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Neilson v. Harford (151 ER 1266, 1841)

Neilson v. Harford (151 ER 1266, 1841)
Court of Exchequer Chamber

Background: An English inventor, James Beaumont Neilson discovered that a blast furnace for converting high-carbon iron to lower-carbon iron or steel worked better if the air was heated before being blown through the molten iron. He therefore passed the air through a heated chamber on its way to the molten iron. In 1828 and 1829, he obtained a patent for the invention, and then sued competitors. The case was heard at a jury trial, and then appealed to the Exchequer Court, the appeal occurring in 1841.

The Exchequer Court rejected the argument that the patent merely covered the principle that furnace temperature could be increased by injecting hot air instead of cold air into the furnace, for the principle of itself could not be patented. It ruled instead that the patent covered the use of the heated chamber. The decision addressed the question: "[W]here is the difference between claiming a principle, which is to be carried into effect any way you will, and claiming a mere principle?". The decision was rendered by two judges, Parke and Alderson. This UK decision was later cited in a variety of U.S. patent court decisions, including O'Reilly v. Morse, Parker v. Flook and Funk Brothers Seed v. Kalo Inoculant.

UK law book with a copy of the decision is: Reports and Notes of Cases on Letters Patent for Inventions, by Thomas Webster, London, 1844. An online version is available from Google: http://books.google.com/books?id=iXwzAAAAIAAJ&printsec=frontcover&source=gbs_ge_summary_r&cad=0#v=onepage&q&f=false.

The book has both the proceedings of the jury trial, and then the proceedings before the appellate court. The first was the jury trial, which starts on page 295 of the online version. Of the five pleas, all five were found in favor of the plaintiffs by the jury. However, the judge reversed the jury on the fourth please, and ruled in favor of the defendants. At the end of the decision for the first trial, on page 328, the plaintiffs' lawyer, Sir W. Follett, argued that the fourth plea was not a matter of law, and that the judge had no right to reverse the jury. Follett then asked for a reversal of the judge's reversal, or a new trial. On page 330, the defendant's lawyer, Sir J. Campbell, requested a new trial, arguing that the jury got everything wrong, deciding "entirely contrary to the evidence".

On page 331, four judges (Abinger, Parke, Alderson and Rolfe) discuss and decide these appeals, a discussion that lasts until page 373.

It is in this appeal does there appear language that was later cited in U.S. court decisions that involved what is now 35 U.S.C. 101 issues, such as O'Reilly v. Morse. The U.S. Supreme Court in O'Reilly v. Morse quotes Baron Parke's paragraph, starting: "It is very difficult to distinguish it from the specification of a patent for a principle, and this at first ...", appears on page 371. Le Roy v. Tatham cites page 373.

The appellate Decision starts at the bottom of page 331 of the book.

Note: pages 331 to 336 discuss issues of the nature of appeal objections, the role of patent titles, the requirements for patent specifications, and issues of enablement. The arguments are made by the defendants' lawyers, with the appelate judges making comments from time to time. Page 337, first part discusses "best mode" disclosure requirements. One of the first 101-type discussions appears in the middle of the page, a comment by Judge Alderson:

[Alderson, B.:
The blowing apparatus was perfectly well known; the heating of air was perfectly well known; the twire was perfectly well known as applicable to blast furnces; then what he really discovered is, that it would be better for you to apply air heated up to red heat, or nearly so, instead of cold air as you have hitherto done. That is the principle; that is the real discovery; but, in order to take out a patent, you must have an embodiment of the principle, and his embodiment of the principle is the heating of air in a separate vessel, intermediately between the blowing apparatus and the point where it enters the furnace. Then, he says, -- "I do not mean to claim any shape in which it is done; it may be done in vessel of any shape, provided only you have such a vessel of such a shape, and fire so applied as that, in the intermediate space between the blowing apparatus and the furnace, the air arrives at the red heat."

