2

H .B L 468.

BOULTON V. BULL

65 1

at1 persons c l ~ i m i t ~ under g him. If this be true, I think there can be no doubt on the words of the deed of assignment, which is not a particular conveyance of particular

~ff8ct~ ina Iaw, ~ to all intents, constructions, and purposes, against the offender, and

lands, but 8. general conveyance o f all the real and personal property of the bankrupt. And the court i s bourid to construe the bankrupt laws iu the most liberal and beiiefieial ~natrner for the creditors. I therefore hold that every species of right, of which by any possibility profit can be made, passes to the assignees. HEATH, J. I am of the same opinion. My Brother Williamss argument goes to prove, that even a right of entry on a vacatit possession would not pass by the assignment. But he says the assignees are not without remedy, for the action may be brought iii the game of the bankrupt; but suppose the bankrupt were to release his right of aetiori, or make a f r a u ~ u l e n t eotiveyarIce, if he were to bring the action, such release or conveyance might be set up to defeat it. As to the case cited from Verrion, I think it a very atrange one, for a covenant to renew a lease runa with the land. With respect to the second point, X am also of opinion that the words used irr the ~ s i ~ ~ mwere e n tsu~cierit. The co~missionars are strangers t o the barikrupt, and cannot describe every particular species of his property. We should therefore do infirtite mischief, if we were to hold, that every thing belonging to him did not p m 8 under the genafal words that are used, ROOKE, J., of the same opinion. Rule for arresting the judgmeut discharged.

BOULTON AND WATT ugainsl BULL, Saturday, May 16th, 1795.

k patent was granted

t o A. B. for a new invented method of using an old engine in a more beneficial manner than was before known. The speci~cationstated, tbat the method consisted of certain principles, and described the mode of applying

those principles to the purposes of tbe invention, iznd an act of parliament, reciting the patent t o have been for the making and veiiding certain engines by him invented, extertded to A. B. for a longer term than 14 years, the privilege of making, constructing and selling the said engines.--Q. Whether, under these circumstances, the patent right was valid (all?

This was an action on the case for i n ~ r i ~ g i r ia g patent. The first count of the declaratioti stated, that the king by letters patent under the great seal, bearing date on the 5th of January, 1769, granted to the Plaintiff James Watt the sole benefit and advaotage of making, exercising and vending certain invetition of him the said James, being a method by him invented of lessening the corisumptioti of steam and 8c. fuel ia fire engines, for the term of 14 years, with a proviso for a speci6~atiou, in the usual mariner. It then stated, that by a private act of pa~IiameIitpasaed in the 15th year of the king, the benefit of the patent(^)^ was extended to 25 years, to W&t aad his as-[46P]-signs : that on the 5th of September, 1777, he assigned two thirds of the patent Fight to Boulton the other Plaintiff, for the r#mai~iderof the nt, tbe cons6nt of the P~aintiffs~ made, term of 25 years, and that the ~ e f e I d ~ agaiIist co~tructe and ~ sold divers engines, i n imitation of the said engine so invented and
-

(a)i [This question came afterwards before the Court of Kings Bencb, irr the case ~v. ~ o ~ ~8 T ~. R. ~ 95, ~ o on ~ error , l from the ~ Commo~i e Pleas, wbeu ~ it was of ~ uoanimoualy resolved that the invention was the subject of a patent, and the pate~teea right was valid. It seemed admitted there that under the statute 21 Sac. I. c. 3, s. 6, there emnot be a patent for a philosophical principle ouly, which has been since held in the case of Rex v. Wheeler, 2 B. CSZ A. 345. Upotr the construction of the word manufactures in the statute of James I., the Court in the last cited case observed, It may perhaps extend also to a new psocess to be carried on by known i ~ p l e m e n ~ or s and ult~mately producing some other known elements s t i n g upon known subs~ances, substmw, but producing it in a cheaper or more expeditious manner, o r of a better and more useful kirrd. As to patents for improve~er~ta, see Humla/r v. P ~ u ~ n11 e , East, lu Price, ~ g 1Stark. N. P, 199. Lord ~ ~ h rv. u ~~ ~$ e ~ h ibid. ~ r 205, s ~ , 110, ~ u G ~ ~ r v. C u v, ~ on, ~ 3 Broil. ~ B Bing, 5. See also Eill v. ~ h o ~8 ~ Taunt. s ~ 375, ~ , 3 . 3 Merivale, 629. 2 B. Moore, 425, S. C. Sdvory v. Price, 1 R. CG. M. N. P, C, 1 (U)% This aat is stated at large, in the ar~umeuta on the part of the Defetidat~t,

c.

found out by Watt, and of the like nature and k i d , it1 breach of the said act of p a r ~ a ~ and ~ tagaiust , the privile~e graKited to ~ a tas t a ~ ~ r e e a whereby, ~d, &o. The second moon$ was for making and construct in^ (not mentioiiitig selling) engines, &c. like tbs firet count. The third was for making, c o n $ t ~ u c ~and i ~ i se~ling ~ e t ~ ~ i n &e. es~ partly in i m ~ ~ as ~ o aforesaid. n The fourth, for making and c~rist~,ucting (omitting sell~ag~ 8 n ~ ~ n partly es in ~ ~ ~ ~ &c, t i The o n fifth, for using and ~ ~ ~ t jio t ipracti~e g tbe j ~ y ~ t of ~ othe n PiaiutiE Watt, The sixth, for using and putting in practice p r b of &a said invention. The seventh for coutiterfeitirig the said invention, arid wing and puktirig in practioe certain engines, counterfeiting the said engine mentioned in the said sat of ~ a r l j a ~ e n t . The eighth, for i ~ i t a t i r ~the g said ir~ventio~i,The ninth, f-or r ~ 6 ~ b the ~ i said n ~ inyefitio~~.The tenth, for ~ o u n ~ e r ~ e i in t i npart ~ the said ~ n v % ~ i ~ and o n ,using and putting in practice eI?#irIes c o u n ~ e r f e i t i ~ in i ~p r t the ne &c, The eleventh, or imitsting i n part the said invention. The last, ~ i n in g part the eaid irj~entjori, T h e geoerd issue being pleaded, the cauae came on to be tried before the Chief J ~ B tait ~ the s i t t j t ~ after ~ TrjI~ityterm 1793, when a case was reserved for the court, which stated, that his present majesty hy latters patent dated year of his reign, g ~ a ~ i t to ~ the d P ~ a i ~ dames iti~ riuary in the njt~th licence, full power &c. that he the said James Watt, his executow, the n gterm of f o u r ~ e ~ i a d m i ~ i ~ ~ & tand o r s assign8 ehould rand lawf~llymight, d ~ ~ r ~ years therein mentioned, use, exercise and vend, throu~hout that part of Great, Britain called Eoglaad, the Dominion of Wales, and Town of Berwick upon Tweed, and also in hia majestga colonies and plantations abroad, his the said James Watts new invented ~ e ~ h of o d~ e s ~ e n i n the g ~ o r ~ s ~ m p of t ~ateam o n and fuel in fire erig~~ies, with the usual provisa for tbe inrolling of the speci~catioti. That Watt did iu ~ u r s u ~ n ofc ~ the e a s ~ e c ~ ~ c a tor ~o descr~pt~on ii of the riature of tbe said i ; ~ v e ~ tto ~~ bet ~ , ~ r ~ v c ia ~ 88 ~ iorolled in the Court of Chancery, which descriptiori was ~ a r t ~ ~ ~ lset a r forth l y in the said a & of [466] ~ ~ I ~ a m e and a t , was as allows, lmy method of 1~sseIiingthe ion of steam, and c o n s e q ~ e ~ t fuel t ~ y in fire engines, oorisists of the following First, that veeeel in which the powers of steam are to be ~ ~ p ~ o y toe d engine, which is called the cylinder in common fire eri~ii~es, and which I call the steam vesBeI, must d ~ r i the r ~ whole ~ time the engine is at work, be kept as hot as the &earn that enters it; first, by irtclosing i t in a case of wood, or arty other t r ~in s~ m i theat elowIy j secoudl~,by s u r r o u n d i i ~it ~ with steam or other ~ ~ e rthat j ~ h t e d budiba; and thirdly, by suffering neither water nor any other substance colder than the steam, to enter or touch i t during that; time. Secondly, in e~igit~ea that WB to be worked wholly or partially by condenaatiori of steam, the steam is to be con den^^ i a z vemela distinct from the steam vessels, or cy~jriders,a i t i ~ o i ~ occ~sior~aliy ~h ~ ~ ~ with them. ~ These ~ vessele i E call ~ condanEers, t and i whilst ~ the en~iries ~ are w ~ k ~ theaa n~, cy~inders ought a t least to be kept as cool as the air it] the t ~ e i ~ h b o u r hood o f the e n g i ~ e sby ~ application of water or other cold bodies, Thirdly, whatever air or sllber e ~ a ~ tvapour ic is not condensed by the cold of the condar~ae~, and may e the working of the etigine, is to #e drawn out of the steam vessels or oouderrsers by means o E pu~ps w r o u ~ h tby the engin~s themselves, or o~herw~se.~ o u r t h ~1 y~ intend in many cases to employ the expanaive force of steam to press on the pistons, or w h ~ ~ may ~ ebe r used iste tea^ of them, in the same manner as the pressure of the employed o n engines. In cases where cold water ~ t ~ o ie u now ~ ~ ~ e in c o ~ ~ fire be had in plenty, the ~ r ~ ~ i may n e s he wrougb~by this force of ataam only, by ging the e h m into the open air after i t has done its office, PifthEy, where I make the steam vessels in form of hollow rlnge round an axis a m ~equired, or drcalrr chaanels, with proper inlets and outlete for the steam, mounted on ~ ~ axle%like i tha wheels % of a ~ water mill ; within them are placed B number of valves, that auffer any body to go round the channel in one direction only. In ve~ae~ are s placed we~ghts, so fitted to G b m as ~ u ~ i r e to l y fill a p a part f their channels, yet re~ideredcapable of moving freely in them, by the Rafter ~ e n ~ i o n ore a~p ~ i f i e ~ ,W e n the steam i s ~ d ~ ~ t in t ethese d inas between these weights and the valves, i t acts equally on both, so as to raise weight to me side of the wheel, ard by the re-actioIi on the valves s ~ ~ e s s i v e I y , [ 4 6 6 ] to give FA circular motion to the wheel, the valves openirig in the direc~ior~ in which the weights are pressed, but not on the con~rary : as tha steam vessel moves round, ilr is a u p ~ ~ i e with ~ l steam from the boiler, aud that which has erf form^ its

aaBL467.

