Thomas vs Foxwell
This was an action for an infringement of a patent granted to the plaintiff for a sewing machine. For the plaintiff it was stated that the patent had been granted to him in 1846. The defendant had pleaded the usual pleas, denying the novelty of the invention, and in the notice which he was obliged to deliver to inform the plaintiff on what machines he intended to rely in support of his plea, he had set out no less than nine machines, including every patent of the kind granted for the last 50 years; this could only be intended to embarrass the plaintiff's case. Lord Campbell said that this practice of setting out objections was greatly abused in patent cases, and he feared it would be necessary for the court to take some measure to check the evil. The plaintiff was not the inventor of this machine, but he had acquired the right to it from the inventor, Mr. Howe, an American, who brought it to this country in 1846. The plaintiff, after he became possessed of the patent, expended a considerable sum of money on it, but with little success until it was brought into notice by the great demand for clothing for the supply of emigrants when the rush to the Californian goldfields took place. The machine was found capable of executing the finest work, and so far from having diminished the demand for manual labour it had rather increased it, and a woman attending the machine could earn much larger wages with considerably less labour. The principal parts of* the machine consisted of a grooved needle, having an eye at the point, attached either immediately or through the intervention of a slide to a lever, worked by a cam and rotary axis, which was the governing motion of the whole machine. The fabric to be stitched was placed between two plates, in each of which was a small hole to allow the needle to pass. The needle was supplied with thread from a bobbin moving on an axis. When the machine was set in motion the needle passed partly through the fabric, but by the action of the cam it was brought back, and by this means a loop was formed in the thread, a shuttle then passed another thread through this loop, and when the needle thread was drawn tight a stitch was formed. The needle was stationary, and the fabric was moved along; the machine made 600 stitches a minute. For nine years the plaintiff was not disturbed in the enjoyment of his right, but after that period he was obliged to bring an action against a person who had pirated his machine. Before he commenced the action he filed a disclaimer, in which he stated he did not claim as part of his invention the use in a machine of several needles and shuttles, nor any of the mechanical parts separately of which the machine was composed, but he claimed the arrangement of the machinery, which consisted of five elements—the grooved needle, the lever, the cam, the shuttle, and the pressing slides, which were a most important part of the machine. The patent of the defendant, which was the subject of the present action, was granted in January, 1856, and the specification filed in July of that year. The machine was a specimen of the ingenuity now so often employed to produce the same results by substantially the same process, although the machine would present a very different appearance to the eye. The defendant did not use a shuttle to pass a thread through the loop formed by the needle thread, but employed another needle which formed a second loop, and when the first thread was drawn tight a chain stitch was formed. Several witnesses were then called and examined and cross-examined at great length as to the action of the different parts of the plaintiff's machine, how it differed from former machines, and in what respects it had been imitated by the defendant. The floor of the court was covered with models, without which the evidence would have been totally unintelligible. Several witnesses connected with the trade stated that they were in the habit of using the plaintiff's machines, and derived great advantage from them. Collars were formerly made by hand for Is. 6d. a dozen, and it took a woman 15 hours to make a dozen; the same quantity was produced by the machine in an hour at a cost of 4d. A woman who formerly earned only 7s. a-week by her needle got £1 a-week for attending the machine. For the defendant, it was submitted that the plaintiff's case had not been made out. He claimed by his specification to have invented a combination of machinery to be applied to the purpose of making stitches, but disclaimed each and every separate portion of the machinery, and the disclaimer was inconsistent with and repugnant to the claim. It had been proved that his claim was not new, or even if it were new, there was no evidence of any infringement. Lord Campbell said he would hold there was evidence to go to the jury of the novelty and usefulness of the invention and of its infringement by the defendant. In his address to the jury on behalf of the defendant, Sir F. Kelly said from | certain intimations which had been thrown out during the progress of the case he felt that the defendant laboured under a disadvantage, and but for the impartiality which always distinguished judges and juries he would almost consider his case hopeless. From the very first invention of a machine by which any sort of stich could be effected in any sort of fabric successive improvements had been made, but all these machines, Sneath's, Newton and Archbold's, Fisher and Gibbon's, and Duncan's, were used only for the purposes of ornamental stitching, and not for sewing two pieces of any fabric together, with the exception of the machine patented by the plaintiff in 1846 ; from the state of the trade there was no demand for such a machine up to 1853, but from that time the various machines which had previously been used only for ornamental work were adapted to ordinary sewing, and many improvements had been made—the principal was Morey's patent for the rough serrated plates which held the fabric, and moved it along so as to measure the stitches. This was introduced into the machine patented by the plaintiff's son, which was as great an improvement on the plaintiff's machine of 1846. He would not contest the usefulness of the plaintiff's invention, but the question for the jury was what had the plaintiff done. He knew nothing of machinery, but purchased the invention from