Amicus Curiae Brief — Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 350 (2017) (No. 16-712)

No. 16-712

IN THE

Supreme Court of the Anited States

—_——— --——_ —- -—

O1. STATES SERVICES, LLC,

Petitioner,

Vv.

GREENF’S ENERGY Group, LLC, ET AL..,

Respondents.

ON WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF OF AMICI CURIAE

ALLIACENSE LIMITED LLC

IN SUPPORT OF PETITIONER

|

EDWARD P. HELLER III

ALLIACENSE LIMITED LLC

2310 Homestead Road #C1-505

Los Altos, CA 94024-7339

408-886-5446

ned@alliacense.com

Dated: August 25, 2017

BATEMAN & BLADE, INC. BOSTON. MASSACIIUSETTS

TABLE OF CONTENTS

DPR NEE. GUE BRUNI BRI ooo vvvcvsvisciekssscsscadsdbulatseiccus

1. Actions to revoke patents for

invalidity have a Seventh

Amendment right because such

actions were tried exclusively in

the common law courts of

England prior to ratification of

the Seventh Amendment in 1791..........

a. The Seventh Amendment

extends to patent

revocation actions. ..............

b. A proper public rights

analysis for statutory

rights must compare the

statutory action to similar

common law actions. ..................

c. Only novel types of

statutory actions may be

assigned to administrative

tribunals; but IPR are

identical to scire facias

actions in both grounds

0 ee

ss

3

2. English history of patent

revocation actions: 1624-1791............... 6

a.

The 1624 Statute of

Monopolies required

monopoly patent

revocation actions be tried

exclusively in the common

I ne 6

In 1626, Charles I stayed

common law patent

revocations and resumed

exclusive Privy Council

POPIEIEGIONE, cnsesesesccecessceres Patil 7

In 1753, the Privy Council

was presented with a

constitutional problem

when the common law

courts challenged the

ruling of the Privy Council!

in the matter of the James

IE. patsctnsisiecstanbb hone nadincenianiaddanoad 10

After the events of 1753,

and at least from 1780,

only the common law

courts of England revoked

patents for invalidity. ............... ll

e. Rex v. Arkwright, a scire

facias to revoke a patent

for invalidity, was

commenced on the law side

of Chancery, tried at

King’s Bench and resulted

in judgment by Chief

Justice Mansfield of King’s

Bench ordering the patent

| ESLER pee rat St ae ON Sti

3. English Procedure for revoking

I IE II wecciscsscatovecocusavantbasiictecce sa:

a. The Court of Common

Pleas, the Court of

Exchequer and the King’s

Bench were the law courts

ES bitte rescnciesoniieneciesrecon

b. Scire facias actions were

filed on the law side of

Chancery and tried at

EY BAR IR ge eee ae

4. Because there was an adequate

remedy at law, the Chancellor

had no jurisdiction to revoke a

patent using his (extraordinary)

II III, ciiccovsahccnenicccnks eaccas ces

SOR Ct A EE a SN ONE eee

ill

13

15

15

17

APPENDIX

i, Edward Coke, the Fourth Part of

the Institutes of the Laws..................... 1

L Arkwright’s Patent from

Webster's Patent Cases at 56................ 2

a RE Wh MING on cdicvinasceertssvanietieee, 4

lv

TABLE OF AUTHORITIES

AMERICAN CASES:

Baltimore & Carolina Line, Inc. v. Redman,

BOG CF... SSO CRG) sisevecsissccpedncniiadecueee 4

Beacon Theatres, Inc. v. Westover.

i gan ls) eee mrs A! era lS 20

Curtis v. Loether,

GRE CT. TE CII vo vovvsicvorncrctereccaitcn cae 4,5

Doe v. Braden,

7 U.S. C16 How.) GB CLG6@ vcccdcceccsictutbaniee 12

Granfinancicra, SA v. Nordberg,

GE UF TB. SE CR ove ced strcateceicti eee 2 6

Luther v. Borden,

46 U.5.. C7 how.) 1 OG kscteidecee 12

MCM Portfolio LLC v. Hewlett-Packard Co.,

812 F.3d 1284 (Fed. Cir. 2015)........ DNR OI 2, 5

Mowry v. Whitney,

81 U.S. (14 Wall.) 434 (1871).............0000.. 16, 18, 20

Murray's Lessee v. Hoboken Land &

Improvement Co., 59 U.S. (18 How.) 272

Parsons v. Bedford,

BE UB. CH. FOb.) SBS CUBR osceecididceccteedna 4,6

Scott v. Neely,

IS 20, 22

Stern v. Marshall,

564 U.S. 462, 131 8. Ct. 2694 (2011)..................... 5

Tull v. United States,

an | seo cinsiigebbnbencocens 2,5

US. v. American Bell Tel. Co.,

I ME OI ccc cccccccocceccecccescccccsececes 17, 18, 20

LS. v. Stone,

ee Ee UNE.) GND CRED. cccccescecscccesesccessvcccouee 18

ENGLISH CASES:

Arkwright v. Mordaunt,

EE EE, BPRS cnccccnescoccecesccvscseeee pr ey ee 12

Arkwright v. Nightingale,

I CI nn . cncnenensecsibeccessconens 12

Atty. Gen. v. Vernon,

1 Vera. 277, 23 Eng. Rep. 468 (1684)

SE 20

Atty. Gen. v. Vernon,

1 Vern. 370, 23 Eng. Rep. 528 (1685)

EE a ER 21, 22

Boulton and Watt v. Bull,

ME ccc encnscscosisisiescecsncscseossenesees 23

vl

Bramah v. Hardcastle,

TN i es eiiniinniciieniontcicniiseiteiactat tt eearee 23

Darcy v. Allen,

11 Co. Rep. 84b. 77, 77 Eng. Rep. 1260,

ho gt Sp Maintains en ates Beasts ee eer 7

Rex v. Arkwright,

1 Carp. P.C. 53, 1 WPC 64 (K.B. 1785)....... passim

Rex v. Eley,

(1790) Times (Lon.), Dec. 9, 1790..........000cccccec ces 12

Rex v. Else,

(X7SS) 1 CHC 3064; 1 WC TE CB. ..cccccccsccocescssccs 12

Rex v. Jacob,

496 nb 169 (Middlesex, 6 Dec. 1782),

ER ND cae ee ec 12

Sir Oliver Butler's Case, H. 31 & 32 Car. 2,

es ice ae ey i a sncacceticiminestatteinecc, 16

STATUTES AND LEGISLATIVE HISTORY:

es I, TI sicrtnes-cncieascnptevcienuinneecnicbadnlesbaite passim

(Patent) Act of 1836, Ch. 357,

yo oh | See 14

TE Fil) SR OTA S TERROR SMe AS ye TE he 2

gh Cb SE BR se 2

vu

BS UB... GE Bi DBI D one vevcciscesescvcscccccsscsaesssevscceccvessoesees 2

Statute of Monopolies, 21 Jac.1, c. 3 (1624)............... 6

OTHER AUTHORITIES:

Bottomley, Sean. The British Patent System

during the Industrial Revolution 1700-1852:

From Privilege to Property. Vol. 28.

Cambridge University Press, 2014 ..................... 14

Sean Bottomley, The British Patent System

During the Industrial Revolution 1700-1852

Edward Coke, Vhe Third Part of the Institutes

Pd nitecdinassinddceaClandiniotnuaceidedhnunmciandant 7,19

Coke, Edward. The Fourth Part of the Institutes

of the Laws of England: Concerning the

Jurisdiction of Courts (1644), published at W.

Clarke and Sons, 1817 (4 Jnst.) .............. 2, 15-19

Davies, D. Seaborne. “The early history of the

patent specification.” L@ Rev. 50 (1934):.......... 7-8

Davies, John. A Collection of the most important

cases respecting Patents of Invention and the

Rights of Patentees. Reed, 1816.......................... 11

Fox, Harold George. Monopolies and patents: a

study of the History and future of the patent

monopoly. University of Toronto Press, 1947....... 9

vill

Hewish, J. “Rex vs Arkwright, 1785: A Judgment

for Patents as Information,” World Patent

Information, Vol. 8, No. 1, 1986.........................- 13

Hulme, E. Wyndham, Privy Counci] Law and

Practice of Letters Patent for Invention from

the Restoration to 1794, 33 L.Q.R 63 (1917) ..9, 10

Jones, William John. “An /ntroduction to Petty

Bag Proceedings in the Reign of Elizabeth I”

California Law Review (1963) ............0..ccccseceeeeeee 23

State Papers, Domestic, December 6, 1626................ )

Walterscheid, Edward C. “The early Evolution of

the United States patent law: antecedents

(part 3).” J. Pat. & Trademark Off. Soc’y 77

Webster, Thomas. Reports and Notes of Cases on

Letters Patent for Inventions. Vol. 1. T.