BOWLTON U. BULL

653

office may either be discharged by means of condensers, or into the open air. Sixthly, I intend in some cases to apply a degree of cold not capable of reducing the steam to water, but of contracting it considerably, so that the engines shall be worked by the alternate expansion and contraction of the steam. Lastly, instead of using mater to render the piston or other parts of the engines air and steam tight, I employ oils, wax, resinous bodies, fat of animals, quicksilver, arid other metals iri their fluid state.? And the said James Watt, by a memorandum added to the said apecification, declared, that he did not intend that any thing in the fourth article should be understood to extend to any engine where the water to be raised enters the steam vessel itself, or any other vessel having an open communication with it. I n the fire engine8 referred to i n the said specification, and which were in use prior to the patetit in question, motion was given to the piston by the pressure of the atmosphere acting upon one side of it, while a vacuum or certain degree of exhaustion was produced on the other aide within the steam vessel deriominated the cylinder, by means of the injection of cold water, whereby the steam was condensed ; which operation, prior to the invention of the said James Watt, was always performed in the steam vessel or cylinder itself; when the steam had been condensed, arid the piston had descended, such portions of air and water as remained utider it within the steam vessel or cylinder, were expelled through valves hy the next succeeding steam from the boiler, and that steam counterbalancing the pressure of the atmosphere a t the open end of the cylinder, allowed the piston to rise up with that end of the lover to which it was attached, while tho other end of the lever arid the matters attached thereto descended by reason of their greater comparative weight, and thus the engine was restored to that state i n which i t was previous to the first condensation. The steam was, for this purpose, as occarion required, admitted through a pipe from a distinct vessel called the boiler, where i t was generated, which occasionally communicated with the cy-[467]-linder by meana of a valve, which was opened and shut by the action of the eiigiiie. The injection of cold water was in like manner admitted, as occasion required, into the cylinder through a pipe from another distirict vessel containing cold water, called the injectiou cistern, by means of a cock or valve which was also opened and shut by the action of the engine, arid such pumps as were used in these etigiues were also wrought by the engines themselves. The consttuctiou and use of pumps for drawing out air, elastia vapour, or water from places or vessels where a vacuum or exhaustion was required, wera known and practised before thc obtaining the letters paterit above mentioned, but had not beeri applied to the cylinders or condensers of steam engines. T h e said invention of the said James W a t t was a t t h e time of makiug the aaid letters patent, a new aod a useful iuveation, and the said privilege vested by the said act of parliament in the said James Watt and his assigns, was infringed by the Defendant in the manoer charged upon him b y the declaration, The said specification made by t h e said James Watt, is of itself suffieient t o enable a mechatiic acquainted with the fire engines previously in use, to construct fire engines producing the effect of lessening the conrumptioo of fire atid steam in fire engines, upon the pririciple inveuted by the said James Watt. And the questions for the opinion of the Court were, 1st. Whether the said patent was good in law, and continued hy the act of parliament above mentioned 1 3d. Whether the above speci6cation of the Plaintiff James Watt was in point of law auflicient to support the above patent? Thie ease was twice argued, the first time by Watson, Serjt., for the Plaintiffs, and Le BLanc, Ssrjt., for the Defendant; and the second, by Adair, Serjt., for the Plaintiffs, and Willisms, Serjt., for the Defendant. 00 the part of the Plaintiffs, the substance of the arguments was the following. T h e Plaintiffs have a right to recover damages for the infringement of their patent, which is: lst., both good in law, slid continued by the act 15 Geo. 3, c. 61 ;and 2dly, duly supported by the specification. It is good in law, as being for a newly discovered method of producirig an importaut effect in the use of the old steam engine, and comes withia the provision of the stat. 2 1 Jac. 1, e. 3, S. 6, [468] which protects inventions of this kind from the declaration mentioned in the former part of the statute. By every fair rule of construction, the words workiiig or making any manner oE n e w manufactures," must include the invention of the Plaintiffs. The term manufacture means any thirig made or produced by art, and the method or invention for which

6$4

BOULTON V. BULL

a R. BL 46%

the patent is granted, is to produce an effect by artificial means, b-y which the c o ~ s u ~of ~fuel t i shall ~ he lessened in s t e a ~ - ~ n g i f i e s~ . h e ~ the ~ e word r eth hod be uaed as irt the patent, or engine as in the act for cotitit~u~rig it, the meaiiiii~is obvieff8ly the same, arid the Court will riot deprive the Plaintiffa, the merit arid utility of whose inverition is on all sides admitted, of the benefit of that invention by mere v e r b 1 witioima. [Heath, J. When a mode of doing a thing is referred to so met bin^ permanent^ i t is properly termed an engine ; wheu to something fugitive, a method,] This patent is not expressed in terms new or unusual; almost all the paterits upon record that have been granted to those who have made discoveries or improvemerits in the mechanic art#, being for the method of doing the thing, and not for the thing done. [aeath, 3, Ia there any ~nstance of a patent for a. mere method 13 The patent gra~ited to Dolload for hie improyeme~ttin making the object-gltteses of telescopes was, for a n iriveatian of a iiew method of making t h e object-glasses of refracting te1escopes. So atso, Devid Hartleys patent was for his method of securing buildings from fire. So likew~% are the numerous patents that have been granted for the di~ercritimprovem%nts rrrhicb have been made of late years, in chemistry and medicine (a). The patent, ther6for~, af #be Plaintiffs is good i n law : and i t is also continued by the act 15@eo. 3, That a& exptessly recites the patent, and extends the benefit of it for 25 years to Watt and his aseigns. It was therefore clearly the ~ ~ ~ t e i i t i of o nthe l e ~ i s l ~ t u r that e the patent already granted should be continued, and the Court will construe the act in smh a manner as to effectuate that inteution. With regard to the specification, that is a~ifficientlyexplicit to support the validity of the patent, The improvement made by Watt consists in a discovery, that by letting out the steam from the cylinder into another vessel in order to condense it, [469] instead of a d ~ i t t i n coId ~ water into the cylinder for that purpose, as was done in of steam and ~ e ~ c o ~engine, e a and ~ by keeping the cylinder hot, the cona~~mptiori canrequentJy of fuel would he diminished. The communication between the cylinder a n d the other vessel is formed by means of valvas, which were before in use in ~ e w c o ~ engine, ~ n ~and therefore riot n e c e s s a ~ to ~ be more acerireteiy descr~be(~, and the made of keeping the eyl~nderhot is explicitly stated in the specific&tioIi. There i a no riew mechariical eonstructiou invented by Watt, capable of being the subject of a disthat speoification, but his discovery was of a principle, the method of applying whieh k cliedy aet forth, and therefore ib drawing or model would have been utirsecessary. So in Dollonds patent, (to take one of many iristances) the sp8cification describes the principle, but not the mechanical construction by which it is cariied into effect. It recltw, 6hrt a patent had been granted to him for the invention of a new method of making the object glasses of refracting telescopes, by compounding mediums of different refEaceive qualities, whereby the errors arising from the different refrangibility of light, a8 weEI a@ tboae whicb are produced by the sp~ericalsurfaces of the glasses, were perfectlg ~ r r e c t e d . It then goes on to state, after merit~on~ng the defects of the teleecopes then in use, that in the new telescopes the images of objects were formed by the difference between two contrary refractions, the object-glass being a compound of two or more glasses put close together, whereof one was concave and the other COIIVBX : th& the excess of r e f ~ ~ c t by ~ o which n the image was formed was in the convex ghs, whieh was made of a medium or subtanca in which the difference of r e f r a n ~ i b i ~ i t y wa8 not so great as in the substance of whioh the concave glass was formed ; theretore, ns ~ropor~ione to r~ their difference of refrangihility, there remained their r e f r a c ~ ~ being a difference of refraction by which the image was formed, without any d i f f e r e n ~ of refFan&hility to disturb the vision : and that the radii of the surfaces of each of those glsssee wwe likewise so proportioned, as to make the aberrations which proceeded from h e i r spherical surfaces respectively equal, which being also contrary, destroyed each other. But&ere is no mention of any mechanism, nor does the specification state the degrem af ~ p h e r ~ c or ~ty c u r ~ a t ~ (of r e the coilcave or convex glasses, because it is well known that the curvature of one must be proportioned to that of the other, i n order tr, correat the refrangibility of tbe [4?03 rays of light. It i s also to be observed, that the jury hare found that the specification is sufficient to enable a mechanic acquainted with the fife engines previous~y i n use, to Ganstruct fire engities producing the effect
(a) A great variety of patents of this kind were cited which i t is rtot necRs~aryto repeat, as they all went to the same point.

E .BL 171.

B ~ U L T O N0. BULL

655

of l e s ~ e n i nthe ~ consumpticui of fire and steam upon the prirrciple invented by the ~ l a ~ wa t t ti, ~I t is up011 the whole, t h e r e ~ o r e submitted ~ to the court, that both the in the case must be answered in the aErmative, que~tio~ stated s [Buller, J, The object~o~i to ~ollondspateirt was, that he was not the inventor of the new method of makirig objec~-g~asses, but that Dr. Half. had made the same discovery before him. But i t was holden, that as Dr, Hail had coirfined it to his closet, and &e public were not ~cquaintedwiCh it, Dollond was to be considered 8s the inventor.] 00the part of the Defendant the arguments were the following. This question may be argued on tbree groutrds. 1, On the patent itself. 2. Upon the ao-t 15 @eo, 3, e. 61. 3 . Upon the act arid patetit taken together. Io c o ~ i d e e ~ n the g case upon the patent itself, the patent appears to be void, because it differs from the specific~t~on, the patetit being for a formed i n s t r ~ ~ m e or n t machine, but the s ~ c ~ ~ c afor t iPr~IicipIes o ~ ~ uIiorgan~zed, It is fur a uew inveuted method. Now the word invention, when applied to mechanical subjects, properly signifies something has w ~ i c ~ beeri already formed, some ~ a n u f a c t u r eor rnae~iIie,and is not applicable to mere u n o r g a ~ ~ i ~principles, ed The Plaintiff Watt cannot be said to have invented were in UBB in the old or Newcomens steam-eng~ne. tbe ~iucipleg,for those p r ~ u c ~ ~ )le~ It is true, that the applica~ior~ of those ~ I i n c i ~ ~ ine the s maKiIier descri~edin the is ~pe~~fie~ t inew, o i ~ but it was welt known Iotig before that steam had au expansive power, and was condensed by cold, I t i s in this sense that the word invention i s used in the pateat. I t recites I that W a t t had represented to the king, that he bad after much labour a d expense invented a method of lessening the cousurnption of steam and fuel in ~e-eugirIes, From these words it seems clear that he niearit it to be understoad by the crown, that tbe invention which he represented himself as having ly and nat that he bad merely conceived in his mind the made, wa& c o ~ ~ l e t e formed, er ~C ~ 4 7 t1 ~ l ktiowti ~ r j ~ c i p by ~ e wbich s the corisum~tion of steam and ~ ~ F l ~ ~ of a tc ~ a tn fuel would be fessaned in fire-ertgiues : or the ideas of the principfes before they were orgatliaed could not bave been atteuded with great labour, arid much less with great expeose. That the represent~tionwas u~iderstood i n this sense by the crown, will appear from cot~sideringother parts of the patent itself. The king grauts to W a t t that he ehall 6smake,use, exercise and vend his said inveutioii. In another part ol t h e tent all persons are orbi id den to counterfeit, i m i ~ a t e or resemb[e the same iuvention, and to make or cause to be made any additiou thereto, or subtraction therefrom. ~ , the patent shall not extend to give privilege to I n another part it is p r o ~ d e that Watt to use or exercise any invention or work whatsoever which had theretofore been found out or invented by any other, and publicly used or exercised, but that every other person should use and practise their several ioveutioaa. Now i t is impossible that any of the expressions thus cited from the patent can be applied to the itivention of mere unorgaiiized principles of science. If then the paterit be, which it clearly is, for 8 f u ~ e d ~tistrument or m~chiue,it ia void, be~ause it i~ admitted that there is no s p e ~ ~ ~ t descri~tive iou of auy formed iK~strumentwhatever, uor is there any drawi~ig ot model, But supposiug it to be a patent for mere p r ~ n c ~ (for ~~e the s~ s~ecificat~ states o ~ that it is neither originally gnod in Iaw, nor is iG the invention consists of priiIc~Ples,~ contiIiued by 16 @eo. 3, c. 61. It is not good iu law because it does not fall within the ~ o u ~ t r u c t i oof n the statute 21 Jae. 1, e. 3, upou which & l O n 8 it must, if a t all, be supported. The sixth section of that statute provides, t h a t nothing therein contained shall exhnd to any letters patent, or grarrts of privilege for 14 yews or under, thereafter to tbe made, of the sole working or making of any mauuer of new m~t~ufactures, within this roalm, to the true and first inventora of such manufactures, which others a t the t h e shall not use. The word manuf&cture is descriptive either of the practice of making a thirig by art, or of the thing when made. The irivent~or~ t h e r % f ~ rof e any instrument used in the process of making a thing by art, is a manufacture, arid the s u b j ~ c tof is patent w~thjnthe statute, bemuse such au iri~trurneI~t is itself a thing and t u within re~ made by art. So also medioines may he said to be a species of m ~ n ~ ~ a ~ the provision of the statute, because they consist in the practice of mixing together and makiI~gup by art, the d i ~ e r e n t~ n g r ~ i e I of ~ t which s they {472] are c o ~ p o s e d ~ and are the result of principles organized, ss far as the nature of the thing will admit, The same observation may be made with respect to Dollonds te~eEc~p#s, wbioh are certainly a ~ a ~ i u f a c ~ uand r e , within the statute Jac, I, but they cousist of priI~ciples