Mr. Howe. The model on which the patent was obtained was so incomplete that to support bis Specification he was obliged to construct what was, in fact, a new machine. Another was afterwards constructed, and only these three were ever made according to the patent. The plaintiffs witnesses had stated the specification was sufficient to enable any workman to construct a machine which would answer all the purposes-set out by the plaintiff ; it would be shown distinctly that such was not the case ; if it was, how did it happen that no machine had ever been used for any purpose but sewing leather and coarse material for stays? After a while the machine went entirely out of use, and would never have been heard of again but for the improvement made by Morey, which, adapted to the plaintiff's patent, produced a machine entitled to the merit he had claimed originally . With the original machine it would be impossible to effect what was done with the defendants, and if he could show that the plaintiff's machine, although capable of sewing coarse materials, was totally inapplicable to fine work, he would ask for their verdict. The defendant did not seek to deprive the plaintiff of anything he was entitled to by law. He had done nothing more than the plaintiff himself; he found a great number of machines invented, all consisting of the same number of parts, and all calculated to produce more or less the same effect; he took these parts and made a machine which was no infringement, no piracy of anything contained in the plaintiff's patent of 1846. Every sewing machine should be composed of sis parts—the cam, the lever, the slide, the needle, the sliding frame, and the shuttle, needle, or hook to form a loop, and there were several machines in use before 1846 containing all six. The plaintiff claimed the combination of a needle with a shuttle, as shown in his drawing, independent of means actuating them, and he could not maintain his patent unless either of the pans was new or they had never been combined before the plaintiffs. The needle was not new, and if it was the defendant did not use the same. If the plaintiff meant to claim any needle which, combined with a shuttle, would produce such a stitch as his did, the defendant's was not an infringement, as his machine made an entirely different stitch. If the plaintiff could maintain this action against the defendant, he would have as much right to maintain one against Fisher and Gibbons, whose machines had been invented long before his, and therefore his patent was clearly bad. A number of witnesses were then called for the defendant. Their evidence went to show that every portion of the defendant's machine was copied from some which had been in use before the plaintiffs patent was granted, and that, every combination employed by the defendant had also been used before then; and further, that it would have been impossible to construct from the plaintiff's specification a machine capable of accomplishing what he claimed to effect. On summing up the evidence, the counsel for the defendant asked the jury to dismiss altogether from their consideration the improved machine of the plaintiff's son, which had been produced before them, and confine their attention to the real question whether the defendant had infringed on or pirated the old machine, for which the plaintiff had obtained the patent in 1846. He went in detail through the evidence, and contended it had been fully established that no portion of the plaintiff's machine was new ; in fact, it was formally disclaimed; and as to the combinations, each of them had been known and patented long before. Lord Campbell said there were two questions for the jury—whether the invention was novel, and whether it had been infringed. As to the novelty, the plaintiff disclaimed the novelty of any particular portion ; it was only a patent for a combination, and the point to be considered was whether that combination was new. The plaintiff claimed four things—the general arrangement of the machinery, the application of a needle in combination with a shuttle, the construction and use of a sliding frame, and the mode of actuating the frame and needle. If they believed that any one of these was not new they ought to find for the defendant. As to the infringement, this being a patent for a combination, if the defendant used any substantial portion of the new combination for the same purpose as that to which it was applied by the patentee, the charge of infringement was supported, and it was not necessary that the whole combination should have been copied. The jury found that the invention of the plaintiff was new as to all four points, and that the defendant had infringed it.
Verdict for the plaintiff—Damages, 40s., with the usual certificates. Consequent upon the verdict in favour of the plaintiff, the motion for an injunction was renewed, and opposed by the defendant on various grounds, one being that he was about to move for a new trial, on the ground that the verdict was against evidence. His Honour referred to the principles by which the court was governed in cases of this description, and to the extreme unwillingness to issue an injunction where there was a bona fide intention of moving for a new trial at law, unless the case was so abundantly clear as to leave no doubt in the mind of the court what the result of the trial would be, and observed that looking to the balance of convenience and inconvenience in this particular case he had no doubt as to the discretion which he ought to exercise. If the injunction were to be granted the defendant might be most seriously prejudiced, while there was nothing before the court to show that the plaintiff would not be saved entirely harmless from any consequences which might result from not granting the injunction if the court were to put the defendant on an undertaking. His Honour accordingly made the following order. The defendant undertaking to abide by any order the court might make for payment in the nature of a royalty in respect of every sewing machine which should be issued by him or his agents to the prejudice of the plaintiff's alleged patent right from the date of this order, not exceeding £10 for each machine, in case the court should so direct at the hearing of the cause, let the motion again stand over with liberty to apply.
Practical Mechanic' s Journal (December 1858)