on these facts, submitted to the jury this question: Did Draper communicate to Peirce substantially the improvement, for which he took out his patent, so that, without more inventive power, Peirce could have applied it? It was not enough, that Draper gave a hint; nor, on the other hand, was it necessary, that he should communicate every minute thing about the invention; but he must have communicated the substance. He further instructed the jury, that the original patentee had sworn, that he was the true and first inventor of the improvement, for which he had taken out letters patent; that this oath was required by law, prior to the issue of the letters patent; so that, supposing the jury should be of opinion, that the asserted communication of Draper covered the substance of Peirce's invention, then there would be oath against oath. If they should be of opinion, that Draper simply gave a hint, which Peirce afterwards reduced to practice, then the two oaths would not conflict. If Peirce swore falsely, that he' was the first and true inventor, then he was liable to indictment for perjury. The testimony of Draper with regard to Peirce was in the nature of confessions, and this was always regarded as an uncertain kind of evidence. The conversation was in private, and nobody could contradict the witness. The judge stated, that this was the first time, within his long experience on the bench, that such a conversation had been set up as a ground for destroying the title of a patentee to his invention.
The judge further instructed the jury, that it was not necessary, that the two nibs should be identical, in order to make one an infringement of the other. The true question was: Are the means used substantially the | same, although not in every minute particular? With regard to damages, the jury were, told not to give extravagant or vindictive damages; but such as would establish the right of the plaintiffs, and indemnify them against all the expenses of litigating their right. If the defendants were sued a second time for violating the right of the plaintiffs, then it might be proper to give vindictive damages. The jury thereupon found a verdict for the plaintiffs, for §1167.66.
At a subsequent day of the term, (Dec. 21,) the case came on again, on a motion for a new trial. The motion was grounded upon the following reasons. (1.) That the judge ruled, in the course of the trial, that one Peirce, who was offered as a witness, was interested, and could not be examined as a witness. (2.) That the judge further ruled, that an affidavit, made by the said Pierce, before he took out his patent and in order to obtain the same, was evidence in the cause, although it appeared, that the said Peirce was interested at the time he made the said affidavit. (3.) That the judge instructed the jury, that they were to take into consideration the said oath of Peirce, and that only one witness having sworn, that he communicated to Peirce the substance of the invention, and Peirce having sworn by his said affidavit, that he believed himself to be the original inventor, the jury had oath against oath; and that the jury must decide, whether the solemn oath of Peirce had been thus overcome by the testimony of one witness. (4.) That the damages assessed by the jury were excessive.
B. R. Curtis ufrged, in support of the first three grounds of the motion, that the ruling of the court was inconsistent with the general principles of the law of evidence; that it conflicted -with the rule, requiring an opportunity to cross-examine a witness; also, with the other rule, excluding the testimony of an interested witness. In support of his views, he cited the English cases in actions on- the case for a malicious suit. He also relied upon the proceedings of courts of justice under the registry laws, and bankrupt laws. He further urged, that the statute, requiring the oath of the patentee, was intended to secure the public against fraud. But that, if the construction of the court was to prevail, it would operate as a security to the patentee, and would be, not a shield to the public, but a sword against it. He also argued, in support of the last ground of the motion for a new trial, that the damages were excessive.
STORY, Circuit Justice, without hearing the other side, ruled, as at the trial, that the patent was prima facie evidence in the case; that the patent recited the oath, and that the jury had cognizance of it; in short, that the oath was in the case, and the jury were entitled to judge of its force. This was the foundation of the onus probandi, that was thrown upon the defendants in a patent cause. The courts *331of the United States had constantly acted upon this view. With regard to the question of damages, the judge confessed, that the damages awarded by the jury were greater than were anticipated. But still there did not seem to be any such gross mistake in the .jury, as would authorize setting aside their verdict. It was a matter submitted to their fair judgment. Judgment according to the verdict.
[NOTE. Patent No. 144 was granted March 11, 1S3T, to D. Peirce, and, so far as ascertained, has not been involved in any other •eases reported prior to 1880.]