656

BOULTON U. BULL

S. BL.4%

rsduced into form and practice as much as the subject will admit, and the patent is for
gtaeses c o m ~ l e t e ~ formed, y not for mere Friric~~ies, and the s p e c ~ ~ ~ t i describes ori the manner in which the invention is to be cstrried into execution with all the perspicuity

d which the thing ie capable. That this is the true meaning of the term ma~ufacture ae it ie used by the legislature, likewise appears from the words making or working being applied to it, arid which others at the time shall not use, and also from the provision that the patentee shall ascertain the nature of his invention, and in what manner the mme is to be performed. The specification is the price which the paterrtee is to pay for the monopoly. I n the construction of specifications it is a rule that the
patentee must describe his invention in such a manner that other artists in the same trade or business may be taught to do the same thing for which the patent i s granted, by following the directions of the specification aloue, without any new invention or addition of their own, and without the experice of trying experiments. 1 Tern %p that i o n mere B. R. 606, Tumzer v. Winter. This necessariig excludes arty s ~ i p ~ o s ~ & p ~ n ~ ~ clm e be 8 the subject of 8 patent. That this is the true oonstruc~ion of the word 5 a n u f ~ c t u r e sin the statute, appears also from Lord Cokes oominentary on it, 3 Inst. 184,who, as appears from the journals o f the House of Commons, was chairman of t h e ~ o ~ ~ itot whom t e ~the bill was referred, and who therefore probably either irtr e the s , statute, is a180 drew OP perused it. This Gonstru~tioriof the word ~ a ~ i L i ~ a c ~ u fortified by the opinion of Mr. J. Yxtes in the coritroversy respecting literary property, 4 Burr. 2361, MiZter v. Tuylor, who there held in illustration of the subject before him, that mew principles, not embodied and reduced into practico, were not the subject of a patent, Until they are so embodied, (to use the simile of that great judge,) they are like the aentinoetits of an author, while in his own mind. I n that state they are alike the property of him or of another. But when once they are published, then, a d no8 before, his exdusive property in them or in the organizatioti of them comT i t i C R a T d ~~~~~g~~~ cas8 too(a) the learned judge before whom it was menaea. I n Sir S tried, etatad i n his sum-[473f-ing up, that for a pririciple alone B patent could not be he gave very ~ o n v i n c i r reasons. i~ And i r ~ d e p ~ f l ~ e of t iauthor~ties, t o ~ ~ ~ nfar e dwbiah , the reaaan of the thing shewe that such a patent could not be obtaitied within t h e meaning of the statuto. By obtaining a patent for priticiples orily, instead of one for the resuB of the application of them, the public is prevented, during the term from i~proyin on ~ those priticiples, and at the end of the term is left i n a state of ignor&~c8 as to the beet, cheapest and most beneficial manner of applying them to the end proposed. It in true indeed that the jury have found, that the specification made by Watt, is of itself sufficient to enable a mechanic acquainted with fire-engines previously in uw, to conrtruct fire-engines, producing the effect of lessening the coiisumptioti of fuel and steam. in fire-e~g~nes, upon the principle invented by Watt. But it is not found that the 8 ~ c j f i ~ t i o would n enable a mechanic to construct Watts fire~eiigines ; nor is it f o w d to what extent the consumption of steam and fuel would be lessened in tire-exkginee constucted upon the PrincipIes stated in the specification ; nor whether those engin8~ would have the effect of Ie~s~riing the c o r I s u ~ p t i o of ~ steam to the 1 1 this is left uncertain. The merit of the same degree with Watts engines. A inventian ntuet be measured by the quantity of fuel which may be saved by it. Now i t is poireible, that agreeable to this finding, a fire-engine might be made, which irrdead would produce the effect of ~essening the cot~su~iptiori of fuel and steam, upon the p r ~ n a i ~ m l e~ ~t i ~ n a ind the specification, but yet such engine might save ody oue bushel of cods or other fuel, where Watts eugine would save a hundred, The tiding of the jury therefore does not mend the case. The specification ought to have denurihed the method by which the machine might be made to save the greeteat quantity of fuel which it was known to be capable of saving, and which i t in fact does save when used hy the iaventor. It is a settled rule of law that if a pbterttee makes the thing for which the patent is granted with cheaper materials, or if he appliea and uees it, in a more advantageous mid useful manner than is described in the specification, t h e patwt is void, because ha does not piit the public i t 1 poseessiori of hisj i n v e n ~ i a or ~ enable ~ them to derive the same benetit that he h~mselfderives from it. 1 Tmm $ep. B. R. 602, ~ ~ v. ~ ? ~ ~ r
~~~~~~

(a) Se8 the printed account of that trial, at the Sittings a t Westminster after Trinity

Term 25 @eo. 3, before Mr. J. Buller.

It i s to be shewi~in the next place, that the patent i s not ~orItj~iued by the act 16 Geo. 3, c. 61. The titla of it is, an act for vestirrg i n James Watt, t h e sole p r o p e ~ t yof certain steam-eng~nes,called fir~-eng~ries~ of his inveiitioi~.~It recites, the t t sole t h a t [4743 the king by his letters patent had given and granted to ~ ~ a

benefit and ~dvantageof making and vending certai31 engines by him invented for ~essenjn~ the c o ~ ~ ~ ~ of ~ steam ~ t i arid o r fuel ~ in ~ r e e r i g i I iwith ~ ~ ~a proviso, that of the nature of the said invention to be Watt shouId cause a particular descrif~ti~ii inrolled, arid that he accordingly had caused a partiaular d e E c ~ i p t ~of ~ r the i nature of the asid engirie to be inrolled. It farther recites, that the said James Watt had employed many years, and a considerable part of his fortune, in making experiments upon s t e ~ ~ ~ e n g i t i e commonly s, called ~ r ~ e i t g i r i ~ but s , on accou?it of the many d ~ ~ c ~ which. l ~ always i e ~ arise in the exec~~tion of such large arid complex machines, he could not complete his irItention before the errd of the year 1194, when he finished some large engines as s p e c i ~ e ~ of~ his s eo~Is~ructiori, and that his engines might be of gretlt u ~ i ~ i t y arid , then e ~ i a c tthat ~ ~ the sole p ~ i v i l e ~of e making, conar~y shall be vested structing and aefling the engines tbereiri before ~ a r t ~ c u ~described, in ~ a tfor t 25 years, and that ha duritig the said term shall make, exercise and vend the said 6 r ~ ~ j ~ i e Now ~ . is i t possible to say, that this act corItit~ues it paterit for mere prjncip~e8? Certainly not. If therefore the patent be really for priticiples, it is not that n g though the act doe5 not describe the c o n t i ~ ~ eby d the act. But s u p ~ ~ s ~ patent a c c o r ~ i r ito ~ the terms of it, yet it does describe it accordirig to its import, namely, a8 a patent for principles; in that case it would not be within the p~,otect~on of tha statute of Jac. 1 for the reasotis already offered. Tbers is a proviso in the tact 15 @eo, 3, that every objection in law competent ~ g a i n s the t said pateat, shalt be c o ~ ~ e t e agair~st ~ i t the act to a l l it~tetits and p ~ r p o s e ~ , eXC8pt 80 far as relate8 to the term thereby granted. Though this therefore is a grant of a ~ ~ n ~ pby o i the y ~ e g i s l a t ~yet ~ e it , is to receive precisel~the same coris~r~ction, as if i t had been a grant by letters patent. Now the grant itself is void, being of the party to whom i t i s made, for it i s a rule of Law, f o u ~ ~ an e d a false su~gestioij that if the kings grant be faundad a falm suggestion of the party to wbom it i s made, it is void ; as If any thing ment~oried iu the coi~s~derat~on of the grant be false, 5C h . 94 a. ~a~~~~~ease. The cons~deration, which is the fout~datio~i of this grant in the wt, is the recital t h a t the king had in January 1765, by his letters patent, granted to Watt for the term of 14 years, the sole beIie~tand advantage ol r n a k j t ~ ~ [4?63 and veriding certain engines, by him invented, for lessening the c o r i s ~ i m ~ )of ~io~~ ateam and fuel, and tbat owing to the reasons which are meritioijed in the reoital, it was probable, that the whole term granted liy the patent would elapse before he could receive any compensation adequate to his labour.; for which reasons the term granted by the patent, i s prolonged, and the act vests in him t h e sole ~ r i v i l e g ~ ofs rnak~~jg, constructjtig, and selling the said engines for 25 years ; that is, the engines, the sole Enakiag atid veiidirig of which the king bad granted by his said letters patent. But it ie admitted, that &e king did riot grant by the patent a monopoly for makitrg and vend in^ any e ~ ~ g i n ewhatever. s The recital there for^, whieh i s the very f o u ~ i d a t ~ o ~ of the grant, is untrue. It has beerr also a d j ~ ~ d ~that e d , if a private act of Par~iametit like the present, be fourided upon a false recital, the act is void: as where an act, of d treason, corifirms the atta~Iider,arid arth her reciting that A, had been a ~ t a i ~ t e enacts that he shall be attair~ted, and forfeit his lands ; the king a f t e ~ ~ a r d grants 8 the in ~ fact e A. r never ; was a t t ~ i ~ i t e or d , if his attai~ider appear on lands of A. to a ~ ~ ~if ~ the face of it, to have bean coram 1101) judice, the act is void, aiid it shall not brr made U98 of a$ an attaitider de novo, ~ o t w ~ t h ~ t a r j d it i ~ confirmed ig the a ~ t a i ~ i d e arid r, expressly enaoted that he should be attainted, hut A. shall take advantage of it by mere plerading without a writ of error, and shall oust the grantee of the king. P l o ~ d .390, Bard of ~ e ~ v. e ~ where ~ it is laid d o m , that statutes which m i ~ - r e ~ i tthings e to which they refer, are void, attd that in the priwipd case, the a ~ ~ which t e rwited that A. v a s a~ta~rited, whair i t 1 fact he was not a t t a i n t ~ d was ~ void, ibid. 400,&c. Another objection to this act 15 Oeo. 3, is that it professes to in an entire ~ ~ c h ~~ Ii ~ oe t~ , ~ ~ ~ h the sta irrven~id~~i~ veet in Watt the exclusive p r o ~ r t y Lion whioh he claims to be his, is admitted to be of an i m p r o ~ e ~ e only n t of a known maehina And upon this point, it is ta be observed, that Lord Coke says, mch a privilege as is e o ~ ~ ~ toolaw, r ~must ~ ~ be t s u b s t a ~ I and t~~ essetitially ~~~ newly iaveuted ; but if the substance was iu esse before and a new addition thereurito, though that
~~~~~~

668

U 0, ~ BULL T O

IBt. E ,418.

