, until 
 the air therein acquires an equality 
 of elastic pressure with the condensed 
 air contained in the shaft ; and that 
 equality of pressure acting on both 
 sides of the inner door, the workman 
 can push open that inner door and 
 descend from the ante-chamber into 
 the shaft, carrying with him the tools 
 and other articles which he had pre- 
 viously deposited in the ante-cham- 
 ber. And, in like, manner, to enable 
 a workman to go out from the shaft 
 into the open air, he can readily open 
 the inner door, which communicates 
 with the shaft into the ante-chamber, 
 provided that he has previously 
 pushed open the small flap-valve in 
 the inner door, and thereby admitted 
 the condensed air to enter from the 
 shaft into the ante-chamber, until 
 that air comes to an equality of 
 elastic pressure on both ^ides of the 
 inner door ; the workman can then 
 enter from the shaft into the ante- 
 chamber, and after closing that inner 
 door after him, he pulls open the 
 small flap valve in the outer door, to 
 allow the compressed air to escape 
 from the ante-chamber into the open 
 air, until an equality of elastic pres- 
 sure is established on both sides of 
 the outer door, which may then be 
 opened to allow the workman to 
 walk out from the ante-chamber iato 
 
 the open air, carrying with him his Specification 
 tools or other articles which he may given in evi- 
 have deposited in the ante-chamber, dence by the 
 The said ante-chamber may be a defendants. 
 small apartment made of wrought- 
 iron plates, rivetted together like a 
 tank or a boiler, in form of a sentry 
 box, and it may be made only large 
 enough to admit one workman at a 
 time into it. The doors will shut 
 close of themselves by the pressure 
 of the air against them, and the 
 joints may be made tight by leather 
 borders interposed in the fitting 
 parts. The small hanging flap valves 
 in the large doors will be only of 
 such size as can be readily pushed or 
 pulled open against the pressure of 
 the air, and tbey will keep shut of 
 themselves when left at libprty. 
 With this apparatus the excavating, 
 sinking, and mining of the earth, 
 from the bottom of the said shaft, 
 will be facilitated, because the water 
 will be kept out therefrom, or if the 
 depth of the hydrostatic column by 
 which the water is urged to enter 
 into the shaft is considerable, it may 
 not be advisable in all cases to con- 
 dense the air so much into the shaft, 
 as to wholly counteract the tendency 
 of the water to enter into the bottom 
 of the shaft, but only to diminish 
 that tendency so much that the water 
 which does come in may be easily 
 extracted; and in order to extract 
 that water without allowing any of 
 the compressed air to escape from 
 the shaft, a pump, may be put down 
 through an aperture in the cover of 
 the shaft (being closely joined to that 
 aperture so as to prevent the escape 
 of any air around the pump). This 
 pump may be worked by steam or 
 other power, but it will be worked 
 with ease, because the elastic pressure 
 of the condensed air with which the 
 shaft is filled, bearing upon the sur- 
 face of the water which stands in the 
 sump at the bottom of the shaft (and 
 in which water the lower end of the 
 pump is immersed), will force a co- 
 lumn of water up into the pump, 
 and that column will not weigh on 
 the bucket of the pump when it is 
 drawn up in the barrels by steam 
 power, or other power, because the 
 atmospheric air presses on the sur- 
 face of the water which is delivered 
 by the pump at the top of the barrel, 
 with much less elastic force than the 
 compressed air presses on the surface 
 of the water at the sump ; and in 
 order to draw up, or extract mud or 
 earth from the shaft, without allowing 
 any compressed air to escape from 
 3 
 
150 
 
 BUSH'S PATENT. 
 
 Spedftcatim the shaft, an endless chain of buckets 
 given in eui- may be applied, like those Used for 
 (knee by the the dredging machines, which are 
 defenaimis. \ commonly employed to deepen the 
 beds of rivers ; the uppermost roller 
 of the two rollers over which that 
 endless chain circulates, being turned 
 forcibly round by steam power, or 
 other power. The two sides of the 
 chain of buckets must work up and 
 down within two vertical or inclu- 
 ding tubes, which are so closely 
 joined at their upper ends to two 
 apertures in the cover of the shaft as 
 not to admit any air to escape by the 
 tubes. The lower ends of those tubes 
 aie open, and are immersed beneath 
 the surface of the water, which is 
 contained in a sump or cistern at the 
 bottom of the shaft. The elastic pres- 
 sure of the condensed air contained 
 within the shaft acting upon the sur- 
 face of that water, will force a co- 
 lumn of water to rise up and stand 
 up within the two tubes, and the 
 mud or earth being thrown into the 
 bottom of the said sump or cistern, 
 will be dredged up therefrom by the 
 buckets, and carried up through the 
 said columns of water, and will thence 
 be raised up above the close cover of 
 the shaft in order to be discharged at 
 top ; and in'order to introduce bricks, 
 stones, or such other articles into 
 the shaft, without allowing the es- 
 cape of any compressed air from 
 the shaft, they may be thrown down 
 through a large pipe or tube which 
 is closely fitted into an aperture 
 through the cover of the shaft so 
 as to allow no air to escape around 
 it, and the lower end of the said 
 tube being open and immersed 
 in water contained in a cistern or 
 sump at the bottom of the shaft, the 
 bricks and stones which are thrown 
 down through the said tube will go 
 to the bottom of such cistern, and 
 may be taken out therefrom under 
 water. A column of water will, as 
 in the former cases, be kept standing 
 up in the said tube by the elastic 
 pressure of the condensed air on the 
 surface of the water in the said 
 cistern or sump, and the bricks or 
 stones will descend through that 
 column of water in falling to the 
 bottom of the tube, and when, by aid 
 of my aforesaid apparatus, the earth 
 and soil at the bottom of the shaft is 
 sufficiently excavated to permit the 
 iron column of cylinders to be sunk 
 deeper down into the earth, in case 
 that column should not prove heavy 
 enough to sink by its own weight 
 whilst it remains filled with com- 
 
 pressed air, the workman may come 
 out from the shaft, and then let out 
 the compressed air from it, in order 
 that the iron column may have no 
 impediment to its sinking down into 
 the excavated earth, from the elastic 
 pressure of the compressed air acting 
 Upwards beneath the close cover 
 over the top of the iron column. 
 Note. — If the column of iron cylinders 
 is rendered sufficiently heavy it will 
 sink of itself (without thus letting out 
 the compressed air), as fast as the 
 earth is excavated from under it at 
 the bottom of the shaft; and in 
 order to load the said column of iron 
 cylinders with a sufficient weight, 
 the condensing air pump, and also 
 the steam engine bywhich it (together 
 with the water pump and the end- 
 less chain of buckets before described) 
 is to be worked, may be placed upon 
 a platform which is laid over the 
 cover, or close top of the uppermost 
 of the iron cylinders. When the iron 
 column is by these means got down 
 as low as it is required to descend into 
 the earth, the horizontal drift or 
 tunnel may be begun by setting out 
 from One side of the bottom of the 
 vertical shaft. If the influx of water 
 from the earth at the bottom of the 
 shaft continues to be considerable, 
 that bottom may be covered over 
 with an inverted arched dome of 
 brickwork which is impenetrable to 
 water, because, although by the aid 
 of my apparatus for retaining com- 
 pressed air in the shaft, the influx of 
 water may be greatly restrained and 
 diminished, still it will be advisable 
 to leave no greater surface of earth 
 exposed to yield water than is neces- 
 sary to be opened at once for the 
 purpose of progressing with the ex- 
 cavation, and, therefore, when a new 
 surface of earth is opened at the end 
 of the horizontal tunnel, it will be 
 advisable to cover over, and shut up, 
 the surface of earth at the bottom of 
 the shaft. As the tunnel is driven 
 horizontally, my apparatus will con- 
 tinue to repel the water and semi- 
 fluid earth from entering the ex- 
 cavation wherein the compressed air 
 is retained by it. When the work- 
 ing has been carried some distance 
 along the tunnel, it may be advisable 
 to fix an air partition across the 
 aperture of the tunnel, and apply 
 another condensing air pump thereto, 
 (or attach to that partition an air pipe 
 which extends from the condensing 
 pump at the surface), in order to fill 
 the space beyond that partition with 
 air in a greater degree of condensa- 
 
BUSH'S PATENT. 
 
 151 
 
 tion than that condensed air where- 
 with the vertical shaft is filled ; by 
 this means the worlcmen who remain 
 in the vertical shaft will not be re- 
 quired to work in air which is so 
 strongly compressed as the air in 
 which those workmen who are 
 making the excavation at the end of 
 the tunnel must work. The said 
 partition must be provided with an 
 ante-chamber containing two doors 
 of the same kind as before described, 
 to enable the workmen to go through 
 the partition, and to take with them 
 all tools and materials which they 
 require for carrying on the excava- 
 tion and building of the tunnel at 
 the farther end, beyond the partition, 
 and also to bring out the earth which 
 they excavate. The said ante- 
 chamber must have a flange joint 
 round that end of it which is beyond 
 its inner doorway, for the facility of 
 fixing it to the partition by screw 
 bolts, disposed around the entrance 
 aperture through the partition. And 
 whereas it will be inconvenient for 
 the workmen to be shut up in very 
 densely compressed air, the number 
 of persons required to be so shut up 
 may be diminished, by making another 
 intermediate partition at the en- 
 trance from the iron cylinders (which 
 constitute the vertical shaft) into the 
 commencement of the horizontal 
 tunnel, that partition being provided 
 with an ante-chamber, containing 
 two doors as before described. By 
 these means the interior capacity of 
 the shaft and tunnel may, in the 
 whole, be divided into three or more 
 distinct compartments, each of which 
 is filled with air, in a progressive 
 stage of compression, from the na- 
 tural atmospheric elasticity, to such 
 elasticity as will repel water from 
 entering into the excavation. The 
 pressure of the air against each 
 partition, and against the doors of 
 its ante-chamber, will be rendered 
 small by this sub-division of the total 
 compression. The first or outermost 
 apartment will be the vertical shaft, 
 in which the air need not be com- 
 pressed more than two-thirds of an 
 atmosphere beyond the external air. 
 The next compartment wiU be the 
 entrance portion of the horizontal 
 tunnel, and the air therein may be 
 compressed two-thirds of an atmos- 
 phere beyond the compression of the 
 air contained in the first compart- 
 ment, or one and one-third atmos- 
 pheres beyond the external air. The 
 principal number of the workmen 
 necessary for the underground ope- 
 
 rations may be included within the Specification 
 second compartment. The third given in evi- 
 compartment will be the further end dence by the 
 of the tunnel, where the excavation defendants. 
 and tunnelling is actually going on 
 beyond the interior partition. The 
 air therein may be compressed two- 
 thirds of an atmosphere beyond the 
 elasticity of the air in the second com- 
 partment, and then it will be two 
 atmospheres beyond the elasticity of 
 the external air. That degree of 
 compression will balance a column 
 of water 67 feet perpendicular 
 height, so that if the surface of the 
 water in the river is not more than 
 that height above the excavation of 
 the tunnel, the compressed air which 
 is retained therein by my apparatus, 
 will effectually prevent any influx of 
 water from the river into the ex- 
 cavation ; but it will not be neces- 
 sary at all times to keep up such a 
 great compression of air in the ex- 
 cavation, only at times when the 
 ground which is in progress of ex- 
 cavation is so loose that there is dan- 
 ger of an irruption of water from 
 the river. When the ground is very 
 firm and safe the degree of conden- 
 sation of the included air may be 
 greatly diminished, or it may be re- 
 linquished altogether, keeping all my 
 apparatus in order, for the purpose 
 of renewing the compression at any 
 time, when the nature of the ground, 
 which is in the course of excavation, 
 may render it necessary to repel the 
 influx of water, or of mud, or of 
 loose earth, by a counter-pressure of 
 the included air. 
 
 When the horizontal tunnel is far 
 advanced beneath the bed of the 
 river, a direct vertical communica- 
 tion may be opened with the further- 
 most compartment of the tunnel by 
 boring a vertical hole, and putting 
 down therein a column of iron pipes, 
 which must be of sufiicient size to 
 admit a small bucket to work up 
 and down within them; the said pipes 
 may be fixed in the bottom of the 
 river by the same means that pipes 
 are commonly put down into the 
 earth as substitutes for wells, and 
 the pipes must extend from above 
 the surface of the water in the river 
 down into a chamber, made by the 
 side of the tunnel for the reception 
 of the lower end of the vertical pipe, 
 and communicating laterally with 
 the interior of the tuimel. 
 
 The lower part of the chamber 
 must form a large cistern to receive 
 the drainage water of the excavation, 
 and in that water the lower end of 
 
 L 4 
 
152 
 
 BUSH'S PATENT. 
 
 Specification the vertical pipe must be immersed 
 given in evi- to prevent the compressed air from 
 dtnce by the escaping up the pipe ; but the pres- 
 defendants. g^^g of that air upon the surface of 
 
 the said water, will raise a column 
 of water within the pipe, and main- 
 tain that column therein at a height 
 suitable to the degree of compression 
 of the air which is retained within 
 the excavation by my apparatus. 
 
 The earth, which is excavated from 
 the end of the tunnel, may be drawn 
 up in a bucket through the vertical 
 pipe ; by filling that bucket and in- 
 
 troducing it under the water in the 
 cistern beneath the open end of the 
 pipe which is immersed in that water, 
 the bucket must go up through the 
 column of water, which is kept 
 standing in the pipe. In like man- 
 ner bricks or stones may be thrown 
 down through the said vertical pipe, 
 through the water that stands there- 
 in, and they will descend to the bot- 
 tom of the cistern, from whence 
 they may be taken out under water 
 as before described. 
 In witness, &o. 
 
 Declaratimt, 
 
 25th May, 
 
 1852. 
 
 ■1 
 
 In the Exchequee. 
 
 22ndDec.l852. Nisi Prius Sittings for London after Mich. Term, 1852. 
 
 William Bush v. Sir Chaeles Fox, John Hendeeson, 
 AND John Hughes. 
 
 Cor., Sir Frederick Pollock C. B. and a Special Jury. 
 
 The declaration, after stating the grant of letters patent, dated 
 21st of September, 1841, and the enrolment of a specification 
 within six months, assigned as breaches, that the defendants 
 ''did make, use, exercise, and vend the said invention;" and 
 " did also put in practice the said invention ;" and " did also put 
 in practice a part of the said invention ;" and " did also counter- 
 feit, imitate, and resemble the said invention ;" and " did make 
 and cause to be made divers additions to the said invention, and 
 subtractions from the same, whereby to pretend themselves the 
 inventors or devisers of such invention." 
 
 The defendants, after setting out the patent on oyer, pleaded: 
 
 First, a traverse of the grant by the letters patent. 
 
 Secondly, that the plaintiff was not the true and first in- 
 ventor. 
 
 Thirdly, that the invention was not an invention of a certain 
 manner of new manufacture, as alleged in the declaration. 
 
 Fourthly, that the invention was not new. 
 
 Fifthly, that the plaintiff did not, by an instrument in wi-iting 
 under his hand and seal, particularly describe and ascertain the 
 nature of the said invention, and in what manner the same was 
 to be and might be performed. 
 
 Sixthly, that the plaintiff did not within six calendar months 
 cause any sufficient specification to be enrolled. 
 
 Lastly, Not Guilty. 
 
 On all which pleas issue was joined. 
 
 Sir A. J' E. Cockburn and Webster for the plaintiff. 
 
 pleas, 
 
 ind June, 
 
 1852. 
 
 ne, !■ 
 
 '■■ J 
 
BUSH V. FOX AND OTHERS. 153 
 
 Knowles Q. C, Brnmwell Q. C, and Hindmarch, for the Exchequeb. 
 
 defendants. „ 
 
 M. Vac 1852 
 Webster opened the pleadings. 
 
 Sir A. J. E. Cockburn stated the plaintiflP's case as follows : — Sir A. Cock- 
 Mr. Bush, the plaintiff, is a civil engineer, and he has taken out ^^/tiff. 
 a patent for the invention which will be the subject matter of 
 this day's discussion. The invention is intituled, for " Improve- 
 ments in the means of and in the apparatus for building and 
 working under water." The defendants in this case are Messrs. 
 Fox and Henderson, contractors, and Mr. Hughes, an engineer, 
 who has been associated with them in the work of which Mr. 
 Bush complains as an infringement of his patent right. In 
 laying foundations under water, building and working under 
 water has long been one of those things which has most tasked 
 the ingenuity and skiU of engineers ; and this invention of Mr. 
 Bush, I believe will be found to be one of the greatest possible 
 utility as well as very meritorious. It consists of sinking a 
 cylinder, through the water, a sufficient depth into the sand or 
 other matter which constitutes the bed of the river or water 
 through which it is proposed to work, giving it a solid founda- 
 tion, and then enabling workmen to descend through this cylinder 
 or shaft, excavate at the bottom so as to sink it to a sufficient 
 depth in the bed of the river, and then fill it up with concrete 
 or masonry, so as to leave the cylinder in the end securely 
 embedded as a lasting foundation in the sand or whatever it may 
 be which constitutes the bed of the river. 
 
 The apparatus used by the plaintiif consists of the hollow 
 cylinder, which I have mentioned, having within it chambers, 
 through which the men, who are to work at the bottom, pass 
 consecutively as they descend through the shaft. These cham- 
 bers are furnished with little trap-doors, which the workmen 
 open without difficulty; they then descend from chamber to 
 chamber, and shutting the trap-doors behind them, as they 
 go down, the chambers become air-tight; that is to say, there 
 are bo means for the air to escape from them. In order to 
 make the shaft sink, the space between an inner and outer 
 cylinder is filled with concrete of sufficient weight to sink the 
 whole into the water. Air-pumps are provided at the top abov 
 the level of the water, by which air is forced down into the lower 
 chambers, so that the men are enabled to work at the bottom, 
 a sufficient supply of air being forced down to drive out the 
 water and keep it excluded whilst they go on with the work. 
 The air being thus introduced in a continuous stream, there is 
 an abundant supply of it in these air-chambers, and thus the 
 men are enabled to obtain the quantity necessary for respiration 
 whilst they are working at the excavation, and laying the foun- 
 
154 BUSH'S PATENT. 
 
 Sir A. Cock, dation. The mode of using this caissoon (as the apparatus is 
 plaintiff. called), after it has been sunk to the required depth where the 
 
 foundation is to be laid, is as follows : — Beginning with the 
 lowest chamber, where the workmen excavate the foundation, 
 the concrete and other materials are passed down, and when 
 they have properly prepared the site for the foundation, the'y fill 
 the lowest chamber with concrete and other materials proper 
 for making a lasting foundation; the divisions between the 
 chambers are then successively knocked away, and the men, 
 passing up from one chamber into the next, building as they 
 go, and so from time to time, until at last the whole cylinder 
 becomes entirely filled with building materials. The exterior 
 piece of iron forming the cylinder remains, and the whole body 
 of it being completely filled with concrete, and other materials, 
 so remains one solid and lasting foundation at any depth of 
 water where you like to place it, free from every attempt of the 
 water to injure it. Everybody will see the importance, utility, 
 and advantage that must necessarily result from such an inven- 
 tion; by means of which Mr. Bush has conceived the idea 
 of erecting lighthouses and harbours of refuge on the Good- 
 win Sands, which have hitherto been so fatal to the navi- 
 gation and lives of the subjects of this realm. Gentlemen, that 
 is the nature of the invention; when explained it is exceedingly 
 simple ; but it is one of those things which do not enter into 
 the mind of every man to conceive, or to carry out ; and Mr. 
 Bush, having invented this, took out his patent. An invention 
 of this sort does not get readily into public use. There are not 
 many occasions On which it is required; you are not perpetually 
 wanting to sink into water in order to lay foundations there, or 
 to erect works of this description in water ; and it is always a 
 long time before such an invention as this is, involving a consider- 
 able expense, finds its way into public use, and is adopted by the 
 public ; however, Mr. Bush took out his patent in 1841, and if 
 that patent be good, as I believe it is, Mr. Bush is entitled to 
 the sole and exclusive use of this his invention. 
 
 Now, gentlemen, what have the defendants done which gives 
 Mr. Bush cause to complain of their having infringed his patent 
 right ? Why, gentlemen, Messrs. Fox and Henderson contracted to 
 build a bridge at Rochester, and they have, at the instigation of 
 Mr. Hughes, who I am told is an engineer, and who is one of 
 the defendants in this case, adopted Mr. Bush's invention for the 
 purpose of sinking the piles and laying the foundation of this 
 bridge ; and Mr. Hughes and Messrs. Fox and Henderson have 
 obtained considerable celebrity, credit, and renown for this very 
 work, which is neither more nor less than an infringement of 
 Mr. Bush's invention. They have sunk cylinders in the same 
 
BUSH V. POX AND OTHERS. I55 
 
 way as they are used here, they have used air-chambers, though Excheqcee. 
 not so many. You will observe that the number of air- -^ y^^ ^ 
 chambers is a matter of little importance. The merit of the 
 invention consists in having a shaft above, and air-chambers 
 below, and whether there is one air-chamber, or more than one, 
 is a matter comparatively unimportant, and depends entirely on 
 the nature of the work to be done ; but you will be perfectly 
 satisfied when you hear the explanation of Mr. Bush, the 
 patentee, on the subject, that it is quite immaterial whether 
 you have one air-chamber or more, as regards the real merit and 
 character of the invention. That they have used that which to 
 all intents and purposes substantially, as well as in appearance, 
 is the invention patented by Mr. Bush, is a matter about which 
 I believe you will entertain no doubt whatsoever. 
 
 No one can doubt the importance, utility, and merit of this 
 invention, for which Mr. Bush has taken out his patent; and 
 whatever may be the importance, however great and meritorious 
 the works which Messrs. Fox and Henderson carry on, still 
 Mr. Bush has a right to say that others are not to come and 
 deprive him of his patent, and of the advantage of the invention 
 which he has discovered, and which he has communicated to the 
 public, and from which the public are likely to derive so great 
 an advantage. 
 
 Gentlemen, I am led to believe from what has taken place 
 previous to the case coming before you, that an attempt will be 
 made to-day to defeat Mr. Bush's patent, upon the ground that 
 it was not his invention, and that it was the invention of some 
 one else. I believe that my Lord Cochrane had taken out a 
 patent for an invention based on a similar principle, which how- 
 ever has not been heard of from that time to the present, and 
 which is to be raked up upon the present occasion, as I under- 
 stand, for the purpose of depriving Mr. Bush of the merit of his 
 invention, and to enable Mr. Hughes, Messrs. Fox and Hen- 
 derson, or somebody else, to avail themselves of it. I shall not 
 go into that matter at present ; I shall wait to see upon what 
 ground the defendants rest their defence, and in what manner 
 they propose to apply Lord Cochrane's patent. I believe it 
 will turn out that Lord Cochrane did no more than avail him- 
 self of that which is common property, namely, the principle of 
 the diving bell, which was the first step towards an invention of 
 this kind, and it was the first means by which people were 
 enabled to live and work under water to any considerable depth. 
 I believe that my Lord Cochrane did no more than sink a shaft 
 to get water out of mines, or to keep the water from forcing its 
 way (as it frequently will do, into the works of mines), and pre- 
 venting thereby mining operations. Lord Cochrane never had 
 
156 
 
 BUSH'S PATENT. 
 
 Sir A. Cock- 
 hum for the 
 vlaintiff. 
 
 Plaintiff's 
 Evidence. 
 
 the most distant Idea of sinking a shaft under water ; his in- 
 vention was applied exclusively upon land, and had no reference 
 whatever to water ; he had no idea of sinking shafts into water, 
 or of working under water, of constructing buildings or erections 
 under water ; it never entered into his mind or his patent to 
 make a shaft through which the operations under ground or under 
 water were to be conducted, and then converted into a permanent 
 and lasting erection. This is the great and distinguishing fea- 
 ture of Mr. Bush's invention ; the shaft, which is used for the 
 purpose of working under water, becomes the shell of the erection 
 itself; it is first the means of laying the foundation, and then, by 
 filling in that shaft with masonry, becomes a permanent erection, 
 whether altogether under water or not. Mr. Bush will explain the 
 nature of his invention. I shall show you very clearly that Messrs. 
 Fox and Henderson have, in their works at Rochester Bridge, 
 adopted and used, not only the principle of Mr. Bush's invention, 
 but the very invention itself; and having done that, I shall wait 
 to see what defence my learned friends will offer. I have been 
 led to suppose, from what I have heard, that this old patent of 
 Lord Cochrane's, which has never been used by anybody, not 
 even by his Lordship, is to be raked up upon the present 
 occasion to defeat Mr. Bush, and to deprive him of the merit of 
 his invention, which, most undoubtedly, as he will tell you, is 
 his own, and which is one that he derived from no one else, — 
 that he derived from no other source than the genius of his own 
 mind ; and I hope and trust that Mr, Bush will not be deprived 
 of the advantages which ought to result to him from so meri- 
 torious an invention, by any attempt such as that which I have 
 stated to you. 
 
 The plaintiff's specification was given In evidence («), and the 
 plaintiff and another witness was then called, and gave the fol- 
 lowing evidence, (b) 
 
 Mr. William Bush, the plaintiff: I have been a civil engi- 
 neer for fifty years, and my attention during that time has been 
 directed particularly to the building of structures under water. 
 I have been engineer to several docks and sea works, and my 
 attention was directed in 1840 or 1841, to the Importance of 
 making works on the Goodwin Sands; and the means of build- 
 ing structures under water, in sandy places, like the Goodwin 
 Sands, was at that time a great desideratum : the model pro- 
 duced represents, when put together, the whole of a calssoon for 
 laying a foundation, and It does not matter whether It is cylin- 
 drical or sloped off; this model represents a caissoon made of 
 Iron plates, bolted together, and made air tight and water tight, 
 
 (a) Ante, p. 140. that which was afterwards inserted 
 
 (6) The evidence here given is in the bill of exceptions. 
 
BUSH V. FOX AND OTHERS. 157 
 
 exactly the same as the drawing in the specification ; the object Exchequer. 
 was to sink it; so as when sunk it would become part of the „ ~ 
 
 M Vac 1852 
 
 permanent foundation; when sunk, it would be filled either with 
 concrete or masonry, so as to be filled in solid. This model 
 shows four chambers in the interior, and the chambers are made 
 of plates of iron, bolted to the sides, and the model has one 
 more chamber than there is shown in the specification; the 
 number of chambers was immaterial. When the caissoon is 
 floated to the position where it is to be sunk, I sink it by 
 allowing the water to force out the air ; it is then loaded suffi- 
 ciently to prevent its rising, otherwise when the air came to be 
 forced In, the buoyancy of it would lift it again ; the top valve 
 is then closed, and the air forced in, so as to drive the water 
 back, or throw it up a cylinder or tube at the side, which acts 
 like a syphon : these operations are perfectly understood in the 
 diving-bell; having got the caissoon sunk and clear of water, 
 we begin to excavate, and pass the materials up from the lower 
 chambers into the upper chambers, and continue the excavation, 
 until it is sunk to the depth required, and arrives at the per- 
 manent foundation ; the lower chamber is then filled with con- 
 crete or other solid material, the division between the lowest 
 and second chamber is then taken out, and so on, until it is 
 filled to the top ; above the low-water mark you can use 
 masonry. , I complained of the foundations at Rochester Bridge, 
 as an infringement of my patent. These foundations were 
 made of cylinders, kept clear of water during the sinking, by 
 means of compressed air. My attention was first called to 
 what the defendants were doing at the foundations of Rochester 
 Bridge, as an infringement of my patent, by an article in the 
 " Times," in the month of March, in the last year. I after- 
 wards heard an account by Mr. Hughes, one of the defendants, 
 of these operations at Eochester Bridge. This was on the 13th 
 May, 1851, when the defendant, Hughes, read a paper at the 
 Institution of Civil Engineers, giving an account of these 
 operations. 
 
 [The paper of the defendant Hughes (a) was then read in 
 evidence, after which the plaintiff further deposed as follows : — ] 
 
 There is nothing new in the use of compressed air or air 
 pumps, but to the best of my knowledge foundations have never 
 been made before by means of calssoons or cylinders kept clear 
 of water by compressed air in that way. This invention had 
 never before been used for the purpose of getting foundations' 
 in seas or rivers, the cylinder itself having been part of the 
 
 («) The material parta of this paper will be found, ante, p. 143. 
 
158 
 
 BUSH'S PATENT. 
 
 Plaintiff's 
 Evidence. 
 
 If a defendant 
 has only done 
 in water what, 
 before plain- 
 tiff's patent, 
 had been done 
 on land, an ac- 
 tion cannot be 
 maintained. 
 
 foundation under water. Dr. Potts proposed to exhaust air 
 from the cylinder : the defendants tried Dr. Potts' method of 
 sinking piles at Rochester Bridge, and it failedj and that is the 
 reason they infringed my patent. 
 
 On cross-examination. My invention has never been tried 
 anywhere except at the Goodwin Sands. I never heard of 
 Lord Cochrane's patent until I received a letter from Sir 
 Charles Fox, one of the defendants, mentioning it. [Lord 
 Cochrane's specification (a) was, with the assent of the plaintiff's 
 counsel, then given in evidence and read, after which the plain- 
 tiff, on further cross-examination, deposed as follows : — ] 
 The object of Lord Cochrane's invention was different from 
 mine, but the mode of doing the thing is similar. The mode in 
 which the compressed air is used so as to force out the water 
 below and enable the workpeople to work, is the same in 
 both inventions, and just the same as in the diving-bell. 
 I have read Lord Cochrane's specification, and heard it read 
 again in Court now ; I have also read the paper of the defendant 
 Hughes in the "Times," and I have heard it read here in 
 Court. The difference between Lord Cochrane's plan and that 
 adopted by the defendants at Rochester Bridge is, that the one 
 is for sinking on land, and that the other is for sinking in 
 water — and that is the only difference. Lord Cochrane's inven- 
 tion, and what the defendants have done at Rochester Bridge, 
 are both alike, and correspond, with the exception that Lord 
 Cochrane worked on land and the defendants worked in water. 
 
 Pollock C. B. If that is the only difference, I do not think 
 the action can be maintained ; if this answer is seriously and 
 deliberately given by the witness the plaintiff himself, I am of 
 opinion that the cause is at an end. 
 
 Mr. James Campbell. I am a civil engineer ; I have heard 
 the paper of the defendant Hughes respecting the method 
 adopted in constructing the foundations of Rochester Bridge 
 read in Court to-day, and I understand that paper. I have 
 read the specification of the plaintiff's patent. Previous to the 
 plaintiff's patent I did not know of cylinders being sunk in the 
 manner described in that paper for making foundations. It is 
 of no consequence what is the size of the lower chamber de- 
 scribed in the plaintiff's specification. I have heard the plain- 
 tiff's description of the way in which the caissoon was sunk, 
 and the air pumped in, according to his invention. In 1841 
 that was a new invention as applied to water, and was a new 
 mode of constructing foundations under water. I am well 
 
 (a) Anti, p. 148. 
 
BUSH o, FOX AND OTHEKS. 159 
 
 M. Vac. 1852. 
 
 acquainted with the mode in which air was pumped into the Exceequee. 
 diving-bell before the plaintiff's patent. The same mode which 
 is used for pumping air according to Lord Cocbrane's invention 
 and the plaintiff's invention was also used by the defendants at 
 Bochester Bridge. I have heard the plaintiff's description of 
 the way in which a foundation is laid according to his inven- 
 tion, and I believe that was a new mode of constructing 
 foundations at the date of the plaintiff's patent. The use of 
 compressed air was not new at the date of the plaintiff's patent. 
 The plaintiff uses air cocks to communicate with the different 
 chambers. If there be communication by means of air cocks 
 between the two chambers it is immaterial where those 
 chambers are placed. It appears by the defendant Hughes' 
 description, which has been read, that the defendants used cocks 
 for admitting the air from the one chamber into the other. 
 That, in my opinion, corresponds with the arrangements in the 
 plaintiff's specification for admittirig the air from one trunk into 
 the other. 
 
 On cross-examination. I have read the specification of Lord 
 Cocbrane's patent invention, which has been given in evidence, 
 and I have heard it read in Court here to-day ; I also read it in 
 July last. I have heard the defendant Hughes' description of 
 his invention, used at Rochester Bridge, read in Court to-day ; 
 I also read it in July last. I have read the plaintiff's specifica- 
 tion : it is not new for any other purpose except for making 
 foundations and buildings under water — that is all. My opinion 
 of the novelty of the invention depends upon the particular way 
 in which the plaintiff applies it. It was new for the particular 
 purpose to which it is applied, that is, for making foundations 
 under water, — The novelty is in the application for making 
 foundations under water. — Lord Cocbrane's invention, and 
 Mr. Hughes' are similar, except in this — that the applications 
 are very different. Lord Cochrane never intended, and never 
 mentioned, that he was going to fill up excavations that he had 
 made. "When the excavations are made by the plaintiff they 
 are intended to be filled up again to form foundations. The 
 difference between Lord Cocbrane's invention and the defendant 
 Hughes' invention, used at Rochester Bridge, is, that Lord 
 Cochrane did not contemplate filling up his shaft, and the 
 defendants did do so ; and that the defendants worked through 
 water. Lord Cochrane worked on the soil on the side or banks 
 of a river. Supposing the sinking of a cylinder, according to 
 Lord Cocbrane's invention, were commenced in a place where 
 there was water a foot or two deep, the mode of sinking and 
 the cylinder would be the same as the defendants have used at 
 
160 
 
 BUSH'S PATENT. 
 
 Plaintiff's 
 JEuiJence. 
 
 Mere new ap- 
 plication not 
 the subject of 
 a patent. 
 