SO: BOG hice iccccveseecimece Bie ANBAR SAD A Se ME 1.85 7

ix

INTEREST OF AMICUS

Alliacense Limited LLC is in the business of

managing intellectual property assets of its clients

including providing’ licensing and _ patent

prosecution. Alliacense provided counsel to MCM

Portfolio LLC in the IPR, the Federal Circuit appeal,

and the ultimate petition to the Supreme Court in

MCM Portfolio LLC v. Hewlett-Packard, No. 15-

1330, cert. denied, October 11, 2016. Alliacense has

continued interest in the issues presented by the

present case.!

SUMMARY OF ARGUMENT

Congress has no power to authorize the Patent

Trial and Appeal Board (“PTAB”) to revoke patents

for invalidity without trial by jury because prior to

1791, the year the Seventh Amendment? was

ratified, inventors had a right to a trial by jury in an

English court of law before their patents could be

revoked for invalidity thereby giving such revocation

actions a Seventh Amendment right to trial by jury.

The common law remedy was known as a scire

facias, the action was commenced either on the

common-law side of Chancery or at King’s Bench,

and was exclusively tried at King’s Bench and to a

jury. The BIO and even this court in the past have

assumed that because a scire facias normally was

! All parties have consented to the filing of this brief. No

counsel for any party authored this brief in whole or in part,

and no entity, other than amici, or their counsel, made a

monctary contribution to the preparation or submission of this

brief.

2“In Suits at common law, ... the right of trial by jury shall

be preserved....” Const. amend. VII (hereinafter “Seventh

Amendment”).

returned in Chancery, that it was an equitable

proceeding and that even if jury trials were

conducted, they were only advisory, not binding. But

is not true that the writ scire facias was a bil! in

equity. A scire facias, a common law writ that can

be identified as such from its use of Latin, was

instead returned on the law-side of Chancery; and

the Chancellor at all times was acting with his

ordinary, common law powers, not his extraordinary,

equitable powers. We attach a copy in the appendix

of pages 79 and 80 of Cokes 4 Institute (1644) for

the court to easily verify the truth of the matter.

Inter partes review (IPR)° provides the same

remedy, revocation, and the same _ grounds,

invalidity as do scire facias, albeit, limited only to

the claims challenged.® Both are contested

proceedings. Both begin with a petition by an

interested party to the government. The common

law proceeding was pursued in the name of the King,

but the real party in interest was the petitioner who

had to post a very large bond to pay the attorney’s

fees of the patent owner.

Because IPR does not provide a jury trial, the

statute authorizing IPR is unconstitutional.

336 U.S.C. §§ 311-319.

* 325 U.S.C. § 318(b) (Claims determined unpatentable

cancelled by certificate). Cf, 35 U.S.C. § 288 (Action may

proceed on valid claims even if patent contains an invalid

claim.) A modern patent varies from those at the time of the

founding because they have multiple claims varying from one

another in scope that narrower claims may be valid even

though broader claims read on the prior art. By statute, an

action may proceed even if a patent claims an invalid claim.

5 Under 7ul/ v. United States, 481 U.S. 412 (1987) the

remedy (here, revocation) is the most important factor,

2

The unconstitutionality of IPR is not negated by

any legitimate public rights analysis. Actions to

determine “statutory” legal rights of the type

determined prior to 1791 in England, and this

includes scire facias actions to revoke patents for

invalidity, are categorically excluded from a public

rights analysis because they have a Seventh

Amendment right.

This amicus describes the English court system,

the procedures for revoking patents, and the

relevant English history from 1624 to 1791. By

1791, the Privy Council bad stopped revoking

invention patents leaving only the legal remedy of

scire facias. Parliament first attempted to limit the

jurisdiction of the Privy Council in the 1624 Statute

of Monopolies. But, in 1626, the first year of Charles

I, the Privy Council stayed common law revocation

proceedings. Only in 1753, did the Privy Council

stop revoking invention patents, apparently at the

behest of William Murray, later Lord Mansfield, who

then was Solicitor Gencral. Rex v. Arkwright, 1

Carp. P.C. 53, 1 WPC 64 (K.B. 1785), was one of the

first patent revocation actions tried after 1753. We

attach a copy of the case to demonstrate that the

issues tricd were validity based on prior art, prior

invention and an inadequate specification, issues

common to today. The case was tried at King’s

Bench and to a jury. The patent was ordered

revoked by Lord Mansfield after a petition for retrial

was denied.

Scire facias actions were normally commenced on

the law side of Chancery, but tried in King’s Bench.

Because they were filed in Chancery, the

government has argued that the actions were

equitable (apparently not even knowing that

Chancery had a law side) thereby providing no basis

3

for a Seventh Amendment right. They may further

argue that the jury trials that did take place were

only advisory as if the Chancellor wus acting with

his extraordinary (equitable-side) powers, as opposed

to his ordinary (law-side) powers. However, we

demonstrate that scire facias to revoke patents for

invalidity were legal from filing to judgment. We

further demonstrate that equity could not and did

not revoke patents for invalidity since an adequate

remedy at law was available.

ARGUMENT

1. Actions to revoke patents for invalidity have a

Seventh Amendment right because such

actions were tried exclusively in the common

law courts of England prior to ratification of

the Seventh Amendment in 1791.

a. The Seventh Amendment extends to

patent revocation actions.

This court first interpreted the Seventh

Amendment in Parsons v. Bedford, 28 U.S. (3. Pet.)

433 (1830) “By common law, [the framers] meant

what the constitution denominated in the third

article “law;” not merely suits, which the common

law recognized among its old and _ settled

proceedings, but suits in which legal rights were to

be ascertained and determined....” Jd. at 446-447.

The “thrust of the [Seventh] Amendment was to

preserve the right to jury trial as it existed” in

England “in 1791,” Curtis v. Loether, 415 U.S. 189,

193 (1974), “the date of the Amendment’s ratification

by the original states,” Ba/timore & Carolina Line,

Inc. v. Redman, 295 U.S. 654 (1935). Under this

formulation, scire facias actions, the exclusive

remedy employed to revoke invention patents from

1780, fall squarely within the /Parsons/Curtis

analysis because such actions were filed at law, tried

at law, determined the validity of a patent, and

revoked patents that were invalid. Moreover, it is

the remedy of revocation of the patent that is the

most important feature of scire facias actions for

Seventh Amendment purposes. T7Ju// v. United

States, 481 U.S. 412, 421 (1987).

b. A proper public rights analysis for

statutory rights must compare the

statutory action to similar common law

actions.

The Federal Circuit in MCM Portfolio LLC v.

Hewlett-Packard Co., 812 F.3d 1284, 1290-1293

(Fed. Cir. 2015) and the government BIO both insert

a public right’s analysis before determining whether

there is a violation of the Seventh Amendment. This

form of argument never considers whcther IPRs are

truly comparable to common law scire facias actions,

but rather assumes they are not comparable, even

though IPR and scire facias provide the same

remedy for the same legal grounds as scire facias.

This faulty argument resulted, in MCM Fortfolio, in

a determination that it was constitutionally

permissible to assign the trial of patent revocation to

the USPTO where a jury trial is not available; thus

effectively sweeping away the Seventh Amendment

rights of patent owners. Any analysis that permits

this is seriously flawed.

This court’s public rights analysis has heretofore

categorically excluded state common law claims as

public rights. See, e.g., Stern v. Marshall, 564 U.S.

462, 131 S. Ct. 2594, 2609, 2611 (2011). A first

reason such actions are excluded is that they were

litigated in the courts of England prior to 1789. Jd.

at 2611 citing Murray's Lessee v. Hoboken Land &

Improvement Co., 59 U.S. 272 (18 How.) 272 (1856).

A second reason they are excluded is that, to the

extent legal, they have a Seventh Amendment right.

Cf, Granfinanciera, SA v. Nordberg, 492 U.S. 33, 51-

52 (1989).

c. Only novel types of statutory actions may

be assigned to administrative tribunals;

but IPR are identical to scire facias actions

in both grounds and remedy.

But when the right is created by federal statute

and not by state common law, the public rights

analysis requires that the statutory action involving

that right be “novel” -- a type not known to common

law. /bid. When, as here, the grounds, patent

validity, and the remedy, patent revocation, provided

by IPR are the same as scire factas actions at

common law, the public rights analysis must stop.

