An Extract from the Trial Transcript of Rex v. Arkwright:
Why the Issue as to whether the Patent Grant was Prejudicial and Inconvenient to His Majesty's Subjects was not put before the Jury.
Reproduced below is a portion of the trial transcript for Rex v. Arkwright, a scire facias action to invalidate letters patent granted to Richard Arkwright. The extract is taken from pages 30—33 of The Trial of a Cause instituted by Richard Pepper Arden Esq.; His Majesty's Attorney General, by Writ of Scire Facias, to repeal a Patent granted on the Sixteenth of December, 1775 to Mr. Richard Arkwright, for an Invention of certain Instruments and Machines for preparing Silk, Cotton, Flax and Wool for Spinning; before the Honorable Francis Buller, One of the Judges of His Majesty's Court of King's Bench, at Westminster-Hall, On Saturday the 25th of June, 1785. (Hughes and Walsh, London, 1785.)
The extract covers the exchange between the trial judge, Mr. Justice Buller, and the Counsel for the Crown. It clarifies the reasons why Mr. Justice Buller decided that the issue as to whether or not the patent was “prejudicial and inconvenient to our subjects in general” should not be put before the jury.
Mr. Justice Buller. Mr Bearcroft, What do you understand to be the meaning of the first issue?
Mr. Bearcroft. The evidence upon our side will be to shew, that the grant is prejudicial and inconvenient to his majesty's subjects in general. I meant to say, there is great danger from such a grant as this, that it will go into foreign countries if the monopoly is permitted.
Your Lordship will permit me to state it; I mean to say it is of such a sort, that it may be taken into other countries without all doubt, and if you can only work it here, loaded with a monopoly, and in another country it may be worked without, it will be a great danger to the whole trade, as applied to all the cotton manufacturers.
Mr. Justice Buller. I don't see, with respect to that issue, you can be permitted to give any evidence at all, it is merely a consequential issue, it is a question of law, whether it is prejudicial or not? When the facts are stated therefore, if you thought it necessary to attack the patent upon those general words of the act of parliament, you should have stated in what respect it was so then—the fact would be put in issue. This is such a surprise upon the party he can never come prepared to answer it.
Mr. Lee. It strikes me, the prejudice must be in the nature of it, a matter of fact, and your Lordship sees it is a condition annexed to every patent, by the terms of the act of parliament. Now there is no making any sense, use, or application of that, but upon some idea that the patent is to stand or fall upon the ascertainment of that fact.
My Lord, If the patent is to be void, if proved prejudicial to the public; and good, if no such prejudice arises from it, in the nature of it; then ex vi termini, there must be some mode of ascertaining it.
Mr. Justice Buller. That is no answer to my question, Mr. Lee; my idea is, if the patent is void as a question of law, if prejudicial or hurtful to the country, you can only take issue on some fact that makes it so, therefore your issue should not be in general terms, prejudicial to the country, but you should state how? and then the party comes prepared to answer it.
Mr. Bearcroft. Then, according to your Lordship's observation, it is an immaterial issue, and we should state the fact, in order to give notice to the party.
Upon that issue, upon this record, I must take it thus—the other three are precise pointed issues, but the first is of consequence to stand or fall as they are proved.
Mr. Lee. Suppose this principle is assumed, and I conceive it may be fairly assumed, there is no one thing of equal importance, in any country, to the employing of the inhabitants that compose it. I will suppose any invention, and you have a right to put the most extravagant supposition upon earth: I will conceive all that manufactory, which has been for ages carried on by men, women and children; and the sustenance of them all to be performed by an invention that don't admit of any human hands at all. It is possible in the nature of the thing, all those spindles might, for ought I know, be worked by a turnspit dog, and afford no subsistance at all to any human being. I should conceive such a thing, upon proof, would be directly a public inconvenience, and destructive of the happiness of mankind. And yet it would not be necessary to shew that was the nature of it, but only to state that.
Mr. Justice Buller. Then you should state the fact upon record, then he knows what he comes to answer. Whether you attack it upon the one ground or the other, as to the inconvenience to the public, it is impossible for a man to come to answer that.
Mr. Serjeant Bolton. This is taken upon the words of the patent; they are the words of the law, requiring such and such qualities, he has joined issue generally upon it, he might have demurred, and have said, I will not join in that issue.
Mr. Bearcroft. Is it not too much to determine at Nisi prius, that it is an immaterial issue?
Mr. Justice Buller. It is necessary to settle that, it must be the rule to direct yourselves by, it must be determined, whether the issue is to be laid before the jury.