 Eochester Bridge. The only difference I find between Lord 
 Cochrane's invention and the defendant Hughes' invention is, 
 that the object, purpose, and application of the one is entirely 
 different from the other : the one is for laying foundations, the 
 other is for making a roadway or an opening. The difference 
 between the two is in the application of them. The following 
 words : " My invention consists in an apparatus (hereinafter 
 " described) for compressing atmospheric air into (and retaining 
 " the air so compressed within) the interior capacity of subter- 
 " ranean excavations, sinkings, or mines, or within those portions 
 " of that capacity where the operations of excavating, sinking, 
 " and mining are going on, in order that the additional elasticity 
 " given to (and maintained in) the included air by aid of my 
 " apparatus (over and above the ordinary and natural elasticity 
 " of the atmospheric air which is contained in excavations and 
 "mines) may counteract in part or wholly the tendency of 
 " superincumbent water (or of such superincumbent earth as is 
 " rendered semi-fluid by admixture with water) to flow by gravi- 
 " tation into such excavation, which (as aforesaid) are filled with 
 " compressed air and maintained full of compressed air by aid of 
 " my said apparatus, and which apparatus at the same time that 
 " it is adapted to retain the said included air in a state of com- 
 " pression, in order to prevent or diminish the influx of water or 
 " of semi-fluid earth, is also adapted to allow workmen to carry 
 " on their ordinary operations of excavating, sinking, and mining, 
 " by working underground within the space which is filled with 
 " compressed air, and also to allow workmen ready passage to and 
 " from the said space into the open air, or to and from the said 
 " space into those parts of the subterranean excavations or mines 
 " which contain air in a natural and ordinary state of elasticity," 
 which are now read to me by the said counsel for the said 
 defendants, and which are contained in the said specification of 
 Lord Cochrane's said invention, contain so far as they go a 
 correct description of Lord Cochrane's invention and also of the 
 plaintiff's invention. They describe the means that the plaintiff 
 uses to apply his invention ; they describe a part of it. The de- 
 scription as far as it goes would do for either of these inventions. 
 Pollock C. B. I should like to ask for what the plaintiff's 
 patent is taken out, and what is the infringement complained 
 of? for if the use of compressed air be the subject matter of 
 the patent, then Lord Cochrane's differs only in the application 
 of the same principle to land which the plaintiff applies to 
 water ; and I am clearly of opinion, in point of law, that if this 
 was applied before for the purpose of use on land, that you 
 cannot take out a patent for applying the same thing to making 
 
BUSH V. POX AND OTHERS. 161 
 
 foundations at sea ; and I want to know what Is the manufacture ; E xcheque r. 
 because a patent must either be for some process that produces a -^^ vac. 1852, 
 manufacture, or for the manufacture itself, — one or the other. 
 
 Sir A. Cockburn. Mr. Bush takes out his patent for " Im- 
 provements in the means and apparatus for building and 
 working under water," and what he claims is, the mode of con- 
 structing the interior of a caissoon in such a manner as that a 
 triple result is obtained; first, that the workpeople may be 
 supplied with compressed air ; secondly, that they may be 
 enabled to raise the materials excavated; and thirdly, that they 
 may make or construct foundations under water. The patent 
 is not, therefore, for one of these three things, but it is for all 
 three in combination ; and I submit that, upon the evidence, the 
 combination is clearly new, that Lord Cochrane had no such 
 combination ; he had only one of the objects ; he had no means 
 of enabling the workmen to raise the materials excavated. 
 
 Pollock C. B. When a patent is taken out, there must be some 
 manufacture; and I want to know what is the manufacture 
 here ? I think there is none. 
 
 Sir A. Cockburn, The plaintiff's manufacture is a caissoon 
 constructed in such a mode as that a threefold purpose shall be 
 achieved by it. 
 
 Pollock C. B. Then what the defendants have done is not 
 making a caissoon at all, but they have used the principle for 
 making a pile ; and I shall tell the jury that if what the de- 
 fendants have done is making a pile and not a caissoon, in my 
 opinion in point of law there has been no infringement. 
 
 Sir A. Cockburn. Then I will tender your Lordship a bill 
 of exceptions upon that ruling, but I am ready to address the 
 jury upon that point. 
 
 Cross-examination of the witness Campbell resumed. The 
 following words, — "In order that the additional elasticity given 
 " to (and maintained in) the included air by aid of my apparatus 
 " (over and above the ordinary and natural elasticity of the at- 
 " mospheric air which Is contained In excavations and mines) may 
 " counteract (in part or wholly) the tendency of superincumbent 
 " water (or of such superincumbent earth as is rendered semi- 
 " fluid by admixture with water) to flow by gravitation into such 
 " excavations, which (as aforesaid) are filled with compressed air 
 " and maintained full of compressed air by aid of my said appa- 
 " ratus " — which are now read to me by the said counsel for the 
 defendants, and which are contained in the said specification of 
 Lord Cochrane's said invention, contain a correct description 
 of the object as well of Lord Cochrane's invention as also of the 
 plaintiff's invention. The object of each invention is to exclude 
 
 M 
 
162 BUSH'S PATENT. 
 
 :Plainiiff's water, or earth rendered semi-fluid by the mixture of water, 
 
 Javidence. r • • i i mi 
 
 from gettmg into the places where the compressed air is. The 
 following words, — " "Which apparatus, at the same time that it is 
 " adapted to retain the said included air in a state of compression, 
 " in order to prevent or diminish the influx of water or of semi- 
 " fluid earth, is also adapted to allow workmen to carry on their 
 " ordinary operations of excavating, sinking, and mining, by 
 " working underground, within the space which is filled with 
 " compressed air, and also to allow workmen ready passage," — 
 which are now read to me by the said counsel for the eaid 
 defendants, and which are contained in the said specification of 
 Lord Cochrane's said invention, contain a correct description of 
 Xiord Cochrane's said invention, and also the plaintiff's invention, 
 and also contain a good description of the defendant's invention, 
 or what they have done at Rochester Bridge. The following 
 words,- — ^"And other parts of my said apparatus facilitate the 
 " passage of materials to and from the open air into and out of 
 " those parts of the subterranean excavations or mines, which are 
 " filled as aforesaid with, and retained full of, condensed air by 
 " aid of my apparatus, or the said parts, facilitate the passage of 
 " materials into and out of those parts, of the subterranean exca- 
 " vations which contain compressed air, to and from other parts 
 " of such excavations which contain air in its natural and ordinary 
 " elasticity," — which are now read to me by the said counsel for 
 the said defendants, and which are contained in the said spe- 
 cification of Lord Cochrane's said invention, contain a correct 
 description of the three different inventions or apparatus of 
 Lord Cochrane, of the plaintiff, and also of the defendants. 
 There is nothing in the words which have been read to me by 
 the counsel for the defendants which shows or leads me to 
 infer that Lord Cochrane's invention is to be applied or used 
 only on dry land. There is nothing stated in that part of Lord 
 Cochrane's specification which has been read to me, or any 
 other part of it, which either says or infers that the invention 
 may not be applied as well where there are two or three feet 
 of water as where there is dry land. There is nothing in that 
 specification which either says or infers that brickwork or 
 masonry may not be put in a shaft which is sunk, by the means 
 which Lord Cochrane has described in his specification. 
 
 On re-examination. In scientific language, the term " sub- 
 terranean" applies to the bottom below the earth. The follow- 
 ing words, — " The essential properties of my invention will be 
 " explained by the following description of an apparatus which is 
 " made according to my invention, for the purpose of sinking a 
 " perpendicular shaft at the shore by the side of a river, and then 
 
BUSH V. FOX AND OTHERS. 163 
 
 " excavating a drift or tunnel from the bottom of that shaft, to Exchequee. 
 " extend horizontally, or nearly so, beneath the bed of that river, ^ Vac. 1852. 
 "being a- similar undertaking to that which is now executing 
 " beneath the river Thames at E,otherhithe," — now read to me, 
 mentions a horizontal shaft or tunnel, in which operations are 
 to be carried on. If the vertical shaft were to be filled up with 
 concrete, or anything else, the horizontal shaft would become 
 
 Examined by the Judge. I have heard the plaintiff in 
 Court here state that there are thirty-five feet of sand above 
 the chalk at the Goodwin Sands, and that there are eighteen 
 feet of water above the sand. When you have got down 
 through the water, and are working in the sand, the operation, 
 so far as working in the sand is concerned, would be the same, 
 whether you are working by Lord Cochrane's invention or by 
 the plaintiflf s invention. 
 
 Pollock C. B. I will now state at once, Sir Alexander Cock- 
 burn, if you wish to tender a bill of exceptions, that I shall tell 
 the jury that in my opinion, in point of law on the evidence as 
 it now stands, this patent cannot be maintained. 
 
 Sir A. Cockbum. Then, my Lord, I shall tender a bill of 
 exceptions. 
 
 Knowles. There is this question to be considered : I do not 
 know, in the event of our taking your Lordship's judgment upon 
 that single issue, what would become of the other issues. There 
 has been no infringement, as I should submit, and I do not wish 
 to have a verdict against me upon the question of infringement. 
 
 Pollock C. B. Upon all the other issues the jury ought to 
 be discharged from finding a verdict at all ; because, if I am 
 wrong in my direction upon the one issue, there must be a 
 venire de novo. 
 
 Sir A. Cockbum. Upon a venire de novo, it will be open to 
 either party if he can obtain a verdict on each of the other issues 
 as well as the third. 
 
 Knowles. Then the jury will be discharged on the other 
 issues, and we will take your Lordship's opinion upon the third 
 issue, which raises the question between us. 
 
 Pollock C. B, (to the jury). Gentlemen, the direction Polhck C. B. 
 I shall give you is substantially this : I am of opinion, upon *" '""^^ 
 the evidence as it now stands, " that the said supposed inven- 
 tion in the declaration mentioned was not an invention of a 
 certain manner of new manufacture in manner and form as the 
 plaintiff has alleged. " (a) I think that an invention must be a 
 
 (a) The words here used by the learned Judge are those contained in 
 the third plea, cmte, p. 152. 
 
 U2 
 
164 'BUSH'S PATENT. 
 
 Pollock C. B. production of something that can be used or sold or made use of 
 for some purpose, or some method which results in something of 
 
 pa°eni^th°Jin-' *^^ ®^™® ^°'^*' -^^^ ^ think that a man cannot, if he has ap- 
 
 ventionmust plied — supposing this to be a new application — an old inven- 
 
 ■srhich som? ™^> •"" P^^* °^ ^^ ^^^ invention, to a new purpose, obtain a 
 
 poveity, either patent for such an application. Now, if the construction of this 
 
 ^TodltuleJ' oaissoon, or pile, or whatever it is to be called, is to be looked 
 
 suits. upon as old, and the object of the patent is for applying it to a 
 
 new purpose, that is not a manufacture ; and the application is 
 
 such an operation (if so it can be called) that nothing new 
 
 which results from it can, I think, be the subject of a patent. 
 
 If the object of the invention or patent is the construction of a 
 
 caissoon, then, as the evidence now stands, — indeed, we have 
 
 all the witnesses putting it upon this footing, — it is clear that in 
 
 all essential particulars it is the same thing as Lord Cochrane's 
 
 It is not suf- invention. But both the plaintiff and the other witness empha- 
 
 ficient that the tically say that the invention consists in the application, and not 
 
 novelty con- . .. . 
 
 sists merely in in the novelty of the thing itself; in other words, that the only 
 
 ^f^n^old a*^*"^ novelty is in the application of the apparatus. I think that a 
 
 paratiis to a; patent cannot be taken out for such an application, I think if 
 
 new purpose. ^^^ ^^^ invents a new mode of looking at the moon, somebody 
 
 else cannot take out a patent for using the same mode to look at 
 
 the sun, nor for any mere application of it to a different purpose. 
 
 If a man were to take out a patent for a telescope, to be used 
 
 to make observations on land, I do not think any one could say, 
 
 " I will take out another patent for that telescope, to be used for 
 
 making observations on the sea." I therefore direct you, that 
 
 in point of law, in my judgment, the supposed invention was 
 
 not an invention of any manner of new manufacture in manner 
 
 and form as the plaintiff has alleged, and you are discharged, 
 
 by consent of the parties, from giving a verdict on the other 
 
 issues. 
 
 Sir A. Cockhurn. Then this will be the exception, that your 
 Lordship rules, in point of evidence before the jury, that this 
 action cannot be maintained, the invention not being for any 
 new manufacture. 
 
 Pollock C. B. I should propose to say that, upon the 
 evidence, the patent cannot be sustained ; and further, that 
 the invention does not amount to any new manufacture. 
 
 [A note of the exception was then prepared and handed to the 
 Lord Chief Baron by Sir A. Cockburn.] 
 
 The Associate. Gentlemen, you will find your verdict 
 for the defendants upon the third issue, and you are discharged 
 from giving any verdict on the other issues. 
 
 Pollock C. B. My note is this : I am of opinion that. 
 
BUSH V. FOX AND OTHERS. 165 
 
 upon the evidence as it now stands, Lord Cochrane's specifi- Exchequer. 
 cation being in evidence, the patent, in point of law, cannot be ^_ Vac. 1852. 
 sustained ; and further, that the invention is not an invention 
 of any manner of new manufacture. And I may say that, if the use of a 
 judging of this patent by the test that should always be applied fn^g^fio^"* 
 to patents, and that is frequently so applied, I believe that, if fringes a sub- 
 Mr. Bush had taken out his patent before Lord Cochrane, and theTecond'^"*' 
 Lord Cochrane had afterAvards done what he proposes in his patent cannot 
 specification, I think that that would have been an infringement 
 of Mr. Bush's patent. Whenever it appears that the use of a 
 prior patent invention would be an infringement of a subse- 
 quent patent, the second patent cannot be sustained. 
 
 Verdict for the defendants upon the third 
 
 issue, the jury discharged from giving 
 
 a verdict on the other issues. 
 
 be sustained. 
 
 A bill of exceptions was afterwards sealed, setting out the Bittofexcep- 
 plaintiff's specification (a). Lord Cochrane's specification (S), "'"'' 
 and the paper of the defendant Hughes (c), also the evidence of 
 the witnesses as above stated. The several drawings were also 
 annexed. 
 
 The direction of the learned Judge to the jury was stated to 
 be, " that if they believed the said several matters so produced, 
 deposed, and given in evidence as aforesaid, the said invention 
 was not an invention of any manner of new manufacture, and 
 the said action could not be maintained ; and that if they, the 
 said jury, believed the said matters so produced, deposed, and 
 given in evidence, they ought to find a verdict for the defend- 
 ants on the said issue joined on the said third plea." 
 
 The plaintiff's exception was stated in these words : " The 
 said counsel learned in the law for the plaintiff excepted to the 
 said direction of the said Chief Baron, and contended that the 
 same was erroneous and wrong." 
 
 (a) Ante, p. 140. (b) Ante, p. 148. (c) Ante, p. 143. 
 
 K 3 
 
166 
 
 BUSH'S PATENT. 
 
 Suggestion and 
 denial of error. 
 
 Plaintiff's 
 points for ar- 
 gument. 
 
 Defendants' 
 points for ar- 
 gument. 
 
 In the Exchequer Chambee. 
 In Error from the Exchequer. 
 
 The plaintiff below entered a suggestion of error under the 
 152nd section of the Common Law Procedure Act (1852), with 
 a denial of it by the defendants as follows : — 
 
 " The 8th day of June, a. d. 1853." 
 
 " The plaintiff says there is error in law in the above record 
 and proceedings in this action, and the defendants say there is 
 no error therein." 
 
 The following were the plaintiff's points for argument : — 
 
 1. That the invention of the plaintiff was the constructing 
 of buildings and foundations under water, in the manner de- 
 scribed in his specification. 
 
 2. That the construction of buildings and foundations under 
 water in the manner described, was a certain manner of new 
 manufacture within the meaning of the statute, for which a 
 patent could be maintained. 
 
 3. That it was a question of fact for the jury, and not 
 matter of law for the Judge, whether the invention described in 
 the plaintiff's specification was the working or making of any 
 manner of new manufacture. 
 
 4. That the judgment of the Court of Exchequer was and 
 is erroneous, and should be reversed, and a venire de novo 
 awarded. 
 
 The defendants' points for argument were as follows : — 
 
 1. That the plaintiff's invention as described and claimed in 
 his specification, consisted of a particular mode of constructing 
 a caissoon or apparatus to be used for the purpose of making 
 excavations and laying foundations under water. 
 
 2. That the evidence given at the trial showed that the 
 caissoon claimed by the plaintiff as his invention was not new, 
 and that the only novelty consisted in the use or application of 
 it for the purpose of making excavations and laying foundations 
 under water, which could not legally be made the subject of a 
 patent. 
 
 3. That the evidence, if true, showed that the alleged in- 
 vention of the plaintiff was not any manner of new manufacture ; 
 and, if believed, entitled the defendants to a verdict on the issue 
 which has been found for them. 
 
 4. That the direction of the Judge to the jury was right, and 
 that the plaintiff did not take a valid objection to it. 
 
 5. That the judgment of the Court of Exchequer is not erro- 
 neous, and ought to be affirmed. 
 
BUSH V. FOX AND OTHERS. Ifi7 
 
 In the Exchequer Chamber. 
 
 Cor., Coleridge J., Maule J., Cresswell J., Erie J., Williams J., 
 and Crompton J. 
 
 Hilary Vac. 1854. 2 p^^ jg5^_ 
 
 The suggestion of error on the bill of exceptions now came xhe specifi- 
 on for argument. <'**'°° of a pa- 
 
 Slr A. J. E. Cockburn A. G., for the plaintiff (^Webster with claims as the 7 
 him), after stating shortly the facts of the case, proceeded : — invention, the 
 
 The Chief Baron was wrong in his direction to the jury in structing a ma- 
 telling them that the plaintiff's invention was not an Invention descritld'i'fo 
 of any manner of new manufacture. The plaintiff claims a particular 
 novelty for his invention in two respects. First, that there is ^e consb-ueTas 
 novelty in the apparatus itself ; and secondly, that there is claiming the 
 
 ,^ . ,, T ,• f. machine itself. 
 
 novelty in the use or application or it. And if the ma- 
 
 Lord Cochrane's invention was not the same as the plaintiff's, cliine has, be- 
 
 _ , _, , ,. . . , ,. , . , f , fore the date of 
 
 Jjord Cochrane did certainly use a cylinder with a valve at the the patent, been 
 top, but there he stopped. The cylinder or caissoon of the f ^^ ^/°^ ^ ^'^' 
 plaintiff was different from Lord Cochrane's, the mode of using the patent can- 
 it was different, and the result obtained was totally different, ported ™^" 
 The new manufacture in the plaintiff's Invention is, the founda- The plaintiff, 
 tion and edifice under water; in Lord Cochrane's invention invention°of '^ 
 the new njanufacture was the apparatus whereby he was enabled " Improve- 
 to work under water when sinking to great depths on land ; means of and 
 the manufacture in the plaintiff's is not the apparatus used, JPP3;ratus for 
 
 . . . Duildmg and 
 
 but is the foundation itself. The caissoon or cylinder is used working under 
 
 by the plaintiff, not merely to exclude the water while the men ^edficati '^'^ 
 
 are working,' but for the purpose of forming a part of the claimed "the 
 
 permanent structure or foundation. The object which Lord ™ructin/°he 
 
 Cochrane had in view was to sink a shaft in a mine or in interior of a 
 
 the earth ; and if water be accidentally met with in the course ticulariydes- ' 
 
 of the operation, to be able to drive or keep it out. The cribed in the ; 
 
 ...~,, ,. . •!• 1 1 ^ r 1 Ti previous part 
 
 plaintiff s object is to sink into the depths or the ocean, and lay of the specifi- 
 
 a foundation there, if necessary. The only similarity between cation), m such 
 
 •' •'_ manner that 
 
 the plaintiff's invention and that of Lord Cochrane, is the use the workpeople 
 
 may be sup- 
 plied with com- 
 pressed air, and be able to excavate and construct fotmdatious and buildings under water. At 
 the trial of an action for an alleged infringement of the patent, the witnesses admitted, on cross- 
 examination, that the apparatus described in a prior patent was the same in all respects as the 
 plaintiff's caissoon, but stated that they were intended to be used for different purposes, the one 
 for excavating and sinking shafts, &c. on land, the other for sinking, excavating, and constructing 
 foundations under water, the mode of working being in each case the same, and the only difference 
 being, that the surface of the land excavated was covered with water in the one case, and there 
 was no such covering in the other. The Judge having directed the jury that, if they believed 
 the evidence, they must find a verdict for the defendants on the issue raised on a plea that the 
 invention was not a new manufacture — 
 
 Held, that the specification claimed, as the plaintiff's invention, the caissoon itself, and not 
 merely the particular use of it, and the evidence having shown that the caissoon was not new, the 
 Judge's direction to the jury was right; 
 
 m 4 
 
168 BUSH'S PATENT. 
 
 hunf'AG'^f ^^ compressed air, which is not the subject of the patent, 
 
 lite plaintiff. Crane V. Price (a), and Newton v. Voucher (b) are authorities for 
 
 saying that the application of an old well-known process, in 
 
 such a manner as to produce a beneficial result, is the subject of 
 
 a patent. It is submitted, at all events, that the question should 
 
 have -been left to the jury to say whether the application of 
 
 the apparatus to the purpose mentioned was not of itself a new 
 
 manufacture. Steiner v. Heald(c) decides this. \^Erle J. It was 
 
 for the Judge to decide from {he two specifications ; he took it 
 
 into his hands from the fact that the question lay in two written 
 
 documents.] Here the plaintiff does not claim as part of his 
 
 invention any caissoon, cylinder, or other similar apparatus, but 
 
 the claim in the plaintiif's specification is limited to " the mode of 
 
 constructing the interior of a caissoon in such a manner that the 
 
 workpeople may be supplied with compressed air, and be able 
 
 to raise the materials excavated, and to make and construct 
 
 foundations and buildings under water.'' The idea of building 
 
 under water, and leaving the caissoon or cylinder as part of the 
 
 foundation, never entered into Lord Coohrane's head, and in 
 
 considering the question of novelty, the specification should be 
 
 taken altogether, and see whether what is claimed as a whole is 
 
 new. This was decided by the Court of Exchequer in the case 
 
 of Newton v. The Grand Junction Railway Company, (d) 
 
 Hindmarchfor] Hindmarch for the defendants (Knowles Q. C. and Bramwell 
 the defendants.] q q ^j^j^ ]j^^y 
 
 The Attorney- General has not ventured to read a word of 
 the evidence given at the trial, and when the evidence of the 
 plaintiff himself is read, it is submitted that the defendants will 
 be entitled to the judgment of the Court. But there is a pre- 
 liminary question, viz., whether it is open to the plaintiff now 
 to take the objection, that the question ought to have been left 
 to the jury to say whether the plaintiff's invention was a new 
 manufacture or not. The proper exception for raising this 
 point was not taken at the trial. The only exception which 
 was taken was, that the learned Judge was wrong in his direc- 
 tion to the jury, that if they believed the evidence, the invention 
 was not an invention of any manner of new manufacture. It is 
 the duty of the party excepting to state how or in what respect 
 the Judge was wrong, to give him an opportunity of correcting 
 his direction, if necessary ; and for that reason an exception must 
 be taken before verdict. The exception was not taken here 
 
 (a) 4 M. & G. 580. ; s. c. 1 Webs (c) 6 Exch. 607. ; s. c. 20 L. J. 
 Pat. Ca. 393. ' Kep. (N. S.) ExcL. 410. 
 
 (b) 6 Exch. Kep. 859.; s. c. 21 L. (d) 5 Exch. Rep. 331.; s. c. 20 L. 
 J. Eep. (N. S.) Exch. 305. J. Rep. (N. S.) Exch. 427. n. 
 
BUSH V. FOX AND OTHERS. X69 
 
 In the same way as in the case of Steiner v. Heald, which has JUxcnEQCEE 
 
 been referred to. If this exception be allowed, it will be suffi- ' " 
 
 cient hereafter to say, " Your Lordship is wrong." («) \JErle J. H. Vac. 1854. 
 In the case of admissibility of a witness ?] In that case there is 
 but the one question ; here there are several. \_Maule J. What 
 the Lord Chief Baron decided was, that the plaintiff's invention 
 was not a manufacture, leaving out the question of new or 
 not.J The learned Judge took upon himself the construction 
 of the written instruments given in evidence, telling the jury 
 that if they believed the evidence of the plaintiff and his 
 witness, they must find a verdict for the defendants on the 
 third issue, which raised the question whether the invention was 
 a new manufacture as alleged by the plaintiff in his declaration. 
 \_Cresswell 3 , The issue raised involves two questions : whether 
 the plaintiff's invention was new, and whether it was a manu- 
 facture. The Chief Baron seems to have assumed that the 
 evidence negatives one or other of these two branches.] The 
 plaintiff's patent was obtained for " Improvements in the means 
 of, and in the apparatus for, building and working under 
 water;" and in his specification he says, " My invention relates 
 to means and apparatus for working under water, in order to 
 produce excavations and building foundations of lighthouses, 
 piers, jetties, and other structures under water." He then 
 describes the apparatus and mode of using it, and proceeds : 
 "The whole interior works of the caissoon may be removed 
 above water mark, or remain and constitute an external casing 
 to the building." The specification then goes on : " Having 
 thus described the nature of my invention, and the manner of 
 performing the same, I would have it understood that I do not 
 confine myself to the precise details shown, provided the pecu- 
 liar character of my invention be retained ; but what I do claim 
 is the mode of constructing the interior of a caissoon in such 
 manner that the workpeople may be supplied with compressed 
 air, and be able to raise the materials excavated, and to make 
 or construct foundations and buildings as above described." 
 That being the claim which the plaintiff has made, the first 
 question is, whether it extends to the apparatus as something 
 new comprised in his patent, or, as the plaintiff now contends, 
 only to the use or application of it for laying and forming part of 
 foundations under water. If the claim be deemed to extend to 
 the machine, it is clear that it was not new, and if the application 
 only be claimed, that was not a manufacture within the Statute 
 
 (a) The learned .Judges appeared and no judgment was given upon the 
 to be divided in opinion with respect point, 
 to the sufficiency of the exception, 
 
170 BUSH'S PATENT. 
 
 Hmdmarchfir of Monopolies, and it is submitted that, in either case, the Chief 
 ejen an . gg^^^jj ^^ right in the direction which he gave to the jury. 
 
 The apparatus used by the defendants in laying the foun- 
 dations of Rochester Bridge, and the mode of working, were 
 described in the paper (a) read by the defendant Hughes (the 
 inventor), at the Institution of Civil Engineers, which is set 
 out in the bill of exceptions. It was the making of that ap- 
 paratus, and the use of it in laying those foundations, which 
 constituted the alleged infringement of the plaintiff's patent. 
 The plaintiff, upon his cross-examination at the trial, admitted 
 that there was no difference between Lord Cochrane's plan and 
 what the defendants adopted at Rochester Bridge, except that 
 in the one case there was sinking on land, and in the other case 
 sinking under water. [He then read several parts of the evi- 
 dence of the witnesses set out in the bill of exceptions, to show 
 that they had admitted that the plaintiff's apparatus was not 
 new, except in its application to sinking under water, which 
 they alleged to be new.] The evidence of the witnesses, toge- 
 ther with the documents and drawings, set out in the bill of 
 exceptions, show most clearly that there was nothing new in 
 the apparatus, and that there was nothing new in the mode of 
 working when sinking and excavating, except, at most, that the 
 land in which the sinking takes place is covered with a stratum 
 of water, which can make no substantial difference, and that is 
 not pointed out in the specification as the novelty claimed. It 
 is contended for the plaintiff, that the novelty claimed is the 
 new construction of foundation under water, of which, when 
 completed, the caissoon forms a part. The specification does 
 not limit the claim to such a mode of constructing foundations ; 
 the apparatus is clearly claimed as being at least a part of the 
 invention. A claim to apparatus, the use or purpose of which is 
 described, cannot be deemed to be a claim for a mere application 
 of the apparatus to the particular purpose mentioned ; it must 
 mean that the apparatus is claimed as being new, and comprised 
 in the patent. 
 
 It has often been decided that unless a patentee can establish 
 the novelty of all to which his claim extends, he must fail alto- 
 gether ; and in applying this rule, recent cases have established 
 some important principles respecting the construction of specifi- 
 cations. In Holmes v. The London and North Western Railway 
 Company (b), the patent was for a railway turn-table, and the 
 law was there laid down that a patent must be taken to extend 
 to all the parts of a machine described in the specification, 
 
 (a) Ante, p. 143. l (6) Ante, p. 13. 
 
BUSH V. FOX AND OTHERS. J '{ \ 
 
 unless there be something to show that it was not so intended ; 
 and, although the combination of parts forming " the improved 
 turn-table" in that case was new, as well as some of the parts of 
 it, yet, as some of the other parts were old, and the whole was 
 described without distinction, it was held that a claim to " the 
 improved turn-table described " extended to all the parts, and 
 that, therefore, the patent could not be supported. In Tetley 
 V. Easton (a) the patentee claimed a rotary pump, formed of an 
 outside case, within which a hollow wheel revolved, and by the 
 centrifugal force thus brought into action, drew water out of a 
 well, or forced it up into a reservoir. The specification claimed 
 the whole pump ; and it was proved at the trial that the wheel 
 was not new at the date of the patent. The Court of Queen's 
 Bench, upon a rule for a new trial, held that the learned Judge 
 was quite right in directing a verdict against the patentee upon 
 issues raised by pleas alleging that the invention was not new, 
 and was not a new manufacture. The principle upon which 
 that case was decided was, that any person using a part of the 
 machine would have used a part of the invention, and, there- 
 fore, would have infringed the patent, as laid do-wn in Smith v. 
 The London and North Western Railway Company. {V) Here 
 it must be taken that this claim extends to the caissoon itself as 
 being part of the means used in performing the invention, and 
 the use of it for any purpose would be an infringement. But 
 the caissoon was not new, and, therefore, the patent Is void. 
 \_Maule J. What the plaintiff claims is the mode of making 
 the cylinder : he does not claim a monopoly of working under 
 water, but a monopoly of making cylinders of this sort] [Sir 
 A, Cockhurn A. G. We claim the making of our cylinder for 
 the purpose of working under water, and the applying it to that 
 purpose only.] There is no such limitation of the plaintiff's 
 claim in this specification as that mentioned by the Attorney- 
 General. That part of the plaintiff's invention which relates to 
 the mode of excluding water during excavation by means of 
 compressed air is identical with the invention of Lord Coch- 
 rane. The witnesses at the trial both said that the plaintiff's 
 specification describes, not only the plaintiff's machine, but also 
 that of Lord Cochrane, and alleged that the only novelty was 
 in the application of the machine to working under water. If a 
 claim to such an application could be made by the patentee, a 
 question respecting an infringement might depend upon the 
 state of the tide. But it is a mistake to suppose that Lord 
 Cochrane never contemplated building or working imder water; 
 
 (o) AiAl, p. 82. (J) 2 Ell.;& B. 69. 
 
172 BUSH'S PATENT. 
 
 Hindmarchfor foi* his Specification shows that he did. [He here read a por- 
 u»^te ^Jqjj jjf ^jjg specification, (a)] The plaintiff's machine acts upon 
 the principle of a diving bell, except that the entrance to the 
 plaintiff's machine is at the top instead of the bottom. The 
 object of each is to prevent the entrance of water at the bottom 
 of the apparatus while the men are working ; and Lord Coch- 
 rane's is precisely the same. Whether you commence to sink 
 on land partly covered by water or not, the object of using this 
 description of machinery is in every case to exclude the sub- 
 terranean water. It is clear, therefore, that the apparatus was 
 not new ; and, being claimed, the direction to the jury was 
 light. But supposing that the specification can be construed 
 as claiming only the particular application of the apparatus, 
 the plaintiff's case must stand or fall upon this question ; — 
 could the mere application of that apparatus, which was old, 
 to working under water, be the subject of a patent under 
 the Statute of Monopolies? The patent was, in truth, taken 
 out for a new machine at a time when the plaintiff was ignorant 
 of the existence of Lord Cochrane's prior patent; and it was 
 afterwards found at the trial that the only novelty upon which 
 the patentee could rely, was the simple application of the 
 machine to a new use ; and hence the attempt now made to 
 put such a limited construction on the specification. And if 
 the law contended for by the plaintiff obtains, it follows, that 
 if Lord Cochrane had used his own invention, he would in- 
 fringe the plaintiff's patent. [ Coleridge J. Must not the plain- 
 tiff contend, Mr. Attorney-General, that if Lord Cochrane were 
 to use his invention for sinking in water, he would infringe the 
 plaintiff's patent, although there might be only a slight covering 
 of water on the land into which he was sinking ? Sir A. Cock- 
 burn A. G. I must, of course, say that if Lord Cochrane were 
 to use his apparatus for sinking under water, he would commit 
 an infringement.] It is submitted that such a claim cannot be 
 supported. The only authorities in support of this proposition 
 which have been cited, are Newton v. Voucher (b), and Crane 
 v. Price (c); and when they are examined, it will be found that 
 they do not sustain such a doctrine. In the case of Newton v. 
 Vaucher, there was a combination of known elements, viz., a 
 soft metal lining placed within the bearing of an axle, the 
 lining being supported by projections which prevented it from 
 being squeezed out by the pressure. That combination was 
 new and useful, and the patentee recovered large damages ; but 
 
 (a) Ante, p. 148. (c) 4 M. & G. 580. ; s. c. 1 Webs. 
 
 (b) 6 Exch. Hep. 859. ; s. c. 21 Pat. Ca. 393. 
 L. J. Rep. (N. S.) Exch. 305. 
 
BUSH f. FOX AND OTHERS. 175 
 
 there Is no such combination in this case. Again, in Crane v. Exchequer 
 
 Price, which case stands alone, and has been referred to by 
 
 learned Judges with very great doubt, a new description of iron H. Vac. 1854. 
 which was a cheaper and a better article than any known 
 before, was produced by the combination of hot blast and 
 anthracite coal. The invention there, for which the patent was 
 granted, was " An improvement in the manufacture of iron." 
 The Court of Common Pleas in that case held the invention to 
 be a manufacture within the Statute of Monopolies. In so 
 deciding, the Court seems, from the report, to have relied upon 
 several cases which, when properly examined, do not support 
 the judgment. The first authority cited in that judgment was 
 R. V. Wheeler (a), in which the patent was repealed; but 
 Abbott C. J. made some observations respecting what might be 
 made the subject of a patent, In the course of which he said (6) that 
 "the word manufacture in the statute might perhaps extend to a 
 new process ; " but there was no judgment given on the point, 
 which did not properly arise. The next authority relied on is an 
 observation made by Lord Eldon, in Hill v. Thompson (c), in 
 which that learned Judge says " there may be a patent for a new 
 combination of old materials or for a new method of applying 
 them;" but the patent which gave rise to the observations shows 
 that the words could not have been intended to bear the sup- 
 posed meaning. Hall\. Boot(d) was also relied on, but there 
 the mode of applying gas to the singeing off the superfluous 
 fibres of lace, was quite different from the application of oil 
 flame, for the patentee used a chimney and other apparatus to 
 draw the flame throiigh the meshes of the lace, which had 
 never been done before. In the case of Derosne v. Fairie (e) 
 there was no objection taken to the invention as not being a 
 manufacture, nor was there any plea under which it could have 
 been taken. And with respect to the last case which was cited 
 viz., R. V. Daniel {f), the patent was repealed, and there was 
 no judgment on this point. The Invention was an improvement 
 in dressing woollen cloths, by submitting them, tightly rolled 
 up, to the action of hot water, so as to soften the nap, which 
 had been previously carded, so as to lay the nap all one way. 
 By the carding, the hot water, and the pressure on the roll, 
 the nap was laid smoothly and permanently in the required 
 direction; and the patent register shows that the cards used 
 for this purpose formed part of the invention. These are the 
 only authorities cited in support of the judgment in Crane v. 
 