The action must be tried in an Article III court and

toa jury. lbid.

2. English history of patent revocation actions:

1624-1791.

a. The 1624 Statute of Monopolies required

monopoly patent revocation actions be

tried exclusively in the common law courts.

Section I of the Statute of Monopolies, 21 Jac.1,

ce. 3 (1624), declared all prior “monopoly” patents

void, listing exceptions in sections VI-IX. Section VI

permitted patents for “new manufactures” to “the

true and first inventor” that others at the time of the

patent grant shall not use.” Section II declared that

only the common law courts could void patents.6

(The Case of Monopolies,? had previously established

authority of the common law courts to “declare void”

monopoly patents.) As put by Webster,

[A]ll monopolies, &c., to be void by the

common law, has provided by this that they

shall be examined, heard, tried, and

determined, in the courts of common law,

according to the common law, and not at the

council table, star chamber, chancery

exchequer chamber, or any other court of like

nature, but only according to the common

laws of the realm, and not otherwise.

Edward Coke, The Third Part of the Institutes 182-

183 (1644); Webster, Thomas. Aeports and Notes of

Cases on Letters Patent for Inventions. Vol. 1. T.

Blenkarn, 1844 at 30.

b. In 1626, Charles I stayed common law

patent revocations and resumed exclusive

Privy Council jurisdiction.

Prior to the 1624 statute, only the crown or its

Privy Council had voided patents. Their authority to

do so was based on a revocation clause included in

every monopoly patent from the time of Elizabeth.®

6 “{Ajil monopolics, and all ... patents ... shall be

“examined, heard, tried and determined, by and according to

the common laws of this realm, and not otherwise.”

* Darcy v. Allen, 11 Co. Rep. 84b. 77, 77 Eng. Rep. 1260, 1

WPC 1 (K. B. 1602). (Darcey v. Allen was an infringement suit.

The plaintiff was denied a remedy because in the opinion of the

court the patent was void.)

§ Davies, D. Seaborne. “The early history of the patent

specification.” LQ) Rev. 50 (1934): 86, 260 (pts.1-2) at 102-103.

The clause read in part,

The 1624 statute specified that only the common law

courts could void patents — and that seemed to

exclude the Privy Council (and the crown) from its

traditional role.

In 1626, a glassmaker openly began to infringe a

glassmaking patent held by Mansell, and indicated

his intention to bring a scire facias to revoke it. The

Mansell patent had been excepted in Section VIII of

the 1624 statute from general repeal of all prior

patents because of its strategic importance.’

Edward Coke had earlier reported that Mansell, a

vice Admiral of England, was not the inventor of

glassmaking, but of only the furnace that used sca

coal. Lord Coke recommended that the patent be

limited to the production of glass using sea coal.'! 1

\Ijif on examination of the patent before the Privy

Council, or a specified number of its members, before

whom the patentee had been called, the grant was

certified to be inconvenient or prejudicial to the realm,

then on the signification of the pleasure of the Crown in

that respect ... or upon a certificate to that effect made

by the Privy Council ... the patent immediately, or at

the end of a specified period of notice, was to be vuid

and frustrate.

Ibid. Arkwright’s patent, discussed below, included a

revocation clause that also included prior use and prior

invention as grounds for revocation.

8 Walterscheid, Edward C. “The early Evolution of the

United States patent law: antecedents (part 3).” J. Pat. &

Trademark Off. Soc’y 77 (1995): 771 at 774.

© See, 1 WPC 32 (noting the exception, but commenting

that Mansell was not the inventor).

1! Coke’s report on the Mansell patent indicates that

monopoly patents for invention were investigated and were

limited to the scope of the invention on pain of revocation.

During the late 1700s, the English developed a caveat system

8

WPC 27. The patent, No. 22, was renewed in 1624

and limited to the use of sea or pit coal to make

glass. 1 WPC 17-26. The patent also prohibited

others from using timber to make glass. The crown

was trying to reduce the use of timber, a strategic

resource for building ships. /d. at 17.

After initially giving its approval for the scire

facias, the Privy Council soon reconsidered: “They

think it of dangerous consequences and far trenching

upon the prerogative that patents granted on just

grounds and of long continuance should be referred

to the strict trial of common law, whercfore they

order that all proceedings at law be stayed.”!2

Unstated, the revocation would have undermined

England’s national security.

The Privy Council thereafter continued its prior

practice of revoking patents on petition. English

scholar Hulme, in his review of Privy Council

records, reported dozens of such Privy Council

proceedings in the late 1600s through 1753, most

involving allegations of prior use or prior invention.

Hulme, E. Wyndham, Privy Council Law and

Practice of Letters Patent for Invention from the

Restoration to 1794, 33 L.Q.R 63, 180 (1917) (2 Pts.).

that was effectively an opposition system. I[ssue concerning

novelty and invention were tried to a jury. Sean Bottomley,

The British Patent System During the industrial Revolution

1700-1852, at 35-39, 563-54 (2014).

12 Walterscheid “The early Evolution of the United States

patent law: antecedents (part 3)”, swpra, at 774, quoting State

Papers, Domestic. December 6, 1626. Charles I, an absolutist

Monarch like his father, James VI and I, also began issuing

monopoly patents that were in clear disregard of the

limitations of the Statute. Fox, Harold George. Monupolies and

patents: a study of the History and future of the patent

monopoly. University of Toronto Press, 1947 at 127-145.

9

c. In 1753, the Privy Council was presented

with a constitutional problem when the

common law courts challenged the ruling

of the Privy Council in the matter of the

James patent.

Hulme identifies the 1752 proceedings involving

the James patent, No. 626, as a turning point

between the old and new systems of patent law. One

Baker had petitioned the Council to revoke the

James patent on grounds that a Baron Schwanberg

was the inventor of the claimed fever powder. Dr.

James responded with an affidavit saying that the

invention was for a pill and a powder of multiple

compounds, making it immaterial if one of them was

invented by the Baron. The matter was dismissed,

Baker then brought an indictment for perjury

against Dr. James and requested that the Privy

Council order its clerk to produce the original

affidavit of Dr. James. The Privy Council referred

the matter to its Attorncy General. /d. at 189-191.

The advice was that the petitioner did not have a

legal right to have the affidavit produced and the

Baker petition was dismissed. /bid. Wilham Murry,

later Lord Mansfield and a strong champion of the

courts, was then Solicitor General. Hulme argued

that the Council acted to settle a quarrel with Lord

Mansfield regarding the constitutional authority of

the Privy Council to try disputes regarding validity.

Hulme, “Privy Council Law and Practice of Letters

Patent for Invention from the Restoration to 1794,”

supra, at 184.

10

d. After the events of 1753, and at least from

1780, only the common law courts of

England revoked patents for invalidity.

Thereafter, and even considering that patents

still contained boilerplate revocation clauses

allowing the Privy Council to revoke patents for

prior use or prior invention, every petition to the

Council requesting revocation of an invention patent

was dismissed, apparently with a “recommendation”

that the patent owner bring an action at law that the

validity of the patent might be tried.° The last

Privy Council revocation occurred in 1779. The case

involved a cannon making patent. The revocation

occurred after a four-year delay that was intended to

allow the patent owner to bring an action at law to

try validity. He refused to bring the action, despite

having already obtained an_ injunction. The

revocation was based on national security, not

validity. The council considered further delay to be

prejudicial to the ability to conduct the war in the

American colonies.!4

3 E.g., the petition of 35 opticians for vacating Dullond’s

patent, No. 721. /d at 191. It is interesting to note that now

the revocation clause inserted into patents included additional

language not included in the revocation clanse at the time of

Elizabeth. The revocation clause in Arkwright’s patent, for

example, allowed the Privy Council to revoke patents because

“the said invention is not a new invention as to the public use

and exercise thereof...; Or not invented and found out by the

said [mame of the inventor].". Compare, English patent

boilerplate at the time of George IT], at 31, with the grounds for

the scire facias in Rex v. Arkwright, at 61, of Davies. John. A

Collection of the most important cascs respecting Patents of

Invention and the Rights of Patentees. Reed, 1816.

4 National sccurity is well within the public rights

exception to the right of trial in an Article [Jl court. See,

Murray's Lessee v. Hoboken Land & Improvement Co., 59 US.