addition make the former more ~rofi~able, yet i t is riot a new ~ a ~ i u f a c t uin r e law. 3 h a t . 184. The act ie also defective iti not setting forth any s ~ e c i f i c a t of i~~ a fwrnad j n s t r u ~ e I i t ar rnaehirie ; it i s indeed admitted that tso s w h s p e c ~ ~ c ~ ist ~ t oo i ~ be found, [47@1If the subject be viewed as arising from the patent atrd act takers t o g e t ~ e r , the a r ~ u ~ e which n t ~ have been already used resFectin~those i n ~ t r u ~ e r iseparatel~, ts apply th~mselves more atroiigly, i r ~ a s ~ i u cas h if the act he cons id ere^ as e x ~ l ~ t i a t o r y Of the patern$ or as a part of it, there cannot be a doubt but that i t means to grant a monopoly for a formed engine or machine. Upon the whole therefore of the case, it appetrrs &th@ that the patent is for an errtire formed machilie, when it ought to have t arid in which case the speci~cation does not correspoti~ been for an i ~ p r o v e m e n only, with it, OL-i t is for mere ~ r ~ n c i ~ which, ~ e s , aecorr~irigto the stat. 21 Am. 1, c. 3, cattnot be the subject o f a patent. The auxn of the reply was as f~~iIows.The ~ a t e r { is t ii~ithc for ~ a for~ed iiistrument, nor is the apecificat~oiifor a ~ r i n c i ~ uikorgar~ize~. le The ~ o r ~ t ie s rfor cs a new ~nvened ~6~~~ of Iesseriiri~ the corisum~tioti of steam arid fuel in fire eti~iries,by w b ~ mode ~ ~ thate affect ~ may be p r a ~ ~ e a the ~ :tatiter states both the prixicip~eof the i n v e ~ arid t ~ a180 ~ the mode in whiah i t is to operate, ~iwmdy,the ~ r e s e r v ~the ri~ c~linder bot by the meana [~escribe~l, and the catid~risixigttre steam in separate vessels c ~ ~ u ~with ~ the c cylinder. ~ t i The ~ ~ difference i n the tsrms used iri the patent and the s F e c i ~ ~ t ~ o arises r i , from the iiature of the subject, but the real r ~ e a r i i ~ of ~g them re an improvemant is made upon a machirie already knowti, the i~ patent oughtt not to be or the machine itself, but for the method of i ~ i p r o v i rit. Thua a patent waa granted in I759, to one Wood @for a schenia t o work 5 fire e ~ i ~ i ~ i e , at half the expense of coals, an effect which muat b w e been caused by an afteratiori of the e ~ ~ nyet e ,the p a t e ~ was t for the s ~ ~ e m or e , m e t h ~ d and , riot for the engine ~trjelf, And in the case of an impr~vementir8 making watches, Jessops patent was avoided, b ~ it was s for the ~ whole watcb, when the j t i ~ e r i ~ j o c1 o~ nsis~e of ~otrly one ~ o v e ~ e ! ~But t . notwithstat~~ing this rule, i f iron1 the nature of the thing a patent or i m ~ r o v e ~ eonly ~ i t should have the eEect of giving a right to for the new ~ e t h c d the whok~ machine, that k i not of itself if groutid on which tbe patent cat&be set aside. the r i , juclgea thus delivered their ~ e s p ~ c t i opitrions. ve On this day, after c ~ n 8 i d e r ~ t i ~ 4771 ROOKE J., after stating the s p ~ c ~ case a l at length, thus proceeded. From this stste of the case, and from the admi8~ion of counsel ori both sides, I assume the ~01~ow ~acts, ~n~ viz. that the ~ i ~ i ~ Watt i t ii s~ the iriventor of a new and u s e ~ ~ i improvement in fire engines, whereby the consumption of steam, and cousequentlg of fuel i a cons~derablyIeesetied: that the i~npr~vemerit is of such a oature that i t Eggally be the object of p r o t e c t ~ oby ~ royal patent: that 81 paterit has been ~ o the r , conditio1; of a speci~catio~i of the nature of the grs~itedto the ~ n y e ~ ~ on inyent~o~ that : a a p ~ ~ ~ f i c a t ihas o n beeu made, s u ~ c i e n tto eiiable ; I mecha~i~c to coufftruct fire erigines coIitainiri~the improvement invented by the pateritw : arid that the ~ e ~ i s ~ & tsix u r years e after tits patent had beer3 grarite~, t ~ o ~ proper ~ h t to ex.ttmd the d ~ r ~ t i o ofnit from the eight years tberi to come, to twetity-~ve years, tbe ben ~ r a n ~ in e dthe ninth, and the s t ~ t u t e havittg passed in the f i f t e ~ ~ t ~ patent h ~ v i n g year af the presen~ king. Under Lhpse e ~ r c ~ m s ~ n cfe think s, I con for^ to the spirit of the st&, 21 Jac. I, C. 3, 8. Gf if 11 iocliiie to support this paterit, p r o ~ ~ it (~ may e ~be si~pport8d without vio~trtirig any rule of law : atid I think sa for two reasons, first, because the p ~ t e ~ i ~ e e iu s ~ b s ~ n j~ n tai ~ ~~ y eto d the ~ r o t e c t i oof ~ the p ~ t ~ nand , s ~ c o r because ~ ~ l ~ the p u b h are sufficieatly instructed, i t i d will bc duly benefited by the specificatio~. Against the claim of the patentee certain objections have been made, which, ie is c o n ~ n d deprive ~ ~ , him of all legal light to that protection. First, it is objected that t h e p&ent is not for fire erigiK~es upon the particular cotis~ruc~iori which coritaius e I ~for t , a xiew i t i ~ e r i t e~ ~e t h ~ of d lesseiiir~g the cor~sumption this new ~ ~ ~ o v e m but of steam and fuel : s e e o ~ i ~it ~ yis , objected, that no particuhr engine is described i t & this s ~ e e ~ ~ tbut ~ othat n , it only sets forth the peirici~les : arid the last o h j e ~ ~ ~ is,o n that tha itatate has riot duly pro~ongedthe patent, because the patent is for a ~ e ~ h ~ d , and the etstute for an engine. It is obvious that these o ~ j e c t ~ o tare i s aterely formal : they do not affect the substantial merits of the patentee, fiar the rneritorious corrsidetatiea whiob the public have a right to receive, in returrr for the protectiox~which the claims. With regard to the first objectioIi, it is that the patent is not for apatsnt~e

a E.BL. 478.

BOULTON U. BULL

659

fire engine of a particular construction, but for a new invented 14783 method. It presulposes the existence of the fire engine, and gives a monopoly to the patentee o f his new invented method of leeseiiing the consumptioti of steam and fuel in fire engines. The obvious meaning of those words is, that he has made an improvement in the constructior~ of fire ettgines, for what does method mean but mode or manner of effecting'? What method can there be of saving steam or fuel in engines, but by some variatiori i n the coristr~~ction of them? A new invented method therefore conveys to my understaiiding the idea of a new mode of constructjo~' f think those words are tarItamo~intto fire engines of a newly invented construction; a t least I think they will bear this meaning if they do not necessarily exclude every other. The speoific~tion shews that this was the meaning of the words as understood-by the patentee, for he has specified a new and particular fire engines. If he has so uri~erstoodthe words, and they will mode of const~uctit~g bear this interpretation, then I think this objection, which is merely verbal, is answered. To which I add, that patents for a method or art of doing particular things have been so numerous, according to the lists left with us, that method may be musidered as a common expression in i[~strumentsof this kitrd. It would therefore be extremely injurious to the interests of patentees, to allow this verbal objection to prevail. As to the second Objection, that no partjcuiar engine is described, that no model or drawing is set forth, I hold this riot to be necessary, provided the patentee SO describes the improvement as to enable artists to adopt i t when his monopoly expires. The jury find that he has so described it. I t is objected, that he professes to set forth principles only ; but we are not bound by what he professes to do, but by what he has really done, I f he had professed to set forth a full specification of his improvement, arid had not set it forth intelligibly, his speci~catioriwould have beerr insufficient, and his patent void. It seems therefore but reasotiable, that if he sets his specificatioii should be s i i p ~ o ~ tthough e ~ , he forth his imp~ovemeIit~I~teIligibly, professes only to set forth the principle. The term priuciple is equivocal ; it may denote either the radical e l e ~ 8 n t a r y truths of a science, or those coriseriuetitial axioms which are founded on radical truths, but which are used as fundamental truths by those who do not find it expedient to have recourse to first pririciples. The radical principles on which all steam engines are founded, E4791 are the natural properties of steam, its expansiveiiess and condens~bility, Whether the machiric~are formed in one shape or another, whether the cylinder is kept hot or suffered to cool, whether the steam is coKiderIsed in one vessel or another, stilt the radical principles are the same. When the present patentee set his inventive faculties to work, he found fire engines already in existence, and the natural qualities of steam already known and mechauioaily used. He only invented an improvement in the mechanism, by which they might be employed to greater advatit~gc. There is no ncwly discovered natural prinaiple as to steam, nor any new meehariical principle in his niachine; the only i n ~ n t ~ o is r i a new mechanical empIoymerit of princip~es already known. As to the specification, some part of it, so much as represents the futnre intentions of the patentee, may be considered, according t o the language of the specification, 8s merely theoretical ; but the greater part desoribes a practical use of improved mechanism, th3 basis on which the improvement is founded. The object of the patentee was to condense the steam without cooling the cylinder : the mean8 adopted to effectuate this were to enclose the cylinder in a case which will confirm the heat or transmit it slowly, to surround it with steam or other heated bodies, and to suffer neither water nor any 0 t h ~ubsta~ic colder e than the steam, to enter or touch it during that time. These means are set forth. The objection is, that there is 110 drawing or model of a particular engine; and where is the necessity of such drawing or model, if the specifioation is intelligible without i t ? Had a drawing or model been made, atid any man copied the improvemeiit, and made a machine in a different form, no doubt this would have been an ihfringement of the patent. Why Because the mechanical improvement would have been iutroduce~ itito the machine, though the form was varied. It follows from thence, that the mechanical improvement, and not the form of the machine, is the object of the patent j and if this mec~anicalimprovement is intelligibly specified, of which a jury must be the judges, whether the p3tentee call i t a principle, invention, or method, or by whatever other appellation, we are not bound to consider his terms, but the real nature of his improvement, and the description he has given of it, and we may I think protect him without violatirig any rule of law. As to the articles of the specification which denote intention only, and do riot state the thing to which

660

BOOLTON

ZI.

BULL

aE .EL,IBO.