 (a) 2 B. & Aid. 345. {d) 1 Webs. Pat. Ca. 100. 
 
 (6) Ibid. p. 350. (e) 5 Tyr. 393. ; s. c. 2 C. M. & R. 
 
 (c) 3 Mer. 629. ; s. c. 1 Webs. 476. ; s. c. 1 Webs. Pat. Ca; 158. 
 Pat. Ca. 235. (/) Pari. Kep. on Patents, 211. 
 
174 BUSH'S PATENT. 
 
 T^'^eZKZ ^^''^' an^ observations have been made by Judges in subse- 
 quent cases which greatly shake its authority. Thus in Dohbs 
 V. Penn{a) the Lord Chief Baron said that the decision 
 might be put upon the ground that the patent produced a new 
 metal; and Parke B. observed that upon that ground he 
 could understand the decision, although he had entertained 
 serious doubts as to the correctness of it; and in Steiner v. 
 Heald [b) the Lord Chief Baron said, " The case of Crane v. 
 Price has been very much questioned in this Court, — very much, 
 indeed." These are the only authorities which can be cited in 
 support of the proposition that a mere new use may be made the 
 subject of a patent, and they do not in reality support it. There 
 are, on the contrary, cases which show that the new application 
 of an old and known apparatus cannot be the subject of a'patent. 
 In Kay v. Maishall (c) the patentee took machinery which 
 had been applied for cotton and silk, and applied it to flax : one 
 question was whether the patent was good, and it was held by 
 the Court of Common Pleas that the patent was void. The 
 Master of the Rolls upheld this decision (rf), and also the House 
 of Lords, (e) And even if it be said that the machinery was 
 there shown to be old, it is to be observed that it was only 
 shown to be old by reason of its previous use for other descrip- 
 tions of fibrous materials, whereas the patentee claimed to use it 
 for flax only. In Losh v. Hague (y) the patentee took a wheel 
 well known and in use on common roads, and on it he put the 
 tire or periphery of a railway wheel, and then claimed it as a 
 railway wheel of his invention ; Lord Abinger C. B. held that the 
 patent could not be sustained. In Brunton v. Hawkes (g), the 
 patent was for a new chain and new ship's anchor, and it was 
 proved that other descriptions of anchors, and also adzes, and 
 some other tools, had been previously made in the same way, 
 and the Court held that the patent could not be sustained. In 
 Peg. V. Cutler (h), the patent was for an improvement in 
 tubular flues, which were made of iron tubes coated with brass. 
 There was nothing new in the tubes — nothing new in the mode 
 of putting them into boilers, and the only novelty was in the 
 use of these tubes as tubular flues ; and it was decided that the 
 invention could not be made the subject of a patent. It is 
 therefore submitted that if the plaintiff's specification is to be 
 construed as claiming only the particular application of the 
 
 (a) 3 Exch. K. 427. (e) 8 CI. & Fin. 245. 
 
 (b) 2 Car. & Kir. 1022. (/) 1 Webs. Rep. 200. 
 
 (c) 5 Biiig, N. C. 492. ; s. c. 8 Law (g) 4 B. & Aid. 541. 
 J. Rep. (N. S.) C. P. 261. (A) Ante, -p. 124. 
 
 (d) 1 Beav. Rep. 535. 
 
BUSH V. FOX AND OTHERS. 5 ] 75 
 
 apparatus described, that was not a new manufacturej and the Excueqcer 
 direction of the learned Chief Baron to the jury was right. pa mber . 
 
 Sir A. J. E. Cockburn A. G., in reply. This case has been H.Vao. 1854. 
 argued by the counsel for the defendants upon the supposition 
 that it was admitted that the cylinder of the plaintiff's patent 
 was the same as in Lord Cochrane's patent. l_Maule J. That 
 is a matter of scientific opinion.] Be it so; the question 
 should have been left to the jury, and I would have had the 
 opportunity of addressing them in reply. [ Williams J. You 
 might have addressed the jury on the point had you wished to 
 do S0.3 It was upon the question of infringement that the 
 witnesses said there was no difference between what was done at 
 Rochester Bridge and the invention of Lord Cochrane ; that was 
 a ood answer to the plea of not guilty, but offered no support 
 to the plea that it was not a new manufacture. All the 
 authorities cited for the defendants go only to this, that you 
 cannot have a patent for the naked application of an old machine 
 to a new purpose. There are also authorities which establish 
 that a new mode of applying the old machine, or a new result 
 from such application, will support a patent. In Kay v. 
 Marshall (a), had the patentee claimed the maceration only, his 
 patent would have been sustained ; but he claimed the machinery, 
 which was not new, and consequently he failed. In Brunton 
 v. Hawhes (b) there, were three old things. The patentee said, I 
 make a new combination by leaving out the third, and the 
 Court held that a patent could not be had for that. In Hall 
 V. JBoot (c) no machinery was claimed; the claim was for 
 the use of inflammable gas, to burn off the fibres of the lace. It 
 is submitted, upon the authority of Crane v. Pi-ice, and the 
 cases there cited in the judgment (all of which had been maturely 
 considered in the course of the argument), that patents for the 
 application to a new purpose of machines which are old ought to 
 be supported. What is invention but the application of portions 
 of old machines to new and useful purposes? \_Coleridge J. 
 Suppose you are right, and suppose the machine is old, accord- 
 ing to your argument you should not have claimed both the 
 machine and the new application of it. In your specification 
 you claim both the machine and the mode of using it. Now, 
 suppose it turn out that the machine is old, have you not 
 claimed too much ?] [^Maule J. Assuming that the machine 
 itself is old, the learned Judge held that the mere new applica- 
 tion is not a new manufacture, and, therefore, not the subject 
 of a patent ; and my present opinion is, that on the evidence 
 
 (a) 5 Bing. N. C. 492. (c) 1 Webs. Pat. Ca. 100. 
 
 (5) 4 B. & Aid. 541. 
 
176 BUSH'S LATENT. 
 
 burrfk^o" ^ ^® ^^^ '^'^^* ^° ®° directing the jury, J What the plaintifF in his 
 ill reply. ' Specification says is, " I claim (not the caissoon but) the mode 
 of constructing the interior of a caissoon in such manner that 
 the workpeople may be supplied with compressed air," &c. 
 iMaule J. Suppose the process described in the plaintiff's 
 specification new, but the caissoon old, how should the jury 
 find ? I think the issues of novelty should then be found for 
 the defendants.] The fallacy consisted in supposing that the 
 machines of Lord Cochrane and the plaintiff were the same in 
 this respect. The plaintiff's claim is not the application of an 
 old machine to a new purpose, but a new mode of applying it» 
 This makes it the subject of a patent. It is not pretended on 
 the other side that Lord Cochrane's cylinder could be used in 
 laying foundations under water as described in the plaintiff's 
 specification. [ Coleridge J. The new use is distinct from a new 
 method. In most of the cases cited the new method constitutes 
 the manufacture. Manufacture includes both process and result.] 
 A liberal construction has been put upon the term " manufacture " 
 by my friend Mr. Hindmarch, in his book of the Law of Patents, 
 p. 83., in speaking of the case of Boulton and Watt v. Bull, and 
 I trust the Court will take the same view in the present case. 
 
 Judgment. CoLEEiDGE J. The question in this case arises upon a 
 
 direction of the Lord Chief Baron, who, upon the issue raised 
 on the third plea, is found to have told the jury that if they 
 believed the said several matters so produced, deposed, and 
 given in evidence before them, and stated in the bill of excep- 
 tions, that then the said invention was not an invention of any 
 manner of new manufacture, and that the said action could not 
 be maintained. We are of opinion that the Chief Baron was 
 justified in giving that direction to the jury under the cir- 
 cumstances. 
 
 Now, a great many points have been made in this case, — 
 some upon which the Court does not feel it necessary, and thinks 
 it most expedient not to pronounce any opinion, but to confine 
 itself simply to one clear and short point on which we think the 
 direction of the Chief Baron was proper, and ought to be sus- 
 tained. Whatever the plea which I am now going to read puts 
 in issue, it seems to us that, at all. events, it puts in issue the 
 novelty of the construction of the instrument itself that was to 
 be used. The plea is, " that the said supposed invention in the 
 declaration mentioned was not an invention of a certain manner 
 of new manufacture." Now, what was the invention that was 
 claimed ? Why, upon reference to the specification it seems at 
 all events certain thot the mode of constructing the interior of 
 
BUSH V. POX AND OTHERS. 177 
 
 a caissoon which had been particularly described in the previous exchequer 
 part of the specification, is one of the things which, above all C hambe r. 
 others, is made the specific ground of claim by the plaintifi". If, h. Vac. 1854 
 then, the novelty of that was put in issue, and was not proved, 
 then the plea was made out, and then it is perfectly true that 
 the invention was not new. When it is considered what was the 
 evidence in this cause, it seems really to have been all one way. 
 After putting in the plaintiff's specification, and putting in the 
 account of what had been done by the defendants at Ro- 
 chester Bridge, and after putting in the specification of Lord 
 Cochrane's patent, the plaintiff and another witness were called, 
 and they had before them the models and the description with 
 regard to one patent, and the description with regard to 
 the other, and both these witnesses state, upon their cross- 
 examination, that the cylinder in Lord Cochrane's invention, 
 and the caissoon in the plaintiff's, are the same in all respects — 
 material respects being thereby understood ; but the only dif- 
 ference, in effect, is the mode, the place, and the manner in 
 which they are employed — one on dry land or under the earth, 
 and the other undej; water. The Attorney-General has pointed 
 out that, looking at the specification, it is obvious that there is 
 a difference between the two. No doubt there are differences 
 to the eye, but whether those differences are material, and 
 whether it is true or false, that they were the same substantially, 
 was the very point upon which the witnesses were to be ex- 
 amined ; and those witnesses therefore must be taken to say, 
 seeing the object before them, that in spite of these, so imma- 
 terial were they, the result at which they arrived was, that the 
 things- themselves were substantially the same. That being the 
 evidence, and there being nothing to contradict it in any respect, 
 we think that the Chief Baron was perfectly justified in saying 
 to the jury, that if they believed that the invention was not new, 
 because a material part of it was old, they must find a verdict 
 for the defendants. We think, therefore, that the judgment 
 ought to be affirmed. 
 
 Judgment affirmed. 
 
 N 
 
178 
 
 BUSH'S PATENT. 
 
 Suggestion and 
 denial of error. 
 
 Plaintiff's 
 Reasons. 
 
 Defendants' 
 Reasons. 
 
 In the House of Lords. 
 
 In Error from the Exchequer Chamber. 
 
 William Bush v. Sir Charles Fox, John Henderson, 
 AND John Hughes, 
 
 The plaintiff afterwards took proceedings in error, in the 
 House of Lords, and for that purpose entered the following 
 suggestion and denial of error. 
 
 « The 15th day of February, A. d. 1854. 
 
 " The plaintiiF says that there is error in the above record 
 and proceedings, and the defendants say there is no error 
 therein." 
 
 And the record was accordingly carried up to the House of 
 Lords for judgment. 
 
 The plaintiff, in his printed case, stated that his reasons for 
 contending that the judgment of the Court of Exchequer 
 Chamber was erroneous, were as follows : — 
 
 L That the invention of the plaintiff in error was the 
 constructing of buildings and foundations under water, in the 
 manner described in his specification. 
 
 IL That the construction of buildings and foundations under 
 water, in the manner described, was a certain manner of new 
 manufacture within the meaning of the statute, for which a 
 patent could be maintained. 
 
 IIL That it was a question of fact for the jury, and not 
 matter of law for the judge, whether the invention described in 
 the plaintiff's specification was the working or making of any 
 manner of new manufacture. 
 
 IV. That the plaintiff in error does not claim in and by the said 
 specification, as part of his invention, any caissoon, cylinder, or 
 other similar apparatus, except as adapted for and applied in and 
 to the construction of foundations and buildings under water, 
 by sinking, working, and building within the same, as described 
 in the specification. 
 
 y. That the judgment of the Court of Exchequer Chamber 
 was and is erroneous, and should be reversed, and a venire de 
 novo awarded. 
 
 The defendants in their printed case stated that their reasons 
 for contending that the judgment ought to be aflSrmed, were as 
 follows : — 
 
 First. That no sufficient exception was taken by the plaintiff 
 to the direction of the Lord Chief Baron to the jury. 
 
 Secondly. That the plaintiff's invention, as described, and 
 claimed in his specification, consisted of a -particular mode 
 
BUSH V. FOX AND OTHERS. 17 9 
 
 of constructing a Caissoon, or apparatus to be usfed for the House of 
 purpose of making excavations and laying foundations under 
 water, and that the evidence given at the trial showed that a.i>. 1854. 
 the apparatus was not new. 
 
 Thirdly. That the only novelty in the plaintiff's invention 
 consisted in the alleged new use or application of the Caissoon, 
 or apparatus for the purpose of making excavations and laying 
 foundations under water, which could not be made the subject 
 of a patent. 
 
 Fourthly. That the evidence given at the trial, if true, 
 showed that the invention of the plaintiff was not any manner 
 of new manufacture, within the meaning of the Statute of 
 Monopolies, 21 James I. cap. 3. section 6.; and if believed, 
 entitled the defendants to a verdict on the issue which has 
 been found for them. 
 
 Lastly. That the direction of the Lord Chief Baron to the 
 jury was right, and that the judgments of the Courts below are 
 not erroneous, and ought to be aflSrmed. 
 
 In the House of Lords 
 
 Cor., The Lord Chancellor and other Peers. 
 
 24th June, 1856. 24th June 
 
 1856. 
 
 The Judges were summoned ; and Alderson B., Coleridge J., ^ , ^ ^j^^^. 
 Wightman J., Erie J., Cresswell J., Williams J., Martin B., invention is 
 Crompton J., Crowder J., and Bramwell B., attended. nufacturrputs 
 
 Webster, for the plaintiff in error. The direction of the i" issue both 
 Lord Chief Baron to the jury was wrong. The issue involved the inventLn 
 in the third plea is a compound proposition composed partly of ^"^ ^'^ ^i-ag 
 law and partly of fact, and the Judge, treating the whole as a ture. 
 question of law, took upon himself to decide the question of ''^?^f'J?^' 
 novelty, which, being a matter of fact, was solely for the consi- Exchequer 
 deration of the jury. And when the case came before the Exohe- ^eTudge*^* 
 quer Chamber, the learned Judges did not express any opinion direction to the 
 on this compound proposition, namely, on the question of the ^^ZS. "lee' 
 invention being a new manufacture, but decided it solely on the side-note ante, 
 question of novelty, and, therefore, the judgment there does not Semble. That 
 
 sustain the Lord Chief Baron's direction at Nisi Prius. The % judge 
 
 might have di- 
 
 decision in the case Neilson v. Harford (a), that " the construe- rected a ver- 
 dict for the 
 
 defendants upon the construction of the two specifications, without farther evidence. 
 
 (a) 8 M. & W. 823.; s. c. 1 Webs. Pat. Ca. 370. 
 
180 BUSH'S PATENT. 
 
 Websierfor tion of all written instruments belongs to the Court alone," is 
 ""* not applicable to the present case ; for here the question was 
 
 not one of the construction of the specification, but of the 
 novelty of the invention described therein, which clearly was a 
 matter to be left to the jury ; but even in Neilson v. Harford 
 it was laid down that " the duty of the Court to construe all 
 such instruments arises as soon as the true meaning of the 
 words in which they are couched and the surrounding circum- 
 stances, if any, have been ascertained as facts by the jury." 
 This was not so here, for one most material circumstance, the 
 novelty of the invention, was totally withdrawn from the jury 
 and decided by the Judge, which, it is submitted, was wrong. 
 The direction of the Lord Chief Baron and the judgment of 
 the Court below rested on the assumption that the apparatus 
 was claimed per se, without due regard to the real nature of the 
 invention, that is to the foundation itself, which was made in a 
 peculiar manner. The new manufacture in this case was the 
 manner of making the foundation ; an invention may be made 
 the subject of letters patent as being made then for the first 
 time, or if made in a new and special way then for the first 
 time. In Morgan v. Seaward (a). Alder son B. told the jury 
 that it was the substance, and not the mere form, of an invention 
 which was to be looked to. The plaintifiPs specification 
 describes the means and apparatus for working under water. 
 A caissoon is admitted to have been old, and is not, therefore, 
 claimed ; but the internal construction of the caissoon, the in- 
 troduction of a series or succession of chambers or floors, so 
 that the caissoon might be suited for and adapted to the purpose 
 of the special manufacture, was new ; it is those arrangements, 
 adapting it to the special purpose, which constitute th'e improve- 
 ments in apparatus, and which are new. Lord Cochrane's spe- 
 cification was relied upon by the defendants to show that the 
 plaintiff's invention was not a novelty ; but the purpose Lord 
 Cochrane had in view was totally different from the plaintiff's, 
 and, according to the doctrine laid down by Lord Cottenham in 
 Cutlers Case(b), the identity of purpose and not of name is 
 the criterion in judging of the similarity or dissimilarity of 
 inventions. Lord Cochrane's invention was very properly 
 described in his specification as being for " Apparatus to 
 facilitate excavating, sinking, and mining ; " it was for the 
 purpose of keeping a mine or other place under ground, like 
 the Thames Tunnel, clear of water by means of apparatus to 
 ■be used on land by sinking a shaft on the shore, and it turned 
 out to be perfectly useless. There was nothing new in the 
 cast-iron cylinders proposed to be used by Lord Cochrane, 
 
 (ri) 1 Webs. Pat. Ca. 170. (J) Webs. Pat. Ca. 418. 
 
BUSH V. FOX AND OTHERS. 181 
 
 whereas a succession of chambers within the cylinder is neces- Hodse of 
 sary to the plaintiff's invention, and is new ; also the mode of ^ordj 
 application and the purpose for which such combination of June 1856. 
 cylinder and of internal chambers was to be applied, were new ; 
 also the result obtained, namely, the foundation manufactured 
 in a new way, wherein the cylinder used in the course of the 
 construction remained as part of the foundation ; so that the 
 invention, as a whole, is new, and comes within the case of 
 Newton v. The Grand Junction Railway Company, (a) The 
 plaintiff does not claim novelty, or to be the discoverer of any 
 new principle, but he claims a new mode of applying an old one 
 to a new purpose, and this is a good subject for a patent, as 
 laid down by Coltman J. in the case of Walton v. Potter and 
 Horsefall (b), and still more strongly by Alderson B. in the case 
 of Neilson v Harford (c), where, in the course of the argument, 
 that learned Judge says (tf) : " The distinction between a patent 
 for a principle and a patent which can be supported, is, that 
 you must have an embodiment of the principle in some practicat 
 mode described in the specification of carrying the principle 
 into actual effect ; and then you take out your patent, not for 
 the principle, but for the mode of carrying the principle into 
 effect." The admission made by the plaintiff and his witness in 
 reply to a question skilfully put on cross-examination ought 
 not to be pressed against the appellant, especially if the answer 
 admits of an explanation consistent with supporting the patent. 
 The case of Haworth v. Hardcastle (e) decides that a patentee is 
 to be presumed as not intending to claim things which he must 
 know to be in use, and his specification should be read so, as 
 consistently with the fair import of language will make the 
 claim co-extensive with the actual discovery. So here it must be 
 presumed that the plaintiff knew of Lord Cochrane's invention, 
 and did not intend to claim any of the apparatus described in 
 the specification of Lord Cochrane's patent. No forced con- 
 struction is sought to be put upon the plaintiff's specification, as 
 in the case of Tetley v. Easton and Amos (/) ; but the patent may 
 be sustained by reading the title and specification in a candid 
 spirit, and then, having ascertained, on a review of all the circum- 
 stances of the case, what the invention really was, seeing whether 
 that is not what is substantially claimed. The direction of the 
 Lord Chief Baron can only be sustained on the ground that the 
 
 (a) 5 Exch. 331.; s. c. 20 L. J. {i) 1 Webs. Pat. Ca. 342. 
 
 Rep. (n.s.) Exch. 427. m. (e) 1 Webs. Pat. Ca. 480. ; s. c. 
 
 (6) 1 Webs. Pat. Ca. 597., see p. 4 M. & So. 720. ; 1 Bing. N C. 182. 
 
 604. (/) Ante, p. 82. 
 
 (c) 1 Webs. Pat. Ca. 331. 
 
182 
 
 BUSH'S PATENT. 
 
 Webster for 
 the Plaintiff. 
 
 title alone is to be looked to, whereas the title, as interpreted by 
 the specification, shows the invention to have been the manufac- 
 ture of foundations under water in a new way by means of appa- 
 ratus specially adapted, arranged, and applied for that purpose. 
 
 Question pro- 
 posed to the 
 Judges. 
 
 Hindmarch, for the defendants in error, was not called upon. 
 
 The Lord Chancelloe. My Lords, I think it will not 
 be necessary to trouble your Lordships to hear anything in 
 observation from the learned counsel for the defendants in 
 error. The question arises upon the validity of a certain Bill 
 of Exceptions to the ruling of the Lord Chief Baron at the 
 trial for the infringement of a patent, a patent of consi- 
 derable importance. And the question is, whether or not the 
 direction given by the Lord Chief Baron was right in point of 
 law. If it was, there is an end of the case. Now what 1 
 would propose to do, before calling upon the learned counsel 
 for the defendants in error to address the House, is, to put 
 to the learned Judges simply this question : Whether, looking 
 at this record, the direction given by the Lord Chief Baron 
 was a correct direction in point of law ? I should observe that 
 if it should turn out that the learned Judges are not clear that 
 the direction of the Lord Chief Baron was right in point of 
 law, I should recommend your Lordships not to come to a con- 
 clusion before resuming the argument; and of course, then, 
 we shall be ready to hear the learned counsel for the defendants 
 in error. 
 
 Opinion of 
 the Judges. 
 
 The Judges retired for a short time; and, on their return, 
 their opinion was delivered as follows, by 
 
 Aldeeson B. My Lords, her Majesty's Judges are una- 
 nimously of opinion that the direction of the Lord Chief Baron 
 A plea that an was right. The third plea, that this was not a new manufac- 
 ^n<rt a*new ma- ^ure, clearly involves both the question of novelty and of its 
 Bufacture, in- being a manufa!cture. The invention which is here claimed 
 qtt!rstion°of*^ by the plaintiff is thus described in his specification (a): 
 novelty, and of ce ]y[y invention relates to means and apparatus for working 
 manuft-cture. " under water, in order to produce excavations, and building 
 " fotindations of lighthouses, piers, jetties, and other structures 
 " under water." And the claim to the invention is found 
 at the end of the specification (b) : " What I claim is the 
 "mode of constructing the interior of a caissoon, in such 
 " manner that the work-people may be supplied with com- 
 
 (a) Ante, p. 140. 
 
 (J) Ante, p. 143. 
 
BUSH V. FOX AND OTHERS. Ig3, 
 
 " pressed air, and be able to raise the materials excavated, and House of 
 " to make or construct foundations and buildings as above ^^t^t>s- 
 "described." It is to be observed that he does not claim the June 1856. 
 foundations thus laid, but the mode of being enabled to make 
 them. The invention claimed, therefore, is such a special 
 apparatus applied to the interior of a caissoon as may enable 
 the workmen to descend into and ascend from a chamber 
 filled with air in a compressed state, where they may work 
 in the construction of the foundations in a space previously 
 excavated, and into which the compressed air, whilst it enables 
 them to breathe and work, prevents the external water from 
 coming to interrupt their work. The apparatus also permits 
 them to communicate with the surface, and to carry in their 
 materials and tools, and to carry out the materials excavated. 
 We think this is precisely what was done by Lord Cochrane's 
 invention ; and the evidence of the plaintiff (a) and James 
 Campbell (b) clearly agrees with that view, and confirms us' 
 in that conclusion. If so, the Lord Chief Baron's direction 
 was right, that this really was no new manufacture, and that, 
 therefore, the patent cannot be supported. 
 
 The Lokd Chancellor. My Lords, I confess that from Judyment. 
 the time that I understood what the facts of this case were, 
 from the argument at your Lordship's bar, I really have enter- 
 tained no doubt whatever upon the question now before your 
 Lordships, namely , whether or not the direction of the Lord 
 Chief Baron was right. When I say that I have no doubt that 
 it was right, I am not clear that the Lord Chief Baron might not 
 have gone much further, and that, even if there had not been any 
 evidence at all, he might not have directed the jury that they 
 must find in the mode in which they did find, because I think it 
 was for the Court to compare the two specifications together, 
 and, comparing the two together, it appears to me perfectly 
 clear that the material part of the plaintiflF's invention was 
 involved in the invention of Lord Cochrane. It may be the fact 
 that the plaintiff had discovered something, for which he might 
 have obtained a patent, and for which, if it is not too late, 
 perhaps even now, by disclaiming a part of that which he has 
 claimed as his invention, he may still have something that is 
 valuable. That is a matter upon which I need not speculate. 
 But the plainti0"'s Invention consists in this (putting it in 
 popular language), a plan by means of a caissoon of introducing, 
 by successive chambers, compressed air, so that persons may, by 
 the mode which he points out, make the foundations of buildings 
 
 (a) Ante, p. 158. (J) Ante, p. 159. ct sqq. 
 
 N 4 
 
184 
 
 Judgment. 
 
 BUSH'S PATENT. 
 
 which are to be constructed under water, eventually to sustain 
 lighthouses and other buildings above water; and to do that 
 in the mode which he has pointed out, one material part of the 
 invention, as he claims it, is the successive chambers whereby 
 the parties working will be supplied with compressed air. 
 
 Now, unfortunately, he has claimed that as part of his inven- 
 tion. The learned Judges have pointed out that to be so, both in 
 the terms in which he introduces his specification and the terms 
 in which he concludes it. " My invention," he says, " relates 
 to means and apparatus for working under water in order to 
 produce excavations." "Means and apparatus for working 
 under water," that is, successive chambers whereby, by a very 
 ingenious contrivance, the parties working are to be supplied 
 with air. Then he says: "What I claim is the mode of con- 
 structing the interior of a caissoon in such manner that the 
 work-people may be supplied with compressed air, and be able 
 to raise the materials excavated, and to make or construct 
 foundations and buildings as above described." Now my 
 Lords, Lord Cochrane having invented a caissoon which has sub- 
 stantially the same object and the same operation, namely, to 
 enable parties at great depths to be supplied with compressed air, 
 it appears to me, independently of any testimony, that the 
 two are substantially the same. And in confirmation of that, 
 two gentlemen who were called as witnesses, or rather the 
 plaintiff himself and a witness, say that substantially, so far as 
 that went, it is the same thing ; one was for working under ground 
 and the other for working under water, but both had substan- 
 tially the same object. That evidence being given, the Lord 
 Chief Baron says, if the jury believed that evidence, the inven- 
 tion was not an invention of any manner of new manufacture ; 
 it was not new at least in the material part of it, the mode of 
 fitting up the caissoon so as to supply the workmen with air. 
 My Lords, I entirely concur in the opinion which the learned 
 Judges have, without any hesitation, given to your Lordships, 
 that that direction of the Lord Chief Baron was perfectly right, 
 and consequently that there is no foundation for this writ of 
 error. 
 
 Judgment for defendants (in error) with costs. 
 
 Patent. 
 
 \ith August, 
 
 1835. 
 
 DAY'S PATENT. 
 
 [No. 6880.] 
 
 Letters Patent, bearing date the 14th day of August, 1835, 
 granted to John Day, for " An improved Wheel for Carriages of 
 ■lifferent Descriptions." 
 
DAY'S PATENT. 
 
 To all to whom, &c. (a) The said improved wheel is manu- 
 factured wholly of bar-iron, by welding wrought iron bars 
 together into the form of a wheel, whereof the nave, spokes, 
 and rim, when finished, will consist of one solid piece of malle- 
 able iron ; and the mode whereby the said bars of malleable iron 
 are fashioned, and united into the shape of a wheel, is as follows : 
 — [The patentee then describes, by reference to his drawings, 
 the manner in which he forms the spokes or arms of the wheel 
 of two bars of iron (A, A, fig, 1.) by bending one extremity of 
 each bar so as to form a segmental portion of the rim of the wheel 
 (as shown at E, E, fig. 2.), and the other extremity (B, B, fig. 
 1.) into the form of the letter V, which, when a wedge-like fitting 
 piece (D, fig. 1.) is inserted, forms a sectional portion of the 
 central nave. He then continues :] " All the several arms, being 
 completed in manner aforesaid, are then to be welded together 
 at the centre or nave of the wheel, in order to form one mass 
 or solid boss, which is made up by aid of two circular plates of 
 malleable iron, whereof one is to be applied and welded on each 
 
 Fig. 3. 
 
 Fiff.l. 
 
 Fig. 2. 
 
 
 
 185 
 
 Specification, 
 nth Feb. }836. 
 
 side of the central part of the nave, which is formed by putting 
 together the wedge-like ends B, D, B (fig. 2.) of the several 
 arms as aforesaid, so that they fit one to the other in the manner 
 of sectors of a circle, and the said two plates, including all 
 those wedge-like ends between them, and overlapping their 
 junctions, will weld them all securely together and give sub- 
 stance to the nave of the wheel. The putting together and 
 welding is performed by heating the said wedge-like ends B, D, 
 B (fig. 2.) of all the several arms to a welding heat at one 
 time, and also the two round plates, in suitable forge fires ; and 
 when all are properly heated, one of the heated circular plates 
 
 (a) The extracts from the specifi- 
 cation here given are such as are 
 material to the cases of Smith v. The 
 London and North Western Railway 
 Company, and Smith v. The London 
 and South Western Railway Com- 
 
 pany. The specification and draw- 
 ings, published by the Commissioners 
 of Patents, can now be obtained for 
 a small sum at their office. See also 
 London Journal, vol. xvi. C. S. p. 
 25. pi. ii. 
 
186 DAY'S PATENT. 
 
 Specification, is laid flat on an anvil, and then the several heated wedge-like 
 ends of the arms are placed on the flat surface of that circular 
 plate, in correct positions around the centre thereof, so that 
 their inclining sides B, B (fig. 2.) will apply laterally one to 
 another, in the manner of sectors of one circular centre boss, aa 
 shown in fig. 3., leaving no vacancies between them. And this 
 being done by simultaneous manipulations of as many persons 
 as are requisite for so bringing together and holding the several 
 arms in place, as shown in fig. 3., the other heated circular 
 plate is promptly placed over the assembled sectors, truly con- 
 centrical with them, and then a heavy stamper, which is provided 
 over the anvil, and which was hoisted up therefrom previously 
 to putting the parts together, is let fall perpendicularly upon 
 the uppermost circular plate, with a sufficient blow to effect the 
 welding of the central nave of the wheel into a solid mass, and 
 such blow may be repeated as often as is necessary for com- 
 pletely welding the said mass ; and whilst the heat continuesj 
 the shoulders n, n, which form the spaces or groins between the 
 arms A, A, fig. 3., are hammered excactly into the intended 
 shape, and smoothed by the aid of suitable tools of the kind 
 called sets, and the same of the flat surfaces around the borders 
 of the circular plates, all which being done with the aid of 
 succeeding heats if required, the formation of the solid central 
 boss of the wheel is completed by hammering it to its intended 
 form. But note, the extremities a, b, of the bended branches 
 E, E, which were prepared as before mentioned for forming 
 scarf joints, were bended at the time of their formation, so that 
 they will come near together, but without being actually in 
 contact with each other, as is shown in fig. 3., in order that 
 they may not in anywise control the positions of the wedge-like 
 sectors B, D, B, during the aforesaid putting together and 
 welding of the central boss. But after that is finished as afore- 
 said, one of the said intended scarf joints a or h. fig. 3., is 
 heated to a welding heat, and a bar of rolled iron, L (fig. 3.), 
 which is intended to form the outer rim of the wheel, is at the 
 same time heated to a welding heat at some distance from its 
 extreme end, and that heated part is applied opposite to the 
 intended scarf joint a or h, which has been heated, and which 
 part has been placed, whilst hot, in a suitable mould ; and by 
 hammering on, the outside of the heated bar L, when so applied 
 (the blows being in a direction towards the centre of the wheel), 
 the scarf joint a or 5 of the bended branches E, E, of the arms 
 is welded together, and also the two parts of that joint a or & 
 are both welded to the bar L, which is to form the outer part of 
 the rim, in order by such welding to commence the formation of 
 
DAY'S PATENT. 187 
 
 a strong rim to the wheel. The said bar L being thus welded Specification 
 at one part of the uim of the wheel, is then bended round to ^■"' ^^^^' 
 conformity with the curvature of the circldar rim, the bar L 
 being cut to such length as to extend about one third round the 
 same, or other convenient portions, and by successive, welding 
 heats the said bar L is welded to the several branches E, E, of 
 the arms, and then other portions of the same bar L are applied 
 and welded in continuation until they reach all round the rim, 
 the junctions of the said portions of the bar L being welded one 
 to the other as well as to the branches E, E, and those junctions 
 are arranged to come in the intervals between the aforesaid 
 scarf joint a, h, at the eiids'of the branches E, E, of the arms 
 A, A, (fig. 3.). And note, when that part of the said welding 
 of the outer rim L to the branches E, E, of the arms is to be 
 performed opposite to the end of each arm A, A, the same is 
 done upon a mould which has a notch in it to admit the arm 
 A, A of the wheel. After the rim L of the wheel is thus solidly 
 welded all round to all the branches E, E, of the several arms 
 A, A, the exterior circumference of the rim E, L, E, which is 
 so formed by welding, is then fashioned by hammering at suc- 
 cessive working heats, and with the aid of suitable sets and 
 tools, until it is wrought to the required form ; that is to say, if 
 the wheel is intended for tram waggons, it should have a 
 rounding edge in like manner as is usual for cast-iron tram 
 wheels, and the said fashioning of the exterior rim and the due 
 proportioning of the dimensions of the parts is almost the only 
 difference which in requisite in the process of manufacturing my 
 improved wheel." [The patentee, after describing the various 
 modes of fashioning the outer circumference, of the wheel, when 
 used on edge railways, for locomotive engines, &o., and also the 
 manner in which the nave is to be bored, the circumference 
 turned, and the wheel keyed on to the axis, concludes his 
 specification with the following claim :] " Having now described Claim. 
 my said improved wheel, for carriages of different descriptions, 
 I, the said John Day, do hereby declare, that the new invention 
 whereof the exclusive use is granted to me, by the said letters 
 patent, consists, in the circumstance of the centre boss or nave, 
 arms, and rim, of the said wheel being wholly composed of 
 wrought or malleable iron, welded into one solid mass, in 
 manner hereinbefore described ; but I make no claim to any 
 wheel with wrought iron arms, united by cast iron, for a central 
 boss or nave, although such wheel may have a wrought iron 
 rim ; nor do I make any claim to any particular mode of fasten- 
 ing my improved wheel upon the axis, or of fixing a box into 
 such wheel. In witness, &c." 
 