11

‘The government shifted to the use of scive facias

actions where trial would be to a jury. One of the

first scire factas actions was Rex v. Arkwright, 1

Carp. P.C. 53, 1 WPC 64 (K.B. 1785).'® The action

was brought only after Arkwright had first sued nine

competitors for infringement and lost because the

court held his specification to be insufficient.'®

Several years elapsed. Arkwright then sued again

and this time won.'? That second judgment issued in

February of 1785. But, while that second action was

under way, the King, on petition to the Attorney

(18 How.) 272, 285 (1856); citing Luther v. Borden, 48 U.S. (7

How.) 1 (1849); Doe v. Braden, 7 U.S. (16 How.) 635 (1854).

‘5 Other cases prior to 1791 include Rex v. Jacob, 496 nb

169 (Middlesex, 6 Dec. 1782), MMSS I: 767; Rex v. Else, (1785)

1 CPC 104; 1 WPC 76 (K.B.); Rex v. Eley, (1790) Times (Lon.),

Dec. 9, 1790, at 3.

6 Arkwright v. Mordaunt, 1 WPC 56 (C_P. 1781),

\' Arkwright v. Nightingale, 1 WPC 60 (C.P. 1785).

Regarding the prior verdict adverse to Arkwright, the court

said,

It has been said, that many persons have acted

upon an idea that Mr. Arkwright had no right, he

having failed to establish it when this cause underwent

an examination in another place, in which the event

was unfavourable to him. If the question at present

were what damages Mr. Arkwright should have

received for the invading that right, I would have

allowed the parties to have gone into evidence to show

to what extent persons have acted upon the faith of the

former verdict; but the question now is upon the mere

right, and if the result of this cause is in favour of the

plaintiff, the verdict will be with one shilling damages.

A future invasion of this right would entitle Mr.

Arkwright to an action for damages, but in the present

case they are not asked.

id. at 61.

12

General, brought a scire facias in Chancery. Trial

was at King’s Bench and the verdict of invalidity was

for the crown.'® Lord Mansfield, on denying retrial,

ordered the patent repealed.!9

e. Rex v. Arkwright, a scire facias to revoke a

patent for invalidity, was commenced on

the law side of Chancery, tried at King’s

Bench and resulted in judgment by Chief

Justice Mansfield of King’s Bench ordering

the patent cancelled.

To preempt any potential argument that Knglish

patents and patent litigation of the late 1700s were

unlike those of today, we discuss in some detail in

Rex v. Arkwright, 1 Carp. P.C. 53, 1 WPC 64 (K.B.

1785).2°8 (The appendix attaches Webster's report of

the case. A-4.)

Per Thomas Webster, patents issuing from the

end of Anne’s reign included a proviso requiring the

grantee to file a specification “particularly to

describe and ascertain the nature of his invention,

18 Rex v. Arkwright, supra, 1 WPC at 64.

1 Webster's report of the case is set forth in the appendix

at A-4. To prevail, Arkwright had to prevail on all points, the

Crown, any. See, Rex v. Arkwright, supra, 1 WPC at 73. At

that time, if any of the claimed inventions was not novel, the

entire patent was found invalid and voided. Arkwright claimed

10 different components to his machine, many of which were

proven to be not his.

2 For a discussion of the history surrounding the cave, see,

Hewish, J. “Rex vs Arkwright, 1785: A Judgment for Patents as

Information,” World Patent Information, Vol. 8, No. 1, 1986,

pp. 33-37, where, it appears, a large group of rival cotton

manufacturers banded together to petition for a writ to put an

end to Arkwright’s continued effort to enforce his patent

despite his initia] adverse ruling on validity.

13

and in what manner the same is to be performed.” 1

WPC at vi and 8. See also, Bottomley, Sean. The

British Patent System during the Industrial

Revolution 1700-1852: From Privilege to Property.

Vol. 28. Cambridge University Press, 2014: 46-50

(describing a gradual adoption of the requirement

dating from 1711). Thereafter, patents could be

revoked for providing an insufficient specification.

One of those so revoked was owned by Richard

Arkwright.

The major problem with the Arkwright patent (on

a cotton carding machine) was an_ insufficient

specification. It described several components, but

not a word as to how they cooperated. Evidence

produced proved that some of the components that

went into making the carding machine were in

public use or the invention of others. The jury

verdict was for the crown.

That the summary of law and facts and the

court’s jury instructions show that the English had

developed the fundamentals of modern patent law

prior to 1791. The most important development

thereafter is the statutory mandate for patent

specifications to claim the invention and that a

patent office examine “claims” before grant. (Patent)

Act of 1836, Ch. 357, 5 Statutes at Large 117, § 7.

While this development has led to a host of issucs,

such as claim construction, and other validity issues,

courts today still decide the validity of a patent claim

based on whether the invention claimed by a claim is

new, whether the specification describes the claimed

invention and whether it enables one of ordinary

skill to make and use it.

14

8. English Procedure for revoking patents at

law.

a. The Court of Common Pleas, the Court of

Exchequer and the King’s Bench were the

law courts of England.

Lord Coke in Coke, Edward. The Fourth Part of

the Institutes of the Laws of England: Concerning

the Jurisdiction of Courts (1644), published at W.

Clarke and Sons, 1817 (44 Jnst.), describes the

jurisdiction of the sundry courts in England,

Scotland, Ireland and Wales. The table of contents

lists well over 100 courts, but among these, only

three were common law courts: The Court of

Common Pleas, the Court of Exchequer and the

Court of King’s Bench ~— the latter having a division

located in Chancery. The Court of Common Pleas

tried cases between parties other than the King. ¢#

Inst., supra, at 99. Exchequer was concerned with

the King’s revenue. ¢% Jnst., supra, at 112. King’s

Bench tricd cases where the King was a party. 4

Inst., supra, at 71.

b. Scire facias actions were filed on the law

side of Chancery and tried at King’s Bench.

The index of the ¢# /nst. States that “A scrre

facias to repeal a patent may be brought in either

King’s Bench or in the Chancery.” Pages 72 (King’s

Bench), 79 and 88 (Chancery) are referenced. “A

scire fac. repeal a patent of the King may be brought

in this court.” 4 Inst. at 72. The scire facias, if

filed in Chancery, was filed on its law side and not

on its equitable side. 4% Inst, at 79. The Chancellor,

the sole judge of Chancery, considered the writ with

his ordinary (law) powers as opposed to his

extraordinary (equitable) powers. 4 Jnst., at 88.

15

Coke states that the grounds for scire facias are

double patenting, false suggestion, and contrary to

law. Jhid. In the case of double patenting, the first

patentee may bring a suit against the second. In the

latter two cases, the king is the party. #4 Jnst., at

88.21 An aggrieved subject petitioned the King to

repeal the patent. “Where a patent is granted to the

prejudice of a subject, the king of right is to permit

him upon his petition to use his name for the repeal

of it.” 1 WPC 41, quoting from Sir Oliver Butler's

Case, H. 31 & 32 Car. 2, 2 Vent. 344., 2 Ventr. 344;

4th Inst., supra, at n. 3.74

The procedures described by Lord Coke are also

described in Hex v. Arkwright, 1 WPC 64 at 64-65.

Webster’s note states that proceedings of this type

2! Coke writes,

This writ scire facias to repeal letters patents doth

lye in this ordinary court of justice and three cases. The

first, when the king by his letters patents doth grant by

several letters patents one and the same thing to

several people, the former patentee shall have a scire

facias to repeal the second patent. Secondly, when the

king granteth any thing that is grantable upon false

suggestion, the king by his prerogative jure regio may

have a scire facias to repeal his own grant. Thirdly,

when the king doth grant any thing, which by law he

cannot grant, he jure regis (for advancement of justice

and right) may have a scire facias to repeal his own

letters patents.

4th Inst., Cap. 8 at 88.

22 This court similarly held that only the government might

bring an action for the repeal of a patent. Mowry v. Whitney, 81

U.S. (14 Wall.) 434, 439 (1871) (“[We are of opinion that no one

but the government, either in its own name or the name of its

appropriate officer ... can institute judicial proceedings for the

purpose of vacating or rescinding the patent which the

government has issued to an individual.”).

16

originated in the Petty Bag Office. (The Petty Bag

Office was where the records of patents issued by the

crown were kept. U.S. v. American Bell Tel. Co., 128

U.S. 315, 360 (1888).) A draft writ is “taken to the

Atty. Gen., who thereupon may grant his fiat, upon

the prosecutor and to sureties entering to a bond of a

£1000, conditioned to pay the defendant his costs,

taxed as between attorney and client.” Mex v.

Arkwright, 1 WPC at 64.