Note: Page 337 and 338 continues on with enablement issues of the specification and best mode. Page 338 starts another argument by another lawyer for the defendants, Sir F. Pollock, this argument concerning how much experimentation is needed to enable a patent to make the patent invalid. On page 342, Judge Alderson again interjects another 101-type discussion:

[Alderson, B.:
I take the distinction between a patent for a principle, and a patent which can be supported, is, that you must have an embodiment of the principle in some practical mode described in the specification of carrying the principle into actual effect, and then you take out your patent, not for the principle, but for the mode of carrying the principle into effect. In Watt's patent, which comes nearest to the present of any you can suggest, the real invention of Watt was, that he discovered that by condensing steam in a separate vessel a great saving of fuel would be effected by keeping the steam cylinder as hot as possible, and applying the cooling process to the separate vessel and keeping it as cool as possible, whereas before the steam was condensed in the same vessel; but then Mr. Watt carried that practically into effect, by describing a mode which would effect the object. The difficulty which presses on my mind here is, that this party has taken out a patent, in substance like Watt's, for a principle, that is, the application of hot air to furnaces, but he has not practically described any more of carrying it into effect. If he had, perhaps he might have covered all other modes as being a variation (c).

The bottom of this page has a footnote (c), which continues this 101 discussion:

(c) At a subsequent part of the case, the following remarks, closely connected with the proceeding, occurred: --

Alderson: It is very difficult to see why Watt's patent was not for a principle.

Follett: It was not for the principle alone.

Alderson: It is very difficult to see what is a patent for a principle, and for a principle embodied in a machine, because a patent can only be for a principle embodied in a machine.

Follett: Your lordship sees, if any strict rule is laid down on such a subject, what effect that would operate, because all great discoveries are in fact discoveries of principles; and, therefore, if the principle is at all capable of being carried into effect, it seems extremely hard that a party who has made a most valuable discovery should not be protected.

Alderson: Only you cannot take out a patent for a principle.

Follett: Unless you point out a mode of carrying the principle into effect.

Parke: It must be for a manufacture.

Alderson: I have always though that the real test was this: that in order to discover whether it is a good or bad patent, you should consider that what you cannot take out a patent for must be considered to have been invented pro bono publico - that is to say, the principle must be considered as having had an anterior existence before the patent. Now, supposing in Watt's case it had been known that to condense in a separate vessel was a mode of saving fuel, then Watt certainly would have taken out a patent for carrying into effect that principle by a particular machine; but then his patent would have been for a machine; and if I invented a better machine for carrying out the principle, I do not infringe his patent, unless my machine is a colourable imitation.

Follett: That would depend on the nature of the machine.

Alderson: But you must embody the principle in the machine, and you stop all possible improvements, because you infringe the principle, which you have no right to do; it is the principle of the machine. It is very difficult for a jury to distinguish that, but it is the most essential thing possible. Now, here, supposing it had been known that hot air applied to a furnace was a great improvement on cold air, and that this person had taken out his patent, and this patent was a patent for the application of a well-known thing, the hot air to furnaces; then he takes out a patent for applying it, by means of an intermediate reservoir between the blast furnace and the bellows; then surely anybody else may apply the same principle, provided he does not do it by a reservoir intermediately between the blast furnace and the bellows, and the question for a jury is, whether or not a long spiral pipe is a reservoir; if it not be a reservoir, or a colourable imitation of a reservoir, it is no infringement.

Printed case, 222. See per Sir F. Pollock on the same subject, ante 145.

Note: after Judge Alderson's second 101 comment, the arguing lawyer and Alderson have the following exchange, appearing on page 343:

Lawyer Pollock: With respect to what has fallen from your lordship, about taking out a patent for a principle, it is theoretically true, but practically it is not true. Practically, you can have a patent for a principle, that is, if you embody your principle in any clear, definite, and distinct form, no other person shall be allowed to take that principle and embody it in some other form merely copied from you.