188 DAY'S PATENT. 
 
 In the Queen's Bench. 
 8th April 1853. Liverpool Spring Assizes, 1853, 
 
 Henky Smith v. The London and North Western 
 Eailwat Company. 
 
 Writ issued 
 
 Declarati n ""^^^ declaration (a), after stating that one John Day was 
 
 8«7i June 1852. the truc and first inventor of a certain invention of an improved 
 Wheel for Carriages of different descriptions, and that his late 
 Majesty, King William IV., on the 14th of August, 1835, 
 granted unto the said John Day, his executors, administrators, 
 and assigns, letters patent for the sole use of the said invention, 
 for the term of fourteen years, subject to a proviso that if the said 
 John Day should not particularly describe and ascertain the 
 nature of his said invention, and in vyhat manner the same was 
 to be performed, by an instrument in writing under his hand 
 and seal, and cause the same to be enrolled in his Majesty's 
 High Court of Chancery within six calendar months next 
 and immediately after the date of the said letters patent, then 
 the said letters patent should be void, Ssc, alleged the enrolment 
 of a specification in pursuance of the proviso on the 11th of 
 February, 1836, and the assignment of the letters patent by 
 John Day to the plaintiff and Thomas Willey, since deceased (6), 
 " To have, hold, use, exercise, and enjoy the said letters patent, in- 
 " vention, and premises unto and to the said plaintiff and Thomas 
 " Willey, their executors, administrators, and assigns, as tenants 
 " in common, and not as joint tenants, for all the residue and 
 " remainder of the said term of fourteen years granted by the 
 " said letters patent." 
 
 The breaches assigned were, that the defendants, after the 
 making of the letters patent and of the said indenture, and 
 within the said term of fourteen years, and in the lifetime of the 
 said Thomas Willey, since deceased, to wit, on, &c., and on divers 
 other days, &c., and within that part of the United Kingdom 
 of Great Britain and Ireland called England, unlawfully and 
 unjustly ,without the leave, license, consent, or agreement of the 
 plaintiff and the said Thomas Willey, or either of them, in 
 
 (a) Before the Common Law Pro- consequence of an objection taken to 
 
 cedure Act (1862) came into opera- the plaintiff's right as a tenant in 
 
 ^[(j„ common to recover the whole amount 
 
 (j) The habendum is inserted in of damage. 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 
 
 189 
 
 writing under their hands and seals, or otherwise howsoever, 
 for that purpose first had and obtained, and against the will of 
 the plaintiff and the said Thomas Willey, "did make, use, 
 exercise, and vend the said invention," and " did put in practice 
 the said invention," and " did make, use, and put in practice a 
 part of the said invention," and " did counterfeit, imitate, and 
 resemble the said invention," and " did make, and cause to be 
 made, divers additions to the said invention, and subtractions 
 from the same, whereby to pretend themselves the inventors or 
 devisors of such invention." 
 
 Pleas : First, A traverse of the grant by the patent to the 
 said John Day, as alleged. 
 
 Secondly, not guilty. 
 
 Thirdly, that John Day was not the true and first inventor, 
 as alleged. 
 
 Fourthly, that the invention was not an invention of any 
 manner of new manufacture, as alleged. 
 
 Fifthly, that at the time of making the letters patent the 
 invention was not new. — Verification. 
 
 Sixthly, a traverse of the assignment by John Day to the 
 plaintiff and Thomas Willey, as alleged. 
 
 Seventhly, that the said John Day did not particularly 
 describe and ascertain the nature of the said invention, and in 
 what manner the same was to be, and might be performed by 
 an instrument in writing under his hand and seal, as alleged. 
 
 Eighthly, that the said John Day did not cause the said 
 instrument in writing to be enrolled, as alleged. 
 
 Ninthly, that the said supposed causes of action did not, nor 
 did any or either of them, accrue within six years next before 
 the commencement of this suit, in manner and from as the 
 plaintiff has above complained. — Verification. 
 
 Eeplication : Taking issue on the first, second, third, fourth, 
 sixth, seventh, and eighth pleas; and to the fifth plea, replying 
 that the invention was new at the time of the making the said 
 letters patent ; and to the last plea that the cause of action 
 did accrue within six years next before the commencement of 
 this suit. 
 
 Kejoinder : Taking issue on the replication to the fifth and 
 ninth pleas. 
 
 Knowles Q. C. and Mellish appeared for the plaintiff. 
 
 Atherton Q. C. and Hindmarch for the defendants. 
 
 Mellish opened the pleadings, after which 
 
 Knowles stated the case, on behalf of the plaintiff as follows : 
 — There is a peculiarity in the present case. In general when 
 a man brings an action for an infringement of a patent, he is 
 
 Queen's 
 Bench. 
 
 A.D. 1853. 
 
 Pleas. 
 l&thJuneWfi2. 
 
 Replication. 
 lSthJunelS52. 
 
 Rejoinder. 
 2nd July IS.'ja. 
 
 Plaintiff's 
 Case. 
 
190 DAY'S PATENT. 
 
 ae'ptit^iff: ^^^^^'^S to establish the validity of the patent, and does not care 
 so much about the amount of the damages. In this case, 
 however, the action has been brought for substantial and large 
 damages. The patent has expired ; the defendants. The London 
 and North "Western Railway Company, have for several years 
 been daily infringing that patent ; and the plaintiff now calls 
 upon you therefore to give full and ample damages for a very 
 serious infringement, because, during all the time to which the 
 plaintiff's evidence will be dkected, the London and North 
 Western Eailway Company were well aware thfit they were 
 infringing this patent. 
 
 I have very little to state to you about the patent itself. 
 The subject of it is a railway wheel ; and, because of its prin- 
 ciple, it is of the greatest importance. Wheels have been 
 made of cast iron for a long time before the date of this patent ; 
 but it occurred to Mr. Day, the patentee, who had considerable 
 knowledge of the working of iron, that when strong wheels were 
 required for railways, especially for express trains, which require 
 great speed, that by making the entire wheel, not of cast iron 
 as heretofore, but of wrought or malleable iron, forming the 
 different parts separately, and then welding them together 
 into one mass, he might thereby make a wheel perfectly new 
 in principle (for nothing of the kind had ever been done 
 before), adequate to sustain the greatest weight and to bear 
 the greatest possible amount of speed. He therefore took 
 out this patent. The invention is described thus. . [The 
 learned Counsel here read portions of Day's specification. (a)] 
 The patentee found that it answered well ; but, as he was a 
 poor man, he could not force it into use. He got extensive 
 orders, but had not the means of fulfilling them ; and accordingly 
 some time after the patent was obtained, he, in the year 1845, 
 assigned his interest in it for a small sum (I believe 250Z.) to 
 Messrs. Smith and Willey, who immediately took measures to 
 make the patent known. They had plans engraved and a 
 description lithographed and sent round to the different railway 
 companies ; and I will satisfy you by evidence that from that 
 time the defendants, the London and North Western Railway 
 Company, have used scarcely any other description of wheel ; 
 they have had these wheels introduced into all their carriages, 
 and therefore when I tell you that I shall ask for large damages, 
 you will not be surprised. I will now show you how the 
 patentee makes his wheel, because it is to be urged that the 
 defendants do not infringe. [The learned Counsel explained, 
 
 (a) See extracts, ante, p. 185. 
 
SMITH V. THE LONDON AND N. WESTERN RAU.WAY CO. 19I 
 
 by means of a model, how the parts or "sectors" were made and Queen's 
 
 afterwards put together so as to form a wheel.] Experience Bench. 
 
 has shown that this is the only sort of wheel that will suit for a.d. 185.3. 
 
 engines and carriages, as they run at the present day; and 
 
 a greater proof than this cannot be afforded that the defendants, 
 
 the London and North Western Kailway Company, have 
 
 adopted those wheels as quite adequate for their work. That 
 
 Company is much larger than any other, and have occasion for 
 
 a greater number of wheels. They of course had these plans 
 
 sent to them by Messrs. Smith and Willey, who, having a 
 
 good deal of custom from the company, did not proceed at first, 
 
 as they ought to have done, to enforce payment ; but they let 
 
 Mr. Day on their account make application in his own name, 
 
 he being the patentee ; and I will now call your attention 
 
 to the correspondence which passed between Mr. Day and the 
 
 defendants, and which will satisfy you of this, that they have 
 
 infringed. They talked of compensation and were willing to 
 
 give lOOOZ. ; and though that sum was extremely inadequate, 
 
 the plaintiff was willing to accept of it ; and then they broke 
 
 off the negotiation, alleging some objection to the patent. The 
 
 letters must be read, and therefore I may as well read them 
 
 now. [The learned Counsel here read from the correspondence, 
 
 beginning in 1845 and ending August, 1847. (a)] You observe 
 
 from this correspondence that the directors of the company 
 
 never denied that they were using the patented wheel, and 
 
 at one time were inclined to settle the question, but ultimately 
 
 they broke it off, on account of some objection they have 
 
 discovered to the specification ; and it is to try that objection 
 
 that we have come here to day. Now I will show you what 
 
 it is that the defendants do. They make a spoke at once, 
 
 whereas the patentee makes it of two pieces. The principle 
 
 of the patentee's invention is this : his wheel is made of sectors, 
 
 and is made entirely of wrought iron ; and if the defendants 
 
 do that, directly or colourably, imitating our wheel, that is an 
 
 infringement ; and I believe, when you hear the evidence upon 
 
 this point, and look into the matter, you will have no doubt 
 
 but that it is an infringement. Now as to the damages : the 
 
 patent expired in 1849; the defendants have pleaded the Statute 
 
 of Limitations ; so that we are precluded going further back 
 
 than six years from the issuing of our writ. Now from that 
 
 time (1846) up to 1849, when the patent expired, I can show, 
 
 by their own admissions, that they made 560 wheels ; and 
 
 besides that, they have been using all the time the wheels made 
 
 (a) See the " summing up " of the learned Judge, post, p. 202. 
 
192 
 
 DAY'S PATENT. 
 
 Knowlesfor 
 the Plaintiff. 
 
 riainliff's 
 Evidence. 
 
 before that date ; and we shall be entitled to payment upon each 
 of these. Now, if you gave us strict justice, we should have 
 a very large sum. The royalty upon an article like this is 
 seldom less than lOZ. A much larger sum is frequently put 
 upon each ; so that, were I to fix my damages at the usual 
 amount, it would make a considerably larger sum than that 
 asked by Mr, Day in 1845, between 1000/. and 2000Z., which 
 the defendants seemed at one time willing to give ; and since 
 that time, they have gone on using the patent. Upon every 
 one of these wheels, I shall prove to you that we are entitled to 
 a liberal royalty. I think the amount asked by Mr. Day 
 in 1845 would come to about 31. per wheel; which, upon 560, 
 would give me about 1700Z.; besides which I am entitled to the 
 same amount upon every set of wheels they have used during 
 that time which were manufactured before. It will be for you 
 to say to what amount of damages the plaintiff is entitled. 
 The first great question will be whether he is entitled at all 
 or not; but upon that, when you have heard the case, I am sure 
 you will not have the least doubt or hesitation. 
 
 The patent, dated 14th August, 1835, the specification, 
 enrolled 11th February, 1836, and the deed of assignment from 
 Day, the patentee, to Messrs. Smith and Willey, dated 15th 
 August, 1845, were given in evidence. 
 
 Martin B. Is there any point upon the assignment ? 
 Hindmarch. There is, with respect to the plaintiff's right, 
 as a surviving tenant in common, to receive the whole amount 
 of damage if the patent be established. 
 
 The deed was then read, containing the usual recitals of 
 the patent and specification, and of the contract between 
 Day (the patentee), and Henry Smith (the plaintiff), and 
 Thomas Willey (deceased), for the sale to them of the letters 
 patent for 250Z. The deed then contained an assignment by 
 John Day to Henry Smith and Thomas Willey, their executors, 
 administrators, and assigns, of the patent and privileges thereby 
 granted : to have, hold, &c. " unto and by the said Henry 
 " Smith and Thomas Willey, their executors, administrators, 
 " and assigns, as tenants in common, and not as joint tenants," 
 for all the residue of the said term of fourteen years 
 unexpired. 
 
 Witnesses were called on behalf of the plaintiff, who 
 proved that the defendants had made and used wheels having 
 their bosses or naves constructed by combining several 
 " sectors " made of malleable or wrought iron, which, when 
 brought together, formed a circular boss or nave of a wheel, 
 and which were made solid by welding them together. 
 
SmTH V. THE LONDON AND N. WESTERN RAILWAY CO. 193 
 
 Mr. Day, the patentee, was also called, and, after giving an Queen's 
 account of the invention, stated that before he took out the ^'"^° ' 
 
 patent, he searched every record to ascertain if such a wheel a. d. isss. 
 had been made before, and he could not find any having a 
 malleable iron boss. That, having seen some wheels at the 
 Liverpool station with wrought iron bosses made of sectors 
 welded together, he went to the defendants' workshop at Crewe, 
 and saw them there making similar wheels. That he found 
 that the bosses of the wheels were made of sectors, or segments 
 welded together into a solid mass. 
 
 On cross-examination the witness stated that, before the date 
 of his patent, he had known of wheels having wrought iron 
 arms or spokes, but the naves were of cast iron. Wheels 
 having spokes of malleable iron and naves of cast iron were 
 very common before the date of this patent. In Losh's patent 
 of 1830 the rim and spokes were welded together, but the boss 
 or nave was of cast iron. 
 
 Martin B. What do you consider this patent to be for ? 
 
 Knowles. I contend that the patent includes every wheel 
 made entirely of wrought iron, the parts of which, called sectors, 
 are welded together at the centre, so as to make a solid boss. 
 
 Martin B. You contend that, after the date of this patent, 
 there having been wheels made of malleable iron and spokes of 
 malleable iron, and centres of cast iron, no one can make a 
 boss of a wheel of sectors of wrought iron. Do you claim to 
 make all wheels of which the boss is made of malleable iron ? 
 Would doing that be an infringement ? 
 
 Knowles. I should say that all wheels of which the bosses 
 are made of malleable iron infringe this patent. 
 
 Martin B. Suppose that there never had been a wheel 
 made with a particularly good sort of wood for the nave, if a 
 man brought teak from India, would the use of that wood for 
 such a purpose be the subject of a patent ? 
 
 Knowles. I should go to that extent certainly, if it were 
 necessary to do so ; but the mode in which we put our wheel 
 together with a wrought iron boss is very different from a 
 mere use of a piece of wood, because it requires a manufac- 
 turing in order to produce it. The principle of this patent is 
 to make the boss by welding together the sectors upon the ends 
 of the spokes, which was never done by any body before. 
 Previous to this patent, the boss was always made distinct 
 from the spokes ; but Mr. Day first makes a sector (which is a 
 segment of the intended boss) upon the end of each spoke, and 
 then welds all the sectors together ; and this is a new mode of 
 manufacturing a wheel, which secures the spokes and boss 
 
 o 
 
194 DAY'S PATENT. 
 
 Plaintiff's together. "With the cast iron boss, into which wrought iron 
 VI ence. fpokes were riveted, the spokes were constantly coming out. 
 
 The patentee's mode of forming a malleable iron sector upon the 
 end of each of the arms, which are also made of malleable iron, 
 and then welding the sectors together into a boss in the centre, 
 obviates that difficulty. 
 
 Atherton. We have made a boss or nave of malleable iron, 
 but made the other parts of the wheel in a manner different 
 from that described in the specification, and when that fact is 
 proved the question of infringement will depend very much 
 on the construction of the specification. 
 
 Cross-examination of Mr. Day (the patentee) resumed. The 
 bosses of the wheels made at the defendants' works at Crewe 
 consisted of a series of sectors combined together, but they 
 may have been welded in a different manner from that de- 
 scribed in the specification. The spokes of the wheel were 
 made solid, and were not bent at their outer ends so as to join 
 and form the rim or periphery of the wheel, as described in 
 my specification. Instead of bending the spokes to form the 
 rim, the rim was made of a separate piece of metal, in which 
 were hollow spaces, and into which hollow spaces the outer 
 ends of the spokes were welded. The parts of the wheel were 
 put together when cold, with the sectors in a proper position in 
 the centre to form the boss, and then bound together so as to 
 keep them in their proper position by a hoop ; after which the 
 sectors in the centre were brought to a welding heat, an 
 heated iron plate or washer was then applied to each side of 
 the centre of the wheel, and the whole welded together so as 
 to form the boss. There are in the rim of the wheel described 
 in the specification what are termed scarf joints, which require 
 to be welded, and which are welded simultaneously with the 
 welding on of the outer rim. There were no scarf joints in the 
 rim of the wheels made at Crewe. In my wheel I weld on the 
 rim and the outer tire in portions, and not all at once. At 
 Crewe the outer rim or tire was put on in one piece, on which 
 the flange had been previously turned or rolled. In the rim of 
 my wheel there are three layers, first an inner rim or hoop 
 formed of the bent ends of the spokes, then an iron rim or 
 hoop upon that, and then the outer rim or tire. The. wheels 
 made at Crewe had but one inner rim, and then the outer rim 
 or tire was placed upon that. I have known of very small 
 wheels for wheelbarrows having been made of wrought iron, 
 and every part of them made of wrought iron, but in a different 
 manner from that described in the specification. 
 
 On re-examination. Before my patent, wheels were made of 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 195 
 
 wrought iron, as to the spoke and rim, but the centre was of queen's 
 cast iron. I never knew of a wheel for the purpose of being Bknch^ 
 used for carriages having the centre boss made of wrought a.d. 1853. 
 iron previous to my invention. The defendants' wheels have 
 bosses of wrought iron, welded to wrought iron spokes, sub- 
 stantially the same as described in my specification. 
 
 Mr. Edward Finch, a civil engineer and iron-founder, and 
 partner in the firm of Smith and Willey. Before the date of 
 Day's patent had not known any carriage wheels the bosses of 
 which were composed of wrought iron welded together. 
 Had known wheels having the spokes and rims of wrought iron, 
 but the bosses were of cast iron, which was a disadvantage. 
 Never had seen a wheel the boss of which was made by weld- 
 ing together sectors formed at the ends of the spokes, which 
 was a new invention, and very useful, as the strength of a wheel 
 so made is very much increased. Witness went to Crewe, and 
 saw the mode in which the defendants' wheels were made. The 
 sectors formed at the ends of the spokes were joined together to 
 make the boss ; the plates or washers were then put on, and the 
 whole heated and welded together into one mass. 
 
 On cross-examination the witness stated: That, about 
 twenty-three years ago, an experimental wheel had been made 
 having a wrought iron boss, into which the arms or spokes of 
 the wheel were dovetailed, and then riveted, but there was no 
 welding together of the spokes and boss. At Crewe, the sectors 
 were brought together in a cold state, and then heated, and the 
 welding was brought about by the forcible application of the 
 heated plates, called washers, to each side of the boss, and the 
 welding was a welding of the upper and lower surfaces of the 
 sectors to the washers, and more or less such a welding of the 
 surfaces of the sectors to each* other as might result from the 
 heating and hammering, but there was not the direct welding 
 together of the sectors at the ends of the spokes which takes 
 place according to the specification. 
 
 Mr. Henry B. Barlow, an engineer, author of a pamphlet con- 
 taining descriptions of all the iron wheels which have been made, 
 and who, for the purpose of his publication, had made himself 
 acquainted with all the wheels which had been known to the 
 public. Before Day's patent there was no wheel with a 
 wrought iron centre or nave formed by welding, and having the 
 arms welded to the nave. In Peyton's patent the boss is a 
 solid lump of wrought iron. Did not know of any wheel having a 
 boss made of sectors welded together except Day's. There is 
 no substantial difference between the wheel as made by the 
 
 o 2 
 
196 DAY'S PATENT. 
 
 Plaintiff's defendants and that described in the specification. The intro- 
 
 Mvidence. j x- p ,i i 
 
 auction ot the steam hammer, since Mr. Day's patent was 
 obtained, has facilitated the forging very much. 
 
 On cross-examination. According to the specification, the 
 wedge or sector ends of the spokes must be brought together at 
 a welding heat ; to carry which into effect, a workman would 
 be required for each spoke. It would be difficult without plates 
 or washers to keep the sectors in the proper position. Such 
 plates, though not mentioned in the specification, were well 
 known at the time of this patent. The specification does not 
 mention a band put round the wheel to keep the spokes to- 
 gether until the welding was completed. 
 This closed the plaintiff's case. 
 Objection to Atherton. I have now to submit, that, according to the 
 
 C'as"'''^^ proper construction of this specification, and taking the case as it 
 now stands, the defendants are entitled to a verdict. There is no 
 dispute as to the facts between us ; the plaintiff's specification 
 speaks for itself, and the model produced (of the plaintiff's 
 wheel) is no doubt in accordance with the specification. The 
 witnesses, for the purpose of proving the infringement, have 
 proved that wheels were made by the defendants at Crewe 
 according to the second model, (a) Now, in the first place, it 
 is submitted that if the specification be properly construed, the 
 patent is for a wheel made in the manner described, and if that 
 be the proper construction, then, that there were such diver- 
 sities between the wheel as described in the specification 
 and that proved as having been made and used by the defendants 
 as to prevent the Company's wheels being an infringement of 
 the plaintiff's patent. Now the basis of that objection or 
 argument is the construction of the specification, which I submit, 
 in the plainest possible term*, claims as the invention the 
 wheels made in the particular manner described. The title of 
 the patent is for," An improved Wheel for Carriages of different 
 Descriptions." In the specification we have a description in 
 detail of the mode of making the wheel, and then follows a 
 claim of invention in these words : " Having now described my 
 " said improved wheel for carriages of different descriptions, I 
 " do hereby declare that the new invention, whereof the 
 " exclusive use is granted to me, consists in the circumstance of 
 " the centre boss or nave, arms, and rim of the said wheel, being 
 " wholly composed of wrought or malleable iron, welded into 
 " one solid mass, in manner hereinbefore described." There 
 then follows a sort of disclaimer, which does not appear to 
 
 (a) See evidence given by Mr. Day, on cross-examination, ante, p. 194. 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 197 
 
 throw any light upon the subject. If the patent is for a wheel Queen's 
 
 made of a particular metal, viz., wrought iron, resulting from J, 
 
 the various parts of the wheel being welded together, but the -i- 1>- isss- 
 welding performed in a particular manner, then, although the 
 defendants have made and used a wheel of wrought iron 
 wherein all the parts are ultimately welded together into a solid 
 mass, yet the plaintiff's evidence shows that the result is brought 
 about in a manner different from that described in the specifica- 
 tion. The plaintiff makes each spoke of two pieces, and bends it 
 over at the outer end ; the defendants make it of one piece : the 
 defendants make the rim of a separate piece, and have junctions 
 at various parts of the rim, not by scarf joints, but in the manner 
 shown in the model. The defendants have the advantage of 
 making the rim of such thickness as they think proper in the 
 first instance, but the plaintiff, instead of that, interposes a rim 
 of Iron between the bent ends of the spokes and the tire. In 
 that, as well as in the bringing together the sectors at the ends 
 of the spokes, I contend that there is a very material dif- 
 ference, that is to say, instead of the manner suggested by the 
 specification of putting together the sectors whilst at a welding 
 heat, the defendants put the wedge or sector ends of the spokes 
 together cold, and then apply heat, welding them together after- 
 wards by the application on each side of a heated washer. There- 
 fore, on the plainest evidence, if this be the correct construction of 
 the specification, I submit that the defendants are entitled to a 
 verdict upon the plea of not guilty. It is contended for the 
 plaintiff, that the specification is such as to entitle him to say that 
 this is a patent not only for the entire wheel constructed in the 
 manner described, but also for a wheel every part of which is 
 made of wrought iron ; and the plaintiff therefore must be driven 
 to argue that he has a patent for a boss or nave of wrought iron 
 the parts of which are welded together by heat, and then it is 
 submitted that that is not in the nature of a new manufacture, 
 or, properly speaking, the subject of a patent upon the evidence 
 as it now stands. 
 
 Hindmarch. There are two aspects in which this specifi- 
 cation is to be considered. Does the plaintiff claim the making 
 of a wheel solely of wrought iron, irrespective of the mode 
 in which that object is effected ? That is the first question ; 
 and, in looking at the specification, I submit that the patentee 
 did not intend to make such a claim, as the learned Counsel 
 for the plaintiff said, in answer to a question from your Lord- 
 ship, that he would go to the extent of claiming wheels made 
 altogether of wrought iron, whatever mode of making them might 
 
 3 
 
198 DAY'S PATENT. 
 
 Objection to be adopted. Now if that be the construction of the specifi- 
 Case. ' cation, I apprehend one of the issues upon the record, which 
 is for your Lordship to determine and not for the jury, must 
 be found for the defendants, because the claim is merely for a 
 new or peculiar use of an old material, wrought iron, applied 
 in an old and well known mode, namely, that of welding, 
 for the purpose of making a carriage wheel. The claim in 
 this specification is, therefore, for the application of wrought 
 iron simply by the ordinary and well known method of weld- 
 ing. The definition of the invention, in the specification at 
 the commencement of the description, is in these words : " The 
 " improved wheel is manufactured wholly of bar iron, by weld- 
 " ing wrought iron bars together into the form of a wheel 
 " whereof the nave, spokes, and rim^ when finished, will consist 
 " of one solid piece of malleable iron." The object, therefore, 
 is to produce a wheel which is entirely of wrought iron, made 
 of one solid piece. Then, having stated what is the nature 
 of the invention (and your Lordship bears in mind that the 
 object of a specification is two-fold, first, to describe and 
 ascertain the nature of the invention, and secondly, to de- 
 scribe the manner in which it is to be performed), he says, 
 " The mode whereby, &c., is as follows," and then comes, in 
 detail, a description of the modus operandi. The specification 
 then concludes with this claim. " Having now described my said 
 " improved wheel for carriages of different descriptions, I, the 
 *' said John Day, do hereby declare that the new invention con - 
 " sists in the circumstance of the centre boss or nave, arms, and 
 " rim of the said wheel being wholly composed of wrought 
 " or malleable iron ; " this circumstance of the boss, &c. being 
 composed of wrought iron is, therefore, put forward as being 
 the essence of the invention. If that be so, I submit that the 
 patentee claims merely a particular use of an old thing, which, 
 according to all the authorities, cannot be the subject of a 
 patent. In the case of Losh v. Hague (a), tried before Lord 
 Abinger C. B., the patent was for a wheel of almost the same 
 description as this ; the only difference was that it had a cast 
 iron boss instead of one made of wrought iron. In that case. 
 Lord Abinger C. B. lays down the law with respect to a mere 
 new application as follows : " You cannot have a patent for 
 "applying a well-known thing which might be applied to 
 " 50,000 diflferent purposes, for applying it to an operation which 
 " is exactly analogous to what was done before." Iron has 
 been applied in making wheels over and over again; it is 
 
 {a) 1 Webs. Pat. Ca. 202. 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 199 
 
 a well known material, and the process of welding is a well Queen's 
 1 Bench. 
 known process. . . 
 
 Martin B. My opinion is that the claim is for the manner a. t>. 1853. 
 of making the wheel described. Now, how is the wheel made ? 
 As far as I can see, it was entirely new to make the hoss or 
 nave of the wheel of sectors, and, if that be so, the wheel is 
 made by the patentee in a new manner by welding these 
 sectors together. Now, why should not the patentee be pro- 
 tected in doing that ? 
 
 Hindmarch. If the specification is to be construed as 
 claiming the particular manner of making the wheel, then 
 comes the question, Is the manner or mode of making the boss 
 also claimed, and does the invention patented consist of the 
 entirety, or does it also include the parts ? 
 
 Martin B. He claims the entirety — the entire wheel, and 
 he tells you how that wheel is made: and it is quite clear 
 that if he has invented a new mode of making an improved part, 
 and described it, as I am at present advised, I don't think you 
 have any right to imitate that part. Now, as to the construction 
 of the specification, my view of it is that the patent is not for 
 a boss or nave of wrought iron, but for making a wheel in the 
 particular manner described, 
 
 Hindmarch. But still there arises this question. In the 
 specification of the invention there is described the making of 
 the rim, the making of the boss, and also the mode of putting 
 on the tire. Now, is each and every of these a part of the 
 invention patented ? 
 
 Martin B. I think it includes each and every of these parts, 
 which is an important part of the invention or is an improve- 
 ment and new. 
 
 Hindmarch. I submit that the construction of the specifi- 
 cation must be determined irrespective of extrinsic facts. In 
 the case of Barber v. Grace (a) the patent was for a mode of 
 finishing goods by means of heated surfaces ; the specification 
 described them as boxes, plates, or surfaces, heated by means 
 of hot water or steam. The defendant did the same thing in 
 every way, except this, that instead of boxes or plates, he used 
 rollers, whose surfaces were heated by hot water or steam, 
 precisely in the same way as the specification described, and 
 the goods to be finished were passed between these rollers. 
 The question was, was the defendant's mode of finishing goods 
 an infringement of the patent ? and the Court held that it was 
 not. 
 
 (a) 1 Exob. Rep. 339. 
 o 4 
 
200 
 
 DAY'S PATENT. 
 
 Objection to 
 
 Plaintiff's 
 
 Case. 
 
 Athertonfor 
 the Defendants. 
 
 Martin B. The Court said it was a question for the jury, 
 I think the patent here is for making the wheel in the manner 
 described : that of course involves a number of parts ; and it 
 strikes me that if there be an important part, which is a new 
 invention by the patentee, he has a right to be protected in the 
 use of it ; and if the defendants have substantially imitated 
 that part, they are guilty of an infringement of the patent. I 
 shall, however, give the defendants leave to move in every way 
 they please. 
 
 Atherton, That will be leave to enter a verdict for the 
 defendants, supposing the Court should be of opinion that there 
 is no evidence to go to the jury of an infringement. 
 
 Martin B. Supposing the Court should be of opinion that 
 there is no evidence to go to the jury upon any material issue. 
 
 Atkei'ton then addressed the jury, urging that the amount of 
 the damages should not be very considerable, inasmuch as 
 Messrs. Smith and Willey purchased the patent from the 
 patentee, when but ten years of the patent had expired, for 
 250?. After which the learned Judge summed up as follows: — 
 
 Martin B. to 
 Uie Jury, 
 
 Martin B. Gentlemen of the jury, the plaintiff, Mr. Smith, 
 seeks to recover from the London and North Western Railway 
 Company, damages for the infringement of a patent ; and, if I 
 am of opinion that there is evidence to go to a jury upon the 
 various issues joined upon this record, you must find a verdict 
 for the plaintiff, for the amount of damages which you think 
 he is entitled to receive under the peculiar circumstances of the 
 case. Now, gentlemen, it seems that Mr. Day in 1835 got a 
 patent ; and a man who takes out a patent is bound to specify, 
 within a certain time after the patent is taken out, what the 
 nature of the article is for which he has obtained his patent, 
 and the manner in which the invention is to be performed. He 
 must specify what the article is for which the patent is taken 
 out, that the public may know what it is, and he must describe 
 the manner in which it is to be performed, in order that he may, 
 for the limited period of fourteen years, be entitled to the exclusive 
 right to use the invention, and after the expiration of that ex- 
 clusive right the public may know how to do the same thing. 
 It is ths duty of the Judge who tries causes of this description 
 to construe the specification, and to tell the jury what is the 
 article for which the patent is taken out. It is the duty of the 
 Judge also to state what is the meaning of the written docu- 
 ment, when it is comprised within a single document; and, 
 therefore, it will be my duty to tell you what the article is for 
 which this gentleman has taken out a patent. Now, in my opinion. 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 201 
 
 the article for which this patent has been taken out, is a wheel Queen's 
 
 made in the manner described in Mr. Day's specification, and ' 
 
 that he has therefore got (upon the admitted facts of the case, a. d. 1853. 
 if I am right in that view) a patent for a wheel made in this 
 peculiar manner ; and I am further of opinion that the effect of 
 getting a patent for any new manufacture' of this kind is, that 
 no person, during the currency of that patent, can take an im- ^ „g^ ^^^ ^^_ 
 portant part of the new matter invented by the patentee, and portant part of 
 apply that important part for the making of a similar article : of tion cannot be 
 course, whatever is old maybe taken and used: every one is taken and used 
 
 • 1 1 11111 1 If for the making 
 
 entitled to make a wheel, wheels have been made for ages, and of a similar 
 every one may take and use wheels as he thinks fit; but it seems feaw frr'^^'th*^ 
 to me if there be an important part in the manufacture of a patentee, 
 wheel newly discovered by a person who takes out a patent for 
 it, the patent protects him in the use of that important part 
 during the fourteen years for which the Crown gives him the ex- 
 clusive right to use it : and what particularly struck me in this 
 case is (as far as I can judge from the evidence), that the form 
 of the sectors and putting them together in the manner described 
 in the specification, is new : however, that will be one of the 
 questions which will be for you to decide, so that, gentlemen, I 
 have to ask you to say, whether or not, in your opinion, the mode 
 in which the defendants put their sectors together was not (al- 
 though in all probability a considerable improvement) substan- 
 tially the same as that described in Mr. Day's specification, and 
 an improvement upon the suggestion originally given in his 
 patent. I don't think there is any doubt as to that conclusion. 
 That is the mode in which I view the case upon this point. 
 The question now arises as to the amount of damages, and 
 this is certainly a very peculiar case. Mr. Day was the 
 original patentee of this invention ; and no doubt juries are 
 desirous, when an original patentee comes before them, to 
 endeavour, as far as they can, to give him some reward for 
 the trouble, skill, and ingenuity he has displayed in his in- 
 vention ; but so far as the original patentee, Mr. Day, is 
 concerned, he sold his interest for 2501. to Messrs. Smith and 
 Willey. It seems that Mr. Finch, who survived them, was 
 unable to pay his creditors, and this action is brought by the 
 creditors, and, therefore, you have not in this case to reward 
 the ingenuity of the patentee ; but this is a matter of business, 
 and you must look at the patent as a matter of property. Now 
 it seems that 560 wheels have been made, which would be 112 
 sets of wheels, and, according to the evidence given, 300?. 
 would be about the cost of each set : now that rate would make 
 the value of these wheels about 33,600/., and if we give 10 per 
 
202 DAY'S PATENT. 
 
 Martin B. to cent., it would be 3360/,, and 15 per cent., 5040Z. — a rather 
 large sum. I must say that that would not be exactly the way 
 to look at this matter, because it is perfectly clear the Company 
 have all along gone on using this description of wheel, believing 
 that they had a perfect right so to do, openly exhibiting the 
 manner in which they manufactured the wheels. There was no 
 concealment ; and they seem throughout to have gone on in the 
 belief that what they were doing was lawful and correct ; and I 
 do think that if, while the defendants were openly manufacturing 
 and using the invention, believing that they had a right so to 
 do, Messrs. Smith and Willey, the real owners, all this time 
 knowing what the defendants were doing, and not taking steps 
 to secure to themselves the collateral advantage, it would be a 
 hard measure of justice now to treat the defendants as if 
 they had purchased at the ordinary price. I do think that 
 that would not be a just method of looking at this case with 
 respect to people using these wheels as the defendants have. 
 Then there is the letter of the 6th August, 1847 ; and this 
 gives us the view which Mr. Day himself took of his rights. 
 He writes : " In accordance with our conversation this morning, 
 I hereby propose to receive 1250/. as a compensation for the 
 use and manufacture of my patent solid wrought iron wheels, 
 which sum comprises the past and future manufacture for the 
 full term of the patent right, the above stated sum of 1250/. to 
 be paid, one half, 625/., immediately, and the other half, or 625/., 
 to be paid immediately upon a recognition of the patent by any 
 one of the Railway Companies now using the said patent wheels. 
 This offer shall be without prejudice to any legal proceedings, 
 &c." Now that was written August 6th, 1S47, and no legal 
 proceedings were taken until the 29th May, 1352. Therefore, 
 for five years the defendants have gone on using them, and I 
 think it is not unnatural that they should deem that they had a 
 right to use them, as their own manufacture of them was in all 
 probability a very considerable improvement upon the patented 
 article itself, and I really don't see how I can assist you more 
 upon the question of damages, which sum you should determine 
 upon ; you have got the view, a very extreme view, at the rate 
 of 10 or 15 per cent, upon the value. The question of damages 
 is for you, and if you choose to take that you are perfectly at 
 liberty to do so: my impression is that it is not the correct 
 view. You have also got the view of Mr. Day himself on the 
 6th August, 1847, which was declined by the Company. 
 Gentlemen, I really don't myself see how I can assist you 
 further in the matter, I think you ought not to treat it as a 
 matter of feeling, but as a matter of business, and state what 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 
 
 amount you think a proper compensation to be paid in this case 
 for the use of 112 sets of wheels by the Company, and you must 
 not treat them as a Company but as individuals. Just consider 
 among yourselves what the amount of damages should be. 
 