~ a ~ r ~an t action a j ~ for breach of these articles; for he canrrot atiticipate the protection, before he is e~ititIedto i t by praotical ~ c o m p l j s ~ m ~But ~ t . the patent is for a method already adopted, and the t m frmt and most material articles are set forth as already accom~)lished, and the eaae slstee it was new artcl useful a t the time of making the patent, I therefore caneider the most essential part of the patent, the keeping the cylinder hot, inclosing it io a esse, and eurrouridirig i t with steam, as c a r l i d into practical effect at the time of grantjng the patent ; this the Defendant has infringed ; and I will presuutne after verdict, where tromiriat damages only are given, that the evidence was applied to, and the damages given for those articles otdy which are well specified. Now if he has afn'rtged thosa articltes which are well s p e c ~ f i e ~ he , shall not be excused from ati ctiori, beeause he has been guilty of an additional infringement on that which is s~eci~a as d matter of inteIitiori only. As to the objectiort of the want of a drawing or model, that a t firat struck me aa of great weight. I thought i t would be difficult to of a ~ e t h o ( iif , there was no a ~ ~ ~ i t j o r rep~eser~taial a~ertain what was an ~~iririgemeIit tion of the improvement, or thing niethodi~cd. But I have satisfied my mind thus : iI~~iig$rne or n~ not, is LL question for the jury ; i n order to decide this case, they mat ~ n ~ e r s t a r the i d nature ol thc i m p r o v e ~ e ~ or i t thing ~ t i ~ r i ~ ; iif~they e ( ~can understand it without a model, I am not aware of any rule of law which requires a model oc a drawing to be set forth, or which makes void an iritell~~ibl0 sp~cificatiori of a mechanical improvement, merely because no drawing or model is annexed. I n the preoent case, I do not hear that the want of a drawing or a model occasioned any difficulty to the jury; they have expresaly decided that Mr. Watt has the merit of a new and an useful invetit~on~ and that this it~ve~Itioti was infringed by the Defenr ti ~for ~ the w a t t of a dant. How then can I say, that they could ttot ~ i t ~ d e r s t a i drawing? Especially when they have added, that the specification is suficient to with the fire-engiues previously in use, to c o t ~ s t r ~fire~ct enable a mechanic acq~~aiIited etrginee producing the effect of lessening the consumption of fuel aiid steam, upon by the p ~ n o i p l e jnv~tite ~ the Plaintiff, For these reasons I think the second objectior~, tha8 no particular erigine is set forth, is irot of sufficient weight to destroy the effect 3 F the p t e n k &81] HEATH J, This patent is e~pi~essly for a new inyetited ~ e t h o for ( ~i ~ ~ e r ~ i i ~ g ha consumptian of steam and fuel iri fire-eugines. It appears that the inventioti of the patentee ia original, and may be the subject of a patclit; but the queatiori is, in8SmuCh as this invetition is to Le put in practice by mearis of machinery, whether arid whetber this is such the ~a~~~ought not to have been for one or more nlachi~tes, a epecification as entitles him to the monopoly of a method? If method and machinery would had been used by the ~ t 0 n t e ss e convertible terms, and the samu conseq~eiIces result from both, it might be too strong to say, that the inveiitor should lose the of his term. In trrith i t i s not so. His benefit of his patent, by the misappliea~~on cwnsel have conteiided for the exclusive monopoly of a method of lesse~~irig the c~su~ptia ofnsteam and fuel in fire-engirtes, and that therefore would better answer the p u r p ~ of ~ sthe patentee, or the method icl a p~it~ciple reduced to practice ; it is in the present instance the geueral applicatiart of a principle to aa old machitie. There :B no doubt that the patentee might have obtained a patent for his machinery, because the act of p ~ r t i a her ~ eobtained ~ ~ ackrIow~edgedhia patent, arid he h ~ ~ a in e ~1182 f procured a patent for his invention of certain new improvemertts upon steam and fire engines for raising water &c., which cotitained new pieces of mechatiis~,appl~cahle to the same, Upon this statement the foltowing objections arise to the patent, which I cannot answer : tiamely that if there may be two different species of patents, the one for at1 sppliicatiou of a principle to an old machiue, arid the other for a specific tnachirie, o m must he good and the other bad, The patent that admits the most lax interpretation s h d d be bad, and the other alone conformable to the rules and principles of camman iaw, and to the statute on which patents are founded. Thestatute 21 Jao. 1 prohibita all monopolies, reservirig to the king by ao express proviso so much of his ancient ~ r ~ ~ a t asi shitil ~ e enable , him to grant letters patent and grsnts of privilege, for the term of ourt tee^ years or ander, of the sole workjtig or making of any m~nRer of new mnufactures within this realm, to the true and fir& invetitor and invetitore of such maiiufactures. What then falls within the scope of the proviso? Such manuthe second faetures are reducible to two classes. The first class includes machitIer~, [@a] substances (such as medicines) fotmetl by chemical arid other prooesses, where

[480J it ie 40 be applied, I do riot think be could

PE .U. 48%

BOULTON W. BULL

661

the veridible substance is the thing produced, and that which operates preserve% no permanent form, I n the first class the machirie, and i n the second the substance produced, is the subject of the patent. I approve of the term manufacture in the statute, because it precludes all nice refinements ; it gives ua to understand the reason of the proviso that it was iritroduced for the heoefit of trade. That which is the eobjecb of B patent, ought to be specified, and it ought to be that which is vendible, otherwise i t cannot be a marufacture. This is a new species of manufacture, and the novelty of the language is sufficient to excite alarm. I t has beeii urged that other patent6 have been litigated and established ; for instance Dollonda, which was for a refracting telescope. I conaider that as substtrotially an improved machine. A patent for an improvement of a refracting telescope, and a patent for an improved refracting telescope, are in substance the same. The same specification would serve for both patents, the new organization of parts is the same i n both. I asked in the argument for an instance of a patent for a method, arid none such could be produced. I was then presad with patents for chemical processes, many of which are for a method, hut that is from an inaccuracy of expression, because the patent in truth is for a vendible substance. To pursue this train of reasoning still further, I shall corisider how far the arguments in support of this patent will apply to the inveiition of original machitierg founded on a new principle. The steam engiiie furnishes an instance. The Marquis of Worcester discovered in the last century, the expansive force of steam, and first applied it to machinery. As the original inventor he was clearly entitkd to a patent. Would the pakerrt have been good applied to all machinery, or to the machines which be had discovered? The patent decides the question. I t must be for the vendible matter, arid not for the principle. Another objection may be urged against the paterit, upon the application of the principle to an old machine, wbich is, that whatever machinery may be hereafter imwited would be an inftingement of the patent, if it be founded on the same principle. If this were 80 it would reverse the clearest positiotis of law respecting pabents for machinery, by which it has been always holden, that the orgariization of a machine may be the subject of a patent, but principles cannot. If the argument for the patentee were [a31 correct, it would follow, that where a patent was obtained for the principle, the organization would he of no consequence. Therefore the patent for the application of the principle must be as bad as the patent for the principle itself. It hsa b e n urged for the patentce, that he could iiot specify all the cases, to which hi8 machinery could be applied. The answer seems obvious, that what he cannot specify, be has not invented. The finding of the jury that steam engines may be made upon the principle stated by the patentee, by a mechanic acquaioted with the fire-engines previoudy in use, is not conclusive. This patent extends t o all machinery that may be made on this principle, so that he has trrken a patent for more thati he has specified ; ancl a8 the subject of his patent is an eritire thitig, the warit of a full specification is a breach of bhe conditioris, and avoids the paterit. Indeed i t seemsimpossible so specify a principle, and ita application to all cases, which furnishes an argument that it cannot be the subject of a patent. It haE been usual to examine the specification, as a condition on which the patent was granted. I shall now consider it in ariotber point of view. It is a clear principte of law that t h e subject of every grant must be certain. The usual mode has been for t h e patentee to describe the subject of i t by the specification ; the patent and the specification must contaiu a full descriptiom. Then in this, as in most other cases, the patent would be void for the uncertain description of the thirig granted, if it were not aided by the statute. The grant of a method is riot good, becauae uncertain, the specification of a method or the application of principle i s equally so, for the ceaotis I have alleged. BULLER, J. Few men posaess moreingerruity, or have greater merit with the public, than the Plaintiffs on this record ; arid if their paterit can be austairied i t i point of law, no man ought to eiivy them the profits arrd advantages arising from it. Even if it cannot be supported, no man ought to envy them the profits which they have received ; because the world has undoubtedly derived great advantages from their irigenuity. We are called upon to deliver our opinions on the dry question of law, whether upon dieclosed to us, this patent can or cannot be sustaitied. Arid I shall deliver the C B B ~ my opiniou first upon the case itself, and eecoridlg on the arguments which have been urged at tbe bar. [484] The case states the Plaintiffs patent, the specification, and the act of parliament. I t gives it description of the old engine, and then statea that the invention

6;m

BOULTON

U.

BULL

E .B L 480.

of the Plaintiffa is a new and uaeful one, and that the specification is sufficient to enable a mechanic to construct fire-engines, producing the effect of lessening the consumption of fuel and steam in fire-engines, upon the principle iiiveiited by Mr. Watt. One objection made by the Defendant was, that i t did riot appear on the case, that a

mechanic could, from the specification, mnstxuct an engirie which should lessen the f fuel aud steam, with equal effect, or to the same extent as Mr. W a t t coMeumption o himsel d i d If the negative appeared, viz that a mechanic could not from the epesificatiou make an engiue with equal effect, or if it required expense aiid experiments before it could be done, I agree that either of those facts would avoid the patent. But that is not so stated ; arid upon this case I thiuk we are bound to say there is no foundation for either of thase objections. There is ariother objection to tha w e , which I think more important, and that is, that the jury have not told us wherein the invention consists, whether i t be i u an additional cylinder, or other vesrel to the old machine, or what the addition is, or whether it be only in the spplication cif the old parts of the machine, or in what is called a t the bar, the principle only, or in what that principle corisists. These defects have opened a great field of argument, and have driven the Plaintiffs couusel to t h e iiecessitg of endeavouring to supporb his case on all possible grounds. The old engine consisted of a cylinder, a boiler, a pipe which occasionally comniunicated between them, an iujection cistern, and pumpr. The two material parts of the new engine, as meritioiied in the specification, are the old cylinder, now called the steam vessel, arid the vessel iiow called the condenser, which it is said must be distinct from the steam vessel, though occasionally communicating with it. The old boiler did occasioually communicate with the cylinder. The pumps, grease and other thirigs are admitted to be trifling circumstanceq a d not worthy any observatiou. Upon this state of the case, I cannot Bay that them is any thing substaritially iiew in t h e manufacture; arid indeed i t was expready admitted 011 the argument, that there were no new particulars in the mechaaiom : that i t was not a machine or instrument which the [485] Plaintiffs had invent&: that mechanism was not pretended to be iuventecl iri atig of its parts : that this engine daes consist of all the same parts as the old engine : and that the particular mechsBiem ie nob necessary to be considered. The fact of there beiug nothiug new iit the engine drove the counsel to argue on very wide grounds, and to touch on the posribility of maintaining a patent for an idea or a principle, though I think i t was admitted &hat a patent could not be sustained for an idea or a principle alone. The very statement of what a principle is, proves it riot to be a ground for a patent. It is the first ground and rule for arts and sciences, or in other words the elemente snd rudiments of them. A prrteut must be for some uew production finm thore elemanta, and not for the elemerits themselves. The Plaintiffu case is considerably distressed in many parts of it, and as it seems to me, the arguments which have been adduced were very much calculated to keep clear of difficulties, which the caunsel fomsarv might be introduced into the case ; as first, that unless the principle can be mpported as the ground of the patent, there may be some daiiger of cortfirming the Defendants objection to it : secoridly, that uuless the principle can be supported, it may apen a fatal objection to the Specification, because that does not state in what manner t h e new machine is tu be constructed, how it varies from the old one, or in what way the improvements are to he added : or thirdly, because the patent embraces the whole principle, and is fouiided on that alone; but the inveirtion is taken to cantiet of art improvement or addition only. Ariother objection may arise both to tbe patent and specification, viz. that the pateut is granted for the whole engine, and not for the addition or improvement only. Perhaps it may be convenient and judicious b keep these objections as much as poasible i n the back ground, and out of the view of the court. But it is our duty to sift arid dive iuto the facts and circumstances of the case, and the bearings and consequences of them, as far as our abilitiaa or knowledge of the subject will admit. There is one short observation arising on this part of the case, which seema to me to be unanswerable, aud that is, that if the principle alone be the foundation of the patent, i t canriot possibly stand, with that kirowlsdge and discovery which the world were in possession of before. T h e effact, the power, and the operatioii of steam were known long [486] before the date of this patent; all machines which are worked by steam are worked on the same principla The principle was known before, and therefore if the principle alone be the foundatiou of the patent, though the addition tnay be a great iniprovement, (as

PR

EL.481.