As mentioned, 4 scire facias normally commenced

on the common-law side of Chancery. That side was

a separate court, a division of King’s Bench. It was

entitled coram domino rege in cancelleria, et additio

probat minoritatem, translated: King’s Bench

division in Chancery. ¢” Inst. at 79. Because

Chancery had no facilities to conduct jury trials, the

Chancellor transferred the record to King’s Bench in

Westminster Hall. As Coke notes at pages 79-80 of

the 7% /nst., this court and the court of King’s Bench

were considered a single court for the purposes of

trying cases. Appendix A-1 is a copy of pages 79-80

from an 1817 version of the 4 /nst.*3 As showed by

the Arkwright case, the proceedings terminated with

King’s Bench ordering the patent repealed.

4. Because there was an adequate remedy at

law, the Chancellor had no jurisdiction to

revoke a patent using his (extraordinary)

equitable powers.

Even though sczre facias actions to repeal patents

for invalidity provided a complete and adequate

remedy at law, the government briefs heretofore,

“3 A judgment that the patent was void was returned to

Chancery where the Chancellor would cancel it. fFAex y.

Arkwright, supra, 1 WPC at 65.

17

and some of this Court's opinions, have expressed

the view that patent revocation actions may be

determined by the Chancellor acting in his eguitab/e

capacity. Seeeg, US. v. Stone, 69 U.S. (2 Wall.)

525, 535 (1864); Mowry v. Whitney, 81 U.S. (14

Wall.) 434, 440 (1871) (citing Stone), US. v.

American Bell Telephone, 128 U.S. 315, 359-361,

364-365 (1888).%4 In England, this was

“constitutionally” not possible. One of the compacts

between the commons and the King limited equity to

disputes where there was no adequate remedy at

law:

In the parliament holden 13 R. 2. the

commons petitioned to the king, ... That no

person should appear upon a writ De guibusdam

certis de causis,» before the chancelor or any

other of the councell, where recovery is therefore

given by the common law: whereunto the King’s

answer is, The king willeth as his progenitors

have done, saving his regalty.7€

Coke, ¢” Jnst., Cap. 8 at 82. Parliament agreed to

the same principle.

1. Rot. par. 2 R. 2. nu. 18. the high court of

parliament relieveth but such as cannot

have remedy but in parliament. The

24 This court said Chancellor was acting with his “ordinary”

powers when using his equitable powers. This potentially

causes confusion because Coke referred to the use of the

Chancellor's ordinary powers as being those of a common-law

judge, his eqguitah/e powers being extraordinary. 4th Inst. at

79.

25 Subpoena to testify.

% Spelling unchanged except for the substitution of “s” for

“f” as appropriate.

18

parliament for matters determinable at the

common law doth remit the partics.

3. Whereas matters of fact by the common

law are triable by a jury of twelve men,

this court should draw the matter ad aliud

examine, that is, to judge upon deposition

of witnesses, which should be but evidence

to a jury in actions real, personal, or

mixed.

This court of equity proceeding by English bill

is no court of record, and therefore it can bind

but the person only, and neither the state of

the defendants lands, nor property of his

goods or chattels.

Id. at 84. To the same effect is the Statute of

Monopolies. As explained by Lord Coke, its

limitation of revocation actions to the common law

courts was intended, among other things, to limit the

jurisdiction of Chancery from considering patent

validity. Edward Coke, Yhe Third Part of the

Institutes 182-183 (1644).

This court has held that the Seventh Amendment

imposes a no-adequate-remedy-at-law limitation on

the scope of equity jurisdiction.

[W]henever, respecting any right violated,

a court of law is competent to render a

judgment affording a plain, adequate and

complete remedy, the party aggrieved must

seek his remedy in such court, [] because the

defendant has a constitutional right to a trial

by jury....

19

Scott v. Neely, 140 U.S. 106, 109-110 (1891); Beacon

Theatres, Inc. v. Westover, 359 U.S. 500, 510-511

(1959).

The English authority relied on by Mowry*? and

American BelP® to support their view that equity

generally was a proper forum to revoke patents is

Atty. Gen. v. Vernon, 1 Vern. 277, 23 Eng. Rep. 468

(1684) (Vernon J). This reliance is misplaced.

In Vernon J, the Attorney General brought a bill

in equity to revoke a patent “under the Duchy’s seal”

granting the defendants land from the King’s Duchy

of Lancaster. The grounds were fraud. The

allegation was that the value of money and lands

exchanged for the grant was far less than the value

of the property conveyed. There were no surveys

done prior to the patent issuing. The value of the

lands conveyed was not stated.

The defendants pled that the matter was properly

decided in a court of law, and ought to be determined

in the Duchy. The King objected that the Duchy

court was a revenue court, not a court of law.

Further, that scire facias was not an available

remedy because the patent was not of record in

Chancery and because scire facias relieved only

deceits appearing in the body of the patent. The Lord

Keeper overruled the plea, but reserved the question

of jurisdiction of equity to the full hearing. /d. at 282.

At the full hearing, the Chancellor and the Lord

Chief Justice and the Chief (of the Court of Common

Pleas) decided that the legal remedy, scire facias, did

not provide a remedy, let alone an adequate remedy:

27 81 U.S. at 440.

28 128 U.S. 359-361, 364-365, 369.

20

Lord Chief Baron Mountague said, “... that no

scire fac. would lie in this case, the deceit not

appearing in the body of the grant....” He

thought, “[H]is Lordship might justly decree a

re-conveyance, and that the patent should be

delivered up and cancelled: and he supposed

care would be taken that the consideration

should be restored.”

Lord Chief Justice Jones said, “| take it, that a

scire fac. will not lic in this case, or if it would,

yet the deceit appears not in the body of the

patent; and therefore a scire fac. will not reach

it. The value is not mentioned in the patent,

and shall there be no way then where the

King is deceived for his Majesty to be

rclieved? That would be to put him in a worse

condition than a subject.”

Lord Chancellor, ... “Vhe first question then

is, whether this court upon an £glish bill

may in any case decree letters patent to be

delivered up and cancelled; and he was clear

of opinion, that had the patent passed ever so

regularly, that yet this court might have

decreed it to be delivered up. Fraudulent

contracts and bargains are pruperly relievable

here; the precedents are common.

(Emphasis in original.)

Atty. Gen. v. Vernon, 1 Vern. 370, 387-390, 23 Eng.

Rep. 528, 535-536 (1685) (Vernon 1), The patent

was ordered delivered up and cancelled. Vernon in

exchange received back his £7000, and separately

£400 plus interest for the value of the lands Vernon

had conveyed to the crown.

remedy -- the restoration of the status quo ante

requiring that both parties re-convey to do justice --

21

Note that this sort of

would not be available by simply revoking the patent

via the writ scrre facias.

Vernon // stands for the proposition that a scire

facias is not an adequate remedy to rescind a

transaction for fraud where a patent is granted in an

exchange for value and the fraud is in the exchange,

and not in the patent. /bid. Vernon II makes it

abundantly clear that when a legal remedy is

available, equity has no jurisdiction. Because scire

facias actions provide a complete and adequate

remedy at law for revoking a patent for invalidity,

equity did not have jurisdiction to even try validity,

let alone revoke a patent. Moreover, as noted above,

the Chancellor’s role in scure facias actions was that

of a common law judge, not that of a judge in equity.

For the same reasons, equity today in the United

States has no jurisdiction to try patent validity

(without consent). Scott v. Neely, supra, at 109-110.

To allow equity to try cases where there was an

adequate remedy at law would be to violate the

Seventh Amendment. /bid. It is only a short leap to

say that the same is true of Article I] courts trying

cases where there is an adequate remedy at law.

22

CONCLUSION

In conclusion, from 1780, scire facias for repeal of

patents for invalidity were tried to a jury at King’s

Bench.?* Patent owners have a Seventh Amendment

right to a trial by jury before their patents might be

revoked for invalidity. Since IPR revoke patents for

invalidity without a jury trial, IPR are

unconstitutional.

Respectfully submitted,

Edward P. Heller III

Alhacense Limited LLC

2310 Homestead Road #C1-505

Los Altos, CA 94024-7339

408-886-5446

ned@al)liacense.com

Counsel for Amici Curiae

Dated: August 25, 2017

29 It is also worth of note that validity was uniformly tried

to a jury whether the action was for infringement, an

injunction or revecation. In Bramah v. Hardcastle, 1 Carp. 168

(1789), an infringement case, validity was tried to a jury.

Similarly, in Rex v. Arkwright, 1 Carp. P.C. 53, 1 WPC 64

(1785) a seire facias to repeal a patent and Boulton and Watt v.