 Verdict for the plaintiff, damages 1250/. 
 
 Atherton. There is this point on the iquestion of the amount 
 of damages, upon which I wish to have leave to move in the 
 Court above, that the plaintiff is the surviving tenant in 
 common; the other tenant in common is dead, and the infringe- 
 ment occurred before his death, and therefore the plaintiff is 
 entitled to half the damages only. 
 
 Maktin B. I shall reserve leave for you to move upon that 
 point, as well as to enter a verdict for the defendants upon the 
 question of infringement. 
 
 203 
 
 Queen's 
 Bench. 
 
 A. D. 1853. 
 
 Queen's Bench. 
 
 Cor., Lord Camphell C. J., Wightman J., Erie J., and fgsl^^'" 
 Crompton J. 
 
 Easter Term, 1853. 
 
 Motion for 
 Rule. 
 
 Atherton in pursuance of the leave reserved at the trial, now Wlen a 
 moved for a rule to enter the verdict for the defendants, on the mention con'- 
 second, fourth, and fifth issues, and to reduce the damages by sists of a new 
 one half ; he also moved for a new trial, on the ground that the making a 
 damages were excessive. piece of me- 
 
 This was an action brought by the plaintiff Henry Smith, the use or imita- 
 
 survivor of the firm of Smith and Willey, for an infringement ^^°'°- °f ^^^ 
 
 1 • .fif. o • 1 1 TTTMi material part 
 
 of letters patent, or which the plaintiir bmith, and Willey, in the making 
 
 now deceased, in his lifetime, were the assignees. The patent oj' * similar^ 
 
 expired in August, 1849, and the action was not brought until chanismis an 
 
 the month of May, 1852. [The learned Counsel then pro- tf^^^p", 
 
 although all 
 the other parts are performed in a different manner. 
 
 The patentee of an improved wheel, in his specification, stated that his invention consisted " in 
 the circumstance of the centre boss or nave arms and rim being wholly composed of wrought iron, 
 welded into one solid mass, in manner hereinbefore described." The defendants made wheels, the 
 centre bosses of which were formed of wrought iron welded together into a solid mass, in a mode 
 which the jury found to be substantially the same as that of the patentee, but the modes of form- 
 ing the rims and arms were different. Held, that the imitation of the mode of forming the nave 
 was an infringement of the patent. 
 
 The patent had been assigned to the plaintiff and W- (since deceased) as tenants in common ; 
 and the infringements of the patent complained of were committed after the assignment, but 
 before the death of W. Held, that right of action in respect of these infringements survived to 
 the plaintiff, who was entitled to recover the whole amount of the damages sustained by him and 
 his late co-assignee. 
 
204 DAY'S PATENT. 
 
 Motion for ceeded to explain the nature of the invention.] [Lord Camphell 
 " *■ C. J, Is there any question about the validity of the patent, or 
 
 is it a question of infringement ?] It is a question of infringe- 
 ment, involving a question of the construction to be put upon 
 the specification. According to the proper construction to be 
 put on the specification, there would be no infringement in 
 point of law by merely doing that of which the plaintiff at the 
 trial complained as the infringement, namely, by making the 
 nave or boss of wrought iron, in the manner described by the 
 witnesses. That will depend on the construction to be put 
 on the specification. [The learned Counsel then described the 
 difference between the defendants' wheel and that claimed in the 
 plaintiff's specification, and having read portions at the beginning 
 and end of the specification (a), proceeded.] It is not contended 
 that, so far as regards the nave or bosS of the wheel, there was 
 not abundant evidence for the jury to find, under the direction 
 of the learned Judge, that there had been an infringement of 
 the plaintiff's patent, if the making of the boss only of a 
 wheel was an infringement pro tanto ; but it is submitted that 
 there was no use of the invention as regards the making of 
 the spokes or rim ; it was no infringement of the plaintiff's right 
 to copy one part only of the wheel, namely the nave or boss ; 
 for, looking to the peculiar terms of the specification, it is clear 
 that what the letters patent cover is a wheel made of wrought 
 iron in every part in the manner described in the specification. 
 [Lord Camphell C. J. " Welded into one mass, in manner 
 hereinbefore described ; " therefore it claims the modus operandi 
 as well as the object.] The object is a wheel, the material 
 wrought iron, the modus operandi such as the specification 
 describes. [Lord Campbell C. J. The object being that it is 
 to consist of one solid piece of malleable iron.] The specifi- 
 cation (if the proper construction be such as the defendants 
 contend for) limits the claim and the protection under the 
 letters patent to a wheel made wholly of wrought iron " welded 
 into one solid mass of malleable iron, in the manner hereinbefore 
 described." It was not pretended for the plaintiff, that, as re- 
 garded two of the three portions of the wheel, there was any 
 approach to an infringement ; it is submitted that the learned 
 Judge, although rightly deciding that the patent was for a 
 wheel made as described, yet misdirected the jury in telling 
 them that, such being the effect of the claim in the specification, 
 there was an infringement on the part of the defendants by 
 making the bosses or naves of their wheels as they did. Barber 
 
 (a) See extracts, ante, p. iSo. 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 205 
 
 V. Grace (a) Is a strong authority for contending that the cle- Queen's 
 fendants are entitled to a verdict on " not guilty." There the s^^^s. 
 specification of a patent for improvements in the process of E. T. 1853. 
 finishing hosiery, &c., stated the invention to consist in sub- 
 mitting the goods to the finishing process of a press heated by 
 steam, &o., in the manner thereinafter mentioned. A description 
 was then given, with a drawing, which represented a press 
 consisting of a box heated by steam, against which another 
 box similarly heated was to be pressed by means of hydraulic 
 pressure, screws, or other means. After describing the method 
 of pressing the goods, between these hot boxes, the specification 
 concluded by confining the patentee's claim to the process "as 
 above described," and the Court of Exchequer held that a 
 method of finishing hosiery and other goods by passing them 
 between heated rollers was not included in this patent, and 
 therefore there was no infringement of it. And the Court 
 arrived at that conclusion in Barber v. Grace, by putting upon 
 the specification a construction similar to that which is sought 
 to be put upon the specification in the present case, namely, 
 that the terms used by the patentee confined his right 
 to the particular manner of bringing about the result he 
 has in detail described. \_Wightman J. In Barber v. Grace 
 the passing through rollers was no part of the invention ; here 
 there is an infringement of the most important and essential 
 part of the modus operandi. Lord Campbell C. J. In this 
 specification the claim is for the whole wheel made in the manner 
 hereinbefore described. The patentee claims the wheel being 
 wholly composed of wrought or malleable iron welded into one 
 solid mass; but then he says, "welded into one solid mass in 
 the manner hereinbefore described." Crompton J. You con- 
 strue it as if the words " hereinbefore described " exclude the 
 use of any other mechanical means whatever. Erie J. The 
 way to try your question is, supposing for an ordinary carriage 
 it would auflSce to make the spoke of malleable iron and join it 
 to a wooden tire, would that be an infringement ? My learned 
 brother puts the case of there being a mechanical equivalent 
 for the patented spoke and rim, that is to say, an equivalent 
 adopted by you. Your argument a?sumes that it was a datum 
 in the learned Judge's summing up, that the spoke and rim of 
 your wheels are entirely different and no infringement, but 
 that the junction of the spoke to the nave is an infringement.] 
 It is not contended that the wheel must be in the three parts, 
 the nave, the spoke, and the rim made identically and literally 
 
 (a) 1 Exch. Rep. 3j9. 
 
206 DAY'S PATENT. 
 
 Motion for according to the specification ; but it is submitted that on a 
 proper construction of the specification in each of those parts, if 
 not identity, there must at all events be similarity. In the case 
 cited, Barber v. Grace, Parke B., in giving judgment, says : 
 " According to the true construction of this patent (which is a 
 matter entirely for the Court), I think that, reading the speci- 
 fication fairly, it is a claim for a particular machine which is 
 therein described, and not for a process which is to apply to 
 every species of surface." If it is rightly contended that in 
 tliis case the specification is for the machine consisting of those 
 three parts, made, as regards those parts, not identically, but 
 substantially in the manner specified, then it is submitted that 
 the direction of the learned Judge to the jury was wrong. 
 \_Crompton J. If you have a machine which consists of three 
 parts, and two of them perhaps are important and the third not, 
 if you disregard the less important parts, but the main thing 
 you pirate, surely that is an infringement ?] That would 
 depend on the terms which the patentee has used in his specifi- 
 cation. [^Crompton J. It might be narrowed by his saying, "I 
 claim the thing in the manner herein described," but that would 
 not exclude any mechanical equivalent that might be adopted.] 
 The patentee here takes pains to tie himself down to the mode 
 described, for he says, " My said improved wheel is made in 
 the manner following ; " and then at the end he says, " My new 
 invention consists in the circumstance of the centre boss or nave, 
 arms, and rim of the wheel, being wholly composed of wrought 
 or malleable iron welded into one solid mass, in manner herein- 
 before described.''^ Wheels had been made before of iron, and 
 some even all of wrought iron, but it appeared that the junction 
 of the spokes to the nave was by bolts, or some means not so 
 good as welding into one solid mass. \_Crompton J. Then the 
 invention here is the welding into one solid mass.] 
 
 As to the second point upon which leave was reserved, we 
 move on the second plea to reduce the damages by one-half. 
 The point arises in this way. In the year 1845 the patentee 
 assigned all his interest in this patent to the plaintifif, Mr. 
 Smith, and to a person named Thomas Willey, who Is since 
 dead, as tenants in common, and not as joint tenants. The 
 declaration, after so describing the assignment, alleges that all 
 the alleged infringements took place previously to the death of 
 Willey. Now the interest of Smith and Willey having been 
 the interest of tenants in common, and there having been an 
 infringement of the patent right during the life of Willey, the 
 question is, whether the right to all the damages consequent 
 survives to the present plaintiflf. [Lord Campbell C. J. The 
 right of action could not be split in half by the representatives 
 
SMITH V. THE LONDON AND N. WESTERN RAILWAY CO. 
 
 207 
 
 of Willey and Smith. The rule is this, that, although their Queen's 
 interest in the corpus of the property is separate, yet the cause ^^'''^°- 
 of action in respect of it is joint and survives to the survivor. J E. T. I853. 
 The property in letters patent is of a very peculiar description ; 
 and it is submitted that it by no means follows that when the 
 interest is vested in several the damage is common. Suppose 
 A. and B. to be assignees of letters patent, and suppose C. D. 
 to infringe the patent right, the loss or injury occasioned to A. 
 may be very different to that occasioned to B. [Lord Camp- 
 bell C, J. They may join.] With respect to a patent right it 
 is questionable whether they may. [Lord Campbell C. J. You 
 cannot deny that they may join. Is it more reasonable that 
 there should be separate actions by each?] In the case of 
 tenants in common of land or of incorporeal hereditaments, 
 as right of water, if trespass is committed to the land or an 
 injury to the water, although their interests are separate as 
 tenants in common, yet it is decided that they must join unless 
 the cause of action survives. [He also moved for a new trial 
 on the ground that the damages were excessive.] \_Crt)mpton J. 
 There was a case of Newton v. The Grand Junction Railway 
 Company (a), where the Court of Exchequer granted a rule in 
 the first instance.] 
 
 Lord Campbell C. J. We are all clearly of opinion that judgment 
 there is no ground for the application with respect to the alleged 
 division of the right to damages between the representatives of 
 the deceased assignee and the plaintiff, because the right of 
 action was a joint right, and if one of the assignees had not 
 died the action must really have been brought by both of the 
 two assignees, and upon the death of one of them the right 
 survived to the survivor. With respect to the other points, 
 we will consult with our brother Martin. 
 
 Cur. adv. vult. 
 
 Loed Campbell, C. J. now delivered the judgment of the 30th April, 
 Court upon the other points. ^^^^• 
 
 In the case of Smith v. the London and North Western 
 Railway Company, which was an action for the infringement of 
 a patent, and in which Mr. Atherton moved for a rule for a 
 new trial, — first, on the ground that there was no evidence of 
 infringement, and that the Judge was wrong in ruling that there 
 was suflScient evidence of infringement to go to the jury, and 
 secondly, upon the ground thj^t the damages were excessive. 
 
 The patent was for an improved wheel for carriages of dif- 
 ferent descriptions, and the patentee stated in his specification, 
 
 (a) 5 Exch. 331. ; s. c. 20 L. J. Rep. (N. S.) Exch. 427. n. 
 
208 DAY'S PATENT. 
 
 Judgment. that " the said improved wheel is manufactured wholly of bar 
 iron, by welding wrought iron bars together into the form of a 
 wheel, whereof the nave, spokes, and rim, when finished, will 
 consist of one solid piece of malleable iron ; and the mode 
 whereby the said bars of malleable iron are fashioned and 
 united into the shape of a wheel is as follows : " — the specifi- 
 cation then shows. By the aid of drawings, how the nave, spokes, 
 and rim are to be formed, and afterwards welded so as to make 
 a wheel of one piece of malleable iron. In the claim the patentee 
 stated that the new invention consisted in the circumstance of 
 the centre boss or nave, arms and rim of the wheel being 
 wholly composed of wrought or malleable iron welded into one 
 solid mass in the manner thereinbefore described. The evidence 
 showed a clear imitation and infringement of the manner of 
 forming the boss or nave into one piece of malleable iron, with 
 the rest of the wheel. But it was stated that the mode which 
 the defendants had used of forming and welding the spokes 
 and rim of the wheel did not amount to any infringement. Mr. 
 Atherton contended that the words of the claim restricted the 
 patent to the invention of a wheel made in every respect in the 
 manner aforesaid, and that, as the defendants had not used 
 the spokes, nave, and arms in the same mode with regard to the 
 spokes and rim as the patentee had specified, there could be 
 no infringement of the patent. My brother Martin who tried 
 the cause, intimated his opinion that the claim was for the in- 
 vention of a wheel as described in the claim ; but that if the de- 
 fendants had imitated or pirated the mode of welding the nave, 
 and that were a material part of the invention, that was an in- 
 fringement of a part of the patent for which this action was 
 maintainable. We are of opinion that this ruling was quite 
 right, and that there was ample evidence to support the action. 
 When a patent "When a patent is for a combination of two or three or more in- 
 TentionVon- ventions, the use of any one of them would not be an infringe- 
 sisting of ment of the patent, but where there is an invention consisting 
 
 the imitation' of Several parts, the imitation or pirating of any part of the in- 
 
 of an import- vention is an infringement of the patent. Suppose a man 
 ant part is an ° . . « , r -i • i ■ > 
 
 infringement invents . a machine consisting of three parts, ot which one is a 
 
 huUt i^^o^th'r- ^^''^ ^^^^^^ invention, and the others are found to be of less 
 wise when the practical utility ; certainly it could not be said that it was free 
 combLation of t° ^^J person to use the useful part, so long as he took care to 
 several inven- substitute some Other mode of carrying on the less useful parts 
 of the invention. "We should be sorry to throw any doubt upon 
 the question of the infringement of the material part of such an 
 invention being an infringement on which an action is main- 
 tainable by granting a rule to show cause upon that. 
 
SMITH B. THE LONDON AND N. WESTERN RAILWAY CO. 
 
 209 
 
 Upon the question of excessive damages, it was suggested 
 that the jury had proceeded only on the evidence given by the 
 party interested in the patent, that as large a royalty as fifteen 
 per cent, on the value of the wheels made by the defendants 
 ought to be paid to the patentee, and that what he would 
 be entitled to would be such an allowance, upon which the da- 
 mages should be calculated. But upon consulting my brother 
 Martin, we find that in his opinion the jury did not proceed 
 upon the above ground, and that there was evidence to support 
 the verdict in the correspondence between the parties, from which 
 it appeared that the patentee had applied to the defendants for a 
 sum of money for their use of the patent for a particular period, 
 which was proportionate to the sum the jury gave for the period 
 during which the defendants appeared at the triakto have used 
 the patent, and that the defendants did not in answer object 
 that the claim was unreasonable. The learned Judge's words are, 
 " the damages found by the jury, though large, were not in his 
 opinion excessive." Therefore we are of opinion that there 
 ought to be no rule. 
 
 Rule refused. 
 
 Queen's 
 Bench. 
 
 E. T. 1853. 
 
 In Chancery. 
 
 3rd March, 1854. 
 
 Henet Smith and Senet Willet v. The London and 
 South Western Eailway Company. 
 
 Cor., Sir William Page Wood, V. C. 
 
 3rd March, 
 1854. 
 
 Bill filed, 30ik 
 June, 1853. 
 
 The bill stated the grant of the patent, the enrolment of The right to a 
 the specification, the assignment by John Day, the patentee, to account ofthe 
 the plaintiff, Henry Smith, and Thomas Willey, since deceased, profits made in 
 
 respect of ar- 
 ticles manufac- 
 tured and used in infringement of a patent is ancillary to the right to an injunction to restrain 
 further infringements, and therefore when the Court will not interfere by injunction the right 
 to an account must also fail. 
 
 The assignees of a patent for " An improved Wheel for Carriages of different Descriptions " 
 (which had expired in 1849) having in 1845 discovered that some of the railway companies were 
 infringing their patent, after a long negotiation, took proceedings at law, in 1852, against one 
 company (see preceding case, p. 188.), hut did not give notice to any of the other companies so 
 infringing of the patent or of their intention to make a claim for infringements if continued. The 
 validity of the patent was disputed in the action, and a verdict was found establishing plaintiffs' 
 right, but not until nearly four years after the patent had expired. The plaintiffs then filed 
 their biU for an account of profits, and an injunction against another company, who had been 
 using the invention since 1845, nine years before the filing of the bill. Held: that the delay was 
 fatal to the Plaintiffs' case and was not excused by the circumstance of the pendency of the action. 
 
210 
 
 DAY'S PATENT. 
 
 Statement, the death of Thomas Willey, after having by his will appointed 
 the plaintiff Seney Willey his executrix, who duly proved the 
 same will, and thereby became the sole legal personal represen- 
 tative of the said Thomas Willey deceased, 
 
 The bill further stated that, before the expiration of the term 
 of fourteen years granted by the patent, the plaintiff Henry 
 Smith and Thomas Willey discovered that some of the railway 
 companies in England, arid in particular the Loudon and North 
 Western Railway Company, were infringing the patent; and 
 after a long negotiation and correspondence with a view to 
 compromising the matters in dispute, on the 29th of May, 
 1852, the action of Smith v. The London and North Western 
 Railway Company was commenced in the Queen's Bench, 
 which was tried at the Liverpool Spring Assizes, 1853, and 
 a verdict was found for the plaintiff for 1250/. ; and that on 
 the 20th April, 1853, the defendants in the said action moved 
 the said Court of Queen's Bench for a rule nisi to enter a 
 verdict for the said defendants on the ground that there was no 
 evidence of infringement of the patent, or for a new trial on 
 the ground of misdirection and of excessive damages, or to 
 reduce the damages one-half, by reason of the non-joinder of 
 the plaintiff Seney Willey as executrix of the said T. Willey de- 
 ceased ; but the said Court of Queen's Bench, after taking time 
 to consider, refused to grant a rule nisi on any of the before- 
 mentioned grounds, and accordingly final judgment is now 
 entered up against the said North Western Railway Company, 
 and by the said proceedings the validity of the said letters patent 
 was established. 
 
 The bill then alleged that the plaintiffs had recently discovered 
 that the defendants, the London and South Western Railway 
 Company, were infringing the said letters patent to the plaintifis' 
 great prejudice, and that they were, without the leave or license 
 of the plaintiffs, manufacturing or causing to be manufactured 
 in England, and were using for their own profit and emolument, 
 large quantities of wheels made in the manner and according 
 to the principle of the said invention, and in breach of the said 
 letters patent, and were also using large quantities of such 
 wheels manufactured by other persons, in breach of the said 
 letters patent, and that they were thereby deriving great gains 
 and profits, and that the plaintiffs thereupon applied to the 
 defendants, the London and South Western Railway Company, 
 and requested them to discontinue their said infringements and to 
 make compensation for the same ; and in ■particular in the month 
 of April, 1353, the plaintiffs, through their solicitors, wrote and 
 sent to the defendants a letter, which was, so far as is material, 
 in the words and figures following: "Liverpool, 12th of April, 
 
A.D. 1854. 
 
 SMITH V. toE LONDON AND S. WESTERN RAILWAY CO. 211 
 
 " 1853. The validity of Mr. Day's patent for a wrought iron Chancery. 
 " wheel having now been established by the verdict of a jury at 
 "the last Liverpool assizes, we are requested to apply for an 
 " account of the wheels manufactured, or used by you, prior to 
 " the expiration of the patent in August, 1849, and we will then 
 " submit to your consideration a rate of royalty which will be 
 " reasonable, and we have no doubt will be satisfactory to you. 
 " We shall feel obliged by an early answer." And on the 13th 
 of May, 1853, the plaintiffs, through their said solicitors, wrote 
 and sent to the defendants another letter, which, so far as is 
 material, was In the words and figures following : " Liverpool, 
 " 13th of May, 1853. Referring to our letters to you on the 
 " subject of infringements of Mr. Day's patent for wrought iron 
 " wheels, we are directed to state that, unless the information 
 " sought for by us be furnished before the 20th instant, it will 
 " render it necessary to commence legal proceedings, and we 
 " shall. In such event, give in evidence the applications we have 
 " made to save the expenses of a bill of discovery and account." 
 But that the defendants, the London and South Western Kail- 
 way Company, have refused and do still refuse to comply with 
 the requirements contained in the said letters ; and in particular 
 the said defendants, on the 6th June, 1853, through their agent 
 wrote and sent to the plaintiffs' said solicitors a letter, which 
 was, so far as is material, in the words and figures or to the 
 purport or effect following, that is to say : " Gentlemen, in reply 
 " to your letter of the 3rd instant, I am instructed to say that 
 " the Company have made no wrought iron wheels before 1849, 
 " nor at any time previous to the late application, but that 
 " the Company cannot conceive on what grounds you can call 
 "upon them to state what wheels they have purchased and 
 " used ; " and that the plaintiffs had hitherto been unable to 
 obtain evidence of the number or value of the wheels so made, 
 or of the wheels so used by the defendants, the London and 
 South Western Railway Company, in breach of the said letters 
 patent ; and the plaintiffs were advised that as the validity of 
 the said patent had been disputed by the London and North 
 Western Railway Company, and would come in question in the 
 aforesaid action, the plaintiffs could not, with propriety or effect, 
 institute proceedings against the London and South Western 
 Railway Company until the aforesaid action against the London 
 and North Western Railway Company had been tried and 
 disposed of, and the validity of the said letters patent established 
 at law. 
 
 The bill further alleged that the defendants had caused to be 
 manufactured, and, had used for the purpose of their said railway, 
 
 P 2 
 
212 DAY'S PATENT. 
 
 Statement. Very large quantities of wheels made on the principle of the 
 invention of the said John Day, and in breach of the said 
 letters patent ; and in particular that before the expiration of the 
 said letters patent the defendants advertised in the public 
 newspapers for tenders for wrought iron wheels made on the 
 principle of the said invention, and that tenders were made by 
 different persons in pursuance of the said advertisements, and 
 that large quantities of such wheels were ordered by the 
 defendants from many of the persons making such tenders as 
 aforesaid, and particularly that a large number of such wheels 
 were supplied to the defendants by Mr. Job Gooch and by 
 Messrs. Roth well and Co.; and the defendants have now in their 
 possession, and are in the constant habit of running on their 
 railway, several engines, and in particular an engine called the 
 " Saturn," which -was made by the said Messrs. Rothwell and 
 Co. in the year 1847, and another engine called the " Plutus," 
 which was made by the said Messrs. Rothwell and Co. in the 
 year 1848 ; and that all such several engines, and in particular 
 the said last-mentioned two engines, are constructed, and have 
 always been used with wheels made on the principle of the 
 invention of the said John Day, and in breach of the said letters 
 patent so granted to him as aforesaid. The bill concluded with 
 the following prayer : — 
 Praijer. 1. That an account may be taken, by and under the direction 
 
 of this Honorable Court, of all and every the wheels made or 
 manufactured on the principle of the aforesaid invention of the 
 said John Day, in breach of the said letters patent so granted 
 to him as aforesaid, which had been made, or caused to be 
 made, or used by the defendants, the said London and South 
 Western Railway Company, or by any other person or persons 
 by their order, or on their behalf, between the said 15th day 
 of August, 1845, and the said 15th day of August, 1849, 
 and also an account of all such of the said wheels as have been 
 sold or disposed of by, or by the order or for the use of the 
 said defendants, the London and South Western Railway Com- 
 pany, and of the gains and profits made thereby ; and also 
 an account of all the gains, profits, and emoluments made or 
 derived by the said last-named defendants from or by reason of 
 the use or employment of any such wheels as aforesaid, from 
 the 15th day of August, 1845, to the present time ; and that 
 the said defendants, the said London and South Western 
 Railway Company, may be desired to pay to the plaintiffs what 
 shall be found to be due to them on the taking of the said 
 accounts. 
 
 2. That the defendants, the said London and South Western 
 Railway Company, their servants, agents, and workmen, may 
 
SMITH V. THE LONDON AND S. WESTERN KAH.WAY CO. 213 
 
 be restrained, by the order and injunction of this Honourable Chancery. 
 Court, from using or causing to be used, and also from selling or ^"071854. 
 otherwise disposing of, any wheels made during the said term of 
 fourteen years, on the principle of the discovery of the said 
 John Day, or in breach of the said letters patent so granted to 
 him as aforesaid, or only colourably differing therefrom. 
 
 The defendants, by their answer, made the following (among ^"f '^i'" f ""'"It 
 
 , ' ./ o ^ i=i and filed, lOw 
 
 other) admissions, which were read in evidence : — October, 1853. 
 
 That the London and South Western Railway Company had 
 from time to time before the expiration of the patent term of 
 fourteen years purchased certain wheels which appear to have 
 been made on the principle of the alleged invention of the said 
 John Day : the wheels so purchased by the London and South 
 Western Railway Company, and which amount in the aggre- 
 gate to 402 wheels, have all been used, and are still in us.e by 
 the said Company. 
 
 That the plaintiffs, through their solicitors, wrote and sent to 
 said Company such letter as in said bill mentioned to bear 
 date the 12th April, 1853, and that such letter was of the 
 date and in the words and figures in said bill mentioned and set 
 forth; and that the plaintiffs, through their said solicitors, wrote 
 and sent to said Company such letter as in said bill is men- 
 tioned to bear date the 13th May, 1853, and that such 
 last -mentioned letter was of the date and in the words and 
 figures in said bill mentioned and set forth. 
 
 That the London and South Western Railway Company 
 have, ever since the year 1845, used, and that they still use, 
 without any leave or license from said John Day, or the 
 plaintiffs or said Thomas Willey, and for the profit and 
 emolument of said Company, such number as is hereinbefore 
 mentioned of wheels made in the manner or according to the 
 principle of the aforesaid alleged invention of said John Day, 
 and that the company have derived and are now deriving gains 
 and profits (but to what amount we are respectively unable to 
 set forth) from the use of such wheels. 
 
 That before the expiration of the said letters patent, the 
 London and South Western Railway Company advertised in 
 two public newspapers for tenders for wrought iron wheels, and 
 that tenders were made by different persons pursuant to such 
 advertisements, and that large quantities of wheels were ordered 
 by the Company from many of the persons making such 
 tenders, and that the wheels supplied to the Company in con- 
 sequence of such advertisements and tenders were made 
 according to the principle of the aforesaid invention ; that a con- 
 siderable number of such wheels were supplied to the Company 
 
 p 3 
 
214 
 
 DAY'S PATENT. 
 
 Statement. 
 
 Affidavits. 
 
 Plawfiffs' 
 Argument. 
 
 by Messrs. Eothwell & Co., and that the Company has now in 
 its possession, and is in the constant habit of running on its 
 railways, several engines, and in particular one engine called 
 the " Saturn," which was made by said Messrs. Rothwell & Co. in 
 1847, and another engine called the "Plutus," which was made 
 by said Messrs. Eothwell & Co. in 1848, and that such two last 
 mentioned engines were constructed and have always been used 
 with wheels made according to the aforesaid principle of said 
 John Day, but whether or not in breach of the letters patent 
 granted to him, as in the said bill alleged, the defendants 
 submitted to the judgment of the Court. 
 
 The plaintiffs filed affidavits in support of their bill, and among 
 others were four, in which the deponents stated that, by the use 
 of wrought iron wheels made upon the principle of the invention 
 of th,e said John Day, at least one ton weight and upwards can 
 be saved in the construction of a locomotive and tender, without 
 in any way impairing its power or strength ; and such saving of 
 weight can therefore be carried by the said locomotive as 
 productive weight, and the wear and tear of the permanent way 
 would be less in proportion ; and calculating the said freight at 
 one penny per ton per mile, and the engine running 20,000 
 miles a year for ten years, a clear profit would be made in 
 consequence of the use of such wrought iron wheels of 833Z. 
 6s. 8d. (such assumed quantity being at a low estimate), or, in 
 other words, the engine would carry during the ten years over 
 the distance of one mile, 200,000 tons more than it would have 
 done had it not had wrought iron wheels ; and the great advan- 
 tage of the said invention consists in the additional security 
 against accidents and in the enabling a greater speed to be 
 used, as, without solid wrought iron wheels, it would not be 
 possible to run an express train with safety. 
 
 W. M, James Q. C. and Selwyn for the plaintiffs. The chief 
 question in this case is whether or not the mere user of an 
 article made in imitation of a patent will constitute such an 
 infringement as will entitle the patentee to an injunction and 
 account ; and it is submitted that it will where such user is for 
 the purposes of trade, and as a means of securing to the person 
 infringing an increased profit in his trade. In the case of 
 Caldwell v. Van Vlissengen {a) it was decided that a user for 
 the purpose of trade was a suflScient ground for an injunction ; 
 the facts of which case were that a native of Holland had fitted 
 up a steamer abroad with propellers manufactured there by 
 foreign workmen solely, on the principle of an English patent 
 
 (a) 9 Hare, 415., p. 429.; s. c. 21 L. J. Bep. (N. S.) Chan. 97, 
 
SMITH V. THE LONDON AND S. WESTERN RAILWAY CO. 215 
 
 A.D. 1854. 
 
 invention, and this steamer being employed in trading between Cha>jcery. 
 
 Holland and this country, the Court of Chancery granted an 
 
 injunction at the suit of the owners of the patent to prevent 
 
 the use of the invention by these foreigners within the limits 
 
 of the United Kingdom, and Vice Chancellor Turner, in the 
 
 course of his judgment, distinguishes the case of Minter v. 
 
 Williams (a), which was relied upon by the defendants, saying 
 
 that in that case he found no trace of a user for the purposes of 
 
 trade being considered as innocent. An injunction will even be 
 
 granted by this Court to restrain such user after the expiration 
 
 of the patent, in respect of articles which had been manufactured 
 
 during its continuance. This was so decided in the cases 
 
 Crossley v. Beverley (V) and Crossley v. Derby Gas Light 
 
 Company (c), where an ex parte injunction was granted a few 
 
 days before the patent expired, to restrain the defendants from 
 
 selling or using, before or after the expiration of the patent, a 
 
 quantity of gas-meters which had been made according to the 
 
 plaintiff's invention during the term of the letters patent, for the 
 
 purpose of being thrown into the market on the expiration of 
 
 the patent ; and in the latter case an order was made four years 
 
 after, continuing the injunction, and ordering an account to be 
 
 taken by the Master of what profits had been received and 
 
 what benefit derived from the use of such gas-meters as were 
 
 made or manufactured during the existence of such letters patent 
 
 for six years previous to the filing the plaintiff's bill. 
 