BOULTON tl. BULL

663

it certainly is,) yet the patent must be void ab initio. But then it was said, that though an idea or a priticiple alone would not support the patent, yet that an id@ reduced into practice, or a practical application of a principle was a good foundation for a patent, aud was the present case. The mere application or mode of usirig a thing, was admitted in the reply riot to be a sufficient ground (a) ; for on the court putting the queetion, whether if a man by acience were to devise the means of making a double use of a thing known before, he could have a patent for that, it was rightly and eaudidly admitted that he could not. The method and the mode of doing a thing are the same: and I think i t impossible to support a patent for a method only, witbout having carried i t into effect and produced some new substance. But here it is necessary to iuquire, what is meant by a principle reduced into practice. It cat1 only mean a practice founded on principle, and that practice is the thing done or made, or itr other words the manufacture which is invetited, This brings us to the true foundatioti of all patents, which muat be the manufact~re itself; and so says the s t ~ t u t e 21 Jac, 1, c, 3. All m o ~ ~ ~ ~ o except l i e e those which ~ that statute, are declared to be illegal arid void; they were so at are ~ I I o wby common law, and the sixth section excepts only those of the sole working or making any manner o E new maaufacture : and whether the manufacture be with or without principle, produced by accident or by art, i s immaterial. Unless this patent can be supported for the manufacture, it cannot be supported at all. I am of opiniori that the patent is granted for the manufacture, and I agree with my Brother Atlair that verbal criticisms ought not to avail, but that pririciple in the patent and engirie in t h e act of parliameut mean and are the same thing. Besides, the declaration is foutidod on a right to the engine, and tberefortl, uiiless the Plaintiffs can miike out their right to that exteiit, they must fail. I n most of the instances of the different patents meationed by my Brother Adair, the patents were for the manufacture, artd the specificatioti rightly stated E 4 8 7 1 the method by which the manufacture was made: hut none of them go the length of proving, that a method of doing a thing without the thing being done or actually reduced into practice, is a good foundation for a patent. Wben the thing is done or p~odtlced,then i t becomes the manu~acture which is the proper subject of a patent. Dollonds patent was for object-glasses, and the specification properly stated the method of making those glasses. And as I mentioned in the course of the argument, the point contested in that case was, whether Dollond or Hall was the first and true inventor withiu the meaning of the statute, Hall having first made the discovery in his own closet, but never made it public; arid on that ground, Dollonds patent was confirmed. Mechanical and chemical discoveries all come within the description of manufactures : and i t is 110 objectiou to either of them that the articles of which they are composed were known and were ia u8e before, provided the compound article which is the object of the iwention, is new. But then the patent must be for the specific compound, arid riot for all the articles or ingredients of whioh i t is made. The first inventor of a fireengine could never bave supported a patent for the Riethod arid principle of using imn. Nor could Dr. Jsmes (suppositig his patent had been clear of other objections) ZL patertt for the method and principle of using antit~Iony, In the first have su~tained case, the patent must have been for the fire-eri$ine~eo nomine; and in the second, for the speoific compound powder. Suppose the world were better ir8formed than i t is, how to prepare Dr. Jamess fever powder, aud an ingenious physician should find out that it was a specific cure for a consumption, if giveu in particular quantities ; could he have a patent for the sole use o f Jameaa powder in consumptions or to be given in particular quantities? I think it muse be coilceded that such a patent would be void ; and get the use of the medicine would be IIW, and the effect of it as materially different from what is now kuown, as life is from death. So in the case of a late discovery, which as far as experience has hitherto gone, is said to have proved eEcaciaus, that of the medicinal properties of arsenic in curing agues, could a patent be supportal for the sole use of arsenic in aguish complaints! The medicine is the ~ ~ n ~ f ~ and t u the ~ only e , object of a patent, and a8 the medicine is not new, any patent for it, or for the use of it, would be void. The case of water tabbies which has often been mentioned in W e s t ~ i ~ n t4881 s ~ r Hall, may afford some ~11ust~atioIi of
(a) By an error of the press, this question arid the admission in answer to it are omitted in the statemeut of the reply.

68 4

BOULTON W. BULL

H .BL 489.

this subject. That invention firat owed ita rise to the accident of a mans spitting on a flow cloth, which changed its colour, from whence he reasoned oti the effect of intermixingwater with oils or colours, and found out how to make water tabbies, and had his pstsnt for water tabbies only. But if he could have had a patent for the principle 01 intermixing water with oil or coloura, no man could have had a pateut for any distinct mwlrfactura, produced on the same principle. Suppose painted floor cloths tu be prcdaced on the same principle, yet as the floor cloth and the tabby are distinct substpnaes, calculated for distinct purposes, and were unknown to the world before, a patent far one would be no objection to a patent for another. The true question in this case is, whether the Plaintiffs paterit can be supported for the mgine? I have already said I consider it as grarited for the engine, and if thab be the right construction of the patent, that alone lays all the arguments about ideas and principles out of the case. The objections to this paterit, as a patent for are two: first, that the fire-engine was known before: and secondly, the e+ie, though the Plainkiffs invention consisted only of an improvement of the old machine he has taken the patent for the whole machine, and riot for the improvemetit alone. As to the tirst, the fact which the Plaintiffs couiisel were forced to admit, atid did repeatedly admit in the terms which I mentioned, viz. that there was nothing new in the machine, is decisive against the patent. And the second objection is equally fatal. That a patent for an addition or improvement may be maintained, is a point which has neaef Been directly decided ; and Bircots case, 3 Inst. 184, is ati express authority again& it, which case was decided in the Exchequer Chamber. What were the parbiculw facts of that case we are not informed, and there seems to me to be more q u a i n t m s than solidity in the reason assigned, which is, that it was to put but a new butlon to rrn old coat, and it is much easier to acid than to invent. If the button were new, I do not feel the weight of the ohjection that the coat on which the button w m to Be p t , was old. But i n truth arts and sciences a t that period were at no low an ebb, in comparison with that point to which they have been sirice advanced, and the e 5 d 8nd utility of improvements so little known, that I do not think that case ought t o preohda the question. In later [489] times, whenever the point has arisen, the inclinaeion of the court has been in favour of the patent for the improvement, and the pa&ies have acquiesced, where the objection might have been brought directly befare &a court. In NmaS v. Brnnson which was tried a t the sittings after Easter term 1776,tbe patent was for making oilet holes or net work i n silk, thread, cotton, or worrtad; and the Defendaut objected that it was not a new invention, it being only an addition to the old stocking frame. Lord Mansfield said after one of the former trids on this patent, I received a very sensible letter from one of the gentlemen who wan upon the jury, on the subject whether on principles of public policy, there coukl be a patent for an addition only. I paid great attention to it, and mentioned i t ta all thhe judges. If the general point of law, viz. that there cau be no patent for aa addition, be with the Defertdant, that is open upon t h e record, and he may move in arrart of judgment. But that objection would go to repeal almost every patgnt that-war ever granted. There waa a verdict for the Plaintiffs with 5001. damages, and no motion wa8 made in arrest of judgmenti Though his Lordsbip did not mention what wew the opinions of the judges, or give any direct opiriion himself, yet we may safe$ colleet that he thought on great consideration, the patent was good, and the Defendants mlmssl, though they had made the objection at the trial, did not afterwards peraiit i n it. Siiice that time, it has been the generally received opinion in Westminster Hall, that a patent for an addition is good. But then it must be for the dditicm anly, and not for the old machiue too. I n Jessops ease, as quoted by my Brothee Adair, the patent was held to be void because it extended to the whole watch, an& the invention was of a particular movement only. It was admitted in the reply, that the patent should be applied to the invetition itself: but it was contended, that if incensequence the patent gave a right to the whole engine, that would be no objatien. To this I answer, that if the patent be corifiiied to the invention, i t can give n o right to the engine, or to any thing beyond the invention itself. Where a patent ia takbn for an improvement only, the public have a right to purchase that impEcwmentI by itself, without being incumberd with other things. A fireengine of any caieiderable size, I take it, would cost about 12001. and suppoae the alteration made by the Plaintiff, with a fair allowaiice for profit would [490] cost 50 or 1001. is i t to be maintained, that all the persons who already have fire-engines must be at the

E .BL Q9S.

BOULTON 2. BULL

66 5

expence of birying new ones from the Pl~intiffs, or be excluded from the use of the improvement? So in the case of the watch, may riot other persons in the trade buy the new movement, and work it up in watches made by themselves? Where men have neither fire-eIigiI~esnor watchee, it is highly probable that they will go to the inventor o f the last and beat improvements for the whole machine ; and if they do, it ia an ~ ~ ~which ~ the t in vet^^^ a ~ gets e from the optioIt of maitki?td, arid not from any exclusive right or monopoly vested in him. But; here the Piaintiffs claim the right to the whole machine. To that extent their right cannot be s~stained,and therefore I am of opiriion that there ought t o be judgment for the Defendant. LORDCHIEBJUSTICE EYRE. Upori this case two questions are reservad for the opinion of %becourt ; the first, whether the patent is good in law, and corjtifiue~ by the act of p ~ r I i a a e n t mentioned in the case; the second, whether the speoifioation I t support the p a t e ~ ~ t As ? I take it, the slated in &e ease i s in point of Iaw s u ~ c i ~ rto facts of the case are stated with a view fa the application of them to these questions, and not to m y other question which may be tbortght to arise upori them. Perhaps inched, if the court saw that another material question might arise out of these facts which had escaped the attention of the court and jury a t Nisi Prius, they might direct the case to be amended or a new trial to be had in order to irttr~duce it. These two questions were thus stated in order to bring before the court the points of law insisted ou upon the part o f the D 6 f e ~ ~ a r i and t , also to give an op~ortutri~y for consjdering a doubt which occurred to me upon my first view of the case at ths trial, which was, whether a patent right could attach upon any thing not organi~ed,arid capable of precise specificatioti. As these two questionr are framed, there are three points for khe consideration of the court. Ejrst, whether the patent was i t i ita original creation good or bad? Secoodly, taking i t to be good, whether i t was co~titiuedby the act of P a r I j ~ m e n ~ Arid ~ thirdly, taking it to be good in its original creation, arid to have been continued by the act of parI~amer~t, suhject to an objectior~for the want of a specifieation, whether there has been a suleierrt specification? Though E4911 we have had many cases upon pateIIts yet I thiuk we arc) here upon grourtd which is *yet untroddan, at least was utitrodden till this cause was iustituted, arid till the discussions Were entemd into which we have heard a t the bar, and now from the court. Patent rights are 110 wbere that 1 can find accurately discussed i n our books. Sir Edward Coke discourses largely, and sometimes not quite intelIigibly, upon monopolies, in his 3 Inst. 181. But he de& very much in generals, and says ohapter of moIio~oIi~s, little or nothing of patent rights, as opposed to monopolies. He refers priticipsllY to his own report of the case of monopo~iea. 11 Co. 86 b, ; he also ~ ~ I ~ ~ ~ aO resoiuI i B tion of all the judges in 2 CPC 3 Elis. froni a ME. of Dyer, condemning a grarrt to the corporatioii of Southampton by Phillip arid Mary, for the sole right of importing malmsey wine, arid that tio malrnsey witre should be landed at any other place, upon pain ta pay treble customs. W8 also meiitions Bircots case in the Exchequer Chamber, 15 Eh.for a privilege cotice~rt~~ig the preparing a i d ~ ~ e l t i of I ~lead g ore, but he states no particulars; arid the principle on which that case was determined has been, as my Brother Buller ohwrves, not adhered to; namely, that an a d ~ i t i o rtQ ~ a mar~ufactu~e crrtinot be the auhject of a patent. There is also a case in Godbolt (U), atid there are a few others condemriing particular patetits, which were beyond all doubt mere ~oriopo~ie$. The rnodertr cases have ebieflg turned uport the s~)ecificat~oi~s, whet~er there was a fair disclosure. Such was the case of !liw?zw v. f#*i&~, 1 Term Rep. B. 11. 60%. The case of ~ ~ g e ~ v.e ~~~~~~, ? ~ r ~ 2 Salk, 447, is almost the only etwe f JHC. 1, that is to be foutid. upon the paterit right, under t h e savirtg of the statute o practisec~beyortd sea, That gage e~tablishes,that the first, intToducer of an iriveI~~ior1 shalS be deemed the first iriveritor : arid i t is there said, the act intended to encourage new devices useful to the kingdom ; and whether acquired by travel or study it is the same thing. Derivirig so little assi8tarice frurn our books, let us resort to the statute itself, 21 Jac. 1, c. 3. We shall there firid a monopoly defined to be t h e privilege of the sole buying, se1hg, m ~ k i K i ~ work , in^ or using arty thing within this realm ; and thia i s generally condemried as contrary to the fundarnetital law of the land, But the 5th atid 6th sections of that statute save letters patertt, and grants of privileges of tbe [492] sole workiug or making of any manner of new manufacture within

666

BOULTON

U.