Bull, 1 Carp. P.C. 155 (1796) that began bill in equity. (“The

bill was filed for an injunction to restrain the defendant from

infringing the patent, and an injunction was obtained, that the

question as to the validity of the patent might be tried at law.”)

Boulton and Watt confirms that equity courts did not try

patent validity, but instead referred trial to the common law

courts where juries were available. A tempurary injunction

issued on the presumption that the patent was valid. See, note

19, supra. See, also, Jones, William John. “An Introduction to

Petty Bag Proceedings in the Reign of Elizabeth 1.” California

Law Review (1963): 882-905, at 886-887 (lega) disputes arising

in equity were tried at King’s Bench and to a jury).

23

APPENDIX

1. Edward Coke, the Fourth Part of the

Institutes of the Laws

(of England concerning the Jurisdiction of the

Courts, Clark & Sons, London (1817) (Notes

omitted))

Cap.8. The Court of Chancery. 79

Fi

In the chancery are two courts, one ordinary, coram domino re

$2 cancellaria, * wherein the lord chancelour or lord keeper of the

great feale j.soceeds according to the right line of the laws and fta-

tutes of the realm, secundum Iegem et ¢nfuct Rinem Anglia. * An-

other extraordinary accordiug to the rule of equity, /ecundem eguunt

et bonum. And firlt of the former court.

* He hath power to hold plea of ire fac’ for repeal of the kings

letters patents, of petitions, morframs de droits, taverfes of offices,

partitions in chancery, of fire fac’ upon recognifances in this

court, writs of audita querela and /eire fae’ in the nature of an auclita

to avoid execuiions in tis court; 4 dowments in chancery,

the writ de dote afienanda upon offices found, execution upon the

itatute flaple, or recognifance in nature of a ftatute ftaple upon the

aft af 23 H. 8. but the execution upon a {tatute merchant is retorn-

able either into the kings bench, or into the common place, and

all perfonall actions by or againft any officer or minifter of this

court in refpeét of their fervice or attendance there. * In thefe if

the parties defcend to iffue, this court cannot try it by jury, but the

lord chancclour or lord keeper delivereth the record by his proper

hands into the kings bench to be tried there ; becaufe for that pur-

pole both courts are accounted © but one, and after triall had to be

remanded into the chancery, and there judgement to-be given.

But if there be a demurrer in law, it fhall be argued and adjudged

in this court. Nota, the legall proceedings of this court be not

inrolled in rolls, but remaine ix flaciis being filed up in the office

of the pety-bag. © Upon a judgement given in this court a writ of

erroe doth lie retornable into the king’s bench: ¢ the ftile of the

court of the kings bench is coram rege (as hth been faid) and the

ftile of this court of chancery is coram dimino rege in cancellaria, et

additie probat mincritatem. And iu this court the lord chancelour or

the lord keeper is the fole judec: and in the kings bench there are

four judges at the leaft.

A-1

1. Arkwright’s Patent from Webster's Patent

Cases at 56

ARKWRIGHT’S PATENT (a).

Title. Letters patent to Richard Arkwright, 16 December, a.p. 1775,

“for certain machines for preparing silk, cotton, flax, and wool,

for spinning.”

Spacifrution. I, the said Richard Arkwright, do hereby describe and ascer-

tain the nature of my said invention, and declare that the plan

thereof, drawn in the margin of these presents, is composed of

the following particulars; that is to say :—

For bruising the No, 1, a beater or breaker of seeds, husks, &c., and a finer

= i Of the fia, hemp, and other articles which are to be pre-

of dissim. pared for dressing, in which (a) is a wheel with teeth, which,

by acting upon a lever, raises the hammer (c), the lever being

moveable upon the centre (d),

Por hashing the No. 2, an iron frame with teeth at (a), working agzinst «

rmlecd hem? lower frame with like teeth at (b); this lower frame is firmly

connected to a wooden frame by means of the screws (¢, ¢);

the upper tecth are made to act against the lower by means of

the jointa (d, d, d, d) (8),

Thapresent fed. No. 3 is @ piece of cloth with wool, flex, hemp, or any

‘4 oppers'* other such materials spread thereon, as at (a).

Tircrank for No.4 is a crank anda frame of iron with teeth at (a), being

uripping off the moveable at the joints (h, b, b, b,) by means of a crank, and by

odian me ior

A-2

& cord turning the pulley or wheel (c); this motion of the

teeth (a) works them beckwards and forwards upon the cylinder

No. 5, and dischargeth the cotton, wool, &c., from it at (d).

No. 5 is the last-mentioned cylinder, which hath fillet cards: Te ¢fer ry/ic-

bebind this cylinder, No. 3 delivers its contents upon another ““’

cylinder (c).

No. 6 consists of rollers fixed to a wooden frame, the contents The railer: fr

of No.5 being brought to it at (a), and going through at (b), “276

produceth it a proper size (f}; (c,c) are brushes for cleaning the

machine.

No. 7, » cylindrical box for twisting the contents of No, & Me revaleing

ut (b); (a, a) are two rollers, one moving the other, between “* “**"#

which the contents of No. 6 passeth into the cylinder (b);

(c) is a dead pulley fixed to the frame; (d) « cord which, pass-

ing from the pulley (c), moves the rollers (a, 8); (F) a wheel,

the movement of which is brought from (Fc) No. 10, and

is fixed to No. 6 (d).

No. 8, a machine for twisting the contents of No. G, in The widivg me-

which (d, d) is » frame of iron; (b) a roller, on which » bobbin, “”"*

(c) is fixed; this is tured the same as No. 7, that is, by «

dead pulley, or wheel fixed to a wooden frame, at (g) (¢).

No. 9, a spindle and fiycr, being fixed to No. 6, for twist- 7 lolbineefite

ing the contenta from (b) in No.6; (d) is « pulley under"!

the bobbin, which hath s communication by a band to No. 10

at (d, d), it being a conical or regulating wheol, which moves

the bobbin quicker or slower as required (f).

No. 10, a spindle, which being fixed to No. 6 at (a) worketh oe ewe work

No. 7, No. 8 or No. 9, at (F, F, F), by the pulley (F, c); (d), ance

regulator for No. 9; {h), a socket, having # bolt going through

(d, d) and (F, c) to (G), stops or seta the whale going by means

of a catch (a), for the pulley (G, G) being loose upon the spindle,

(0) a lever, moveable about (k), rniseth or falleth the bolt (b) (9).

In witness, &c.

A-3

2. Rex v. Arkwright

From Webster’s Patent Cases, London (1844), at

64.

The King v. ARKWRIGHT

Cor. Buller, C.J. 25 June, 1785

Buller, J.: Gentlemen of the jury, this is a scire

facias, brought to repeal a patent granted to the

defendant for the sole use of instruments or

machines which he represented to his majesty that

he had invented, and which would be of great utility

to the public in preparing silk, cotton, flax and wool

for spinning; and that these machines are

constructed on easy and simple principles, very

different from any that had yet ever been contrived:

that he was the first and sole inventor thereof, and

that the same had never been practised by any other

person whatsoever. It was upon this representation

made by the defendant, that he obtained a patent

now in question. The questions for your decision are

three: First, whether this invention is new?

Secondly, if it is being new, whether it was invented

by the defendant? And, thirdly, whether the

invention is sufficiently described by the

specification?

It scems to me that the last question is the

question of greatest importance: because, if you

should be of the opinion upon that question that the

specification is not certain enough, it may have the

effect of inducing people who apply for patents in the

future times to be more explicit in the specifications,

and, consequently, the public will derive a great

benefit from it: and, therefore, I will say to you the

evidence upon that pvint first, and will endeavour to

state it separately from all the evidence which is

applicable to the other points of the cause. Upon

A-4

this point it is clearly settled at law, that a man to

entitle himself to the benefit of a patent for a

monopoly, must disclose his secret and specify his

invention in such a way that others might be taught

by it to do the thing for which the patent is granted,

for the end and meaning of the specification is, to

teach the public, after the term for which the patent

is granted, what the art is, and it must put the

public in possession of the secret in as ample and

beneficial a way as the patentee himself uses it.

This I take to be clear law, as far as it respects the

specification; for the patent is the reward, which,

under the act of parliament, is held out for a

discovery; and, therefore unless the discovery he true

and fair, the patent is void. If the specification, in

any part of it, be materially false all or defective, the

patent is against the law against law, and cannot be

supported.