 But the account, which was the chief object the plaintiffs 
 had in instituting this suit, may be decreed without grant- 
 ing an injunction, to which an account in such cases is not 
 necessarily incident. The principle on which an account is 
 directed in Equity is that there is not at Law any conve- 
 nient mode of taking the account in a complicated case. 
 Until the recent statute (d), damages were the only remedy 
 at Common Law; whereas Equity gives to the patentee an 
 account of profits made by the infringement of his patent. 
 In Parrott v. Palmer (e), the Lord Chancellor, giving judo- 
 ment, says that " it may be laid down generally, that, unless 
 in the case of mines, the rule is — no injunction, no account. In 
 Jesus College v. Bloome (/), where an account was prayed of 
 timber cut by a tenant before the assignment of his lease, and, 
 the term being gone, no injunction could be had, the Court 
 
 (a) 4 Ad. & E. 251. ; s. c. 5 L. J. (c) 3 My. & Cr. 428. ; s. c. ; 1 
 
 Eep. (N.S.) K. B. 60. ; 5 Nev. and Webs. Pat. Ca. 119. 
 M. 647. ; 1 Webs. Pat. Ca. 135. (d) 15 & 16 Viot., cap. 83. s. 42. ; 
 
 (J) 1 Russ. & My. 166, n. ; s. c. see Holland v. Fox, post 
 1 Webs. Pat. Ca. 119. (e) 3 My. & K. 640. 
 
 (/) 3 Atk. 262. 
 p 4 
 
216 DAY'S PATENT. 
 
 Argument. teld that no account lay ; and so it was decided, though the 
 Court said obiter that mines formed an excepted case, being in 
 the nature of a trade or business." And it is for this same 
 reason that in the present case, although an injunction be not 
 granted, the Court will decree an account, these wheels having 
 been used in a trade or business. His lordship further on 
 says (a) that " the sound rule is to make account the incident 
 and not the principal, where there is a remedy at law ; but that 
 mines are to be otherwise considered, and as to them the party 
 may have an account even in cases where no injunction would 
 lie. The rule is, not that in any particular instance where, 
 from accidental circumstances, the party fails in obtaining an 
 injunction, he cannot have an account ; it only is that where, 
 from the nature of the question, injunction is not competent and 
 could not be prayed ; as, where the waste has been committed by 
 a former tenant, and his lease is out or his term assigned, and 
 consequently there is nothing to restrain, no account will lie." 
 In Whitfield v. Bewit (b) a tenant for life of settled lands 
 having cut down timber and threatening to open mines, the 
 reversioner brought a bill for an account of the moiety of the 
 timber, and for an injunction to stay his opening mines ; and 
 Lord Macclesfield said, " As to the objection that trover will 
 lie at law, it may be very necessary for the party who has the 
 inheritance to bring his bill in this Court, because it may be 
 impossible for him to discover the value of the timber, it being 
 in tlie possession of and cut down by the tenant for life." So 
 far from the account being incident to the injunction, until 
 lately, the common practice was to insert a prayer for an 
 account in all injunction bills to sustain the prayer for an in- 
 junction. But the right of the plaintifis to an account is plain 
 upon the defendants' admission in their answer, that they had 
 advertised for engines with wheels made according to plaintiffs' 
 patent, and so must have known of the existence of that patent, 
 and equally plain is their right to an injunction. Moreover, in 
 this case, the assistance of the Court is necessary to obtain dis- 
 covery of the number of wheels used in infringement of the 
 patent, and the account would follow upon that being ascer- 
 tained. 
 
 The delay which has taken place cannot be relied on as a bar 
 to this suit, as it was necessary to allow time for the trial of 
 the action at law against the London and North Western 
 Railway Company, the facts of which were much the same 
 as the present case against the defendants but as that in- 
 
 (a) 3 My. & Cr. 642. (6) 2 P. Wms. 240. 
 
SMITH V. THE LONDON AND S. WESTERN RAILWAY CO. 217 
 
 volved the question of the validity of the patent, it would Chancery. 
 have been most vexatious to have instituted such a suit as this, a 071854. 
 while that question was pending for decision and until the 
 plaintiifs' right had been established at law. 
 
 The Vice- Chancellor. You might have commenced your suit, 
 and it would probably have been retained to await the event 
 of the action. At all events the defendants might have had 
 notice, warning them against the use of the wheels. 
 
 Daniel Q. C. and Baggallay for the defendants. The Defendunu' 
 
 , , •'•J J ^ Argument. 
 
 plaintiffs in this case have been guilty of such delay and laches 
 that this Court will not interfere to afford them the relief they 
 seek. The patent expired in 1849, and the invention has been 
 the property of the public and has been in common use for 
 nearly four years. The plaintiffs admit that as long ago as 
 1845 they were aware of the infringement of their patent, and 
 after such a delay, and having during all the time knowledge of 
 the alleged infringements, and never even remonstrating against 
 them or giving any notice to discontinue such infringements, 
 they have no right now to treat the defendants, who have dealt 
 so long adversely to the plaintiffs' right, as liable to account. 
 In Crossley v. The Derby Gas Company (a), the account was 
 directed only for six years previous to filing the bill, and 
 during the existence of the patent. That in this case would 
 only include the last two years of the duration of the patent. 
 But the account in all these cases is incident to the right to an 
 injunction, and that right is here gone with the termination of 
 the patent itself. In Bacon v. Jones (b) a patentee filed a bill 
 for an injunction to restrain an alleged infringement of his patent, 
 and also for an account of profits, and the defendant having by 
 his answer denied the validity of the patent, and also the fact of 
 the alleged infringement, the plaintiff did not apply for an injunc- 
 tion by interlocutory motion, but went into evidence in support 
 of his case, and brought the suit to a hearing. The Master of the 
 E,olIs, being of opinion that the evidence did not establish a case 
 for an injunction, dismissed the bill with costs, and the Lord 
 Chancellor on appeal afiirmed the decision. 
 
 The case against the London and North Western Railway 
 Company (c) was totally different from the present ; there was 
 no delay in that case, and it was a very clear case for the 
 verdict which the jury founH. The plaintiffs, if their desire 
 had been, as has been stated, to have the validity of the patent 
 established at law, before instituting a suit like the present 
 
 (a) 3 My. & Or. 428.; s. c. 1 Webs. Pat. Ca. 119. 
 (b) 4 My. & Cr. 433. (c) Anle, p. 188. 
 
218 DAY'S PATENT. 
 
 ■Argument. ought to have given notice when the action against the London 
 and North Western Railway Company was commenced, warn- 
 ing the other Companies of their liability if they continued 
 their alleged infringements ; but, as it appears from the fact of 
 the long negotiations and correspondence, the delay arose en- 
 tirely from a desire on the part of the plaintiffs to obtain an 
 acknowledgment of the patent right from the London and 
 North Western Railway Company, and the plaintiffs were 
 anxious to keep these negotiations secret from the other Com- 
 panies. Under these circumstances, first, that the right to an 
 injunction having expired with the patent, the right to an 
 account, which is ancillary to the injunction, is gone also, and, 
 secondly, that the delay and laches of the plaintiffs have barred 
 their right to any relief from this Court, it is submitted that the 
 plaintiffs' bill must be dismissed with costs. 
 fF. M. James Q. C, in reply. 
 
 Judgment. WoOD, V. C. I think that this particular case now before 
 
 me, is really sufficiently clear upon the mere ground of delay ; 
 but if it had rested solely upon the question of the expiration 
 of the patent, and the plaintiffs had come here and filed their 
 bill within a few days, or within a few weeks, or even within a 
 few months after the expiration of the patent, under the peculiar 
 circumstances I think there would have been more difficulty 
 arising, though even then there would have been great doubt 
 whether the Court could interfere. 
 
 I apprehend that the true ground of the relief given by this 
 Court in cases such as the present is that laid down by Sir 
 John Leech, M. K., in the case of Baily v. Taylor (a) ; and 
 although that was the case of copyright, the same principle 
 applies. The Master of the Rolls there says : " The Court has 
 no jurisdiction to give to a plaintiff a remedy for an alleged 
 piracy, unless he can make out that he is entitled to the equitable 
 interposition of the Court by injunction, and in such case the 
 Court will also give him an account, that his remedy here may 
 be complete. If this Court do not interfere by injunction, then 
 his remedy, as in the case of any other injury to his property, 
 must be at law." The account in these cases, which is not an 
 account on any fiduciary principle, or an account between 
 principal and agent and the like* is simply that which this 
 Court holds as its own mode of estimating the damages where, 
 having found it necessary to interfere primarily by injunction, 
 and thereby having obtained jurisdiction over the cause, it says, 
 
 (n) 1 R. & M, 75. 
 
SlUTH V. THE LONDON AND S. WESTERN RAILWAY CO. £19 
 
 — having obtained that jurisdiction, we will finish the Chancery. 
 whole cause beween the parties ; and this is our peculiar a.~d~18~ 
 mode of ascertaining the remedy that would at law be given, 
 by way of damages for the infringement of the patent : unless 
 therefore that primary right exists, it is quite clear the Court 
 has no jurisdiction over the defendant with reference to the 
 mere question of the damages. 
 
 Now, in the case of a patent having expired, there is, first of 
 all, this difficulty, and in the case of a copyright there would be 
 just the same difficulty, a patent or a copyright having expired, 
 you are thrown back to what is the object of the Court in 
 interfering by injunction : the object of the Court in interfering 
 by injunction at all is, as it has been stated by Lord Eldon in 
 several cases (a), to be the prevention of a multiplicity of actions 
 for the continued infringement of the patent. The possibility of 
 any such continued infringement in the present case is of course 
 at an end ; there can no longer be an infringement ; and unless 
 some case is made out of such an enormous number of past in- 
 fringements, from which the parties infringing were still deriving 
 profit, and to prevent which they had no remedy at law during 
 the continuance of the patent, I am at a loss to see how the 
 jurisdiction of the Court attaches itself after the expiration of 
 the patent. I think that this case must be considered more 
 especially with respect to the case of Crossley v. Beverley (b), the 
 gas-meter case, where there was a special ground laid for it. The 
 special ground in the case of Crossley v. Beverley was this, as 
 appears by Lord BrougharrCs judgment(c) : the defendants had 
 been manufacturing for some time, keeping it secret from the 
 plaintifii excluding him from the premises; but when he got 
 admission, and came to see what they were about, he found that 
 they in fact had been fraudulently manufacturing articles in 
 violation of his patent, with the view of pouring them into the 
 market at the time when the patent expired — manufacturing 
 them during the time that the patent existed which would have 
 protected him from that manufacture. The plaintiff filed his 
 bill a few days before the expiration of the patent, and while 
 the right to the injunction did still actually exist, as he had been 
 fortunate enough to obtain the discovery, and had got sufficient 
 evidence while he still had a right to restrain them ; and the 
 right to the injunction having been asserted, the Court extended 
 that right, and restrained the using the articles so made, even 
 after the patent had expired. I think it quite possible that 
 
 (a) Harmar v. Playne, 14 Ves. 132. 
 
 (6) 1 R. & M. 166. n. ; 1 Webs. Pat. Ca. 119. 
 
 (c) 1 Webs. Pat. Ca. 120. 
 
220 DAY'S PATENT. 
 
 Judgment, such a Case might occur where, even after the expiration of the 
 patent, as in the case of a fraudulent attempt to evade the 
 patent in Crossley v. Beverley, vyhich would enable the Court 
 to say that, under the circumstances, the defendant must be 
 restrained from making any use of that which he has been s* 
 fraudulently making, having kept the plaintiff from applying for 
 an injunction in respect of it during the time the patent ex- 
 isted ; and having got the right to an injunction, then would 
 follow the right to the account, which Lord Brougham after- 
 wards gave in the case of Crossley v. Beverley ; but, even when 
 that case came before Lord Brougham, he had to consider what 
 the effect of the delay was ; and he said that he considered thait 
 delay in a case of this description would be a very considerable 
 ground for refusing to decree the account, notwithstanding that 
 the injunction had been actually obtained, unless such delay 
 could be satisfactorily explained. Then his lordship, having 
 considered the circumstances explaining tlie delay, said he 
 thought the delay had been explained, and that under the 
 circumstances the party was entitled to an injunction and an 
 account. In the copyright case I have mentioned, Baily v. 
 Taylor, when it first came before the Master of the Eolls, he 
 found that no interlocutory injunction had been granted, al- 
 though appHed for ; he desired the Counsel to consider whether,, 
 if they failed in showing that they were entitled to an injunc- 
 tion, the Court could make any decree except for the dismissal 
 of the bill ; and having refused the injunction, he said there can 
 be no account, and dismissed the bill with costs. 
 
 Now I have first to consider whether it is right in this case 
 to grant an injunction ; and what case have I with reference to 
 the present plaintiff's case on which I could say that they are 
 entitled to this species of summary relief from the Court ? 
 They do not file their bill until four years or nearly so after the 
 patent has expired. During the whole time, as far as I can 
 learn, there has been a notorious violation of the patent going 
 on. It is not brought home personally to his knowledge, but it 
 had been infringed to a very large extent ; he says indeed in his 
 bill that he discovered, before the action against the London and 
 North Western Railway Company, that several companies had 
 been infringing it. He then proceeds to bring an action against 
 the London and North Western Railway Company, but does not 
 make the slightest mention to the defendants, against whom he 
 is now applying for an injunction, of any impropriety of conduct 
 on their part, or tell them he shall hold them responsible for 
 violating his patent, in respect of which he is asserting his 
 right against another company. It is not until gll this time after 
 
A.B. 1854. 
 
 SMITH ». THE LONDON AND S. WESTERN RAILWAY CO, 221 
 
 the patent has expired, and about nine years after the infringe- Chancem. 
 ment by this Company, — for they began to infringe, a» they saj 
 in their answer, in 1845, — that any attempt is made here to 
 restrain them by injunction or otherwise. Now as far as one 
 case can resemble another, it is curious that nine years was the 
 time in Baily v. Taylor ; it was a second edition : but I appre- 
 hend that a delay of nine months after full knowledge of all the 
 circumstances would be sufficient to enable the Court to say 
 this is not a case in which to interfere by way of injunction, 
 especially after the expiration of the patent, when there is no 
 possibility of being driven to inconvenience by reason of fre- 
 quent actions ; and therefore, as any right to ask for an injunc- 
 tion has ceased, and as the account seems to me entirely 
 ancillary to the injunction, the right to the account must also 
 necessarily fail, 
 
 I do not think that the circumstance of the existence of the 
 engines manufactured before the expiration of the patent would 
 at all interfere witTi this. The objection as to delay arises just 
 as much on this as on the other part of the case. Under the 
 circumstances, I think that the plaintiflf's bill should be dis- 
 missed ; and inasmuch as, if it were only a bill for discovery, he 
 would have had to pay the costs of the discovery, I think he 
 must pay the costs of the bill. 
 
 James. Our great object was to obtain the opinion of the 
 Court whether, in this case, the account was ancillary to the 
 injunction. 
 
 The Vice Chancellor. It seems to me clearly to be so. 
 
 Bill dismissed with costs. 
 
 In the Queen's Bench. 
 
 Heney Smith v. The London and Great Western 
 Eailwat Company. 
 
 Cor., Lord Campbell C. J., Wightman J. and Erie J. 
 Mich. Term, 1854. 
 
 16th Nov, 
 1854. 
 
 Mellish moved for a rule (under 14 & 15 Vic. c. 99. s. 6.) Motion for 
 calling on the defendants to show cause why the plaintiff 
 should not be at liberty to inspect the wheel register books, the 
 the order books, the ledgers and account books of the defendants 
 during the years 1845, 1846, 1847, 1848, and 1849, which contain 
 
222 DAY'S PATENT. 
 
 Motion for any entries respecting wrought iron wheels, either manufactured 
 " "' by the defendants at their works at Swindon, or ordered and 
 
 purdhased by the defendants of manufacturers of such wheels, 
 and also to inspect the plans of any such wheels in the possession 
 of the defendants used by the defendants during the above 
 years, and to take copies of the said books and plans, (a) 
 
 He moved on affidavits, in one of which (made by the plaintiff) 
 he stated that he had frequently visited the works of the defen- 
 dants at Swindon during the years 1847-8-9, and had seen the 
 manufacture of wrought iron wheels going on, and from what he 
 saw, as well as from information he obtained, he believed that 
 during the said years railway wheels were manufactured by the 
 defendants, and supplied to them by other manufacturers made 
 entirely of wrought iron with solid wrought iron centres, formed 
 by welding sectors of wrought iron together according to the 
 principle of the said invention, and in breach of the said letters 
 patent. That the defendants have kept, and now have in their 
 possession, books called the wheel register books, wherein are 
 entered the number, size, and weight of the various wheels 
 purchased and made, the time received, and the makers' names, 
 and the number of miles run by the wheels, and the description 
 of the wheel ; also order books in which the orders given by the 
 defendants for wheels are entered ; and also plans of the different 
 wheels which show the mode by which such wheels were manu- 
 factured, that the entries in the said several books respecting 
 all such wheels, and the plans relating to such wheels, will 
 afford material evidence in support of the plaintiff's case on the 
 trial of this action to prove that the defendants have infringed 
 the said patent, and to prove the amount of damages which the 
 plaintiff has thereby sustained. 
 
 E.ule nisi a;ranted. 
 
 (a) 14 & 15 Vic. cap. 99. s. 6. : documents in the custody, or under 
 
 " Whenever any action or other legal the control of such opposite party 
 
 proceeding shall be pending in any of relating to such action or other legal 
 
 the Superior Courts of Common Law proceeding, and if necessary to take 
 
 at Westminster or Dublin, or the examined copies of the same, or to 
 
 Court of Common Pleas for the procure the same to be duly stamped. 
 
 County Palatine of Lancaster, or the in all cases in which previous to the 
 
 Court of Pleas for the County of passing of this act, a discovery might 
 
 Durham, such Court, and each of have been obtained by filing a bill, 
 
 the Judges thereof may respectively or by any other proceeding in a 
 
 on application made for such purpose Court of Equity at the instance of 
 
 by either of the litigants, compel the the party so making application as 
 
 opposite party to allow the party aforesaid to the said Court or Judge." 
 making the application, to inspect all 
 
SMITH V. LONDON AND GREAT WESTERN RAILWAY CO. 223 
 
 , Queen's Bench. 
 Cor., Lord Campbell C. J., Wightman J. and Erie J. 
 
 ,.. , r^ 1854. 
 
 Mich. Term. 1854. 
 
 Webster now showed cause against the rule. The informa- ^"tooS^Md" 
 
 tion sought for might be obtained under, either the Discovery documents will 
 
 Act, 14 & 15 Vic. c. 99. s. 6., or under the Patent Law ^der'u^is 
 
 Amendment Act, 15 & 16 Vic. c. 83. s. 42 : this application is Vict. c. 99. 
 
 made under the former act, and will be granted only in such davits which 
 
 cases, "in which previous to the passing of this Act, a discovery only show the 
 
 might have been obtained by filing a bill, or by any other pro- therety dis- 
 
 ceeding in a Court of Equity at the instance of the party so ^atte™^d- 
 
 making application." In such a case as this the Court of vantageous to 
 
 Chancery would not grant an inspection on account of the ^asef ^™* * 
 
 delay, which is a sufficient anwer to the application. The in- The owner of 
 
 fringements complained of commenced in the year 1845, and ? patent for an 
 
 => ^ r ^ J improved 
 
 the patent expired in 1849, more than five years ago, and after \f heel having 
 
 such a lapse of time the examination of the books of the Com- ^^^ foHn- 
 
 pany, for the purpose of obtaining proof of the alleged infringe- fringement 
 
 ment and ascertaining the amount of damages, might be very ^y^compmiy 
 
 injurious to the defendants, and would lead to a discovery of applied to the 
 
 trade secrets. The same principle applies as if this were a inspection of 
 
 bill for an iniunction and account in a Court of Equity, in the company's 
 
 !• 1 1 -11 • /- 1 . y, ~ . hooks and 
 
 which case the court will not interfere, unless a prima facie other docu- 
 
 legal right is established, and the application made within a ™^°^^' o^f of 
 
 reasonable time. The affidavits of the plaintiflfare wholly insuffi- the rule, filed 
 
 cient under either the Patent Act or the Discovery Act. The ^hiclt stated 
 
 affidavit of the plaintiff, which is the only one which enters that the action 
 
 upon the merits of the case, begins by saying that the main in -sfiuch one 
 
 question at issue is on the plea of " not guilty." Why then issue was on 
 
 should the defendants be compelled to exhibit and aUow copies guilty," and 
 
 to be taken of these books, when the only question is whether *'^^' *^ '"" 
 
 . '' spection of 
 
 the patent has been infringed, that is, whether or not the wheels such docu- 
 made for and used by the defendants were made 'of wrought ^^toially as- 
 iron, according to plaintiff's plan ? The plaintiff then says that, sist the plain- • 
 during 1847 and subsequent years, he frequently visited the theinfring^^ 
 defendants' works; there is, therefore no necessity for the ment, and the 
 discovery sought for by this application: if he has been tainingthe 
 
 at the works, he mav at the trial subpoena the parties who amount of 
 
 •' r r damages. 
 
 Held: that 
 there was not sufficient evidence on the affidavits to support the rule, which ought to be granted 
 for the inspection of such documents only as were relevant to the matter in issue. 
 
224 DAY'S PATENT. 
 
 Rule. 
 
 work for the defendants and obtain fhe information from them. 
 In Shaw v. The Bank of England (a) a party having had an 
 inspection of machinery, for the purposes of an action which 
 was discontinued, commenced a fresh action after the passing of 
 the Patent Law Amendment Act (15 & 16 Vic. c. 83.) and 
 under s. 43. applied for a second inspection. The Court of Ex- 
 chequer fefused to make the order on the ground that there 
 had already been an inspection, and there was no ground for a 
 second. \_Erle J. Great inconvenience and probably injury 
 might arise, if for the possible chance of discovering some 
 wrongful act on the part of a person, we were to allow his books, 
 extending perhaps over several years, to be examined with im- 
 punity.] It is, therefore, submitted, that this rule must be 
 discharged. 
 Mellish in Mellish in support of the rule : This rule must be made 
 
 i^Mfe!"^ absolute, as the plaintiff's application is to see certain books in 
 
 the possession of the Company, the contents of which are 
 material to his case, inasmuch as from these books he would 
 obtain all the particulars of the wheels used by the Company, 
 which would enable the jury at the trial to assess the damages. 
 The application is for an inspection as ancillary to the action, 
 and is in the nature of of a bill for a discovery simply ; and in 
 this respect the case differs from Smith v. London and South 
 Western Railway Company (b), where the bill prayed an injunc- 
 tion and account, and the injunction being refused on the ground 
 of delay, the bill was dismissed as to the account in accordance 
 with the rule — no injunction, no account. The plaintiff could 
 only have filed a bill for a discovery and thus the case comes 
 within 14 & 15 Vic. c. 99. s. 6. [Erie J. You ask for the 
 discovery of documents to aid the jury in the measure of 
 damages. Surely that is in the nature of account ?] My ap- 
 plication is for an inspection of documents to prove the infringe- 
 ment. [Wightman J. Suppose these books contain any evi- 
 dence of an infringement, you do not by your affidavits show 
 that the wheels mentioned in the books are infringements 
 of the patent. Your object seems to be to get the documents 
 for the purpose of account.] The affidavits are sufficient, as one 
 of them states that the plaintiff has been injured by the con- 
 struction of wheels by the defendants made entirely of wrought 
 iron according to the principle, and in infringement of the 
 plaintiff's patent, and that the defendants have in their pos- 
 session wheel-register and order books in which all particulars, 
 concerning these wheels, are entered, and also plans showing 
 
 (a) 22 L. J. Rep. (N. S) Exch. 210. (b) Ante, p. 209. 
 
SMITH V. LONDON AND GREAT WESTEEN RAILWAY CO. 225 
 
 the mode of manufacture, all of which will afford material Queen's 
 
 evidence in support of the plaintiff's case. All of which state- ! .' 
 
 ments the defendants admit, for they might have made an affidavit ""t- 1854. 
 to be used in showing cause against this rule, that these books 
 do not contain anything that is material to the plaintiff's case. 
 It is therefore submitted that the plaintiff is entitled to the 
 inspection now sought, and that the rule must be made absolute. 
 
 Lord Campbell C. J. We are all of opinion that the appli- Judgment. 
 cation made in this case is much too wide and general In its 
 form, and that there is not sufficient evidence on these affidavits 
 to support this rule. A rule of this kind ought to be granted 
 for the Inspection of such documents only as are relevant 
 to the matter In Issue ; but there is nothing on the face of these 
 affidavits to show that the books It is sought to Inspect will 
 show an Infringement of the plaintiff's patent. Great injury 
 by the discovery of trade secrets and other such inconveniences 
 might result If we were to sanction the principle, that on the 
 mere possibility of discovering matter advantageous to one 
 party, an inspection should be allowed by him of the other 
 party's books, ranging, it might be, over a lengthened period of 
 time. The plaintiff may under a recent statute obtain the In- 
 formation he seeks by Interrogating the defendants as to what 
 documents are In their possession really relating to the infringe- 
 ment of the patent. The rule must be discharged, but without 
 costs. 
 
 Rule discharged, without costs. 
 
 Queen's Bench. 
 
 Cor., Lord Campbell C. J., Coleridge J., Wightman J., and 
 Crompton J. 
 
 Hilary Term, 1855. 22nd January, 
 
 1855. 
 
 Mellish moved, under sections 50. and 51. of the Common Motion for 
 Law Procedure Act, 1854, for a rule to show cause " why inltrllgZries. 
 Daniel Gooch, an officer of the defendants, should not, within 
 ten days, answer in writing on affidavit the Interrogatories 
 annexed to the rule, and why the said Daniel Gooch should 
 not, within the like period of ten days, answer on affidavit 
 whether the defendants have in their possession or power wheel 
 register books containing entries relating to wheels with 
 centres, arms, and rims, made of wrought Iron manufactured 
 by the defendants or used by the defendants on the line of their 
 
226 
 
 DAY'S PATENT. 
 
 Motion for 
 Rule. 
 
 2nd February, 
 
 1855. 
 Summons and 
 Order for 
 interrogatories. 
 
 said railway between the 15th day of August, 1845, and the 
 15th day of August, 1849, being the matters in dispute in this 
 cause, or plans of such wheels, and what he knows as to the 
 custody they or any of them are in, and whether the defendants 
 object, and if so, on what grounds, to the production of such as 
 are in their possession or power." 
 
 He moved on an aflBdavit of the facts as required by sections 
 50. and 51. of the Common Law Procedure Act, 1854. 
 
 The Court directed the application to be 
 made to a Judge at Chambers. 
 
 2nd February, 1855. 
 A summons was accordingly taken out, and on this day 
 heard .before Erie J., who was attended by Mellish for the 
 plaintiff and Webster for the defendants, when the learned 
 Judge made an order in the terms of the above rule, the 
 answers to be made within three weeks. 
 
 20th April, 
 1855. 
 Motion to 
 rescind Order. 
 
 Queen's Bench. 
 
 Cor., Lord Camphell C. J., Wightman J., Erie J., and 
 Crompton J. 
 
 Easter Term, 1855. 
 
 Webster now moved to rescind the order made by Erie J. on 
 the 2nd February, 1855, on the ground of the unnecessary delay 
 of which the plaintiff had been guilty in bringing this action. 
 
 E.ule refused. 
 
 The fifth and sixth interrogatories 
 
 The interrogatories were therefore delivered to and answered 
 by Mr. Gooch on affidavit, 
 and answers were as follows : — 
 
 Fifth Interrogatory. — How many wheels with centres, arms, 
 and rims, made of wrought iron welded together, have the 
 Great Western Railway Company used on the line of their said 
 railway between the 15th day of August, 1845, and the 15th 
 day of August 1849, and how many of such wheels were 
 manufactured by the Great Western Railway Company, and 
 how many were purchased from manufacturers of wheels ? 
 
 Answer. — The statements shown to me at the time of making 
 this affidavit, and marked No. 1. and No. 5., show the number of 
 engines and tenders manufactured by the Great Western 
 Railway Company from the 15th day of August, 1845, to the 
 15th day of August, 1849, to which wrought iron wheels made 
 by the said Company, and purchased of other persons, were 
 applied indiscriminately as required. 
 
 Sixth Interrogatory. — Were the several wheels above men- 
 
SMITH V. LONDON AND GREAT WESTERN RAILWAY CO. 227 
 
 tioned, or any and which of them, manufactured by taking Queen's 
 wrought iron spokes with ends forming sectors and welding ■ ^^'"^°- 
 such sectors together into the solid wrought iron centre of the e.t. 1855. 
 wheel ? — or in what other manner were such wheels, and in par- 
 ticular the centres of such wheels, manufactured ? 
 
 Answer. — The wheels referred to were not manufactured by 
 taking wrought iron spokes with ends forming sectors and 
 welding such sectors together into the solid wrought iron centre 
 of the wheel. The manner of their manufacture can be 
 explained on an inspection of the wheel, but cannot be made 
 intelligible by mere verbal statement : the centres of such 
 wheels were made by placing two thick rings of metal, one on 
 either side, and uniting the whole at a melting heat. 
 
 7th June, 1855. 7th June, 1855. 
 
 In consequence of the above answers, given by Mr. Gooch Summons and 
 
 iFvdpi* for XTh^ 
 
 to the fifth and sixth interrogatories, the plaintiff took out a gpection. 
 summons before Crompton J. for an inspection of one of the 
 wheels referred to in the answers to the fifth and sixth interro- 
 gatories, and for the examination of Mr. Gooch respecting the 
 mode of the manufacture of the wheels mentioned in the 
 answers to those interrogatories. The summons was attended 
 by counsel on both sides ; and the learned Judge made an order 
 " that the plaintiff, with William Pare of Dublin, and Henry 
 Bemonelli Barlow of Manchester, civil engineers, witnesses on 
 his behalf, should be at liberty to inspect one of the wheels 
 referred to in the answer to the fifth and sixth interrogatories ; 
 and unless Mr. Daniel Gooch attended and gave information 
 on such inspection, he should be examined orally before one of 
 the Masters of the Court of Queen's Bench respecting the 
 manner in which the wheels mentioned in the fifth and sixth 
 interrogatories were manufactured." 
 
 Both this order and that made by Erie J. on the 2nd 
 February were silent as to costs. 
 
 The defendants afterwards consented to a verdict against 
 them for 200/. damages, together with cost^ to be taxed ; and 
 the Master, upon taxation, had allowed — the costs of obtaining 
 the order of Erie J. for answering the interrogatories, the costs 
 of obtaining the order of Crompton J. for the examination of 
 Mr. Gooch and the inspection of the wheel, and the costs of 
 the inspection of the wheel. 
 
 Queen's Bench. 
 
 Mich. Term, 1855. 5th Nov. 1855. 
 
 Hugh Hill now moved for a rule calling upon the plaintiff Motion for 
 
 2 Mule to re- 
 
228 
 
 view taxation 
 of costs. 
 
 DAY'S PATENT. 
 
 to show cause why the Master of this Court should not review 
 his taxation' of these costs. 
 
 Rule nisi granted. 
 
 26th Nov. 
 1855. 
 
 The costs of 
 obtaining or- 
 ders for inter- 
 rogatories and 
 inspection un- 
 der the 17&18 
 Vice. 125.,are 
 in the discre- 
 tion of the 
 Judge who 
 makes the 
 orders ; and if 
 the orders are 
 silent as to 
 costs, the suc- 
 cessful party 
 cannot claim 
 the costs of 
 such orders as 
 costs in the 
 cause, but they 
 must be paid 
 by the party 
 who obtained 
 the orders. 
 
 Queen's Bench. 
 
 Cor., Lord Campbell C. J., Coleridge J., Wightman J., and 
 
 Erie J. 
 
 Mich. Term, 1855. 
 
 Mellish showed cause against the rule. The question is 
 whether these are costs in the cause, and it is submitted that 
 they are. In sections 51. and 52. of the Common Law Pro- 
 cedure Act, 1854 (17 and 18 Vic, c. 125.), which refer to 
 the answering of interrogatories, nothing is said about costs. 
 The order made by Erie J. (a) was under these sections. 
 
 Sec. 53., which refers to the oral examination of a party to 
 the cause, provides that the Judge may in the order impose such 
 terms as to the costs of the application and of the proceedings 
 thereon, and otherwise, as to him shall seem just ; and by sect. 
 58., which refers to the inspection of any real or personal property, 
 the Judge may make an order " upon such terms as to costs " as 
 he may direct. The order made by Crompton J. (b) was under 
 these latter sections. Also, by sect. 57., " the costs of every ap- 
 plication for any rule or order to be made for the examination 
 of witnesses by virtue of this Act, and of the rule or order and 
 proceedings thereon, shall be in the discretion of the Court or 
 Judge by whom such rule or order is made." In this case, the 
 orders being silent as to costs, they are costs in the cause. 
 The successful party is entitled to the costs of any proper 
 step in the cause, unless there be something to deprive him of 
 them. In this case there is nothing to do so ; for though 
 Crompton J. had power in the order made by him to impose 
 such terms as to costs as he thought just, he imposed none. In 
 Hill V. Philp (c) it was held by the Court of Exchequer that 
 the costs of inspection under the 14 and 15 Vic. c. 99. s. 6. were 
 to be paid by the party obtaining the inspection ; but the costs of 
 the rule were costs in the cause. The Court there proceeded 
 on a false analogy to the proceedings in equity where the party 
 seeking discovery merely has to pay the costs of such discovery. 
 
 (a) Ante, p. 226. 
 (i) Ante, p. 227. 
 (c) 7 Exch. Rep. 232.; s. c. 21 L. 
 
 J. Rep. (N. S.) E.xch. 82; s. c. 16 
 Jur. Rep. 90. 
 
SMITH II. LONDON AND GREAT WESTERN RAILWAY CO. 229 
 
 \Erle J. If the order is to Inspect a document to which the Queen's 
 party has no right except by statute, it is reasonable that he '^is.ncTi- 
 should pay for the benefit of the discovery.] By sec. 6. of the M.T. i855. 
 14 and 15 Vic. c. 99. sec. 6. the Courts of Common Law 
 are empowered to compel inspection of documents in all 
 cases in which, previous to the passing of that Act, a discovery 
 might have been obtained in a Court of Equity : then the 
 Common Law Procedure Act, 1854, enlarged the jurisdiction of 
 the Courts as to discovery and inspection, and made a discovery 
 part of the proceedings in the action. In Equity the rule is, 
 that if a party files a bill and obtains discovery in aid of pro- 
 ceedings at law, he pays the costs ; but if he prays for relief as 
 well as discovery, the costs of obtaining the discovery are 
 costs in the suit. In the present case the discovery is part of 
 the proceedings in the action, and the rule as to costs should 
 be the same as upon a bill praying for discovery and relief. 
 \_Erle J. The defendant does not pray for relief, yet he can 
 put interrogatories and obtain inspection ; as the statute gives 
 an equal right in this respect to the plaintiff and defendant. 
 Lord Camphell C. J. It would be a mischievous result if 
 the plaintiff and the defendant could always increase the costs 
 of the cause by filing interrogatories. J On the other hand, 
 it is inexpedient to increase the costs which a successful 
 party does not recover from his adversary. \Erle J. Suppose 
 the case of a defendant sued for an unjust claim, will it 
 not be a great disgrace to the law if the plaintiff is able to 
 put him to an enormous expense by interrogatories, which are 
 an optional proceeding ?] The Judge has the opportunity of 
 seeing whether the interrogatories proposed are proper or not. 
 [Lord Campbell C- J. To determine that in all cases, it 
 would be necessary for the Judge to try the cause. Erie J. 
 It is the duty of the judge to look at the interrogatories before 
 he makes an order to answer them. Lord Campbell C. J. In 
 Bell V. Postlethwaite {a), where the order of reference, made 
 under sect. 3. of stat. 17 and 18 Vic. c. 125., was silent as to 
 costs, and the arbitrator had awarded as to the costs of the 
 reference and award, we thought that the Master was right in 
 not allowing the costs, though we reformed the order by 
 inserting a clause enabling the arbitrator to give costs. The 
 power of inspection is in invitum ; but before the passing of 
 either of these statutes, witnesses were allowed to inspect work 
 done, as in an action on a builder's bill, and the costs of such 
 inspection were not allowed. Wightman J. Sects. 51. and 52. 
 
