Stanley v. Whipple. 2 McLean. from the time he originally applied for a patent and obtained one, which proved to be inoperative and void. It appears the first patent of the plaintiff, for his invention, was obtainedthe 17th December, 1832; and which was declared to be void and inoperative by the Circuit Court of the United States, for the Southern District of New York, on the ground that the specifications claimed more than the patentee had invented. And, particularly, that he claimed, as his invention, a rotary top, &c., which was in use before he set up any right to it. *The plaintiff, after this decision, obtained ano- [ * 37 ] ther patent, on different specifications, dated as above. It is insisted that the specifications of the second patent are defective, and that the plaintiff cannot sustain an exclusive right under it. The Court think that, on this ground, the second patent is not objectionable. The specifications show clearly what parts of the stove the patentee claims to have invented; and the stove is so clearly described, in its structure, as to enable a person, possessing ordinary skill in the construction of stoves, to build one; and this is all the certainty which the law requires. Under the thirteenth section of the Patent Law, passed the 4th July, 1836, the second patent has relation back to the emanation of the first patent, as fully for every legal purpose, as to causes subsequently accruing, as if the second patent had been issued at the date of the first one. It is under this patent, then, that the right of the plaintiff must be examined. In the defence it is strongly insisted, that the contract was made with a reference to the stove for which the first patent was obtained, and that the specifications used in the first patent, were supposed, by the defendant, to be the improve Stanley v. Whipple. 2 McLean. ments of the plaintiff, and constituted the consideration of the contract; and that, as these specifications were limited to the parts of the stove invented by the plaintiff, by reason of which the first patent was void, there was a failure of the consideration of the contract. The contract was respecting" a stove for which the plaintiff claims a patent." There was no description of the constituent parts of the stove, or of the parts which the plaintiff claimed as his invention, in the contract. [* 38] * Whatever remarks may have been made by either of the parties, while negotiating respecting the contract, it is very clear that such remark cannot be given in evidence. The contract was reduced to writing, and there is nothing ambiguous on its face; the parties, therefore, cannot, by parol evidence, change, in any respect, the clear import of the written agreement. The defendant, in his advertisements respecting the stove, calls it "Stanley's patent stove." The second patent legalizes the rights of the patentee, from the date of the first patent; and, if this effect be given to it, it must sustain the contract made in this case. Stanley having an exclusive right, could convey it in whole, or in part. And it must be immaterial to the defendant whether the right of the plaintiff was made good by the first patent, or, by relation, under the second patent. It appears a stove was invented by Towns and Gould, in 1824, which had a rotary top, but it seems not to have had any of the improvements which the plaintiff claims to have invented in his second specifications. Nor is it proved that there was any stove in use, prior to that of the plaintiff's, with a rotary top, moved by a cog and pinion, and put in motion by a crank; or which contained a combination of parts, or application of principles, similar to those in the plaintiff's second and corrected specifications. Stanley v. Whipple. 2 McLean. The lever applied on the top part of the stove, which several of the witnesses speak of, as an improvement on Stanley's invention, was subsequently applied, and was done to evade Stanley's patent, as some of the witnesses expressly state. If it was, in the language of the witnesses, an improvement upon Stanley's plan, of course, it must have been subsequent to it. * 39 ] The jury were instructed that a mere formal difference can not be protected by a patent. That the difference must be substantial; and that, if they shall find that a stove was in use prior to the plaintiff's invention, substantially like his, he can claim no exclusive right under his patent. There was, however, no such evidence before the jury; and, on this part of their verdict, there is no ground of complaint. But, it is contended, that the invention must be shown to be of some utility; and that, in this respect, the plaintiff has failed. It was wholly unnecessary for the plaintiff to introduce any evidence to prove that which the defendant so repeatedly and publicly admitted. In his advertisement of his stove, he speaks of it as one of the most useful inventions; and that, in the parts of the country where it had been introduced, it had superseded all others. And, in addition to this, he states, that he has evidences of the great utility of the stove, from gentlemen of great respectability in our eastern cities; and he publishes the certificates of more than twenty citizens of respectability in Cincinnati to the same effect. We are satisfied, therefore, that the verdict of the jury should not be set aside on any of the arguments urged, under the first and fourth grounds assigned. Stanley v. Whipple. 2 McLean. The ground that the Court erred in excluding the copy from the books, as evidence, will be next considered. The counsel do not contend that the books are, in themselves, evidence; but they insist that the copy from them, attached to the deposition of the bookkeeper, which he swears is a true copy, is made evidence by the counsel of the plaintiff. The counsel for the plaintiff did not call for the books, or ask a single question in regard to their contents. How, then, has he made the book evidence? [* 40 ] *He admonished the bookkeeper, sometime before his deposition was taken, to be cautious in his statements, as there was some discrepancy in a deposition or depositions, which he had formerly given on the subject; and the counsel had advised him to refresh his memory by a reference to the books. This does not make the books, or their contents, evidence in this cause; and, consequently, the Court, very properly, excluded the above copy from the jury. The counsel insist that the damages are excessive, and that, on this ground, a new trial should be granted. The damages assessed by the jury, being fifteen thousand dollars, are large ; and it is a subject of regret, that a less sum had not been found. But we must look into the evidence, and see whether the verdict is sustained by it. The depositions of Snyder, Woodruff, and Roff, go the whole length of the verdict. And although the defendant's witnesses place a lower estimate on the number of stoves sold, yet they do not speak positively; and, if they did, it was the province of the jury to weigh the evidence. Where the evidence sustains the verdict, the Court cannot say that the jury should have given greater weight to other parts of the testimony, which would have limited the damages assessed to a less sum. Stanley v. Whipple. 2 McLean. This verdict, though large, we cannot say is against evidence, or, that it is not supported by the evidence; and the motion for a new trial is overruled. A motion, in arrest of judgment, has also been made and argued; and the ground is, that the plaintiff does not aver in his declaration that he ever obtained a patent, or had an exclusive right to the stove, which was the subject-matter of the contract. In the first count is stated, in the words of the agreement, that the plaintiff sold to the defendant the right of making and vending a stove, for which he claims a patent (which patent is not yet obtained) in the city of [ * 41 ] Cincinnati, &c., for which the defendant agreed to pay five dollars for each stove that he should make and sell. The allegations in the second and third counts, are substantially the same. The fourth count is for money had and received. A declaration is a statement of facts, which, in law, gives the plaintiff a right to recover. And, if a demurrer had been filed in this case, the only question would have been, does the statement of facts, in this declaration, give the plaintiff, in law, a right to recover. And we will first consider the question as if raised by demurrer. Suppose the plaintiff, on the trial, had, after proving the contract, introduced evidence that, at the time the contract was entered into, he did claim a patent-right for the stove, and had here closed his evidence. Could he have recovered? If he could not recover on this evidence, can the declaration be sustained? It is materially defective, if, to lay the foundation of a recovery, the proof must go farther than the allegations it contains. This is, therefore, a safe and sure test of the goodness of the declaration. The plaintiff, on the trial, did not stop, on showing that |