BULL

a E.3b 493.

thb r d m , 80 the firat and true inventor or invetitors of such mat~ufacturea,with this qualiffcotma, I so they be not contrary to the law, nor mischievous to the state, in
libwe t ~ F e ~ ~ e: $ first, ~ ~U c by ~ raising s the prices of commod~ties a t home ; ~ecotidly, by h h g hurtful to trade j or, thirdly, by being r g generally iiiconvetiient. Accordirtg to &e lb6t;er of the rtatute, the saving goes only to the sole workit~g and making; the sale buying, selling and uaing, rettutiu under the general prohibition ; and with for the exclusive privilege of buying, sailing and a p r e n t goad rewon for so remaiti~ng~ using, could hardly be brought within the q ~ a ~ i f i ~ of tia not i ~being contrary to law, and m~ch~euaue ta the state, in the respects which I have mentioned. 1 observe also, that a c ~ o r d i ~the ~ t letter o of the statute, the words $any manner of iiew manufacture in the saving, fsfi very short of the words any thirrgiri the first section. But most cevtainly eihe e ~ t i o of n the % ~ t u t % as,tar as usage will expound it, has goxie very much ~ e ~ ~ n the latw. I n the oase in Salkeld, the words ifnew devices are substituted and used as ~ y ~ ~ n with ~ ~ the o u words s new m ~ ~ u f ~ c t u r eIt . was admitted in the argument at the bar, that the word ~ m a I i u f a c t u ~ in e ~the ~ statute was of extensive sigjaifiertion, that i t applied not only to things made, but to the practice of making, to p ~ u c ~carried ~ i e ~ into practice i n a new ~ a n r ~ eto r , new resalts of priIiciple~carried i n h Factice, Let us pursue this admission. Under things made, we may dam, in @be first p l m , new co~positioris of thinga, sucb as mtl~i~factures in the most ordinary seam of khe word ; aecondly, all mechasiicaf inventions, whether made to produce old or new egecta, for new piece of mechanism is certainly a thing made. Under the with the hand, practice of king we may class a11 new artjfieial manners of oper~ting or with instruments i n common use, new processes in any art producing effeots useful 60 the public. When the effect produced is some m w s u b s ~ ~ ~or ice cornposition of things, it, abould eeem that the privilege of the sole working or making, ought to bs for each new substau~eor c o ~ p o s ~ t ~ owithout t1, regtlrd to the tnechania~n or process by wlriehit bar been produced, which, though perhaps also new, will be only usefuI as ~ ~ ~ uthe ~ new i zsttbstance, i ~ Upon this ground Do11on~spatent was perhaps e ~ ~ ~ t ~far ~ that b l was e ,far a method ot [ass] p ~ o ( ~ t i cai n new ~ objec~-glass, instead of being for the objectrglass produced. If Dr. Jamess patent had been for his method of p ~ ~ his~powders, i n instead ~ of the powders ~hems#Ives, that patent would have bean exceptionable upon the same grautid. When the effect produced i s no substance OF c o ~ ~ ~ of~things, i o nthe patetit can only be far the mecha~i~srn if new mechauism is used, ar for the process, if i t be a new method of operating, with or wibhout old meahaniem, by which the effeet i s prorlucsd. To itlustrate this, The effect pro~~uced bs Mr. David ~ a r t ~ e y~nventiott s for securing b~iildingsfrom fire is no s~bstanceor oampoeition of thinga ; it is L mere negative quality, the absence of fire. This effect is pr&tled by a new method of disposing iron plates in tiuildirigs, In the nature of tbiagr the patent could riot be for the &eat produced. I think it could not be for the d i n g of the plates of iron, which, when disp~sedin a p ~ r t ~ c umaririer l ~ r prodiic~ the &e&, for those are things i n common use. But the invention consistirig irr the metbsd of d ~ p o s ~of r ithose ~ plates of iroli, so as to produce their eefeot, arid that effect being B uaefd and meritoria~isoite, the patent seems to have been very properly panted to him for his method of securing buildings from fire. And this compendious analyak of new manufactu~esmentioned in the statute, satisfies my doubt, whether any &bin#oouid be the. suhjact of a prttent, but something organized m d capable of p r e c i ~ ~ ~ ~ ~ But ~ ~ for c ~ the i o more r ~s8tis~actory . a # ~ u ~ i oof t i the other points which are m d e in this case, I shall pursue this subject a little further. I n Mr. Bartleys f iron are $he means wbicb he employs ; but he did not invent those mettrod, plate8 o wholly cot~sistedin the n5w manner of wing, or I would rather mean8, the i~i~eKitiori my, of diapoeing a thing in common use, and which thing every man might make a8 hi8 pleasure, and, which therefore, I repeat, could not, in my judgment, be the eubject of the pateat, In the nature of things i t must be, that in the carrying into e x ~ any u new ~ irivention, ~ ~ ~ use must be m d t l of certain means proper for the opera%ion. Manual labour to a certain degree must atways be employed; the tools of rtrtists ~ ~ e q u e n;t often l~ thi~igs mauuf~ctured,hut not newly it~vented, such as Hartleyln iron plates ; all the cornmoti utensils used in cor~ductiiig sny process, arid so up to bht most oomplicated machinery that the E4941 art of man ever devised. NOW I& themerit of the invention be what it may, i t is evitfent that t h e patent in almost all these cases cannot be granted for the means by which i t acts, for in them there i s ~ i new, and ~ in some ~ of theta ~ r ~i o t h i c~pable i~~ ~ of ~ p p r o ~ r ~ a t i oEven i i ~ where the

8E .8%.4#S.

BOULTON W. BW LL

667

moat complicated machinery is used, i f the machinery itself is not newly itivetited, but orily conducted by the skill of the inventor, so as to produce a uew effect, the patent cannot be or the machinery. 10 Rartleya case i t could not be for the effect produced, because tbe effect, as I hsve already observed, is merely riegative, t h o u ~ hit was maritorioua. In the list of patents with which I have been furnished, there are several for new methods of manufacturing articles in common use, where the sole merit and the whole effect produced are the saviug of time and expence, atid tbereby ladrering the price of the article, atid iatroduciag it itito more general use. NOW I think these methods may be said to be new manufactures, in oiie of the common acceptations of the word, as we speak of the manufactory of glass, or any other thing of thst bind. The a d ~ a n t a ~ e to s the public from improvB~eIitsof this kiad, &re bayond all calculation important to a commerciaf country, and the ingeouity of Brtists who turn their thoughts toward such improvements, is iti itself deserving Qf encouragei t is strictly agreeab~e to the apiiit arid mearririg of t h e metit ; and in my apprehet~siu1~ statute Jac. 1, that it should be encouraged : aod yet the validity of these pateuts, 111 point of law, must rest upon the same foundation as that of Mr. Hartley. The patent cannot be for the effect produced, for it i s either no substance a t all, or what is exactly the 881118 thing as to the qL~estionupon a patent, tto new subs~axice,but an otd one, produced advantageously for the public. It cannot be for the mechartism, for there is XIO uew mechanism employed. It must then be for the method ; and I would say, in the very signi~caritworrls of Lord ~atisfield(4 Burr. 2397) in tbe great case of the copy-right, i t must he for method detached from all physical existertoe whatever. And I think we should well consider what we do in this case, that we may not shake the foundation upon which these paterrts stand. Probably f do not over-rate it when I state that two-thir~is,I believe I might say three-fuur~hs,of a l l p a t e t i t s g ~ ~ i i since te~ tbs statute passed, are for methods of operating and of maiiufactur~n~, p r o ~ u c i ~ Ino g new substances E4951 and employing no new macbitiery. If the list were examined, I dare say there might be found fifty patents or methods of p r ~ i l ~ c iall ri~ the knowtt salts, either the simple salt, or the old compounds, The different sorts of ashes used in manufactures are many of them inveiitions of great merit, many of them probably mere epeculations of wild projectors : the latter ought to fall, the former to stand. It we wanted an i~lustration of the possible merit, of a new method of operating with old mschinery, we might look to the identical case tiow in judgment before the court. I f W e consider into what general use fire-engines are come, that oiir mines cannot be worked ~ i t h o them, ~ t that they are es8eiitia~lyriecessar~to the carrying on many of our prioaipal manufactures, that these engines are worked a t an enormous exparice in coals, wbich in some parts of the kirigdom can with dificulty be procured at all in large quantities, i t is most manifest that arty method found ottt for lessening the which by necessary c o ~ ~ s e q u e nlessens c~ the ~ottsumptionof steam irr the e~igizIe~, eonsumption of coals expended in working them, will be of grest benefit to the public, 8s well aa to the individual who thinks fit to adopt it. And shall it now be said, after we have been in the habit of seeing patents ~ r a i ~ t e in d , the immense ~ i ~ m b in e r *hieh they have been granted for methods of using old machinery, to produce sbbstances that were old, bat irt a more beneficial manner, and also for producing negative qualitiea by which benefits result to &hepublic, by a narrow construction of the word ~iiuf~ctur in e this statute, that there can be no patent for Inethods producin~this new and salutary effect, connected, and intimately coriuected as it is, with the trade and manufactures of the country? This, I canfesa, I am not prepared to say. An improper use of the word p r ~ n c j p ~i e n tbe specification set fortfi in this caae has, I think, served to puzzle it. Undoubtedly there can be no patent for a mere priaciple, but for a principle so far embodied and connected with corporeal substances as to be in a condition to act, and to produce effects in any art, trade, mystery, or manual t j t ,thirrg oceupatiot~,I think there may be a pateut. Now t b i s is, i n my j u ~ ~ ~ m e the for which the patent stated in the cas0 was granted, and this is what the s ~ e c i ~ c a t i o t ~ describes, though i t miacalls i t a principle. It is not that the patentee has conceived an abstract notion that [496]the consumptjon of steam in fire-eiigines may be ~essened but he has discovered a practical manxier of doiiig i t ; and for that practical matiner of doing it he has taken this patent. Surely this is a very different thing from taking a patanf for a prittciple; it is not for a principle, but for a process. I have dwelt the more largely upon this part of the case fiecause, i n my apprehen~~otl, this i s the founda, !$an upon which the whole argument will be found to rest, If upon the true 0011-

6 6 1 8

BOULTON 21. BULL

aH .BL 497.