 (a) 5 Ell. & B., 695.; s. c. 25 L. J. Rep. (N. S.) Q. B. 63.; s. c. 1 Jur 
 Rep. (N. S.) 1167. 
 
230 DAY'S PATENT. 
 
 Argument ore prescribe the mode in which application for the order is to be 
 made, and neither of them mentions costs, the order being 
 wholly for the benefit of the party applying.] Then they are 
 costs in the cause. But if in this case they are still in the dis- 
 cretion of the Court, they should be allowed, as the discovery 
 obtained by means of the interrogatories and inspection ter- 
 minated the cause ; and thus the expenses of a trial have been 
 saved. 
 
 Huffh Hill, contra. This rule must be made absolute. The 
 Common Law Procedure Act, 1854, by sec. 57., puts all costs 
 in the discretion of the Judge. The plaintiff could only recover 
 these costs if the Judge, in the exercise of his discretion, had 
 directed them to be paid. The order of Erie J. was an order 
 for a discovery under sects. 50. and 51., as well as an order on the 
 engineer to answer interrogatories under sect. 53. Hill v. 
 Philp (a) only decided that the costs of obtaining an inspection 
 of documents under sec. 6. of stat. 14 and 15 Vic. c. 99. 
 which was confined to cases in which, previous to the passing 
 of that Act, a discovery might have been obtained in a Court of 
 Equity, and contamed no provision as to costs, must be paid by 
 the party seeking such inspection; and that decision was 
 analogous to Bridges v. Fisher (b), in which it was held that 
 the costs of a commission to examine witnesses abroad under 
 Stat. 1 and 2 Will. 4. c. 22. should be paid by the party who 
 obtained the commission, although successful in the action, the 
 statute having placed the costs in the discretion of the Court 
 from which the commission issued. Tindal C. J., in deliver- 
 ing judgment, says : " When we are called on to exercise 
 the discretion given us by the statute, our first duty is to 
 consider how the costs were paid before. Now, in the Court of 
 Equity the party applying paid the costs himself: it was con- 
 sidered a sufficient advantage that he so obtained the testimony 
 of a witness who must otherwise have been wanting to his cause." 
 In the marginal note to the report of Hill v. Philp, in 7 
 Exch., "the costs of the application" is a mistake for "the 
 costs of the rule " which was obtained by the defendant to 
 rescind the Judge's order for inspection ; and which, being 
 unsuccessful, the Court made the costs of that rule costs in 
 the cause. Sect. 57. of stat. 17 and 18 Vic. c. 125. places the 
 costs in the discretion of the Court : whether the examination 
 is viva voce or not, it is an examination in the cause, and it is 
 optional with the party to use the answers to the interrogatories. 
 
 (a) 7 Exch. Rep. 232; s. c. 21 (J) 1 Bing. N. C. 510. 
 
 L. J. Rep. (N. S.) Exch. 82; s. c. 
 16 Jur. Rep. 90. 
 
SMITH V. LONDON AND GREAT WESTERN RAILWAY. CO. 231 
 
 The Judge to whom the application is made may exercise his queen's 
 discretion, and order the costs to be paid by the party who Bench. 
 obtains the order, if the order is for his pecuUar benefit, m.t. 1855. 
 \Wightinan 3. Sect. 53. relates to the examination of parties to 
 the suit, but sect. 55. and 56. relate to the examination of wit- 
 nesses ; and then comes sect. 57., which refers to the orders 
 made under sect. 55, Sect. 53., as to the examination of 
 parties themselves, is express as to the costs of the application 
 being directed by the Judge who makes the order.] He i^lso 
 cited Severn v. Oliver (a), Burgh v. Schqfield (b), Marks v. 
 Bidgway (c). 
 
 Cur. adv. vult. 
 
 Lord Campbell C. J. now delivered the judgment of the sth May, 1856. 
 Court. In this case the plaintiff applied for and obtained an Judgment. 
 order to interrogate an officer of the defendants, the Railway 
 Company, upon the point whether they infringed his patent by 
 the use of the patent wheel ; and interrogated him accordingly. 
 The plaintiff obtained a second order for the production of a 
 wheel, referred to by the officer in his answers to the first 
 interrogatories, in the presence of two scientific witnesses, with 
 the attorney of the plaintiff; and under this order there were 
 two attendances. These orders gave no direction as to costs. 
 The Judge said nothing, upon making either order of the Court, 
 as to what was to be done as to costs, the statute leaving the 
 costs in his discretion. The plaintiff afterwards became 
 entitled to the costs in the cause, and the Master has allowed all 
 the costs of these procedcings as costs in the cause for the 
 plaintiff. 
 
 On a rule to review, the question is, whether all or any of 
 these costs ought to be allowed ; and we consider that by the 
 Common Law Procedure Act, 1854 (17 and 18 Vic. c. 125.), 
 s. 57., they were in the discretion of the Judges who made these 
 orders ; and, as they gave no directions, the party making the 
 application has no right to claim the costs of such applications as 
 costs in the cause for him. 
 
 We may add that we see no circumstances in this case 
 entitling the plaintiff to the costs of these proceedings if we 
 had now to decide the question according to our discretion. 
 The rule to review will therefore be absolute. 
 
 Kule absolute. 
 
 (a) 3 Bro. & Ring. 72. ; s. c. 6 B. (V) 9 M. & W., 478. 
 
 Moo. 235. (c) 1 Exch. Rep., 8. 
 
 q4 
 
232 
 
 , SMITH'S PATENT. 
 
 15th January, 
 1855. 
 
 Application for 
 ham to enter 
 dit,claimer avd 
 memorandum, 
 of alteration. 
 
 fjindmarch in 
 opposition. 
 
 SMITH'S PATENT. 
 
 [No. 10,808.] 
 
 IN THE MATTER OF SMITH'S DISCLAIMEK. 
 
 Cor., Sir A. J. E. Cockburn A. G. 
 15th January, 1855. 
 
 The patentee applied to the Attorney-General for leave to 
 enter a disclaimer and memorandum of alteration, in order to 
 disclaim certain parts of the invention of " Improvements in 
 " the Manufacture of Wheels for Railways, and in Springs for 
 " Railway and other Carriages, and in Axle-guards for Railway 
 " Carriages" comprised in his patent of 7th August, 1845. (a) 
 
 The proposed disclaimer was as follows : — 
 
 " "Whereas, since the inrolment of my said specification, I 
 have not found that the third, sixth, seventh, eighth or ninth 
 parts of my invention have come into beneficial public use, for 
 which reason I wish to disclaim, and I do hereby disclaim, all 
 parts of my said specification which describe and claim the 
 third, sixth, seventh, eighth and ninth parts of the said inven- 
 tion, and for the same reason I wish to disclaim, and I do dis- 
 claim, the following words in the title, viz. : ' And in springs for 
 ' railway and other carriages, and in axletree-guards for railway 
 ' carriages.' And I alter the said specification, as follows : — 
 In the paragraph commencing with ' I will describe the fourth 
 part of my invention,' I strike out the word ' fourth ' and 
 insert the word third. In the paragraph commencing, ' I will 
 now describe the fifth part of my invention,' I strike out the 
 word ' fifth ' and insert the word fourth; and in the last para- 
 graph of the said specification I strike out the word ' nine.' " 
 
 Hindmarch, for Messrs. Eastwood and Frost, in opposition. 
 If leave to enter this disclaimer and memorandum of alteration 
 be granted, it should be upon certain terms under the following 
 circumstances. The patentee was the plaintiff in the case of 
 Smith V. The London and North Western Railway Company, 
 which was an action brought by him as assignee of Day's 
 patent for wrought iron railway carriage wheels, which patent 
 expired in 1849. For several years during the existence of 
 Day's patent, railway companies had wheels made of wrought 
 iron, against whom Smith made no complaint respecting any 
 infringement of that patent, which he and his late partner had 
 
 (a) The specification is not in- upon the terms of the claim coa- 
 serted, as the decision of the tained in it. 
 Attorney-General did not proceed 
 
IN RE SMITH'S DISCLAIMEE. 233 
 
 purchased for a small sum, and probably only as a speculation. Attoeney- 
 
 After lying by in that way, he, in 1852 and three years after . ' 
 
 the expiration of that patent, took legal proceedings against isth January, 
 several railway companies, and in equity for infringements 
 of Day's patent, and compelled them to pay heavy damages. 
 Messrs. Eastwood and Frost, the parties who oppose the 
 present application, in the year 1848 became the purchasers of a 
 patent granted on the 11th July, 1848, to Matthew Kirtley, for 
 " Improvements in the Manufactureof Railway Wheels," and en- 
 tered into contracts to supply to railway companies wheels made 
 according to that patent, and up to a recent period Smith made 
 no complaint that those gentlemen were infringing either of his 
 patents. Smith, not satisfied with the damages recovered against 
 the railway companies, lately sued Mr. Eastwood for making 
 the wheels for the railway companies, in respect of which he has 
 already received damages from those companies, alleging that the 
 wheels were not only infringements of Day's patent, but also of 
 Lis own patent of 1845, which is clearly bad. When Smith re- 
 ceived the notice of objections in the action against Mr. East- 
 wood, he found that his patent of 1845, in its present state, 
 could not be sustained, and he therefore settled that action. 
 He is now seeking to disclaim in order to render his patent of 
 1845 valid, so as to enable him to recover damages against 
 Mr. Eastwood for all the wheels which he has made. If 
 this disclaimer be allowed, Mr. Eastwood is in this position : he 
 has been paying a consideration to Kirtley, and making wheels 
 according to his patent. Mr. Eastwood has also entered into 
 contracts to supply wheels according to Kirtley's patent ; so that 
 if this disclaimer be allowed without terms imposed upon Smith, 
 Mr. Eastwood will be in this difficulty, that, if he performs his 
 contracts, he will be subject to an action for infringement at the 
 suit of Mr. Smith, and if he desists from making any more 
 wheels, he will be subject to an action for breach of contract at 
 the suit of those to whom he has contracted to supply these 
 wheels. The parties who oppose, therefore, seek to have, as a 
 condition of the granting of this disclaimer, such terms imposed 
 upon the applicant as. shall protect them from proceedings 
 during the fulfilment of the contracts into which they entered 
 while the patent was invalid; and they submit that, if this dis- 
 claimer be allowed, it should only be upon the applicant entering 
 into an undertaking not to bring any action against the opponents, 
 Messrs. Eastwood and Frost, in respect of anything done by 
 them up to the end of these contracts. The case of Regina 
 V. Mill (a) has decided that a disclaimer is to be read as forming 
 
 (a) 10 Com. B. 379.; s. c. 1 L. M. & P. 695. ; s. c. 20 L. J. Rep. (N. S.) 
 C. P. 16. 
 
234 
 
 SMITH'S PATENT. 
 
 Attobney- 
 General. 
 
 Decision of 
 the Attorney- 
 General. 
 
 part of the original specification, and therefore, when entered, it 
 has relation back to the date of the patent. 
 
 Sib a. J. E. Cockbuen A,. G. All the provisoes in the 
 39th section of the recent Patent Law Amendment Act are, 
 I think, intended to be enactments, and I am of opinion that this 
 section applies to all cases, and that it is for the law officer to 
 certify in his fiat, should he so think fit, that an action may 
 be brought in respect of infringements prior to the filing of the 
 disclaimer : but I shall only allow this disclaimer upon condition 
 that an undertaking be given that no action shall be brought in 
 respect of anything done prior to the hearing of this application 
 for the disclaimer. This undertaking must be in the usual form, 
 and must be general enough to include not only the present op- 
 ponents, but every one. All are entitled to the same immunity, 
 but I cannot go so far as to prevent the patentee from bringing 
 an action in respect of any infringement committed after this 
 date. 
 
 Fiat upon the terms stated. 
 
 LUCAS' PATENT. 
 
 [No, 10,468.] 
 
 In the Matter of Ltjcas' Disclaimer. 
 
 20th June, 
 1854. 
 
 Application fir 
 leave to enter 
 disclaimer. 
 
 Cor., Sir A. J. E. Cockhurn A. G. 
 20th June, 1854. 
 
 This was an application for leave to enter a disclaimer of 
 certain parts of a patent granted on the 16th January, 1845, to 
 Edwin Lucas, for " Certain Improvements in the Manufacture 
 of Chains." The patentee in his specification stated that his 
 improvements consisted of: — 
 
 First, a machine for making chain of brass or other wire, 
 the ' said machine being so constructed that it not only forms 
 the links of the said chain, but connects the said links together, 
 as in the specification explained. 
 
 Secondly, of a machine for making welded iron-chain, the 
 said machine being so constructed that it cuts off, bends, and 
 welds pieces of heated Iron, so as to form links, and connects the 
 several links together, as In the specification particularly de- 
 scribed. 
 
 Thirdly, of a method or methods of constructing chains for 
 
IN EE LUCAS' DISCLAIMER. e 235 
 
 cable and other purposes ; also of a method of making the links attokket- 
 of ordinary chain by welding the said links on the side, as in Geherai-. 
 the specification described. 20th June, 
 
 Fourthly, of a method of constructing the links of flat or pit 1854. 
 chain, in the specification described. And the specification con- 
 cluded with the following claims : — 
 
 First, the construction and use of the machine for making 
 chain of brass, iron, or other wire, as described and represented 
 in the drawing. 
 
 Secondly, the construction and use of the machine for making 
 welded iron chain, as described. 
 
 Thirdly, the methods of manufacturing chain for cable and 
 other purposes by forming each link of the said chain of a rod 
 of iron, one end of which is bent across the link, so as to form 
 a cross or staybar between the sides thereof; also by making a 
 link by bending a rod of iron into an elliptical form and forcing 
 the, sides of the said elliptically bent iron into contact, and 
 welding the same, so as to form a solid support between the 
 loops at the ends of the said link, whether the said link be 
 formed by welding on the end or on the side ; also the con- 
 struction of links of an elliptical form for ordinary chain, by 
 welding the said links on the side as described. 
 
 And, fourthly, the method of manufacturing the links of flat 
 or pit chain, as described. 
 
 The petition and the proposed disclaimer, after stating as a 
 reason for disclaiming the second, third, and fourth claims, that 
 the same could not be put in practice without incurring so great 
 an expense as to render them of little utility, and that therefore 
 the petitioner was desirous of disclaiming the said second, third, 
 and fourth claims, then went on to state that the petitioner 
 did not claim any of the parts of the machinery comprised in 
 the first part of the specification separately. 
 
 J. P. Norman appeared on behalf of parties who had lodged 
 a caveat against the granting of leave to enter the disclaimer, 
 and contended th,at under the provisions of 5 and 6 W. 4., c. 83., 
 sec. 1., a patentee might enter a disclaimer, stating in his petition 
 the reason for such disclaimer, but that no disclaimer can be 
 allowed without a statement of a reason for the entering of it. 
 That, according to the old rule and the present practice, the 
 petition must be accompanied by a copy of the proposed dis- 
 claimer, and that such practice had been adopted, in order that 
 any person who might be afiected by the disclaimer, might have 
 an opportunity -of seeing it, and knowing what course to take in 
 reference to it. That, as no reason had been stated in the 
 petition why the petitioner sought to disclaim the several parts 
 
236 * LUCAS' PATENT. 
 
 Attorney- of the machinery comprised in the first part and first claim 
 
 General. 
 
 of the patent, the disclaimer should not be allowed. 
 
 20th June, On behalf of the petitioner, it was urged that the latter words 
 
 of the disclaimer did not amount to, and were not intended 
 to operate as, a disclaimer ; but were a mere memorandum of 
 alteration. 
 
 Norman. It must be assumed that the entry was intended as 
 an abandonment of the parts of that which was claimed by the 
 specification, to which a claim to the whole machine on the 
 authority of recent cases (a) must be deemed to extend. A 
 memorandum of alteration is simply an amendment of the descrip- 
 tion of the manner in which the invention is to be performed. 
 
 Sir A. J. E. Cochburn A. Gr. I am clearly of opinion that 
 this is a disclaimer, and that the objection made by Mr. Norman, 
 on the part of the opponent, is fatal to so much of the disclaimer 
 as relates to the first part of the specification. I shall, however, 
 allow the petitioner to amend by striking these latter words .out 
 of his proposed disclaimer. 
 
 No declarations had been filed on either side, but Norman ma'de 
 the following statements, which were not denied by the peti- 
 tioners : That both the patented machine and that used by his 
 client were improvements upon machines which had been in use 
 in Birmingham for some time previous to the date of the patent, 
 for the manufacture of links and continuous chain, and contended 
 that, inasmuch as his client having constructed his machinery at 
 a time when the field of invention was open to him, the patent 
 ^ of the petitioner not being then valid, the petitioner ought not 
 to be allowed, by entering a disclaimer, and thus remedying the 
 defects which were at that time in the patent, to deprive his 
 client of an existing right. That the Attorney-General had the 
 power of ordering, as a condition of allowing the disclaimer, that 
 the petitioner should indemnify parties who might be injuriously 
 affected by it. He cited Ruhery v. Parrs (h) In re Galloway's 
 Patent (c), and Turner on Patents, p. 57., and submitted that his 
 client should have a free license to use the machines then 
 existing and to sell all chains made by these machines ; or, if 
 compelled to cji^^continue the use of the machines, the peti- 
 tioner should be obliged to purchase the machinery and chains 
 already made. 
 
 SiK A. J. E. COCKBUEN A. G. said he ought not to impose 
 a condition that the opponent should have a license to continue 
 
 (a) See Holmes v. The London (b) IRepertory of Arts, vol. iii. E. 
 
 and North Western Railway Com- S. 163. 
 
 pany, ante, p. 13. ; and Smith v. (c) 2 Carpmael's Rep.^107. 
 
 Jlie London and North Western 
 Railway Company, ante, p. 203. 
 
IN KE LUCAS' DISCLAIMER. 237 
 
 his manufacture, but he thought that the petitioner ought to Attornet- 
 purchase the opponent's machinery. 
 
 General, 
 
 The case stood over to enable the parties to come to 20th June, 
 terms if possible. Negotiations for that purpose having failed, 
 solemn declarations were filed on both sides, and the matter 
 came on again for hearing before Sir A. J. E. Cochburn A. G. 
 
 15th January, 1855. ''^its"!"^' 
 
 Norman now appeared on behalf of the opponent, and contended Second hearing 
 that the case Slaving been fully heard on the former occasion, Attorney- 
 and the petitioner having taken his chance of a decision on the General. 
 facts as then stated and admitted, and the declarations not 
 containing any matters not known to both parties at the date of 
 the former hearing, that the case must be decided on the facts 
 as then admitted, and that the matters contained in the decla- 
 rations since filed could not be gone into. 
 
 Sir A. J. E. Cockburn A. G. decided that he would hear the 
 whole case. 
 
 The declarations filed on behalf of the petitioner stated that, Petitioner's 
 previous to the year 1851, the opponent had been in the habit -'^"'''"■«''»» 
 of purchasing machine-made chains from Lucas the patentee ; 
 that in the year 1851 the opponent informed the petitioner 
 Baker that one Waddington, a chain-maker of Birmingham, was 
 infringing his patent ; that Baker entered into communication 
 with Waddington, who in consequence ceased from infringing ; 
 that the opponent then commenced himself to use machines 
 constructed on the principle of the patent, and to manufacture 
 chains similar to those of the patentee ; that he took into his 
 employ a workman who worked for Waddington in 1851, and 
 subsequently another who had formerly worked for Lucas, the 
 patentee, and was well acquainted with his machines, that 
 for a long time he continued to work in secret, until at last 
 negotiations were commenced, and he allowed Mr. Carpmael, 
 as agent of the patentee, to have access to his woyks and to 
 inspect his machines, which in the opinion of Mr. Carpmael, 
 though not in that of Mr. Prosser, who attended on behalf of 
 the opponent, were similar in their construction to those of 
 the patentee. It was alleged that the opponent had used labels 
 which were an imitation of the petitioner's labels, to designate 
 the different patterns of his chain. Specimens of the labels were 
 annexed to the declarations. 
 
 The declarations of the opponent, his two workmen, and Opponent's 
 Mr. Cooke stated that both inventions were improvements on 
 an old machine invented by Cooke, and that the opponent 
 had not gained his knowledge of the machine in question from 
 the workman who had been employed by Lucas, or. copied 
 
238 
 
 LUCAS' PATENT. 
 
 Lucas's invention. They also stated that 
 
 GENERIC' ^""^^'^ invention. They also stated that the opponent's 
 , 1 machines were essentially different from those of the patentee 
 
 15th J^anuary, but Were similar in their construction to those used by Cooke. 
 That Cooke had manufactured chain by his machines, and had 
 sold it before the date of Lucas' patent to several parties whose 
 names were mentioned in the declarations. 
 
 On behalf of the petitioner, it was now contended that this 
 was a case in which the operation of the disclaimer ought to be 
 retrospective, and to which the last proviso in sec. 39. of 
 the Patent Law Amendment Act of 1852 applied, and the 
 Attorney-General was therefore asked to certify in his fiat that 
 an action might be brought for infringements committed prior 
 to the filing of the disclaimer, notwithstanding the entry or filing 
 of such disclaimer. 
 
 Norman then submitted that, as the specification of the 
 patent stood, the patent could not be sustained; therefore, 
 even if there had been any infringement of the patent by the 
 opponent, since the patent was bad, no damages could be re- 
 covered against him. It would, therefore, be unjust, if the de- 
 fects in the patent were to be cured by a disclaimer, that the 
 opponent should be made liable for acts done while the patent 
 was bad, (a) The allowance of the disclaimer ought not to 
 affect those acts ; they were not wrongful acts at the time they 
 were committed, because the patent, being bad in part, was 
 invalid as a whole, or in fact no patent at all. That it does not 
 appear that the last proviso in the 39th section of the 
 Patent Law Amendment Act applies to patents granted under 
 the old law : the first part of the section clearly only applies to 
 patents granted under the new law incorporating, the provisions 
 made in the 5 & 6 Will. 4. c. 83. and 7 & 8 Vict. c. 69. 
 
 SiE A. J. E. CoCKBUEN A. G. I think that the concluding 
 proviso must be looked upon as an enacting clause, and apply 
 to all patents, both those granted under the ' old, and those 
 granted under the new law. There are some cases where it is 
 proper that a disclaimer should be retrospective. It is not 
 right that a person should gain his information from a patentee, 
 and, acting on that information, copy and use his invention. He ■ 
 must not presume upon some defect in his specification, and 
 infringe upon the valuable part of his patent ; such an infringe- 
 ment ought not to be allowed with impunity. 
 
 The cases, however, where a disclaimer should be made re- 
 trospective, and give the patentee power to proceed against 
 those who infringed before the disclaimer was filed, are the 
 
 Decision of the 
 Attorney- 
 General. 
 
 (a) See Reg. v. Mill, 14 Beav. 314.; Patent Law Report for 1851, 
 paragraph 2823. 
 
1855. 
 
 LUCAS' PATENT. 239 
 
 exception and not the rule : it lies on the party apply- Attoenet- 
 ing for a certificate giving a disclaimer that retrospective Generai.. 
 powel*, to make out a case entitling him to that certificate. 15th January, 
 Here the petitioner seems to me to have made out a case in 
 which I should exercise the power given to me by the statute. 
 The applicant appears to estimate his damages for bygone in- 
 fringements by the opponent at about 300Z., and the opponent 
 offers a royalty of 60Z. for the use of the machines. It seems 
 to me right that the opponent should pay for his past infringe- 
 ment : unless therefore, he consents to pay lOOZ., I shall give the 
 certificate asked for, and allow the patentee, notwithstanding the 
 disclaimer, to bring an action for infringements, committed prior 
 to the date of the disclaimer. 
 
 THOMPSON'S PATENT. 
 
 [No. 9,573.] 
 
 Letters Patent, bearing date the 28th day of December, 28«A5Sicr 
 1842, granted to Thomas Thompson for " Certain Improve- 1842. 
 ments in weaving figured Fabrics." 
 
 My improvements in weaving figured fabrics, apply to those Specification, 
 
 .. ii.j j?ri.- I'll J. '11 J 28«A Jwne,! 843. 
 
 particular kinds 01 tabric which have a terry or raised looped 
 surface, such as coach lace, Brussels carpeting, velvets, and 
 other woven goods having terry or raised surfaces, either plain 
 or figured, and consist in certain means of introducing and 
 withdrawing the wires or tags upon which the terry loops are 
 formed, by means of machinery, in conjunction with the ordi- 
 nary operations of the loom. The tags or wires are severally 
 attached to moveable arms which, by suitable arrangements of 
 mechanism, are made to advance and to be slidden laterally in 
 between the warp threads when the sheds have been opened, 
 and are in like manner withdrawn from the work after the terry 
 loops have been formed upon them, and by the course of 
 weaving made fast. Two of these moveable arms are to be 
 employed, one mounted on either side of the work near the sel- 
 vage, and each carrying a tag or wire fixed in its inner side, the 
 two wires extending horizontally in opposite directions towards 
 the work, and suflficiently long to reach through the breadth of 
 the warps. One of these wires or tags having been placed 
 between the open sheds of the warps as above said, and the 
 terry loops formed thereon in the ordinary mode of weaving, the 
 work must be properly secured by subsequent shoots and 
 beating up, and then another tag or wire introduced in a 
 
240 THOMPSON'S PATENT. 
 
 Specification. Similar way, and the work secured in like manner. This being 
 done, a lateral movement is given to the first-mentioned arm, 
 by which the tag or wire is drawn sideways out of the work, 
 the arm is then advanced, and when so advanced is moved 
 laterally inward so as to place the tag or wire again between 
 the open sheds of the warp, ready to have the terry loops 
 formed upon it by the usual evolutions of the loom, and after 
 that has been effected, the other arm is moved in a similar way, 
 and the work continued by a succession of the like movements. 
 [The patentee then described minutely, by the aid of draw- 
 ings, the several parts of the machine and the mode in which 
 coach lace was woven by it, and proceeded :] 
 
 Having now described my invention, and the manner of 
 adapting the same to the weaving of coach lace or other narrow 
 terry fabrics, I wish it to be understood that I do not intend to 
 confine myself to the production of narrow goods only, as this 
 improved means of weaving may be also adapted to the pro- 
 duction of carpets and other terry goods having raised or looped 
 surfaces: neither do I intend to limit myself to the precise 
 mechanism above described (which, however, I believe to be 
 entirely new as applied to that purpose) for working the arms 
 that carry the tags or terry wires, as their required movements 
 may be efiected by a variety of means or mechanical agents : 
 but that which I particularly claim as the main feature of my 
 invention is the weaving of terry fabrics by means of tags or 
 wires attached or affixed to or inserted into moveable arms 
 mounted by the sides of the selvages, such arms being shifted at 
 intervals by the agency of suitable machinery (as a substitute 
 for manual labour), and made to introduce the wires or tags into 
 the open sheds of the wdrps, and to hold them in the warp during 
 the formation of the terry loops, and also to draw them out of 
 the work after the terry loops have been formed and secured by 
 the ordinary evolutions of the loom. In witness, &c. 
 
 Exchequer. In THE EXCHEQUER. 
 
 21st & 22nd Nisi Prius Sittings for Middlesex after Trin. Term, 1853. 
 
 June, 1853. 
 
 John Ckosslet, Joseph Ceossley, and Francis Cross- 
 ley, V. Charles Potter, Harold Potter, John Gerald 
 Potter, and Edwin Potter. 
 
 Cor., Sir Frederick Pollock C. B. and a Special Jury. 
 
 Declaration, The declaration stated that one Thomas Thompson was the 
 
 2ardFeb,\&5Z. £j,g(. ^-^^ true inventor of "Certain Improvements in weaving 
 
CROSSLEY AND OTHERS v. POTTER AND OTHERS. £41 
 
 figured Fabrics," and that letters patent had been granted to Exchequer. 
 him, his executors, administrators, and assigns, for the sole privi- ^d. 1853. 
 lege to make, use, exercise, and vend the said invention, within 
 England, for the term of fourteen years, from the 28th of 
 December, 1842, subject to a condition that the said Thomas 
 Thompson should, within six calendar months, cause to be 
 enrolled in the High Court of Chancery an instrument in 
 writing under his hand and seal, particularly describing and 
 ascertaining the nature of his said invention, and in what 
 manner the same was to be performed. And that the said 
 Thomas Thompson did, within the time prescribed, perform the 
 said condition. And that the said Thomas Thompson had after- 
 wards, on the 2nd of March, 1843, assigned the said letters 
 patent to Robert Payne and John Payne, their executors, 
 administrators, and assigns. And that afterwards, on the 
 8th of July, 1851, the said Robert Payne and John Payne 
 assigned the said letters patent, and all privileges, &c., to the 
 plaintiffs, their executors, administrators, and assigns. And that, 
 after the making of the said indentures, the defendants, during 
 the said term for which the said letters patent were granted, did 
 infringe the said patent right. 
 
 Pleas : First, A denial of the grant by the said letters patent. Phas, 
 
 Secondly, That the said Thomas Thompson was not the first jssa. ' 
 and true inventor as alleged. 
 
 Thirdly, That the said Thomas Thompson did not, within 
 six calendar months after the date of the said letters patent, 
 cause to be enrolled in Chancery an instrument in writing, 
 under his hand and seal, particularly describing and ascertaining 
 the nature of the said invention, and in what manner the same 
 was to be performed. 
 
 Fourthly, That the said invention was not any manner of 
 new manufacture. 
 
 Fifthly, Not guilty. 
 
 Issue was joined on all the pleas. 
 
 The defendants, with their pleas, delivered a notice of the Notice of 
 following (among other) objections to the plaintiff's patent: — "'^'^ """' 
 
 That the said Thomas Thompson, after the date of the said 
 letters patent, caused a specification to be enrolled in Chancery, 
 but did not thereby, or by any other instrument in writing 
 under his hand and seal enrolled in Chancery, particularly 
 describe and ascertain the nature of the invention, and in what 
 manner the same is to be performed. 
 
 That the said specification did not distinguish between the 
 matters and things therein mentioned which were intended to 
 be claimed as new, and those which were old. 
 
 E 
 
242 
 
 THOMPSON'S PATENT 
 
 Notice of 
 Objections. 
 
 Plaintiff 's 
 
 Pollock, C. B. 
 to the jury. 
 
 That the said letters patent are void by reason of the 
 variances between the description of the invention in the speci- 
 fication and the title of the invention in the said letters patent. 
 
 Atherton, Q. C, Montague Smith, and Grave appeared for the 
 plaintiffs. 
 
 Sir A. J. E. Cockburn, A. G., Bramwell, Q. C, Hindmarch 
 and Webster for the defendants. 
 
 Grove opened the pleadings, Atherton stated the case on 
 behalf of the plaintiff, and then produced witnesses, who gave 
 prima facie evidence of the novelty, utility, and infringement of 
 the patent. 
 
 On cross-examination the witnesses admitted that, without 
 more alteration than a mere widening of the parts, a loom such 
 as shown in the specification-drawings could not be adapted to 
 the weaving of velvets or carpets, and that until very recently^ 
 when the plaintiffs made a carpet loom for the purpose 
 of this trial, no loom for making carpets had been made 
 according to the specification-drawings; and the carpet loom 
 made by the plaintiff's had parts (alleged to be well known) 
 added to it, without which it would not have been available 
 for making carpets. 
 
 At the close of the plaintiff''8 case, the learned Judge said that 
 he was of opinion the action was not maintainable if, on the evi- 
 dence as it then stood, the jury found that the invention as speci- 
 fied had been found not to be capable of coming into practical use 
 for the manufacturing of carpets or velvets. For the purpose of 
 taking the opinion of the jury upon this point, his lordship 
 summed up the evidence given by the plaintiffs as follows : — 
 
 Pollock, C. B. Gentlemen of the jury. It appears to me 
 that this action is not maintainable, if you are of opinion with 
 me as to two or three facts, which, I think, are already established 
 by this evidence. This action is brought for the infringement 
 of a patent, of which the plaintiflF appears to have obtained a 
 transfer in the year 1851. The plaintiff", Mr. Crossley, there- 
 fore represents Mr. Thompson, the original patentee, who 
 describes himself in his specification as a weaver and machinist. 
 I collect, from the evidence already given, that the businesses of 
 weaving coach lace and of weaving carpets are not one and the 
 same, but distinct occupations. We do not find that any one 
 who makes coach lace also makes carpets, or that any body 
 ■who makes carpets makes coach lace. Suppose that to be so, 
 then the history of the invention is this, that in the year 1842, 
 Mr. Thompson, a weaver and machinist, takes out a patent 
 for an improvement in weaving figured fabrics ; and one of the 
 objections of the defendants to the patent, stated in the notice 
 
CROSSLEY AKD OTPIERS v. POTTER AND OTHERS. 243 
 
 of objections, is that the patentee has taken out his patent for an Exchequer. 
 invention entitled " Improvements in weaving figured Fabrics," r^, y~~i^53 
 and that these improvements are applicable to a certain class 
 of figured fabrics only, namely, those which have a terry sur- 
 face. That objection, in my opinion, is not well founded. The 
 improvement in a particular portion of figured fabrics may be 
 well called, I think, an Improvement in weaving figured fabrics. 
 Though it be not applicable to all, it is an improvement in the 
 general weaving of figured fabrics ; though it may not apply 
 itself to any particular individual case, I think there is nothing 
 wrong in that. The patentee, in his specification, says : " My 
 " improvements in weaving figured fabrics apply to those par- 
 " ticular kinds of fabrics which have a terry or raised looped 
 " surface, such as coach lace, Brussels carpeting, velvets, and 
 " other woven goods having terry or raised surfaces, either 
 " plain or figured, and consist in certain means of introducing 
 " and withdrawing the wires," &c. Then follows a verbal 
 explanation, without figures, of the manner in which the wire is 
 introduced and drawn out at one side of the loom ; and it is 
 exceedingly clear and very well expressed. It then states that 
 the wire on the other side of the loom is to be moved in the 
 same way. It concludes by saying that the work is " continued 
 " by a succession of the like movements; " and that is the whole 
 invention. The specification proceeds to say that " these opera- 
 " tions of the arms carrying the terry wires or tags will be 
 " better understood by a reference to the accompanying draw- 
 " ings ; " and then gives a description of four drawings, showing 
 you the several parts of the machine, and exhibiting a bit of 
 coach lace, probably of the regular width of coach lace ; it may 
 sometimes be wider. The specification, after describing the 
 machine, as it appears me, accurately, well, and perfectly, and 
 in a manner which justified, I think, the commendation of one 
 of the witnesses, that it has been done by a skilful person, pro- 
 ceeds thus : " Having now described my invention, and the 
 " manner of adapting the same to the weaving of coach lace or 
 " other narrow terry fabrics, I wish it to be understood that I 
 " do not intend to confine myself to the production of narrow 
 " goods only, as this improved means of weaving may be also 
 " adapted to the production of carpets and other terry goods 
 " having raised or looped surfaces. Neither do I intend to 
 " limit myself to the precise mechanism above described (which, 
 " however, I believe to be entirely new, as applied to that 
 " purpose) for working the arms that carry the tags or terry 
 " wires, as their required movements may be effected by a 
 " variety of means or mechanical agents ; but that which I 
 
 B 2 
 
244 
 
 THOMPSON'S PATENT. 
 
