Daniel Foxwell

Thomas vs Foxwell

(A.D. 1858-59. 5 Jur., N. S. 37 ; 6 Jur., N. S. 271)

Novelty of Invention. Prior Patent for Part of a Combination

Case for the infringement of a patent (in part disclaimed) of 1st Dec. 1846,       No. 11.464, to William Thomas, for " improvements in machinery for sewing and stitching various fabrics " (a communication from abroad).                         Pleas : 2. That plaintiff was not the first inventor.                                                       3. That the invention was not a new manufacture.                           Issue.                                                                                                         The patent was for a Howe's sewing machine, and the specification stated : 

" The principal novelty of this invention is the combination of a vibrating needle with a shuttle, which shuttle, when the point of the needle has entered the cloth or other fabric under operation, and formed a loop of thread, passes through that loop, and leaves a thread on the face of the cloth, by which means the needle, when withdrawn, leaves a tightened loop on the opposite side of the cloth to that at which it entered."   

Claim 2 : " The application of a shuttle in combination with a needle, as shown in sheet 1, for forming and securing loops of thread or other substance for the purpose of producing stitches, either to unite or ornament various fabrics, whatever may be the means of working such shuttle and needle when employed together."                  

In 1855, plaintiff entered a disclaimer, wherein he referred to a patent of 7th Dec. 1844, No. 10.424, to J. Fisher and J. Gibbons, for "improvements in the manufacture of lace," which contained, inter alia, a description of an invention wherein a series of needles were arranged to act simultaneously, together with a like number of shuttles, for the purpose of ornamenting fabrics.

The specification of the patent of Fisher and Gibbons stated :

" Secondly, our invention consists of improvements in the manufacture of lace, or other fabrics, by causing threads or gymp or yarn to be sewn in pattern on the surface of such fabrics by machinery." It went on to describe a mode of doing this by means of a needle and shuttle, the shuttle passing between the needle and its thread each time that the needle passed up through the  fabric ; and the needle, on descending, sewing down the thread as laid by the shuttle.

The claim was for " the mode of manufacturing figured lace and other fabrics, herein described, wherein threads or gymp are sewn in pattern by machinery on the surfaces of fabrics."

Plaintiff's disclaimer stated: "I do not claim the use in a machine of several needles and shuttles, nor do I claim any of the mechanical parts separately of which the machinery in the drawings is composed."

At the trial, defendant relied on the specification of the patent of Fisher and Gibbons (No. 10,424), above mentioned. Verdict for plaintiff. Leave reserved. Rule nisi to enter a nonsuit on the ground, infer alia, of failure of novelty in the second claim of invention, made absolute by the Court of Queen's Bench. (Lord Campbell, C.J., Coleridge, Erle, Crompton, JJ.)

5 Jur. p.38.

Per Lord Campbell, C.J.. Unfortunately the plaintiff seems to have thought that Howe’s American machine (the invention he had purchased) was not only new in its general combination, but that all the subordinate parts of the general combination were likewise new. Accordingly, after the claim to the general combination, the plaintiff goes on to say, " Secondly, I claim the application of a shuttle in combination with a needle," &c.

His Lordship read the whole claim, and continued :                                         In his disclaimer in 1855 he adds to this, " But I do not claim the use in a machine of several needles and shuttles, nor do I claim any of the mechanical parts separately of which the machinery shown in the drawings is composed." This, however, as far as claim No. 2 is concerned, is only a disclaimer of the use in a machine of a plurality of needles and shuttles. We think that upon the plaintiff's second claim a question of law arises for the Court, and that we are bound, comparing the plaintiff's specification, and Fisher and Gibbons's specification, to decide whether the subordinate combination described in the plaintiff's second claim is disclosed by Fisher and Gibbons's specification. We by no means lay down, as a general rule, that upon a question of novelty of invention such as this, raised by the comparison of two specifications, it must necessarily be a question of law for the Court. The specifications may contain expressions of art and commerce, upon which experts must be examined, and there may be conflicting evidence, raising a question of evidence to be determined by the jury. But it is quite clear that there may be cases in which the Court would be bound to decide the question of novelty exclusively, for the two specifications might be, in ipsissimis verbis, the same ; and if they be in such plain and common language that the judge is sure he understands their meaning, he is bound to construe them as he does other written documents. In the present case the important point for us to consider is, what is the extent of the plaintiff's claim, No. 2 ? Is it confined exclusively to the single application of a shuttle in combination with a needle as shown in sheet 1 or does it extend generally to the application of a shuttle with a needle " for forming and securing loops of thread or other substance for the purpose of producing stitches either to unite or ornament various fabrics ? "

We put the latter construction upon the words, considering that the application is shown in sheet 1 by way of example. The specific claims with which Fisher and Gibbons sum up their specification, appear to us to include the plaintiff's claim. No. 2, although the particular application of a shuttle in combination with a needle shown by him in sheet 1 is not by them expressly described or delineated. Therefore, if the plaintiff's claim, No. 2, be general, as we construe it to be, Fisher and Gibbons's machine, if posterior to it, would be an infringement, and, being anterior, disproves the novelty of the invention.

Thomas v. Foxwell

Error brought in the Court of Exchequer Chamber. (Pollock, C.B., Williams, Crowder, Willes, JJ., Bramwell, B.). Judgment affirmed.                                                                                                                                                      6 Jur. p.272.

Per Pollock, C.B.  I am of opinion that the judgment of the Court of Queen's Bench is right, and that claim, No. 2, is to be read as claiming something more than that which is in fig. 1. I agree that we are to construe the specification " ut res magis valeat quam pereat '' but still we are bound to ascertain what is the true and sound construction of the instrument, construing the language used with reference to the subject-matter, which may very much control the judgment to be formed. I agree with Lord Campbell in his judgment that the reference to sheet 1 is merely meant by way of example. It is clear that the patentee did not mean to confine himself in the manner Mr. Bovill invites us to construe the claim. A needle and a shuttle do not mean the needle and shuttle in the specification, but extend to other needles and other shuttles. That which is at the end of the second claim makes this still more evident, and puts it beyond a doubt, " whatever may be the means of working such shuttle and needle when employed together." Unless we can see that there are no possible means of working a needle and shuttle other than that comprised in sheet 1, and the description of sheet 1, the patent cannot be sustained. The needle and shuttle are avowedly not new ; then how can a claim of every possible mode of working a needle and shuttle together be sustained ?                              

Per Williams, J. The inquiry turns on what is the proper meaning of the claim No. 2.  The construction put upon the claim by the Court of Queen's Bench is strengthened by the disclaimer, which is in exact accordance with its being a general claim.

from :

ABSTRACT OF REPORTED CASES RELATING TO LETTERS PATENT FOR INVENTIONS

 (BRINGING THE CASES DOWN TO THE END OF THE YEAR 1883)