It has been truly said by the counsel, that if the

specification be such that the mechanical men of

common understanding can comprehend it, to make

the machine by it, it is sufficient; but then it must be

such that the mechanics may be able to make the

machine by following the directions of the

specification, without any new inventions or

additions of their own. The question is, whether,

upon the evidence, the specification comes within

that I have stated to you to be necessary by the law,

in order to support it,

The prosecutors have attacked it in almost every

part. First, the witnesses the witness say the feeder

No. 3 cannot be made from the specification.

Another says, rollers were made prior to 1767; in

1769 the they were the same as this, and those used

by the defendant; the one was fluted, and the other

covered with letter; first they were fluted wood upon

A-5

an iron axis; the other was the same, only covering

with calves’ leather: that he rigidly made them of a

different proportion, and one to move faster than the

other.

If there was any alteration the defendant made

that was material, and ought to be stated, but in

speaking of that article, the specification is perfectly

silent as the material or the form which in which it

should be made.

A witness, Kay, says, one roller turn faster than

the other; and there it was a used in this, because it

was to draw the cotton finer. In this also the

specification is perfectly silent. In the plan one

appears to be something smaller than the other, but

how much, or what were to be the relative

dimensions, or upon what scale they were to be

made, the specification says nothing. Crofts, who

was employed by the defendant to draw up the

specification, told the defendant it was imperfectly

done, and would not answer the purpose; defendant

said he meant it should operate as a specification,

but to be as obscure as the nature of the case would

admit.

I began with this evidence, because it is very

material to be considered whether the specification,

in any part of it, bears a doubt; because the obscurity

of it was pointed out to the defendant before he made

it, and he then professed to make it as obscure as he

could; his object was to get the benefit from the

patent so far as putting money in his own pocket,

but as to the benefit the public were to receive, it

was to be kept back as far as it could. Immison says,

that from the specification he should have a parallel

cylinder, and not a spiral one, but this is the one

used by the defendant. As to the rollers, it does not

A-6

appear from the specification some were to go faster

than others; from the specification, without other

sources, it is impossible to say how they should be

made, as there is no scale or plan to work by. A

roller is necessary to the feeder to give regular

interaction to the work; it will not answer without it.

From the knowledge, he has now, he should add a

roller if he was directed to make the machine. But

that does not prove the specification to be sufficient,

because if a man from the knowledge he has got from

three trials, and seeing people immediately

employed about it, can make use of it, it is his ideas

improve the plan, and not the merit of the

specification; if he makes it complete, it is his in

ingenuity, and not the specification of the inventor.

He says as to an No. 5, will not work five minutes

together before it will be entirely full of cotton; he is

asked, supposing cotton was to be spread upon the

feeder only the breath of the fillers, would it have

any effect? He says it would not do even then.

(The learned judge commented on the evidence of

several other witnesses to the imperfection of the

specification.)

Mr. Pilkington says, that Mr. Arkwright gave

him some cases which he was to present to the

House of Commons, and desired the witness would

read them, and promised to send him more by his

servant, which he did. Those who were delivered by

the defendant seem to me to be material, because

they show what the defendant sense of this business

was immediately after the first trial. It has

appeared from what has been said upon both sides,

and it was so stated in this case, that he was beat

upon the first trial upon the subject 1 am now stating

to you, that is, the specification. He udmits that he

has not properly specified how the machine was

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made, and he says that he purposely (in prevention

of an evil, that foreigners may not get them) omitted

to give so full a description of his inventions in the

specification attending to the last patent as he

otherwise would have done. This he admits, and he

gocs on and states a trial in Westminster Hall in

July last, at a large expense, when solely by not

describing so fully and accurately the nature of his

last complexed machines, as was strictly required by

law, a verdict was found against him: he bows with

the greatest submission to the court and the verdict

against him, and he deprecates the favour of

parliament.

Now in a case where intervention is lucrative to

so enormous a degree as you have heard, and where

the verdict was given against him upon a particular

point, had he not been most thoroughly convinced

that the verdict was right, or if he should by any

explanation have supported his specification, it is to

be conceived for three years and a half he would lie

by and totally lose the benefit of his patent? But

accepting this application to parliament, which does

not go upon the grounds of his patent being good, but

abandoning it on account of his own fault, and

desiring favour and bounty there, he relinquishes

the patent for three years and a half.

This is the evidence upon the part of the

prosecutor against the ~vccification, and it is

material to see a little how the defendant’s counsel

endeavours to support it. Here is the specification

ead states ten different instruments; it is a minute

by them that as to No. 8, it is of no use, and never

was made use of by the defenaant in his machine. It

is also admitted, No. 9 stands exactly in the same

situation, as these could not be put into the machine.

This is a little extraordinary, for if he meant to make

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a fair discovery, why load it thus with things that

they make no use of, and which are totally

unnecessary? That could answer no purpose but to

perplex. But, say the counsel, we will show you that

there were two machines, and that they were two

distinct things, for, say they, No 3, 4, and 5, are the

material parts of one machine, and those alone

afford all the information necessary. Then, besides

that, there is the roving machine, which consists of

No. 6, 7 and 10, joined together. If that be the truth

of the case, and there are two distinct machines to be

made up by the parts only of the instrument

specified in this plan, let us see whether it is said so

in the specification; — there is not a word of it. It

begins with the first, or No. 1, which is a breaker or

beater of seeds and husks, and a finer of the flax,

hemp, and other articles which are to be prepared

for dressing. Then, says the counsel, there was a

difference as of those things, because the hammer

was proper for the hemp, and not proper for wool; if

there was to be that difference, it was necessary for

the defendant to stated it in the specification; but he

has made no distinction; his left to those who are to

learn his art and secret the use the same machine

for every part of it. He does not distinguish between

the cotton and the flax; specification states that is

proper for everything. I[s it so? It is admitted it is

not. Is there any thing which states that these parts

are for two machines, and how they are composed?

That the specification is totally silent about. What is

there in the specification that can lead you to say

that you must make use of three things for one of the

machines and three for the other, in which three for

one or the other? And even if it were so, what is to

become of the other four? If those are of no use but

to the to be thrown in merely to puzzie, I have no

difficulty to say upon that ground alone the patent is

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void, for it is it is not that fair, full, true discovery

which the public have a right to demand from an

individual who, who, under the _ sanction of

parliament, gets sec great a reward as monopoly for

fourteen years together.

However, upon the part of the defendant, they

have called several witnesses to show you it is

perfectly intelligible, and that they can make the

machines from the specification. Wilkinson took his

information, or a great deal of it, from the defendant

himself, and supposing it true that he or any other

person instructed by the defendant, and having seen

what he does, can make a machine from the

specification, yet that will never support it, unless

other people from the specification itself, who have

any knowledge in the business, can also do it. That

is not the case with this man; but the last thing he

says is also material thing against the patent, for he

says, for different purposes different proportions of

the rollers are necessary. How is any man to find

that out? It is not said in specification it must be

different in one case from the other, and that you are

to be have different roles for hemp or for cotton. All

this remains to be the subject of a future discovery.

Moore says, with due attention to the old machine,

and an accurate attention to the specification, I

could direct a skillful artificer to make the machine.

That is all that a very ingenious sensible man can

say of the specification. He has examined the

instruments and the machine, and seen a great deal

of it between the trials, and ut last he believes, with

all the extreme caution that I have mentioned to

you, that he could direct a skillful artificer to make

the machine. He says, that as to No. 3, a piece of

cloth with cotton or any other material that was to

be carded, rolled up in it, were surely move much

A-10

better and more steadily with a roller within side,

but it would not to do without it. If wanted, he

thinks it would be easily occur to a mechanic to put

it in, that is, that a sensible man would have

understanding enough to supply any defect in the

specification; but in this it proves the specification is

insufficient. It will not do of itself, but wants

sumething to be added, it is deficient, and there is

nothing in the specification that imports that there

should be roller in it.

Now it 1s submitted by the former witnesses, if

there are sections of rollers, there ought to be a

scale, and there is no scale, there is nothing in the

plan to show the different comparative velocities of

the rollers, but there will be a difference, because the

one is larger than the other in diameter.

You see how that applies to this part of the

evidence. There is nothing, he says he, that shows

what the difference of velocity should be, that

remains for the experiment hereafter. Is that the

case with the defendant? No, he knew to a certainty

what it was. The man that comes to give an account

of the invention, says, I had calculated it, and the

difference of the velocities was to be as five to one;

that this is the way I made my rollers; now the

defendant has not said a word of that in the

specification. In that he has kept back the

knowledge he had as to the size of the rollers, and

velocity, and is left to people to find it out as chance

may direct.

Wood put No. 4, 5, 6, and 7, together and that

machine he has worked ever since; he did not

recollect that the defendant used anything else. If

that be true, it will blowup the patent at once; he

says he believes nobody that ever practised would

A-11

find anything necessary upon this paper but the No.