Judge Alderson: But then you must perform the previous conditions, and embody it in some practical form.

Pollock: Yes, you must develope your principle, and your must correctly develope it, and you must put it in some shape, and when you put it in that shape no person can be allowed to come and steal the spirit of the invention, and put it into some other shape different from yours, provided the jury think that that other shape is an imitation of your shape. Here the party states that the shape and form are immaterial, whereas not only the witnesses did prove the fact, but without proof it is abundantly obvious, and it is quite clear, that the shape and the form are of the very essence of carrying it out to the extent of which Mr. Neilson complains, that is, an imitation of an infringement of his patent.

Alderson: You see you do not interfere with any benefit which the inventor has, if the inventor knows of no particular mode of carrying his principle into effect; you do not interfere with any benefit which he even had, if he never had a practical mode of carrying it into effect. Your practical mode of carrying it into effect does not interfere with him. Then the question is, whether that is so?

Note: the bottom of page 343 starts an argument by the plaintiffs' lawyer, Sir W. Follett. Follett argues that Neilson's specification goes beyond just describing a principle, but is fully enabled, and that the defendant's improved inventions are infringing Neilson's patent. At page 347, Follett asks "But on what grounds is it this specification is defective?", and on page 349 argues that this issue of defectiveness is solely a question for the jury, not for the court. One page 350, judges Abinger and Alderson argue about what parts of the specification are determined by the judge, and which by the jury, a discussion which continues to page ... However, on page 355, Judge Alderson further discusses 101-issues:

[Alderson, B:
Then I think that is a principle, if you claim every shape. If you claim a specific shape, and go to the jury and say that which the other people have adopted is a colourable imitation, then I can understand it. If you claim every shape, you claim a principle (f). There is no difference between a principle to be carried into effect any way you will, and claiming the principle itself. You must detail some specific mode of doing it. Then the rest is a question for the jury.

Note: this passage include a reference to footnote (f), referring back to an earlier comment of Judge Abinger, that basically argues the contrary - such a broad claim of every shape is legitimate:

(f) But may not such a claim, under certain circumstances, be a good claim? Wherein consists the difference between the claim to the principle of blowing a furnace with hot air instead of cold, and the claim to the principle of condensing in a separate vessel, as in Watt's case, and the claim to the principle of the self-adjusting leverage when applied to a chair, as in Minter's patent ante 126? These cases are all distinguishable from the class of cases to which the observation of the learned judge -- that a principle which is not the subject-matter of a patent must be considered as having an independent existence, and to have been invented pro bono publico - would appear to be applicable (see ante 342, n.), since in the above cases the essence of the invention is the application of the principle to the specific purposes. See per Lord Abinger, post 356.

On the following page, page 356, appears Lord Abinger's 101-ish comments:

[Lord Abinger, C.B.:
I understood you to say this -- "My invention is to apply the principle of heating air in its passage to the furnace, by introducing it into an intermediate vessel between the bellows and the furnace, in which it is to be heated by fire, no matter what the shape or size of the vessel is, that must depend upon circumstances and the judgment of the party, I do not claim a patent for the particular vessel." That brings [this] case to the same as Watt's patent for condensing in another vessel, without describing the shape or size note: a margin comment suggests that this implies: 'In the application of a principle, every mode need not be specified.'

On page 360, Follett stops arguing, and his colleague, Kelly starts his argument in support of the plaintiffs, focusing on the nature of the defendant's appeal, the objections, and enablement. His argument continues until page 369.

On page 370, Judge Parke delivers the decision of the appellate court. At the top of page 371 starts a 101-type discussion.