Mr. Lee. Your Lordship sees the order in which it is placed; my idea is, that it should stand last, and now it stands first.
Mr. Justice Buller. If it stood last, it is a consequential issue, like the issues in Quo warrantos. Here are issues joined on particular facts, the party has notice of them by the record, and comes prepared to controvert it, and the last is a general complicated thing, which must stand or fall by the other particular issues.
Mr. Lee. I conceive the first question is, Is it a new invention at all? The next is, Is it the man's who pretends it is his? The third is, Is it sufficiently and accurately ascertained? When these points are all settled; Suppose he had particularly specified, that he is the inventor, yet if it is a nuisance instead of a public utility, it should not stand.
Mr. Justice Buller. Then you ought to have stated it.
Mr. Lee. They should have demurred then; but they go on to say this; I defy you to prove this is not a new invention, or that it is not properly specified, or that it is a public inconvenience.
Mr. Justice Buller. You cannot go into any fact, but those upon which the issue is joined upon the record, in order to sustain that issue.
Mr. Lee. Suppose we put the most extravagant thing in the world, I suppose this principle will hardly be disputed, that the strength of this country depends upon its navy, and perhaps that may depend upon the Newcastle colliery, and that having great communication with this capital by sea. Now if a man was to invent a method of carrying all the coals from Newcastle to London by air balloons, and by that means exclude every hand that used to be employed by sea, and go to the annihilation of every sailor and mariner: I should think it tryable upon the state of it.
Mr. Justice Buller. Then state it.
Mr. Lee. If the jury could, or could not say this would tend to great public objects, which we all know it does; I conceive it tryable under the head of public inconvenience.
Mr. Erskine. If have always understood it to be a rule, that you need not be more precise in pleading upon the statute, than the statute is in the description itself. It is not above a term ago, in the Court of Exchequer, I took the objection in arrest of judgment, that the crime was not sufficiently set forth upon record. I was told by the judges in that court, it was set forth in the language of the act of parliament which made the offence, and therefore the act of parliament was to be the rule of pleading. In this instance the act of King James says, the king shall have no right to grant a patent, that shall be prejudicial and inconvenient to the king's subjects in general. It seems, therefore, a sufficient objection to any patent to say in the words of the statute, it is not in the power of the crown to grant that patent, and the party that comes to support it, is bound to support it, and to shew it is within that king's power to grant. If you are too general, it is for the party, likely to suffer by the generality, to check it by a demurrer, but if I aver it is prejudicial to the language of the statute, and he joins issue upon the subject, it may be a question, How far we are, or not, allowed to go into evidence to support that? It struck me very forcibly, when Mr Baron Eyre made that answer, it seemed to me conclusive then, though there seemed to be sufficient ground to arrest the judgment, if it was a common offence, as the party has not notice of it upon the record; but the Court said, when you lay an information upon the statute, it is sufficient in a criminal case, if you lay it upon the words of a statute. Here then the statute says, no patent shall be enforced which is inconvenient to the subjects; and we aver, that is the case.
Mr. Justice Buller. Where the act of parliament states particular facts, and makes certain acts a crime, there it is sufficient to state it in the words of the act; but here no act at all is stated, no notice is given upon what ground you mean to go; if it is open to inconvenience, it is open to every reason you can suggest; and the party is not prepared to bring an answer to it, he has no opportunity of answering.
Mr. Wilson. My Lord, it seems to be an Issue in law.
Mr. Justice Buller. So I think, Mr. Wilson.
Mr. Wilson. Provided it is not contrary to law, or is a general inconvenience, that is an issue in law.
Mr. Justice Buller. Therefore they should state those facts that they think prove the general inconvenience, and it will be for the jury to decide upon the truth or falshood of those facts; if once established by the jury, such facts existed, then it would be a question of law, whether this was an inconvenience.
Mr. Bearcroft. I understand that; but does it not go to this—they ought to have demurred? and he has waived that objection, by joining issue upon it. He says, I do know what you mean.
Mr. Justice Buller. I must see a little what is to be tried; I must find, that, by the record upon this issue, there is no fact at all of that sort: I consider it a consequential issue, like the Quo Warranto; the law is well settled; if you cannot upon that consequential issue attack the defendant, you may upon the other issues, upon the three issues; it may be properly tried on the second, third, and last. I am to try those, and consider the first as a consequential issue; if, upon the part of the prosecution, either of the three last are established, the other must follow.
Mr. Bearcroft. If you please, then, we will begin with the second: that it was not a new invention.