4, 5, 6, and 7; he should look after no others. Now if

four things only when necessary instead of 10, the

specification docs not contain any good account of

the invention. As to the can, he may use of it

without rollers at the mouth; he thinks it answers

just the same without it.

This is the evidence that relates the specification

upon the one side and the other. You see upon the

part of the prosecution they have called you to very

ingenious man, that seem to be much beyond what

they are called, mechanics in life; they have all told

you it was impossible for them to make the machine

according to the specification.

Upon the other hand, several respectable people

are called upon the part of the defendant, who say

they could do it, but that there is a difference in the

description; most, if not every one of them, have

looked at and secing how the machines were worked

by the defendant, and have got their knowledge by

other means, and not from the specification and plan

alone; besides, they admit the manner the defendant

works is not consistent with the plan laid down,

particularly as to the cylinder, a particular part of

the business, for Moore says, this upon the face of it

must be taken to be a parallel, whereas that which

plainly appears to be used is a spiral; besides, after

all this, they have spoken most of them in a very

doubtful way, particularly Mr. Moore, who qualified

his expression in the way which I have stated to you,

and the others qualifying their expressions, saying

they think upon the whole they could do it. Suppose

it perfectly clear they could with the subsequent

knowledge they had acquired, yet if it be true that

sensible men that know something of this particular

business, mechanics in general, cannot do it, if is not

A-12

so described as is sufficient to support this patent. It

will be for you to say upon this part of the case

whether you are satisfied the specification is such,

as, with the plan, it may be made from it or not,

taking the old machine into its assistance, which by

the by the specification has not taken the notice of as

known. If you think it is not sufficiently described,

that alone puts a complete end to this cause, and

then it would be unnecessary to trouble you with any

other.

As to the other points, there are two; first,

whether it is a new invention; and, in that next

place, whether it was an invention made by the

defendant. Now if, in your opinions, it is material to

go into these points, I think the law in general is

very different on them from what I have stated in

the specification, because in the case of an invention

many parts of the machine may have been known

before, yet if there be any thing material and new

which is an improvement of the trade, that will be

sufficient to support a patent; but whether it must

be for the new addition only, or for the whole

machine, that would be another question. It seems

to me not to be necessary now the state precisely

how that would be, because his patent is attacked

upon every ground that there is nothing new;

therefore I will go over the articles one by one, and

see what is stated upon the different articles which

are here mentioned.

No. 1 it is said is not stated by the specification to

be joined to anything else, and therefore it must be

tuken to be a distinct thing. It is admitted that it is

not a new discovery, for Emerson’s book was

produced, which was printed a third time in the year

1773, and that is precisely the same as this. Lees

says he is the inventor of the old feeder; that he

A-13

made it in 1772, and in August, 1772, he worked

with it; and that it is now commonly used in this

country. He has never seen the defendants used, but

the description of the defendants is the same as his.

This also shows, first of all that it is no new

invention; secondly, it is not invented by defendant,

for this invention is spoken of as used before the

time of the patent; and in the next place, it is prove

to you not to be the invention of the defendant, by

the person who actually invented it. It is proved

that the crank (No. 4) was invented between 13 and

14 years ago by Hardgreave, and use publicly in two

factories where men came to work. If so, that

will put an end to this article of the crank. Some of

the witnesses have proved them made in great

numbers, and using different factories publicly, and

have proved it by persons who made them. Upon the

part of the defendant, the witnesses never had

having heard of it may be perfectly true, and yet no

contradiction to the evidence for the prosecution. As

to No. 5, the fillet cylinder, Wood proves it is used

long before the defendant’s patent; he confirms what

was said by the other witnesses; and what the other

witnesses have said against it is nothing ut all to

this article; for here it is proved to be used in both

ways, in the manner the defendant has used it now,

and likewise being carded quite through.

Now if it was in use both ways, that alonc is an

answer to it; if not, there is another question,

whether the stripe in it makes a material alteration?

for if it appears, as some of the witnesses say, to do

as well without the stripes and to answer the same

purpose, if you suppose the stripes never to have

been used before, that is not such an invention as

will support the patent; upon that ground it is fully

answered.

A-14

As to No. 6, there is no contradiction to the

evidence of Hayes and Kay, that the rollers were

made before, and used in the different ways | have

stated to you, and that the defendant got the secret

from them. Then the 7th article is what they call the

can. Holt says, the only difference between the two,

the spinning machine and the present roving

machine, is that the latter has a can — and indeed

that at one time was admitted by the counsel for the

defendant.

If it be so, it brings the case to a short point

indeed, for if nothing else is new, the question is,

whether it is materia! or useful? The witnesses upon

the part of the prosecution say it is of no use at all.

In the first place, they had that before which

answered the same purpose, though not made

exactly the same form; was open at the top, it

twisted around and laid the thread precisely in the

same form, and had the same effect this has. So if it

was new it is of no use, but if they say it is not new,

for it was not precisely the same shape, in substance

it is it was the same thing; that is not contradicted.

That part also stands without any contradiction

upon the part of the defendant, for the defendant's

witnesses satisfy themselves with telling you they

think it intelligible, and it might do without the

roller, though it might not be so effectual as with the

roller. It is admitted by several it could do without,

that appeared from this experiment made; they

showed you by one of the engines, how it did with

the roller and how without; and that it was done

without just the same as with it. As to 8 and Q, it is

admitted those are entirely out of the cause, and

may be used, says the counsel for the defendant

instead of No. 7.

A-15

But it is a question whether this is the fair

construction of the specification. Suppose it was so,

it is perfectly clear defendant has never used either

of them, and some of the witnesses tell you they

cannot use them at all. One tells you they cannot be

used, and, therefore, is a little unfortunate they got

into the specification, if nothing more was meant

than the make a fair discovery of what is useful; but

in this manner the defendant description is given.

As to No. 10, nothing is said about it for the

defendant. First, Mr. Moore said it was not difficult

to the conceive it; but there is no witness that says at

all what the use of it is: so this seems to stand

without any evidence at all.

Gentlemen, thus the case stands as to the several

component parts of this machine; and if upon them

you are satisfied none of them were inventions

unknown at the time this patent was granted, or,

that they were not invented by the defendant; upon

either of these points the prosecutor is entitled to

your verdict.

If upon any point you are opinion with the

prosecutor, you will find a verdict for him.

If upon all the points you are opinion of for the

defendant, you will find a verdict for him.

Verdict for the crown.

10% Nov. 1785. — Adair, Sgt. applied for rule to

show cause why there has not be a new trial, on the

following grounds, set forth in the affidavit of the

defendant and another person.

That he was led to suppose, that upon two trials

on the question of such importance, no evidence that

appeared material to the party would have been

suppressed and kept back, and that they had gone

A-16

into all the cases that could be made against the

patent; that under these apprehensions he did not

expect them to adduce, in the next stage of the

business, and after so many trials, evidence to attack

that which he was conscious could not be justly

attacked, the originality of the invention. He went,

therefore, into the defense, and instructed his

counsel, with a view to the question merely of

specification, and came to the trial on the scire facias

altogether unprepared with respect to the evidence

that appeared as to the novelty of the invention,

except so far as it witnesses that were accidentally

called to explain the specification could speak on the

subject: that he, consequently, was not prepared

with that evidence which he would have adduced to

contradict and explain the evidence to deprive him of

the originality of the invention. Also, that he could

adduce evidence to explain the usc of several articles

in the specification, said to have been introduced

only for the purpose of puzzling and perplexing

That the evidence respecting the wants of novelty

of the crank could be contradicted most positively by

fresh evidence.

LORD MANSFIELD, CJ: is very clear to me, upon

your own showing, that there is there is no doubt the

rule; the ground of it is, if there is another trial, you

may have more evidence. There is no surprise

stated, no new discovery, but, upon the material

points in question, you can give more evidence.

There were two questions to be tried, that is, the

specification and the originality of the invention;

there has been one trial in this court, another trial in

the Common Pleas, where this patent has been

question, and this proceeding is brought finally to

conclude the matter, for it is a scire facias to repeal

the letters patent. ‘The questions to be tried are

A-17

stated upon the record; there is not a child but must

know they were to try the questions there stated;

they come prepared to try them, they have tried

them, and a verdict has been found which is

satisfactory to the judge, and now you desire to try

the same cause again only that you may bring more

evidence. Rule refused.

On 14 November, 1785, the court of King’s bench

gave the judgment to cancel the patent.

A-18