Then, taking the construction of this specification upon ourselves, as we are bound to do, it becomes necessary to examine what the nature of the invention is which the plaintiff has disclosed by this instrument. It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of some of the court much difficulty; but after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this: by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before cold air, in a heated state to the furnace. (note: this bolded paragraph cited twelve years later in the U.S. Supreme Court case, O'Reilly v. Morse, 56 U.S. 15, 1853)

Now, in the specification, ... [and] then he adds -- "the shape of the receptacle is immaterial to that effect, and may be adapted to local circumstances". It is this part of the specification which has raised the difficulty. ... But my lord and my brothers, after considerable hesitation, are of opinion, that a construction may reasonably be put upon this clause which will support the patent; and though I myself still entertain great doubt whether such is the true construction, I am not prepared to say that it is not, and I am very glad, that in so meritorious an invention as this is admitted to be, in this view of the case, the inventor will not be deprived of his reward.

Note: in the earlier jury trial, that led to the appeal, from which the U.S. Supreme Court quoted part of the appeal decision, in the earlier jury trial, the trial judge, Baron Clarke, commented on the danger of viewing patent rights as to be tried with a view to their defeat. On page 310, appears the following commentary:

Half a century ago, or even less, within fifteen or twenty years, there seems to have been very much a practice with both judges and juries to destroy the patent right, even of beneficial patents, by exercising great astuteness in taking objections, either as to the title of the patent, but more particularly as to the specification, and many valuable patent rights have been destroyed in consequence of the objections so taken. Within the last ten years or more, the courts have not been so strict in taking objections to the specification, and they have endeavored to hold a fair hand between the patentee and the public, willing to give the patentee, on his part, the reward of a valuable patent, but taking care to secure to the public, on the other hand, the benefit of that proviso which is introduced into the patent for their advantage, so that the right to the patent may be fairly and properly expressed in the specification. (note: this bolded paragraph cited eleven years later in the U.S. Supreme Court case, Le Roy v. Tatham, 55 U.S. 156, 1852).

The text of Neilson's patent is on page 273.


Letters patent, 11th September 1828, to J.B. Neilson, "For the improved application of air to produce heat in firest, forges, and furnaces, where bellows or other blowing apparatus are required."

I, the said, James Beaumont Neilson, do hereby declare that the nature of my said invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required, and the manner in which the same is said to be performed, is particularly described and ascertained as follows: that is to say, a blast or current of air must be produced by bellows or other blowing apparatus in the ordinary way, to which mode of producing the blast or current of air this patent is not intended to extend. The blast or current of air so produced, is to be passed from the bellows or blowing apparatus into an air vessel or receptacle made sufficiently strong to endure the blast, and through or from that vessel or receptacle by means of a tube pipe or apperture into the fire, forge or furnace.

The air vessel or receptacle must be air-tight, or nearly so, except the apertures for the admission and emission of the air, and at the commencement and during the continuance of the blast, it must be kept artificially heated to a considerable temperature. It is better that the temperature be kept to a red heat or nearly so, but so high a temperature is not absolutely necessary to produce a beneficial effect.

The air vessel or receptacle may be conveniently made of iron, but as the effect does not depend upon the nature of the material, other metals or convenient materials may be used. The size of the vessel must depend upon the blast and on the heat necessary to be produced.

For an ordinary smith's fire or forge, an air vessel or receptacle capable of containing twelve hundred cubic inches will be of proper dimensions, and for a cupola of the usual size for cast iron founders, an air vessel capable of containing ten thousand cubic inches will be of a proper size. For fires, forges, or furnaces, upon a greater scale, such as blast furnaces for smelting iron and large cast iron founder's cupolas, air vessels of proportionally increased dimensions and numbers are to be employed.

The form or shape of the vessel or receptacle is immaterial to the effect, and may be adapted to the local circumstances or situation.

The air vessel may generally be conveniently heated by a fire, distinct from the fire to be affected by the blast or current of air, and generally it will be better that the air vessel and the fire by which it is heated should be enclosed in brick-work or masonry, throught which the pipes or tubes connected with the air vessel should pass; the manner of applying the heat to the air vessel is, however, immaterial to the effect, if it be kept at a proper temperature.

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