etructioa of the statute there may be a patent fov a new method of manufacturing o r conducting chemical processes, or of working machinery, so as to produce new and uaeful e&cks, theo I am warrant^ to c ~ u c I u ~ that e this pate~itwas irr its o r i g ~ ~ a 1 creation good. I will next corrsider the specification, before I proceed to the coxisideration o f the question arising upon the statute for continuing this patent. The e ~ ~ c has ~ r~~~ ere ~ to ~c the oe patent, n and not to the atatute, and heref fore it will be proper taconsicfer i t in this stage of the argument. I distinctly atintit that if this patent is to be taken to be a patent for a fire etpgirie, the specification is not sufficietit ; it is not a ~pecification of mechanism of any determinate form, bavitig componeirt parts capable of precise arran~emer~t,, arid of particular deacripti~ri. On the other hand, if the prkeet is riot for a fire-engine, but in effect for a m:itiner of working a fire-engine, 80 a8 to lessen the consumption of steam, which, as I coticeive, the words of bhe patent impor4 let us see whetber this speci~cationdoes not s~~fficietitfy describe a manlier of working fire-engines, so aa to produce the etfect expressed in the patent, aud whether the O d y objection to the specification is not that it is loaded with a redundancy of superfluous matter. The substance of the inventiorr is a discovery, that the condensirig e i , the external air, arid the &earn out of the cylinder, the proteetiirg the c y ~ i n ~ ~from kgepitrg it hot to the degree of steam-heat, will lessen the consumption of steam T h i s is no abstract principle, it is in its very statement clothed with practical applicntion. It, points out w h a t is to be done i n order to lesseri the cotis~imptioriof steam. Now tha specification of such a discovery seems to consist i n nothing more than saying tu the censtructer of a fire-etigirie, for t h e future coirtleirse your steam out of the body of the cylitider, instead of coiiderising i t within it, put somethitig round the cylinder to protect i t from the external air, and to preseive [497] the heat within it, and keep your piston air-tight without water. Arty particular mariner of doirig this one dtould thiuk would hardly need to be poiuted out., for it c m scarcely be supposed, that 8 ~ r k m a n capable of constructitig a fire etrgine wanld not be capable of making 8och additions to it as should be necessary to eiiable him to execute that mhioh the specification requires him to do. But if a very stupid workman should want to know how to go about this improvement, and in answer to his questioti was directed to from eonduet the steam which was to be c ~ r i d e n s e ~ the cylinder into a close vessel, by mems of a pipe and 8 valve, c o m ~ u ~ i ~ c a t i with t i g the cylinder arid the close vessel, to kaep the close vessel in a state of coldness su6eiest to produce condensation, and to extrmt from it any part of the steam which might not be con~eusedby the p m p ; and was deo told to inclose the cylinder in a wooden case, arid to um a resinous subatanm instead of water to keep the piston air-tight, CMI it be imagined that he woutd be 80 stupid as not to be able to execute this improvement, with the assistance of these plain d i r e c t ~ o n s ~ I f any man could for a moment imagiue that this was pod&, I observe that this difficulty is put an and to, because the jury have foutid that B workman can execute this improvement in consequence of the specificatioo. &me ~ a c b i ~ i e i rtyis true must be e ~ p l o y e but [ ~ ~the machit~eryis uot of the emetice d the irrvantiorr but inciderita~to it, The steam must pass from the cylinder t o the co&eshg VBSS8l, for which puipose there must be a valve to open a pipe to convey, and a veesel to receive the steam. But this cannot be called riew irrverited maohiuery, ~ h e t ~ r c o n a i d e in r e the ~ parts or iti tha whole, and therefore there can be no patent for tf#s addition to the fire-erigirres. Suppose a new iitverited cheniical process, and the specification should direct that some particular chemical substarice should be ~ ~ rie~essary, in order to this o p e ~ t i o n , p a r e d apon gold iu a state of fusiort, it W O U be that the gold should be put into a crucible, arid should be melted iri that ctueibie, but i t would be hardly tieeessary to state in the specificatioii the manner in whicb, or the utensils with which the operatioti of putting gold into B state of fusion was t o be performed. They are mere ~ n c i ~ e r i t with a which every man a c q u a ~ u t e ~ wikh the subject is familiar, Some o b s e r ~ r ~ t i o were r ~ ~ made i i i the course of the argument a t the bar, ot1 i t s being left unascer.r498~-tairretl Loth irt the specification and taw, to what extent the c o ~ s u m ~ ~ jof o t steam i would be leasetied by the iaverifjiaa ; hut the method does riot profess to ascertain this : it professes to lesseri the cansu&ption; and t o make the patent good, the method must be capable of lesseuing the corisumption to such an extent as to make the inve~itioriuseful. Move precision ie riot necessary, and absolute precision is not practicabIe. The quantity of steam which wiil be saved in each machine tuust depend upon a great variety of circumstances reepectirig each individual fire-eugiiie, such as the accuracy of eastirig

aIt.BLIw,

BOULTON

2).

BULL

069

or baring the cylinder, or the dimensions of it, the accuracy of the workman in putting him apparstus together, the care in keeping the cylinder i l i a proper degree of heat, and the more or less perfect order for working, in which the engine is kept. A 1 1 t h e circumatances will affect the quantity of steam to be lessened. Sonie weighty observations have been made upoii parte of this specification, buk those parts appear to me not properly to relate to the method described in the patent; they are rather iritimation~of new projects of improvemetit in fire"eIi~iiies,and some of them, I am very ready to confess, either very loosely described or not very acourataly conceived. I do uot undertake to pronoutice which, but otie or the other is pretty ctesr. They are the fourth and fifth articles : the first, second, third arid sixth appear tQme to belong to this method, and very clearly to point out and explain the method to every man who has a cammon acquaintance with the aubject, aad to be intsfligibie even to those who are unacquainted with it. If there be a specification to be found in that paper, which goes to the subject of the irivetition as d e s c ~ ~ b e in d the patent, 1 think the rest may very well be rejected as superftuous. I f indeed the Defendant could have shewu that he had not pirated the inveution which i s sufficieirtly sgeciled, but that what he hath done bath a reference to another method of lessening b l e of the speei~catio~1 were the ~ n m u m p t i ~ of r i steam to which the q ~ ~ ~ i o r I a parts meant to relate, the objection to the g ~ e c i f i c a t i ~ would t~ have remained, and perhaps some other objeotions which have been alluded to, might have been taken both to the patent and specifioat~on~But I would observe here, that with regard to this and some other difficulties, there is 110 question reserved i n this case respecting the iofririgament of the patent. The general fact only is stated ; that i t has been in-[499]fringed by the Defendant and iri the consideration of a case reserved, we are not t o search Tor ~ i ~ c u l t i upon e s which the parties have not proposed to state any point to us for our judgment, arid into which I think we are not a t liberty to go. The di6eulty which struck me, as it did my Brother Buller, with respect to the declaration, is applied to the patetit as i t originally stood, not as i t now stands coiitiIiued by the act of parliament. If we were a t liberty to go into it, that difficulty might perhaps produce a nonsuit, und that nonsuit a new action in which the difficulty would be removed. But this cause was instituted to try the merits of the paterit: I thought then the d~ffieulty therefore t b t a formal objection was wiaely overlooked. Suppoai;i~ upon the patent itself and the specification to be got over, the act of parliament remains to be considered. The objection stated in the strongest manner would amount to this, tbaL the act contiri~esa patent for a machine, when in fact the patent is for a prows. It is to be observed that there is nothirig techiiicnl i n the oompositiou or the language of an act of parliament. In the exposition of statutes the intent of parliament is the guide. It is expressly laid dowri i n our books, I do riot here speak of penal ~t&~Ute8, that every atatute ought to be expounded not accordiii~ to the letter, but tha intent. 2 Roll. Abr. 118, Plowd. 350, 363. This doctrine has been carried into egect by cases. Though a corporation be misnamed in a n act of parliament, if it 10 Co. 5 b, So the statute appears that the corporatiori was intended it is a u ~ c i e i ~ t . of quia emptores termrum has said that every oue shall hold of the lord paramount sacundutu quantitatem terra, but this shall be construed to be secundum valorem t e r r a ; for so was the iritent. Plowd. 10, 57. We all know that ati act of parliameut may be ext6nded by equity. No authority has been cited which amoufits to proof that B mistake in point of description in 81% act of parliament of this nature when the true meaning can be discovered, and when there i e a foundation on which the act can l~y be suppo~ted, shall vitiate it. The case cited from Plowderi differs e s s e t ~ t ~ a from this caae. The act of parliarnetit in that case gave 6 f f e C t to a eupposed legal attainder, F the groundwork fell, arid there was no legal and proceeded upon it altogether. I attainder, nothing remained : the supposed attaitider in that caye fell, consequently all fe& How the ~ i f f e r e i i ~ betweet1 e that 8856 and the present is thi8, here the true pateot m q n t to be described exists, ancl may [600] therefore be a ground-wark to support the act. This case was compared t o the czwe of the king being deceived in his graikt. But I am not s a t ~ s ~ e that d fhe king, proceeding by and with the advice of parliament, is in that situation in respect of which he is under the special protection of the law, and that he could on that ground be coilsidered a8 deceived in his grant : no c m was cited t o prove that position. The objectioii on the act of pdrliarnmt is of the same nsture as one of the objections to the specifica~ioti : t h e sp~cificatioi~ cdls a method of le~senirigthe corisumptioii of steam iti fire-engines a principle, which i t is

670

~OLL~NGWORT V. H TOORE

0 8. N. 6 0 1 .

not ; &a act calls it ail engine, which perhaps also it is not ; but both the speci6mtiori asd statute are referable to the same thing, arid when they are taken with their correlstise are perfectly iirtelligible. Upon the wider groutitl I am therefore of opinion that the act has cotttiriued this paterit. A narrower groutid was t.aken itt the ~ ~ ~ whieh u wa8 ~ to~expound r ~ the word ~ , engine in the body of this act, i n oppo$itiof~ to the title of it, t o mean a method; and I am ready to say I would resorl; to that ground i f necessary in order to support the patent, ut res magis valeat qi&m pereat. But it is not rtecesslrry : for let it be remembered, that though mortopolies i n the eye of the law are odious, the consideration of the ptivilege created by this patent, is meritorious, because, to use the words of Lord Coke, the ittveritor hrirtgeth to arid far the ~ o ~ m o n ~ a v new ~ a ~ manufacture c ~ by his invention, costs arid charges. I conclude ther~forethat the judgment of the court ought to be for the Piaititiff, The court being thus equally divided, no judgmerit was given, hut the parties seemed disposed to put the case upou the recortl, iii the form of a speeial verdict, in order that i t might be carried or1 to a Court of Error.
AND [SOl] HOLLINCWORTH OTEERR, Ar;signees of &mieI, TOOICE. saturd~y Nay ~ 16tlt, 1795.

a Gartkrupt, aqukst

10 the Exchequer Cbamber in Error.

[See 5 Term Rep. B. R. 215.1

It is agreed betweeu A. arid B. that B. ehall purchase of A. all tbe goods of a certain kiud, which A. shall seud him, a t a fixed price, atid that A. shall drlrw bills on B, or the amount of the purchase, aud atao that B, shalI accept other bills drawn by A. for hi3 couvet~i~uce, to cover which A. shall remit value to B, After they have
acted iome time under this agreement 3. becomes bankrupt, lieiiig uiider acceptatices to a great amoutit. A. (being ignorant of the bankruptcy) sends a quautity of goods of the same kind together with other bills to B. for t h e purpose of dischargiug those aeceptauces, which come iuto the hatids of the assiguees. A. afterwads himself discharges the acceptariees. Under these circurnstarices B. is to be corieidered as the factor or bariker of A., atid as having only a qualifie~ property in the goods and biile which were so sent for a palticuhr purpose, the general property being iu A. Therefom that purpose not beirtg auswered, A. ntay recover back from the assiguees of B, tha amount of those goods atid bills (a).

A Writ. of Error having been brought on the judgment in this case, i t was twice argued i n this court ; first by Vviglsy or the Plaiittiff in error, itnd Walton for the Defendant j and seeoudlg, by Pigot for the Plaititiff and Erskine for t h e D~feiidaIit ; the substance of which a r g u m e ~ will t ~ be aeeii by ~eferririgto the three former oiies which t h e oase uiiderweut i u the Court of ICittgs Bsiich 5 Term Itey. B. R. 215. Arid now the Judgmeut of this court was proriounced by LORD CHIEF JUSTICE EYRE, who, after stating the special verdict proceeded thus. The mse was well aud laboriously argued a t the bar. It was very full of thoruy pinta, which uecessartly required from us a good deal of iiivesti~atioi1. The consequence has beet1 that a length of time, perhaps somewhat i I i c o t ~ v ~ ~ i to ie~ the i t parties, has elapsed hefore we could come to an agreement. We have at length come to au agreement, aiid we are all of opitiiori that this judgment ought to Le atlirmed. f shall state very shortly the reaaoiis which have iuduced me to coitcur in that opinion. The right of the parties to the light gold and bills, which are the subject of this actio~i, appears to tse to depeud principally upori the trua coristruction of the origirial agreemetit ~ e ~ w e e Tooke ti and Dwiel, made two years arid upwartfs before the bankruptcy. That he erne^^ c o i ~ s ~ s tof e ( [602] ~ two-parts; one heiug a coxttra~t for a bargaiii atid 8& of light gold by Tooke to Daniel at a giveri price, to he paid for by bills of
(a) [As to the specific appropriation of bills, see Bent v. Puller, 5 l R. . 494 ; Purke v. EliaSm, 1 East, 544; Gzles v. Perkim, 9 East, 1 2 ; Carstairs v. Bates, 3 Campb. N. P. C. 301 ; Ihompson Y. Bzles, 2 B. 8 C. 422 j parte Sanrjeaiit, 1 Htrse, 153 ; E% parte ~ a 18 Yes. ~ 329 ~ ;~ r ~Peuse, ~~ 1 Rose,a232 j ~~ ~t ~~~~~n~ ~ ~ 1 Rose, 1 16.1 1