 Pollock, C. B. 
 to tfiejury. 
 
 A patent 
 cannot be 
 granted for a 
 principle : • — to 
 be patented it 
 must be embo- 
 died in some 
 
 " particularly claim, as the main feature of my Invention, is the 
 " weaving of terry fabrics by means of tags or wires attached 
 " or affixed to or inserted into moveable arms mounted by the 
 " sides of the selvages, such arms being shifted at intervals, by 
 " the agency of suitable machinery (as a substitute for manual 
 " labour), and made to introduce the wires or tags into the open 
 " sheds of the warp, and to hold them in the warp during the 
 " formation of the terry loops, and also to draw them out of the 
 " work after the terry loops have been formed and secured by 
 " the ordinary evolutions of the loom." That is the whole of the 
 specification. 
 
 This patent, taken out by Mr. Thompson, was assigned in 
 the year 1842 to two persons of the name of Payne, and as- 
 signed by them in the year 1851 to the present plaintiffs. 
 But it is clear from the evidence that no carpet was ever made 
 upon this plan at all, until a machine was erected within the 
 last three or four months, — erected I believe in the country, 
 but brought up that we might see it at King Street ; and with 
 the exception of that, the particular machine here described 
 never has been applied to the making of carpets. If the prin- 
 ciple of this invention has been more recently used in combi- 
 nation with other matters, that is quite a different consideration; 
 but you may take it as a fact in the case that, for ten years, 
 or at least nine years, after the granting of this patent, it never 
 was used for the actual making of a carpet. And, gentlemen, 
 my impression Is, that, as a matter of law, the claim here, with 
 the evidence before us. Is far beyond anything that the law will 
 countenance. It so happens that the question arises before you 
 on the subject of carpets, but the question might just as well 
 have arisen upon the subject of velveteens and velvets ; and I 
 do not find there is a tittle of evidence in the case that any 
 man made a yard of velvet of any description, or velveteen, or 
 any other description of terried goods, except coach lace and 
 a carpet. I collect from the evidence — and certainly one of 
 the questions 1 mean to put to you is, whether, in your 
 judgment, this machine, as it Is described in the specification, 
 with any 'of the means which are usually applied to such ma- 
 chines, would enable anybody to make carpets or velvet ? for, 
 if it will not, it is not because, in point of fact, that machine in 
 King Street has made a carpet, and that the carpet is here, 
 that this patent Is a good patent. The truth appears to me to 
 be this, that the patent is very much like what has often been 
 attempted, viz., to take out a patent for a principle, which the 
 law will not allow. Any man who takes out a patent must 
 take It for a manufacture. It is very true that patents are 
 
CROSSLEY AND OTHERS v. POTTER AND OTHERS. 245 
 
 continually taken out for what are called " methods " or " pro- ExnHEQUEB. 
 
 cesses ; " but the real object of the patent, the real end that is " 
 
 secured by the statute, the matter that is alone mentioned in ' ' 
 
 it capable of being made the subject of a patent, is a new machine or 
 
 manufacture ; and every body who takes out a patent under the manufacture, 
 „ ,, , . ,.,,.,• 1 which is the 
 
 name or a process, really takes it out tor that which is the only subject of 
 
 result of the process, for the thing that is manufactured, or ^Pat^"*- 
 the process by which it is produced. There is a sort of struggle 
 apparently between lawyers and patent agents. The patent 
 agent is constantly endeavouring to get a patent for a principle ; 
 the lawyer is interposing and saying, 'You cannot do that.' It 
 is a matter of clear and distinct law that you cannot have a 
 patent for a principle. Whatever principle you have in- 
 vented or applied, you must have it embodied in some machine 
 or manufacture distinctly, in order that other ingenious and 
 enterprising members of the community may distinctly know 
 what it is they are prohibited from doing. This patent is taken tlonmusrde^" 
 out for the making of coach lace, carpets, velvets, and velveteens scribe means 
 of all sorts, and it must be competent to do all and every part perform'all" 
 of that work, by the means stated in the specification, otherwise comprised in 
 the patent is not good. I should have wished to have seen Mr. 
 Thompson, and have asked him this question, — " Did you ever 
 make a carpet in your life ? " I think he must have said, 
 "~So." If Mr. Payne had been asked, " Did you ever make a 
 carpet?" — I think he also must have said, "No." This is 
 quite plain, that neither the one nor the other ever made any 
 velvet goods by this machine ; and one of the questions I shall 
 put to you is, whether you believe that this machine is compe- 
 tent, without addition, to make velvets ? Certainly, the effect 
 of all the evidence is, that, without additional parts, which are 
 not described, the machine would certainly not be capable of 
 making velvet goods, and I doubt whether it is capable of making 
 carpet goods without a deal more than the specification contains : 
 and the mention of carpets and velvets of all sorts in this 
 specification appears to me to have had this for its object, 
 namely, to patent the principle. " I have," says the patentee, 
 " described that, in making coach lace, it is a beneficial thing 
 to have two arms with wires attached to them, and going in 
 succession, one after the other. I proclaim to the world that 
 nobody shall apply that, or anything like it, or any substitute 
 whatever, in the making of either carpets, velvets, or any other 
 terry whatever." A patent for an invention which is merely obstructive 
 to obstruct every subsequent improvement, which is to step in ^f g°p g™^* 
 and prevent the exercise of the ingenuity of mankind and the 
 introduction of other inventions adapted to the particular sub- 
 
 R 3 
 
246 THOMPSON'S PATENT. 
 
 PolhcU, C. B. ject to which the Invention may be applicable, — a patent 
 to tie jury. which has for its object to snatch and grasp at everything, 
 in all directions which may possibly come within the general 
 language the patentee may choose to adopt in his specifica- 
 tion, — a patent, the object of which is, not to benefit the world 
 by its communication, but to obstruct, by the very general 
 character of the claims made for conferring peculiar privileges 
 on the patentee; — such a patent as that, in my judgment, 
 cannot be supported, (a) 
 
 Now, in the year 1842, this patent was taken out, and Ihave 
 no doubt that, by means of the machine, coach laces were after- 
 wards made with very great perfection, with very great 
 advantage, and to considerable profit. No carpet was ever 
 made until within the last three or four months, and no velvet 
 or velveteen has ever been made, by the invention ; and it 
 appears from the evidence that, although it is applicable .to the 
 making of carpets if you widen the machine and introduce the 
 loop that is supposed to be used in other machines in the 
 making of carpets, nobody has ever said that this machine 
 described in the specification is sufiicient. On the contrary, what 
 has been proved respecting the mode in which the plaintiff 
 accomplished his object in making carpets, seems to me to be of 
 a very different character. There is no evidence of the capa- 
 bility of the machine to make carpets, except that relating to 
 the making of some pieces of carpet within the last three 
 ■ months, and the effect of which you have before you, and is to 
 this extent, that, with the additions which have been made to 
 the machine, it will do twice as much as any ordinary carpet 
 loom ; but it will not keep pace with the requirements of the 
 manufacturing and commercial world and at the time when 
 it is first tried in the manufacture of carpets, it turns out to be 
 practically and utterly useless. Although it will do twice as 
 much as the common hand-loom will do, it stops far short of the 
 loom used by the plaintiffs themselves before they bought the 
 patent; for, as Mr. Crossley said yesterday, speaking of the 
 hand-loom : "I do six times as much, and this will only do twice 
 as much." If there is another mode by which you may do six 
 times as much, an instrument that can only do twice as much has 
 long ceased to be of any practical advantage. In the year 1851, 
 this patent was assigned to the plaintiffs, and they purchased it, 
 not with a view of acting upon the patent and bringing the 
 machine into use, but with a view to get rid of a supposed 
 
 (a) See tlie learned Judge's remarks to the same effect in his "summing 
 up" in Tetley v. Easton, ante, p. 71, et sqq. 
 
CROSSLEY AND OTHERS v. POTTER AND OTHERS. 247 
 
 claim that might be made on the part of Messrs. Payne (the Exchequer. 
 assignees of Mr. Thompson, the original inventor), preventing _ ~ — 
 them from using something which they in the meantime had 
 invented. Now I am clearly of opinion, as I intimated to 
 Mr. Crossley when he gave his evidence, that this patent 
 never could and never ought, if the matter was perfectly 
 understood, to have prevented him from making these carpets. 
 Let me state the case to you on this point — a man takes 
 out a patent for improvements in weaving figured fabrics, 
 which he says are applicable in making coach lace and carpets ; 
 — I leave velvets out of the question for a moment. He takes 
 out a patent for an invention which may be used for making 
 coach lace and carpets. His specification-drawing contains a 
 representation of a coach-lace loom only. It is very true that 
 the specification is enrolled, to which all the world may have 
 access and which claims making carpets. But, at the end of 
 ten years, Mr. Crossley says himself he did not derive a know- 
 ledge of what he was doing in the manufacture of carpets from 
 this, but it was either his own invention or the invention of 
 somebody else, whose patent he purchased. He is then told, 
 " If you do not buy up this patent, you will have a law suit 
 brought against you." Why, gentlemen, with what face could 
 any man so make an attack on a manufacturer ? How could he 
 be allowed to say : " I have been making coach lace with this 
 machine, and I have not made a carpet in the ten years during 
 which I have had my patent ; but I will not let you make 
 carpets: the moment you intend to apply the machine with 
 improvements according to a scheme of your own, and make a 
 carpet, I will say you are doing something like what I patented 
 ten years ago. I never put that in use, but it is the same 
 principle." The answer is, " You cannot have a patent for that ; 
 you may bring all the patent agents and professional people in 
 London to say there is a similarity, the same form, the same 
 principle, and so on." The best proof is the fact that the man 
 never did it ; and I think that both Judges and juries ought 
 as far as they can — the former to keep to the law, and the 
 latter to keep to the fact. I as I believe the law to be, and 
 you as you believe the fact to be ; but if anything like what is 
 called prejudice could be permitted to exist in a court of justice 
 at all, it would be against a man who pretends that he has 
 made an invention, and never applied it for ten years to the 
 subject of carpets, but the moment anybody else is doing so, 
 says, I will not let you do that, unless you give me lOOOZ. 
 for the patent. " Have you ever used it for carpets ? No, you 
 have used, it only for the narrow article." " Aye, but," says 
 
 B 4 
 
248 THOMPSON'S PATENT. 
 
 ^^^''^ C. B. he ; "I said ten years ago I did not mean to confine myself to 
 *''"''^' narrow goods." The answer is : " You have confined yourself to 
 narrow goods, for you have only described a loom for making 
 such goods." Then, what reliance can you have on a patent of 
 this description, in which the patentee says, I do not mean to. 
 confine myself to narrow goods, with a machine which, in fact, 
 is applicable to narrow goods only, and which, at the end of 
 ten years, is brought out for the purpose of obstructing other 
 inventions, which are brought then to that degree of perfection 
 as to be practicably available, and which can be used without 
 the least difficulty. 
 
 Gentlemen, I shall read to you the material portions of the 
 evidence of Mr. Carpmael and Mr. Crossley. Mr. Carpmael 
 says : " I have made myself acquainted with Thompson's patent 
 '' invention. It consists in doing by machinery what was for- 
 " merly done by hand, namely, the putting in and taking out 
 "the wires which form the loops of the terry fabric." Now, 
 you will observe, that one of these operations had, in the mean- 
 time, been done by a patent invention, that is, the putting in of 
 the wires ; but they were withdrawn, not on the same, but on 
 the opposite side, by nippers, which pulled each wire across, so 
 that the principle, as it is called, of applying machinery in 
 introducing the wires was not new ; but the application of the 
 same instrument both to put the wire in and to take it out, was 
 new. There was an intermediate invention a year or two 
 before this of Thompson, by which the wire was put in by 
 machinery, but it was drawn out by hand. Now it appears 
 that it has been found to be more useful to put the wire in and 
 to draw it out by the same machinery. I think I collect from 
 Mr. Collier's evidence, they now, instead of using two, use 
 some sixty wires, which they put in, and draw out when they 
 have served the purpose of raising the loops to form the terry. 
 He says : " The wires were loose, and were not attached to 
 " anything." He then particularly explained the movement, and 
 showed the manner in which coach lace is made in Thompson's 
 machine; and after describing the working model, he went 
 through the drawings, and said the drawings show the mode of 
 working and making some narrow fabrics, such as coach lace. 
 Mr. Collier says, in his evidence : " Thompson's drawing and 
 " description only show the coach-lace loom and nothing 
 " more." Mr. Carpmael says : " I have seen this adapted to 
 " the making of carpets of the width of twenty-seven inches. 
 " The working model is like what I have seen make carpets, it 
 " works efiiciently and well, and wants only widening to make 
 " it answer for the carpet. An ordinary workman would have no 
 
CROSSLEY AND OTHERS v. POTTER AND OTHERS. 249 
 
 " difficulty in adapting it from the specification to the making Exchbqtjee. 
 " of carpets. I think a weaver would do it." And then he ^ -v^^^Tiiss 
 speaks, I think very justly, of the specification as being drawn 
 done "in a very workmanlike and satisfactory manner." On 
 cross-examination, he says : " The Jacquard part is not on the 
 " model No. 2. The machinery moves each wire forward, and 
 " then inserts it in the shed." The shed is where the threads 
 cross each other, forming a sort of opening. Figure 4. was 
 then referred to as showing the motion of the wire ; and by the 
 dropping of a weight the arm carrying it goes forward, during 
 which it is raised a little, and then, by a lateral motion of the 
 arm, the wire enters the shed. He says : " There is no guide to 
 " the wire ; It is stiff and requires none. The movement of the 
 " Jacquard gives a movement to the apparatus for putting the 
 " wire in and out. Five or six inches is all that the Jacquard 
 " rises in general : the length of the movement of the Jacquard 
 " will be the limit of the movement, and, therefore, of the 
 " length of the wire. But some interposed instrument would 
 " give extended motion : a crank lever would do this; " and there 
 is a crank lever shown in the model : and he says : " You may 
 " vary the motion by varying the crank more or less." Mr. 
 Carpmael says, and I wish to call your attention to this: 
 " There is nothing of this stated in words in Mr. Thompson's 
 " specification, and the machine, as it is shown in the drawing, 
 " will not make a carpet of twenty-seven inches wide." Gen- 
 tlemen, you may take it, I think, now, that a machine, as de- 
 scribed in the specification, will not make a carpet twenty-seven 
 inches wide. "To make a carpet, you must give more motion to 
 the lever or arm, to enable it to insert the long wire. There 
 is no statement as to giving more motion to the arm; there is a 
 crank." Then he refers to model No. 3., and in figures 6. and 
 5. there is the arm above and below. " Tempered steel wires 
 " have been in existence a long time. Velvet wires are very 
 " thin : velvet may be three yards wide : you cannot use that 
 " loom No. 3. for velvet at all, nor for wider lengths of wire 
 " than where the wire is rigid enough to retain its straight 
 " figure." He was then re-examined, and says : " A guide 
 " was used for wide terries before the patent : a guide or 
 " rest becomes necessary as soon as the wire is so long as not 
 " to keep its straight figure. The use of the guide for wide 
 " fabrics is old, and the guide was a common known part 
 " of such a machine. The machine in King Street has a guide. 
 " A workman could easily apply the invention to a wide fabric. 
 " You may tie on a fastening wherever- you like, so that this 
 " has unequal arms, by tying it on at different places ; and^ 
 
250 THOMPSON'S PATENT. 
 
 Pollock, c. B. 'i therefore, you may produce the crank movement. No. 1. is to 
 J"''!/- « exhibit the particular action only. Power could be applied to 
 " a loom, and the mode of applying power to such a loom we 
 " well know. A guide is placed nearly level with the bottom 
 "part of the shed, or somewhere - near it." Gentlemen, that 
 was Mr. Carpmael's evidence, and it appears to me, I think, 
 with respect to the velvet, that it is not at all made out that the 
 machine can be used to make velvet. It is very true, that if 
 you were to set about a new machine for making velvet, in all 
 probability something might be invented that might make the 
 principle of Thompson's invention applicable to making velvets, 
 as well as to making carpets and coach lace. Mr. Carpmael was 
 afterwards examined upon the subject of the infringement, and 
 he says this : " I fully concur with Mr. Hill as to the infringe- 
 "ment. All Messrs. Crossley's looms are upon the principle 
 " of taking out a wire by the working of the loom ; but they have 
 " different modes of putting the wire in. Messrs. Crossley's 
 " looms have more than two wires ; but they have no arms like 
 " those shown in Thompson's drawing. The wires are put in 
 " by an instrument like Wood's ; they are put in and taken 
 " out on the same side ; but, in place of keeping hold of a wire 
 " when inserted, the instrument lets it go. Those looms have 
 " no instrument that serves as a guide. Of my own know- 
 *' ledge, I do not know about the defendant's machine." The 
 person to whose evidence he referred, Mr. Joseph HUl, as 
 showing the infringement, said this : "I am foreman of the loom 
 department of Messrs. Sharp, Stewart, and Co. I am aware 
 " of the improvements in looms. I have read the specifications : 
 " there was a patent for drawing in wires ; that was Wood's 
 " and Barker's ; but it was never practically used." Gentle- 
 men, if an invention is never practically used, it never can be 
 rendered an obstruction to other persons — moving on with the 
 general improvements of the age in which we live and making 
 inventions at all bringing to perfection that as to which the best 
 evidence that it has not been brought to perfection is that it 
 has not been used. He says : " A rod was passed along ; an in- 
 " strument pulled it in with a nipper; and then it was taken 
 " out by hand. In Thompson's plan, the wire is attached to 
 " the instrument or arm by which it is moved in and out. 
 " The specification is quite sufficient. I have seen a machine in 
 " King Street making carpets. I know the defendants. In 
 " October, 1852, I went over their manufactory: they were at 
 " work on a carpet. The projecting arm corresponds to Thomp- 
 " son's. The arm moves in and out ; it is all done by 
 "'machinery; a lever is used in both. I saw no substantial 
 
CEOSSLEY AND OTHERS v. POTTER AND OTHERS. 251 
 
 " difference between that and Thompson's. I have seen a cord, as Excheqtjeb. 
 " spoken of by Mr. Carpmael — a common hempen cord : the ™ vac 1853. 
 " cord will apply to either. I agree with Mr. Carpmael as to 
 " figured fabrics : in his account of them, the specification would 
 " apply to carpets of twenty-seven inches, with the bearing.'' 
 On cross-examination, he says : " In model No. 3. there is no 
 " Jacquard. The drawing shows a five-frame machine loom, 
 " and the colours are brought up as the patterns require them ; 
 , " that is, when the Jacquard is used." Then he speaks of 240 
 threads being used. " The movement brings forward the wire ; 
 " and without a guide it would have a tendency to make it 
 " vibrate. Three inches would be the forward motion. The 
 " machine in King Street is without a Jacquard. We have 
 " made carpets and velvets, but not with a guide-thread ; five- 
 " eighths of a yard was the ordinary width of velvet ; it 
 "would want a bearing to support it;' a 27-inch wire would 
 " not work with certainty without a bearing in carpet or 
 " velvet, in the ordinary way, it would be too low. I went over 
 " the plaintiff's premises, and he did not use any of these looms 
 " at all — not at all. He was using my patent of February, 
 " 1843 ; in 1849 he was not using any of those," that is, any of 
 those which are the subject of litigation here: so that the 
 history seems to be this, that Mr. Thompson never made a 
 carpet with his loom. Messrs. Payne and Co., who were the 
 assignees of the patent, never made a carpet with it. The 
 plaintiff himself bought it in 1851, and he never made a carpet 
 in that manner; but, he says, you, the defendants, shall not 
 make carpets ; and the only instrument of this kind which has 
 ever been used for the making a carpet, is an instrument made 
 for the purpose of this case, to show that it will make a 
 carpet. The witness says : " We have made many looms for him 
 " since, but none according to Thompson's patent ; they were 
 '■ all made according to my patent." He says : " I sold my 
 "patent to Messrs. Crossley. I have made looms for other 
 " persons, but I never made a loom according to Thompson's 
 " patent. I never saw one of Thompson's at work anywhere 
 " except that in King Street." [The learned Judge then read 
 the evidence of Mr. F. Crossley, one of the plaintiffs. He proved, 
 amongst other things, that he, in copartnership with his brother, 
 the other plaintiff, since 1800, had made carpets; that, until 
 within a very few years, carpets had been made by hand, and 
 were so made when Thompson took out his patent. He ex- 
 plained the nature of Wood and Darker's patent invention for 
 introducing the terry wires into the shed by machinery, with 
 the view of applying power to a carpet loom and weaving 
 
252 THOMPSON'S PATENT. 
 
 Pollock, C.-B. carpets by steam; but that nobody had used steam for the 
 making of carpets until very recently, and long after the date 
 of that patent, and after the time when Thompson took out his 
 patent. He then explained the nature of Whytock's invention, 
 for which he, twenty years ago, took out a patent, according to 
 which invention, the patentee printed the warp thread to be 
 woven into carpets with colours in such a way as to produce the 
 desired patterns without the Jacquard apparatus generally used 
 for producing the pattern. The plaintiffs took a licence from 
 Why took, and bought the extended patent in 1845. He also 
 proved the purchase of Hill's patent and others, for which con- 
 siderable sums were given : that they applied steam to working 
 the looms ; and, having brought the manufacture to perfection, 
 they could at the price of A^d. weave what used to cost 9d. ; and 
 that was done two years before the purchase of Thompson's patent. 
 After which, the plaintiffs granted licences to the trade in 
 general terms, for the use of all their patents. The learned 
 judge proceeded.] The plaintiffs could not, by granting licences 
 in these general terms for the use of all their patents, give 
 to Thompson's invention a character which does not properly 
 belong to it. The witness says : " We have had a loom 
 " made according to Thompson's invention, worked by steam, 
 " and it does twice as much as the hand loom. Our im- 
 " proved loom, which we use, will do six times as much. 
 " The defendants have fixed wires. They have a guide, but not 
 " a guide at all similar to the ordinary guide used in carpet 
 " looms. The wire is withdrawn by an arm similar to Thompson's 
 " We work with sixty wires. Two fixed wires will work, but 
 " will not produce as good an article as if you have a great 
 " many wires. Thompson contemplates the use of a Jacquard 
 " for making coach lace ; but a Jacquard is not necessary for 
 " weaving carpets when the warps are printed. Thompson's 
 " specification-drawings only show a coach-lace loom." Now, 
 Gentlemen, I must say, with all this evidence before you, if you 
 think that the business of a coach lace maker, and the business 
 of a carpet maker are two different employments (as it appears 
 to me on the evidence they very clearly are), and if you think 
 that it has not been shown with certainty in what manner 
 Thompson's loom can be adapted to the making of carpets (of 
 which I see no evidence at ail), then, in my judgment, your 
 verdict ought to be for the defendants. 
 
 "&'' 
 
 The learned judge then told the jury that if they adopted 
 his view respecting the effect of the evidence, the defendant was 
 entitled to a verdict, but otherwise the trial must go on. 
 
CROSSLEY AND OTHERS v. POTTER A2TD OTHERS. 253 
 
 The jury consulted together but did not agree upon a verdict, Exchequek. 
 and the case proceeded. T. Vac, 1853. 
 
 Bramwell then addressed the jury on behalf of the defendants, Defendanfs 
 and, amongst other things, contended that the invention as 
 specified was inapplicable to the making of carpets and velvets, 
 and that so far as it related to making carpets and velvets it 
 was not the invention for which Thompson took out his patent j 
 that Thompson had no idea of applying his invention to the 
 manufacture of carpets or velvets at the time when he took out 
 his patent ; but he sold his patent and that part of the descrip- 
 tion was introduced into the specification by the assignee. 
 
 Mr. Thomas Thompson was then examined by Hindmareh, 
 and deposed that he was the patentee, and after having ob- 
 tained his patent and before the specification was enrolled he 
 sold it to Messrs. Payne. 
 
 Hindmareh. Have the goodness to tell me what you took 
 your patent for ? 
 
 Atherton objected to the question on the grounds that what 
 the witness took out his patent for would appear by the specifi- 
 cation. 
 
 Polloch, C.B. What really was the invention may appear The Specifica- 
 
 from other sources than the specification. That point was ^ond^^ye 
 
 argued in this Court not long ago, when my brother Martin evidence of 
 
 ruled that the best way of proving what the invention was for ^^^ patent was 
 
 which the patent was obtained was asking the patentee. I shall obtained;— 
 
 certainly receive the evidence and will take a note of the objec- evidence of 
 j-Jqjj patentee is 
 
 also admis- 
 Examination of Mr. Thompson resumed. Q. What were sable. (See 
 
 you at the date of this patent ^ A. A. weaver of several descrip- P" ^^^''' 
 tions of narrow fabrics. Q. Were you a carpet-weaver ? A, 
 No, I never saw any carpet-weaving until within the last fort- 
 night. Q, Had you seen a carpet loom until within the last 
 fortnight ? A. No. Q. Have the goodness to tell us what you 
 took your patent for? A. For making coach lace only. Q. 
 What were the means by which you proposed to weave coach 
 lace ? A. Not exactly those described in the specification. The 
 invention I made was quite different . from that in the specifi- 
 cation. 
 
 Atherton. Your lordship will understand that my objection 
 applies to every thing spoken by the witness, which will appear 
 by the patent and specification. I submit that the specification 
 shows the machine which the witness invented. 
 
 Pollock, C.B. The specification shows the invention that is 
 specified, but there must be some mode of getting at the. fact of 
 what the invention really was. Suppose a man had got a 
 
254 THOMPSON'S PATENT. 
 
 Defendanes patent for " An improvement in Locomotion," having invented 
 some means of rendering a balloon useful, and then some one 
 said to him, " I think your balloon is of very little use ; you 
 have a month more to specify, and if you will sell me your 
 patent I will specify improvements in steam-engines applied to 
 the purposes of locomotion : " most unquestionably that would 
 be a fraud on the crown, and such a specification would be a bad 
 specification. The specification cannot be conclusive evidence 
 when it may be thus most fraudulently prepared. 
 
 Examination resumed. Q. Have you anything like what 
 you invented ? A. Yes, this is my invention [handing up a 
 model]. This is the way the arm was made, but it did not work 
 as described in the specification. I had no shelf, no carriages 
 for the wire to run out ; the wires were all fixed firm in a rail) 
 and the rail first drew to the right and advanced, then moved to 
 the left and put the wires into the shed all together. Q. At 
 the time you took out your patent, and up to the time of the 
 enrolling of the specification, did you know anything of carpet- 
 weaving or of velvet-weaving ? A. Neither of carpet-weaving 
 nor of velvet-weaving. 
 
 Pollock, C. B. If the jury believe this evidence there is an 
 end of the case. 
 
 [The witness then explained the action of the model of his 
 invention.] Q. Did you communicate all this to Mr. Payne 
 when you sold him your patent "? A. 1 did ; I mounted two 
 looms for Mr. Payne, and John Jennings assisted me. The 
 invention described in this specification is not like my invention 
 at all ; they left a portion of my invention out of the specifica- 
 tion, and put in the invention of another man. Q. After you 
 explained your invention and finished the looms for Mr. Payne, 
 had you anything more to do with drawing the specification? 
 A. No, I never saw the specification ; I never read it, I never 
 saw it until I signed it ; I signed it but did not read it, and no 
 one read it to me. Q. Before the specification was signed, did 
 Mr. Payne let you see certain machinery which he intended to 
 specify ? A. The day before I signed he let me see a machine 
 such as the one in court. Q. Did you sign the specification 
 willingly? A. No, I objected to sign it at first, because I 
 expected I was going to be put to my oath that that was my 
 invention solely. Q. Did you find that you were not to be put 
 upon your oath ? A. I did, and ultimately signed, but I did not 
 know what it was ; it was not read to me, and I did not read it 
 myself. 
 
 Pollock, C. B. Upon the point of receiving this evidence, I 
 can have the assistance of my learned brothers who are sitting 
 
CROSSLEY AND OTHERS v. POTTER AND OTHERS. 255 
 
 in an adjoining court, and I will ascertain what they think Exchequer. 
 
 upon it. It is of some importance, and although the matter rj. yac. 1853. 
 
 was mentioned in the argument some days ago, it was not then 
 
 very fully discussed. [His lordship after retiring to consult 
 
 the other learned barons returned into court and continued.] 
 
 It is the opinion of all my learned brothers as well as my own. Parol evi- 
 
 that the evidence ought to be received, and I have been fur- patentee 
 
 nished by one of them with a case where the point was sub- admissable to 
 
 stantially decided on the question being put in the course of patent was not 
 
 the argument by the learned counsel whether, if there had been obtained for 
 ... « , . . 1-11 some of the 
 
 an imitation oi the invention on the day the patent was things claimed 
 
 granted, it would have been an infringement ; («) we had no jj^ *^ Syeo^- 
 doubt that the answer ought to be, that it Avould, and that 
 it could only be ascertained before the specification by some 
 evidence of what the invention really was ; and now, as a 
 plaintiff patentee can be a witness, there can be no difficulty 
 whatever in getting at it. In the case of Bateman v. Gray (b) 
 my brother Martin distinctly laid down and the rest of the 
 court agreed with him that you may ascertain what the inven- 
 tion was by calling the man who made the invention. 
 
 Mr. Thompson was then cross-examined by Atherton and re- 
 examined by Bramwell, but his evidence did not differ from 
 that given by him at first. 
 
 Pollock, C. B. If this witness is believed the patent was not 
 taken out for the manufacture of carpets. 
 
 Atherton. I contend that, even if it be believed, still the 
 plaintiff's case may be upheld on this ground, that the differ- 
 ence between what was the Invention in his mind and that 
 which is described in the specification is not a substantial 
 difference, nor is it more than the elaboration by a more skilled 
 person of the original design and invention of Mr. Thompson. 
 
 Pollock, C. B. I shall certainly direct the jury that if they Patent-pri- 
 believe Mr. Thompson's evidence, the patent cannot be sus- "''ilegeco- 
 
 n 1 • /■ 1 • • 1 . extensive with 
 
 tamed as a patent tor carpet-makmg, tor on this point the issue invention at 
 is simply whether the jury believe that Mr. Thompson at the ^i^^^^l^^ 
 time he took out his patent did or did not know anything about granted. 
 carpets, for if he did not know that his invention would apply 
 to carpet-making, no ingenuity would at all alter the nature of 
 the invention which originally was exclusively confined to 
 coach lace. 
 
 Atherton. Suppose Mr. Thompson to have invented this 
 mechanism without having carpets in his mind by reason of 
 his ignorance of its applicability to carpet-weaving, but the 
 machine, as invented by him, though applied to narrow weav- 
 
 (a) Russell u. Ledsam, 14 M. & W., p. 582. (6) Ante, p. 111. 
 
256 
 
 Defendants 
 Case. 
 
 THOMPSON'S PATENT. 
 
 c- 
 
 Pollock, C. B. 
 to the jury. 
 
 ing only, would by an enlargement of the parts, be made 
 available in the hands of ,a mechanic of skill to weave carpets, 
 would not carpet-weaving be included in this patent ? 
 
 Pollock, C. B. I am still of opinion that the patent would not 
 and cannot be made to extend to carpet-weaving. 
 
 Mr. John Jennings confirmed Mr. Thompson's evidence as 
 to the looms he mounted for Messrs. Payne. [During the ex- 
 amination of this witness, the jury interposed and informed the 
 learned Judge that they were all agreed.] 
 
 Pollock, C. B., to the jury.. The direction I shall give you 
 is simply, that if you believe the testimony of Mr. Thompson that 
 what he invented was applicable solely to coach lace, and did 
 not extend to carpet-weaving ; that he communicated that in- 
 vention to Payne, who bought the patent from him before the 
 specification was drawn ; that he made a machine for Payne and 
 afterwards two others according to his invention ; that he him- 
 self was wholly ignorant of any weaving except such as was 
 applied to narrow fabrics, and refused to sign the specification 
 until he was told that no oath was required ; my opinion is that 
 the specification is not correctly drawn, and that your verdict 
 should be for the defendants who have merely used in carpet 
 weaving something like what is described in this specification. 
 It is rather singular that the evidence given by Thompson is 
 very nearly what was passing in my mind at the time ; that the 
 man who invented was merely a coach lace weaver, that trade 
 being totally different from carpet- weaving ; that he went to 
 some patent agent who advised him to include in his claim the 
 weaving of carpets. In my mind the safest course for paten- 
 tees to adopt in framing their specifications is, instead of in- 
 eluding everything, to confine themselves specifically to one 
 good thing and a jury will always take care that if that be a 
 real invention no man, under colour of improvement, shall be 
 allowed to interfere with that which is the offspring of their 
 genius. 
 
 Verdict for the Defendants. 
 
 Patent. 
 7 tit Feb. 1851 
 
 ONIONS' PATENT. 
 
 [No 13,495.] 
 
 Letters patent, bearing date the 7th day of February, ] 851, 
 granted to William Onions for " Improvements in the Manu- 
 facture of certain Parts of Machinery used in Spinning." 
 
 ^'"f'u. 
 
 .W,